1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

• (a) In general. Except for correspondence submitted via the U.S. Patent and Trademark Office (USPTO) patent electronic filing system in accordance with § 1.6(a)(4) , all correspondence intended for the USPTO must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450” or to specific areas within the Office as provided in this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
  • (1) Patent correspondence.
    • (i) In general. All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
    • (ii) Patent Trial and Appeal Board. See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
  • (2) [Reserved]
  • (3) Office of General Counsel correspondence. —
    • (i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2 .
    • (ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    • (iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    • (iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
    • (v) Improper correspondence. Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
  • (4) Office of Public Records correspondence.
    • (i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27 .
    • (ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
  • (5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
• (b) Patent Cooperation Treaty. Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
• (c) For reexamination or supplemental examination proceedings.
  • (1) All correspondence concerning ex parte reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked “Mail Stop Ex Parte Reexam.”
  • (2) All correspondence concerning inter partes reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked "Mail Stop Inter Partes Reexam."
  • (3) Requests for supplemental examination (original and corrected request papers) and any other paper filed in a supplemental examination proceeding, should be additionally marked "Mail Stop Supplemental Examination."
  • (4) All correspondence concerning a reexamination proceeding ordered as a result of a supplemental reexamination proceeding, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter should be additionally marked “Mail Stop Ex Parte Reexam.”
• (d) Payments of patent maintenance fees. Payments of patent maintenance fees that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450.
• (e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked "Mail Stop Hatch-Waxman PTE." When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
• (f) [Reserved]

[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR 16413, May 9,1988; para. (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised and para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(2) corrected, 68 FR 19371, Apr. 21, 2003, effective May 1, 2003; section heading, para. (a) introductory text and para. (a)(4) revised, para. (a)(2) removed and reserved, and note following para. (f) removed, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) removed and reserved, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (a) introductory text revised and para. (a)(5) added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (a)(1)(ii) revised and para. (a)(1)(iii) removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (d) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)(3)(ii) and (a)(3)(iii) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010; para. (a)(1)(ii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) introductory text and para. (d) revised, 86 FR 35229, July 2, 2021, effective July 2, 2021; para. (a) introductory text revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.2 Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

[top]

1.3 Business to be conducted with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.

[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]

[top]

1.4 Nature of correspondence and signature requirements.

• (a) Correspondence with the Patent and Trademark Office comprises:
  • (1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
  • (2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B of this part; of international applications in subpart C of this part; of ex parte reexaminations of patents in subpart D of this part; of supplemental examination of patents in subpart E of this part; of extension of patent term in subpart F of this part; of inter partes reexaminations of patents in subpart H of this part; of international design applications in subpart I of this part; and of the Patent Trial and Appeal Board in parts 41 and 42 of this chapter.
• (b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent application, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
• (c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.
• (d)
  • (1) Handwritten signature. A design patent practitioner must indicate their design patent practitioner status by placing the word "design" (in any format) adjacent to their handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2) through (4), (e), and (f) of this section, filed in an application, patent file, or other proceeding in the Office that requires a person’s signature, must:
    • (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, 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 Office may require submission of the original.
  • (2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d) , or via the USPTO patent electronic filing system as an attachment as provided in § 1.6(a)(4) , for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed ( i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
    • (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
    • (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to § 1.33(b)(1) or (2) , must supply their registration number either as part of the S-signature or immediately below or adjacent to the S-signature. The hash (#) character may only be used as part of the S-signature when appearing before a practitioner’s registration number; otherwise, the hash character may not be used in an S-signature. A design patent practitioner must additionally indicate their design patent practitioner status by placing the word "design" (in any format) adjacent to the last forward slash of their S-signature.
    • (iii) The signer’s name must be:
      • (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
      • (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
  • (3) Electronically submitted correspondence. Correspondence permitted via the USPTO patent electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the USPTO patent electronic filing system.
  • (4) Certifications—
    • (i) Certification as to the paper presented. 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 § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
    • (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
  • (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
• (e) [Reserved]
• (f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
• (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.
• (h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.

[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised & para. (g) added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)(2) and (d)(1) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d)(1)(iii)(A) amended, 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002; para. (d)(1)(iii)(B) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d)(1)(iii) removed and reserved, paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and (d)(1)(ii) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (d) and (e) revised and para. (h) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (d)(2) introductory text and paragraph (d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (d)(2) introductory text, (d)(3), and (d)(4)(ii) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; paras. (d)(3) and (d)(4)(i) revised, para. (d)(4)(ii)(C) added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d)(4)(i) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013; paras. (a)(2), (c) and (d) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a)(2) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (e) removed and reserved, 86 FR 35229, July 2, 2021, effective July 2, 2021; paras. (d)(2) and (d)(3) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022; para. (d)(1) intro. text and para. (d)(2)(ii) revised, 88 FR 78644, Nov. 16, 2023, effective Jan. 2, 2024]

[top]

1.5 Identification of patent, patent application, or patent-related proceeding.

• (a) No correspondence relating to an application should be filed prior to receipt of the assigned application number ( i.e., U.S. application number, international application number, or international registration number as appropriate). When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter, which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under § 1.8 or the Priority Mail Express ^® procedure under § 1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all correspondence directed to the Patent and Trademark Office concerning applications for patent should also state the name of the first listed inventor, the title of the invention, the date of filing the same, and if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the correspondence and the name of the examiner or other person to which it has been assigned.
• (b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c) .
• (c) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
• (d) A letter relating to a reexamination or supplemental examination proceeding should identify it as such by the number of the patent undergoing reexamination or supplemental examination, the request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
• (e) [Reserved]
• (f) When a paper concerns a provisional application, it should identify the application as such and include the application number.

[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May 29, 1981; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (c) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; section heading revised, para. (c) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (e) removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014; para. (a) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.6 Receipt of correspondence.

• (a) Date of receipt and Priority Mail Express ^® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
  • (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
  • (2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express ^® with the United States Postal Service.
  • (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
  • (4) Correspondence may be submitted using the USPTO patent electronic filing system only in accordance with the USPTO patent electronic filing system requirements. Correspondence officially submitted to the Office by way of the USPTO patent electronic filing system will be accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
• (b) [Reserved]
• (c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
• (d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination or supplemental examination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender’s identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
  • (1) [Reserved]
  • (2) Certified documents as specified in § 1.4(f) ;
  • (3) Correspondence that cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D), (F), (I), and (K) 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;
  • (4) Color drawings submitted under §§ 1.81 , 1.83 through 1.85 , 1.152 , 1.165 , 1.173 , 1.437 , or 1.1026 ;
  • (5) A request for reexamination under § 1.510 or § 1.913 , or a request for supplemental examination under § 1.610 ;
  • (6) Correspondence to be filed in an 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;
  • (7) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
• (e) [Reserved]
• (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 Director 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 Director 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.
• (g) Submission of the national stage correspondence required by § 1.495 via the USPTO patent electronic filing system. In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495 , which was submitted to the Office by the USPTO patent electronic filing system, the party who submitted the correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
  • (1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
    • (i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495 ;
    • (ii) Supplies an additional copy of the previously submitted correspondence;
    • (iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
    • (iv) Supplies a copy of an acknowledgment receipt generated by the USPTO patent electronic filing system, or equivalent evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
  • (2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para (a)(1) revised and para. (a)(4) added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; para.(d)(9) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(5) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) removed and reserved and paras. (e), (f) & (f)(1)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(4), (d)(7) and (d)(8) removed and reserved, and paras. (d), introductory text, (d)(3), and (d)(4) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (d)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d)(4) revised and para. (e) removed and reserved, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (a)(4) & (g) added, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (d)(3) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; ; paras. (d) introductory text and (d)(9) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (d) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (a) and (a)(2) revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014; paras. (d)(3)-(4) and (6) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (d)(1) removed and reserved, 86 FR 35226, July 2, 2021, effective July 2, 2021; paras. (a)(4), (g) and (g)(1)(iv) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.7 Times for taking action; Expiration on Saturday, Sunday or Federal holiday.

• (a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for time for appeal or for commencing civil action.
• (b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and § 1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 FR 4285, Jan. 31, 1983; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.8 Certificate of mailing or transmission.

• (a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
  • (1) Correspondence will be considered as being timely filed if:
    • (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
      • (A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail;
      • (B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d) ; or
      • (C) Transmitted via the USPTO patent electronic filing system in accordance with § 1.6(a)(4) ; and
    • (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
  • (2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
    • (i) Relative to Patents and Patent Applications—
      • (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) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
      • (C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106(f) of this title;
      • (D) The filing of an international application for patent;
      • (E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
      • (F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b) .
      • (G) The filing of a written declaration of abandonment under § 1.138 ;
      • (H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
      • (I) The filing of a third-party submission under § 1.290 ;
      • (J) The calculation of any period of adjustment, as specified in § 1.703(f) ; and
      • (K) The filing of an international design application.
    • (ii) [Reserved]
    • (iii) Relative to Disciplinary Proceedings—
      • (A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
      • (B) [Reserved]
• (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 U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c) , or a requester paper is refused consideration pursuant to § 1.957(a) , 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 that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. 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. If the correspondence was transmitted via the USPTO patent electronic filing system, a copy of an acknowledgment receipt generated by the USPTO patent electronic filing system confirming submission may be used to support this statement.
• (c) The Office may require additional evidence to determine if the correspondence was timely filed.

[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48 FR 2696, Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised; 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(2)(i)(F) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2)(ii) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2)(i)(B) removed and reserved and para. (a)(2)(i)(C) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; paras. (a)(1)(i) & (b)(3) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (b) introductory text revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (a)(2)(iii)(A) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a)(2)(i)(C) revised and paras. (a)(2)(i)(B) and (a)(2)(i)(G)-(J) added, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; paras. (a)(2)(i)(I)-(J) revised and para. (a)(2)(i)(K) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (a)(1)(i)(C) and (b)(3) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.9 Definitions.

• (a)
  • (1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111 , an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
  • (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b) .
  • (3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a) , an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
• (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
• (c) A published application as used in this chapter means an application for patent which has been published under 35 U.S.C. 122(b) .
• (d)
  • (1) The term inventor or inventorship as used in this chapter means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
  • (2) The term joint inventor or coinventor as used in this chapter means any one of the individuals who invented or discovered the subject matter of a joint invention.
• (e) The term joint research agreement as used in this chapter means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
• (f) The term claimed invention as used in this chapter means the subject matter defined by a claim in a patent or an application for a patent.
• (g) For definitions in Patent Trial and Appeal Board proceedings, see parts 41 and 42 of this title.
• (h) A Federal holiday within the District of Columbia as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.
• (i) National security classified as used in this chapter means specifically authorized under criteria established by an Act of Congress or Executive Order to be kept secret in the interest of national defense or foreign policy and, in fact, properly classified pursuant to such Act of Congress or Executive Order.
• (j) Director as used in this chapter, except for part 11 of this chapter, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
• (k) Paper as used in this chapter means a document that may exist in electronic form, or in physical form, and therefore does not necessarily imply physical sheets of paper.
• (l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
• (m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
• (n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
• (o) Eastern Time as used in this chapter means Eastern Standard Time or Eastern Daylight Time in the United States, as appropriate.

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (h) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (f) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (c)-(f) removed and reserved and para. (i) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (j) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (k) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (j) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (g) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a) and (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (d)-(f) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(1) and (3) revised and paras. (l)-(n) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (o) added, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.10 Filing of correspondence by Priority Mail Express ^®.

• (a)
  • (1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the Priority Mail Express ^® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
  • (2) The date of deposit with USPS is shown by the “date accepted” on the Priority Mail Express ^® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a) .
• (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express ^® mailing label with the “date accepted” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in a Priority Mail Express ^® drop box) do so at the risk of not receiving a copy of the Priority Mail Express ^® mailing label with the desired “date accepted” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the Priority Mail Express ^® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
• (c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express ^® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date accepted” on the Priority Mail Express ^® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date accepted” on the Priority Mail Express ^® mailing label or other official USPS notation, provided that:
  • (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
  • (2) The number of the Priority Mail Express ^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express ^®; and
  • (3) The petition includes a true copy of the Priority Mail Express ^® mailing label showing the “date accepted,” and of any other official notation by the USPS relied upon to show the date of deposit.
• (d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express ^® Post Office to Addressee service of the USPS, who can show that the “date accepted” on the Priority Mail Express ^® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director 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 Priority Mail Express ^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express ^®; and
  • (3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the Priority Mail Express ^® 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 Priority Mail Express ^® 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 Priority Mail Express ^® Post Office to Addressee service of the USPS but not received by the Office, may petition the Director 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 Priority Mail Express ^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express ^®;
  • (3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the Priority Mail Express ^® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express ^® mailing label showing the “date accepted,” 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 accepted” on the Priority Mail Express ^® 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 Priority Mail Express ^® 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 Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the Priority Mail Express ^® 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 Priority Mail Express ^® mailing label, returned postcard receipt, and official notation entered by the USPS.
• (f) The Office may require additional evidence to determine if the correspondence was deposited as Priority Mail Express ^® with the USPS on the date in question.
• (g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express ^® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in Priority Mail Express ^® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
  • (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
  • (2) The number of the Priority Mail Express ^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express ^®;
  • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express ^® mailing label thereon and a copy of the Priority Mail Express ^® mailing label showing the “date accepted”; and
  • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority Mail Express ^® service.
• (h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express ^® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express ^® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
  • (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
  • (2) The number of the Priority Mail Express ^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by Priority Mail Express ^®;
  • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express ^® mailing label thereon; and
  • (4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express ^® service.
• (i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express ^® service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
• • (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in Priority Mail Express ^® service;
  • (2) The petition includes the original correspondence or a copy of the original correspondence; and
  • (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in Priority Mail Express ^® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

[48 FR 2696, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a)-(c) revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 67 FR 36099, May 23, 2002, effective June 24, 2002; paras. (c), (d), (d)(3), (e) & (e)(4) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(1) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (g) through (i) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; revised, 79 FR 63036, Oct. 22, 2014, effective Oct. 22, 2014;]

[top]

1.11 Files open to the public.

• (a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2) . If an application was published in redacted form pursuant to § 1.217 , the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
• (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.
• (c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
• (d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
• (e) Except as prohibited in § 41.6(b) , § 42.14 or § 42.410(b) , the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17, 1995; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (e) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

[top]

1.12 Assignment records open to public inspection.

[Editor Note: Paras. (b) and (c)(2) below include changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a)
  • (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
  • (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
• (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
• (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14 , or any information with respect thereto, must:
  • (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
  • (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
• (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (b) and (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes to paras. (b) and (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.12 (pre‑AIA) for paras. (b) and (c)(2) otherwise in effect.]

[top]

1.12 (pre‑AIA) Assignment records open to public inspection.

[Editor Note: Applicable to patent applications filed before September 16, 2012 *]

• (a)
  • (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
  • (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
• (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
• (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14 , or any information with respect thereto, must:
  • (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
  • (2) Include written authority granting access to the member of the public to the particular assignment records from the applicant or applicant’s assignee or attorney or agent of record.
• (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

[*See § 1.12 for more information and the current rule, including paras. (b) and (c)(2) applicable to applications filed on or after Sept. 16, 2012]

[top]

1.13 Copies and certified copies.

• (a) Non-certified copies of patents, and patent application publications and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public, will be furnished by the United States Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the appropriate fee. See § 2.201 of this chapter regarding copies of trademark records.
• (b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy.

[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]

[top]

1.14 Patent applications preserved in confidence.

[Editor Note: Applicable to patent applications filed on or after September 16, 2012 *]

• (a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a) . Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
  • (1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
    • (i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11(a) . A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b) .
    • (ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a) . A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b) .
    • (iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b) . If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
    • (iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b) ).
    • (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b) ), if the benefit of the application is claimed under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b) ). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
    • (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b) ), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
    • (vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
  • (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
    • (i) Whether the application is pending, abandoned, or patented;
    • (ii) Whether the application has been published under 35 U.S.C. 122(b) ;
    • (iii) The application “numerical identifier” which may be:
      • (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
      • (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
    • (iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e) , 120 , 121 , 365 , or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b) .
• (b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
• (c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
  • (1) The applicant;
  • (2) A patent practitioner of record;
  • (3) The assignee or an assignee of an undivided part interest;
  • (4) The inventor or a joint inventor; or
  • (5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495 , if a power of attorney has not been appointed under § 1.32 .
• (d) Applications reported to Department of Energy. Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
• (e) Decisions by the Director. Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
  • (1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
  • (2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection.
• (f) Notice to inventor of the filing of an application. The Office may publish notice in the Official Gazette as to the filing of an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.
• (g) International applications.
  • (1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2) , or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3 , upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b) ), if:
    • (i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1) ), the international application was filed with the U.S. Receiving Office;
    • (ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1) ), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
    • (iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
  • (2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4) ).
  • (3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2) , or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 ter.1, 94.2 and 94.3 , upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
  • (4) In accordance with PCT Article 30 , copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2) .
  • (5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38 .
• (h) Access by a Foreign Intellectual Property Office.
  • (1) Access to an application-as-filed may be provided to any foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), if the application contains written authority granting such access. Written authority provided under this paragraph (h)(1) will be treated as authorizing the Office to provide the following to all participating foreign intellectual property offices in accordance with their respective agreements with the Office:
    • (i) A copy of the application-as-filed and its related bibliographic data;
    • (ii) A copy of the application-as-filed of any application the filing date of which is claimed by the application in which written authority under this paragraph (h)(1) is filed and its related bibliographic data; and
    • (iii) The date of filing of the written authorization under this paragraph (h)(1).
  • (2) Access to the file contents of an application may be provided to a foreign intellectual property office that has imposed a requirement for information on a counterpart application filed with the foreign intellectual property office where the foreign intellectual property office is a party to a bilateral or multilateral agreement with the Office to provide the required information from the application filed with the Office and the application contains written authority granting such access. Written authority provided under this paragraph (h)(2) will be treated as authorizing the Office to provide the following to all foreign intellectual property offices in accordance with their respective agreements with the Office:
    • (i) Bibliographic data related to the application; and
    • (ii) Any content of the application file necessary to satisfy the foreign intellectual property office requirement for information imposed on the counterpart application as indicated in the respective agreement.
  • (3) Written authority provided under paragraphs (h)(1) and (h)(2) of this section must include the title of the invention (§ 1.72(a) ), comply with the requirements of paragraph (c) of this section, and be submitted on an application data sheet (§ 1.76 ) or on a separate document (§ 1.4(c) ). The written authority provided under these paragraphs should be submitted before filing any subsequent foreign application in which priority is claimed to the application.
• (i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
  • (1) The fee set forth in § 1.17(g) ; and
  • (2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.
• (j) International design applications.
  • (1) With respect to an international design application maintained by the Office in its capacity as a designated office (§ 1.1003) for national processing, the records associated with the international design application may be made available as provided under paragraphs (a) through (i) of this section.
  • (2) With respect to an international design application maintained by the Office in its capacity as an office of indirect filing (§ 1.1002 ), the records of the international design application may be made available under paragraph (j)(1) of this section where contained in the file of the international design application maintained by the Office for national processing. Also, if benefit of the international design application is claimed under 35 U.S.C. 386(c) in a U.S. patent or published application, the file contents of the application may be made available to the public, or the file contents of the application, a copy of the application-as-filed, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b) ).

[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) added, 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; para. (e), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b) and (e) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised & para. (f) added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (g) added, 63 FR 29614, June 1, 1998, effective July 1, 1998, (adopted as final, 63 FR 66040, Dec. 1, 1998); revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (b), (c), (e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 18, 2000; para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (d)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (g) & (g)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (g)(1)(ii) & (g)(3) revised, 68 FR 59881, Oct. 20, 2003, effective Jan. 1, 2004; para. (g)(1)(ii) corrected, 68 FR 67805, Dec., 4, 2003; para. (g)(5) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004; para. (g)(2) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (h)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii), (a)(2) introductory text, & (b) revised, para. (h) redesignated as para. (i) and para. (h) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; paras. (c) and (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(f) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(1)(ii)-(vii) and (a)(2)(iv) revised and para. (j) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para (h) revised, 80 FR 65649, Oct. 27, 2015, effective Nov. 30, 2015]

[*The changes to paras. (c) and (f) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.14 (pre‑AIA) for paras. (c) and (f) otherwise in effect.]

[top]

1.14 (pre‑AIA) Patent applications preserved in confidence.

[Editor Note: Applicable to patent applications filed before September 16, 2012 *]

• * * * * *
• (c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
  • (1) An applicant;
  • (2) An attorney or agent of record;
  • (3) An authorized official of an assignee of record (made of record pursuant to § 3.71 of this chapter); or
  • (4) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495 , if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.
• * * * * *
• (f) Publication pursuant to § 1.47. Information as to the filing of an application will be published in the Official Gazette in accordance with § 1.47(c) .
• * * * * *

[*See § 1.14 for the current rule, including the portions of the rule not reproduced above and applicable irrespective of the filing date of the application]

[top]

1.15 [Reserved]

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988; removed and reserved, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

[top]

1.16 National application filing, search, and examination fees.

[Editor Note: The amendment adding paragraph (u) is effective on January 17, 2024.]

• (a) Basic fee for filing each application under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

  TABLE 1 TO PARAGRAPH (a)

  • By a micro entity (§ 1.29)......$64.00

  • By a small entity (§ 1.27(a))......128.00

  • By a small entity (§ 1.27(a)) if the application is submitted in compliance with the USPTO patent electronic filing system (§ 1.27(b)(2))......64.00

  • By other than a small or micro entity......320.00

• (b) Basic fee for filing each application under 35 U.S.C. 111 for an original design patent:

  TABLE 2 TO PARAGRAPH (b)

  • By a micro entity (§ 1.29)......$44.00

  • By a small entity (§ 1.27(a))......88.00

  • By other than a small or micro entity......220.00

• (c) Basic fee for filing each application for an original plant patent:

  TABLE 3 TO PARAGRAPH (c)

  • By a micro entity (§ 1.29)......$44.00

  • By a small entity (§ 1.27(a))......88.00

  • By other than a small or micro entity......220.00

• (d) Basic fee for filing each provisional application:

  TABLE 4 TO PARAGRAPH (d)

  • By a micro entity (§ 1.29)......$60.00

  • By a small entity (§ 1.27(a))......120.00

  • By other than a small or micro entity......300.00

• (e) Basic fee for filing each application for the reissue of a patent:

  TABLE 5 TO PARAGRAPH (e)

  • By a micro entity (§ 1.29)......$64.00

  • By a small entity (§ 1.27(a))......128.00

  • By other than a small or micro entity......320.00

• (f) Surcharge for filing the basic filing fee, search fee, examination fee, or the inventor’s oath or declaration on a date later than the filing date of the application, an application that does not contain at least one claim on the filing date of the application, or an application filed by reference to a previously filed application under § 1.57(a) , except provisional applications:

  TABLE 6 TO PARAGRAPH (f)

  • By a micro entity (§ 1.29)......$32.00

  • By a small entity (§ 1.27(a))......64.00

  • By other than a small or micro entity......160.00

• (g) 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:

  TABLE 7 TO PARAGRAPH (g)

  • By a micro entity (§ 1.29)......$12.00

  • By a small entity (§ 1.27(a))......24.00

  • By other than a small or micro entity......60.00

• (h) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim in independent form in excess of 3:

  TABLE 8 TO PARAGRAPH (h)

  • By a micro entity (§ 1.29)......$96.00

  • By a small entity (§ 1.27(a))......192.00

  • By other than a small or micro entity......480.00

• (i) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):

  TABLE 9 TO PARAGRAPH (i)

  • By a micro entity (§ 1.29)......$20.00

  • By a small entity (§ 1.27(a))......40.00

  • By other than a small or micro entity......100.00

• (j) In addition to the basic filing fee in an application, other than a provisional application, that contains, or is amended to contain, a multiple dependent claim, per application:

  TABLE 10 TO PARAGRAPH (j)

  • By a micro entity (§ 1.29)......$172.00

  • By a small entity (§ 1.27(a))......344.00

  • By other than a small or micro entity......860.00

• (k) Search fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

  TABLE 11 TO PARAGRAPH (k)

  • By a micro entity (§ 1.29)......$140.00

  • By a small entity (§ 1.27(a))......280.00

  • By other than a small or micro entity......700.00

• (l) Search fee for each application under 35 U.S.C. 111 for an original design patent:

  TABLE 12 TO PARAGRAPH (l)

  • By a micro entity (§ 1.29)......$32.00

  • By a small entity (§ 1.27(a))......64.00

  • By other than a small or micro entity......160.00

• (m) Search fee for each application for an original plant patent:

  TABLE 13 TO PARAGRAPH (m)

  • By a micro entity (§ 1.29)......$88.00

  • By a small entity (§ 1.27(a))......176.00

  • By other than a small or micro entity......440.00

• (n) Search fee for each application for the reissue of a patent:

  TABLE 14 TO PARAGRAPH (n)

  • By a micro entity (§ 1.29)......$140.00

  • By a small entity (§ 1.27(a))......280.00

  • By other than a small or micro entity......700.00

• (o) Examination fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

  TABLE 15 TO PARAGRAPH (o)

  • By a micro entity (§ 1.29)......$160.00

  • By a small entity (§ 1.27(a))......320.00

  • By other than a small or micro entity......800.00

• (p) Examination fee for each application under 35 U.S.C. 111 for an original design patent:

  TABLE 16 TO PARAGRAPH (p)

  • By a micro entity (§ 1.29)......$128.00

  • By a small entity (§ 1.27(a))......256.00

  • By other than a small or micro entity......640.00

• (q) Examination fee for each application for an original plant patent:

  TABLE 17 TO PARAGRAPH (q)

  • By a micro entity (§ 1.29)......$132.00

  • By a small entity (§ 1.27(a))......264.00

  • By other than a small or micro entity......660.00

• (r) Examination fee for each application for the reissue of a patent:

  TABLE 18 TO PARAGRAPH (r)

  • By a micro entity (§ 1.29)......$464.00

  • By a small entity (§ 1.27(a))......928.00

  • By other than a small or micro entity......2,320.00

• (s) Application size fee for any application filed under 35 U.S.C.111 for the specification and drawings which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:

  TABLE 19 TO PARAGRAPH (s)

  • By a micro entity (§ 1.29)......$84.00

  • By a small entity (§ 1.27(a))......168.00

  • By other than a small or micro entity......420.00

• (t) Non-electronic filing fee for any application under 35 U.S.C. 111(a) that is filed on or after November 15, 2011, other than by the USPTO patent electronic filing system, except for a reissue, design, or plant application:

  TABLE 20 TO PARAGRAPH (t)

  • By a small entity (§ 1.27(a))......$200.00

  • By other than a small entity......$400.00

• (u) Additional fee for any application filed on or after January 17, 2024 under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications, where the specification, claims, and/or abstract does not conform to the USPTO requirements for submission in DOCX format:

  TABLE 21 TO PARAGRAPH (u)

  • By a micro entity (§ 1.29)......$80.00

  • By a small entity (§ 1.27(a))......160.00

  • By a small entity (§ 1.27(a)) if the application is submitted in compliance with the USPTO patent electronic filing system (§ 1.27(b)(2))......160.00

  • By other than a small or micro entity......400.00

[Added, 47 FR 41272, Sept. 17, 1982, effective date Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b), (d)-(i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)-(g) amended and paras. (k) and (l) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (b), (d), and (f)-(i) amended and para. (m) added, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d), and (f)-(i) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d) & (l) amended, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(d) and (f)-(j) revised, 63 FR 6758, Dec. 8, 1998, effective Nov. 10, 1998; paras. (a) and (b) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (a)-(l) revised, 65 FR 78958, Dec. 18, 2000; paras. (a), (b), (d), (f)-(i) and (k) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a), (g), and (h) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (f) and (s) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (a)-(e) and (h)-(s) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(e), (h)-(k), and (m)-(s) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (t) added, 76 FR 70651, Nov. 15, 2011, effective Nov. 15, 2011; para. (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a)-(e), (h)-(j), and (o)-(s) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras. (a)-(s) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; introductory text of paras. (b), (l), and (p) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (a)-(f) and (h)-(r) revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; paras. (a)-(e), (h), (j), (k), and (m)-(s) revised and table headings added to paras. (f), (g), (i), (l), and (t), 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020; para. (u) added, 85 FR 46932, Aug. 3, 2020, effective Jan. 1, 2022; para. (u) effective date delayed, 86 FR 66192, Nov. 22, 2021, effective Jan. 1, 2023; paras. (a), (t), and (u) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022; para. (u) effective date delayed, 87 FR 80073, Dec. 29, 2022, effective Apr. 3, 2023; revised tables in paras. (a) through (s), 88 FR 17147, Mar. 22, 2023, effective Mar. 22, 2023; revised para. (u), 88 FR 17147, Mar. 22, 2023, effective Apr. 3, 2023; para. (u) effective date delayed, 88 FR 18052, Mar. 27, 2023, effective June 30, 2023; para. (u) effective date delayed, 88 FR 36956, June 6, 2023, effective Jan. 17, 2024]

[top]

1.17 Patent application and reexamination processing fees.

• (a) Extension fees pursuant to § 1.136(a) :
  • (1) For reply within first month:

    TABLE 1 TO PARAGRAPH (a)(1)

    • By a micro entity (§ 1.29)......$44.00

    • By a small entity (§ 1.27(a))......88.00

    • By other than a small or micro entity......220.00

  • (2) For reply within second month:

    TABLE 2 TO PARAGRAPH (a)(2)

    • By a micro entity (§ 1.29)......$128.00

    • By a small entity (§ 1.27(a))......256.00

    • By other than a small or micro entity......$640.00

  • (3) For reply within third month:

    TABLE 3 TO PARAGRAPH (a)(3)

    • By a micro entity (§ 1.29)......$296.00

    • By a small entity (§ 1.27(a))......592.00

    • By other than a small or micro entity......1,480.00

  • (4) For reply within fourth month:

    TABLE 4 TO PARAGRAPH (a)(4)

    • By a micro entity (§ 1.29)......$464.00

    • By a small entity (§ 1.27(a))......928.00

    • By other than a small or micro entity......$2,320.00

  • (5) For reply within fifth month:

    TABLE 5 TO PARAGRAPH (a)(5)

    • By a micro entity (§ 1.29)......$632.00

    • By a small entity (§ 1.27(a))......1,264.00

    • By other than a small or micro entity......3,160.00

• (b) For fees in proceedings before the Patent Trial and Appeal Board, see § 41.20 and § 42.15 of this title.
• (c) For filing a request for prioritized examination under § 1.102(e) :

  TABLE 6 TO PARAGRAPH (c)

  • By a micro entity (§ 1.29)......$840.00

  • By a small entity (§ 1.27(a))......1,680.00

  • By other than a small or micro entity ......4,200.00

• (d) For correction of inventorship in an application after the first action on the merits:

  TABLE 7 TO PARAGRAPH (d)

  • By a micro entity (§ 1.29)......$128.00

  • By a small entity (§ 1.27(a))......256.00

  • By other than a small or micro entity......640.00

• (e) To request continued examination pursuant to § 1.114 :
  • (1) For filing a first request for continued examination pursuant to § 1.114 in an application:

    TABLE 8 TO PARAGRAPH (e)(1)

    • By a micro entity (§ 1.29)......$272.00

    • By a small entity (§ 1.27(a)) ......544.00

    • By other than a small or micro entity......1,360.00

  • (2) For filing a second or subsequent request for continued examination pursuant to § 1.114 in an application:

    TABLE 9 TO PARAGRAPH (e)(2)

    • By a micro entity (§ 1.29)......$400.00

    • By a small entity (§ 1.27(a))......800.00

    • By other than a small or micro entity......2,000.00

• (f) For filing a petition under one of the following sections which refers to this paragraph (f):

  TABLE 10 TO PARAGRAPH (f)

  • By a micro entity (§ 1.29)......$84.00

  • By a small entity (§ 1.27(a))......168.00

  • By other than a small or micro entity......420.00

  § 1.36(a) —for revocation of a power of attorney by fewer than all of the applicants.

  § 1.53(e) —to accord a filing date.

  § 1.182 —for a decision on a question not specifically provided for in an application for a patent.

  § 1.183 —to suspend the rules in an application for a patent.

  § 1.741(b) —to accord a filing date to an application under § 1.740 for an extension of a patent term.

  § 1.1023 —to review the filing date of an international design application.

• (g) For filing a petition under one of the following sections which refers to this paragraph (g):

  TABLE 11 TO PARAGRAPH (g)

  • By a micro entity (§ 1.29)......$44.00

  • By a small entity (§ 1.27(a))......88.00

  • By other than a small or micro entity......220.00

  § 1.12 —for access to an assignment record.

  § 1.14 —for access to an application.

  § 1.46 —for filing an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.

  § 1.55(f) —for filing a belated certified copy of a foreign application.

  § 1.55(g) —for filing a belated certified copy of a foreign application.

  § 1.57(a) —for filing a belated certified copy of a foreign application.

  § 1.59 —for expungement of information.

  § 1.103(a) —to suspend action in an application.

  § 1.136(b) —for review of a request for an extension of time when the provisions of § 1.136(a) are not available.

  § 1.377 —for review of a decision refusing to accept and record payment of a maintenance fee filed prior to the expiration of a patent.

  § 1.550(c) —for patent owner requests for an extension of time in ex parte reexamination proceedings.

  § 1.956 —for patent owner requests for an extension of time in inter partes reexamination proceedings.

  § 5.12 of this chapter—for expedited handling of a foreign filing license.

  § 5.15 of this chapter—for changing the scope of a license.

  § 5.25 of this chapter—for a retroactive license.

• (h) For filing a petition under one of the following sections that refers to this paragraph (h):

  TABLE 12 TO PARAGRAPH (h)

  • By a micro entity (§ 1.29)......$28.00

  • By a small entity (§ 1.27(a))......56.00

  • By other than a small or micro entity......140.00

  § 1.84 —for accepting color drawings or photographs.

  § 1.91 —for entry of a model or exhibit.

  § 1.102(d) —to make an application special.

  § 1.138(c) —to expressly abandon an application to avoid publication.

  § 1.313 —to withdraw an application from issue.

  § 1.314 —to defer issuance of a patent.

• (i) Processing fees.
  • (1) For taking action under one of the following sections that refers to this paragraph (i)(1):

    TABLE 13 TO PARAGRAPH (i)(1)

    • By a micro entity (§ 1.29)......$28.00

    • By a small entity (§ 1.27(a))......56.00

    • By other than a small or micro entity......140.00

    § 1.28(c)(3) —for processing a non-itemized fee deficiency based on an error in small entity status.

    § 1.29(k)(3) —for processing a non-itemized fee deficiency based on an error in micro entity status.

    § 1.41(b) —for supplying the name or names of the inventor or joint inventors in an application without either an application data sheet or the inventor’s oath or declaration, except in provisional applications.

    § 1.48 —for correcting inventorship, except in provisional applications.

    § 1.52(d) —for processing a nonprovisional application filed with a specification in a language other than English.

    § 1.53(c)(3) —to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b) .

    § 1.71(g)(2) —for processing a belated amendment under § 1.71(g) .

    § 1.102(e) —for requesting prioritized examination of an application.

    § 1.103(b) —for requesting limited suspension of action, continued prosecution application for a design patent (§ 1.53(d) ).

    § 1.103(c) —for requesting limited suspension of action, request for continued examination (§ 1.114 ).

    § 1.103(d) —for requesting deferred examination of an application.

    § 1.291(c)(5) —for processing a second or subsequent protest by the same real party in interest.

    § 3.81 —for a patent to issue to assignee, assignment submitted after payment of the issue fee.

  • (2) For taking action under one of the following sections that refers to this paragraph (i)(2):

    TABLE 14 TO PARAGRAPH (i)(2)

    • By a micro entity (§ 1.29......$140.00

    • By a small entity (§ 1.27(a))......140.00

    • By other than a small or micro entity......140.00

    § 1.217 —for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.

    § 1.221 —for requesting voluntary publication or republication of an application.

• (j) [Reserved]
• (k) For filing a request for expedited examination under § 1.155(a) :

  TABLE 15 TO PARAGRAPH (k)

  • By a micro entity (§ 1.29)......$320.00

  • By a small entity (§ 1.27(a))......640.00

  • By other than a small or micro entity......1,600.00

• (l) [Reserved]
• (m) For filing a petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, for the extension of the 12-month (six-month for designs) period for filing a subsequent application (§§ 1.55(c) and (e) , 1.78(b) , (c) , and (e) ; 1.137 ; 1.378 ; and 1.452 ), or for filing a petition to excuse applicant’s failure to act within prescribed time limits in an international design application ( § 1.1051 ):

  TABLE 16 TO PARAGRAPH (m)

  • By a micro entity (§ 1.29)......$420.00

  • By a small entity (§ 1.27(a))......840.00

  • By other than a small or micro entity......2,100.00

• (n) [Reserved]
• (o) For every ten items or fraction thereof in a third-party submission under § 1.290 :

  TABLE 17 TO PARAGRAPH (o)

  • By a small entity (§ 1.27(a)) or micro entity (§ 1.29)......$72.00

  • By other than a small or micro entity......$180.00

• (p) For an information disclosure statement under § 1.97(c) or (d) :

  TABLE 18 TO PARAGRAPH (p)

  • By a micro entity (§ 1.29)......$52.00

  • By a small entity (§ 1.27(a))......104.00

  • By other than a small or micro entity......260.00

• (q)

  Processing fee for taking action under one of the following sections that refers to this paragraph (q):......$50.00.

  • § 1.41 —to supply the name 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(c)(2) —to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c) .
• (r) For entry of a submission after final rejection under § 1.129(a) :

  TABLE 19 TO PARAGRAPH (r)

  • By a micro entity (§ 1.29)......$176.00

  • By a small entity (§ 1.27(a))......352.00

  • By other than a small or micro entity......880.00

• (s) For each additional invention requested to be examined under § 1.129(b) :

  TABLE 20 TO PARAGRAPH (s)

  • By a micro entity (§ 1.29)......$176.00

  • By a small entity (§ 1.27(a))......352.00

  • By other than a small or micro entity......880.00

• (t) For filing a petition to convert an international design application to a design application under 35 U.S.C. chapter 16 (§ 1.1052 ):

  TABLE 21 TO PARAGRAPH (t)

  • By a micro entity (§ 1.29)......$36.00

  • By a small entity (§ 1.27(a))......72.00

  • By other than a small or micro entity......180.00

[Added 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (h), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and (c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)-(m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para. (i)(1), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (p) added, 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR 32439, July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and paras. (q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a) - (d), (h), (i) & (q) revised, paras. (e)-(g) reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected, 62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997; paras. (a)-(d), (l) and (m) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; paras. (r) and (s) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; paras. (r) and (s) revised, 64 FR 67774, Dec. 3, 1999, effective Jan. 10, 2000; para. (e) added and para. (i) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)-(e), (m), (r) and (s) revised, 65 FR 49193, August 11, 2000, effective October 1, 2000; paras. (h), (i), (k), (l), (m), (p), and (q) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and paras. (h), (i), (l), (m) and (p) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (t) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(e), (r) and (s) revised, 65 FR 78958, Dec. 18, 2000; heading and para. (h) revised, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)-(e), (m) and (r)-(t) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)(2)-(a)(5), (e), (m), and (r) through (t) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (a)(2)-(a)(5), (b)-(e), (m), and (r)-(t) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (c) and (d) removed and reserved and paras. (b) and (h) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(2)-(a)(5), (e), (m), and (r)-(t) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (f) and (g) added and paras. (h) and (i) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a), (l) and (m) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (i) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (f) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (l) & (m) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a)(2)-(a)(5), (e), (l), (m), and (r)-(t) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)(4) and (a)(5) corrected, 72 FR 55055, Sept. 28, 2007, effective Sept. 30, 2007; para. (f) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (t) revised, 72 FR 51559, Sept. 10, 2007, and corrected 72 FR 57864, Oct. 11, 2007, effective Nov. 9, 2007; paras. (a), (l), and (m) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (f) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) added and para. (i) revised, 76 FR 18399, Apr. 4, 2011, effective date delayed until further notice, 76 FR 23876, Apr. 29, 2011 and withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para. (c) added and para. (i) revised, 76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (j) removed and reserved and para. (p) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (g) and (i) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (l), and (m) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras.(g) and (i) revised and paras. (n) and (o) removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)-(i), (k)-(m), and (p)-(t) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised, 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013; paras. (f), (g), (m), and (p) revised, para. (o) added and paras. (l) and (t) removed and reserved, 78 FR 62368, Oct. 21, 2013, corrected 78 FR 75251, Dec. 11, 2013, effective Dec. 18, 2013; paras. (f), (g), (i)(1) and (m) revised and para. (t) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (e), (h), (m), (p) and (t) revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; paras. (a), (c)-(h), (i)(1), (i)(2), (k), (m), and (p)-(s) revised and table headings added to paras. (o) and (t), 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020; paras. (a)(2), (f), (g), (i)(2), and (q) corrected, 85 FR 58282, Sept. 18, 2020, effective Oct. 2, 2020; revised tables in paras. (a)(1) through (5), (c), (d), (e)(1) and (2), (f) through (h), (i)(1), (k), (m), (o), (p), and (r) through (t), 88 FR 17417, Mar. 22, 2023, effective Mar. 22, 2023]

[top]

1.18 Patent post allowance (including issue) fees.

• (a) Issue fee for issuing each original patent, except a design or plant patent, or for issuing each reissue patent:

  TABLE 1 TO PARAGRAPH (a)

  • By a micro entity (§ 1.29)......$240.00

  • By a small entity (§ 1.27(a))......480.00

  • By other than a small or micro entity......1,200.00

• (b)
  • (1) Issue fee for issuing an original design patent:

    TABLE 2 TO PARAGRAPH (b)(1)

    • By a micro entity (§ 1.29)......$148.00

    • By a small entity (§ 1.27(a))......296.00

    • By other than a small or micro entity......740.00

  • (2) [Reserved]
  • (3) Issue fee for issuing an international design application designating the United States, where the issue fee is paid through the International Bureau (Hague Agreement Rule 12(3)(c)) as an alternative to paying the issue fee under paragraph (b)(1) of this section: The amount established in Swiss currency pursuant to Hague Agreement Rule 28 as of the date of mailing of the notice of allowance (§ 1.311 ).
• (c) Issue fee for issuing an original plant patent:

  TABLE 3 TO PARAGRAPH (c)

  • By a micro entity (§ 1.29)......$168.00

  • By a small entity (§ 1.27(a))......336.00

  • By other than a small or micro entity......840.00

• (d)
  • (1)

    Publication fee on or after January 1, 2014......$0.00

  • (2)

    Publication fee before January 1, 2014......300.00

  • (3)

    Republication fee (§ 1.221(a))......$320.00

• (e)

  For filing an application for patent term adjustment under § 1.705......210.00

• (f)

  For filing a request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) in an application for a patent term adjustment under § 1.705......420.00

[Added, 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; amended, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; heading revised and paras. (d)-(f) added, 65 FR 56366, Sept. 18, 2000, effective Nov. 17, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(c) revised, 65 FR 78958, Dec. 18, 2000; paras. (a)-(c) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)-(c) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a)-(c) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a)-(c) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (a)-(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (a)-(c) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(c) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)-(c) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (b)(3) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (a)-(c) revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; paras. (a), (b)(1), (c), (d)(3), (e), and (f) revised, 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020; paras. (d)(3), (e), and (f) corrected, 85 FR 58282, Sept. 18, 2020, effective Oct. 2, 2020; revised tables in paras. (a), (b)(1) and (c), 88 FR 17147, Mar. 22, 2023, effective Mar. 22, 2023]

[top]

1.19 Document supply fees.

The United States Patent and Trademark Office will supply copies of the following patent-related documents upon payment of the fees indicated. Paper copies will be in black and white unless the original document is in color, a color copy is requested and the fee for a color copy is paid.

• (a) Uncertified copies of patent application publications and patents:
  • (1)

    Printed copy of the paper portion of a patent application publication or patent, including a design patent, statutory invention registration, or defensive publication document. Service includes preparation of copies by the Office within two to three business days and delivery by United States Postal Service; and preparation of copies by the Office within one business day of receipt and delivery to an Office Box or by electronic means (e.g., facsimile, electronic mail):......$3.00.

  • (2)

    Printed copy of a plant patent in color:......$15.00.

  • (3)

    Color copy of a patent (other than a plant patent) or statutory invention registration containing a color drawing:...... $25.00.

• (b) Copies of Office documents to be provided in paper, or in electronic form, as determined by the Director (for other patent-related materials see § 1.21(k) ):
  • (1) Copy of a patent application as filed, or a patent-related file wrapper and contents, stored in paper in a paper file wrapper, in an image format in an image file wrapper, or if color documents, stored in paper in an Artifact Folder:
    • (i) If provided on paper:
      • (A)

        Application as filed: ......$35.00.

      • (B)

        Copy Patent File Wrapper, Any Number of Sheets:......$290.00

      • (C) [Reserved]
      • (D)

        Individual application documents, other than application as filed, per document:......$25.00.

    • (ii) If provided on compact disc or other physical electronic medium in single order or if provided electronically ( e.g., by electronic transmission) other than on a physical electronic medium:
      • (A)

        Application as filed:......$35.00.

      • (B)

        Copy Patent File Wrapper, Electronic, Any Size:......$60.00

      • (C) [Reserved]
    • (iii) [Reserved]
    • (iv)

      If provided to a foreign intellectual property office pursuant to a bilateral or multilateral agreement (see § 1.14(h)):......$0.00.

  • (2) [Reserved]
  • (3)

    Copy of Office records, except copies available under paragraph (b)(1) or (2) of this section:......$25.00.

  • (4)

    For assignment records, abstract of title and certification, per patent:......$35.00.

• (c)

  Library service (35 U.S.C. 13): For providing to libraries copies of all patents issued annually, per annum:...... $50.00.

• (d) [Reserved]
• (e) [Reserved]
• (f)

  Uncertified copy of a non-United States patent document, per document:......$25.00.

• (g) [Reserved]
• (h)

  Copy of Patent Grant Single-Page TIFF Images (52 week subscription):......$10,400.00.

• (i)

  Copy of Patent Grant Full-Text W/ Embedded Images, Patent Application Publication Single-Page TIFF Images, or Patent Application Publication Full-Text W/Embedded Images (52 week subscription):......$5,200.00.

[Added 47 FR 41272, Sept. 17, 1982, effective date Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and (g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989, revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (b)(4), (f) and (h), 57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992; para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a)(1)(i) through (a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective Dec. 2, 1999; introductory text and paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (g) and (h) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (b)(1) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; introductory text and para. (b) revised and para. (g) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b)(1)(iv) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (b)(1)(iv) revised, 80 FR 65649, Oct. 27, 2015, effective Nov. 30, 2015; para. (b) revised, paras. (d), (e) and (g) removed and reserved, and paras. (h)-(l) added, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; paras. (b)(1)(i)(B) and (b)(1)(ii)(B) revised and paras. (j)-(l) removed, 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020]

[top]

1.20 Post-issuance fees.

• (a)

  For providing a certificate of correction for applicant’s mistake (§ 1.323):......$160.00

• (b)

  Processing fee for correcting inventorship in a patent (§ 1.324):......$160.00

• (c) In reexamination proceedings:
  • • (1)(i) For filing a request for ex parte reexamination (§ 1.510(a) ) having:
      • (A) 40 or fewer pages;
      • (B) Lines that are double-spaced or one-and-a-half spaced;
      • (C) Text written in a non-script type font such as Arial, Times New Roman, or Courier;
      • (D) A font size no smaller than 12 point;
      • (E) Margins that conform to the requirements of § 1.52(a)(1)(ii) ; and
      • (F) Sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition.

      TABLE 1 TO PARAGRAPH (c)(1)(i)

      • By a micro entity (§ 1.29)......$1,260.00

      • By a small entity (§ 1.27(a))......2,520.00

      • By other than a small or micro entity......6,300.00

  • (ii) The following parts of an ex parte reexamination request are excluded from paragraphs (c)(1)(i)(A) through (F) of this section:
    • (A) The copies of every patent or printed publication relied upon in the request pursuant to § 1.510(b)(3) ;
    • (B) The copy of the entire patent for which reexamination is requested pursuant to § 1.510(b)(4) ; and
    • (C) The certifications required pursuant to § 1.510(b)(5) and (6) .
  • (2) For filing a request for ex parte reexamination (§ 1.510(b) ) that has sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition, and which otherwise does not comply with the provisions of paragraph (c)(1) of this section:

    TABLE 2 TO PARAGRAPH (c)(2)

    • By a micro entity (§ 1.29)......$2,520.00

    • By a small entity (§ 1.27(a))......5,040.00

    • By other than a small or micro entity......12,600.00

  • (3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of three and also in excess of the number of claims in independent form in the patent under reexamination:

    TABLE 3 TO PARAGRAPH (c)(3)

    • By a micro entity (§ 1.29)......$96.00

    • By a small entity (§ 1.27(a))......192.00

    • By other than a small or micro entity ......480.00

  • (4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):

    TABLE 4 TO PARAGRAPH (c)(4)

    • By a micro entity (§ 1.29)......$20.00

    • By a small entity (§ 1.27(a))......40.00

    • By other than a small or micro entity......100.00

  • (5) If the excess claims fees required by paragraphs (c)(3) and (4) of this section are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by paragraphs (c)(3) and (4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
  • (6) For filing a petition in a reexamination proceeding, except for those specifically enumerated in §§ 1.550(i) and 1.937(d) :

    TABLE 5 TO PARAGRAPH (c)(6)

    • By a micro entity (§ 1.29)......$408.00

    • By a small entity (§ 1.27(a))......816.00

    • By other than a small or micro entity......2,040.00

  • (7) For a refused request for ex parte reexamination under § 1.510 (included in the request for ex parte reexamination fee at § 1.20(c)(1) or (2) ):

    TABLE 6 TO PARAGRAPH (c)(7)

    • By a micro entity (§ 1.29)......$756.00

    • By a small entity (§ 1.27(a))......1,512.00

    • By other than a small or micro entity......3,780.00

• (d)

  For filing each statutory disclaimer (§ 1.321):......$170.00

• (e) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond four years, the fee being due by three years and six months after the original grant:

  TABLE 7 TO PARAGRAPH (e)

  • By a micro entity (§ 1.29)......$400.00

  • By a small entity (§ 1.27(a))......800.00

  • By other than a small or micro entity......2,000.00

• (f) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond eight years, the fee being due by seven years and six months after the original grant:

  TABLE 8 TO PARAGRAPH (f)

  • By a micro entity (§ 1.29)......$752.00

  • By a small entity (§ 1.27(a))......1,504.00

  • By other than a small or micro entity......3,760.00

• (g) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond twelve years, the fee being due by eleven years and six months after the original grant:

  TABLE 9 TO PARAGRAPH (g)

  • By a micro entity (§ 1.29)......$1,540.00

  • By a small entity (§ 1.27(a))......3,080.00

  • By other than a small or micro entity......7,700.00

• (h) Surcharge for paying a maintenance fee during the six-month grace period following the expiration of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application filed on or after December 12, 1980:

  TABLE 10 TO PARAGRAPH (h)

  • By a micro entity (§ 1.29)......$100.00

  • By a small entity (§ 1.27(a))......200.00

  • By other than a small or micro entity......500.00

• (i) [Reserved]
• (j) For filing an application for extension of the term of a patent:

  TABLE 11 TO PARAGRAPH (j)

  • (1)

    Application for extension under § 1.740......$1,180.00

  • (2)

    Initial application for interim extension under § 1.790......440.00

  • (3)

    Subsequent application for interim extension under § 1.790......230.00

• (k) In supplemental examination proceedings:
  • (1) For processing and treating a request for supplemental examination:

    TABLE 12 TO PARAGRAPH (k)(1)

    • By a micro entity (§ 1.29)......$924.00

    • By a small entity (§ 1.27(a))......1,848.00

    • By other than a small or micro entity......4,620.00

  • (2) For ex parte reexamination ordered as a result of a supplemental examination proceeding:

    TABLE 13 TO PARAGRAPH (k)(2)

    • By a micro entity (§ 1.29)......$2,540.00

    • By a small entity (§ 1.27(a))......5,080.00

    • By other than a small or micro entity......12,700.00

  • (3) For processing and treating, in a supplemental examination proceeding, a non-patent document over 20 sheets in length, per document:
    • (i) Between 21 and 50 sheets:

      TABLE 14 TO PARAGRAPH (k)(3)(i)

      • By a micro entity (§ 1.29)......$36.00

      • By a small entity (§ 1.27(a))......72.00

      • By other than a small or micro entity......180.00

    • (ii) For each additional 50 sheets or a fraction thereof:

      TABLE 15 TO PARAGRAPH (k)(3)(ii)

      • By a micro entity (§ 1.29)......$60.00

      • By a small entity (§ 1.27(a))......120.00

      • By other than a small or micro entity......300.00

[Added 47 FR 41272, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985, effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (e) -(g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d)-(g) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. (e) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (e)-(g) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (b) and (d)-(h) revised, 65 FR 78958, Dec. 18, 2000; para. (b) corrected, 65 FR 80755, Dec. 22, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (e)-(g) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (e)-(g) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (i) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (e)-(g) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (e)-(g) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(3), (c)(4), and (e)-(g) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (c)(3),(c)(4), and (d)-(g) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (c)(1) revised and paras. (c)(6), (c)(7), and (k) added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c)(3), (c)(4), and (d)-(g) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013; para. (i) removed and reserved, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (a)-(c) and (e)-(g) revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; revised, 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020; paras. (c)(1)(i)(A)-(F), (c)(1)(ii)(A)-(C), and (c)(7) corrected, 85 FR 58282, Sept. 18, 2020, effective Oct. 2, 2020; revised tables in paras. (c)(1)(i), (c)(2) through (4), (c)(6) and (7), (e) through (h), (k)(1) and (2), and (k)(3)(i) and (ii), 88 FR 17147, Mar. 22, 2023, effective Mar. 22, 2023]

[top]

1.21 Miscellaneous fees and charges.

The Patent and Trademark Office has established the following fees for the services indicated:

• (a) Registration of attorneys and agents:
  • (1) For admission to examination for registration to practice:
    • (i)

      Application Fee (non-refundable):......$110.00

    • (ii) Registration examination fee
      • (A)

        For test administration by commercial entity:......$210.00

      • (B) [Reserved]
    • (iii)

      For USPTO-administered review of registration examination:......$470.00

    • (iv)

      Request for extension of time in which to schedule examination for registration to practice (non-refundable):......$115.00.

  • (2) On registration to practice or grant of limited recognition:
    • (i)

      On registration to practice under § 11.6 of this chapter:......$210.00

    • (ii)

      On grant of limited recognition under § 11.9(b) of this chapter:......$210.00

  • (3) [Reserved]
  • (4) For certificate of good standing as an attorney or agent:
    • (i)

      Standard:......$40.00.

    • (ii)

      Suitable for framing:......$50.00.

  • (5) For review of decision:
    • (i)

      By the Director of Enrollment and Discipline under § 11.2(c) of this chapter:......$420.00

    • (ii)

      Of the Director of Enrollment and Discipline under § 11.2(d) of this chapter:......$420.00

  • (6) Recovery/Retrieval of OED Information System Customer Interface account by USPTO:
    • (i) [Reserved]
    • (ii)

      For USPTO-assisted change of address:......$70.00.

  • (7) [Reserved]
  • (8) [Reserved]
  • (9) Administrative reinstatement fees:
    • (i)

      Delinquency fee:......$50.00.

    • (ii)

      Administrative reinstatement fee:......$210.00

  • (10)

    On application by a person for recognition or registration after disbarment or suspension on ethical grounds, or resignation pending disciplinary proceedings in any other jurisdiction; on application by a person for recognition or registration who is asserting rehabilitation from prior conduct that resulted in an adverse decision in the Office regarding the person’s moral character; and on application by a person for recognition or registration after being convicted of a felony or crime involving moral turpitude or breach of fiduciary duty; and on petition for reinstatement by a person excluded or suspended on ethical grounds, or excluded on consent from practice before the Office:......$1,680.00

• (b) Deposit accounts:
  • (1) [Reserved]
  • (2)

    Service charge for each month when the balance at the end of the month is below $1,000:......$25.00.

  • (3)

    Service charge for each month when the balance at the end of the month is below $300 for restricted subscription deposit accounts used exclusively for subscription order of patent copies as issued:......$25.00.

• (c) [Reserved]
• (d) [Reserved]
• (e)

  International type search reports: For preparing an international type search report of an international type search made at the time of the first action on the merits in a national patent application:......$40.00.

• (f) [Reserved]
• (g) [Reserved]
• (h) For recording each assignment, agreement, or other paper relating to the property in a patent or application, per property:
  • (1)

    If submitted electronically, on or after January 1, 2014:......$0.00.

  • (2)

    If not submitted electronically:......$50.00.

• (i) Publication in Official Gazette: For publication in the Official Gazette of a notice of the availability of an application or a patent for licensing or sale:

  • Each application or patent:......$25.00.

• (j) [Reserved]
• (k) For items and services that the director finds may be supplied, for which fees are not specified by statute or by this part, such charges as may be determined by the director with respect to each such item or service: Actual cost
• (l) [Reserved]
• (m) For processing each payment refused (including a check returned “unpaid”) or charged back by a financial institution: $50.00.
• (n)

  For handling an application in which proceedings are terminated pursuant to § 1.53(e):......$140.00

• (o) The receipt of a very lengthy sequence listing (mega-sequence listing) in an application under 35 U.S.C. 111 or 371 is subject to the following fee:
  • (1) First receipt by the Office of a sequence listing in electronic form ranging in size from 300MB to 800MB (without file compression):

    TABLE 1 TO PARAGRAPH (o)(1)

    • By a micro entity (§ 1.29)......$212.00

    • By a small entity (§ 1.27(a))......424.00

    • By other than a small or micro entity......1,060.00

  • (2) First receipt by the Office of a sequence listing in electronic form exceeding 800MB in size (without file compression):

    TABLE 2 TO PARAGRAPH (o)(2)

    • By a micro entity (§ 1.29)......$2,100.00

    • By a small entity (§ 1.27(a))......4,200.00

    • By other than a small or micro entity......10,500.00

• (p) Additional Fee for Overnight Delivery: $40.00.
• (q) Additional Fee for Expedited Service: $170.00.

[Added 47 FR 41272, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (n) added 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) added, 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) deleted, 59 FR 43736, Aug.25, 1994, effective Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (l) & (n) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(6)(ii) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; para (m) revised, 65 FR 33452, May 24, 2000, effective July 24, 2000; para. (a)(6) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; para. (o) removed and reserved, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; para. (k) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (l) removed and reserved, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (c) removed and reserved, 71 FR 64636, Nov. 3, 2006, effective Feb. 1, 2007; para. (a)(3) removed and reserved and paras. (a)(7), (a)(8) and (a)(9) added, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008; paras. (a), (e), (g)-(k) and (n) revised and para. (d) removed and reserved, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras. (a)(7) and (a)(8) removed and reserved, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013; revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16, 2018; paras. (a)(1), (2), and (5), (a)(9)(ii) and (a)(10), (n), (o), and (q) revised, para. (a)(6)(i) removed and reserved, and para. (k) added, 85 FR 46932, Aug. 3, 2020, as corrected by 85 FR 58282, Sept. 18, 2020, effective Oct. 2, 2020; para. (a)(1)(ii)(B) removed and reserved, para. (a)(1)(iv) added, and para. (a)(9) introductory text added, 86 FR 28442, May 26, 2021, effective June 25, 2021; paras. (o)(1) and (2) revised, 88 FR 17147, Mar. 22, 2023, effective Mar. 22, 2023; para. (a)(2)(iii) removed, 88 FR 45078, July 14, 2023, effective Aug. 14, 2023]

[top]

1.22 Fees payable in advance.

• (a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
• (b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003]

[top]

1.23 Methods of payment.

• (a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445 ), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
• (b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
• (c) A fee transmittal letter may be signed by a juristic applicant or patent owner.

[43 FR 20462, May 11, 1978; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 65 FR 33452, May 24, 2000, effective June 5, 2000; para. (b) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004; para. (c) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013 ]

[top]

1.24 [Reserved]

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2696, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; removed and reserved, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]

[top]

1.25 Deposit accounts.

• (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account (§ 1.21(b)(1) ). A minimum deposit of $1,000 is required for paying any fee due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2) ) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3) ) will be assessed for each month that the balance at the end of the month is below $300.
• (b) Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 through 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. A general authorization to charge fees in an international design application set forth in § 1.1031 will only be effective for the transmittal fee (§ 1.1031(a) ). An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492 . An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b) . An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination, and an authorization to charge to a deposit account the fee for a request for supplemental examination pursuant to § 1.610 and any other fees required in a supplemental examination proceeding in a patent may also be filed with the request for supplemental examination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective unless sufficient funds are present in the account to cover the fee.
• (c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), or (c)(3) of this section.
  • (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
    • (i) Name of the Bank, which is Treas NYC (Treasury New York City);
    • (ii) Bank Routing Code, which is 021030004;
    • (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
    • (iv) The deposit account holder’s company name and deposit account number.
  • (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (www.uspto.gov).
  • (3) A payment to replenish a deposit account may be addressed to: Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450.

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41272, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004; para. (c)(4) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4) removed, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (b) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (c) introductory text and para. (c)(3) revised, 86 FR 35229, July 2, 2021, effective July 2, 2021]

[top]

1.26 Refunds.

• (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
• (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a) . If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)) , any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
• (c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
  • (1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7) , will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
  • (2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
  • (3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2) , will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,1992; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (a) & (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (a) and (b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) revised, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]

[top]

1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

[Editor Note: Para. (c)(2) below include(s) changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

• (a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
  • (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
  • (2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
    • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
  • (3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
    • (ii) Is either:
      • (A) A university or other institution of higher education located in any country;
      • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
      • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country ( 35 U.S.C. 201(i) ); or
      • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
  • (4) Federal Government Use License Exceptions. In a patent application filed, prosecuted, and if patented, maintained at no expense to the Government, with the exception of any expense taken to deliver the application and fees to the Office on behalf of the applicant:
    • (i) For persons under paragraph (a)(1) of this section, claiming small entity status is not prohibited by:
      • (A) A use license to the Government resulting from a rights determination under Executive Order 10096 made in accordance with § 501.6 of this title;
      • (B) A use license to the Government resulting from Federal agency action pursuant to 15 U.S.C. 3710d(a) allowing the Federal employee-inventor to obtain or retain title to the invention; or
      • (C) A use license to a Federal agency resulting from retention of rights under 35 U.S.C. 202(d) by an inventor employed by a small business concern or nonprofit organization contractor, provided the license is equivalent to the license under 35 U.S.C. 202(c)(4) the Federal agency would have received had the contractor elected to retain title, and all the conditions applicable under § 401.9 of this title to an employee/inventor are met.
    • (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (3) of this section, a use license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not preclude claiming small entity status, provided that:
      • (A) The subject invention was made solely by employees of the small business concern or nonprofit organization; or
      • (B) In the case of a Federal employee co-inventor, the Federal agency employing such co-inventor took action pursuant to 35 U.S.C. 202(e)(1) to exclusively license or assign whatever rights currently held or that it may acquire in the subject invention to the small business concern or nonprofit organization, subject to the license under 35 U.S.C. 202(c)(4) .
    • (iii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (3) of this section that have collaborated with a Federal agency laboratory pursuant to a cooperative research and development agreement (CRADA) under 15 U.S.C. 3710a(a)(1), claiming small entity status is not prohibited by a use license to the Government pursuant to:
      • (A) 15 U.S.C. 3710a(b)(2) that results from retaining title to an invention made solely by the employee of the small business concern or nonprofit organization; or
      • (B) 15 U.S.C. 3710a(b)(3)(D), provided the laboratory has waived in whole any right of ownership the Government may have to the subject invention made by the small business concern or nonprofit organization, or has exclusively licensed whatever ownership rights the Government may acquire in the subject invention to the small business concern or nonprofit organization.
    • (iv) Regardless of whether an exception under this paragraph (a)(4) applies, no refund under § 1.28(a) is available for any patent fee paid by the Government.
  • (5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
• (b) Establishment of small entity status permits payment of reduced fees.
  • (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1) .
  • (2) Submission of an original utility application in compliance with the USPTO patent electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3) .
• (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
  • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
    • (i) Be clearly identifiable;
    • (ii) Be signed (see paragraph (c)(2) of this section); and
    • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
  • (2) Parties who can sign the written assertion. The written assertion can be signed by:
    • (i) The applicant (§ 1.42 or § 1.421 );
    • (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34 ;
    • (iii) The inventor or a joint inventor, if the inventor is the applicant; or
    • (iv) The assignee.
  • (3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in § 1.16(a) , (b) , (c) , (d) , or (e) , the small entity transmittal fee set forth in § 1.445(a)(1) or § 1.1031(a) , the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16 , or the small entity basic national fee set forth in § 1.492(a) , will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031 ) will be treated as a written assertion of entitlement to small entity status.
    • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f) , or § 1.16(g).
    • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
  • (4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)) , or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
• (d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
• (e) Only one assertion required.
  • (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
  • (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
• (f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
• (g)
  • (1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
  • (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
• (h) Fraud attempted or practiced on the Office.
  • (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
  • (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3) introductory text revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para. (c)(3) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (c)(3) introductory text revised, 85 FR 46932, Aug. 3, 2020, effective Oct. 2, 2020; para. (a)(4) revised, 85 FR 82917, Dec. 21, 2020, effective Jan. 20, 2021, corrected to effective Jan. 21, 2021, 86 FR 2542, Jan. 13, 2021, correction withdrawn 86 FR 3815, Jan. 15, 2021; para. (b)(2) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[*The changes to para. (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.27 (pre‑AIA) for para. (c)(2) otherwise in effect.]

[top]

1.27 (pre‑AIA) Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

[Editor Note: Para. (c)(2) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]

• (a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
  • (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
  • (2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
    • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
  • (3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
    • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
    • (ii) Is either:
      • (A) A university or other institution of higher education located in any country;
      • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
      • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country ( 35 U.S.C. 201(i) ); or
      • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
  • (4) License to a Federal agency.
    • (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
    • (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, 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 for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
  • (5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
• (b) Establishment of small entity status permits payment of reduced fees.
  • (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1) .
  • (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3) .
• (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
  • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
    • (i) Be clearly identifiable;
    • (ii) Be signed (see paragraph (c)(2) of this section); and
    • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
  • (2) Parties who can sign and file the written assertion. The written assertion can be signed by:
    • (i) One of the parties identified in § 1.33(b) ( e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
    • (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4) , who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
    • (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
  • (3) Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a) , 1.16(b) , 1.16(c) , 1.16(d) , 1.16(e) , or the small entity basic national fee set forth in § 1.492(a) , will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
    • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f) , or § 1.16(g).
    • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
  • (4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)) , or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
• (d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
• (e) Only one assertion required.
  • (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
  • (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
• (f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
• (g)
  • (1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
  • (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
• (h) Fraud attempted or practiced on the Office.
  • (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
  • (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]

[*See § 1.27 for more information and for para. (c)(2) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.28 Refunds when small entity status is later established; how errors in small entity status are excused.

• (a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26 , based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-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 three months of the date of payment of, the full fee.
• (b) Date of payment.
  • (1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
  • (2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
• (c) How errors in small entity status are excused. 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 loss of entitlement to small entity status as required by § 1.27(g)(2) , the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:
  • (1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments ( e.g., checks) and itemizations are required for each application or patent. See § 1.4(b) .
  • (2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
    • (i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
    • (ii) Itemization of the deficiency payment. An itemization of the total deficiency payment is required. The itemization must include the following information:
      • (A) Each particular type of fee that was erroneously paid as a small entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
      • (B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
      • (C) The deficiency owed amount (for each fee erroneously paid); and
      • (D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
  • (3) Failure to comply with requirements. If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i) , or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
• (d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.

[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c) revised, 62 FR 53132, Oct. 10 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

[top]

1.29 Micro entity status.

• (a) To establish micro entity status under this paragraph, the applicant must certify that:
  • (1) The applicant qualifies as a small entity as defined in § 1.27 without relying on a government use license exception under § 1.27(a)(4) ;
  • (2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b) , or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
  • (3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
  • (4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
• (b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment.
• (c) If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.
• (d) To establish micro entity status under this paragraph, the applicant must certify that:
  • (1) The applicant qualifies as a small entity as defined in § 1.27 without relying on a government use license exception under § 1.27(a)(4) ; and
  • (2)
    • (i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
    • (ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
• (e) Micro entity status is established in an application by filing a micro entity certification in writing complying with the requirements of either paragraph (a) or (d) of this section and signed either in compliance with § 1.33(b) , in an international application filed in a Receiving Office other than the United States Receiving Office by a person authorized to represent the applicant under § 1.455 , or in an international design application by a person authorized to represent the applicant under § 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. Status as a micro entity must be specifically established in each related, continuing and reissue application in which status is appropriate and desired. Status as a micro entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d) ), or the filing of a reissue application, requires a new certification of entitlement to micro entity status for the continuing or reissue application.
• (f) A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.
• (g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
• (h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under § 1.27 . The Office will generally not question certification of entitlement to micro entity status that is made in accordance with the requirements of this section.
• (i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2)[ 1.27(g)(2) ]. Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
• (j) Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.
• (k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
  • (1) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b) ). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:
    • (i) Each particular type of fee that was erroneously paid as a micro entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity, as applicable;
    • (ii) The micro entity fee actually paid, and the date on which it was paid;
    • (iii) The deficiency owed amount (for each fee erroneously paid); and
    • (iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.
  • (2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
  • (3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i) , or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
  • (4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.

[Added, 77 FR 75019, Dec. 19, 2012, effective Mar. 19, 2013; paras. (e) and (k)(4) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (e) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (a)(1) and (d)(1) revised, 85 FR 82917, Dec. 21, 2020, effective Jan. 20, 2021, corrected to effective Jan. 21, 2021, 86 FR 2542, Jan. 13, 2021, correction withdrawn 86 FR 3815, Jan. 15, 2021]

[top]

1.31 Applicant may be represented by one or more patent practitioners or joint inventors.

An applicant for patent may file and prosecute the applicant’s own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity ( e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.

[50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[top]

1.32 Power of attorney.

[Editor Note: Certain* paragraphs below include changes applicable only to patent applications filed under 35 U.S.C. 111 , 363 , or 385 on or after September 16, 2012]

• (a) Definitions.
  • (1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6 . An attorney or agent registered under § 11.6(d) may only act as a practitioner in design patent applications or other design patent matters or design patent proceedings.
  • (2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal’s behalf.
  • (3) Principal means the applicant (§ 1.42 ) for an application for patent and the patent owner for a patent, including a patent in a supplemental examination or reexamination proceeding. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on the principal’s behalf.
  • (4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on the principal’s behalf.
  • (5) Customer Number means a number that may be used to:
    • (i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
    • (ii) Designate the fee address (§ 1.363 ) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
    • (iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
    • (6) Patent practitioner of record means a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section. The phrases practitioner of record and attorney or agent of record also mean a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section.
• (b) A power of attorney must:
  • (1) Be in writing;
  • (2) Name one or more representatives in compliance with paragraph (c) of this section;
  • (3) Give the representative power to act on behalf of the principal; and
  • (4) Be signed by the applicant for patent (§ 1.42 ) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
• (c) A power of attorney may only name as representative:
  • (1) One or more joint inventors (§ 1.45 );
  • (2) Those registered patent practitioners associated with a Customer Number;
  • (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
• (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
  • (1) The power of attorney was granted by the inventor; and
  • (2) The continuing application names an inventor who was not named as an inventor in the prior application.
• (e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34 , if applicable.

[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (a)(1) revised, 88 FR 78644, Nov. 16, 2023, effective Jan. 2, 2024]

[* Paras. (a)(2), (a)(3), (a)(4), (a)(6), (b), (d) and (e) above include provisions applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.32 (pre‑AIA) for the rule applicable to applications filed prior to Sept. 16, 2012.]

[top]

1.32 (pre‑AIA) Power of attorney.

[Editor Note: Certain* paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111 , 363 , or 385 on or after Sept. 16, 2012]

• (a) Definitions.
  • (1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6 .
  • (2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his or her behalf.
  • (3) Principal means either an applicant for patent (§ 1.41(b) ) or an assignee of entire interest of the applicant for patent or in a reexamination proceeding, the assignee of the entirety of ownership of a patent. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on his or her behalf.
  • (4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on his or her behalf.
  • (5) Customer Number means a number that may be used to:
    • (i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
    • (ii) Designate the fee address (§ 1.363 ) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
    • (iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
• (b) A power of attorney must:
  • (1) Be in writing;
  • (2) Name one or more representatives in compliance with paragraph (c) of this section;
  • (3) Give the representative power to act on behalf of the principal; and
  • (4) Be signed by the applicant for patent (§ 1.41(b) ) or the assignee of the entire interest of the applicant.
• (c) A power of attorney may only name as representative:
  • (1) One or more joint inventors (§ 1.45 );
  • (2) Those registered patent practitioners associated with a Customer Number;
  • (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.

[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

[*See § 1.32 for more information and for the rule applicable to patent applications filed on or after Sept. 16, 2012]

[top]

1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

[Editor Note: Certain * paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]

• (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the USPTO patent electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b) , the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34 .
• (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv) , filed in the application must be signed by:
  • (1) A patent practitioner of record;
  • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34 ; or
  • (3) The applicant (§ 1.42 ). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
• (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34 . Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
• (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
• (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
• (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
• (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.

[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53132, Oct. 10 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; (a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a) introductory text revised, paras. (a)(1), (b)(1), and (b)(2) revised, and para. (e) added, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (a) introductory text revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a) and (b) revised and paras. (f) and (g) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[*The revisions to paras. (a) and (b) and new paragraphs (f) and (g) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.33 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.33 (pre‑AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

[Editor Note: The paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111 (pre‑AIA) or 363 (pre‑AIA) before Sept. 16, 2012]

• (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
  • (1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
  • (2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
• (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
  • (1) A patent practitioner of record appointed in compliance with § 1.32(b) ;
  • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34 ;
  • (3) An assignee as provided for under § 3.71(b) of this chapter; or
  • (4) All of the applicants (§ 1.41(b) ) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
• *****

[*See § 1.33 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.34 Acting in a representative capacity.

When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985, effective Mar. 6, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

[top]

1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.

[Editor Note: Para. (a) below includes changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

• (a) A power of attorney, pursuant to § 1.32(b) , may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f) . A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b) .
• (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

[*The changes to para. (a) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.36 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.36 (pre‑AIA) Revocation of power of attorney; withdrawal of patent attorney or agent.

[Editor Note: Para. (a) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

• (a) A power of attorney, pursuant to § 1.32(b) , may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b) ) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f) . A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b) .
• (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

[*See § 1.36 for more information and for para. (a) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.41 Inventorship.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
• (b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor’s oath or declaration. If an application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d) . Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48 . If neither an application data sheet nor the inventor’s oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b) , unless the applicant files a paper, including the processing fee set forth in § 1.17(i) , supplying the name or names of the inventor or joint inventors.
• (c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1) . Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48 . If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c) , unless applicant files a paper including the processing fee set forth in § 1.17(q) , supplying the name or names of the inventor or joint inventors..
• (d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1) , the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
• (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371 . Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis .
• (f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48 .

[48 FR 2696, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (f) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.41 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.41 (pre‑AIA) Applicant for patent.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (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 applicant files a paper, including the processing fee set forth in § 1.17(i) , 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 applicant files a paper including the processing fee set forth in § 1.17(q) , 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, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
  • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371 ).
• (b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42 , 1.43 or 1.47 who is applying for a patent in place of the inventor.
• (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63 ) can only be made in accordance with § 1.64 .
• (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

[48 FR 2696, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]

[*See § 1.41 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.42 Applicant for patent.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 .
• (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
• (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45 , the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
• (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64 , a correspondence address may be provided only in accordance with § 1.33(a) , and amendments and other papers must be signed in accordance with § 1.33(b) .
• (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.42 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.42 (pre‑AIA) When the inventor is dead.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983]

[ *See § 1.42 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.43 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.43 (pre‑AIA) When the inventor is insane or legally incapacitated.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983]

[ *See § 1.43 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.44 [Reserved]

[Removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000]

[top]

1.45 Application for patent by joint inventors.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) Joint inventors must apply for a patent jointly, and each must make an inventor’s oath or declaration as required by § 1.63 , except as provided for in § 1.64 . If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
• (b) Inventors may apply for a patent jointly even though:
  • (1) They did not physically work together or at the same time;
  • (2) Each inventor did not make the same type or amount of contribution; or
  • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
• (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

[paras. (b) and (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.45 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.45 (pre‑AIA) Joint inventors.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47 .
• (b) Inventors may apply for a patent jointly even though
  • (1) They did not physically work together or at the same time,
  • (2) Each inventor did not make the same type or amount of contribution, or
  • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
• (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

[paras. (b) and (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

[ *See § 1.45 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012 *]

• (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
• (b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7) ) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371 , or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).
  • (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
  • (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
    • (i) The fee set forth in § 1.17(g) ;
    • (ii) A showing that such person has sufficient proprietary interest in the matter; and
    • (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
• (c)
  • (1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7) ) in accordance with § 1.76(c)(2) . A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
  • (2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7) ) in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73 of this title.
• (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64 . See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
• (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81 . Where a real party in interest has filed an application under § 1.46 , the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
• (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text and para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ *The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.46 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.46 (pre‑AIA) Assigned inventions and patents.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012 *]

In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made or authorized to be made, and an oath or declaration signed, by the inventor or one of the persons mentioned in §§ 1.42 , 1.43 , or 1.47 . However, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81 .

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]

[ *See § 1.46 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.47 [Reserved]

[Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012. For § 1.47 otherwise in effect, see § 1.47 (pre‑AIA) ]

[top]

1.47 (pre‑AIA) Filing when an inventor refuses to sign or cannot be reached.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (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(g) , and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by 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(g) , and the last known address of all of the inventors. An inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63 .
• (c) The Office will send notice of the filing of the application to all inventors who have not joined in the application at the address(es) provided in the petition under this section, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this notice provision in a continuation or divisional application, if notice regarding the filing of the prior application was given to the nonsigning inventor(s).

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

[ *Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012.]

[top]

1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

• (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
  • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
  • (2) The processing fee set forth in § 1.17(i) .
• (b) Inventor’s oath or declaration for added inventor: An oath or declaration as required by § 1.63 , or a substitute statement in compliance with § 1.64 , will be required for any actual inventor who has not yet executed such an oath or declaration.
• (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d) , unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
• (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
  • (1) A request, signed by a party set forth in § 1.33(b) , to correct the inventorship that identifies each inventor by his or her legal name; and
  • (2) The processing fee set forth in § 1.17(q) .
• (e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
• (f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
  • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
  • (2) The processing fee set forth in § 1.17(i) .
• (g) Reissue applications not covered. The provisions of this section do not apply to reissue applications. See §§ 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.
• (h) Correction of inventorship in patent. See § 1.324 for correction of inventorship in a patent.
• (i) Correction of inventorship in an interference or contested case before the Patent Trial and Appeal Board. In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or 42.22 of this title must comply with the requirements of paragraph (a) of this section.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (f)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)-(c) and (i) revised and para. (j) added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

[top]

1.51 General requisites of an application.

• (a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. An application transmittal letter limited to the transmittal of the documents and fees comprising a patent application under this section may be signed by a juristic applicant or patent owner.
• (b) A complete application filed under § 1.53(b) or § 1.53(d) comprises:
  • (1) A specification as prescribed by 35 U.S.C. 112 , including a claim or claims, see §§ 1.71 to 1.77 ;
  • (2) The inventor’s oath or declaration, see §§ 1.63 and 1.64 ;
  • (3) Drawings, when necessary, see §§ 1.81 to 1.85 ; and
  • (4) The prescribed filing fee, search fee, examination fee, and application size 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 35 U.S.C. 112(a) , see § 1.71 ;
  • (3) Drawings, when necessary, see §§ 1.81 to 1.85 ; and
  • (4) The prescribed filing fee and application size 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 statement may be filed in a provisional application.

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b)(4) and (c)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.52 Language, paper, writing, margins, read-only optical disc specifications.

• (a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
  • (1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
    • (i) Flexible, strong, smooth, non-shiny, durable, and white;
    • (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including 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);
    • (iii) Written on only one side in portrait orientation;
    • (iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
    • (v) 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 capture by use of digital imaging and optical character recognition.
  • (2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
  • (3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre‑printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
  • (4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
  • (5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the USPTO patent electronic filing system requirements.
• (b) The application (specification, including the claims, drawings, and the inventor’s oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
  • (1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
    • (i) Comply with the requirements of paragraph (a) of this section; and
    • (ii) Be in the English language 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.
  • (2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825 , must have:
    • (i) Lines that are 1 1/2 or double spaced;
    • (ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
    • (iii) Only a single column of text.
  • (3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h) ).
  • (4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b) ).
  • (5) Other than in a reissue application or a reexamination or supplemental examination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text.
  • (6) Other than in a reissue application or reexamination or supplemental examination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros ( e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements ( e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
• (c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor’s oath or declaration referring to those application papers, provided that the statements in the inventor’s oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125 ) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
• (d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
  • (1) Nonprovisional application. If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, the applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
  • (2) Provisional application. If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
• (e) Electronic documents submitted on a read-only optical disc that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application, reexamination, or supplemental examination proceeding.
  • (1) The following documents may be submitted to the Office on a read-only optical disc in compliance with this paragraph (e):
    • (i) A “Computer Program Listing Appendix” ( see § 1.96(c) );
    • (ii) A “Sequence Listing” (submitted under § 1.821(c) in compliance with §§ 1.822 through 1.824 ) or a “Sequence Listing XML” (submitted under § 1.831(a) in compliance with §§ 1.832 through 1.834 ); or
    • (iii) “Large Tables” ( see § 1.58(c) ).
  • (2) Read-only optical disc as used in this part means a finalized disc, in conformance with International Organization for Standardization (ISO) 9660, on which the data is recorded so it is permanent and cannot be changed or erased, and is one of:
    • (i) Compact Disc-Read-Only Memory (CD–ROM) or a Compact Disc-Recordable (CD–R); or
    • (ii) Digital Video Disc-Recordable (DVD–R or DVD+R);
  • (3) Each read-only optical disc must conform to the following requirements:
    • (i) Computer compatibility: PC or Mac ^®;
    • (ii) Operating system compatibility: MS–DOS ^®, MS–Windows ^®, MacOS ^®, or Unix ^®/Linux ^®;
    • (iii) The contents of each read-only optical disc must be in American Standard Code for Information Interchange (ASCII) plain text and if compressed, must be compressed in accordance with § 1.58 for “Large Tables,” with § 1.96 for a “Computer Program Listing Appendix,” or § 1.824 for a “Sequence Listing” or Computer Readable Form (CRF) of the “Sequence Listing,” as applicable; and
  • (iv) The contents of each read-only optical disc for a “Sequence Listing XML” must be in eXtensible Markup Language (XML) file format, and if compressed, must be compressed in accordance with § 1.834 .
  • (4) Each read-only optical disc must be enclosed in a hard case within an unsealed, padded, and protective mailing envelope, and must be accompanied by a transmittal letter in accordance with paragraph (a) of this section, including the following information:
    • (i) First-named inventor (if known);
    • (ii) Title of the invention;
    • (iii) Attorney docket or file reference number (if applicable);
    • (iv) Application number and filing date (if known);
    • (v) The operating system (MS–DOS ^®, MS-Windows ^®, Mac OS ^®, or Unix ^®/ Linux ^®) used to produce the disc; and
    • (vi) The file(s) contained on the read-only optical disc, including the name of the file, the size of the file in bytes, and the date of creation.
  • (5) Each read-only optical disc must have a label permanently affixed thereto on which the following information has been hand-printed or typed:
    • (i) First-named inventor (if known);
    • (ii) Title of the invention;
    • (iii) Attorney docket or file reference number (if applicable);
    • (iv) Application number and filing date (if known);
    • (v) Date on which the data were recorded on the read-only optical disc; and
    • (vi) Disc order ( e.g., “1 of X”), if multiple read-only optical discs are submitted.
  • (6) Read-only optical discs will not be returned to the applicant and may not be retained as part of the patent application file.
  • (7) Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc, in compliance with § 1.58(g) for “Large Tables,” § 1.96(c)(5) for a “Computer Program Listing Appendix,” § 1.825(b) for a “Sequence Listing” or CRF of a “Sequence Listing,” and § 1.835(b) for a “Sequence Listing XML.”
  • (8) The specification must contain an incorporation by reference of the material on each read-only optical disc in a separate paragraph (§ 1.77(b)(5) ), identifying the name of each file, their date of creation, and their size in bytes, except for an international application in the international stage. The Office may require the applicant to amend the specification to include the material incorporated by reference.
  • (9) If a file is unreadable, it will be treated as not having been submitted, and a notice will be issued to require a compliant submission.
• (f) Determining application size fees for applications containing electronic documents submitted on a read-only optical disc or via the USPTO patent electronic filing system—
  • (1) Submission on read-only optical discs. The application size fee required by § 1.16(s) or § 1.492(j) , for an application component submitted in part on a read-only optical disc in compliance with paragraph (e) of this section, shall be determined such that each three kilobytes of content submitted on a read-only optical disc shall be counted as a sheet of paper. Excluded from this determination is any ASCII plain text file or any XML file (as applicable) submitted on a read-only optical disc under paragraph (e) of this section containing:
    • (i) Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with § 1.821(c) or (e) , or any “Sequence Listing XML” in compliance with § 1.831(a) ; or
    • (ii) Any “Computer Program Listing Appendix” in compliance with § 1.96(c) .
  • (2) Submission via the USPTO patent electronic filing system. The application size fee required by § 1.16(s) or § 1.492(j) , for an application submitted in whole or in part via the USPTO patent electronic filing system, shall be determined such that the paper size equivalent will be considered to be 75% of the number of sheets of paper present in the specification and drawings for the application when entered into the Office records after being rendered by the USPTO patent electronic filing system. Excluded from this determination is any ASCII plain text file or any XML file (as applicable) submitted via the USPTO patent electronic filing system containing:
    • (i) Any “Sequence Listing” or CRF of a “Sequence Listing” in compliance with § 1.821(c)(1) or (e) , or any “Sequence Listing XML” in compliance with § 1.831(a) ; or
    • (ii) Any “Computer Program Listing Appendix” in compliance with § 1.96(c) .
  • (3) Oversized submission. Any submission of a “Sequence Listing” in electronic form or a “Sequence Listing XML” of 300 MB–800 MB filed in an application under 35 U.S.C. 111 or 371 will be subject to the fee set forth in § 1.21(o)(1) . Any submission of a “Sequence Listing” in electronic form or a “Sequence Listing XML” that exceeds 800 MB filed in an application under 35 U.S.C. 111 or 371 will be subject to the fee set forth in § 1.21(o)(2) .

[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); paras. (a), (b), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (b) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; section heading and paras. (b)(2)(ii), (e)(1)(iii) and (e)(3)(i)-(ii) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; section heading revised and para. (f) added; 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (f) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (e)(5) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a)(5), (a)(7), and (b)(7) removed and para. (a)(6) redesignated as (a)(5), 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d)(2) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (d)(2) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (b) heading and paras. (c) and (d) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (b), and (e) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (e) and (f) revised, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021; paras. (e)(1)(ii), (e)(3)(ii) and (iii), (e)(7), (f)(1)(i), (f)(2)(i), and (f)(3) revised, para. (e)(3)(iv) added, and paras. (f)(1) and (f)(2) introductory text revised, 87 FR 30806, May 20, 2022, effective July 1, 2022; para. (a)(5) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.53 Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013. See * below for additional applicability notes.]

• (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, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112 , including at least one claim, and any required drawings are received in the 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 , 365(c) , or 386(c) and § 1.78 .
  • (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, with or without claims, is received in the 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) , which may be an application data sheet (§ 1.76 ), 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. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
    • (i) Abandonment of the application filed under paragraph (b) of this section;
    • (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
    • (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
  • (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) , rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b) , unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b) . The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor’s oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
    • (i) Abandonment of the provisional application filed under paragraph (c) of this section; or
    • (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
  • (4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 , 365(a) , or 386(a) or § 1.55 , or to the benefit of an earlier filing date under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. A provisional application disclosing nucleotide and/or amino acid sequences is not required to include a separate sequence listing; however, if submitted in a provisional application filed on or after July 1, 2022, any submission of nucleotide and/or amino acid sequence data must be by way of a “Sequence Listing XML” in compliance with §§ 1.831 through 1.834 .
• (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 application is for a design patent;
    • (ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b) , except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) ; and
    • (iii) 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(c) 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 the inventor’s 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; 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, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b) , the search fee as set forth in § 1.16(l) , and the examination fee as set forth in § 1.16(p) .
  • (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 correction of inventorship 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) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
• (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 period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114 .
  • (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 accompanied by the fee set forth in § 1.17(f) . 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 or reissue) application.
  • (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor’s oath or declaration (§§ 1.63 , 1.64 , 1.162 or 1.175 ), and the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) , to avoid abandonment.
  • (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, search fee, examination fee, at least one claim, or the inventor’s oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) , to avoid abandonment.
  • (3) The inventor’s oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
    • (i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
      • (A) Each inventor by his or her legal name;
      • (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
    • (ii) The applicant must file each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c) ). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63 , or substitute statement in compliance with § 1.64 , has been filed before the application is in condition for allowance.
  • (4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h) , (i) , and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s) , the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
  • (5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor’s oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
  • (6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
• (g) Completion of application subsequent to filing — Provisional application.
  • (1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d) ), and applicant has provided a correspondence address (§ 1.33(a)) , applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)) , and pay the surcharge required by § 1.16(g) to avoid abandonment.
  • (2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d) ), and applicant has not provided a correspondence address (§ 1.33(a) ), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1) ), and pay the surcharge required by § 1.16(g) to avoid abandonment.
  • (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
  • (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose 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 the inventor’s oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and 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) .

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; paras. (c) and (d), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 63 FR 5734, Feb. 4, 1998, effective Feb. 4, 1998 (adopted as final, 63 FR 36184, Jul. 2, 1998); paras. (c)(3), (c)(4) and (d) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (paras. (c)(4) and (d) adopted as final, 65 FR 50092, Aug. 16, 2000); para. (c)(3) revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; paras. (c)(1), (c)(2), (d)(4), (e)(2), (f), and (g) revised and para. (d)(10) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(4) revised, 65 FR 78958, Dec. 18, 2000; para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (d)(1), (d)(3) and (e)(1) revised, 68 FR 32376, May 30, 2003, effective July 14, 2003; para. (d)(9) deleted and para. (d)(10) redesignated as para. (d)(9), 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (e)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras (c)(3), (f) and (g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec., 8, 2004; paras. (d)(3) and (f)(5) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (b) and (c)(4) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (b) and (c)(4) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); introductory text of paras. (c) and (c)(3), and paras. (d)(2)(iv), (f), and (h) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(b) introductory text, paras. (c)(2)(ii)-(iii) and (c)(4) revised, and para.(j) removed, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (b), (c) and (f) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d)(1)(ii) revised, 79 FR 12384, Mar. 5, 2014, effective Mar. 5, 2014(adopted as final, 79 FR 68121, Nov. 14, 2014); para. (b) introductory text and paras. (c)(4) and (d)(1)(ii) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (c)(4) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]

[ * Paragraphs (b), (c), (f) and (h) above include changes having limited applicability as follows:

The changes to para. (c)(4) effective July 1, 2022 are applicable to all applications irrespective of filing date.

The changes to paras. (b) and (c) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.53 (pre‑PLT(AIA)) for paras. (b) and (c) otherwise in effect; and

The changes to para. (f) effective Dec. 18, 2013 and the changes to para. (h) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.53 (pre‑AIA) for paras. (f) and (h) otherwise in effect.]

[top]

1.53 (pre‑PLT (AIA)) Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 (pre‑PLT (AIA)) before December 18, 2013. See * below for additional applicability notes.]

* * * * *

• (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(c) and (d) .
  • (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 35 U.S.C. 112(a) , 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) , which may be an application data sheet (§ 1.76 ), 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. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
    • (i) Abandonment of the application filed under paragraph (b) of this section;
    • (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
    • (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
  • (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b) , unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b) . The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor’s oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
    • (i) Abandonment of the provisional application filed under paragraph (c) of this section; or
    • (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
  • * * * * *

* * * * *

[ *See § 1.53 for the current rule, including paras. (b) and (c) containing changes applicable to patent applications filed on or after Dec. 18, 2013.]

[top]

1.53 (pre‑AIA) Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed before September 16, 2012. See * below for additional applicability notes.]

* * * * *

• (f) Completion of application subsequent to filing — Nonprovisional (including continued prosecution or reissue) application.
  • (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63 , 1.162 or § 1.175 , and applicant has provided a correspondence address (§ 1.33(a) ), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
  • (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63 , 1.162 or § 1.175 , and applicant has not provided a correspondence address (§ 1.33(a)) , applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge required by § 1.16(f) to avoid abandonment.
  • (3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i), and (j) , must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s) , the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
  • (4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. 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 under paragraph (b) of this section.
  • (5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose 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.

[ *See § 1.53 for the portions of the rule applicable irrespective of application filing date and for current paras. (f) and (h)]

[top]

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) . A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.55 Claim for foreign priority.

• (a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f) , 172 , 365(a) and (b) , and 386(a) and (b) and this section.
• (b) Time for filing subsequent application. The nonprovisional application must be:
  • (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
  • (2) Entitled to claim the benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
• (c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
  • (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b) , or 386(a) or (b) in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
  • (2) The petition fee as set forth in § 1.17(m) ; and
  • (3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (d) Time for filing priority claim—
  • (1) Application under 35 U.S.C. 111(a) . The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a) , except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6) ) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
    • (i) An application for a design patent; or
    • (ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
  • (2) Application under 35 U.S.C. 371 . The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371 , except as provided in paragraph (e) of this section.
• (e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b) , or 386(a) or 386(b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f) , 365(a) or (b) , or 386(a) or 386(b) must be accompanied by:
  • (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) , 365(a) or (b) , or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
  • (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
  • (3) The petition fee as set forth in § 1.17(m) ; and
  • (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (f) Time for filing certified copy of foreign application—
  • (1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
  • (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371 . If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
  • (3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371 , and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) .
• (g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
  • (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323 .
  • (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
    • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
    • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
    • (iii) When deemed necessary by the examiner.
  • (3) An English language translation of a non-English language foreign application is not required except:
    • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
    • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
    • (iii) When specifically required by the examiner.
  • (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
• (h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
• (i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
  • (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
  • (2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
  • (3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
  • (4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a) , four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
• (j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
  • (1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
  • (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a) , four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
  • (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
• (k) Requirements for certain applications filed on or after March 16, 2013. If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) ) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
• (l) Inventor’s certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor’s certificate in a country granting both inventor’s certificates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d) , the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
• (m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
• (n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76 ), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
• (o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
• (p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a) ), PCT Rule 80.5 , and Hague Agreement Rule 4(4).

[para. (b), 47 FR 41272, Sept. 17, 1982, effective Oct. 1 1982; 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (c) corrected, 65 FR 66502, Nov. 6, 2000, effective Nov. 29, 2000; paras.(a)(1) and (c) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (c)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(3) and (a)(4) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; introductory text of paras. (a)(1)(i) and (c), and para. (d)(1)(ii) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; corrected 78 FR 16182, Mar. 14, 2013, effective Mar. 16, 2013; paras. (b)-(f) and (h) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.56 Duty to disclose information material to patentability.

[Editor Note: Para. (c)(3) below is applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98 . However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
  • (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
  • (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
• (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
  • (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
  • (2) It refutes, or is inconsistent with, a position the applicant takes in:
    • (i) Opposing an argument of unpatentability relied on by the Office, or
    • (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

• (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
  • (1) Each inventor named in the application;
  • (2) Each attorney or agent who prepares or prosecutes the application; and
  • (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
• (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
• (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, 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.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(3) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ * The changes to para. (c)(3) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.56 (pre‑AIA) for para. (c)(3) otherwise in effect.]

[top]

1.56 (pre‑AIA) Duty to disclose information material to patentability.

[Editor Note: Para. (c)(3) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]

*****

• (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
  • (1) Each inventor named in the application;
  • (2) Each attorney or agent who prepares or prosecutes the application; and
  • (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
• (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
• (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, 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.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

[ *See § 1.56 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.57 Incorporation by reference.

[Editor Note: Para. (a) below is only applicable to patent applications filed under 35 U.S.C. 111(a) on or after December 18, 2013 *]

• (a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b) .
  • (1) If the applicant has provided a correspondence address (§ 1.33(a) ), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f) , to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f) .
  • (2) If the applicant has not provided a correspondence address (§ 1.33(a) ), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f) , to avoid abandonment.
  • (3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
    • (i) The application is revived under § 1.137; and
    • (ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
  • (4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363 , or the previously filed application is a foreign priority application and the conditions set forth in § 1.55(i) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) .
• (b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
  • (1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b) , or abandonment of the application, whichever occurs earlier. The applicant is also required to:
    • (i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111 ;
    • (ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
    • (iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
  • (2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491 ) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b) , must be submitted in accordance with PCT Rule 20 .
  • (3) If an application is not otherwise entitled to a filing date under § 1.53(b) , the amendment must be by way of a petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f) .
  • (4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
• (c) Except as provided in paragraph (a) or (b) of this section, an incorporation by reference must be set forth in the specification and must:
  • (1) Express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” ( e.g., “incorporate by reference”); and
  • (2) Clearly identify the referenced patent, application, or publication.
• (d) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to:
  • (1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a) ;
  • (2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) ; or
  • (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f) .
• (e) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
• (f) The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application.
• (g) Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.
• (h) An incorporation of material by reference that does not comply with paragraphs (c), (d) or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b) , or abandonment of the application, whichever occurs earlier. In addition:
  • (1) A correction to comply with paragraph (c)(1) of this section is permitted only if the application as filed clearly conveys an intent to incorporate the material by reference. A mere reference to material does not convey an intent to incorporate the material by reference.
  • (2) A correction to comply with paragraph (c)(2) of this section is only permitted for material that was sufficiently described to uniquely identify the document.
• (i) An application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under paragraph (a) or (b) of this section may be signed by a juristic applicant or patent owner.

[Added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(3) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)(2) revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; paras. (c)(1)-(3) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (a) revised, para. (b) introductory text revised and para. (b)(4) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ * The changes to para. (a) effective Dec. 18, 2013 and May 13, 2015 are applicable only to patent applications filed on or after Dec. 18, 2013. See § 1.57 (pre‑PLT) for para. (a) applicable to applications filed before Dec. 18, 2013.]

[top]

1.57 (pre‑PLT) Incorporation by reference.

[Editor Note: Para. (a) below is applicable to applications filed before December 18, 2013.]

• (a) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
  • (1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b) , or abandonment of the application, whichever occurs earlier. The applicant is also required to:
    • (i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111 ;
    • (ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
    • (iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
  • (2) Any amendment to an international application pursuant to this paragraph shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491 ) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b) , must be submitted in accordance with PCT Rule 20 .
  • (3) If an application is not otherwise entitled to a filing date under § 1.53(b) , the amendment must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f)
• *****

[Para. (a) above is applicable to patent applications filed under 35 U.S.C. 111 (pre‑PLT (AIA)) before Dec. 18, 2013. See § 1.57 for the current rule, including para. (a) applicable to patent applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013.]

[top]

1.58 Chemical and mathematical formulas and tables.

• (a) The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables should not be included in both the drawings and description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
• (b) Chemical and mathematical formulas and tables must be presented in compliance with § 1.52(a) and (b) , except that chemical and mathematical formulas or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulas and tables must be chosen from a block (nonscript) type font or lettering style having capital letters that should be at least 0.422 cm (0.166 inches) high ( e.g., preferably Arial, Times Roman, or Courier, with a font size of 12 points), but may be no smaller than 0.21 cm (0.08 inches) high ( e.g., a font size of 6 points). A space at least 0.64 cm (0.25 inches) high should be provided between complex formulas and tables and the text. Chemical and mathematical formulas must be configured to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
• (c) The following “Large Tables” may be submitted in electronic form in ASCII plain text via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with § 1.52(e) , excluding an international application during the international stage:
  • (1) Any individual table that is more than 50 pages in length; or
  • (2) Multiple tables, if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper, in conformance with paragraph (b) of this section.
• (d) “Large Tables” submitted in electronic form in ASCII plain text must conform to the following requirements:
  • (1) Must maintain the spatial relationships ( e.g., alignment of columns and rows) of the table elements when displayed to visually preserve the relational information they convey;
  • (2) Must have the following compatibilities:
    • (i) Computer compatibility: PC or Mac ^®;
    • (ii) Operating system compatibility: MS–DOS ^®, MS-Windows ^®, Mac OS ^®, or Unix ^®/Linux ^®.
  • (3) Must be in ASCII plain text, where:
    • (i) All printable characters (including the space character) are permitted;
    • (ii) No nonprintable (ASCII control) characters are permitted, except ASCII Carriage Return plus ASCII Line Feed (CRLF) or Line Feed (LF) as line terminators.
  • (4) Must be named as *.txt, where “*” is one character or a combination of characters limited to upper- or lowercase letters, numbers, hyphens, and underscores and does not exceed 60 characters in total, excluding the extension. No spaces or other types of characters are permitted in the file name; and
  • (5) Must be incorporated by reference in a separate paragraph of the specification, in accordance with § 1.77(b)(5) .
• (e) “Large Tables” submitted via the USPTO patent electronic filing system must not exceed 25 MB, and file compression is not permitted.
• (f) “Large Tables” submitted in compliance with § 1.52(e) via read-only optical disc must meet the following requirements:
  • (1) The ASCII plain text file may be compressed using WinZip ^®, 7-Zip, or Unix ^®/Linux ^® Zip;
  • (2) A compressed file must not be self-extracting; and
  • (3) A compressed ASCII plain text file that does not fit on a single read-only optical disc may be split into multiple file parts in accordance with the target read-only optical disc size and labeled in compliance with § 1.52(e)(5)(vi) .
• (g) Any amendments to “Large Tables” in electronic form in ASCII plain text format must include:
  • (1) A replacement ASCII plain text file, in accordance with the requirements of paragraphs (d) through (f) of this section, submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with § 1.52(e) , labeled as “REPLACEMENT MM/DD/YYYY” (with the month, day, and year of creation indicated);
  • (2) A request that the amendment be made by incorporation by reference of the material in the replacement ASCII plain text file, in a separate paragraph of the specification (replacing any prior such paragraph, as applicable) identifying the name of the file, the date of creation, and the size of the file in bytes ( see § 1.77(b)(5) );
  • (3) A statement that identifies the location of all deletions, replacements, or additions to the ASCII plain text file; and
  • (4) A statement that the replacement ASCII plain text file contains no new matter.
• (h) The specification of an application with “Large Tables” as an ASCII plain text file, present on the application filing date, without an incorporation by reference of the material contained in the ASCII plain text file, must be amended to contain a separate paragraph incorporating by reference the material contained in the ASCII plain text file, in accordance with § 1.77(b)(5) .
• (i) Any read-only optical disc for “Large Tables” must be submitted in duplicate. The read-only optical disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical disc copies are not identical, the Office will use the read-only optical disc labeled “Copy 1” for further processing.
• (j) Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc, in compliance with paragraph (g) of this section, where the replacement read-only optical disc and copy must be labeled “COPY 1 REPLACEMENT MM/ DD/YYYY” (with the month, day, and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.

[43 FR 20463, May 11, 1978; para. (b) removed and reserved, para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (b) and (c) revised, paras. (d) through (j) added, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021]

[top]

1.59 Expungement of information or copy of papers in application file.

• (a)
  • (1) Information in an application will not be expunged, except as provided in paragraph (b) of this section or § 41.7(a) or § 42.7(a) of this title.
  • (2) Information forming part of the original disclosure ( i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
• (b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.
• (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.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (a)(1) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)(1) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[top]

1.60 [Reserved]

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added, 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.61 [Reserved]

[Removed and reserved, 52 FR 20038, May 1987, effective July 1, 1987]

[top]

1.62 [Reserved]

[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48 FR 2696, Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) and (e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (f) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.63 Inventor’s oath or declaration.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111 , 363 , or 385 on or after September 16, 2012 *]

• (a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64 . An oath or declaration under this section must:
  • (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
  • (2) Identify the application to which it is directed;
  • (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
  • (4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
• (b) Unless the following information is supplied in an application data sheet in accordance with § 1.76 , the oath or declaration must also identify:
  • (1) Each inventor by his or her legal name; and
  • (2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
• (c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 . There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
• (d)
  • (1) A newly executed oath or declaration under § 1.63 , or substitute statement under § 1.64 , is not required under §§ 1.51(b)(2) and 1.53(f) , or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64 , was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
  • (2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
  • (3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64 .
• (e)
  • (1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
    • (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
    • (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
  • (2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
  • (f) With respect to an application naming only one inventor, any reference to the inventor’s oath or declaration in this chapter includes a substitute statement executed under § 1.64 . With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
  • (g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed ( i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
  • (h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.

[48 FR 2696, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d)(1) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ *The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.63 (pre‑AIA) for the rule applicable to patent applications filed before Sept. 16, 2012.]

[top]

1.63 (pre‑AIA) Oath or declaration.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111 , 363 , or 385 on or after September 16, 2012 *]

• (a) An oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must:
  • (1) Be executed, i.e., signed, in accordance with either § 1.66 or § 1.68 . There is no minimum age for a person to be qualified to sign, but the person must be competent to sign, i.e., understand the document that the person is signing;
  • (2) 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;
  • (3) Identify the country of citizenship of each inventor; and
  • (4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
• (b) In addition to meeting the requirements of paragraph (a) of this section, the oath or declaration must also:
  • (1) Identify the application to which it is directed;
  • (2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and
  • (3) 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 .
• (c) Unless such information is supplied on an application data sheet in accordance with § 1.76 , the oath or declaration must also identify:
  • (1) The mailing address, and the residence if an inventor lives at a location which is different from where the inventor customarily receives mail, of each inventor; and
  • (2) Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to § 1.55 , and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
• (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 correspondence address was changed during the prosecution of the prior application, the change in power of attorney 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 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.

[48 FR 2696, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]

[*See § 1.63 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.64 Substitute statement in lieu of an oath or declaration.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) An applicant under § 1.43 , 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63 , or cannot be found or reached after diligent effort.
• (b) A substitute statement under this section must:
  • (1) Comply with the requirements of § 1.63(a) , identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
  • (2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76 , the residence and mailing address of the person signing the substitute statement;
  • (3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63 , namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63 ; and
  • (4) Unless the following information is supplied in an application data sheet in accordance with § 1.76 , also identify:
    • (i) Each inventor by his or her legal name; and
    • (ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
• (c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 .
• (d) Any reference to an inventor’s oath or declaration includes a substitute statement provided for in this section.
• (e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
• (f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63 . The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43 , 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.

[48 FR 2696, Jan. 20, 1983, added effective Feb. 27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.64 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.64 (pre‑AIA) Person making oath or declaration.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) The oath or declaration (§ 1.63 ), including any supplemental oath or declaration (§ 1.67 ), must be made by all of the actual inventors except as provided for in §§ 1.42 , 1.43 , 1.47 , or § 1.67 .
• (b) If the person making the oath or declaration or any supplemental oath or declaration is not the inventor (§§ 1.42 , 1.43 , 1.47 , or § 1.67 ), the oath or declaration shall state the relationship of the person to the inventor, and, upon information and belief, the facts which the inventor is required to state. If the person signing the oath or declaration is the legal representative of a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence, and mailing address of the legal representative.

[48 FR 2696, Jan. 20, 1983, added effective Feb. 27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

[ *See § 1.64 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.66 Statements under oath.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.66 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.66 (pre‑AIA) Officers authorized to administer oaths.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) The oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
• (b) When the oath is taken before an officer in a country foreign to the United States, any accompanying application papers, except the drawings, must be attached together with the oath and a ribbon passed one or more times through all the sheets of the application, except the drawings, and the ends of said ribbon brought together under the seal before the latter is affixed and impressed, or each sheet must be impressed with the official seal of the officer before whom the oath is taken. If the papers as filed are not properly ribboned or each sheet impressed with the seal, the case will be accepted for examination, but before it is allowed, duplicate papers, prepared in compliance with the foregoing sentence, must be filed.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982]

[ *See § 1.66 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.67 Supplemental oath or declaration.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) The applicant may submit an inventor’s oath or declaration meeting the requirements of § 1.63 , § 1.64 , or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration. Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76 , except that any correction of inventorship must be pursuant to § 1.48 .
• (b) A supplemental inventor’s oath or declaration under this section must be executed by the person whose inventor’s oath or declaration is being withdrawn, replaced, or otherwise corrected.
• (c) The Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 for an application to provide an additional inventor’s oath or declaration for the application.
• (d) No new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed inventor’s oath or declaration.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (c) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.67 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.67 (pre‑AIA) Supplemental oath or declaration.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

• (a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
  • (1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42 , 1.43 , or § 1.47 ) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
  • (2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42 , 1.43 or § 1.47 ) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
  • (3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) ( e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76 .
  • (4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76 ), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
• (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.
• (c) [Reserved]

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (c) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

[ *See § 1.67 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.68 Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

[top]

1.69 Foreign language oaths and declarations.

• (a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
• (b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv) , 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.

[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]

[top]

1.70 [Reserved]

[52 FR 20046, May 28, 1987, effective July 1, 1987]

[top]

1.71 Detailed description and specification of the invention.

• (a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
• (b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
• (c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
• (d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s) . The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
• (e) The authorization shall read as follows:

  A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.

• (f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract, and "Sequence Listing" (if required or submitted under § 1.821(c) ) should not be included on a sheet including any other part of the application.
• (g)
  • (1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e) .
  • (2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth in § 1.17(i) if not filed within one of the following time periods:
    • (i) Within three months of the filing date of a national application;
    • (ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
    • (iii) Before the mailing of a first Office action on the merits; or
    • (iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114 .
  • (3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.

[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; para. (f) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (g) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (g) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (g)(1) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (f) revised, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021]

[top]

1.72 Title and abstract.

• (a) The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office’s automated information systems may not be reflected in the Office’s records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76 ), the title of the invention should appear as a heading on the first page of the specification.
• (b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.

[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (b) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.73 Summary of the invention.

A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

[top]

1.74 Reference to drawings.

When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).

[top]

1.75 Claim(s).

• (a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
• (b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
• (c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16 , a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j) . Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
• (d)
  • (1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a) .)
  • (2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
• (e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
  • (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  • (2) A phrase such as “wherein the improvement comprises,” and
  • (3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
• (f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
• (g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
• (h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
• (i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.

[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (g) amended, paras. (h) and (i) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b) and (c) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (b) and (c) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]

[top]

1.76 Application data sheet.

[Editor Note: Some paragraphs have limited applicability. See * below for details.]

• (a) Application data sheet. An application data sheet is a sheet or sheets that may be submitted in a provisional application under 35 U.S.C. 111(b) , a nonprovisional application under 35 U.S.C. 111(a) , a nonprovisional international design application, or a national stage application under 35 U.S.C. 371 and must be submitted when required by § 1.55 or 1.78 to claim priority to or the benefit of a prior-filed application under 35 U.S.C. 119 , 120 , 121 , 365 , or 386 . An application data sheet must be titled "Application Data Sheet." An application data sheet must contain all of the section headings listed in paragraph (b) of this section, except as provided in paragraph (c)(2) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the application for which it has been submitted.
• (b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
  • (1) Inventor information. This information includes the legal name, residence, and mailing address of the inventor or each joint inventor.
  • (2) Correspondence information. This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a) ).
  • (3) Application information. This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application ( e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter ( see § 5.2(c) ), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. When information concerning the previously filed application is required under § 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed.
  • (4) Representative information. This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32 ).
  • (5) Domestic benefit information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , or 386(c) . Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120 and § 1.78 .
  • (6) Foreign priority information. This information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55 .
  • (7) Applicant information: This information includes the name (either natural person or juristic entity) and address of the legal representative, assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant under § 1.43 or § 1.46 . Providing assignment information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
• (c) Correcting and updating an application data sheet.
  • (1) Information in a previously submitted application data sheet, inventor’s oath or declaration under § 1.63 , § 1.64 or § 1.67 , or otherwise of record, may be corrected or updated until payment of the issue fee by a new application data sheet providing corrected or updated information, except that inventorship changes must comply with the requirements of § 1.48 , foreign priority and domestic benefit information changes must comply with §§ 1.55 and 1.78 , and correspondence address changes are governed by § 1.33(a) .
  • (2) An application data sheet providing corrected or updated information may include all of the sections listed in paragraph (b) of this section or only those sections containing changed or updated information. The application data sheet must include the section headings listed in paragraph (b) of this section for each section included in the application data sheet, and must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed, except that identification of information being changed is not required for an application data sheet included with an initial submission under 35 U.S.C. 371 .
• (d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents:
  • (1) The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that:
    • (i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55 ) or domestic benefit (§ 1.78 ) claims; and
    • (ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48 .
  • (2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
  • (3) The Office will capture bibliographic information from the application data sheet. The Office will generally not review the inventor’s oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. Incorrect bibliographic information contained in an application data sheet may be corrected as provided in paragraph (c)(1) of this section.
• (e) Signature requirement. An application data sheet must be signed in compliance with § 1.33(b) . An unsigned application data sheet will be treated only as a transmittal letter.
• (f) Patent Law Treaty Model International Forms. The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119 , 120 , 121 , or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.
• (g) Patent Cooperation Treaty Request Form. The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119 , 120 , 121 , or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119 , 120 , 121 , or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111 , the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.

[Added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(7) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a), (b)(4), (c)(2) and (d) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (b)(5) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (b)(5) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (b)(5) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a), (b)(1), (b)(3), (b)(5), (b)(7), (c), and (d) revised and para. (e) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (b)(5) and (b)(6) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (b)(3) and (d)(2) revised, paras. (f) and (g) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; paras. (a), (b)(5), and (b)(6) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ *Paragraphs (a), (b)(1), (b)(3), (b)(5), (b)(6), (b)(7), (c), (d) and (e) above include changes having limited applicability as follows:

The changes to para. 1.76(b)(3) effective Dec. 18, 2013 are applicable only to patent applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. For para. (b)(3) applicable to applications filed on or after Sept. 16, 2012 and before Dec. 18, 2013, see § 1.76 (2012‑09‑16 thru 2013‑12‑17) . For para. (b)(3) applicable to applications filed before Sept. 16, 2012, see § 1.76 (pre‑AIA) . The changes to paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), (d), and (e) effective Sept. 16, 2012 and/or May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. For paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) in effect for applications filed prior to Sept. 16, 2012, see § 1.76 (pre‑AIA) .]

[top]

1.76 (2012‑09‑16 thru 2013‑12‑17) Application data sheet.

[Editor Note: Para. (b)(3) below is applicable to applications filed on or after September 16, 2012 and before December 18, 2013 *]

• *****
• (b) *****
  • (3) Application information. This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application ( e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter ( see § 5.2(c) ), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination.
  • *****

Para. (b)(3) above includes changes applicable to any application filed under 35 U.S.C. 111 or 363 on or after Sept. 16, 2012 and before Mar. 16, 2013. For para. (b)(3) applicable to applications filed on or after Mar. 16, 2013, see § 1.76 . For para. (b)(3) applicable to applications filed before Sept. 16, 2012, see § 1.76 (pre‑AIA) .

[top]

1.76 (pre‑AIA) Application data sheet.

[Editor Note: Paras. (a), (b)(1), (b)(3), (b)(5), (b)(7), (c) and (d) below are applicable to patent applications filed under 35 U.S.C. 111(a) or 363 before September 16, 2012.]

• (a) Application data sheet. An application data sheet is a sheet or sheets, that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data, arranged in a format specified by the Office. An application data sheet must be titled “Application Data Sheet” and must contain all of the section headings listed in paragraph (b) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the provisional or nonprovisional application for which it has been submitted.
• (b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
  • (1) Applicant information. This information includes the name, residence, mailing address, and citizenship of each applicant (§ 1.41(b)) . The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. If the applicant is not an inventor, this information also includes the applicant’s authority (§§ 1.42 , 1.43 , and 1.47 ) to apply for the patent on behalf of the inventor.
  • *****
  • (3) Application information. This information includes the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c) ), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. The suggested classification and Technology Center information should be supplied for provisional applications whether or not claims are present. If claims are not present in a provisional application, the suggested classification and Technology Center should be based upon the disclosure.
  • *****
  • (5) Domestic priority information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e) , 120 , 121 , or 365(c) . Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120 , and § 1.78(a)(2) or § 1.78(a)(5) , and need not otherwise be made part of the specification.
  • (6) Foreign priority information. This information includes the application number, country, and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55 .
  • (7) Assignee information. This information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application. Providing this information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
• (c) Supplemental application data sheets. Supplemental application data sheets:
  • (1) May be subsequently supplied prior to payment of the issue fee either to correct or update information in a previously submitted application data sheet, or an oath or declaration under § 1.63 or § 1.67 , except that inventorship changes are governed by § 1.48 , correspondence changes are governed by § 1.33(a) , and citizenship changes are governed by § 1.63 or § 1.67 ; and
  • (2) Must be titled “Supplemental Application Data Sheet,” include all of the section headings listed in paragraph (b) of this section, include all appropriate data for each section heading, and must identify the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed.
• (d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents.
  • (1) The latest submitted information will govern notwithstanding whether supplied by an application data sheet, an amendment to the specification, a designation of a correspondence address, or by a § 1.63 or § 1.67 oath or declaration, except as provided by paragraph (d)(3) of this section;
  • (2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor’s oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.
  • (3) The oath or declaration under § 1.63 or § 1.67 governs inconsistencies with the application data sheet in the naming of inventors (§ 1.41(a)(1) ) and setting forth their citizenship ( 35 U.S.C. 115 );
  • (4) The Office will capture bibliographic information from the application data sheet (notwithstanding whether an oath or declaration governs the information). Thus, the Office shall generally, for example, not look to an oath or declaration under § 1.63 to see if the bibliographic information contained therein is consistent with the bibliographic information captured from an application data sheet (whether the oath or declaration is submitted prior to or subsequent to the application data sheet). Captured bibliographic information derived from an application data sheet containing errors may be corrected if applicant submits a request therefor and a supplemental application data sheet.

[ * Paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) above are applicable to applications filed before Sept. 16, 2012. For the current rule, including paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and (d) applicable to applications filed on or after Sept. 16, 2012, see § 1.76 .]

[top]

1.77 Arrangement of application elements.

• (a) The elements of the application, if applicable, should appear in the following order:
  • (1) Utility application transmittal form.
  • (2) Fee transmittal form.
  • (3) Application data sheet (see § 1.76 ).
  • (4) Specification.
  • (5) Drawings.
  • (6) The inventor’s oath or declaration.
• (b) The specification should include the following sections in order:
  • (1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
  • (2) Cross-reference to related applications.
  • (3) Statement regarding federally sponsored research or development.
  • (4) The names of the parties to a joint research agreement.
  • (5) An incorporation by reference statement regarding the material in:
    • (i) One or more ASCII plain text files, submitted via the USPTO patent electronic filing system or on one or more read-only optical discs ( see § 1.52(e)(8) ), identifying the names of each file, the date of creation of each file, and the size of each file in bytes, for the following document types:
      • (A) A “Computer Program Listing Appendix” ( see § 1.96(c) );
      • (B) A “Sequence Listing” ( see § 1.821(c) ); or
      • (C) “Large Tables” ( see § 1.58(c) ).
    • (ii) An XML file for a “Sequence Listing XML” ( see § 1.831(a) ), submitted via the USPTO patent electronic filing system or on one or more read-only optical discs ( see § 1.52(e)(8) ), identifying the names of each file, the date of creation of each file, and the size of each file in bytes.
  • (6) Statement regarding prior disclosures by the inventor or a joint inventor.
  • (7) Background of the invention.
  • (8) Brief summary of the invention.
  • (9) Brief description of the several views of the drawing.
  • (10) Detailed description of the invention.
  • (11) A claim or claims.
  • (12) Abstract of the disclosure.
  • (13) "Sequence Listing," required by § 1.821(c) , that is submitted as a Portable Document Format (PDF) file (as set forth in § 1.821(c)(2) ) via the USPTO patent electronic filing system or on physical sheets of paper (as set forth in § 1.821(c)(3) ).
• (c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.

[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras. (h) and (i), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (a)(6) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b)(2) revised, (b)(6)-(12) redesignated as (b)(7)-(13), and para. (b)(6) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (b)(5) and (b)(13) revised, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021; para. (b)(13) corrected, 86 FR 73985, Dec. 29, 2021, effective Dec. 29, 2021; para. (b)(5) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]

[top]

1.78 Claiming benefit of earlier filing date and cross-references to other applications.

• (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
  • (1) The nonprovisional application or international application designating the United States must be:
    • (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
    • (ii) Entitled to claim the benefit under 35 U.S.C. 120 , 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
  • (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c) , and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g) .
  • (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ).
  • (4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a) , this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
    • (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
    • (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
  • (5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5) ) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
  • (6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
• (b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
  • (1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
    • (i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5) ) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
    • (ii) The petition fee as set forth in § 1.17(m) ; and
    • (iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (2) The restoration of the right of priority under PCT Rule 26bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
• (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
  • (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
  • (2) The petition fee as set forth in § 1.17(m) ; and
  • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120 , 121 , 365(c) , or 386(c) and this section.
  • (1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
    • (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
    • (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
    • (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
  • (2) Except for a continued prosecution application filed under § 1.53(d) , any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023 . If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
  • (3)
    • (i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
    • (ii) If the later-filed application is an application filed under 35 U.S.C. 111(a) , this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371 , this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
      • (A) An application for a design patent;
      • (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
      • (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
    • (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the prior-filed application.
  • (4) 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-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
  • (5) Cross-references to other related applications may be made when appropriate (see § 1.14 ), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5) ).
  • (6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
    • (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k) , paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
    • (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
  • (7) Where benefit is claimed under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
• (e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) for the benefit of a prior-filed application must be accompanied by:
  • (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
  • (2) The petition fee as set forth in § 1.17(m) ; and
  • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
• (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109 ), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109 ), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
• (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76 ), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
• (i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the international application and will be treated as having been filed in the international application.
• (j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
• (k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a) ), PCT Rule 80.5 , and Hague Agreement Rule 4(4).

[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)(2), (a)(4), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. (a)(2), (a)(3), and (a)(4) revised and paras. (a)(5) and (a)(6) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; paras. (a)(3)(iii) & (a)(6)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(3) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. (a)(1), (a)(2)(iii), (a)(5)(iii) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(1)(iii) removed and para. (a)(1)(ii) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (a)(5)(iv) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a)(1) introductory text and (a)(4) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.79 [Reserved]

[Removed and reserved, 84 FR 51977, Oct. 1, 2019, effective Oct. 31, 2019]

[top]

1.81 Drawings required in patent application.

[Editor Note: Para. (a) below is applicable only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013 *]

• (a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
• (b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views).
• (c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.
• (d) Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[ * Para. (a) above is only applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (2012‑09‑16 thru 2013‑12‑17) for para. (a) applicable to applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. See § 1.81 (pre‑AIA) for para. (a) applicable to applications filed before Sept. 16, 2012.]

[top]

1.81 (2012‑09‑16 thru 2013‑12‑17) Drawings required in patent application.

[Editor Note: Para. (a) below is applicable to patent applications filed on or after September 16, 2012 and before December 18, 2013.]

• (a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
• *****

[* Para. (a) above is applicable to applications filed under 35 U.S.C. 111 or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. See § 1.81 for the current rule, including para. (a) applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (pre‑AIA) for para. (a) applicable to applications filed before Sept. 16, 2012.]

[top]

1.81 (pre‑AIA) Drawings required in patent application.

[Editor Note: Para. (a) below is applicable to patent applications filed before September 16, 2012 *]

• (a) The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
• *****

[ * Para. (a) above is applicable to applications filed before Sept. 16, 2012. See § 1.81 for the current rule including para. (a) applicable to applications filed under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81 (2012‑09‑16 thru 2013‑12‑17) for para. (a) applicable to applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 and before Dec. 18, 2013. ]

[top]

1.83 Content of drawing.

• (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation ( e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
• (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
• (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d) .

[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978; paras. (a) and (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.84 Standards for drawings.

• (a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
  • (1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
  • (2) Color. Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
    • (i) The fee set forth in § 1.17(h) ;
    • (ii) One (1) set of color drawings if submitted via the USPTO patent electronic filing system or three (3) sets of color drawings if not submitted via the USPTO patent electronic filing system; and
    • (iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:

      The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

• (b) Photographs.—
  • (1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots ( e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
  • (2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
• (c) Identification of drawings. Identifying indicia should be provided, and if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin. Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to § 1.121(d) . If a marked-up copy of any amended drawing figure including annotations indicating the changes made is filed, such marked-up copy must be clearly labeled as “Annotated Sheet” pursuant to § 1.121(d)(1) .
• (d) Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings, and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
• (e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
• (f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
  • (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
  • (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
• (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 side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), 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.
• (h) Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
  • (1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
  • (2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
    • (i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
    • (ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
  • (3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
  • (4) Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
  • (5) Modified forms. Modified forms of construction must be shown in separate views.
• (i) Arrangement of views . One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
• (j) Front page view. The drawing must contain as many views as necessary to show the invention. One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention. Views must not be connected by projection lines and must not contain center lines. Applicant may suggest a single view (by figure number) for inclusion on the front page of the patent application publication and patent.
• (k) Scale. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Indications such as “actual size” or “scale 1/2” on the drawings are not permitted since these lose their meaning with reproduction in a different format.
• (l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
• (m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
• (n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
• (o) Legends. Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible.
• (p) Numbers, letters, and reference characters.
  • (1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
  • (2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
  • (3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
  • (4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
  • (5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
• (q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
• (r) Arrows. Arrows may be used at the ends of the lines, provided that their meaning is clear, as follows:
  • (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
  • (2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
  • (3) To show the direction of movement.
• (s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.
• (t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
• (u) Numbering of views.
  • (1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
  • (2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
• (v) Security markings . Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
• (w) Corrections. Any corrections on drawings submitted to the Office must be durable and permanent.
• (x) Holes. No holes should be made by applicant in the drawing sheets.
• (y) Types of drawings. See § 1.152 for design drawings, § 1.1026 for international design reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.

[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36 FR 9775, May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657, Nov. 6,1980; paras. (a), (b), (i), (j), and (l) amended, paras. (n), (o), and (p) added, 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g), and (x) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a)(2)(i), (b), (c) & (g) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), (j), (k), (o), and (x) revised, and para. (y) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2), (e), and (j) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (y) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(2) introductory text revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)(2) and (y) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (a)(2)(ii) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.85 Corrections to drawings.

• (a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c) , any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c) ). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84 , the drawing may be admitted for examination.
• (b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
• (c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026 , as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c) ).

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.88 [Reserved]

[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

[top]

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 fee set forth in § 1.17(h) ; 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.
• (c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84 .

[Revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3)(i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]

[top]

1.92 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.93 Specimens.

When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment.

[top]

1.94 Return of models, exhibits or specimens.

• (a) Models, exhibits, or specimens may be returned to the applicant if no longer necessary for the conduct of business before the Office. When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must arrange for the return of the model, exhibit, or specimen at the applicant’s expense. The Office will dispose of perishables without notice to applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
• (b) Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. The provisions of this paragraph do not apply to a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84 , where the model or exhibit has been described by photographs that substantially conform to § 1.84 , or where the model, exhibit or specimen is perishable.
• (c) Where applicant is notified, pursuant to paragraph (a) of this section, of the need to arrange for return of a model, exhibit or specimen, applicant must arrange for the return within the period set in such notice, to avoid disposal of the model, exhibit or specimen by the Office. Extensions of time are available under § 1.136 , except in the case of perishables. Failure to establish that the return of the item has been arranged for within the period set or failure to have the item removed from Office storage within a reasonable amount of time notwithstanding any arrangement for return, will permit the Office to dispose of the model, exhibit or specimen.

[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]

[top]

1.95 Copies of exhibits.

Copies of models or other physical exhibits will not ordinarily be furnished by the Office, and any model or exhibit in an application or patent shall not be taken from the Office except in the custody of an employee of the Office specially authorized by the Director.

[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

[top]

1.96 Submission of computer program listings.

• (a) General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a document that lists, in appropriate sequence, the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language that will cause a computer to perform a desired procedure or task such as solving a problem, regulating the flow of work in a computer, or controlling or monitoring events. Computer program listings may be submitted in patent applications, as set forth in paragraphs (b) and (c) of this section.
• (b) Material which will be printed in the patent: If the computer program listing is contained in 300 lines or fewer, with each line of 72 characters or fewer, it may be submitted either as drawings or as part of the specification.
  • (1) Drawings. If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 1.84 . At least one figure numeral is required on each sheet of drawing.
  • (2) Specification.
    • (i) If the listing is submitted as part of the specification, it must be submitted in accordance with the provisions of § 1.52 .
    • (ii) Any listing having more than 60 lines of code that is submitted as part of the specification must be positioned at the end of the description but before the claims. Any amendment must be made by way of submission of a substitute sheet.
• (c) As an appendix that will not be printed: Any computer program listing may, and any computer program listing having over 300 lines (up to 72 characters per line) must, be submitted as an electronic document in ASCII plain text, whether submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with § 1.52(e) . An electronic document containing such a computer program listing is to be referred to as a “Computer Program Listing Appendix.” The “Computer Program Listing Appendix” will not be part of the printed patent. The specification must include an incorporation by reference of the “Computer Program Listing Appendix,” in accordance with § 1.77(b)(5) .
  • (1) A “Computer Program Listing Appendix” must conform to the following requirements:
    • (i) Computer compatibility: PC or Mac ^®;
    • (ii) Operating system compatibility: MS–DOS ^®, MS-Windows ^®, Mac OS ^®, or Unix ^®/Linux ^®;
    • (iii) Line terminator: ASCII CRLF or LF only; and
    • (iv) Control codes: The data must not be dependent on control characters or codes that are not defined in the ASCII character set.
  • (2) Each file must be named as *.txt, where “*” is one character or a combination of characters limited to upper- or lowercase letters, numbers, hyphens, and underscores and does not exceed 60 characters in total, excluding the extension. No spaces or other types of characters are permitted in the file name.
  • (3) Each file containing a “Computer Program Listing Appendix” submitted via the USPTO patent electronic filing system must not exceed 25 MB, and file compression is not permitted.
  • (4) A "Computer Program Listing Appendix" submitted in compliance with § 1.52(e) must conform to the following requirements:
    • (i) A separate read-only optical disc containing a "Computer Program Listing Appendix" must be submitted for each applicable application;
    • (ii) Multiple computer program listings for a single application may be placed on a single read-only optical disc;
    • (iii) Multiple read-only optical discs, containing one or more computer program listings, may be submitted for a single application, if necessary;
    • (iv) Any computer program listing may, and a computer program listing having a nested file structure must, when submitted in compliance with § 1.52(e) , be compressed into a single file using WinZip ^®, 7-Zip, or Unix ^®/ Linux ^® Zip;
    • (v) Any compressed file must not be self-extracting; and
    • (vi) A compressed ASCII plain text file that does not fit on a single read-only optical disc may be split into multiple file parts, in accordance with the target read-only optical disc size and labeled in compliance with § 1.52(e)(5)(vi) .
  • (5) Any amendments to a "Computer Program Listing Appendix" in electronic form in ASCII plain text format must include:
    • (i) A replacement ASCII plain text file, in accordance with the requirements of this paragraph (c), submitted via the USPTO patent electronic filing system, or on a read-only optical disc, in compliance with § 1.52(e) , where the replacement read-only optical disc must be submitted in duplicate, and the read-only optical discs must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day, and year of creation indicated) and “COPY 2 REPLACEMENT MM/DD/YYYY”;
    • (ii) A request that the amendment be made by incorporation by reference of the material in the replacement ASCII plain text file, in a separate paragraph of the specification (replacing any prior such paragraph) identifying the name of the file, the date of creation, and the size of the file in bytes ( see § 1.77(b)(5) );
    • (iii) A statement that identifies the location of all deletions, replacements, or additions to the ASCII plain text file; and
    • (iv) A statement that the replacement ASCII plain text file contains no new matter.
  • (6) The specification of a complete application with a “Computer Program Listing Appendix” as an ASCII plain text file, filed on the application filing date, without an incorporation by reference of the material contained in the ASCII plain text file, must be amended to contain a separate paragraph incorporating by reference the material contained in the ASCII plain text file, in accordance with § 1.77(b)(5) .
  • (7) Any read-only optical disc for a “Computer Program Listing Appendix” must be submitted in duplicate. The read-only optical disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical discs are not identical, the Office will use the read-only optical disc labeled “Copy 1” for further processing. Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc, in compliance with § 1.96(c)(5) .

[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000; para. (c) introductory text revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a) and (c) revised, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021]

[top]

1.97 Filing of information disclosure statement.

• (a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
• (b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
  • (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d) ;
  • (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
  • (3) Before the mailing of a first Office action on the merits;
  • (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114 ; or
  • (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
• (c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113 , a notice of allowance under § 1.311 , or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
  • (1) The statement 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) The statement specified in paragraph (e) of this section; and
  • (2) The fee set forth in § 1.17(p) .
• (e) A statement under this section must state either:
  • (1) That each item of information contained in the information disclosure statement was first cited in any 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 certification 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.
• (f) No extensions of time for filing an information disclosure statement are permitted under § 1.136 . If a bona fide attempt is made to comply with § 1.98 , but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
• (g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
• (h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b) .
  • (i) If an information disclosure statement does not comply with either this section or § 1.98 , it will be placed in the file but will not be considered by the Office.

[48 FR 2696, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a) through (e) and (i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b)(3)-(4) revised and para. (b)(5) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.98 Content of information disclosure statement.

• (a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
  • (1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:
    • (i) The application number of the application in which the information disclosure statement is being submitted;
    • (ii) A column that provides a space, next to each document to be considered, for the examiner’s initials; and
    • (iii) A heading that clearly indicates that the list is an information disclosure statement.
  • (2) A legible copy of:
    • (i) Each foreign patent;
    • (ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
    • (iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion [but see 1287 OG 163 (October 19, 2004) discussed in MPEP § 609.04(a), subsection II]; and
    • (iv) All other information or that portion which caused it to be listed.
  • (3)
    • (i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
    • (ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c) .
• (b)
  • (1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
  • (2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
  • (3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
  • (4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
  • (5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.
• (c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
• (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
  • (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120 ; and
  • (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.

[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2696, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (e) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (a) and (c) revised and para. (e) removed, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]

[top]

1.99 [Reserved]

[Removed and reserved, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]

[top]

1.101 [Reserved]

[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 52 FR 20046, May 28, 1987, effective July 1, 1987; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

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 Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
• (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
• (c) A petition to make an application special may be filed without a fee if the basis for the petition is:
  • (1) The applicant’s age or health; or
  • (2) That the invention will materially:
    • (i) Enhance the quality of the environment;
    • (ii) Contribute to the development or conservation of energy resources; or
    • (iii) Contribute to countering terrorism.
• (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h) .
• (e) A request for prioritized examination under this paragraph (e) must comply with the requirements of this paragraph (e) and be accompanied by the prioritized examination fee set forth in § 1.17(c) , the processing fee set forth in § 1.17(i) , and if not already paid, the publication fee set forth in § 1.18(d) . An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph (e) will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371 , design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or (2) of this section. No more than 15,000 requests for such prioritized examination will be accepted in any fiscal year.
  • (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a) . The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor’s oath or declaration on filing, except that the filing of an inventor’s oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the USPTO patent electronic filing system and include the filing fee under § 1.16(a) , search fee under § 1.16(k) , and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c) , search fee under § 1.16(m) , and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
  • (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114 . If the application is a utility application, the request must be filed via the USPTO patent electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114 . Only a single such request for prioritized examination under this paragraph may be granted in an application.

[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised and para. (e) added, 76 FR 18399, Apr. 4, 2011, effective date delayed until further notice, 76 FR 23876, Apr. 29, 2011 and withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para. (a) revised and para. (e) added, 76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (e) revised, 76 FR 78566, Dec. 19, 2011, effective Dec. 19, 2011; para. (e)(1) revised, 79 FR 12386, Mar. 5, 2014, effective Mar. 5, 2014 (adopted as final, 79 FR 68124, Nov. 14, 2014); para. (e) introductory text revised, 84 FR 45907, Sept. 3, 2019, effective Sept. 3, 2019; para. (e) revised, 86 FR 52988, Sept. 24, 2021, effective Sept. 24, 2021; paras. (e)(1) and (e)(2) revised, 87 FR 68900, Nov. 17, 2022, effective Dec. 19, 2022]

[top]

1.103 Suspension of action by the Office.

• (a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
  • (1) A showing of good and sufficient cause for suspension of action; and
  • (2) The fee set forth in § 1.17(g) , unless such cause is the fault of the Office.
• (b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d) , specify the period of suspension, and include the processing fee set forth in § 1.17(i) .
• (c) Limited suspension of action after a request for continued examination (RCE) under § 1.114. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114 , specify the period of suspension, and include the processing fee set forth in § 1.17(i) .
• (d) Deferral of examination. On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i) . A request for deferral of examination under this paragraph will not be granted unless:
  • (1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495 ;
  • (2) The applicant has not filed a nonpublication request under § 1.213(a) , or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
  • (3) The application is in condition for publication as provided in § 1.211(c) ; and
  • (4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 .
• (e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
• (f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
  • (1) The application is owned by the United States;
  • (2) Publication of the invention may be detrimental to the public safety or defense; and
  • (3) The appropriate department or agency requests such suspension.

[24 FR 10332, Dec. 22, 1959; 33 FR 5624, Apr. 11, 1968; paras. (a) and (b), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 2000; paras. (d) through (f) redesignated as (e) through (g) and para. (d) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (d)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (g) removed, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[top]

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 in an Office action 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.
• (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)
    • (i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
    • (ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
      • (A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e) , that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
      • (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • (5)
    • (i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
    • (ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
      • (A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e) , which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
      • (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • (6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
• (d) Citation of references.
  • (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
  • (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 by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.

[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para. (d), 47 FR 41272, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (c)(4) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)(2) and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(5) removed and para. (d)(1) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)(4) revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (c)(4) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a)(1) and (b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a)(1) and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras.(c)(4) and (c)(5) revised and (c)(6) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[top]

1.105 Requirements for information.

[Editor Note: Some * paragraphs below are not applicable to patent applications filed before Sept. 16, 2012]

• (a)
  • (1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c) , or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
    • (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
    • (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
    • (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
    • (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
    • (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
    • (vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
    • (vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
    • (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
  • (2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
    • (i) A requirement for factual information;
    • (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
    • (iii) Stipulations as to facts with which the applicant may agree or disagree.
  • (3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
• (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
• (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136 .

[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (a)(2) removed and paras. (a)(3) and (a)(4) redesignated as (a)(2) and (a)(3), 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (a)(1) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.105 (pre‑AIA) for the rule otherwise in effect.]

[top]

1.105 (pre‑AIA) Requirements for information.

[Editor Note: Some * paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

• (a)
  • (1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c) , or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
    • (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
    • (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
    • (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
    • (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
    • (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
    • (vi) Improvements : Where the claimed invention is an improvement, identification of what is being improved.
    • (vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
    • (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
  • (2) Where an assignee has asserted its right to prosecute pursuant to § 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), (iii), and (vii) of this section may also be applied to such assignee.
  • (3) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
    • (i) A requirement for factual information;
    • (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
    • (iii) Stipulations as to facts with which the applicant may agree or disagree.
  • (4) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
• (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
• (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136 .

[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]

[ *See § 1.105 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

[top]

1.106 [Reserved]

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (c) added, 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (d) and (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.107 [Reserved]

[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.108 [Reserved]

[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.109 Effective filing date of a claimed invention under the Leahy-Smith America Invents Act.

• (a) The effective filing date for a claimed invention in a patent or application for patent, other than in a reissue application or reissued patent, is the earliest of:
  • (1) The actual filing date of the patent or the application for the patent containing a claim to the invention; or
  • (2) The filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119 , 120 , 121 , 365 , or 386 .
• (b) The effective filing date for a claimed invention in a reissue application or a reissued patent is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.

[Added 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.110 Inventorship and ownership of the subject matter of individual claims.

When one or more joint inventors are named in an application or patent, the Office may require an applicant or patentee to identify the inventorship and ownership or obligation to assign ownership, of each claimed invention on its effective filing date (as defined in § 1.109 ) or on its date of invention, as applicable, when necessary for purposes of an Office proceeding. The Office may also require an applicant or patentee to identify the invention dates of the subject matter of each claim when necessary for purposes of an Office proceeding.

[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[top]

1.111 Reply by applicant or patent owner to a non-final Office action.

• (a)
  • (1) If the Office action after the first examination (§ 1.104 ) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
  • (2) Supplemental replies.
    • (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
      • (A) Cancellation of a claim(s);
      • (B) Adoption of the examiner suggestion(s);
      • (C) Placement of the application in condition for allowance;
      • (D) Reply to an Office requirement made after the first reply was filed;
      • (E) Correction of informalities ( e.g., typographical errors); or
      • (F) Simplification of issues for appeal.
    • (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c) .
• (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 be held 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.
• (c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(2)(i) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8. 2004]

[top]

1.112 Reconsideration before final action.

After reply by applicant or patent owner (§ 1.111 or § 1.945 ) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947 ), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104 ). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945 , with or without amendment, unless such Office action indicates that it is made final (§ 1.113 ) or an appeal (§ 41.31 of this title) has been taken (§ 1.116 ), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949 ) or a right of appeal notice (§ 1.953 ).

[46 FR 29182, May 29, 1981; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

[top]

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 for ex parte reexaminations filed under § 1.510 , patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116 . Petition may be taken to the Director 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 comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913 , see § 1.953 .
• (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.
• (c) 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.

[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

[top]

1.114 Request for continued examination.

• (a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
  • (1) Payment of the issue fee, unless a petition under § 1.313 is granted;
  • (2) Abandonment of the application; or
  • (3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141 , or the commencement of a civil action under 35 U.S.C. 145 or 146 , unless the appeal or civil action is terminated.
• (b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113 ), a notice of allowance (§ 1.311) , or an action that otherwise closes prosecution in the application.
• (c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111 .
• (d) If an applicant timely files a submission and fee set forth in § 1.17(e) , the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
• (e) The provisions of this section do not apply to:
  • (1) A provisional application;
  • (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
  • (3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371 ;
  • (4) An application for a design patent;
  • (5) An international design application; or
  • (6) A patent under reexamination.

[Added 65 FR 14865, Mar. 20, 2000, effective May 29, 2000; revised 65 FR 50092, Aug. 16, 2000; para. (d) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (d) revised and (f), (g), and (h) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (d) revised and (f), (g), and (h) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (e)(3)-(5) revised and para. (e)(6) added, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.115 Preliminary amendments.

• (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6 ) on or before the mail date of the first Office action under § 1.104 . The patent application publication may include preliminary amendments (§ 1.215(a) ).
  • (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
  • (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
• (b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
  • (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
  • (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
    • (i) The state of preparation of a first Office action as of the date of receipt (§ 1.6 ) of the preliminary amendment by the Office; and
    • (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
  • (3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
    • (i) Three months from the filing date of an application under § 1.53(b) ;
    • (ii) The filing date of a continued prosecution application under § 1.53(d) ; or
    • (iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
  • (4) The time periods specified in paragraph (b)(3) of this section are not extendable.

[46 FR 29183, May 29, 1981; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]

[top]

1.116 Amendments and affidavits or other evidence after final action and prior to appeal.

• (a) An amendment after final action must comply with § 1.114 or this section.
• (b) After a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 , but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
  • (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
  • (2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
  • (3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
• (c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135 , or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c) .
• (d)
  • (1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
    • (2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113 ) in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
  • (e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
  • (f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
  • (g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981 , or to carry into effect a recommendation under § 41.50(c) of this title.

[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (b) and (d) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

[top]

1.117 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]

[top]

1.118 [Reserved]

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.119 [Reserved]

[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.121 Manner of making amendments in applications.

• (a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52 , directing that specified amendments be made.
• (b) Specification. Amendments to the specification, other than the claims, “Large Tables” (§ 1.58(c) ), a “Computer Program Listing Appendix” (§ 1.96(c)(5) and (7) ), a “Sequence Listing” (§ 1.825 ), or a “Sequence Listing XML” (§ 1.835 ), must be made by adding, deleting, or replacing a paragraph; by replacing a section; or by providing a substitute specification, in the manner specified in this section.
  • (1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
    • (i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
    • (ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived;
    • (iii) The full text of any added paragraphs without any underlining; and
    • (iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
  • (2) Amendment by replacement section. If the sections of the specification contain section headings as provided in § 1.77(b) , § 1.154(b) , or § 1.163(c) , amendments to the specification, other than the claims, may be made by submitting:
    • (i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and
    • (ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
  • (3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
    • (i) An instruction to replace the specification; and
    • (ii) A substitute specification in compliance with §§ 1.125(b) and (c) .
  • (4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
  • (5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be represented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
  • (6) Amendments to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML.” Changes to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be made in accordance with § 1.58(g) for “Large Tables,” § 1.96(c)(5) for a “Computer Program Listing Appendix,” § 1.825 for a “Sequence Listing,” or § 1.835 for a “Sequence Listing XML.”
• (c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes ( e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
  • (1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement ( e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
  • (2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.”
  • (3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
  • (4) When claim text shall not be presented; canceling a claim.
    • (i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
    • (ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
  • (5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
• (d) Drawings. One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled “Replacement Sheet.” Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as “New Sheet.” All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
  • (1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
  • (2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
• (e) Disclosure consistency. 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.
• (f) No new matter. No amendment may introduce new matter into the disclosure of an application.
• (g) Exception for examiner’s amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner’s amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner’s amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
• (h) Amendment sections. Each section of an amendment document ( e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.
• (i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173 .
• (j) 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 .
• (k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.

[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981; para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (i) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (d) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (d) introductory text revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; para. (b) introductory text revised, para. (b)(6) added, 86 FR 57035, Oct. 14, 2021, effective Nov. 15, 2021; para. (b) introductory text and para. (b)(6) revised, 87 FR 30806, May 20, 2022, effective July 1, 2022]

[top]

1.122 [Reserved]

[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.123 [Reserved]

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.124 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

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) Subject to § 1.312 , a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
• (c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
• (d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(2) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]

[top]

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.

[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

1.127 [Reserved]

[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; removed and reserved, 84 FR 51977, Oct. 1, 2019, effective Oct. 31, 2019]

[top]

1.129 Transitional procedures for limited examination after final rejection and restriction practice.

• (a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120 , 121 and 365(c) , is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r) . If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r) . Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116 . A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
• (b)
  • (1) In an application, other than for reissue or a design patent, that has been pending for at least three years as of June 8, 1995; taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120 , 121 and 365(c) , no requirement for restriction or for the filing of divisional applications shall be made or maintained in the application after June 8, 1995, except where:
    • (i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120 , 121 , and 365(c) prior to April 8, 1995;
    • (ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
    • (iii) The required fee for examination of each additional invention was not paid.
  • (2) If the application contains more than one independent and distinct invention and a requirement for restriction or for the filing of divisional applications cannot be made or maintained pursuant to this paragraph, applicant will be so notified and given a time period to:
    • (i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
    • (ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
    • (iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
  • (3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b) . An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121 .
• (c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

[top]

1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.

• (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
• (b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
  • (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
  • (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
• (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
• (d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
  • (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
  • (2) A specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.

[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.

• (a) When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
  • (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
  • (2) The rejection is based upon a statutory bar.
• (b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
• (c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
  • (1) A terminal disclaimer in accordance with § 1.321(c) ; and
  • (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
• (d) The provisions of this section apply to any application for patent and to any patent issuing thereon, that contains, or contained at any time:
  • (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
  • (2) A specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
• (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (a), 48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) introductory text revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

[top]

1.132 Affidavits or declarations traversing rejections or objections.

When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.

[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]

[top]

1.133 Interviews.

• (a)
  • (1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director.
  • (2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.
  • (3) The examiner may require that an interview be scheduled in advance.
• (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 .

[Para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

[top]

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.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

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.

[Paras. (a), (b), and (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

[top]

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 § 41.41 of this title;
    • (iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
    • (iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter or to § 90.3 of this chapter; or
    • (v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).
  • (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 paragraph (a) of this section are available.
  • (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. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g) .
• (c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:
  • (1) The period for submitting the inventor’s oath or declaration;
  • (2) The period for submitting formal drawings set under § 1.85(c) ; and
  • (3) The period for making a deposit set under § 1.809(c) .
• (d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20, 1989; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 66 FR 21090, Apr. 27, 2001, effective May 29, 2001; paras. (a)(1), (a)(2), and (b) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a)(1) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (a)(1) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a)(1)(iv), (a)(1)(v), (a)(2), and (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (c)(1) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a)(1)(iv), (a)(2) and (b) revised, para. (d) added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[top]

1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.

• (a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c) .
• (b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
  • (1) The reply required to the outstanding Office action or notice, unless previously filed;
  • (2) The petition fee as set forth in § 1.17(m) ;
  • (3) Any terminal disclaimer (and fee as set forth in § 1.20(d) ) required pursuant to paragraph (d) of this section; and
  • (4) 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 section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (c) Reply. In an application abandoned under § 1.57(a) , the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b) , the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114 .
• (d) Terminal disclaimer.
  • (1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
    • (i) The period of abandonment of the application; or
    • (ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) from the date on which the earliest such application was filed.
  • (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the application for which revival is sought.
  • (3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
• (e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
  • (1) The provisions of § 1.136 for an abandoned application;
  • (2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510 ; or
  • (3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913 .
• (f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
• (g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b) , a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.