The Provisional Application Cover Sheet in Microsoft Power Point format and The Declaration for Patent Application in Postscript file format are available here.
Changes to Implement 20-Year Patent Term and Provisional Applications
[BILLING CODE 3510-16]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 950404087-5087-01]
RIN: 0651-AA76
Changes to Implement 20-Year Patent Term and Provisional
Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Patent and Trademark Office (PTO) is amending
the rules of practice in patent cases to establish
procedures for: (1) filing and processing provisional
application papers; (2) calculating the length of any patent
term extension to which an applicant is entitled where the
issuance of a patent on an application filed on or after
June 8, 1995 (the implementation date of the 20-year patent
term provisions of the Uruguay Round Agreements Act), other
than for designs, was delayed due to interference
proceedings, the imposition of a secrecy order and/or
appellate review; and (3) implementing certain transitional
provisions contained in the Uruguay Round Agreements Act.
EFFECTIVE DATE: June 8, 1995.
FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or
John F. Gonzales, Senior Legal Advisors, Office of the
Deputy Assistant Commissioner for Patent Policy and
Projects, by telephone at (703)305-9285, by fax at
(703)308-6916 or by mail marked to their attention and
addressed to the Commissioner of Patents and Trademarks,
Box DAC, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act
(Public Law 103-465) was enacted on December 8, 1994.
Public Law 103-465 amends 35 U.S.C. 154 to provide that the
term of patent protection begins on the date of grant and
ends 20 years from the filing date of the application. The
amendment applies to all utility and plant patents issued on
applications having an actual United States application
filing date on or after June 8, 1995. Specifically,
35 U.S.C. 154(a)(2), as contained in Public Law 103-465,
provides that the patent term will begin on the date on
which the patent issues and will end twenty years from the
date on which the application was filed in the United
States. If the application contains a specific reference to
an earlier application under 35 U.S.C. 120, 121 or 365(c),
the patent term will end twenty years from the date on which
the earliest application referred to was filed. As amended
by Public Law 103-465, 35 U.S.C. 154 does not take into
account for determination of the patent term any application
on which priority is claimed under 35 U.S.C. 119, 365(a) or
365(b).
Under 35 U.S.C. 154(b)(1), as contained in Public Law
103-465, if the issuance of an original patent is delayed
due to interference proceedings under 35 U.S.C. 135(a) or
because the application is placed under a secrecy order
under 35 U.S.C. 181, the term of the patent shall be
extended for the period of delay, but in no case more than
five (5) years.
Under 35 U.S.C. 154(b)(2), as contained in Public Law
103-465, if the issuance of a patent is delayed due to
appellate review by the Board of Patent Appeals and
Interferences or by a Federal court and the patent is issued
pursuant to a decision in the review reversing an adverse
determination of patentability, the term of the patent shall
be extended for a period of time but in no case more than
five (5) years. However, a patent shall not be eligible for
extension under 35 U.S.C. 154(b)(2) if the patent is subject
to a terminal disclaimer due to the issuance of another
patent claiming subject matter that is not patentably
distinct from that under appellate review.
Under 35 U.S.C. 154(b)(3)(B) and 154(b)(3)(C), as contained
in Public Law 103-465, the period of extension under
35 U.S.C. 154(b)(2) shall be reduced by any time
attributable to appellate review before the expiration of
three (3) years from the filing date of the application and
for any period of time during which the applicant for patent
did not act with due diligence, as determined by the
Commissioner.
Under 35 U.S.C. 154(b)(4), as contained in Public Law
103-465, the total duration of all extensions of a patent
under 35 U.S.C. 154(b) shall not exceed five (5) years.
The provisions for patent term extension under
35 U.S.C. 154(b) are separate from and in addition to the
patent term extension provisions of 35 U.S.C. 156. The
patent term extension provisions of 35 U.S.C. 154(b) are
designed to compensate the patent owner for delays in
issuing a patent, whereas the patent term extension
provisions of 35 U.S.C. 156 are designed to restore term
lost to premarket regulatory review after the grant of a
patent. In order to prevent a term extension under
35 U.S.C. 154(b) from precluding a term extension under
35 U.S.C. 156, Public Law 103-465 amends 35 U.S.C. 156(a)(2)
to specify that the term has never been extended under
35 U.S.C. 156(e)(1).
The 20-year patent term provision is contained in
35 U.S.C. 154, as amended by Public Law 103-465. Section
154 of title 35, United States Code, applies to utility and
plant patents, but not to design patents. The term of a
design patent is defined in 35 U.S.C. 173 as fourteen (14)
years from the date of grant. Therefore, the patent term
and patent term extension provisions set forth in
35 U.S.C. 154, as amended by Public Law 103-465, do not
apply to patents for designs.
In addition, Public Law 103-465 establishes a domestic
priority system. In accordance with the provisions of the
Paris Convention for the Protection of Industrial Property,
the term of a patent cannot include the Paris Convention
priority period. Public Law 103-465 provides a mechanism to
enable applicants to quickly and inexpensively file
provisional applications. Applicants will be entitled to
claim the benefit of priority in a given application based
upon a previously filed provisional application in the
United States. The domestic priority period will not count
in the measurement of the term.
Section 111 of title 35, United States Code, was amended by
Public Law 103-465 to provide for the filing of a
provisional application on or after June 8, 1995. Section
41(a)(1) of title 35, United States Code, was amended by
Public Law 103-465 to provide a $150.00 filing fee for each
provisional application, subject to a fifty (50) percent
reduction for a small entity. The requirements for
obtaining a filing date for a provisional application are
the same as those which previously existed for an
application filed under 35 U.S.C. 111, except that no claim
or claims as set forth in 35 U.S.C. 112, second paragraph,
is required. Moreover, no oath/declaration as set forth in
35 U.S.C. 115 is required. The provisional application is
also not subject to the provisions of 35 U.S.C. 131, 135 and
157, i.e., a provisional application will not be examined
for patentability, placed in interference or made the
subject of a statutory invention registration. Further, the
provisional application will automatically be abandoned no
later than twelve (12) months after its filing date and will
not be subject to revival to restore it to pending status
beyond a date which is after twelve (12) months from its
filing date. A provisional application will not be entitled
to claim priority benefits based on any other application
under 35 U.S.C. 119, 120, 121 or 365.
Also, Public Law 103-465 amended 35 U.S.C. 119 to allow an
applicant to claim the benefit of the filing date of one or
more copending provisional applications in a later filed
application for patent under 35 U.S.C. 111(a) or 363. The
later filed application for patent under 35 U.S.C. 111(a) or
363 must be filed by an inventor or inventors named in the
copending provisional application not later than 12 months
after the date on which the provisional application was
filed and must contain or be amended to contain a specific
reference to the provisional application. The provisional
application must disclose an invention which is claimed in
the application for patent under 35 U.S.C. 111(a) or 363 in
the manner provided by the first paragraph of 35 U.S.C. 112.
In addition, the provisional application must be pending on
the filing date of the application for patent under
35 U.S.C. 111(a) or 363 and the filing fee set forth in
subparagraph (A) or (C) of 35 U.S.C. 41(a)(1) must be paid.
Since 35 U.S.C. 154(a)(3), as contained in Public Law
103-465, excludes from the determination of the patent term
any application on which priority is claimed under
35 U.S.C. 119, 365(a) or 365(b), the filing date of a
provisional application is not considered in determining the
term of any patent.
Section 119(e)(1) of title 35, United States Code, provides
that if all of the conditions of 35 U.S.C. 119(e)(1) and
(e)(2) are met, an application for patent filed under
35 U.S.C. 111(a) or 363 shall have the same effect as though
filed on the date of the provisional application. Thus, the
effective United States filing date of an application for
patent filed under 35 U.S.C. 111(a), and entitled to
benefits under 35 U.S.C. 119(e), is the filing date of the
provisional application. Any patent granted on such an
application, is prior art under 35 U.S.C. 102(e) as of the
filing date of the provisional application.
Likewise, the effective United States filing date of a
patent issued on an international application filed under
35 U.S.C. 363, and entitled to benefits under 35 U.S.C.
119(e), is the filing date of the provisional application,
except for the purpose of applying that patent as prior art
under 35 U.S.C. 102(e). For that purpose only, 35 U.S.C.
102(e) defines the filing date of the international
application as the date the requirements of 35 U.S.C.
371(c)(1), (c)(2) and (c)(4) were fulfilled.
Public Law 103-465 further includes transitional provisions
for limited reexamination in certain applications pending
for two (2) years or longer as of June 8, 1995, taking into
account any reference to any earlier application under
35 U.S.C. 120, 121 or 365(c). The transitional provisions
also permit examination of more than one independent and
distinct invention in certain applications pending for
three (3) years or longer as of June 8, 1995, taking into
account any reference to any earlier application under
35 U.S.C. 120, 121 or 365(c). These transitional provisions
are not applicable to any application which is filed after
June 8, 1995, regardless of whether the application is a
continuing application.
The amendments to title 35 relating to 20-year patent term,
patent term extension, provisional applications and the
transitional provisions are effective on the date which is
six (6) months after the date of enactment, i.e., on June 8,
1995.
A Notice of Proposed Rulemaking was published in the Federal
Register at 59 FR 63951 (December 12, 1994) and in the
Patent and Trademark Office Official Gazette at 1170 Off.
Gaz. Pat. Office 377-390 (January 3, 1995).
Forty-nine written comments were received in response to the
Notice of Proposed Rulemaking. A public hearing was held at
9:30 a.m. on February 16, 1995. Fourteen individuals
offered oral comments at the hearing. The forty-nine
written comments and a transcript of the hearing are
available for public inspection in the Special Program Law
Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, Room 520, Crystal Park I, 2011
Crystal Drive, Arlington, Virginia, and are available on the
Internet through anonymous file transfer protocol (ftp),
address: ftp.uspto.gov.
The following includes a discussion of the rules being added
or amended, the reasons for those additions and amendments
and an analysis of the comments received in response to the
Notice of Proposed Rulemaking.
Changes in text: The final rules contain numerous changes
to the text of the rules as proposed for comment. Those
changes are discussed below. Familiarity with the Notice of
Proposed Rulemaking is assumed.
Section 1.9(a)(1) is being changed for clarity to define a
national application as a U.S. application for patent which
was either filed in the Office under 35 U.S.C. 111, or which
entered the national stage from an international application
after compliance with 35 U.S.C. 371. Also, a new paragraph
(a)(3) is being added to define the term "nonprovisional
application" as a U.S. national application for patent which
was either filed in the Office under 35 U.S.C. 111(a), or
which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
The proposed deletion of 1.60 is being withdrawn.
Therefore, 1.17(i) is being changed to retain the
reference to 1.60.
Section 1.17(q) is being changed to delete the fifty (50)
percent reduction for small entities in the $50.00 fee
established for filing a petition under 1.48 in a
provisional application and a petition to accord a
provisional application a filing date or to convert an
application filed under 1.53(b)(1) to a provisional
application.
Sections 1.17(r) and (s) are being changed to include a
fifty (50) percent reduction for small entities in the fees
established for entry of a submission after final rejection
under 1.129(a) and for each additional invention requested
to be examined under 1.129(b). In the final rule, the fee
required by 1.17(r) and 1.17(s) from a small entity is
$365.00. The fee required from other than a small entity is
$730.00.
The elimination of the small entity reduction in 1.17(q)
and the addition of the small entity reduction in 1.17(r)
and (s) are the result of additional review, which resulted
in the conclusion that the fees established for the
transitional procedures in 1.129(a) and (b) may be
reduced by fifty (50) percent for small entities. However,
the petition fees required by 1.17(q) are not subject to
the fifty (50) percent reduction for small entities.
The proposed deletion of the retention fee practice set
forth in former 1.53(d), now redesignated 1.53(d)(1), is
being withdrawn. Therefore, 1.21(l) is being retained and
amended to refer to 1.53(d)(1). Also, the proposed change
in the text to 1.17(n) is being withdrawn, since 1.60 is
being retained.
Section 1.28(a) is being changed to clarify the procedure
for establishing status as a small entity in a
nonprovisional application claiming benefit under 35 U.S.C.
119(e), 120, 121, or 365(c) of a prior application. In such
cases, applicants may file a new verified statement or they
may rely on a verified statement filed in the prior
application, if status as a small entity is still proper and
desired. If applicants intend to rely on a verified
statement filed in the prior application, applicants must
include in the nonprovisional application either a reference
to the verified statement filed in the prior application or
a copy of the verified statement filed in the prior
application. A verified statement in compliance with
existing 1.27 is required to be filed in each provisional
application in which it is desired to pay reduced fees.
Section 1.45(c), first sentence, is being changed for
clarity to refer to a "nonprovisional" application.
Section 1.48 is being changed to include a new paragraph (e)
setting forth the procedure for deleting the name of a
person who was erroneously named as an inventor in a
provisional application. The procedure requires an
amendment deleting the name of the person who was
erroneously named accompanied by: a petition including a
statement of facts verified by the person whose name is
being deleted establishing that the error occurred without
deceptive intention; the fee set forth in 1.17(q); and the
written consent of any assignee. The first sentences of
1.48(a)-(c) are also being changed for clarity to refer
to a "nonprovisional" application.
Section 1.51(a)(2)(i) is being changed to require that the
provisional application cover sheet include the residence of
each named inventor and, if the invention was made by an
agency of the U.S. Government or under a contract with an
agency of the U.S. Government, the name of the U.S.
Government agency and Government contract number. The
residence of each named inventor is information which is
necessary to identify those provisional applications which
must be reviewed by the PTO for foreign filing licenses. If
the invention disclosed in the provisional application was
made by an agency of the U.S. Government or under a contract
with an agency of the U.S. Government, the security review
for that application should already have been done by that
agency of the U.S. Government. Therefore, identification of
those particular provisional applications on the cover sheet
will reduce the number of applications which the PTO must
forward to other agencies of the U.S. Government for
security review.
Section 1.53(b)(1) is being changed to retain the reference
to 1.60.
Section 1.53(b)(2)(ii) is being changed to require that any
petition and petition fee to convert a 1.53(b)(1)
application to a provisional application be filed in the
1.53(b)(1) application prior to the earlier of the
abandonment of the 1.53(b)(1) application, the payment of
the issue fee, the expiration of twelve (12) months after
the filing date of the 1.53(b)(1) application, or the
filing of a request for a statutory invention registration
under 1.293. Where the 1.53(b)(1) application was
abandoned before the expiration of twelve (12) months after
the filing date of the application, a petition to convert
the application to a provisional application may be filed in
the 1.53(b)(1) application if the petition to convert is
filed prior to the expiration of twelve (12) months after
the filing date of the 1.53(b)(1) application and is
accompanied by an appropriate petition to revive an
abandoned application under 1.137.
Section 1.53(b)(2)(iii) is being changed to indicate that
the requirements of 1.821-1.825 regarding application
disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.
Section 1.53(d)(1) is being changed to retain the retention
fee practice. The proposal to delete the retention fee
practice set forth in 1.53(d) is being withdrawn.
The first sentences of 1.55(a) and (b) are being changed
for clarity to refer to a "nonprovisional" application.
Also, 1.55(a) and (b) are being changed to clarify that
the nonprovisional application may claim the benefit of one
or more prior foreign applications or one or more
applications for inventor's certificate.
Section 1.59 is being changed to retain the reference to the
retention fee set forth in 1.21(l) and to clarify that the
retention fee practice applies only to applications filed
under 1.53(b)(1).
The proposal to delete 1.60 is being withdrawn.
Therefore, 1.60 is being retained and amended to clarify
in the title of the section and in paragraph (b)(1) that the
procedure set forth in the section is only available for
filing a continuation or divisional application if the prior
application was a nonprovisional application and complete as
set forth in 1.51(a)(1). Also, paragraph (b)(4) is being
amended to delete the requirement that the statement which
must accompany the copy of the prior application include the
language that "no amendments referred to in the oath or
declaration filed to complete the prior application
introduced new matter therein." The requirement is
unnecessary because any amendment filed to complete the
prior application would be considered a part of the original
disclosure of the prior application and, by definition,
could not contain new matter. Also, paragraph (b)(4) is
being amended to refer to 1.17(i).
Section 1.62(a) is being changed to refer to a prior
complete "nonprovisional" application and to clarify that a
continuing application may be filed under 1.62 after
payment of the issue fee if a petition under 1.313(b)(5)
is granted in the prior application. Section 1.62(a) is
also being changed to clarify the existing practice that the
request for a 1.62 application must include identification
of the inventors named in the prior application.
Section 1.63(a) is being changed for clarity to refer to an
oath or declaration filed as a part of a "nonprovisional"
application.
Section 1.67(b) is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.78(a)(1) and (a)(2) are being changed to refer to
a "nonprovisional" application and to clarify that the
nonprovisional application may claim the benefit of one or
more prior copending nonprovisional applications or
international applications designating the United States of
America. Section 1.78(a)(1)(ii) is being changed to retain
the reference to 1.60. Section 1.78(a)(1)(iii) is being
retained and amended to refer to 1.53(b)(1) and
1.53(d)(1).
Sections 1.78(a)(3) and (a)(4) are being changed to refer to
a "nonprovisional" application and to clarify that the
nonprovisional application may claim the benefit of one or
more prior copending provisional applications.
Section 1.78(a)(3) is also being changed to remind
applicants and practitioners that when the last day of
pendency of a provisional application falls on a Saturday,
Sunday, or Federal holiday within the District of Columbia,
any nonprovisional application claiming benefit of the
provisional application must be filed prior to the Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 111(b)(5) of title 35, United States Code, states
that a provisional application is abandoned twelve months
after its filing date. Sections 119(e)(1) and (e)(2) of
title 35, United States Code, require that a nonprovisional
application claiming benefit of a prior provisional
application be filed not later than twelve months after the
date on which the provisional application was filed and that
the provisional application be pending on the filing date of
the nonprovisional application. Under 1.6 and 1.10, no
filing dates are accorded to applications on a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Thus, if a provisional application is abandoned by operation
of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal
holiday within the District of Columbia, a nonprovisional
application claiming benefit of the provisional application
under 35 U.S.C. 119(e) must be filed no later than the
preceding day which is not a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Section 1.78(a)(4) is also being changed to delete the
requirement that the reference in the nonprovisional
application to the provisional application indicate the
relationship of the applications. As a result of the
change, 1.78(a)(4) provides that a nonprovisional
application claiming benefit of one or more provisional
applications must contain a reference to each provisional
application, identifying it as a provisional application and
including the provisional application number (consisting of
series code and serial number). However, the section does
not require the nonprovisional application to identify the
nonprovisional application as a continuation, divisional or
continuation-in-part application of the provisional
application.
Section 1.83(a) is being changed to delete the proposed
redesignation of paragraph (a) and to delete proposed
paragraph (a)(2). Also, 1.83(a) and (c) are being
changed for clarity to refer to a "nonprovisional"
application. Further, 1.83(c) is being changed to remove
the reference to paragraph (a)(1).
Section 1.101 is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.129(a) and (b) are being changed to identify the
effective date of 35 U.S.C. 154(a)(2) as June 8, 1995.
Further, 1.129(a) is being changed to provide that the
first and second submissions and fees set forth in 1.17(r)
must be filed prior to the filing of an Appeal Brief, rather
than prior to the filing of the Notice of Appeal, and prior
to abandonment of the application. The requirement that the
fee set forth in 1.17(r) be filed within one month of the
notice refusing entry is being deleted. Section 1.129(a) is
also being changed to provide that the finality of the final
rejection is automatically withdrawn upon the timely filing
of the submission and payment of the fee set forth in
1.17(r). The language indicating that the submission
would be entered and considered after timely payment of the
fee set forth in 1.17(r) "to the extent that it would have
been entered and considered if made prior to final
rejection" is being deleted. In view of the magnitude of
the fee set forth in 1.17(r), the next PTO action
following timely payment of the fee set forth in 1.17(r)
will be equivalent to a first action in a continuing
application. Under existing PTO practice, it would not be
proper to make final a first Office action in a continuing
application where the continuing application contains
material which was presented in the earlier application
after final rejection or closing of prosecution but was
denied entry because (1) new issues were raised that
required further consideration and/or search, or (2) the
issue of new matter was raised. The identical procedure
will apply to examination of a submission considered as a
result of the procedure under 1.129(a). Thus, under
1.129(a), if the first submission after final rejection
was initially denied entry in the application because
(1) new issues were raised that required further
consideration and/or search, or (2) the issue of new matter
was raised, then the next action in the application will not
be made final. Likewise, if the second submission after
final rejection was initially denied entry in the
application because (1) new issues were raised that required
further consideration and/or search, or (2) the issue of new
matter was raised, then the next action in the application
will not be made final. In view of 35 U.S.C. 132, no
amendment considered as a result of the payment of the fee
set forth in 1.17(r) may introduce new matter into the
disclosure of the application.
Section 1.129(b)(1) is being changed to identify the date
which is two months prior to the effective date of
35 U.S.C. 154(a)(2) as April 8, 1995. Section 1.129(b)(1)
is also being changed to clarify in subsection (ii) that the
examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to
actions by the applicant.
Section 1.129(b)(2) is being changed to delete the
identification of the period provided for applicants to
respond to a notification under 1.129(b) as one month.
The time period for response will be identified in any
written notification under 1.129(b) and will usually be
one month, but in no case will it be less than thirty days.
The period may be extended under 1.136(a). The language
is also being changed to provide that applicant may respond
to the notification by (i) electing the invention or
inventions to be searched and examined, if no election has
been made prior to the notice, and paying the fee set forth
in 1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant
elects, (ii) confirming an election made prior to the notice
and paying the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in addition to the one invention which applicant
previously elected, or (iii) filing a petition under
1.129(b)(2) traversing the requirement without regard to
whether the requirement has been made final. No petition
fee is required. The section is also being changed to
provide that if the petition under 1.129(b)(2) is filed in
a timely manner, the original time period for electing and
paying the fee set forth in 1.17(s) will be deferred and
any decision on the petition affirming or modifying the
requirement will set a new time period to elect the
invention or inventions to be searched and examined and to
pay the fee set forth in 1.17(s) for each independent and
distinct invention claimed in the application in excess of
one which applicant elects.
Section 1.129(c) is being changed to clarify that the
provisions of 1.129(a) and (b) are not applicable to any
application filed after June 8, 1995. However, any
application filed on June 8, 1995 would be subject to a
20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after June 8,
1995, except design applications, the requirement that a
terminal disclaimer accompany any petition under 1.137(a)
not filed within six (6) months of the date of the
abandonment of the application. The language "filed before
June 8, 1995" and "filed on or after June 8, 1995" as used
in the amended rule, refer to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365. No change to 1.137 was
proposed in the Notice of Proposed Rulemaking. However, in
all applications filed on or after June 8, 1995, except
design applications, any delay in filing a petition under
1.137(a) will automatically result in the loss of patent
term. The loss of patent term will be the incentive for
applicants to promptly file any petition to revive.
Therefore, no need is seen for requiring a terminal
disclaimer in such applications. It would amount to a
penalty if a terminal disclaimer was required.
Section 1.316 is being amended by revising paragraph (d) to
eliminate, in all applications filed on or after June 8,
1995, except design applications, the requirement that a
terminal disclaimer accompany any petition under 1.316(b)
not filed within six (6) months of the date of the
abandonment of the application. Acceptance of a late
payment of an issue fee in a design application is
specifically provided for in 1.155. Therefore, 1.316
does not apply to design applications. The language "filed
before June 8, 1995" as used in the amended rule, refers to
the actual United States filing date, without reference to
any claim for benefit under 35 U.S.C. 120, 121 or 365. No
change to 1.316 was proposed in the Notice of Proposed
Rulemaking. However, in all applications filed on or after
June 8, 1995, except design applications, any delay in
filing a petition under 1.316(b) will automatically result
in the loss of patent term. The loss of patent term will be
the incentive for applicants to promptly file any petition
under 1.316(b). Therefore, no need is seen for requiring
a terminal disclaimer in such applications. It would amount
to a penalty if a terminal disclaimer was required.
Section 1.317 is being amended by removing and reserving
paragraph (d) to eliminate the requirement that a terminal
disclaimer accompany any petition under 1.317(b) not filed
within six (6) months of the date of lapse of the patent.
No change to 1.317 was proposed in the Notice of Proposed
Rulemaking. However, the delay in filing a petition under
1.317(b) does not result in any gain of patent term.
Therefore, no reason is seen for requiring a terminal
disclaimer in such cases.
Section 1.701(a) is being changed to identify the
implementation date as June 8, 1995, and to clarify that a
proceeding under 35 U.S.C. 135(a) is an interference
proceeding.
Section 1.701(b) is being changed to provide that the term
of a patent entitled to an extension under 1.701 shall be
extended for the sum of the periods of delay calculated
under paragraphs (c)(1), (c)(2), (c)(3) and (d) of 1.701
and the extension will run from the expiration date of the
patent. The reference to a terminal disclaimer is being
deleted to be consistent with 1.701(a)(3) and to avoid any
confusion.
Section 1.701(c)(1)(i) is being changed for clarity by
deleting the phrase "if any" after the first occurrence of
"interference" and by inserting the same phrase after the
phrase "the number of days."
Section 1.701(c)(1)(ii) is being changed to clarify that the
period referred to ends on the "date of the termination of
the suspension" rather than on the date of the next PTO
communication reopening prosecution.
Section 1.701(d)(1) is being amended to clarify that the
"time" referred to is time "during the period of appellate
review".
Section 1.701(d)(2) is being amended to clarify that the
Commissioner, under the broad discretion granted by
35 U.S.C. 154(b)(3)(C), has decided to limit consideration
of applicant's due diligence only to acts occurring during
the period of appellate review. The supplementary
information published in the Notice of Proposed Rulemaking
contained examples of what might be considered a lack of due
diligence for purposes of 1.701(d)(2) as proposed.
Specifically, the supplementary information identified
requests for extensions of time to respond to Office
communications, submission of a response which is not fully
responsive to an Office communication, and filing of
informal applications as examples. In view of the comments
received and the language adopted in the final rules, those
examples are withdrawn. Acts which the Commissioner
considers to constitute prima facie evidence of lack of due
diligence under 1.701(d)(2) are suspensions at applicant's
request under 1.103(a) during the period of appellate
review and abandonments during the period of appellate
review.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1
and 3, are being amended as indicated below:
Section 1.1 is being amended to add a paragraph (i) to
provide a special "Box Provisional Patent Application"
address to assist the Mail Room in separating and processing
provisional applications and mail relating thereto.
Section 1.9 is being amended to redesignate paragraph (a) as
paragraph (a)(1) and to define a national application as a
U.S. application for patent which was either filed in the
Office under 35 U.S.C. 111, or which entered the national
stage from an international application after compliance
with 35 U.S.C. 371. A new paragraph (a)(2) is being added
to define the term "provisional application" as a U.S.
national application filed under 35 U.S.C. 111(b). Also, a
new paragraph (a)(3) is being added to define the term
"nonprovisional application" as a U.S. national application
for patent which was either filed in the Office under
35 U.S.C. 111(a), or which entered the national stage from
an international application after compliance with 35 U.S.C.
371.
Sections 1.12 and 1.14 are being amended to replace the
references to 1.17(i)(1) with references to 1.17(i).
Sections 1.16(a)-(e) and (g) are being amended to clarify
that those sections do not apply to provisional
applications. A complete provisional application does not
require claims. However, provisional applications may be
filed with one or more claims as part of the application.
Nevertheless, no additional claim fee or multiple dependent
claim fee will be required in a provisional application.
Section 1.16(f) is being amended to insert the words "basic
fee". Section 1.16(e) refers to "the basic filing fee".
Current Office practice allows a design application to be
filed without the design filing fee or the oath/declaration
as set forth in 1.53(d)(1). The change to 1.16(f) is
merely for clarification. In addition, 1.16(a) is being
amended to replace the word "cases" with the word
"applications", since the word "applications" is used
elsewhere in the rule.
Section 1.16 is also being amended to add a new paragraph
(k) which lists the basic filing fee for a provisional
application as $75.00 for a small entity (see 1.9(c)-(f))
or $150.00 for other than a small entity as contained in
Public Law 103-465. Since the filing fee for a provisional
application is established by Public Law 103-465 as a
35 U.S.C. 41(a) fee, the filing fee for a provisional
application will be subject to the fifty (50) percent
reduction provided for in 35 U.S.C. 41(h).
Further, 1.16 is being amended to add a new paragraph (l)
which establishes the surcharge required by new 1.53(d)(2)
for filing the basic filing fee or the cover sheet required
by new 1.51(a)(2) for a provisional application at a time
later than the provisional application filing date as $25.00
for a small entity or $50.00 for other than a small entity.
Section 1.17(h) is being amended to clarify that the $130.00
petition fee for filing a petition for correction of
inventorship under 1.48 applies to all patent
applications, except provisional applications.
Paragraph (i)(1) is being redesignated as paragraph (i) and
paragraph (i)(2) is being removed. The fee for a petition
under 1.102 to make an application special has been placed
in paragraph (i). The words "of this part", in 1.17,
paragraphs (h) and (i), are being deleted, since the
paragraphs currently refer to sections in parts other than
Part 1. Section 1.17(i) is also being amended to clarify
that the fee set forth in paragraph (i) for filing a
petition to accord a filing date under 1.53 applies to all
patent applications, except provisional applications.
A new 1.17(q) is being added to establish a petition fee
of $50.00 for filing a petition for correction of
inventorship under 1.48 in a provisional application and
for filing a petition to accord a provisional application a
filing date or to convert an application filed under
1.53(b)(1) to a provisional application. The petition fee
set forth in 1.17(q) is not reduced for a small entity.
New 1.17(r) and (s) are being added to establish the fees
for entry of a submission after final rejection under
1.129(a) and for each additional invention requested to be
examined under 1.129(b), respectively. These fees have
been set at $365.00 for a small entity and $730.00 for other
than a small entity.
Section 1.21(l) is being amended to refer to 1.53(d)(1).
Section 1.28(a) is being amended to clarify the procedure
for establishing status as a small entity in a
nonprovisional application claiming benefit under
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new
verified statement or rely on a verified statement filed in
the prior application, if status as a small entity is still
proper and desired. If applicants intend to rely on a
verified statement filed in the prior application,
applicants must include in the nonprovisional application
either a reference to the verified statement filed in the
prior application or a copy of the verified statement filed
in the prior application. Status as a small entity may be
established in a provisional application by complying with
existing 1.27.
Section 1.45(c) is being amended to clarify that the first
sentence applies to a "nonprovisional" application.
Section 1.45(c) is also being amended to add a second
sentence relating to joint inventors named in a provisional
application. The second sentence states that each inventor
named in a provisional application must have made a
contribution to the subject matter disclosed in the
provisional application. All that 1.45(c), second
sentence, requires is that if a person is named as an
inventor in a provisional application, that person must have
made a contribution to the subject matter disclosed in the
provisional application.
Sections 1.48(a)-(c) are being amended to specify that the
procedures for correcting an error in inventorship set forth
in those sections apply to nonprovisional applications. New
paragraph (d) is being added to establish a procedure for
adding the name of an inventor in a provisional application,
where the name was originally omitted without deceptive
intent. Paragraph (d) does not require the verified
statement of facts by the original inventor or inventors,
the oath or declaration by each actual inventor in
compliance with 1.63 or the consent of any assignee as
required in paragraph (a). Instead, the procedure requires
the filing of a petition identifying the name or names of
the inventors to be added and including a statement that the
name or names of the inventors were omitted through error
without deceptive intention on the part of the actual
inventor(s). The statement would be required to be verified
if made by a person not registered to practice before the
PTO. The statement could be signed by a registered
practitioner of record in the application or acting in a
representative capacity under 1.34(a). The $50.00
petition fee set forth in 1.17(q) would also be required.
New paragraph (e) is also being added setting forth the
procedure for deleting the name of a person who was
erroneously named as an inventor in a provisional
application. The procedure requires an amendment deleting
the name of the person who was erroneously named accompanied
by: a petition including a statement of facts verified by
the person whose name is being deleted establishing that the
error occurred without deceptive intention; the fee set
forth in 1.17(q); and the written consent of any assignee.
Section 1.51 is being amended to redesignate 1.51(a) as
1.51(a)(1) and to include a new paragraph (a)(2)
identifying the required parts of a complete provisional
application. As set forth in 1.51(a)(2), a complete
provisional application includes a cover sheet, a
specification as prescribed in 35 U.S.C. 112, first
paragraph, any necessary drawings and the provisional
application filing fee. A suggested cover sheet format for
a provisional application is included as an Appendix A to
this Notice of Final Rulemaking and is available from the
PTO free of charge to the public. However, the rule does
not require the applicant to use the PTO suggested cover
sheet. Any paper containing the information required in
1.51(a)(2)(i) will be acceptable. The cover sheet is
required to identify the paper as a provisional application
and to provide the information which is necessary for the
PTO to prepare the provisional application filing receipt.
Also, the residence of each named inventor and, if the
invention disclosed in the provisional application was made
by an agency of the U.S. Government or under a contract with
an agency of the U.S. Government, the name of the U.S.
Government agency and Government contract number must be
identified on the cover sheet.
Section 1.51(b) is being amended to indicate that an
information disclosure statement is not required and may not
be filed in a provisional application. Any information
disclosure statements filed in a provisional application
will either be returned or disposed of at the convenience of
the Office. An information disclosure statement filed in a
1.53(b)(1) application which has been converted to a
provisional application will be retained in the application
after the conversion, if the information disclosure
statement was filed before the petition required by
1.53(b)(2)(ii) was filed.
The title of 1.53 and paragraph (a) are being amended to
refer to application number, rather than application serial
number. The term "application number" is found in current
1.5(a).
Section 1.53(b) is being redesignated as 1.53(b)(1) and is
being amended to refer to 1.17(i) rather than 1.17(i)(1)
to conform to the change therein.
A new 1.53(b)(2) is being added to set forth the
requirements for obtaining a filing date for a provisional
application. Section 1.53(b)(2) states that a filing date
will be accorded to a provisional application as of the date
the specification as prescribed by 35 U.S.C. 112, first
paragraph, any necessary drawings, and the name of each
inventor of the subject matter disclosed are filed in the
PTO. The filing date requirements for a provisional
application set forth in new paragraph (b)(2) parallel the
existing requirements set forth in former paragraph (b), now
redesignated paragraph (b)(1), except that no claim is
required. In order to minimize the cost of processing
provisional applications and to reduce the handling of
provisional applications, amendments, other than those
required to make the provisional application comply with
applicable regulations, are not permitted after the filing
date of the provisional application.
Section 1.53(b)(2)(i) is being added requiring all
provisional applications to be filed with a cover sheet
identifying the application as a provisional application.
The section also indicates that the PTO will treat an
application as having been filed under 1.53(b)(1), unless
the application is identified as a provisional application
on filing. A provisional application, which is identified
as such on filing, but which does not include all of the
information required by 1.51(a)(2)(i) would still be
treated as a provisional application. However, the omitted
information and a surcharge would be required to be
submitted at a later date under new 1.53(d)(2).
Section 1.53(b)(2)(ii) is being added to establish a
procedure for converting an application filed under
1.53(b)(1) to a provisional application. The section
requires that a petition requesting the conversion and a
petition fee be filed in the 1.53(b)(1) application prior
to the earlier of the abandonment of the 1.53(b)(1)
application, the payment of the issue fee, the expiration of
twelve (12) months after the filing date of the 1.53(b)(1)
application, or the filing of a request for a statutory
invention registration under 1.293. The grant of any such
petition would not entitle applicant to a refund of the fees
properly paid in the application filed under 1.53(b)(1).
Section 1.53(b)(2)(iii) is being added to call attention to
the provisions of Public Law 103-465 which prohibit any
provisional application from claiming a right of priority
under 35 U.S.C. 119 or 365(a) or the benefit of an earlier
filing date under 35 U.S.C. 120, 121 or 365(c) of any other
application. The section also calls attention to the
provisions of Public Law 103-465 which provide that no claim
for benefit of an earlier filing date may be made in a
design application based on a provisional application and
that no request for a statutory invention registration may
be filed in a provisional application. Section
1.53(b)(2)(iii) further specifies that the requirements of
1.821-1.825 are not mandatory for provisional
applications. However, applicants are reminded that an
invention being claimed in an application filed under
35 U.S.C. 111(a) or 365 which claims benefit under
35 U.S.C. 119(e) of a provisional application must be
disclosed in the provisional application in the manner
provided by the first paragraph of 35 U.S.C. 112. Voluntary
compliance with the requirements of 1.821-1.825 in the
provisional application is recommended, in order to ensure
that support for the invention claimed in the
35 U.S.C.111(a) application can be readily ascertained in
the provisional application.
Section 1.53(c) is being amended to require that any request
for review of a refusal to accord an application a filing
date be made by way of a petition accompanied by the fee set
forth in 1.17(i), if the application was filed under
1.53(b)(1), or by the fee set forth in 1.17(q), if the
application was filed under 1.53(b)(2). This reflects the
current practice set forth in the Manual of Patent Examining
Procedure (MPEP), section 506.02 (Sixth Edition, Jan. 1995)
with regard to any request for review of a refusal to accord
a filing date for an application. The PTO will continue its
current practice of refunding the petition fee, if the
refusal to accord the requested filing date is found to have
been a PTO error.
Section 1.53(d) is being redesignated as 1.53(d)(1).
Section 1.53(d)(2) is being added to provide that a
provisional application may be filed without the basic
filing fee and without the complete cover sheet required by
1.51(a)(2). In such a case, the applicant will be
notified and given a period of time in which to file the
missing fee, and/or cover sheet and to pay the surcharge set
forth in 1.16(l).
Section 1.53(e) is being redesignated as 1.53(e)(1) and
amended to refer to 1.53(b)(1). Also, a new 1.53(e)(2)
is being added to indicate that a provisional application
will not be given a substantive examination and will be
abandoned no later than twelve (12) months after its filing
date.
Sections 1.55(a) and (b) are being amended to clarify that
the sections apply to nonprovisional applications and to
clarify that a nonprovisional application may claim the
benefit of one or more prior foreign applications or one or
more applications for inventor's certificate. Also,
1.55(a) is being amended to replace the reference to
35 U.S.C. 119 with a reference to 35 U.S.C. 119(a)-(d). In
addition, the reference to 1.17(i)(1) in 1.55(a) is
being replaced by a reference to 1.17(i) to be consistent
with the change to 1.17. Section 1.55(b) is also being
amended to refer to 35 U.S.C. 119(d) to conform to the
paragraph designations contained in Public Law 103-465.
Section 1.59 is being amended to clarify that the retention
fee practice set forth in 1.53(d)(1) applies only to
applications filed under 1.53(b)(1).
Section 1.60 is being amended to clarify in the title of the
section and in paragraph (b)(1) that the procedure set forth
in the section is only available for filing a continuation
or divisional application if the prior application was a
nonprovisional application and complete as set forth in
1.51(a)(1). Paragraph (b)(4) is being amended to delete
the requirement that the statement which must accompany the
copy of the prior application include the language that "no
amendments referred to in the oath or declaration filed to
complete the prior application introduced new matter
therein." The requirement is unnecessary because any
amendment filed to complete the prior application would be
considered a part of the original disclosure of the prior
application and, by definition, could not contain new
matter. Also, paragraph (b)(4) is being amended to refer to
1.17(i).
Section 1.62(a) is being amended to clarify that the
procedure set forth in the section is only available for
filing a continuation, continuation-in-part, or divisional
application of a prior nonprovisional application which is
complete as defined in 1.51(a)(1). Section 1.62(a) is
also being amended to clarify that a continuing application
may be filed under 1.62 after payment of the issue fee if
a petition under 1.313(b)(5) is granted in the prior
application and that the request for a 1.62 application
must include identification of the inventors named in the
prior application. The phrase "Serial number, filing date"
in 1.62(a) is being changed to "application number."
Section 1.62(e) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17. Also, the term "application
serial number" in 1.62(e) is being changed to "application
number."
Section 1.63(a) is being amended to replace the reference to
1.51(a)(2) with a reference to 1.51(a)(1)(ii) in order
to conform with the changes in 1.51 and to refer to an
oath or declaration filed as a part of a nonprovisional
application.
Section 1.67(b) is being amended to replace the reference to
1.53(d) with a reference to 1.53(d)(1) in order to
conform with the changes in 1.53. Furthermore, the
references to 1.53(b) and 1.118 are being deleted to make
clear that the new matter exclusion applies to all
applications including those filed under 1.60 and 1.62.
Also, the section is being amended to refer to a
nonprovisional application.
Sections 1.78(a)(1) and (a)(2) are being amended to clarify
that the sections apply to nonprovisional applications
claiming the benefit of one or more copending nonprovisional
applications or international applications designating the
United States of America. Section 1.78(a)(1)(iii) is being
amended to refer to 1.53(b)(1) and 1.53(d)(1). Section
1.78(a)(2) is also being amended to eliminate the use of
serial number and filing date as an identifier for a prior
application. The section will require that the prior
application be identified by application number (consisting
of the series code and serial number) or international
application number and international filing date.
Sections 1.78(a)(3) and (a)(4) are being added to set forth
the conditions under which a nonprovisional application may
claim the benefit of one or more prior copending provisional
applications. The later filed nonprovisional application
must be an application other than for a design patent and
must be copending with each provisional application. There
must be a common inventor named in the prior provisional
application and the later filed nonprovisional application.
Each prior provisional application must be complete as set
forth in 1.51(a)(2), or entitled to a filing date as set
forth in 1.53(b)(2) and include the basic filing fee.
Section 1.78(a)(3) also includes the warning that when the
last day of pendency of a provisional application falls on a
Saturday, Sunday, or Federal holiday within the District of
Columbia, any nonprovisional application claiming benefit of
the provisional application must be filed prior to the
Saturday, Sunday, or Federal holiday within the District of
Columbia. A provisional application may be abandoned by
operation of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which
case, a nonprovisional application claiming benefit of the
provisional application under 35 U.S.C. 119(e) must be filed
no later than the preceding day which is not a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 1.78(a)(4) is also being added to provide that a
nonprovisional application claiming benefit of one or more
provisional applications must contain a reference to each
provisional application, identifying it as a provisional
application and including the provisional application number
(consisting of series code and serial number). The section
does not require the nonprovisional application to identify
the nonprovisional application as a continuation, divisional
or continuation-in-part application of the provisional
application.
Sections 1.83(a) and (c) are being amended to clarify that
the sections apply to nonprovisional applications.
Section 1.97(d) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.101(a) is being amended to indicate that the
section applies to nonprovisional applications.
Section 1.102(d) is being amended to replace the reference
to 1.17(i)(2) with a reference to 1.17(i) to be
consistent with the change to 1.17.
Section 1.103(a) is amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.129 is being added to set forth the procedure for
implementing certain transitional provisions contained in
Public Law 103-465. Section 1.129(a) provides for limited
reexamination of applications pending for 2 years or longer
as of June 8, 1995, taking into account any reference to any
earlier application under 35 U.S.C. 120, 121 or 365(c). An
applicant will be entitled to have a first submission
entered and considered on the merits after final rejection
if the submission and the fee set forth in 1.17(r) are
filed prior to the filing of an Appeal Brief and prior to
abandonment of the application. Section 1.129(a) also
provides that the finality of the final rejection is
automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in 1.17(r).
After submission and payment of the fee set forth in
1.17(r), the next PTO action on the merits may be made
final only under the conditions currently followed by the
PTO for making a first action in a continuing application
final. If a subsequent final rejection is made in the
application, applicant would be entitled to have a second
submission entered and considered on the merits under the
same conditions set forth for consideration of the first
submission. Section 1.129(a) defines the term "submission"
as including, but not limited to, an information disclosure
statement, an amendment to the written description, claims
or drawings, and a new substantive argument or new evidence
in support of patentability. For example, the submission
may include an amendment, a new substantive argument and an
information disclosure statement. In view of the fee set
forth in 1.17(r), any information disclosure statement
previously refused consideration in the application because
of applicant's failure to comply with 1.97(c) or (d) or
which is filed as part of either the first or second
submission will be treated as though it had been filed
within one of the time periods set forth in 1.97(b) and
will be considered without the petition and petition fee
required in 1.97(d), if it complies with the requirements
of 1.98. In view of 35 U.S.C. 132, no amendment
considered as a result of the payment of the fee set forth
in 1.17(r) may introduce new matter into the disclosure of
the application.
Section 1.129(b)(1) is being added to provide for
examination of more than one independent and distinct
invention in certain applications pending for 3 years or
longer as of June 8, 1995, taking into account any reference
to any earlier application under 35 U.S.C. 120, 121 or
365(c). Under 1.129(b)(1), a requirement for restriction
or for the filing of divisional applications would only be
made or maintained in the application after June 8, 1995,
if: (1) the requirement was made in the application or in
an earlier application relied on under 35 U.S.C. 120, 121 or
365(c) prior to April 8, 1995; (2) the examiner has not made
a requirement for restriction in the present or parent
application prior to April 8, 1995, due to actions by the
applicant; or (3) the required fee for examination of each
additional invention was not paid. Under 1.129(b)(2), if
the application contains claims to more than one independent
and distinct invention, and no requirement for restriction
or for the filing of divisional applications can be made or
maintained, applicant will be notified and given a time
period to (i) elect the invention or inventions to be
searched and examined, if no election has been made prior to
the notice, and pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one which applicant elects, (ii) in
situations where an election was made in response to a
requirement for restriction that cannot be maintained,
confirm the election made prior to the notice and pay the
fee set forth in 1.17(s) for each independent and distinct
invention claimed in the application in addition to the one
invention which applicant previously elected, or (iii) file
a petition under 1.129(b)(2) traversing the requirement
without regard to whether the requirement has been made
final. No petition fee is required. Section 1.129(b)(2)
also provides that if the petition is filed in a timely
manner, the original time period for electing and paying the
fee set forth in 1.17(s) will be deferred and any decision
on the petition affirming or modifying the requirement will
set a new time period to elect the invention or inventions
to be searched and examined and to pay the fee set forth in
1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant
elects. Under 1.129(b)(3), each additional invention for
which the required fee set forth in 1.17(s) has not been
paid will be withdrawn from consideration under 1.142(b).
An applicant who desires examination of an invention so
withdrawn from consideration can file a divisional
application under 35 U.S.C. 121.
Section 1.129(c) is being added to clarify that the
provisions of 1.129(a) and (b) are not applicable to any
application filed after June 8, 1995. However, any
application filed on June 8, 1995, would be subject to a
20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after
June 8, 1995, except design applications, the requirement
that a terminal disclaimer accompany any petition under
1.137(a) not filed within six (6) months of the date of
the abandonment of the application. The language "filed
before June 8, 1995" and "filed on or after June 8, 1995" as
used in the amended rule, refer to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365.
Section 1.139 is being added to set forth the procedure for
reviving a provisional application where the delay was
unavoidable or unintentional. Section 1.139(a) addresses
the revival of a provisional application where the delay was
unavoidable and 1.139(b) addresses the revival of a
provisional application where the delay was unintentional.
Applicant may petition to have an abandoned provisional
application revived as a pending provisional application for
a period of no longer than twelve months from the filing
date of the provisional application where the delay was
unavoidable or unintentional. It would be permissible to
file a petition for revival later than twelve months from
the filing date of the provisional application but only to
revive the application for the twelve-month period following
the filing of the provisional application. Thus, even if
the petition were granted to reestablish the pendency up to
the end of the twelve-month period, the provisional
application would not be considered pending after twelve
months from its filing date. The requirements for reviving
an abandoned provisional application set forth in 1.139
parallel the existing requirements set forth in 1.137.
Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being
amended to replace the references to 1.17(i)(1) with
references to 1.17(i) to be consistent with the change to
1.17.
Section 1.316(d) is being amended to eliminate, in all
applications filed on or after June 8, 1995, except design
applications, the requirement that a terminal disclaimer
accompany any petition under 1.316(b) not filed within
six (6) months of the date of the abandonment of the
application. Acceptance of a late payment of an issue fee
in a design application is specifically provided for in
1.155. Therefore, 1.316 does not apply to design
applications. The language "filed before June 8, 1995" as
used in the amended rule, refers to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365.
Section 1.317(d) is being removed and reserved to eliminate
the requirement that a terminal disclaimer accompany any
petition under 1.317(b) not filed within six (6) months of
the date of lapse of the patent.
Section 1.666 is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.701 is being added to set forth the procedure the
PTO will follow in calculating the length of any extension
of patent term to which an applicant is entitled under
35 U.S.C. 154(b) where the issuance of a patent on an
application, other than for designs, filed on or after
June 8, 1995, was delayed due to certain causes of
prosecution delay. Applicants need not file a request for
the extension of patent term under 1.701. The extension
of patent term is automatic by operation of law. It is
currently anticipated that applicant will be advised as to
the length of any patent term extension at the time of
receiving the Notice of Allowance and Issue Fee Due. Review
of the length of a patent term extension calculated by the
PTO under 1.701 prior to the issuance of the patent would
be by way of petition under 1.181. If an error is noted
after the patent issues, patentee and any third party may
seek correction of the period of patent term granted by
filing a request for Certificate of Correction pursuant to
1.322. The PTO intends to identify the length of any
patent term extension calculated under 1.701 on the
printed patent.
Section 1.701(a) is being added to identify those patents
which are entitled to an extension of patent term under
35 U.S.C. 154(b).
Section 1.701(b) is being added to provide that the term of
a patent entitled to extension under 1.701(a) shall be
extended for the sum of the periods of delay calculated
under 1.701(c)(1), (c)(2), (c)(3) and (d), to the extent
that those periods are not overlapping, up to a maximum of
five years. The section also provides that the extension
will run from the expiration date of the patent.
Section 1.701(c)(1) is being added to set forth the method
for calculating the period of delay where the delay was a
result of an interference proceeding under 35 U.S.C. 135(a).
The period of delay with respect to each interference in
which the application was involved is calculated under
1.701(c)(1)(i) to include the number of days in the period
beginning on the date the interference was declared or
redeclared to involve the application in the interference
and ending on the date that the interference was terminated
with respect to the application. An interference is
considered terminated as of the date the time for filing an
appeal under 35 U.S.C. 141 or civil action under 35 U.S.C.
146 expired. If an appeal under 35 U.S.C. 141 is taken to
the Court of Appeals for the Federal Circuit, the
interference terminates on the date of receipt of the
court's mandate by the PTO. If a civil action is filed
under 35 U.S.C. 146, and the decision of the district court
is not appealed, the interference terminates on the date the
time for filing an appeal from the court's decision expires.
See section 2361 of the MPEP. The period of delay with
respect to an application suspended by the PTO due to
interference proceedings under 35 U.S.C. 135(a) not
involving the application is calculated under
1.701(c)(1)(ii) to include the number of days in the
period beginning on the date prosecution in the application
is suspended due to interference proceedings not involving
the application and ending on the date of the termination of
the suspension. The period of delay under 1.701(a)(1) is
the sum of the periods calculated under 1.701(c)(1)(i)
and (c)(1)(ii), to the extent that the periods are not
overlapping.
Section 1.701(c)(2) is being added to set forth the method
for calculating the period of delay where the delay was a
result of the application being placed under a secrecy
order.
Section 1.701(c)(3) is being added to set forth the method
for calculating the period of delay where the delay was a
result of appellate review. The period of delay is
calculated under 1.701(c)(3) to include the number of days
in the period beginning on the date on which an appeal to
the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and ending on the date of a final
decision in favor of the applicant by the Board of Patent
Appeals and Interferences or by a Federal court in an appeal
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
Section 1.701(d) is being added to set forth the method for
calculating any reduction in the period calculated under
1.701(c)(3). As required by 35 U.S.C. 154(b)(3)(B),
1.701(d)(1) provides that the period of delay calculated
under 1.701(c)(3) shall be reduced by any time during the
period of appellate review that occurred before three years
from the filing date of the first national application for
patent presented for examination. The "filing date" for the
purpose of 1.701(d)(1) would be the earliest effective
U.S. filing date, but not including the filing date of a
provisional application or the international filing date of
a PCT application. For PCT applications entering the
national stage, the PTO will consider the "filing date" for
the purpose of 1.701(d)(1) to be the date on which
applicant has complied with the requirements of 1.494(b),
or 1.495(b), if applicable.
As contained in Public Law 103-465, 35 U.S.C. 154(b)(3)(C)
states that the period of extension referred to in
35 U.S.C. 154(b)(2) "shall be reduced for the period of time
during which the applicant for patent did not act with due
diligence, as determined by the Commissioner." Section
1.701(d)(2) is being added to provide that the period of
delay calculated under 1.701(c)(3) shall be reduced by any
time during the period of appellate review, as determined by
the Commissioner, during which the applicant for patent did
not act with due diligence. Section 1.701(d)(2) also
provides that in determining the due diligence of an
applicant, the Commissioner may examine the facts and
circumstances of the applicant's actions during the period
of appellate review to determine whether the applicant
exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a
person during a period of appellate review. Acts which the
Commissioner considers to constitute prima facie evidence of
lack of due diligence under 1.701(d)(2) are suspension at
applicant's request under 1.103(a) during the period of
appellate review and abandonment during the period of
appellate review.
Section 3.21 is being amended to provide that an assignment
relating to a national patent application must identify the
national patent application by the application number
(consisting of the series code and the serial number, e.g.,
07/123,456) and to eliminate the use of serial number and
filing date as an identifier for national patent
applications in assignment documents. This change is
intended to eliminate any confusion as to whether an
application identified by its serial number and filing date
in an assignment document is an application filed under
1.53(b)(1), 1.60 or 1.62 or a design application or a
provisional application since there is a different series
code assigned to each of these types of applications.
Section 3.21 is also being amended to provide that if an
assignment of a patent application filed under 1.53(b)(1)
or 1.62 is executed concurrently with, or subsequent to,
the execution of the patent application, but before the
patent application is filed, it must identify the patent
application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake
as to the patent application intended.
Further, 3.21 is being amended to provide that if an
assignment of a provisional application is executed before
the provisional application is filed, it must identify the
provisional application by name of each inventor and title
of the invention so that there can be no mistake as to the
provisional application intended.
Section 3.81 is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Responses to and Analysis of Comments: Forty-nine written
comments were received in response to the Notice of Proposed
Rulemaking. These comments, along with those made at the
public hearing, have been analyzed. Some suggestions made
in the comments have been adopted and others have not been
adopted. Responses to the comments follow:
GENERAL COMMENTS
1. Comment: One comment questioned the use of the word
"proposed" in the notice of proposed rulemaking in
describing the statutory amendments contained in Public Law
103-465.
Response: The statutory changes contained in Public Law
103-465 were described as "proposed" changes in the Notice
of Proposed Rulemaking because the President had not signed
the legislation at the time the notice was prepared for
publication. In fact, the legislation was signed by the
President on December 8, 1994, which is the date of
enactment.
2. Comment: Several comments urged the PTO to favorably
consider the 17/20 patent term specified in H.R. 359 since
this proposed legislation would overcome the existing impact
of extended PTO prosecution and eliminate patent term
extensions for prosecution delays. Furthermore, the
proposed legislation is consistent with the Uruguay Round
Agreements Act, Public Law 103-465.
Response: The administration and the PTO strongly believe
that the 20-year patent term as enacted in Public Law
103-465 is the appropriate way to implement the 20-year
patent term required by the GATT Uruguay Round Agreements
Act. The PTO will take steps to ensure that processing and
examination of applications are handled expeditiously.
3. Comment: One comment stated that the proposed rules are
premature in view of the Rohrabacher bill, H.R. 359.
Response: The proposed rules are not premature. Public Law
103-465 was signed into law on December 8, 1994, with an
effective date of June 8, 1995, for the implementation of
the 20-year patent term and provisional applications. The
Commissioner must promulgate regulations to implement the
changes required by Public Law 103-465.
4. Comment: One comment stated that there is nothing in
the TRIPs agreement that requires the term to be measured
from filing, nor that provisional applications be provided
for, nor that new fees of $730 as set forth in 1.17(r)
and (s) be established. It is suggested that 35 U.S.C. 154
be amended to provide that "every patent (other than a
design patent) shall be granted a term of twenty years from
the patent issue date, subject to the payment of maintenance
fees." It was also suggested that the section regarding
maintenance fees be amended to add a new fee payable at 16.5
years of $5000 (for large entity)/ $2500 (for small entity)
for maintenance of patent between 17 and 20 years.
Response: The suggestion has not been adopted. The
administration and the PTO strongly believe that the 20-year
patent term as enacted in Public Law 103-465 is the
appropriate way to implement the 20-year patent term
required by the GATT Uruguay Round Agreements Act. The
establishment of a provisional application is not required
by GATT. The provisional application has been adopted as a
mechanism to provide easy and inexpensive entry into the
patent system. The filing of provisional applications is
optional. Provisional applications will place domestic
applicants on an equal footing with foreign applicants as
far as the measurement of term is concerned because the
domestic priority period, like the foreign priority period,
is not counted in determining the endpoint of the patent
term. As to the 1.17(r) and (s) fees, the statute
authorizes the Commissioner to establish appropriate fees
for further limited reexamination of applications and for
examination of more than one independent and distinct
inventions in an application.
5. Comment: One comment suggested that the 20-year patent
term of claims drawn to new matter in continuation-in-part
(CIP) applications be measured from the filing date of the
CIP application, irrespective of any reference to a parent
application under 35 U.S.C. 120.
Response: The suggestion has not been adopted. The term of
a patent is not based on a claim-by-claim approach. Under
35 U.S.C. 154(a)(2), if an application claims the benefit of
the filing date of an earlier filed application under
35 U.S.C. 120, 121 or 365(a), the 20-year term of that
application will be based upon the filing date of the
earliest U.S. application that the application makes
reference to under 35 U.S.C. 120, 121 or 365(a). For a
CIP application, applicant should review whether any claim
in the patent that will issue is supported in an earlier
application. If not, applicant should consider canceling
the reference to the earlier filed application.
6. Comment: One comment objected to the 20-year term
provisions of Public Law 103-465 because it was believed
that payment of maintenance fees would be required earlier
under 20-year term than under 17-year term.
Response: The payment of maintenance fees are not due
earlier under 20-year term than under 17-year term.
Maintenance fees continue to be due at 3.5, 7.5 and 11.5
years from the issue date of the patent.
7. Comment: Several comments suggested that the expiration
date be printed on the face of the patent.
Response: The suggestion has not been adopted. The
expiration date will not be printed on the face of the
patent. The PTO will publish any patent term extension that
is granted as a result of administrative delay pursuant to
1.701 on the face of the patent. The term of a patent
will be readily discernible from the face of the patent.
Furthermore, it is noted that the term of a patent is
dependent on the timely payment of maintenance fees which is
not printed on the face of the patent.
8. Comment: One comment suggested that in order to aid the
bar in advising clients as to whether a provisional
application has had its priority claimed in a patent, the
PTO should somehow link the provisional application number
with the complete application number and/or the patent
number.
Response: It is contemplated by the PTO that all
provisional applications will be given application numbers,
starting with a series code "60" followed by a six digit
number, e.g., "60/123,456." If a subsequent 35 U.S.C.
111(a) application claims the benefit of the filing date of
the provisional application pursuant to 35 U.S.C. 119(e) and
the 35 U.S.C. 111(a) application results in a patent, the
provisional application would be listed by its application
number and filing date on the face of the patent under the
heading "Related U.S. Application Data." The public will be
able to identify an application under the above-noted
heading as a provisional application by checking to see if
it has a series code of "60."
9. Comment: Several comments suggested that the PTO
consider modifying the rules to permit the filing of all
applications by assignees. This would promote harmonization
with other patent laws throughout the world and would
eliminate one of the difficulties which will occur for the
PTO in considering claims for priority based on the filing
of a provisional application.
Response: Assignee filing was recommended in the 1992
Advisory Commission Report on Patent Law Reform. The PTO is
currently undertaking a project to reengineer the entire
patent process. The suggestion will be taken under
advisement in that project.
10. Comment: Several comments stated that a complete
provisional application should not be forwarded to a central
repository for storage.
Response: In view of the relatively small filing fee for a
provisional application and the fact that the provisional
application will not be examined, PTO handling must be kept
to a minimum and these provisional applications, once
complete, will be sent to the Files Repository for storage
rather than being kept in the examination area of the PTO.
11. Comment: One comment suggested that the provisional
application be maintained with the 35 U.S.C. 111(a)
application because the examiner may need it to determine
whether the 35 U.S.C. 111(a) application is entitled to the
benefit of the prior provisional application and in the
event of 18-month publication, there will be a demand for
accessibility by the public to the provisional and 35 U.S.C.
111(a) applications upon publication.
Response: The suggestion has not been adopted. Benefit of
the same provisional application may be claimed in a number
of 35 U.S.C. 111(a) applications. If the PTO is to maintain
the provisional application file with one of several
35 U.S.C. 111(a) applications claiming benefit of the
provisional application and the 35 U.S.C. 111(a) application
containing the provisional application file were to go
abandoned while one of the other 35 U.S.C. 111(a)
applications issues, the public would be entitled to inspect
the provisional application file but not the abandoned
35 U.S.C. 111(a) application file containing the provisional
application file. This would create access problems.
12. Comment: One comment suggested that provisional
applications be available in full to the public if the
benefit of priority is being claimed.
Response: Section 1.14 relating to access applies to all
applications including provisional applications. If the
benefit of a provisional application is claimed in a later
filed 35 U.S.C. 111(a) application which resulted in a
patent, then access to the provisional application will be
available to the public pursuant to 1.14. The mere fact
that a provisional application is claimed in a later filed
35 U.S.C. 111(a) application does not give the public access
to the provisional application unless the 35 U.S.C. 111(a)
application issues as a patent.
13. Comment: Several comments requested that the PTO
clarify whether a 35 U.S.C. 111(a) application will be
accorded an effective date as a reference under 35 U.S.C.
102(e) as of the filing date of the provisional application
for which benefit under 35 U.S.C. 119(e) is claimed. If so,
the comment questioned whether pending applications will be
rejected under 35 U.S.C. 102(e) on the basis that an
invention was described in a patent granted on a provisional
application by another filed in the U.S. before the
invention thereof by the applicant for patent.
Response: If a patent is granted on a 35 U.S.C. 111(a)
application claiming the benefit of the filing date of a
provisional application, the filing date of the provisional
application will be the 35 U.S.C. 102(e) prior art date. A
pending application will be rejected under 35 U.S.C. 102(e)
on the basis that an invention was described in a patent
granted on a 35 U.S.C. 111(a) application which claimed the
benefit of the filing date of a provisional application by
another filed in the U.S. before the invention thereof by
the applicant for patent.
14. Comment: One comment suggested that the PTO issue a
final rule stating that if a 35 U.S.C. 111(a) application
claims the benefit of the filing date of a provisional
application, the "inventive entity" for the purposes of
35 U.S.C. 102(e) will be the inventors listed on the issued
patent, and the list of inventors in the provisional
application shall have no effect on the identity of an
"inventive entity" for the purposes of 35 U.S.C. 102(e).
Response: The suggestion has not been adopted. The
"inventive entity" for the purpose of 35 U.S.C. 102(e) is
determined by the patent and not by the inventors named in
the provisional application. As long as the requirements of
35 U.S.C. 119(e) are satisfied, a patent granted on a
35 U.S.C. 111(a) application which claimed the benefit of
the filing date of a provisional application has a 35 U.S.C.
102(e) prior art effect as of the filing date of the
provisional application based on the inventive entity of the
patent. It is clear from 35 U.S.C. 102(e) that the
inventive entity is determined by the patent and a rule to
this effect is not necessary.
15. Comment: One comment requested the PTO to express its
position as to whether the filing of a provisional
application with the subsequent filing of a 35 U.S.C. 111(a)
application claiming benefit of the provisional application
under 35 U.S.C. 119(e) creates a prior art date against
other patent applicants under 35 U.S.C. 102(g).
Response: As to 35 U.S.C. 102(g), the filing of a
provisional application with the subsequent filing of a
35 U.S.C. 111(a) application claiming benefit of the
provisional application under 35 U.S.C. 119(e) creates a
prior art date under 35 U.S.C. 102(g) as of the filing date
of the provisional application.
16. Comment: One comment suggested that in view of the
20-year patent term measured from filing, 1.103(a) should
be deleted. The PTO should not have the right to suspend
action on any application, thereby reducing applicant's term
of protection.
Response: Section 1.103(a) refers to suspension of action
as a result of a request by applicant. If applicant wishes
to suspend prosecution and thereby reduce his/her term of
protection, applicant should be permitted to do so.
17. Comment: One comment suggested that in order to avoid
delays resulting from consideration of petitions to withdraw
premature notices of abandonment, examiners should be
required to contact an attorney of record prior to
abandoning the application to find out if a response to an
Office communication has been filed.
Response: The suggestion has not been adopted. However, in
order to avoid loss of patent term, applicants are
encouraged to check on the status in cases where applicants
have not received a return postcard from the PTO within
two (2) weeks of the filing of any response to a PTO action.
18. Comment: One comment asked whether there is a "cut-
off" date after which patentees may lose the opportunity to
choose 17 vs. 20-year patent term.
Response: The "cut-off" date is June 8, 1995. A patent
that is in force on June 8, 1995, or a patent that issues
after June 8, 1995, on an application filed before June 8,
1995, is automatically entitled to the longer of the 20-year
patent term measured from the earliest U.S. effective filing
date or 17 years from grant. This is automatic by operation
of law. Patentees need not make any election to be entitled
to the longer term. A patent that issues on an application
filed on or after June 8, 1995 is entitled to a 20-year
patent term measured from the earliest U.S. effective filing
date.
19. Comment: One comment stated that there is no clear
guidance as to a patentee's "bonus rights" that may arise
because of the difference in a 17-year term vs. a 20-year
term. Will parties that were previously in a licensing
arrangement have to renegotiate terms for the bonus patent
term?
Response: Section 154(c) of title 35, United States Code,
states that the remedies of sections 283 (injunction), 284
(damages) and 285 (attorney fees) shall not apply to acts
which were commenced or for which substantial investment was
made before June 8, 1995, and became infringing by reason of
the 17/20 year term and that these acts may be continued
only upon the payment of an equitable remuneration to the
patentee that is determined in an action brought under
chapters 28 and 29 of Title 35. There is no guidance
provided in the statute as to the meaning of "substantial
investment" and "equitable remuneration." Licensing
arrangements are between the parties to the agreement and
are determined by the terms of the agreement and state law
and are outside the jurisdiction of the PTO.
20. Comment: One comment questioned whether an
international application designating the U.S. filed before
June 8, 1995, with entry into the U.S. national stage on or
after June 8, 1995, preserves the 17-year patent term
measured from grant.
Response: An international application designating the U.S.
that is filed before June 8, 1995, with entry into the U.S.
national stage under 35 U.S.C. 371 on or after June 8, 1995,
preserves the option for a 17-year patent term measured from
date of grant.
21. Comment: One comment suggested that 35 U.S.C. 371(c)
be amended because a declaration should not be required to
obtain a filing date and a prior art date under 35 U.S.C.
102(e).
Response: The suggestion has not been adopted. This issue
was not addressed in the Notice of Proposed Rulemaking.
However, the suggestion will be taken under advisement as
part of a comprehensive effort being conducted by the PTO to
reengineer the entire patent process.
22. Comment: One comment suggested that 1.604, 1.605
and 1.607 be amended to state that provisional applications
are not subject to interference.
Response: The suggestion has not been adopted because it is
unnecessary. By statute, 35 U.S.C. 111(b)(8), provisional
applications are not subject to 35 U.S.C. 135, i.e., a
provisional application will not be placed in interference.
23. Comment: One comment suggested that 1.821-1.825 be
amended so that (1) only unbranched sequences of ten or more
amino acids and twenty or more nucleotides which are claimed
have to be included in Sequence Listings, (2) previously
published sequences can be omitted, and (3) the sequences of
primers and oligonucleotide probes should not be included in
a Sequence Listing if encompassed by another disclosed
sequence.
Response: The suggestion has not been adopted. There was
no change proposed to 1.821 - 1.825 in the Notice of
Proposed Rulemaking. However, the suggestion will be taken
under advisement as part of a comprehensive effort being
conducted by the PTO to reengineer the entire patent
process.
24. Comment: One comment suggested that 5.11 to 5.15 be
amended to provide for the grant of a foreign license for a
provisional application.
Response: The suggestion has not been adopted. The present
language of 5.11 to 5.15 already provides for the grant
of a foreign license for a provisional application.
25. Comment: One comment suggested that in order to assist
defense agencies in reviewing application for secrecy
orders, PTO should (1) automatically impose a secrecy order
on any application filed under 35 U.S.C. 111(a) if a secrecy
order was previously imposed on corresponding provisional
application, and (2) require applications filed under
35 U.S.C. 111(a) based on a previous provisional application
to indicate changes made to the provisional application in
the 35 U.S.C. 111(a) application by means of underlining and
bracketing.
Response: The suggestions have not been adopted. The PTO
cannot automatically impose a secrecy order on any
35 U.S.C. 111(a) applications even if a secrecy order was
previously imposed on a provisional application, for which
benefit under 35 U.S.C. 119(e) is claimed, unless the agency
which imposed the secrecy order on the provisional
application specifically requests the PTO to do so since the
35 U.S.C. 111(a) application could disclose subject matter
which is different from that which is disclosed in the
provisional application.
As to item (2), the PTO will not require applicants to
identify the differences in subject matter disclosed in the
35 U.S.C. 111(a) application and the provisional
application.
26. Comment: One comment suggested that in order to
relieve defense agencies from possible liability for secrecy
orders imposed for more than 5 years, the PTO should seek
legislation setting patent term at 20 years from the
earliest filing date or 17 years from the issue date,
whichever is longer, for any patent application placed under
secrecy order.
Response: The suggestion has not been adopted. The PTO
strongly believes that the 20-year patent term as enacted in
Public Law 103-465 is the appropriate way to implement the
20-year patent term required by the GATT Uruguay Round
Agreements Act. The 5-year limit for patent term extension
set forth in 1.701(b) is required by statute,
35 U.S.C. 154(b).
COMMENTS DIRECTED TO SPECIFIC RULES
27. Comment: One comment suggested that in order to
eliminate the need for the expression "other than a
provisional application" in other parts of the regulations,
1.9 should be amended to identify a 35 U.S.C. 111(a)
application by some term that can be used in the rules to
distinguish that type of application from a provisional
application.
Response: The suggestion has been adopted. The rules are
being amended to include a definition of the term
"nonprovisional application" in 1.9(a) to describe an
application filed under 35 U.S.C. 111(a) or 371. Further,
the term "nonprovisional application" is being used in the
final rules where the rule applies only to applications
filed under 35 U.S.C. 111(a) or 371 and not to provisional
applications.
28. Comment: One comment suggested that the rules be
simplified if a "national application" could be defined in
1.9 to exclude a provisional application.
Response: The suggestion has not been adopted. Section
1.9(a), prior to this rulemaking, defined a national
application to include any application filed under 35 U.S.C.
111. A provisional application is an application filed
under 35 U.S.C. 111. It is appropriate to define a
provisional application as a special type of national
application.
29. Comment: One comment requested an explanation of the
showing required in a petition under 1.12 and 1.14 for
access to pending applications and to assignment records for
pending applications.
Response: There was no substantive change proposed to
either 1.12 or 1.14 in the Notice of Proposed Rulemaking.
Thus, the showing required in a petition under 1.12 or
1.14 remains the same after this final rulemaking as before.
A discussion of such a petition can be found in section 103
of the MPEP.
30. Comment: Several comments objected to the definition
in 1.45(c) of joint inventors in provisional applications
as being those having made a contribution to "the subject
matter disclosed" in the provisional application. Various
language, such as, "the subject matter which constitutes the
invention," "subject matter disclosed and regarded to be the
invention," "disclosed invention," "the inventive subject
matter disclosed" was suggested. Another comment requested
guidance as to the determination of inventorship in a
provisional application.
Response: The suggestion has not been adopted. The term
"invention" is typically used to refer to subject matter
which applicant is claiming in his/her application. Since
claims are not required in a provisional application, it
would not be appropriate to reference joint inventors as
those who have made a contribution to the "invention"
disclosed in the provisional application. If the
"invention" has not been determined in the provisional
application because no claims have been presented, then the
name(s) of those person(s) who have made a contribution to
the subject matter disclosed in the provisional application
should be submitted. Section 1.45(c) states that "if
multiple inventors are named in a provisional application,
each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in
the provisional application." All that 1.45(c) requires
is that if someone is named as an inventor, that person must
have made a contribution to the subject matter disclosed in
the provisional application. When applicant has determined
what the invention is by the filing of the 35 U.S.C. 111(a)
application, that is the time when the correct inventors
must be named. The 35 U.S.C. 111(a) application must have
an inventor in common with the provisional application in
order for the 35 U.S.C. 111(a) application to be entitled to
claim the benefit of the provisional application under
35 U.S.C. 119(e).
31. Comment: Several comments suggested that it might be
desirable to correct inventorship in a provisional
application where an individual was erroneously named as an
inventor and that the procedure for doing so should be set
forth in 1.48.
Response: Under 35 U.S.C. 119(e), as contained in Public
Law 103-465, a later filed application under 35 U.S.C.
111(a) may claim priority benefits based on a copending
provisional application so long as the applications have at
least one inventor in common. An error in naming a person
as an inventor in a provisional application would not
require correction by deleting the erroneously named
inventor from the provisional application since this would
have no effect upon the ability of the provisional
application to serve as a basis for a priority claim under
35 U.S.C. 119(e). However, in response to the comments,
1.48 is being amended to include a new paragraph (e) which
sets forth the requirements for deleting the names of the
inventors incorrectly named as joint inventors in a
provisional application, namely, a petition including a
verified statement by the inventor(s) whose name(s) are
being deleted stating that the error arose without deceptive
intent, the fee set forth in 1.17(q) and the written
consent of all assignees.
32. Comment: One comment suggested that in order to make
the procedures for provisional applications as simple as
possible, there is no need to provide any rules to add
inventor(s) or change inventorship in a provisional
application since the whole concept of inventorship is
meaningless without a claim. Error in inventorship can be
corrected by the filing of a 35 U.S.C. 111(a) application
within 12 months after the filing of a provisional
application.
Response: The suggestion has not been adopted. One of the
requirements of 35 U.S.C. 119(e) is that a 35 U.S.C. 111(a)
application must have at least one inventor in common with a
provisional application in order for the 35 U.S.C. 111(a)
application to be entitled to claim the benefit of the
filing date of the provisional application. In situations
where there is no inventor in common between the 35 U.S.C.
111(a) application and the provisional application due to
error in naming the inventors in the provisional
application, procedures must be established to permit
applicant to correct the inventorship in the provisional
application.
33. Comment: One comment suggested that an individual who
is the inventor of subject matter disclosed in a provisional
application, but who is not named as an inventor in the
provisional application because that subject matter was not
intended to be claimed in a later filed 35 U.S.C. 111(a)
application, could be added as an inventor pursuant to
1.48(d) in the provisional application if the subject
matter was later claimed in the 35 U.S.C. 111(a)
application.
Response: The individual could be added as an inventor
pursuant to 1.48(d) in the provisional application so long
as the individual was originally omitted without deceptive
intent.
34. Comment: One comment questioned whether it would be
proper for a registered practitioner who did not file the
provisional application to sign the statement required by
1.48(d) that the error occurred without deceptive
intention on the part of the inventors.
Response: It would be proper for a registered practitioner
who did not file the provisional application to sign the
statement required by 1.48(d), if the registered
practitioner has a reasonable basis to believe the truth of
the statement being signed.
35. Comment: One comment suggested that there should be no
diligence requirement to correct inventorship in a
provisional application.
Response: Diligence is not a requirement to correct
inventorship in a provisional application in either
1.48(d) or 1.48(e).
36. Comment: One comment suggested that 1.48(a) be
amended by deleting the requirements for "a statement of
facts verified by the original named inventor or inventors
establishing when the error without deceptive intention was
discovered and how it occurred" and for the written consent
of any assignee.
Response: The suggestion has not been adopted. There was
no substantive change proposed to 1.48(a) in the Notice of
Proposed Rulemaking. Since the correction of inventorship
affects ownership rights, the existing rules are designed to
provide assurances that all parties including the original
named inventors and all assignees agree to the change of
inventorship. If the requirements for verified statements
of facts from the original named inventors and written
consent of the assignees are to be deleted, the PTO would no
longer have the assurances that all parties agree to the
change.
37. Comment: One comment expressed concern that a
provisional application filed without a claim will leave
subsequent readers with little or no clue as to what the
inventors in the provisional application considered to be
their invention at the time the provisional application was
filed and doubted that a provisional application filed
without a claim defining the invention could ever provide a
sufficient disclosure to support a claim for a foreign or
U.S. priority date.
Response: Claims are not required by the statute to provide
a specification in compliance with the requirements of
35 U.S.C. 112, first paragraph. However, if an applicant
desires, one or more claims may be included in a provisional
application. Any claim filed with a provisional application
will, of course, be considered a part of the original
provisional application disclosure.
38. Comment: One comment suggested that the PTO issue a
specification format or guideline for a provisional
application to enable an inventor to comply with 35 U.S.C.
112, first paragraph.
Response: The format of a provisional application is the
same as for other applications and is set forth in existing
1.77 which is applicable to provisional applications
except no claims are required for provisional applications.
39. Comment: Several comments suggested that the PTO
revise its rules to clarify that strict adherence to the
enablement, description and best mode requirements of
35 U.S.C. 112, first paragraph, is not required in
provisional applications.
Response: The suggestion has not been adopted. The
substantive requirements of a specification necessary to
comply with 35 U.S.C. 112, first paragraph, are established
by court cases interpreting that section of the statute, not
by rule. The case law applies to provisional applications
as well as to applications filed under 35 U.S.C. 111(a).
40. Comment: Several comments suggested that the rules or
comments published with the Final Rule indicate whether
there is any requirement to update the best mode disclosed
in the provisional application when filing the 35 U.S.C.
111(a) application.
Response: No rule was proposed to address the issue when
going from a provisional application to a 35 U.S.C. 111(a)
application because no current rule exists when going from
one 35 U.S.C. 111(a) application to another 35 U.S.C. 111(a)
application. The question of whether the best mode has to
be updated is the same when going from one 35 U.S.C. 111(a)
application to another 35 U.S.C. 111(a) application or from
a provisional application to a 35 U.S.C. 111(a) application.
Accordingly, the rationale of Transco Products, Inc. v.
Performance Contracting, Inc., 38 F.3d 551, 32 U.S.P.Q.2d
1077 (Fed. Cir. 1994), would appear to be applicable.
Clearly, if the substantive content of the application does
not change when filing the 35 U.S.C. 111(a) application,
there is no requirement to update the best mode. However,
if subject matter is added to the 35 U.S.C. 111(a)
application, there may be a requirement to update the best
mode.
41. Comment: One comment suggested that 1.51(c) be
amended to permit a provisional application to be filed with
an authorization to charge fees to a deposit account.
Response: Section 1.51(c) permits an application to be
filed with an authorization to charge fees to a deposit
account. Section 1.51(c) applies to provisional
applications. Therefore, no change to 1.51(c) is
necessary.
42. Comment: One comment suggested that the PTO confirm
that there will be no procedural examination of a
provisional application other than to determine whether the
provisional application complies with 1.51(a)(2).
Response: The PTO intends to require compliance with the
formal requirements of 1.52(a)-(c) only to the extent
necessary to permit the PTO to properly microfilm and store
the application papers.
43. Comment: Several comments suggested that an English
translation of a foreign language provisional application
should not be required unless necessary in prosecution of
the 35 U.S.C. 111(a) application to establish benefit. If
an English translation is required, there is no useful
purpose to require the translation at any time earlier than
the filing of 35 U.S.C. 111(a) application claiming the
benefit of the provisional application.
Response: Provisional applications may be filed in a
language other than English as set forth in existing
1.52(d). However, an English language translation is
necessary for security screening purposes. Therefore, the
PTO will require the English language translation and
payment of the fee required in 1.52(d) in the provisional
application. Failure to timely submit the translation in
response to a PTO requirement will result in the abandonment
of the provisional application. If a 35 U.S.C. 111(a)
application is filed without providing the English language
translation in the provisional application, the English
language translation will be required to be supplied in
every 35 U.S.C. 111(a) application claiming priority of the
non-English language provisional application.
44. Comment: One comment suggested that a new model oath
or declaration form for use in claiming 35 U.S.C. 119(e)
priority and a "cover sheet" for use in filing provisional
applications be published as an addendum to the final rules.
Response: The suggestion has been adopted. See Appendix A
for the sample cover sheet for filing a provisional
application and Appendix B for the sample declaration for
use in claiming 35 U.S.C. 119(e) priority.
45. Comment: One comment suggested that the statement in
1.53(b)(2) that the provisional application will not be
given a filing date if all the names of the actual inventor
or inventor(s) are not supplied be deleted and 1.41 be
amended to make an exception for provisional applications.
The comment suggested that 35 U.S.C. 111(b) is satisfied as
long as the name of one person who made an inventive
contribution to the subject matter of the application is
given.
Response: The suggestion has not been adopted. Section
111(b) of title 35, United States Code, states that "a
provisional application shall be made or authorized to be
made by the inventor." This language parallels
35 U.S.C. 111(a). The naming of inventors for obtaining a
filing date for a provisional application is the same as for
other applications. A provisional application filed with
the inventors identified as "Jones et al." will not be
accorded a filing date earlier than the date upon which the
name of each inventor is supplied unless a petition with the
fee set forth in 1.17(i) is filed which sets forth the
reasons the delay in supplying the names should be excused.
Administrative oversight is an acceptable reason. It should
be noted that for a 35 U.S.C. 111(a) application to be
entitled to claim the benefit of the filing date of a
provisional application, the 35 U.S.C. 111(a) application
must have at least one inventor in common with the
provisional application.
46. Comment: One comment suggested that a drawing should
not be required to obtain a filing date for a provisional
application. Whatever is filed should be given a serial
number and filing date in order to establish status as a
provisional application, regardless of what is in the
specification or drawing. If the provisional application
omitted drawings, has pages missing, or is otherwise
incomplete, then applicant may not be able to rely on the
filing date of the provisional application in a subsequently
filed 35 U.S.C. 111(a) application. It should not be the
job of the Application Branch to review compliance with
1.81(a).
Response: Section 111(b) of title 35, United States Code,
states that a provisional application must include a
specification as prescribed by 35 U.S.C. 112, first
paragraph and a drawing as prescribed by 35 U.S.C. 113.
Drawings are required pursuant to 35 U.S.C. 113 if they are
necessary to understand the subject matter sought to be
patented. If a provisional application as filed omitted
drawings and/or has pages missing, the provisional
application is prima facie incomplete and no filing date
will be granted. Application Branch currently reviews all
applications to make sure that no filing date will be
granted to an application that is prima facie incomplete.
Application Branch will perform the same type of review with
provisional applications. If a filing date is not granted
to a provisional application because it is prima facie
incomplete, applicant may petition the PTO under 1.182 to
grant a filing date to the provisional application as of the
date of deposit of the application papers if it can be shown
that the omitted items are not necessary for the
understanding of the subject matter.
47. Comment: One comment objected to the requirement in
1.53(b)(2)(i) for a cover sheet identifying the
application as a provisional application because it is
unnecessarily rigid and contrary to Congress' desire to keep
the filing of provisional application as simple as possible.
Response: The requirement that a provisional application be
specifically identified on filing as a provisional
application is not seen to be burdensome on the applicant
and is necessary for the PTO to properly process the papers
as a provisional application. All an applicant is required
to do in order to comply with the requirement of
1.53(b)(2)(i) is to include a transmittal sheet
identifying the papers being filed as a PROVISIONAL
application.
48. Comment: Several comments suggested that in
1.53(b)(2)(ii), as proposed, the phrase "the expiration of
12 months after the filing date of the provisional
application" should read "the expiration of 12 months after
the filing date of the 1.53(b)(1) application".
Response: The suggestion has been adopted.
49. Comment: One comment objected to the requirement in
1.53(b)(2)(ii) for a petition to convert an application
filed under 1.53(b)(1) to a provisional application and
suggested that any confusion concerning applicant's
intention could be handled informally without a petition or
petition fee.
Response: The requirement for a petition and fee is
intended to ensure that the cost of any PTO reprocessing is
borne specifically by the applicant requesting the action.
50. Comment: Several comments suggested that the filing
fee required in an application filed under 35 U.S.C. 111(a)
claiming benefit of the filing date of an earlier
35 U.S.C. 111(a) application which has been converted to a
provisional application under proposed 1.53(b)(2)(ii) be
reduced, since the $730/$365 filing fee was paid in the
earlier application.
Response: The suggestion has not been adopted. The filing
fee required in an application filed under 35 U.S.C. 111(a)
is set by statute. The statute does not provide for the
suggested reduction in the filing fee.
51. Comment: One comment suggested that proposed
1.53(b)(2)(iii) should apply retroactively to permit
applications filed between June 9, 1994, and June 8, 1995,
to be converted to provisional applications.
Response: The suggestion has not been adopted. The statute
does not permit a provisional application to have a filing
date prior to June 8, 1995.
52. Comment: One comment suggested that 1.53(b)(2)(ii)
be revised to state that the petition requesting conversion
must also be filed before (1) the application becomes
involved in interference, or (2) notice by the PTO of intent
to publish the application as a statutory invention
registration. This suggestion conforms with 35 U.S.C.
111(b)(8).
Response: The suggestion has not been fully adopted. It is
not necessary to include interference in 1.53(b)(2)(ii)
because if a 35 U.S.C. 111(a) application becomes involved
in an interference proceeding and applicant files a petition
requesting conversion of that 35 U.S.C. 111(a) application
to a provisional application, the 35 U.S.C. 111(a) will be
removed from the interference proceeding upon granting the
petition to convert. When a subsequent 35 U.S.C. 111(a)
application is filed based on the provisional application,
the subsequent 35 U.S.C. 111(a) application could be placed
in the interference proceeding if necessary. As to the
reference to statutory invention registration,
1.53(b)(2)(ii) is being amended to require the petition
and the fee be filed prior to the earlier of the abandonment
of the 35 U.S.C. 111(a) application, the payment of the
issue fee, the expiration of 12 months after the filing date
of the 35 U.S.C. 111(a) application, or the filing of a
request for a statutory invention registration under
1.293.
53. Comment: One comment suggested that the procedures for
converting a 35 U.S.C. 111(a) application to a provisional
application be explained in greater detail in
1.53(b)(2)(ii) or in the discussion. If a 35 U.S.C.
111(a) application is converted to a provisional application
on the last day of the 12-month period, and a second
35 U.S.C. 111(a) application is concurrently filed, how
should this be done and how should the first sentence in the
second 35 U.S.C. 111(a) application be worded. Furthermore,
if a 35 U.S.C. 111(a) application is converted to a
provisional application on the last day of the 12-month
period, will it be necessary to file a second 35 U.S.C.
111(a) application on the same day, or else lose the
priority claim.
Response: The suggestion has not been adopted. The
language in 1.53(b)(2)(ii) is clear relating to the
requirements for converting a 35 U.S.C. 111(a) application
to a provisional application. If applicant wishes to
convert a 35 U.S.C. 111(a) application to a provisional
application, applicant must file a petition requesting the
conversion along with the petition fee set forth in
1.17(q). The petition and the fee must be filed prior to
the earlier of the abandonment of the 35 U.S.C. 111(a)
application, the payment of the issue fee, the expiration of
12 months after the filing date of the 35 U.S.C. 111(a)
application, or the filing of a request for a statutory
invention registration under 1.293. In the example noted
in the comment, if a 35 U.S.C. 111(a) application is
converted to a provisional application on the last day of
the 12-month period, a second 35 U.S.C. 111(a) application
must be filed on that same day, otherwise, applicant will
lose the priority pursuant to 35 U.S.C. 119(e). An example
of how the first sentence of the second 35 U.S.C. 111(a)
application would read is, "This application claims the
benefit of U.S. Provisional Application No. 60/---,
filed---, which was converted from Application No.---."
54. Comment: One comment suggested that the PTO consider a
rule mandating that any prior U.S. application that would
have been eligible for conversion to a provisional
application that is abandoned in favor of a continuing
application within one year of the earliest priority date
asserted be deemed constructively converted to a provisional
application.
Response: The suggestion has not been adopted. Conversion
of a 35 U.S.C. 111(a) application to a provisional will be
permitted only by way of a petition and under the conditions
set forth in 1.53(b)(2)(ii). One reason for this is that
the PTO plans to provide sufficient information on the
printed patent to determine the end date of the
20-year patent term by identifying provisional applications
using a unique series code, i.e., "60". Thus, a 35 U.S.C.
111(a) application converted to a provisional application
will need to be reprocessed by the PTO with a new
application number. The petition fee is intended to
reimburse the PTO for the extra processing necessitated by
the conversion.
55. Comment: One comment stated that 1.53(b)(2)(ii)
permits the conversion of a 35 U.S.C. 111(a) application to
a provisional application. However, it is silent as to
whether such a conversion would kill any benefit the
35 U.S.C. 111(a) application had of domestic and/or foreign
priority.
Response: Section 111(b)(7) of title 35, United States
Code, specifically states that a provisional application
shall not be entitled to the right of priority of any other
application under 35 U.S.C. 119 or 365(a) or to the benefit
of an earlier filing date in the United States under
35 U.S.C. 120, 121, or 365(c). If a 35 U.S.C. 111(a)
application is converted to a provisional application, the
granting of the conversion will automatically eliminate any
claim of priority which could have been made in the
35 U.S.C. 111(a) application.
56. Comment: Several comments suggested that it was
inconsistent with the purpose of the provisional application
to require any compliance with the Sequence Disclosure Rules
1.821 - 1.823 and 1.825, since the provisional
applications are not examined and there is no comparison of
the sequences with the prior art.
Response: The Office agrees with the comments that a
provisional application need not comply with the
requirements of 1.821 through 1.825. Section
1.53(b)(2)(iii) is being amended to indicate that the
requirements of 1.821 through 1.825 regarding sequence
listings are not mandatory for a provisional application.
However, applicants are cautioned that in order for a
35 U.S.C. 111(a) application to obtain the benefit of the
filing date of an earlier filed provisional application, the
claimed subject matter of the 35 U.S.C. 111(a) application
must have been disclosed in the provisional application in a
manner provided by 35 U.S.C. 112, first paragraph.
Applicants are encouraged to follow the sequence rules to
ensure that support for the invention claimed in the
35 U.S.C. 111(a) application can be readily ascertained in
the provisional application.
57. Comment: One comment suggested that the language in
1.53(e)(2) that a provisional application will become
abandoned no later than twelve months after its filing date
was misleading and that the words "no later than" should be
deleted because it was believed that a provisional
application could not be abandoned prior to twelve months
after its filing date.
Response: The statute does not state that a provisional
application can never be abandoned prior to twelve months
after its filing date. In fact, a provisional application
may be abandoned as a result of applicant's failure to
timely respond to a PTO requirement. For example, if a
provisional application which has been accorded a filing
date does not include the appropriate filing fee or the
cover sheet required by 1.51(a)(2), applicant will be so
notified if a correspondence address has been provided and
given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in 1.16(l).
Failure to timely respond will result in the abandonment of
the application. This may occur prior to twelve months
after its filing date. Furthermore, a provisional
application may also be expressly abandoned prior to twelve
months from its filing date.
58. Comment: One comment objected to the deletion of the
"retention fee" practice in 1.53(d) since it permits an
applicant in a first application claiming benefits under
35 U.S.C. 119(a)-(d) or 120 to correct inventorship by
filing a second application without having to pay the full
filing fee in the first application.
Response: Since the comment indicated that there is a
benefit to retain the retention fee practice, the proposal
to eliminate the practice is withdrawn.
59. Comment: One comment stated that the language of
1.53(d)(1) and (d)(2) indicates an intent by the PTO to
mail the "Notice Of Missing Parts" to applicant's post
office address and argues that the "Notice" should be mailed
to the registered practitioner who filed the application on
behalf of the applicant.
Response: The language in 1.53(d)(1) and (d)(2) states
that the applicant will be notified of the missing part, if
a correspondence address is provided. This means that the
"Notice" to applicant will be mailed to the correspondence
address provided in the application papers. Under current
PTO practice, if no specific correspondence address is
identified in the application, the address of the registered
practitioner who filed the application on behalf of the
applicant is used as the correspondence address. If no
specific correspondence address or registered practitioner
is identified in the application, the post office address of
the first named inventor is used as the correspondence
address. No change in current PTO practice in this regard
is required as a result of 1.53(d)(2) nor is any change
planned.
60. Comment: Several comments objected to the proposed
deletion of 1.60. One comment suggested that the deletion
of 1.60 was a major rule change and should have been
proposed separate from the proposed rules dealing with the
changes in practice required by Public Law 103-465.
Response: In view of the comments received, the proposal to
delete 1.60 is withdrawn. However, the proposal will be
considered as part of a comprehensive effort being conducted
by the PTO to reengineer the entire patent process.
61. Comment: One comment suggested that in view of the
deletion of 1.60, language should be incorporated in
1.53(a)(1) to state that a copy of the prior application
along with a copy of the declaration may be filed to obtain
a filing date. Furthermore, full details and guidelines of
the procedure should accompany the rule.
Response: The suggestion has not been adopted. The
proposal to delete 1.60 is withdrawn in view of several
comments received objecting to the deletion.
62. Comment: One comment |
