DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 941120-4320]
RIN: 0651-AA76
Changes to Implement 20-Year Patent Term and Provisional
Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Patent and Trademark Office (Office) is
proposing to amend the rules of practice in patent cases to
implement the changes related to patent term in title 35,
United State Code, contained in the Uruguay Round Agreements
Act (S. 2467 and H.R. 5110), which was recently passed by
Congress, and to simplify the rules. Among the changes that
are contained in S. 2467 and H.R. 5110 are the conversion to
a 20-year patent term measured from the date of filing an
application in the U.S., and the introduction of provisional
applications. The changes apply to utility and plant
patents. They do not apply to design patents. S. 2467 was
passed by the Senate on December 1, 1994, and the House
passed H.R. 5110 on November 29, 1994. The President has
indicated that he will sign the bills. Since a Public Law
number is not available, the rule package refers to the
Senate and House bill numbers for convenience. The
amendments to title 35 relating to 20-year patent term and
provisional applications will be effective on the date which
is 6 months after the date of enactment.
DATES: Written comments must be submitted on or before
February 17, 1995. A public hearing will be held Thursday,
February 16, 1995, at 9:30 a.m., in the Commissioner's
Conference Room 912, Crystal Park 2, 2121 Crystal Drive,
Arlington, Virginia. Requests to present oral testimony
should be received on or before February 14, 1995.
ADDRESSES: Address written comments and requests to present
oral testimony to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231, Attention: Stephen G.
Kunin, Deputy Assistant Commissioner for Patent Policy and
Projects, Crystal Park 2, Suite 919, or by fax to
(703)305-8825.
FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or
John F. Gonzales, Special Program Examiners, Office of the
Deputy Assistant Commissioner for Patent Policy and
Projects, at (703)305-9285 or by mail marked to their
attention and addressed to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: This proposed rule change is
designed primarily to implement the changes in practice
related to patent term provided for in S. 2467 and
H.R. 5110. In addition, it is proposed to simplify the
procedures for filing continuation and divisional
applications which will benefit both the Office and the
public.
Section 154 of title 35, United State Code, currently
provides that every patent (other than a design patent)
shall be granted for a term of seventeen years from the
patent issue date, subject to the payment of maintenance
fees as provided for in title 35. S. 2467 and H.R. 5110
amend 35 U.S.C. 154 by establishing a 20-year patent term
from the date of filing of the application. Specifically,
the legislation 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 relied on was filed.
As amended by S. 2467 and H.R. 5110, 35 U.S.C. 154 excludes
from determination of the patent term any application on
which priority is claimed under 35 U.S.C. 119, 365(a) or
365(b).
S. 2467 and H.R. 5110 further provide that the term of a
patent may be extended, for a maximum of five years, where
the issuance of a patent is delayed because of
(1) proceedings under 35 U.S.C. 135(a), (2) placement of the
application under a secrecy order pursuant to 35 U.S.C. 181,
and/or, under certain circumstances, (3) appellate review by
the Board of Patent Appeals and Interferences or by a
federal court. The total extension available is limited to
five years regardless of whether there were delays due to
more than one of the reasons covered by the legislation.
This extension is separate from and in addition to the
patent term extension available under 35 U.S.C. 156.
In addition, S. 2467 and H.R. 5110 establish 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. The legislation provides a mechanism to
enable domestic applicants to quickly and inexpensively file
provisional applications. Applicants will be entitled to
claim the benefit of priority in a given application based
upon the previously filed provisional application in the
United States. The domestic priority period will not count
in the measurement of the term. Thus, under the
legislation, domestic applicants will be placed on an equal
footing with foreign applicants with respect to the patent
term.
35 U.S.C. 111 is amended by S. 2467 and H.R. 5110 to provide
for the filing of a provisional application.
35 U.S.C. 41(a)(1) is amended to provide a $150.00 filing
fee for each provisional application, subject to a
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
twelve (12) months after its filing date and will not be
subject to revival to restore it to pending status
thereafter. Benefit of the filing date of the copending
provisional application may be claimed pursuant to
35 U.S.C. 119(e), as contained in S. 2467 and H.R. 5110, in
a continuing application during these 12 months. 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, S. 2467 and H.R. 5110 amend 35 U.S.C. 119 to allow an
applicant to claim benefits of the filing date of the
provisional application in a later filed U.S. application.
However, since 35 U.S.C. 154 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 will not be considered in
determining the term of any patent.
S. 2467 and H.R. 5110 further include transitional
provisions for limited reexamination in certain applications
pending for 2 years or longer as of the effective date of
35 U.S.C. 154(a)(2), 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 3 years or longer as of the
effective date of 35 U.S.C. 154(a)(2), 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 on or
after the effective date of 35 U.S.C. 154(a)(2), regardless
of whether the application is a continuing application.
In addition, this proposed rule change will simplify the
procedures by eliminating the processing and retention fee
practice set forth in existing sections 1.53(d) and
1.78(a)(1). The processing and retention fee practice
allows applicants to file an application without the filing
fee and to pay the processing and retention fee of $130.00
in order for the application to be used as a basis for
foreign filing and for priority under 35 U.S.C. 120. The
processing and retention fee practice is seldom used and
will be unnecessary in view of the legislation which
provides for the filing of a provisional application with a
filing fee of $150.00/$75.00. The result achieved by the
use of the processing and retention fee practice can be
achieved by the use of the provisional application practice
at about the same fee level.
In order to simplify the procedures for filing continuation
and divisional applications, it is proposed that
section 1.60 be deleted. The procedures set forth
in section 1.60 are unnecessary in view of the recent rule
change to section 1.6(d) which permits the filing of a copy
of an oath or declaration. Applicants may use the
procedures set forth in section 1.53 to file a continuation
or divisional application under 35 U.S.C. 111(a), as
contained in S. 2467 and H.R. 5110, by providing the Office
with a copy of the prior application as filed. The issue of
a stale oath or declaration would be eliminated by amending
Office practice since neither the statute nor the rules
require a recent date of execution to appear on the oath or
declaration. The subject matter of the application would
have been executed by the inventor(s) and the duty of candor
and good faith including the duty of disclosure requirements
of section 1.56 would be continuous and would apply to the
continuing application.
Clarifying amendments are proposed to be made to
sections 1.16, paragraphs (a) and (f); and 1.17, paragraphs
(h) and (i). These proposed amendments do not affect the
substance of the rules.
The fees set forth in current section 1.17, paragraphs
(i)(1) and (i)(2), are proposed to be consolidated into a
new paragraph (i).
Discussion of Specific Rules
If Title 37 of the Code of Federal Regulations, Parts 1
and 3, are amended as proposed:
Section 1.1 would 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 would have current paragraph (a) redesignated as
subparagraph (a)(1). A new subparagraph (a)(2) would be
added to define the term "provisional application" as a U.S.
national application filed under 35 U.S.C. 111(b).
Sections 1.12 and 1.14 would have the reference to
37 CFR 1.17(i)(1) replaced with a reference to
37 CFR 1.17(i) because it is proposed that 37 CFR 1.17(i)(1)
and (i)(2) be consolidated into a new paragraph (i) since
the petition fees provided in existing paragraphs (i)(1) and
(i)(2) are the same.
Section 1.16 would list the basic filing fee for a
provisional application as $75.00 for a small entity (see
section 1.9(c)-(f)) or $150.00 for other than a small entity
as contained in S. 2467 and H.R. 5110. Since the filing fee
for a provisional application is established by S. 2467 and
H.R. 5110 as a 35 U.S.C. 41(a) fee, the filing fee for a
provisional application will be subject to the 50 percent
reduction provided for in 35 U.S.C. 41(h). A complete
provisional application does not require claims since no
examination on the merits will be given to a provisional
application. 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.
Also, proposed section 1.16 paragraph (l), would establish
the surcharge required by proposed section 1.53(d)(2) for
filing the basic filing fee or the cover sheet required by
proposed section 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. The $50.00/$25.00 surcharge set forth in proposed
paragraph (l) for a provisional application is less than the
$130.00/$65.00 surcharge set forth in paragraph (e) for all
other types of patent applications. A reduced surcharge for
a provisional application is proposed in view of the lower
filing fee required for a provisional application and in an
attempt to minimize applicant's overall cost of filing a
provisional application.
Clarifying changes would be made to section 1.16. These
changes do not affect the substance of the rule. It is
proposed to insert the words "basic fee" in paragraph (f) of
section 1.16. Paragraph (e) currently 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 current section 1.53(d).
The change to section 1.16(f) is merely for clarification.
In addition, it is proposed to replace the word "cases"
found in paragraph (a) with the word "applications", since
the word "applications" is used elsewhere in the rule.
Section 1.17 would amend paragraph (h) to provide that the
$130.00 petition fee for filing a petition for correction of
inventorship under 37 CFR 1.48 applies to all patent
applications, except provisional applications which would be
covered by new paragraph (q).
The reference to section 1.60 in section 1.17(i)(1) would be
deleted, since it is proposed that section 1.60 be removed.
The words "of this part", in section 1.17, paragraphs (h)
and (i), would be deleted, since the paragraphs currently
refer to sections in parts other than Part 1. No
substantive change is intended by this proposal.
Section 1.17(i) would be amended to clarify that petitions
relating to the grant of a filing date under section 1.53
are for applications other than provisional applications.
Proposed paragraph (q) would address petitions relating to
provisional applications.
In addition, the rules would be simplified by combining
current section 1.17(i)(1) and (i)(2) into new paragraph
(i), since the petition fees provided in current paragraphs
(i)(1) and (i)(2) are the same. No substantive change is
intended by this proposal.
A new section 1.17(q) would be added to establish the fee
for filing a petition for correction of inventorship under
section 1.48 in a provisional application as $25.00 for a
small entity or $50.00 for other than a small entity. The
$50.00/$25.00 petition fee would also be required by
proposed section 1.53 for filing a petition to accord a
provisional application a filing date or to convert an
application filed under proposed section 1.53(b)(1) to a
provisional application.
New sections 1.17(r) and (s) would be added to establish the
fee for filing a submission after final rejection under
section 1.129(a) and for each additional invention requested
to be examined under section 1.129(b), respectively. These
fees have been set at $730.00 to cover the costs of
processing the submission after final rejection and each
additional invention requested to be examined.
Paragraph (l) would be deleted from section 1.21 since the
processing and retention fee required in existing section
1.53(d) would be eliminated and the reference to section
1.60 in paragraph (n) would be deleted since section 1.60
would be removed.
Section 1.28(a) would have the references to section 1.60
deleted since section 1.60 would be removed. Section
1.28(a) would be amended to delete the references to section
1.62 and to specify the procedure for establishing small
entity status in continuation, divisional and
continuation-in-part applications where small entity status
has been established in a parent application. Where the
status as a small entity has been established in a parent
application and is still proper, applicant could include, in
a continuation, divisional or continuation-in-part
application, either a reference to a verified statement
claiming small entity status in the parent application or a
copy of the verified statement filed in the parent
application.
Section 1.45(c) would state that each inventor named in a
joint provisional application must have made a contribution
to the subject matter disclosed in the application. The
existing language of paragraph (c) refers to "the subject
matter of at least one claim" which would be inappropriate
for provisional applications, since provisional applications
may be filed without claims.
Section 1.48, paragraphs (a)-(c), would specify that the
procedures for correcting an error in inventorship set forth
in those paragraphs relate to applications other than
provisional applications. A new paragraph (d) would
establish a simplified procedure for adding the name of an
inventor in a provisional application, where the name was
originally omitted without deceptive intent. Proposed
paragraph (d) would not require the verified statement of
facts by the original inventor or inventors, the oath or
declaration by each actual inventor in compliance with
section 1.63 or the consent of any assignee as currently
required in paragraph (a). The procedure would require 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
Office. The statement could be signed by a registered
practitioner acting in a representative capacity under
section 1.34(a). The $50.00/$25.00 petition fee set forth
in proposed section 1.17(q) would also be required.
Under 35 U.S.C. 119(e), as contained in S. 2467 and
H.R. 5110, a later filed complete application 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. Therefore, proposed section
1.48(d) would not provide a procedure for deleting a named
inventor. Any request to delete a named inventor filed in a
provisional application would be properly treated as a
petition under section 1.182. As a condition to granting
any petition to delete a named inventor in a provisional
application and in order to protect the rights of the
inventors/assignees involved, the Office may require a
statement from all of the named inventors and/or the written
consent of any assignee.
Section 1.51 would include a new subparagraph (a)(2)
identifying the required parts of a complete provisional
application. The complete provisional application would
include 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 will be available
from the Office free of charge to the public. The cover
sheet as set forth by proposed subparagraph (a)(2)(i) would
identify (1) the application as a provisional application,
(2) the name or names of the inventor or inventors, (3) the
title of the invention, (4) the name and registration number
of the attorney or agent (if applicable), (5) the docket
number used by the person filing the application to identify
the application (if applicable), and (6) the correspondence
address, all of which is information required in order to
properly prepare the provisional application filing receipt.
The Office currently receives thousands of papers and fees
every work day. Most papers filed in the Office are
received in the Correspondence and Mail Division which must
identify and route each paper to the appropriate area for
consideration. Among the papers which may currently be
filed in the Office are disclosure documents, which may
comprise a written description and drawings, and
applications for patent, some of which may be incomplete
because claims are omitted. Further, applications for
patent are frequently received in the Office without the
filing fee or the oath/declaration required by section 1.63.
With the inception of provisional application practice, the
Office will begin receiving another type of document
resembling either a disclosure document or an incomplete
application for patent and which may comprise nothing more
than a written description and drawings. The potential for
Office error, e.g., misinterpreting a paper intended as a
provisional application as some other type of document, will
obviously increase. Further, with the inception of a
twenty-year patent term, it will be highly desirable for the
Office to process applications, as well as all other papers
which the Office receives, quickly and correctly.
While the name or names of the inventors are required in
order to accord a provisional application a filing date, a
provisional application is not required to be signed by the
inventor or the assignee. No oath or declaration is
required. Presumably, most provisional applications will be
filed by a registered practitioner without a power of
attorney being filed. If an essential part, e.g., the
drawings, of the provisional application is omitted or if
the filing fee did not accompany the application, the Office
will need a correspondence address to notify the applicant
of the omission.
The cover sheet required in section 1.51 would provide the
Correspondence and Mail Division with a paper specifically
identifying the document as a provisional application and
would provide the Application Processing Division with most
of the information it will need to promptly and properly
process the provisional application and to prepare the
official filing receipt. The cover sheet would also provide
applicants and practitioners with a checklist prior to the
filing of the provisional application.
Since no substantive examination would be given to any
provisional application, the filing of an information
disclosure statement in a provisional application is
unnecessary and will not be permitted. Therefore,
paragraph (b) of section 1.51 would make it clear that the
Office will not accept an information disclosure statement
in a provisional application. Any information disclosure
statements filed in a provisional application would either
be returned or disposed of at the convenience of the Office.
Section 1.53 would have the title and paragraph (a) revised
to refer to application number, rather than application
serial number. The term "application number" is found in
current section 1.5(a).
A new paragraph (b)(2) would be added to section 1.53
setting forth the requirements for obtaining a filing date
for a provisional application. Existing paragraph (b) would
be redesignated as paragraph (b)(1) and would be amended to:
(1) refer to section 1.17(i) rather than 1.17(i)(1) to
conform to the proposed change therein; (2) delete the
reference to section 1.60 which is proposed to be removed;
and (3) clarify that continuations, divisions and
continuations-in-part may be filed under either section 1.53
or 1.62. Paragraph (b)(2) would state that a filing date
would be accorded to a provisional application as of the
date the written description, any necessary drawings and the
names of all inventors are filed in the Office. The filing
date requirements for a provisional application set forth in
new paragraph (b)(2) parallel the existing requirements set
forth in current paragraph (b), except that no claim would
be required. In order to keep the cost of processing
provisional applications down and to reduce the handling of
the provisional applications, amendments, other than those
required to make the provisional application comply with
applicable regulations, would not be permitted after the
filing date of the provisional application.
New section 1.53(b)(2)(i) would require all provisional
applications to be filed with a cover sheet identifying the
application as a provisional application. The paragraph
would also indicate that the Office will treat an
application as having been filed under paragraph (b)(1),
unless the application is identified as a provisional
application. This proposal is similar to the current
requirement in section 1.62 that the application include a
specific request for an application under section 1.62. The
cover sheet with identification that a provisional
application is intended should greatly assist the
Correspondence and Mail Division in distinguishing
provisional applications from other types of applications. A
provisional application, which is identified as such, but
which does not have a complete cover sheet as required by
section 1.51(a)(2)(i) would be treated as a provisional
application. The complete cover sheet and a surcharge would
be required to be submitted at a later date.
Section 1.53(b)(2)(ii) would establish a procedure for
converting an application filed under section 1.53(b)(1) to
a provisional application. The procedure would require the
filing of a petition requesting the conversion and the
$50.00/$25.00 petition fee set forth in section 1.17(q).
Filing of the petition in the application would be required
prior to the payment of the issue fee or prior to 12 months
after its filing date, whichever event is earlier. The
grant of any such petition would not entitle applicant to a
refund of the fees properly paid in the application filed
under section 1.53(b)(1).
Section 1.53(b)(2)(iii) is intended to call attention to the
provisions of S. 2467 and H.R. 5110 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. Attention would be called to the provisions of
the legislation 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) would
specify that the requirements of section 1.821(e), relating
to the filing of a copy of the "Sequence Listing" in
computer readable form, are not applicable to a provisional
application. It is noted that all other sequence
requirements as set forth in sections 1.821 through 1.823
and 1.825 are applicable to a provisional application.
Section 1.53(c) would 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
section 1.17(i), i.e., $130.00, if the application was filed
under section 1.53(b)(1), or by the fee set forth in section
1.17(q), i.e., $50.00/$25.00, if the application was filed
under section 1.53(b)(2). This reflects the current
practice set forth in section 506.02 of the Manual of Patent
Examining Procedure (MPEP) with regard to any request for
review of a refusal to accord a filing date for an
application. The Office would continue its current practice
of refunding the petition fee, if the refusal to accord the
requested filing date is found to have been an Office error.
Current paragraph (d) of section 1.53 would be redesignated
as paragraph (d)(1) and would be amended to delete the
references to the processing and retention fee practice
which would be eliminated by this proposal in view of the
proposed provisional application practice. Under proposed
paragraph (d)(2), the provisional application could be filed
without the basic filing fee (set by S. 2467 and H.R. 5110
as $150.00 for other than a small entity, subject to a
50 percent reduction for small entity) and without the
complete cover sheet required by proposed section
1.51(a)(2). In such a case, the proposed rule provides that
the applicant will be notified and be given a period of time
in which to file the missing fee, and/or cover sheet and to
pay the surcharge set forth in proposed section 1.16(l).
Section 1.53(e)(2) would be added to indicate that a
provisional application would not be given a substantive
examination and would be abandoned no later than twelve (12)
months after its filing date as set forth in S. 2467 and
H.R. 5110.
Section 1.55 would have the reference to 35 U.S.C. 119
replaced with a reference to 35 U.S.C. 119(a)-(d) and would
specify that a provisional application is not entitled to
the right of foreign priority under proposed
35 U.S.C. 119(a)-(d). S. 2467 and H.R. 5110 amend
35 U.S.C. 119 by assigning letters (a), (b), (c) and (d) to
the existing paragraphs of 35 U.S.C. 119. These paragraphs
are directed to claims for foreign priority. In addition,
35 U.S.C. 111 is amended to provide that a provisional
application may not claim or be entitled to the right of
foreign priority of any other application under
35 U.S.C. 119. Therefore, provisional applications are not
included in section 1.55. In addition, the reference to
37 CFR 1.17(i)(1) would be replaced by 37 CFR 1.17(i) to be
consistent with the proposed change to section 1.17. No
substantive change is intended by this proposal.
Section 1.59 would delete the reference to the processing
and retention fee which is proposed to be eliminated from
section 1.53(d).
Section 1.60 would be removed and reserved. The procedures
set forth in section 1.60 for filing a continuation or
divisional application are unnecessary in view of the recent
rule change to section 1.6(d) which permits the filing of a
copy of the signed oath or declaration. This is appropriate
since neither the statute nor the rules require a recent
date of execution to appear on the oath or declaration and
the duty of disclosure requirements under section 1.56 would
apply to the continuing application. The issue of a stale
oath or declaration would be eliminated by appropriately
amending the procedures set forth in the Manual of Patent
Examining Procedure.
The Office currently receives a number of petitions
requesting that an application filed under section 1.60 be
accepted even though at the time of filing of the
application, applicant failed to comply with all the
requirements of section 1.60 due to inadvertent error on the
part of the applicant. The deletion of section 1.60 will
help reduce the number of petitions and will simplify the
procedures for filing an application for both the Office and
patent practitioners. Applicants may use the procedures set
forth in section 1.53 to file a continuation or divisional
application under 35 U.S.C. 111(a) by providing the Office
with a copy of the prior application. Failure to submit a
complete copy of the prior application may be corrected by
way of a petition under section 1.182.
Section 1.62 would state that the procedure could be used
for filing a continuation, division or continuation-in-part
of a complete application filed under section 1.53(b)(1) but
not a provisional application under section 1.53(b)(2). The
section would specifically preclude the use of the file
wrapper continuing procedures set forth in section 1.62 for
filing the first complete application under 35 U.S.C. 111(a)
which claims the benefit of an earlier filing date of a
provisional application. In view of the relatively small
filing fee for a provisional application and the fact that
the provisional application will not be examined, Office
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 Office. It would be burdensome for
the Office to retrieve these provisional applications so
that an applicant could use the procedures set forth in
section 1.62. Furthermore, since claims and an oath or
declaration are not required in a provisional application
and the first complete application would most likely contain
additional subject matter not disclosed in the provisional
application, the procedures set forth in section 1.53 for
filing an application will meet applicants' needs.
Reference to 37 CFR 1.17(i)(1) in section 1.62(e) would be
replaced by 37 CFR 1.17(i) to be consistent with the
proposed change to section 1.17. Furthermore, the phrase
"Serial number, filing date" in section 1.62(a) and the term
"application serial number" in section 1.62(e) would be
changed to "application number." The term "application
number" is found in current section 1.5(a).
Section 1.63(a) would have the reference to section
1.51(a)(2) replaced with a reference to section
1.51(a)(1)(ii) in order to conform with the proposed changes
in section 1.51.
Section 1.67(b) would have the reference to section 1.53(d)
replaced with a reference to section 1.53(d)(1) in order to
conform with the proposed changes in section 1.53.
Furthermore, the references to sections 1.53(b) and 1.118
would be deleted to make clear that the new matter exclusion
applies to all applications including those filed under
section 1.62.
Section 1.78(a)(1) and (a)(2) would specifically preclude a
provisional application from claiming the benefit of an
earlier filing date of a prior copending application filed
in the United States under section 1.53(b)(1) or 1.62.
S. 2467 and H.R. 5110 amend 35 U.S.C. 111 to provide that a
provisional application is not entitled to the benefit of an
earlier filing date in the United States under
35 U.S.C. 120, 121 or 365(c). Furthermore, the reference in
section 1.78(a)(1) to the processing and retention fee
required in existing section 1.53(d) would be deleted. The
use of serial number and filing date in section 1.78(a)(2)
as an identifier for a prior application would be eliminated
to avoid any confusion as to whether an application
identified by its serial number and filing date is an
application filed under proposed section 1.53(b)(1) or 1.62
or a design application since there is a different series
code assigned to each of these types of applications.
In addition, new subparagraphs (a)(3) and (a)(4) would be
added to section 1.78 to set forth the procedures for
claiming the benefit of an earlier filing date based on a
prior filed copending provisional application. The later
filed application must be an application other than for a
design patent and must be copending with the provisional
application, which will be abandoned by operation of law no
later than 12 months after filing. There must be a common
inventor named in both the prior provisional application and
the later filed application. The prior provisional
application must be complete as set forth in proposed
section 1.51(a)(2), or entitled to a filing date as set
forth in proposed section 1.53(b)(2) and include the basic
filing fee. Newly added subparagraphs (a)(3) and (a)(4)
parallel the existing requirements set forth in
subparagraphs (a)(1) and (a)(2) for other than a provisional
application.
Section 1.83 would have current paragraph (a) redesignated
as subparagraph (a)(1) and would clarify that this paragraph
relates to the content of the drawings in applications other
than provisional applications. A new subparagraph (a)(2)
would set forth the required content of the drawings filed
in a provisional application. Since claims would not be
required in a provisional application, the drawings filed in
a provisional application would be required to show every
feature of the invention disclosed in the description,
rather than specified in the claims as in subparagraph
(a)(1), where necessary to understand the subject matter of
the invention. In addition, the reference to paragraph (a)
in section 1.83(c) would be replaced by a reference to
paragraph (a)(1).
Section 1.97(d) would have the reference to section
1.17(i)(1) replaced with a reference to section 1.17(i) to
be consistent with the proposed change to section 1.17. No
substantive change is intended by this proposal.
Section 1.101(a) would indicate that provisional
applications filed under section 1.53(b)(2) would not be
examined.
Section 1.102(d) would have the reference to section
1.17(i)(2) replaced with a reference to section 1.17(i) to
be consistent with the proposed change to section 1.17. No
substantive change is intended by this proposal.
Section 1.103(a) would have the reference to section
1.17(i)(1) replaced with a reference to section 1.17(i) to
be consistent with the proposed change to section 1.17. No
substantive change is intended by this proposal.
Section 1.129 would be added to set forth the procedure for
implementing certain transitional provisions contained in
S. 2467 and H.R. 5110. These transitional provisions are
not applicable to any application which is filed on or after
the effective date of 35 U.S.C. 154(a)(2) or to any design
or reissue application. Paragraph (a) of proposed
section 1.129 would provide for limited reexamination in
certain applications pending for 2 years or longer as of the
effective date of 35 U.S.C. 154(a)(2), taking into account
any reference to any earlier application under
35 U.S.C. 120, 121 or 365(c). Under the proposed procedure,
an applicant would be entitled to have a first submission
entered and considered on the merits after final rejection
if (1) the submission is filed prior to or simultaneously
with the filing of a notice of appeal and prior to
abandonment of the application and (2) the $730.00 fee set
forth in proposed section 1.17(r) is paid within one month
of any written notification from the Office refusing entry
of the first submission and prior to abandonment of the
application. If applicant complies with the requirements of
the proposed rule, the finality of the previous rejection
would be withdrawn and the submission would be entered and
considered on the merits to the extent that the submission
would have been considered if made prior to final rejection.
The subsequent Office action could be made final under
existing Office practice. 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. Paragraph (a) would also define
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 $730.00 fee required
in proposed section 1.17(r), any information disclosure
statement previously refused consideration in the
application because of applicant's failure to provide the
certification under section 1.97(e) or to pay the fee set
forth in section 1.17(p) or which is filed as part of either
the first or second submission would be treated as though it
had been filed within one of the time periods set forth in
section 1.97(b) and would be considered without the petition
and petition fee required in section 1.97(d), if it complies
with the requirements of section 1.98.
Paragraph (b) of proposed section 1.129 would provide for
examination of more than one independent and distinct
invention in certain applications pending for 3 years or
longer as of the effective date of 35 U.S.C. 154(a)(2),
taking into account any reference to any earlier application
under 35 U.S.C. 120, 121 or 365(c). Under the proposed
procedure, a requirement for restriction or for the filing
of divisional applications would only be made or maintained
in the application after the effective date of
35 U.S.C. 154(a)(2) 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) more than two months prior to
the effective date; (2) the examiner has not issued any
Office action in the application due to actions by the
applicant; or (3) the required fee for examination of each
additional invention was not paid. 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
as a result of proposed section 1.129(b), applicant will be
notified and given a one month time period to pay the
$730.00 fee set forth in proposed section 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one. The fee set forth in proposed
section 1.17(s) would not be subject to the 50 percent
reduction for a small entity. The additional inventions for
which the required fee under section 1.17(s) has not been
paid would be withdrawn from consideration under
section 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 1.139 would be added to set forth the procedures for
reviving a provisional application where the delay was
unavoidable or unintentional. Paragraph (a) would address
the revival of a provisional application where the delay was
unavoidable and paragraph (b) would address 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
filing. 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 this new rule parallel the existing
requirements set forth in section 1.137.
Sections 1.177, 1.312(b), 1.313(a), 1.314 and 1.666 would
have the reference to section 1.17(i)(1) replaced with a
reference to section 1.17(i) to be consistent with the
proposed change to section 1.17. No substantive change is
intended by these proposals.
Section 1.701 would be added to provide for the extension of
patent term where the issuance of a patent on an application
filed after the implementation date of the 20-year patent
term provisions of S. 2467 and H.R. 5110, other than for
designs, was delayed due to certain causes of prosecution
delay. By virtue of 35 U.S.C. 173, the term of a patent and
patent term extension under proposed 35 U.S.C. 154 do not
apply to patents for designs.
The provisions for patent term extension under proposed
section 1.701 are separate from and in addition to the
patent term extension provisions of 35 U.S.C. 156. The
patent term extension provisions of S. 2467 and H.R. 5110
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 proposed
section 1.701 from precluding a term extension under
35 U.S.C. 156, S. 2467 and H.R. 5110 amend
35 U.S.C. 156(a)(2) to provide that the term has never been
extended under 35 U.S.C. 156(e)(1).
Under proposed 35 U.S.C. 154(b)(1), if the issuance of a
patent is delayed due to proceedings under 35 U.S.C. 135(a)
and/or the application is placed under a secrecy order under
35 U.S.C. 181, the term of a patent could be extended for
the period of delay up to five years. Proceedings under
35 U.S.C. 135(a) include any appeal to federal court. Under
proposed 35 U.S.C. 154(b)(2), 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 was issued pursuant to a decision reversing an
adverse determination of patentability and if the patent is
not 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, the
term of the patent could be extended for the period of delay
up to five years. Pursuant to 35 U.S.C. 154(b)(4), as
contained in S. 2467 and H.R. 5110, the term of a patent
could only be extended under 35 U.S.C. 154(b)(1) and (b)(2)
for a maximum of five years regardless of whether there were
delays due to more than one of the reasons covered under
35 U.S.C. 154(b)(1) and (2). Proposed subparagraph (c)(1)
of section 1.701 sets forth the method for calculating the
period of delay where the delay was a result of proceedings
under 35 U.S.C. 135(a). Proposed subparagraph (c)(2) sets
forth the method for calculating the period of delay where
the delay was a result of the application being placed under
a secrecy order. Proposed subparagraph (c)(3) sets forth
the method for calculating the period of delay where the
delay was a result of appellate review. Pursuant to
proposed section 1.701(d)(1), the period of delay set forth
in subparagraph (c)(3) shall be reduced by any time
calculated under subparagraph (c)(3) before the expiration
of three years from the filing date of the first national
patent application presented for examination. The filing
date for the purpose of section 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 filing date
for the purpose of section 1.701(d)(1) would be the date on
which applicant has complied with the requirements of
section 1.494(b), or section 1.495(b) if applicable.
Pursuant to proposed section 1.701(d)(2), the period of
delay set forth in subparagraph (c)(3) shall also be reduced
by any time, as determined by the Commissioner, during which
the applicant did not act with due diligence. The standard
for determining due diligence is whether the applicant
exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a
person during the pendency period of the application.
Examples of what may constitute lack of due diligence for
this purpose include 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. Applicants need not
file a request for the extension of patent term under
proposed section 1.701. The extension of patent term is
automatic by operation of law. It is currently anticipated
that applicant would 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 any determination as
to the length of patent term extension would be by way of
petition under section 1.181.
Section 3.21 would eliminate the use of serial number and
filing date as an identifier for national patent
applications in assignment documents. This proposal would
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 proposed
section 1.53(b)(1) 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. If an
assignment was executed after the filing of the national
application, the assignment would be required to identify
the application by the application number, consisting of the
series code and serial number, e.g., 07/123,456 (for
applications filed under proposed section 1.53(b)(1) or
1.62), 29/123,456 (for design applications) or 59/123,456
(for provisional applications filed under proposed
section 1.53(b)(2)). The series code would be required
since it would clearly identify the application to which the
assignment document is directed.
Section 3.21 would be further clarified to indicate that
existing requirements relating to assignments executed
before the filing of the application refer to applications
other than provisional applications. Section 3.21 would be
further amended to specify the requirements for identifying
a provisional application in an assignment executed before
the filing of the provisional application. The assignment
would be required to identify the provisional application by
name of each inventor and the title of the invention. The
date of execution of the provisional application would not
be required since a provisional application need not be
executed by the inventors.
Section 3.81 would have the reference to section 1.17(i)(1)
replaced with a reference to section 1.17(i) to be
consistent with the proposed change to section 1.17. No
substantive change is intended by this proposal.
Other Considerations
The proposed rule changes are in conformity with the
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601
et seq., Executive Order 12612, and the Paperwork Reduction
Act of 1980, 44 U.S.C. 3501 et seq. This proposed rule has
been determined to be not significant for the purposes of
E.O. 12866.
The Assistant General Counsel for Legislation and Regulation
of the Department of Commerce has certified to the Chief
Counsel for Advocacy, Small Business Administration, that
the proposed rule changes will not have a significant
economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The
principal impact of these changes is to provide a procedure
for domestic applicants to quickly and inexpensively file a
provisional application. The filing date of the provisional
application will not be used to measure the term of a patent
granted on an application which claims the earlier filing
date of the provisional application.
The Patent and Trademark Office has also determined that
this notice has no Federalism implications affecting the
relationship between the National Government and the States
as outlined in E.O. 12612.
These proposed rules contain collections of information
subject to the requirements of the Paperwork Reduction Act
(Act). The provisional application has been approved by the
Office of Management and Budget under control numbers
0651-0031 and 0651-0032. The cover sheet is necessary to
expedite the processing of a provisional application and
improve quality. Public reporting burden for the collection
of information on the cover sheet is estimated to average 12
minutes per response, including the time for reviewing
instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing
the collection of information. Send comments regarding this
burden estimate or any other aspect of this collection of
information, including suggestions for reducing the burden
to the Office of Assistance Quality and Enhancement
Division, Patent and Trademark Office, Washington, D.C.
20231, and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, Washington, D.C.
20503.
Notice is hereby given that pursuant to the authority
granted to the Commissioner of Patents and Trademarks by
35 U.S.C. 6, the Patent and Trademark Office proposes to
amend Title 37 of the Code of Federal Regulations as set
forth below.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record
keeping requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and
patents, Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR Parts 1
and 3 are proposed to be amended as follows, with removals
(other than section 1.60 which is proposed to be removed and
reserved) indicated by brackets ([]) and additions by arrows
(><):
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue
to read as follows:
Authority: 35 U.S.C. 6 unless otherwise noted.
2. Section 1.1 is proposed to be amended by adding new
paragraph (i) to read as follows:
1.1 All communications to be addressed to Commissioner of
Patents and Trademarks.
* * * * *
>(i) The filing of all provisional applications and any
communications relating thereto should be additionally
marked "Box Provisional Patent Application."<
* * * * *
3. Section 1.9 is proposed to be amended by revising
paragraph (a) to read as follows:
1.9 Definitions.
(a)>(1)< A national application as used in this chapter
means a U.S. national application for patent which was
either filed in the Office under 35 U.S.C. 111 or which
resulted from an international application after compliance
with 35 U.S.C. 371.
>(a)(2) A provisional application as used in this
chapter means a U.S. national application for patent filed
in the Office under 35 U.S.C. 111(b).<
* * * * *
4. Section 1.12 is proposed to be amended by revising
paragraph (c) to read as follows:
1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking
copies of any assignment records of any pending or abandoned
patent application preserved in secrecy under 1.14, or any
information with respect thereto, must
(1) Be in the form of a petition accompanied by the
petition fee set forth in 1.17(i)[(1)], or
(2) Include written authority granting access to the
member of the public to the particular assignment records
from the applicant or applicant's assignee or attorney or
agent of record.
* * * * *
5. Section 1.14 is proposed to be amended by revising
paragraph (e) to read as follows:
1.14 Patent applications preserved in secrecy.
* * * * *
(e) Any request by a member of the public seeking
access to, or copies of, any pending or abandoned
application preserved in secrecy pursuant to paragraphs (a)
and (b) of this section, or any papers relating thereto,
must
(1) Be in the form of a petition and be accompanied by
the petition fee set forth in 1.17(i)[(1)], or
(2) Include written authority granting access to the
member of the public in that particular application from
the
applicant or the applicant's assignee or attorney or agent
of record.
* * * * *
6. Section 1.16 is proposed to be amended by revising
paragraphs (a)-(g) and by adding new paragraphs (k) and (l)
to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original
patent, except >provisional,< design or plant >applications<
[cases]:
By a small entity ( 1.9(f))...................$365.00
By other than a small entity...................730.00
(b) In addition to the basic filing fee in an original
application, >except provisional applications,< for filing
or later presentation of each independent claim in excess of
3:
By a small entity ( 1.9(f))....................38.00
By other than a small entity....................76.00
(c) In addition to the basic filing fee in an original
application, >except provisional applications,< for filing
or later presentation of each claim (whether independent or
dependent) in excess of 20 (Note that 1.75(c) indicates
how multiple dependent claims are considered for fee
calculation purposes.):
By a small entity ( 1.9(f)).................... 11.00
By other than a small entity ................... 22.00
(d) In addition to the basic filing fee in an original
application, >except provisional applications,< if the
application contains, or is amended to contain, a multiple
dependent claim(s), per application:
By a small entity ( 1.9(f)).................... 120.00
By other than a small entity.................... 240.00
(If the additional fees required by paragraphs (b), (c),
and (d) of this section are not paid on filing or on later
presentation of the claims for which the additional fees are
due, they must be paid or the claims canceled by amendment,
prior to the expiration of the time period set for response
by the Office in any notice of fee deficiency.)
(e) Surcharge for filing the basic filing fee or oath or
declaration on a date later than the filing date of the
application>, except provisional applications<:
By a small entity ( 1.9(f))......................65.00
By other than a small entity.....................130.00
(f) >Basic fee< for filing each design application:
By a small entity ( 1.9(f)).....................150.00
By other than a small entity.....................300.00
(g) Basic fee for filing each plant application>, except
provisional applications,<:
By a small entity ( 1.9(f)).....................245.00
By other than a small entity.....................490.00
* * * * *
>(k) Basic fee for filing each provisional application:
By a small entity ( 1.9(f))......................75.00
By other than a small entity.....................150.00
(l) Surcharge for filing the basic filing fee or cover sheet
( 1.51(a)(2)(i)) on a date later than the filing date of
the provisional application:
By a small entity ( 1.9(f))......................25.00
By other than a small entity ....................50.00<
* * * * *
7. Section 1.17 is proposed to be amended by revising
paragraphs (h) and (i)(1), by removing paragraph (i)(2), and
by adding new paragraphs (q), (r) and (s) to read as
follows:
1.17 Patent application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under a
section [of this part] listed below which refers to this
paragraph.............................................130.00
1.47 - for filing by other than all the inventors or a
person not the inventor.
1.48 - for correction of inventorship>, except in
provisional applications<.
1.182 - for decision on questions not specifically
provided for.
1.183 - to suspend the rules.
1.295 - for review of refusal to publish a statutory
invention registration.
1.377 - for review of decision refusing to accept and
record payment of a maintenance fee filed prior to
expiration of patent.
1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in
expired patent.
1.644(e) - for petition in an interference.
1.644(f) - for request for reconsideration of a decision
on petition in an interference.
1.666(c) - for late filing of interference settlement
agreement.
5.12, 5.13 & 5.14 - for expedited handling of a foreign
filing license.
5.15 - for changing the scope of a license.
5.25 - for retroactive license.
(i)[(1)] For filing a petition to the Commissioner under a
section [of this part] listed below which refers to this
paragraph.............................................130.00
1.12 - for access to an assignment record.
1.14 - for access to an application.
1.53 - to accord a filing date>, except in provisional
applications<.
1.55 - for entry of late priority papers.
[ 1.60 - to accord a filing date.]
1.62 - to accord a filing date.
1.97(d)- to consider an information disclosure statement.
> 1.102 - to make application special.<
1.103 - to suspend action in application.
1.177 - for divisional reissues to issue separately.
1.312 - for amendment after payment of issue fee.
1.313 - to withdraw an application from issue.
1.314 - to defer issuance of a patent.
1.666(b) - for access to interference settlement
agreement.
3.81 - for patent to issue to assignee, assignment
submitted after payment of the issue fee.
[(2) For filing a petition to the Commissioner under 1.102
of this part to make application special.............130.00]
* * * * *
>(q) For filing a petition to the Commissioner under a
section listed below which refers to this paragraph:
By a small entity ( 1.9(f))......................25.00
By other than a small entity......................50.00
1.48 - for correction of inventorship in a provisional
application.
1.53 - to accord a provisional application a filing date
or to convert an application filed under 1.53(b)(1) to a
provisional application.
(r) For filing a submission after final rejection under
1.129(a)...........................................730.00
(s) For each additional invention requested to be examined
under 1.129(b).....................................730.00<
8. Section 1.21 is proposed to be amended by removing
paragraph (l), by revising paragraph (n), and republishing
the introductory text to read as follows:
1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the
following fees for the services indicated:
* * * * *
(l) >[Reserved]< [For processing and retaining any
application abandoned pursuant to 1.53(d) unless the
required basic filing fee has been paid.............$130.00]
* * * * *
(n) For handling an incomplete or improper application under
1.53(c)[, 1.60] or 1.62.....................$130.00
* * * * *
9. Section 1.28 is proposed to be amended by revising
paragraph (a) to read as follows:
1.28 Effect on fees of failure to establish status, or
change status, as a small entity.
(a) The failure to establish status as a small entity
( 1.9(f) and 1.27 of this part) in any application or
patent prior to paying, or at the time of paying, any fee
precludes payment of the fee in the amount established for
small entities. A refund pursuant to 1.26 of this part,
based on establishment of small entity status, of a portion
of fees timely paid in full prior to establishing status as
a small entity may only be obtained if a verified statement
under 1.27 and a request for a refund of the excess amount
are filed within two months of the date of the timely
payment of the full fee. The two-month time period is not
extendable under 1.136. Status as a small entity is
waived for any fee by the failure to establish the status
prior to paying, at the time of paying, or within two months
of the date of payment of, the fee. Status as a small
entity must be specifically established [by a verified
statement filed] in each application or patent in which the
status is available and desired[, except those applications
filed under 1.60 or 1.62 of this part where the status
as a small entity has been established in a parent
application and is still proper]. >Status as a small entity
in one application or patent does not affect any other
application or patent, including applications or patents
which are directly or indirectly dependent upon the
application or patent in which the status has been
established. Applications filed as continuations, divisions
or continuations-in-part of a parent application must
include a reference to a verified statement in the parent
application or include a copy of the verified statement
filed in the parent application if status as a small entity
is still proper and desired.< Once status as a small entity
has been established in an application or patent, the status
remains in that application or patent without the filing of
a further verified statement pursuant to 1.27 of this part
unless the Office is notified of a change in status. [Status
as a small entity in one application or patent does not
affect any other application or patent, including
applications or patents which are directly or indirectly
dependent upon the application or patent in which the status
has been established, except those filed under 1.60 or
1.62 of this part. Applications filed under 1.60
or 1.62 of this part must include a reference to a
verified statement in a parent application if status as a
small entity is still proper and desired.]
* * * * *
10. Section 1.45 paragraph (c) is proposed to be revised to
read as follows:
1.45 Joint inventors.
* * * * *
(c) If multiple inventors are named in an application,
>other than a provisional application under 1.53(b)(2),<
each named inventor must have made a contribution,
individually or jointly, to the subject matter of at least
one claim of the application and the application will be
considered to be a joint application under 35 U.S.C. 116.
>If multiple inventors are named in a provisional
application, each named inventor must have made a
contribution, individually or jointly, to the subject matter
disclosed in the provisional application and the provisional
application will be considered to be a joint application
under 35 U.S.C. 116.<
11. Section 1.48 is proposed to be revised to read as
follows:
1.48 Correction of inventorship.
(a) If the correct inventor or inventors are not named in
an application for patent >,other than a provisional
application,< through error without any deceptive intention
on the part of the actual inventor or inventors, the
application may be amended to name only the actual inventor
or inventors. Such amendment must be diligently made and
must be accompanied by:
(1) a petition including 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;
(2) an oath or declaration by each actual inventor or
inventors as required by 1.63;
(3) the fee set forth in 1.17(h); and
(4) the written consent of any assignee. When the
application is involved in an interference, the petition
shall comply with the requirements of this section and shall
be accompanied by a motion under 1.634.
(b) If the correct inventors are named in the application
>,other than a provisional application,< when filed and the
prosecution of the application results in the amendment or
cancellation of claims so that less than all of the
originally named inventors are the actual inventors of the
invention being claimed in the application, an amendment
shall be filed deleting the names of the person or persons
who are not inventors of the invention being claimed. The
amendment must be diligently made and shall be accompanied
by:
(1) A petition including a statement identifying each
named inventor who is being deleted and acknowledging that
the inventor's invention is no longer being claimed in the
application, and
(2) The fee set forth in 1.17(h).
(c) If an application >other than a provisional
application< discloses unclaimed subject matter by an
inventor or inventors not named in the application, the
application may be amended pursuant to paragraph (a) of this
section to add claims to the subject matter and name the
correct inventors for the application.
>(d) If the name or names of an inventor or inventors were
omitted in a provisional application for patent filed under
1.53(b)(2) through error without any deceptive intention
on the part of the actual inventor or inventors, the
provisional application may be amended to add the name or
names of the actual inventor or inventors. Such amendment
must be accompanied by:
(1) a petition including a statement that the error
occurred without deceptive intention on the part of the
actual inventor or inventors, which statement must be a
verified statement if made by a person not registered to
practice before the Patent and Trademark Office; and
(2) the fee set forth in 1.17(q).<
12. Section 1.51 is proposed to be amended by revising
paragraphs (a) and (b) to read as follows:
1.51 General requisites of an application.
(a) Applications for patents must be made to the
Commissioner of Patents and Trademarks.
>(1)< A complete application >filed under 1.53(b)(1)<
comprises:
>(i)<[(1)] A specification, including a claim or
claims, see 1.71 to 1.77[.]>;<
>(ii)<[(2)] An oath or declaration, see 1.63 and
1.68[.]>;<
>(iii)<[(3)] Drawings, when necessary, see 1.81 to
>1.85<[1.88.]>; and<
>(iv)<[(4)] The prescribed filing fee, see 1.16.
>(2) A complete provisional application filed under
1.53(b)(2) comprises:
(i) A cover sheet identifying:
(A) The application as a provisional application,
(B) The name or names of the inventor or inventors,
(see 1.41),
(C) The title of the invention,
(D) The name and registration number of the attorney or
agent (if applicable),
(E) The docket number used by the person filing the
application to identify the application (if applicable), and
(F) The correspondence address;
(ii) A specification as prescribed by 35 U.S.C. 112,
first paragraph, see 1.71;
(iii) Drawings, when necessary, see 1.81 to 1.85; and
(iv) The prescribed filing fee, see 1.16.<
(b) Applicants are encouraged to file an information
disclosure statement >in national applications other than
provisional applications.< See 1.97 and 1.98. >No
information disclosure statement may be filed in a
provisional application filed under 1.53(b)(2).<
* * * * *
13. Section 1.53 paragraphs (a) - (e) are proposed to be
revised to read as follows:
1.53 [Serial] >Application< number, filing date, and
completion of application.
(a) Any application for a patent received in the Patent
and Trademark Office will be assigned >an application< [a
serial] number for identification purposes.
(b)>(1)< The filing date of an application for patent
filed under this section>, except for a provisional
application,< is the date on which: [(1)] a specification
containing a description pursuant to 1.71 and at least one
claim pursuant to 1.75; and [(2)] any drawing required by
1.81(a), are filed in the Patent and Trademark Office in
the name of the actual inventor or inventors as required by
1.41. No new matter may be introduced into an application
after its filing date ( 1.118). If all the names of the
actual inventor or inventors are not supplied when the
specification and any required drawing are filed, the
application will not be given a filing date earlier than the
date upon which the names are supplied unless a petition
with the fee set forth in 1.17(i)[(1)] is filed which sets
forth the reasons the delay in supplying the names should be
excused. A continuation>,< [or] divisional >or
continuation-in-part< application (filed under the
conditions specified in 35 U.S.C. 120 or 121 and 1.78(a))
may be filed >under< [pursuant to] this section[, 1.60] or
1.62. [A continuation-in-part application may be filed
pursuant to this section or 1.62.]
>(2) The filing date of a provisional application is
the date on which: a specification as prescribed by
35 U.S.C. 112, first paragraph; and any drawing required by
1.81(a), are filed in the Patent and Trademark Office in
the name of the actual inventor or inventors as required by
1.41. No amendment, other than to make the provisional
application comply with all applicable regulations, may be
made to the provisional application after the filing date of
the provisional application. If all the names of the actual
inventor or inventors are not supplied when the
specification and any required drawing are filed, the
provisional application will not be given a filing date
earlier than the date upon which the names are supplied
unless a petition with the fee set forth in 1.17(q) is
filed which sets forth the reasons the delay in supplying
the names should be excused.
(i) A provisional application must also include a
cover sheet identifying the application as a provisional
application. Otherwise, the application will be treated as
an application filed under 1.53(b)(1).
(ii) An application for patent filed under
1.53(b)(1) may be treated as a provisional application and
be accorded the original filing date provided that a
petition requesting the conversion, with the fee set forth
in 1.17(q), is filed prior to the earlier of either the
payment of the issue fee or the expiration of 12 months
after the filing date of the provisional application. The
grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the
application filed under 1.53(b)(1).
(iii) A provisional application shall not be entitled
to the right of priority under 1.55 or 35 U.S.C. 119 or
365(a) or to the benefit of an earlier filing date under
1.78 or 35 U.S.C. 120, 121 or 365(c) of any other
application. No claim for priority under 1.78(a)(3) may
be made in a design application based on a provisional
application. No request under 1.293 for a statutory
invention registration may be filed in a provisional
application. The requirements of 1.821(e) regarding
sequence listings in computer readable form are not
applicable to a provisional application.<
(c) If any application is filed without the specification,
drawing or name, or names, of the actual inventor or
inventors required by paragraph (b)>(1) or (b)(2)< of this
section, applicant will be so notified and given a time
period within which to submit the omitted specification,
drawing, name, or names, of the actual inventor, or
inventors, in order to obtain a filing date as of the date
of filing of such submission. A copy of the "Notice of
Incomplete Application" form notifying the applicant should
accompany any response thereto submitted to the Office. If
the omission is not corrected within the time period set,
the application will be returned or otherwise disposed of;
the fee, if submitted, will be refunded less the handling
fee set forth in 1.21(n). >Any request for review of a
refusal to accord an application a filing date must be 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).<
(d)>(1)< If an application which has been accorded a
filing date pursuant to paragraph (b)>(1)< of this section
does not include the appropriate filing fee or an oath or
declaration by the applicant, applicant will be so notified,
if a correspondence address has been provided and given a
period of time within which to file the fee, oath, or
declaration and to pay the surcharge as set forth in
1.16(e) in order to prevent abandonment of the
application. A copy of the "Notice to File Missing Parts"
form mailed to applicant should accompany any response
thereto submitted to the Office. If the required filing fee
is not timely paid, [or if the processing and retention fee
set forth in 1.21(l) is not paid within one year of the
date of mailing of the notification required by this
paragraph,] the application will be disposed of. No copies
will be provided or certified by the Office of an
application which has been disposed of or in which [neither]
the required basic filing fee [nor the processing and
retention fee] has >not< been paid. The notification
pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section.
If no correspondence address is included in the application,
applicant has two months from the filing date to file the
basic filing fee, oath or declaration and to pay the
surcharge as set forth in 1.16(e) in order to prevent
abandonment of the application[; or, if no basic filing fee
has been paid, one year from the filing date to pay the
processing and retention fee set forth in 1.21(l) to
prevent disposal of the application].
>(2) If a provisional application which has been
accorded a filing date pursuant to paragraph (b)(2) of this
section 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) in
order to prevent abandonment of the application. A copy of
the "Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, the
application will be disposed of. No copies will be provided
or certified by the Office of an application which has been
disposed of or in which the required basic filing fee has
not been paid. The notification pursuant to this paragraph
may be made simultaneously with any notification pursuant to
paragraph (c) of this section. If no correspondence address
is included in the application, applicant has two months
from the filing date to file the basic filing fee, cover
sheet and to pay the surcharge as set forth in 1.16(l) in
order to prevent abandonment of the application.<
(e)>(1)< An application for a patent >filed under
paragraph (b)(1) of this section< will not be placed upon
the files for examination until all its required parts,
complying with the rules relating thereto, are received,
except that certain minor informalities may be waived
subject to subsequent correction whenever required.
>(2) A provisional application for a patent filed under
paragraph (b)(2) of this section will not be placed upon the
files for examination and will become abandoned no later
than twelve months after its filing date pursuant to
35 U.S.C. 111(b)(1).<
* * * * *
14. Section 1.55 is proposed to be revised to read as
follows:
1.55 Claim for foreign priority.
(a) An applicant >in an application other than a
provisional application< may claim the benefit of the filing
date of a prior foreign application under the conditions
specified in 35 U.S.C. 119>(a) - (d)< and 172. The claim to
priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to
in the oath or declaration as required by 1.63. The claim
for priority and the certified copy of the foreign
application specified in [the second paragraph of]
35 U.S.C. 119>(b)< must be filed:
(1) in the case of an interference ( 1.630);
(2) when necessary to overcome the date of a
reference relied upon by the examiner;
(3) when specifically required by the examiner;
and
(4) in all other cases, before the patent is
granted. If the claim for priority or the certified copy of
the foreign application is filed after the date the issue
fee is paid, it must be accompanied by a petition requesting
entry and by the fee set forth in 1.17(i)[(1)]. If the
certified copy filed is not in the English language, a
translation need not be filed except in the case of
interference; or when necessary to overcome the date of a
reference relied upon by the examiner; or when specifically
required by the examiner, in which event an English language
translation must be filed together with a statement that the
translation of the certified copy is accurate. The
statement must be a verified statement if made by a person
not registered to practice before the Patent and Trademark
Office.
(b) An applicant may under certain circumstances claim
priority on the basis of an application for an inventor's
certificate in a country granting both inventor's
certificates and patents. When an applicant wishes to claim
the right of priority as to a claim or claims of the
application on the basis of an application for an inventor's
certificate in such a country under 35 U.S.C. 119>(d)<,
[last paragraph (as amended July 28, 1972),] the applicant
or his or her attorney or agent, when submitting a claim for
such right as specified in paragraph (a) of this section,
shall include an affidavit or declaration including a
specific statement that, upon an investigation, he or she
has satisfied himself or herself that to the best of his or
her knowledge the applicant, when filing his or her
application for the inventor's certificate, had the option
to file an application either for a patent or an inventor's
certificate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.
15. Section 1.59 is proposed to be revised to read as
follows:
1.59 Papers of application with filing date not to be
returned.
Papers in an application which has received a filing
date pursuant to 1.53 will not be returned for any purpose
whatever. If applicants have not preserved copies of the
papers, the Office will furnish copies at the usual cost of
any application in which [either] the required basic filing
fee ( 1.16) [or the processing and retention fee
1.21(l))] has been paid. See 1.618 for return of
unauthorized and improper papers in interferences.
16. Section 1.60 is proposed to be removed and reserved.
1.60 >[Reserved]< [Continuation or divisional application
for invention disclosed in a prior application.]
17. Section 1.62 is proposed to be amended by revising
paragraphs (a) and (e) to read as follows:
1.62 File wrapper continuing procedure.
(a) A continuation, continuation-in-part, or divisional
application, which uses the specification, drawings and oath
or declaration from a prior complete application
[( 1.51(a))]>as defined by 1.51(a)(1) (not a prior
complete provisional application as defined by
1.51(a)(2)), and< which is to be abandoned, may be filed
>under this section< before the payment of the issue fee,
abandonment of, or termination of proceedings on the prior
application. The filing date of an application filed under
this section is the date on which a request is filed for an
application under this section including identification of
the [Serial Number, filing date,]>application number< and
applicant's name of the prior complete application. If the
continuation, continuation-in-part, or divisional
application is filed by less than all the inventors named in
the prior application a statement must accompany the
application when filed requesting deletion of the names of
the person or persons who are not inventors of the invention
being claimed in the continuation, continuation-in-part, or
divisional application.
* * * * *
(e) An application filed under this section will utilize the
file wrapper and contents of the prior application to
constitute the new continuation, continuation-in-part, or
divisional application but will be assigned a new
application [serial] number. Changes to the prior
application must be made in the form of an amendment to the
prior application as it exists at the time of filing the
application under this section. No copy of the prior
application or new specification is required. The filing of
such a copy or specification will be considered improper,
and a filing date as of the date of deposit of the request
for an application under this section will not be granted to
the application unless a petition with the fee set forth in
1.17(i)[(1)] is filed with instructions to cancel the copy
or specification.
* * * * *
18. Section 1.63 is proposed to be amended by revising
paragraph (a) to read as follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under
1.51(a)[(2)]>(1)(ii)< as a part of an application must:
(1) Be executed in accordance with either 1.66 or 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor and the residence and country of
citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor
of the invention claimed.
* * * * *
19. Section 1.67 is proposed to be amended by revising
paragraph (b) to read as follows:
1.67 Supplemental oath or declaration.
* * * * *
(b) A supplemental oath or declaration meeting the
requirements of 1.63 must be filed: (1) When a claim is
presented for matter originally shown or described but not
substantially embraced in the statement of invention or
claims originally presented; and (2) When an oath or
declaration submitted in accordance with 1.53(d)>(1)<
after the filing of the specification and any required
drawings specifically and improperly refers to an amendment
which includes new matter. No new matter may be introduced
into an application after its filing date even if a
supplemental oath or declaration is filed[( 1.53(b);
1.118)]. In proper cases the oath or declaration here
required may be made on information and belief by an
applicant other than inventor.
* * * * *
20. Section 1.78 is proposed to be amended by revising
paragraphs (a)(1) and (a)(2) and by adding new paragraphs
(a)(3) and (a)(4) to read as follows:
1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a)(1) An application >other than a provisional application<
may claim an invention disclosed in a prior filed copending
national application >filed under 1.53(b)(1) or 1.62
(not a provisional application (see paragraph (a)(3) of this
section))< or international application designating the
United States of America. In order for an application to
claim the benefit of a prior filed copending national
application, the prior application must name as an inventor
at least one inventor named in the later filed application
and disclose the named inventor's invention claimed in at
least one claim of the later filed application in the manner
provided by the first paragraph of 35 U.S.C. 112. In
addition, the prior application must be
(i) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in
1.53(b)>(1) or 1.62< and include the basic filing fee
set forth in 1.16[; or]
[(iii) entitled to a filing date as set forth in
1.53(b) and have paid therein the processing and retention
fee set forth in 1.21(l) within the time period set forth
in 1.53(d)].
(2) Any application claiming the benefit of a prior filed
copending national or international application >other than
a provisional application< must contain or be amended to
contain in the first sentence of the specification following
the title a reference to such prior application, identifying
it by application number (consisting of the series code and
serial number)[, or serial number and filing date] or
international application number and international filing
date and indicating the relationship of the applications.
Cross-references to other related applications may be made
when appropriate. (See 1.14(b).)
>(3) An application other than for a design patent may claim
an invention disclosed in a prior filed copending
provisional application filed under 1.53(b)(2). A
provisional application can be pending for no more than
twelve months. In order for an application to claim the
benefit of a prior filed copending provisional application,
the prior provisional application must name as an inventor
at least one inventor named in the later filed application
and disclose the named inventor's invention claimed in at
least one claim of the later filed application in the manner
provided by the first paragraph of 35 U.S.C. 112. In
addition, the prior provisional application must be
(i) complete as set forth in 1.51(a)(2); or
(ii) entitled to a filing date as set forth in
1.53(b)(2) and include the basic filing fee set forth in
1.16(k).
(4) Any application claiming the benefit of a prior filed
copending provisional application must contain or be amended
to contain in the first sentence of the specification
following the title a reference to such prior provisional
application, identifying it as a provisional application,
and including the provisional application number (consisting
of series code and serial number) and indicating the
relationship of the applications.<
* * * * *
21. Section 1.83 is proposed to be amended by revising
paragraphs (a) and (c) to read as follows:
1.83 Content of drawing.
(a)>(1)< The drawing >in an application other than a
provisional application< must show every feature of the
invention specified in the claims. However, conventional
features disclosed in the description and claims, where
their detailed illustration is not essential for a proper
understanding of the invention, should be illustrated in the
drawing in the form of a graphical drawing symbol or a
labeled representation (e.g. a labeled rectangular box).
>(2) The drawing in a provisional application filed
under 1.53(b)(2) must show every feature of the invention
disclosed in the description where necessary to understand
the subject matter of that invention. However, conventional
features disclosed in the description, where their detailed
illustration is not essential for a proper understanding of
the invention, should be illustrated in the drawing in the
form of a graphical drawing symbol or a labeled
representation (e.g. a labeled rectangular box).<
* * * * *
(c) Where the drawings do not comply with the
requirements of paragraphs (a)>(1)< and (b) of this section,
the examiner shall require such additional illustration
within a time period of not less than two months from the
date of the sending of a notice thereof. Such corrections
are subject to the requirements of 1.81(d).
22. Section 1.97 is proposed to be amended by revising
paragraph (d) to read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(d) An information disclosure statement shall be
considered by the Office if filed after the mailing date of
either:
(1) A final action under 1.113 or
(2) A notice of allowance under 1.311,
whichever occurs first, but before payment of the issue fee,
provided the statement is accompanied by:
(i) A certification as specified in paragraph (e) of
this section,
(ii) A petition requesting consideration of the
information disclosure statement, and
(iii) The petition fee set forth in 1.17(i)[(1)].
* * * * *
23. Section 1.101 is proposed to be amended by revising
paragraph (a) to read as follows:
1.101 Order of examination.
(a) Applications filed in the Patent and Trademark
Office and accepted as complete applications>, except for
provisional applications filed under 1.53(b)(2) which are
not examined,< are assigned for examination to the
respective examining groups having the classes of inventions
to which the applications relate. Applications shall be
taken up for examination by the examiner to whom they have
been assigned in the order in which they have been filed
except for those applications in which examination has been
advanced pursuant to 1.102. See 1.496 for order of
examination of International applications in the national
stage.
* * * * *
24. Section 1.102 is proposed to be amended by revising
paragraph (d) to read as follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on
grounds other than those referred to in paragraph (c) of
this section must be accompanied by the petition fee set
forth in 1.17(i)[(2)].
25. Section 1.103 is proposed to be amended by revising
paragraph (a) to read as follows:
1.103 Suspension of action.
(a) Suspension of action by the Office will be granted
for good and sufficient cause and for a reasonable time
specified upon petition by the applicant and, if such cause
is not the fault of the Office, the payment of the fee set
forth in 1.17(i)[(1)]. Action will not be suspended when
a response by the applicant to an Office action is required.
* * * * *
26. A new, undesignated center heading and new section 1.129
are proposed to be added to Subpart B-National Processing
Provisions to read as follows:
>TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination
after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue
or a design patent, that has been pending for at least two
years as of the effective date of 35 U.S.C. 154(a)(2),
taking into account any reference made in such application
to any earlier filed application under 35 U.S.C. 120, 121
and 365(c), is entitled to have a first submission entered
and considered on the merits after final rejection under the
following circumstances: The Office will consider such a
submission, to the extent that it would have been entered
and considered if made prior to final rejection, if the
first submission is filed prior to or simultaneously with
the filing of a notice of appeal and prior to abandonment of
the application and the fee set forth in 1.17(r) is paid
within one month of any written notification from the Office
refusing entry of the first submission and prior to
abandonment of the application. If a subsequent final
rejection is made in the application, applicant is entitled
to have a second submission entered and considered on the
merits after the subsequent final rejection under the
following circumstances: The Office will consider such a
submission, to the extent that it would have been entered
and considered if made prior to final rejection, if the
second submission is filed prior to or simultaneously with
the filing of a notice of appeal of the subsequent final
rejection and prior to abandonment of the application and a
second fee set forth in 1.17(r) is paid within one month
of any written notification from the Office refusing entry
of the second submission and prior to abandonment of the
application. Any submission filed after a final rejection
made in an application subsequent to the fee set forth in
1.17(r) having been twice paid will be treated as set
forth in 1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure
statement, an amendment to the written description, claims
or drawings and a new substantive argument or new evidence
in support of patentability.
(b)(1) In an application, other than for reissue or a design
patent, that has been pending for at least three years as of
the effective date of 35 U.S.C. 154(a)(2), taking into
account any reference made in the application to any earlier
filed application under 35 U.S.C. 120, 121 and 365(c), no
requirement for restriction or for the filing of divisional
applications shall be made or maintained in the application
after the effective date, except where:
(i) the requirement was first made in the application
or any earlier filed application under 35 U.S.C. 120, 121
and 365(c) more than two months prior to the effective date;
(ii) the examiner has not issued any Office action in
the application due to actions by the applicant; or
(iii) the required fee for examination of each
additional invention was not paid.
(2)If the application contains more than one independent
and distinct invention and a requirement for restriction or
for the filing of divisional applications cannot be made or
is withdrawn pursuant to this paragraph, applicant will be
so notified and given a time period of one month from the
notice to pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one. If applicant does not pay the
required fee for each additional invention in a timely
manner, only the first claimed invention and those
additional inventions for which the fee has been paid will
be searched and examined. The additional inventions for
which the required fee has not been paid will be withdrawn
from consideration under 1.142(b). An applicant who
desires examination of an invention so withdrawn from
consideration can file a divisional application under
35 U.S.C. 121.
(c) The provisions of this section shall not be applicable
to any application filed on or after the effective date of
35 U.S.C. 154(a)(2).<
27. Section 1.139 is proposed to be added to read as
follows:
> 1.139 Revival of provisional application.
(a) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months
from its filing date. A petition to revive an abandoned
provisional application must be promptly filed after the
applicant is notified of, or otherwise becomes aware of, the
abandonment, and must be accompanied by:
(1) the required response unless it has been
previously filed;
(2) the petition fee as set forth in 1.17(l);
and
(3) a showing that the delay was unavoidable. The
showing must be a verified showing if made by a person not
registered to practice before the Patent and Trademark
Office.
(b) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if the delay was unintentional. Under no circumstances
will the provisional application be pending after twelve
months from its filing date. A petition to revive an
abandoned provisional application must be:
(1) accompanied by the required response unless it
has been previously filed;
(2) accompanied by the petition fee as set forth
in 1.17(m);
(3) accompanied by a statement that the delay was
unintentional. The statement must be a verified statement
if made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and
(4) filed either:
(i) within one year of the date on which the
provisional application became abandoned; or
(ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the provisional application became abandoned.
(c) Any request for reconsideration or review of a
decision refusing to revive a provisional application upon
petition filed pursuant to paragraphs (a) or (b) of this
section, to be considered timely, must be filed within two
months of the decision refusing to revive or within such
time as set in the decision.
(d) The time periods set forth in this section cannot
be extended, except that the three-month period set forth in
paragraph (b)(4)(ii) of this section and the time period set
forth in paragraph (c) of this section may be extended under
the provisions of 1.136.<
28. Section 1.177 is proposed to be revised to read as
follows:
1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause
several patents to be issued for distinct and separate parts
of the thing patented, upon demand of the applicant, and
upon payment of the required fee for each division. Each
division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the
invention claimed in such division; and the drawing may
represent only such part or parts, subject to the provisions
of 1.83 and 1.84. On filing divisional reissue
applications, they shall be referred to the Commissioner.
Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in 1.17(i)[(1)], all the
divisions of a reissue will issue simultaneously; if there
be any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless
the Commissioner shall otherwise order.
29. Section 1.312 is proposed to be amended by revising
paragraph (b) to read as follows:
1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph (a) of this
section filed after the date the issue fee is paid must be
accompanied by a petition including the fee set forth in
1.17(i)[(1)] and a
Last Modified: March 1995