[Federal Register: September 23, 1996 (Volume 61, Number 185)] [Proposed Rules] PRIVATE [Page 49819-49868] [[Page 49819]] _________________________________________________________________ Part II Department of Commerce _________________________________________________________________ Patent and Trademark Office _______________________________________________________________________ 37 CFR Part 1, et al. 1996 Changes to Patent Practice and Procedure; Proposed Rule [[Page 49820]] DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1, 3, 5, and 7 [Docket No. 960606163-6163-01] RIN 0651-AA80 1996 Changes to Patent Practice and Procedure 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 simplify the requirements of the rules, rearrange portions of the rules for better context, and eliminate unnecessary rules or portions thereof as part of a government-wide effort to reduce the regulatory burden on the American public. The procedure for filing of continuation and divisional applications would be simplified. Another type of simplification being proposed that would affect several rules is the acceptance of a statement that errors were made without deceptive intent, unaccompanied by any further showing of facts and circumstances. The naming of inventors would no longer be required on filing of the application in order to obtain a filing date, which would eliminate the need for certain petitions to correct inventorship. DATES: Written comments must be received on or before November 22, 1996, to ensure consideration. Comments will be available for public inspection after receipt and will be available on the Internet (address: regreform@.uspto.gov). Commentators should note that since their comments will be made publicly available, information that is not desired to be made public, such as the address and phone number of the commentator, should not be included in the comments. A public hearing will not be conducted. ADDRESSES: Comments should be sent by mail message over the Internet addressed to regreform@.uspto.gov. Comments may also be submitted by mail addressed to: Box Comments-- Patents, Assistant Commissioner for Patents, Washington, DC 20231, Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although comments may be submitted by mail or FAX, the Office prefers to receive comments via the Internet. Where comments are submitted by mail, the Office would appreciate the comments to be electronically filed on a DOS formatted 3\1/4\ inch disk along with a paper copy of the comments. The comments will be available for public inspection in Suite 520, of One Crystal Park, 2011 Crystal Drive, Arlington, Virginia. FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, by telephone at (703) 305-9285 or by mail addressed to: Box Comments--Patents, Assistant Commissioner for Patents, Washington, DC 20231 marked to the attention of Mr. Bernstein or by FAX to (703) 308-6916. SUPPLEMENTARY INFORMATION: This proposed rule change seeks to implement President Clinton's program of reducing the regulatory burden on the American public, which program is supported by the Office as published in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19, 20 and 22. The proposed changes are directed towards: (1) Simplification of procedures for filing continuation and divisional applications, establishing lack of deceptive intent in reissues, petition practice, and in the filing of papers correcting improperly requested small entity status; (2) elimination of unnecessary requirements, such as certain types of petitions to correct inventorship under Sec. 1.48; (3) removal of rules and portions thereof that merely represent instructions as to the internal affairs of the Office more appropriate for inclusion in the Manual of Patent Examining Procedure (MPEP); (4) rearrangement of portions of rules to improve their context; and (5) clarification of rules to aid in understanding of the requirements that they set forth. The Office is particularly interested in comments as to whether the proposed rules if adopted should be applied to already pending reissue oaths or declarations under the new proposed standards of Sec. 1.175 as it is to be amended under the final rule and already pending petitions and papers under Secs. 1.28(c)(2), 1.48 and 1.324 as they are to be amended under the final rule for such papers submitted prior to the effective date of any final rule change, i.e., should the advantages proposed by these suggested rule changes that are incorporated into the final rule be applied retroactively to papers submitted prior to the effective date of the final rule. Discussion of Specific Rules If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7 are amended as proposed: Section 1.4(d) paragraphs (1) and (2) would be amended to place the current subject matter of both paragraphs into paragraphs (d)(1) (i) and (ii) with a clarifying reference in paragraph (d)(1)(ii) to the submission of a copy of a copy. Paragraph (d)(2) of Sec. 1.4 would be amended so that the certifications set forth in the rule would be automatically made upon presenting any paper to the Office by the party presenting the paper and in an added paragraph (d)(3)(ii) identifying by the statute, 18 U.S.C. 1001 that sets forth the required standards of conduct. Sanctions would be set forth in a Sec. 1.4(d)(3)(i) for violation of the certifications in Sec. 1.4(d)(2) and for violations of the standards of conduct in Sec. 1.4(d)(3)(ii). The proposed amendments to Sec. 1.4(d) would support proposed amendments to Secs. 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will be reviewed at a later date in connection with other matters), 3.26, and 5.4 that would delete the requirement for verification (MPEP 602) of statements of facts by applicants and other parties who are not registered to practice before the Office. The absence of a required verification has been a source of delay in the prosecution of applications, particularly where such absence is the only defect noted. The proposed change to Sec. 1.4(d) would automatically incorporate required averments thereby eliminating the necessity for a separate verification for each statement of facts that is to be presented, except for those instances where the verification requirement is retained. Similarly, the proposed amendments to Sec. 1.4(d) would support a proposed amendment to Secs. 1.97 (Secs. 1.637 and 1.673 will be reviewed at a later date in connection with other matters) that would change the requirements for certifications to requirements for statements. The oath or declaration under Secs. 1.63 and affidavits under Secs. 1.131 and 1.132 would not be affected. The requirement in Sec. 5.25(a)(3) for a verified statement would be maintained, as the required explanation must include a showing of facts (evidence), not mere allegations, which will be weighed by the official deciding the petition for retroactive license. The statements in Secs. 1.494(e) and 1.495(f) that verification of translations of documents filed in a language other than English may be required would be maintained, as such requirements are made rarely and only when deemed necessary (when persons persist in translations which appear on their face to be inaccurate, for example). The requirements for certification of service on parties in Secs. 1.248, 1.510, 1.637 and 10.142 would be maintained. [[Page 49821]] Section 1.4 would also have a new paragraph (g) related to an applicant who has not made of record a registered attorney or agent being required to state whether assistance was received in the preparation or prosecution of a patent application. This is proposed to be transferred from Sec. 1.33(b) for consistent contextual purposes. Section 1.6 paragraph (e)(2) would be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.8 paragraph (b)(3) would be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.10 would be amended to remove the requirement for a statement that is verified. See comments to Sec. 1.4(d). It is also proposed to clarify the section by substitution of ``averring to the fact'' with ``stating.'' Section 1.14 would have the title and paragraphs (a) and (e) amended to replace the term ``secrecy'' by ``confidence'' to conform to the usage in 35 U.S.C. 122. Paragraph (a) of Sec. 1.14 would have a reference to serial number changed to application number. Section 1.14 would also be amended to have paragraph (f) added to recognize the proposed change to Sec. 1.47 (a) and (b) that are also exceptions to maintaining pending applications in confidence by providing public notice of the prospective issuance of a pending application to nonsigning inventors. Section 1.17 (and Sec. 1.136(a)) would add a recitation to an extension of time fee payment for a reply filed within a fifth month after a nonstatutory or shortened statutory period for reply was set. Section 1.17(a) is specifically proposed to be subdivided into paragraphs (a)(1) through (a)(5), with paragraphs (a)(1) through (a)(4) setting forth the amounts for one-month through four-month extension fees proposed in Revision of Patent Fees for Fiscal Year 1997, 1186 Off. Gaz. Pat. Office 14 (May 7, 1996); 61 FR 19224 (May 1, 1996). Paragraph (a)(5) would provide the small and other than small entity amounts for the newly proposed fifth-month extension fee. Sections 1.17 (b), (c) and (d) are proposed to be removed as unnecessary in view of proposed Sec. 1.17 (a)(1) through (a)(5). Fee levels, as proposed by the Revision of Patent Fees for Fiscal Year 1997, were used in establishing the fifth-month extension of time fees for large and small entities for paragraph (a)(5) of Sec. 1.17. A shortened statutory period for reply of one month may be set, thereby allowing a fifth month for reply within the six-month statutory period for response. Section 1.17(a) is being amended to recognize the availability of a fifth-month extension of time when a one-month or a thirty-day shortened statutory period is set (e.g., in a written requirement for restriction). The addition of a fifth-month would then also become available for replies with nonstatutory periods of time set, such as for replies to Notices to File Missing Parts of Applications. Section 1.17(i), as proposed, would: add a petition fee under Sec. 1.59 for expungement and return of papers, delete the references to petitions under Secs. 1.60 and 1.62 to accord a filing date in view of the proposed deletion of Secs. 1.60 and 1.62, and to change ``divisional reissues'' to ``multiple reissue applications.'' Moreover, Sec. 1.17, as well as Secs. 1.103, 1.112, 1.113, 1.133, 1.134, 1.135, 1.136, 1.142, 1.144, 1.146, 1.191, 1.192, 1.291, 1.294, 1.484, 1.485, 1.488, 1.494, 1.495, 1.530, 1.550, 1.560, (1.605, 1.617, 1.640, and 1.652 will be reviewed at a later date in connection with other matters), 1.770, 1.785, (1.821 will be reviewed at a later date in connection with other matters), and 5.3, would replace the phrases ``response'' and ``respond'' with ``reply'' for consistency with Sec. 1.111. Section 1.21(n), as proposed, would delete the reference to an improper application under Secs. 1.60 or 1.62 in view of the proposed deletion of Secs. 1.60 and 1.62. Section 1.26(a) is proposed to be amended to better track the statutory language of 35 U.S.C. 42(d) by deleting ``[m]oney'' and ``actual,'' adding ``fee'' and adding back language relating to refunds of fees paid that were not ``required'' that was inadvertently dropped in the July 1, 1993, publication of title 37 CFR, and from subsequent publications. Section 1.27 (a) through (d) would be amended to remove the requirement that a statement filed thereunder be ``verified.'' See comments relating to Sec. 1.4(d). Section 1.27(b) is proposed to be amended for clarification with the movement of a clause relating to ``any verified statement'' within a sentence. Section 1.28(a) would be amended to remove the requirement for a statement that is ``verified.'' See comments relating to Sec. 1.4(d). Section 1.28(a) would also be amended to provide that a new small entity statement would not be required for reissue or continued prosecution (Sec. 1.53(b)(3)) applications where small entity status is still proper and reliance is had on a reference to a small entity statement filed in a prior application or patent or a copy thereof is supplied. Section 1.28(a) would be further amended to state that the payment of a small entity basic statutory filing fee in a nonprovisional continuing application, which claims benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application or in a continuing prosecution application, or in a reissue application, wherein the prior application or the patent has small entity status, will substitute for the reference in the continuing or reissue application to the small entity statement in the prior application or in the patent, thereby establishing small entity status in such nonprovisional application. Section 1.28(a) is also amended to require a new determination of continued entitlement to small entity status for continued prosecution applications filed under Sec. 1.53(b)(3) and to clarify that the refiling of applications as continuations, divisions and continuation- in-part applications and the filing of reissue applications also require a new determination of continued entitlement to small entity status prior to reliance on small entity status in a prior application or patent. Section 1.28(c) would have the requirement removed for a statement of facts explaining how an error in payment of small entity fees occurred in good faith and how and when the error was discovered. A fee deficiency payment based on the difference between fees originally paid as a small entity and the current large entity amount at the time of full payment of the fee deficiency will be deemed to constitute a belief by the party submitting the deficiency payment that small entity status was established in good faith and that the original payment of small entity fees was made in good faith. Any paper submitted under Sec. 1.28(c) will be placed in the appropriate file without review after the processing of any check or the charging of any fee deficiency payment specifically authorized. Section 1.33 would no longer provide that the required residence and post office address of the applicant can appear elsewhere than in the oath or declaration under Sec. 1.63. Section 1.63(a)(3) would be amended to require that the post office address as well as the residence be identified therein and not elsewhere. Permitting the residence to be elsewhere in the application other than the oath or declaration, as in current Sec. 1.33(a), is inconsistent with current Sec. 1.63(c) that states the residence must appear in the oath or declaration. The requirement for placement of the post office address is proposed to be made equivalent to the requirement for the residence to [[Page 49822]] eliminate confusion between the two, which often are the same destination and are usually provided in the oath or declaration. The reference in Sec. 1.33(a) to the assignee providing a correspondence address has been moved within Sec. 1.33(a) for clarification. Other clarifying language including a reference to Sec. 1.34(b), use of the terms ``provided,'' ``furnished'' rather than ``notified,'' and ``application'' rather than ``case,'' while ``of which the Office'' would be deleted. Section 1.33(b) would be removed and the subject matter transferred to new Sec. 1.4(g). Section 1.41(a) (and Sec. 1.53) would no longer require that a patent be applied for in the name of the actual inventors for an application for patent to receive a filing date. The requirement for use of full names would be moved to Sec. 1.63(a) for better context. The requirement for naming of the inventor or inventors would be replaced with only a request that such names or an identifying name be submitted on filing of the application. The use of very short identifiers should be avoided to prevent confusion. Without supplying at least an identifying name that is specific the Office may have no ability or only a delayed ability to match any papers submitted after filing of the application and before issuance of an identifying Application number with the application file. Any identifier used that is not an inventor's name must be specific, alphanumeric characters of reasonable length, and must be presented in such a manner that it is clear to application processing personnel what the identifier is and where it is to be found. It is strongly suggested that applications filed without an executed oath or declaration under Sec. 1.63 or 1.175 continue to use an inventor's name for identification purposes. Failure to apprise the Office of the application identifier being used will result in applicants having to resubmit papers that could not be matched with the application and proof of the earlier receipt of such papers where submission was time dependent. Paragraph (a) of Sec. 1.41 would also be amended to recite that the actual inventor or inventors of an application are set forth in an executed Sec. 1.63 oath or declaration to correspond to the proposed change in Sec. 1.53(b)(1)(iii). Hence, the recitation of the inventorship in an application submitted under Sec. 1.53(d) without an executed oath or declaration for purposes of identification may be changed merely by the later submission of an oath or declaration executed by a different inventive entity without recourse to a petition under Sec. 1.48. Section 1.47 would be amended to provide for publication in the Official Gazette of a notice of filing for all applications submitted under this section rather than only when notice to the nonsigning inventor(s) is returned to the Office undelivered or when the address of the nonsigning inventor(s) is unknown. The information to be published includes: The Application number, filing date, invention title and inventors identifying the missing inventor. Section 1.47 would also be amended for clarification purposes. A reference to an ``omitted inventor'' in Sec. 1.47(a) would be replaced with ``nonsigning inventor.'' Statements in Secs. 1.47 (a) and (b) that a patent will be granted upon a satisfactory showing to the Commissioner would be deleted as unnecessary. Section 1.47(b) is proposed to be amended to clarify that it applies only where none of the inventors are willing or can be found to sign the Declaration by substitution of ``an inventor'' by ``all the inventors.'' The use of ``must state'' in regard to the last known address would be deleted as redundant in view of the explicit requirement for such address in the rule. The sentence in Sec. 1.47(b) referring to the filing of the assignment, written agreement to assign or other evidence of proprietary interest would be deleted as redundant in view of the requirement appearing earlier in Sec. 1.47(b) calling for ``proof of pertinent facts.'' Section 1.48 for inventorship corrections in an application (Sec. 1.324, for inventorship corrections in a patent, and Sec. 1.175, for reissue declarations) would no longer require factual showings to establish a lack of deceptive intent. All that will be needed is a statement to that effect. Section 1.48 would be amended in its title to clarify that the section is related to patent applications as opposed to patents. Section 1.48(a) would not require correction of the inventorship if the inventorship or other identification under Sec. 1.41 was set forth in error on filing of the application. Section 1.48(a) is proposed to be amended to apply only to correction of inventor or inventors from that named in an originally filed executed oath or declaration and not to the naming of inventors or others for identification purposes as is currently proposed under Sec. 1.41. The statement to be submitted would be required only from the person named in error as an inventor or from the person who through error was not named as an inventor rather than from all the original named inventors so as to comply with 35 U.S.C. 116. The present requirement that any amendment of the inventorship under Sec. 1.48(a) be ``diligently'' made would be removed. The applicability of a rejection under 35 U.S.C. 102(f)/(g) against an application with the wrong inventorship set forth therein and any patent that would issue thereon is deemed to provide sufficient motivation for prompt correction of the inventorship without the need for a separate requirement for diligence. A clarifying reference to Sec. 1.634 would be added in Sec. 1.48(a) for instances when inventorship correction is necessary during an interference and has been moved from Sec. 1.48(a)(4) for improved contextual purposes. The Sec. 1.48(a)(1) statement would require a statement only as to the lack of deceptive intent rather than a statement of facts to establish how the inventorship error was discovered and how it occurred, since the latter is proposed to be deleted. Additionally, the persons from whom a statement is required now includes any person not named in error as an inventor but limits statements from the original named inventors to only those persons named in error as inventors rather than all persons originally named as inventors including those correctly named. The paragraph would be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.48(a)(2) would be amended for clarification purposes to indicate the availability of Secs. 1.42, 1.43 or 1.47 in meeting the requirement for an executed oath or declaration under Sec. 1.63 from each actual inventor. Section 1.47 would only be applicable to the person to be added as an inventor (inventors named in an application transmittal letter can be deleted without petition). For those persons already having submitted an executed oath or declaration under Sec. 1.63, a petition under Sec. 1.183, requesting waiver of reexecution of an oath or declaration, may be an appropriate remedy. The requirement for an oath or declaration is maintained in Sec. 1.48(a) notwithstanding its replacement in Sec. 1.324 for issued patents by a statement of agreement or lack of disagreement with the requested change in view of the need to satisfy the duty of disclosure requirement in a pending application that is set forth in a Sec. 1.63 oath or declaration. Section 1.48(a)(4) would be amended to include a citation to Sec. 3.73(b) to clarify the requirements for submitting a written consent of assignee, which is subject to the requirement under Sec. 3.73(b), and to delete the reference to an application involved in an interference, which is being moved to [[Page 49823]] Sec. 1.48(a). Section 1.48(a)(4) would also be amended to clarify that the assignee required to submit its written consent is only the existing assignee of the original named inventors at the time the petition is filed and not any party that would become an assignee based on the grant of the inventorship correction. Section 1.48(b) would also be amended to remove the requirement that a petition thereunder be diligently filed. The applicability of a rejection under 35 U.S.C. 102(f)/(g) against an application with the wrong inventorship set forth therein and any patent that would issue thereon is deemed to provide sufficient motivation for prompt correction of the inventorship without the need for a separate requirement for diligence. Section 1.48(b) would have a clarifying reference to Sec. 1.634 added for instances when inventorship correction is necessary during an interference. Section 1.48(c) would be amended so that a petition thereunder no longer need meet the current requirements of Sec. 1.48(a), which are also proposed to be changed. A statement from each inventor being added that the inventorship amendment is necessitated by amendment of the claims and that the error occurred without deceptive intent would be required under Sec. 1.48(c)(1) rather than the previous requirement of a statement from each original named inventor. The previous requirements under Sec. 1.48(a) for an oath or declaration, the written consent of an assignee and the written consent of any assignee are retained, but are now separately set forth in Secs. 1.48(c)(2) through (c)(4). The particular circumstances of a petition under this paragraph, adding an inventor due to an amendment of the claims that incorporates material attributable to the inventor to be added, is seen to be indicative of a lack of deceptive intent in the original naming of inventors. Accordingly, all that must be averred to is that an amendment of the claims has necessitated correction of the inventorship and that the inventorship error existing in view of the claim amendment occurred without deceptive intent. The current requirement for diligence in filing the petition based on an amendment to the claims would not be retained as applicants have the right, prior to final rejection or allowance, to determine when particular subject matter is to be claimed. Applicants should note that any petition under Sec. 1.48 submitted after allowance is subject to the requirements of Sec. 1.312, and a petition submitted after final rejection is not entered as a matter of right. The statement of facts must be a verified statement if made by a person not registered to practice before the Patent and Trademark Office. Section 1.48(c)(2) would clarify the availability of Secs. 1.42, 1.43 and 1.47 in meeting the requirement for an executed oath or declaration under Sec. 1.63. Section 1.47 would only be applicable to the person to be added as an inventor. For those persons already having an executed oath or declaration under Sec. 1.63 a petition under Sec. 1.183, requesting waiver of reexecution of an oath or declaration, may be an appropriate remedy. Section 1.48(c)(4) would clarify that the assignee required to submit its written consent is only the existing assignee of the original named inventors at the time the petition is filed and not any party that would become an assignee based on the grant of the inventorship correction. A citation to Sec. 3.73(b) would be presented. Section 1.48(d) would be amended by addition of ``their part'' to replace ``the part of the actual inventor or inventors'' and of ``omitted'' to replace ``actual'' to require statements from the inventors to be added rather than from all the actual inventors so as to comply with 35 U.S.C 116. Section 1.48(d)(1) would also be clarified to identify the error to be addressed is the inventorship error. It is not expected that the party filing a provisional application will normally need to correct an error in inventorship under this paragraph by adding an inventor therein except when necessary under Sec. 1.78 to establish an overlap of inventorship with a continuing application. Automatic correction of the inventorship is not possible as is the case for nonprovisional applications when an executed oath or declaration under Sec. 1.63 with the correct inventorship is later filed; since an oath or declaration is not to be submitted in provisional applications, Sec. 1.51(a)(2). Section 1.48(d)(1) would be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.48(e)(1) would be amended to replace a requirement in provisional applications that the required statement be one ``of facts'' directed towards ``establishing that the error'' being corrected ``occurred without deceptive intention,'' thereby requiring only a statement that the inventorship error occurred without deceptive intent. Paragraph (e)(1) would also be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). It is not expected that the party filing a provisional application would need to file a petition under this paragraph since the application will go abandoned by operation of law, Sec. 1.53(e)(2), and the need to delete an inventor will not affect the overlap of inventorship needed to claim priority under Sec. 1.78(a)(3) for any continuing application. Section 1.48(e)(3) would be amended to clarify that the assignee required to submit its written consent is only the prior existing assignee before correction of the inventorship is granted and not any party that would become an assignee based on the grant of the inventorship correction and a reference to Sec. 3.73(b) would be added. Section 1.48(f) would be added to provide that the later filing of an executed oath or declaration would act to correct the inventorship without a specific petition for such correction and would be used to issue a filing receipt and process the application notwithstanding any inventorship or other identification name earlier presented. Section 1.48(g) would be added to specifically recognize that the Office may require such other information as may be deemed appropriate under the particular circumstances surrounding a correction of the inventorship. Section 1.51(c) covering the use of an authorization to charge a deposit account is proposed to be removed as unnecessary in view of Sec. 1.25(b). Section 1.52 paragraphs (a) and (d) would be amended to remove the requirement that the translation be verified in accordance with the proposed change to Sec. 1.4(d)(2). Paragraphs (a) and (d) of this section would also be amended to clarify the need for a statement that the translation being offered is an accurate translation, as is also proposed in Sec. 1.69 paragraph (b). Section 1.53(b)(1), as proposed, would remove: (1) The phrase ``in the name of the actual inventor or inventors as required by Sec. 1.41,'' and (2) the sentence ``[i]f 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 Sec. 1.17(i) is filed which sets forth the reasons the delay in supplying the names should be excused.'' These proposed changes are consistent with the proposed change to Sec. 1.41. Section 1.53(b)(1) (and Sec. 1.41(a)) would no longer require that a patent be applied for in the name of the actual inventors for an application for patent to receive a filing date. Section 1.53(b)(1), as proposed, would change (1) ``[a] continuation or [[Page 49824]] divisional application (filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this section, Sec. 1.60 or Sec. 1.62'' and (2) ``[a] continuation-in-part application may also be filed under this section or Sec. 1.62'' to (1) [a] continuation or divisional application (filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this paragraph or paragraph (b)(3) of this section'' and (2) ``[a] continuation-in-part application must be filed under this paragraph, respectively. Upon the deletion of Secs. 1.60 and 1.62, any continuation-in-part applications must be filed under Sec. 1.53(b)(1), but a continuation or divisional application may be filed under Secs. 1.53(b)(1) or (b)(3). Section 1.53(b)(1), as proposed, would also add a new paragraph (b)(1)(i) expressly providing that any continuation or divisional application may be filed by all or by less than all of the inventors named in a prior application, and that a newly executed oath or declaration is not required pursuant to Secs. 1.51(a)(1)(ii) and 1.53(d) in a continuation or divisional application filed by all or by less than all of the inventors named in a prior application, provided that one of the following is submitted: (1) A copy of the executed oath or declaration filed to complete (Sec. 1.51(a)(1)) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or (2) a copy of an unexecuted oath or declaration, and a statement that the copy is a true copy of the oath or declaration that was subsequently executed and filed to complete (Sec. 1.51(a)(1)) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c). The phrase ``most immediate prior national application'' is proposed rather than ``prior application'' to accommodate those situations in which the prior application was filed under current Secs. 1.60 or 1.62, or where the prior application was itself a continuation or divisional application and filed with a copy of the executed oath or declaration from a prior application pursuant to Sec. 1.53(b)(1)(i). As is currently the situation under Secs. 1.60 and 1.62, the applicant's duty of candor and good faith including compliance with the duty of disclosure requirements of Sec. 1.56 is continuous and applies to the continuation, divisional or continued prosecution (Sec. 1.53(b)(3)) application, notwithstanding the lack of a newly executed oath or declaration. Therefore, applicants should be informed of the intent to file a continuation, divisional or continued prosecution application with a copy of the proposed claimed supplied. New Sec. 1.53(b)(1)(i), as proposed, would also reference Sec. 1.53(d) for the filing of a continuation or divisional application without the concomitant submission of a newly executed oath or declaration or a copy of the oath or declaration for the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c). Section 1.53(b)(1), as proposed, would also add a new paragraph (b)(1)(i)(A) providing that the copy of the executed or unexecuted oath or declaration for the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be accompanied by a statement from applicant, counsel for applicant or other authorized party requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application. Where the continuation or divisional application and copy of the oath or declaration from the prior application is filed without a statement from an authorized party requesting deletion of the names of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventors the person or persons named in the prior application, taking into account any petition for correction of inventorship pursuant to Sec. 1.48 in the prior application that has been granted prior to the filing of the continuation or divisional application. For situations where an inventor or inventors are to be added in a continuation or divisional application see paragraph (ii) under this section. The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to Sec. 1.33(a) to sign an amendment in the continuation or divisional application. That is, such a statement must be signed by: (1) All of the inventors in the continuation or divisional application (see MPEP 714.01(a)), (2) the assignee of record of the entire interest in the continuation or divisional application in compliance with Sec. 3.73(b) (see MPEP 324), (3) an attorney or agent of record, or (4) a registered attorney or agent acting in a representative capacity pursuant to Sec. 1.34(a). Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B) providing that where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Section 1.53(b)(1), as proposed, would add a new paragraph (ii) providing that a newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application. For situations where an inventor or inventors are to be added in a continuation or divisional application the Office will not require a petition pursuant to Sec. 1.48, but will require only the newly executed oath or declaration naming the correct inventorship in the continuation or divisional application under Sec. 1.53. For deletion of inventors in a continuation or divisional application see Sec. 1.53(b)(1)(i) and (b)(3). New Sec. 1.53(b)(1)(ii), as proposed, would also provide that a newly executed oath or declaration must be filed in a continuation-in-part application, which application may name all, more, or less than all of the inventors named in the prior application. Section 1.53(b)(1)(iii), as proposed, would clarify that the inventorship is not set forth in an application until an executed oath or declaration is submitted therein in accordance with the proposed change to Sec. 1.41(a). Where the inventorship was voluntarily set forth on filing an application without an executed oath or declaration pursuant to Sec. 1.53(d) for purposes of identification, the actual inventorship of the application will be controlled by the later submission of an executed oath or declaration which may change what was originally identified as the inventorship without recourse to a petition under Sec. 1.48 in accordance with the proposed change to Sec. 1.41(a). Section 1.53(b)(2), as proposed, would remove the phrase ``in the name of the actual inventor or inventors as required by Sec. 1.41'' and the sentence ``[i]f 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 Sec. 1.17(q) is filed which sets forth the reasons the delay in supplying the names should be excused.'' Section 1.53(b)(2) (and Sec. 1.41(a)) would no longer require that a patent be applied for in the name of the actual inventors for an application for patent to receive a filing date. Section 1.53(b)(2)(ii), as proposed, would change the phrase ``treated as'' to ``converted to'' for clarity. [[Page 49825]] Section 1.53(b)(3) is proposed to be added to provide for the filing of a continued prosecution application. Section 532 of the Uruguay Round Agreement Act (Pub. L. 103-465, section 532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the term of patent protection begins on the date of patent grant and ends on the date 20 years from the filing date of the application. As any delay in the prosecution of the application will reduce the term of patent protection, reducing unnecessary delays in the prosecution of applications is a mutual interest of patent applicants and the Office. An applicant in a nonprovisional application filed on or after June 8, 1995, must file a continuing application to obtain further examination subsequent to a final rejection or other final action. The current continuing practice under Secs. 1.60 and 1.62 of processing an application filed thereunder with a new application number and filing date delays the examination of such continuing applications. Therefore, the Office proposes to eliminate this delay by: (1) Not assigning a new application number to an application filed under Sec. 1.53(b) (3), and (2) not processing the application filed under Sec. 1.53(b)(3) with a filing date of the request for an application under Sec. 1.53(b)(3). Rather, a continued prosecution application would retain the application number and the filing date of the prior application to which it relates for identification purposes thereby allowing examination to proceed without the delays that would be caused by the current need to assign to applications filed under Secs. 1.60 and 1.62 a new application number and filing date as of the date the Rule 60 or 62 application was requested (submitted). Section 1.53(b)(3), as proposed, would specifically provide that: (1) In a complete nonprovisional application (Sec. 1.51(a)(1)) filed on or after June 8, 1995, a continuation or divisional application that discloses and claims only subject matter disclosed in that prior complete application and names as inventors the same or less than all the inventors named in that prior complete application may be filed under this paragraph, and (2) the filing date of the continued prosecution application, such as for continuity purposes under 35 U.S.C. 120 and Sec. 1.78, is the date on which a request for an application under this paragraph, including identification of the prior application number is filed. The specific reference to the prior application required by 35 U.S.C. 120 and Sec. 1.78(a)(2) will be satisfied by a sentence that the continued prosecution application is a continuation or divisional, as appropriate, of prior application number ##/###,###, filed ##/##/##, now abandoned, notwithstanding that the so identified application number and filing date are also the application number and filing date assigned to the continued prosecution application under this paragraph. Where the continued prosecution application derives from a chain of Sec. 1.53(b)(3) applications assigned a common application number and filing date, a sentence that the application is a continuation or divisional, as appropriate, of the common application number and filing date will constitute a specific reference (35 U.S.C. 120 and Sec. 1.78(a)(2)) to each application assigned that application number and filing date. Since Sec. 1.53(b)(3) is proposed to be limited to continuations and divisionals, the actual filing date of the request for an application under Sec. 1.53(b)(3) will be relevant only to the copendency requirement of 35 U.S.C. 120 and Sec. 1.78 and patent term vis-a-vis Pub. L. 103-465. Nevertheless, Sec. 1.53(b)(3) is proposed to be limited to a continuation or divisional of a complete application filed on or after June 8, 1995, so as to avoid any dispute as to whether the application is subject to 20-year patent term as set forth in Pub. L. 103-465. That is, any continuation or divisional of an application filed prior to June 8, 1995, as well as any continuation- in-part, must be filed under Sec. 1.53(b)(1). Section 1.53(b)(3)(i)(A), as proposed, would provide that an application under Sec. 1.53(b)(3) (a continued prosecution application) will use the specification, drawings and oath or declaration from the prior complete application and will be assigned its application number for identification purposes. Section 1.53(b)(3)(i)(B), as proposed, would provide that the filing of a request for a continued prosecution application is a request to expressly abandon the prior application as of the filing date granted the application under Sec. 1.53(b)(3). Section 1.53(b)(3)(i)(C), as proposed, would provide that a continued prosecution application must be filed before the payment of the issue fee, abandonment of, or termination of proceedings on the prior application with the filing date of a request for a continued prosecution application being the date on which a request for a continued prosecution application including identification of the application number of the prior complete application is filed. Section 1.53(b)(3)(ii) (A) and (B), as proposed, would provide that filing fee for a continued prosecution application is the statutory basic filing fee as set forth in Sec. 1.16 and any additional fee due based on the number of claims remaining in the application after entry of any amendment accompanying the request for an application under this section and entry of any amendments under Sec. 1.116 unentered in the prior application which applicant has requested to be entered in the new application. In instances in which a continued prosecution application is submitted without the basic statutory filing fee or any additional claims fee due, the Office will continue to mail a ``Notice of Missing Parts'' under Sec. 1.53(d)(1) and give the applicant a period of time within which to file the fee and to pay the surcharge under Sec. 1.16(e) to prevent abandonment of the application (see Sec. 1.53(d)(1)). Thus, the filing of a continued prosecution application without the basic statutory filing fee or any additional claims fee due will result in a delay in the initial processing of the application. An applicant, however, may eliminate or limit this delay by either filing the request for a continued prosecution application with the appropriate filing fee or not delaying the submission of the appropriate filing fee until the mailing of or expiration of the period for response to the ``Notice of Missing Parts.'' Section 1.53(b)(3)(iii), as proposed, would provide that if a continued prosecution 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 continued prosecution application. Where an application is filed under Sec. 1.53(b)(3) without a statement requesting deletion of the names of any person or persons named in the prior application, the application will be treated as naming as inventors the person or persons named in the prior application, taking into account any grant of a petition correcting inventorship in the prior application pursuant to Sec. 1.48. To correct the inventorship in the continued prosecution application, the Office will not require a petition pursuant to Sec. 1.48 as the application is to be filed without a newly executed oath or declaration, but will require only a newly executed oath or declaration naming the correct inventorship in the continued [[Page 49826]] prosecution application, which is similar to the requirements for correction of the inventorship in applications filed under Sec. 1.53(b)(1) without a newly executed oath or declaration. Section 1.53(b)(3)(iv), as proposed, would require that any new change be made in the form of an amendment to the prior application, and would provide that any new specification filed with the request for an application under Sec. 1.53(b)(3) would not be considered part of the original application papers, but would be treated as a substitute specification in accordance with Sec. 1.125. In the event that legislation mandating the 18-month publication of patent applications (e.g., H.R. 1733) is enacted, it will be necessary to amend proposed Sec. 1.53(b)(3)(iii) to require a substitute specification in compliance with Sec. 1.125 and drawings including only those changes to the prior application during the prosecution of the prior application. Section 1.53(b)(3)(v), as proposed, would provide that the filing of a continued prosecution application will be construed to include a waiver of confidence by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of Sec. 1.14 to access to, or information concerning either the prior application or any application filed under the provisions of Sec. 1.53(b)(3) may be given similar access to, or similar information concerning, the other application(s) in the file wrapper. Section 1.53(b)(3)(vi) (A) through (D), as proposed, would provide that the applicant is urged to furnish in the request for an application under Sec. 1.53(b)(3) the following information relating to the prior application to the best of his or her ability: (A) Title as originally filed and as last amended, (B) name of applicant as originally filed and as last amended, (C) current correspondence address of applicant, and (D) identification of prior foreign application and any priority claim under 35 U.S.C. 119. Section 1.53(b)(3)(vii), as proposed, would provide that envelopes containing only requests and fees for filing an application under Sec. 1.53(b)(3) should be marked ``Box CPA.'' Section 1.53(c), as proposed, would replace its current language with three paragraphs treating: (1) Applications found to be improper or incomplete, (2) any requests for review of a notification that an application has been found to be improper or incomplete, and (3) termination of proceedings in an application for failure to timely correct a filing error or seek review of a notification that an application has been found to be improper or incomplete. Section 1.53(c)(1), as proposed, would specifically provide that ``[i]f any application filed under paragraph (b) of this section is found to be incomplete or improper, applicant will be so notified and given a time period within which to correct the filing error.'' Section 1.53(c)(2), as proposed, would specifically provide that ``[a]ny request for review of a notification pursuant to paragraph (c)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph,'' ``[a]ny petition under this paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in an application filed under paragraphs (b)(1) or (b)(3) of this section, and the fee set forth in Sec. 1.17(q) in an application filed under paragraph (b)(2) of this section,'' and ``[i]n the absence of a timely (Sec. 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (c)(1) of this section will be the date the filing error is corrected.'' Section 1.53(c)(3), as proposed, would specifically provide that ``[i]f an applicant is notified of a filing error pursuant to paragraph (c)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (Sec. 1.181(f)) take action pursuant to paragraph (c)(2) of this section, proceedings in the application will be considered terminated'' and ``[w]here proceedings in an application are terminated pursuant to this paragraph, the application may be returned or otherwise disposed of, and any filing fees, less the handling fee set forth in Sec. 1.21(n), will be refunded.'' Section 1.53(c)(3), as proposed would not provide that proceedings in the application will be considered terminated for failure to timely respond to a notification that the original application papers lack a portion of the specification or drawing(s). Thus, the failure to timely seek review of a notification that the original application papers lack a portion of the specification or drawing(s) will not result in termination of proceedings in (or abandonment of) the application, but will simply result in such portion of the specification or drawing(s) not being considered part of the original disclosure of the application. Section 1.53(d)(1), as proposed, would change ``paragraph (b)(1) of this section'' to ``paragraphs (b)(1) or (b)(3) of this section,'' such that Sec. 1.53(d)(1) would be applicable to applications filed under Secs. 1.53 (b)(1) and (b)(3), where Sec. 1.53(d)(2) would be applicable to applications filed under Sec. 1.53(b)(2) (i.e., provisional applications). While Sec. 1.53(d)(1) addresses both the filing fee and the oath or declaration, the oath or declaration of an application under Sec. 1.53(b)(3) will be the oath or declaration of the prior complete (Sec. 1.51(a)(1)) application. As such, an oath or declaration will not be required under Sec. 1.53(d)(1) for a proper application under Sec. 1.53(b)(3). Section 1.53(d)(1), as proposed, would be further amended to add the phrases ``including a continuation, divisional, or continuation-in- part application'' and ``pursuant to Secs. 1.63 or 1.175, which may be a copy of the executed oath or declaration filed to complete (Sec. 1.51(a)(1)) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or a copy of an unexecuted oath or declaration, and a statement that the copy is a true copy of the oath or declaration that was subsequently executed and filed to complete (Sec. 1.51(a)(1)) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a continuation or divisional application'' for clarity and consistency with Sec. 1.53(b)(1). A reference to submission of a copy of a Notice to File Missing Parts would be removed. Section 1.54(b), as proposed, would add the phrase ``unless the application is an application filed under Sec. 1.53(b)(3).'' To minimize application processing delays in applications filed under Sec. 1.53(b)(3), as proposed, such applications will not be processed by the Office of Initial Patent Examination as new applications. Section 1.55 paragraph (a) would be amended to remove the requirement that the statement be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.59 would be amended: By revising the title to indicate that expungement of information from an application file would come under this section, by revising the existing paragraph and designating it as paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c). Paragraph (a)(1) would retain the general prohibition on the return of information submitted in an application which has a filing date. The portion of the paragraph relating to the Office furnishing copies of application papers has been shifted to new paragraph (c). Paragraph (a)(2) would make explicit that information, forming part of the original disclosure, i.e., written [[Page 49827]] specification, drawings, claims and any preliminary amendment specifically incorporated into an executed oath or declaration under Secs. 1.63 and 1.175, will not be expunged from the application file. Paragraph (b) of Sec. 1.59 would provide an exception to the general prohibition of paragraph (a) on the expungement and return of information and would allow for such when it is established to the satisfaction of the Commissioner that the requested expungement and return is appropriate. Paragraph (b) of Sec. 1.59 is intended to cover the current practice set forth in MPEP 724.05 where the submitted information has initially been identified as trade secret, proprietary, and/or subject to a protective order and where applicant may file a petition for its expungement and return that will be granted upon a determination by the examiner that the information is not material to patentability. Any such petition should be submitted in response to an Office action closing prosecution so that the examiner can make a determination of materiality based on a closed record. Any petition submitted earlier than close of prosecution may be returned unacted upon. In the event pending legislation for pre-grant publication of applications, which provides public access to the application file, is enacted, then the timing of petition submissions under this section will be reconsidered. A result of the proposed amendment to this section would be to have a petition to expunge decided under the instant rule by the examiner who determines the materiality of the information to be expunged rather than by the Office of Petitions under Sec. 1.182, which prior to rendering a decision on the petition consults with the examiner on materiality of the information at issue. Paragraph (b) of Sec. 1.59 is also intended to cover information that was unintentionally submitted in an application, provided that: (i) The Office can effect such return prior to the issuance of any patent on the application in issue, (ii) that it is stated that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, (iii) the information has not otherwise been made public, (iv) there is a commitment on the part of the petitioner to retain such information for the period of any patent with regard to which such information is submitted, and (v) it is established to the satisfaction of the Commissioner that the information to be returned is not material information under Sec. 1.56. Requests to return information that have not been clearly identified as information that may be later subject to such request by marking and placement in a separate sealed envelope or container shall be treated on a case-by-case basis. It should be noted that the Office intends to start electronic scanning of all papers filed in an application, and the practicality of expungement from the electronic file created by a scanning procedure is not as yet determinable. Applicants should also note that unidentified information that is a trade secret, proprietary, or subject to a protective order that is submitted in an Information Disclosure Statement may inadvertently be placed in an Office prior art search file by the examiner due to the lack of such identification and may not be retrievable. Paragraph (b) of Sec. 1.59 is also intended to cover the situation where an unintended heading has been placed on papers so that they are present in an incorrect application file. In such situation, a petition should request return of the papers rather than transfer of the papers to the correct application file. The grant of such a petition will be governed by the factors enumerated above in regard to the unintentional submission of information. Where the Office can determine the correct application file that the papers were actually intended for, based on identifying information in the heading of the papers, e.g., Application number, filing date, title of invention and inventor(s) name(s), the Office will transfer the papers to the correct application file for which they were intended without need of a petition. Added paragraph (c) of Sec. 1.59 retains the practice that copies of application papers will be furnished by the Office upon request and payment of the cost for supplying such copies. Section 1.60 is proposed to be removed and reserved. In the notice of proposed rulemaking entitled ``Changes to Implement 20-Year Patent Term and Provisional Application'' (20-Year Term Notice of Proposed Rulemaking) published in the Federal Register at 59 FR 63951 (December 12, 1994), and in the Patent and Trademark Office Official Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3, 1995), Sec. 1.60 was proposed to be removed due to the rule change to Sec. 1.4(d), which permits the filing of a copy of an oath or declaration. The proposed removal of Sec. 1.60 in the 20-Year Term Notice of Proposed Rulemaking, however, was withdrawn in the final rule to permit further study. A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in Sec. 1.53, by providing a copy of the prior application, including a copy of the oath or declaration in such prior application, as filed. The patent statutes and rules of practice do not require that an oath or declaration include a recent date of execution, and the Examining Corps has been directed not to object to an oath or declaration as lacking either a recent date of execution or any date of execution. This change in examining practice will appear in the next revision of the MPEP. As discussed supra, the applicant's duty of candor and good faith including compliance with the duty of disclosure requirements of Sec. 1.56 is continuous and applies to the continuing application. Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a continuation or divisional application by all or by less than all of the inventors named in a prior application without a newly executed oath or declaration. To continue this practice, Sec. 1.53 is proposed to be amended to provide that any continuation or divisional application may be filed by all or by less than all of the inventors named in a prior application, but where a newly executed oath or declaration is not submitted for a continuation or divisional application filed by less than all the inventors named in the prior application, the copy of the oath or declaration for the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be accompanied by a statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application. A newly executed oath or declaration will continue to be required in a continuation or divisional application naming an inventor not named in the prior application, or a continuation-in-part application. Section 1.60 is now unnecessary due to: (1) The rule change to Sec. 1.4(d), (2) the proposed addition of Sec. 1.53(b)(1)(i) to expressly permit the filing of either a newly executed oath or declaration, or a copy of the executed oath or declaration filed to complete pursuant to Sec. 1.51(a)(1) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a continuation or divisional application, (3) the proposed addition of Sec. 1.53(b)(1)(i) to permit the filing of a continuation or divisional application by all or by less than all the inventors [[Page 49828]] named in a prior application, using a copy of the executed oath or declaration filed to complete the prior application, and (4) the proposed addition of Sec. 1.53(b)(3) to permit the filing of a continued prosecution application. A new application containing a copy of an oath or declaration under Sec. 1.63 referring to an attached specification is indistinguishable from a continuation or divisional application containing a copy of an oath or declaration from a prior application submitted pursuant to Sec. 1.53(b)(1)(i), as proposed. Unless an application is submitted with a statement that the application is a continuation or divisional application (Sec. 1.78(a)(2)), the Office will process such a new application without requiring a new oath or declaration. Applicants are advised to clearly designate any continuation or divisional application as such to avoid the issuance of a filing receipt that does not indicate that the application is a continuation or division. Section 1.62 is proposed to be removed and reserved. In the proposed rulemaking entitled ``Changes to Implement 18-Month Publication of Patent Applications'' (18-Month Publication Notice of Proposed Rulemaking) published in the Federal Register at 60 FR 42352 (August 15, 1995), and in the Patent and Trademark Office Official Gazette at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995), Sec. 1.62(e) was proposed to be amended to require a substitute specification in compliance with Sec. 1.125 and drawings where the application filed under Sec. 1.62 is a continuation-in-part application. The 18-Month Publication Notice of Proposed Rulemaking proposed to digital image and/or optical character recognition (OCR) scan application material into an electronic data base, which data base would be used to publish the application (e.g., for producing copies of the technical contents of the application-as-filed). The 18-Month Publication Notice of Proposed Rulemaking indicated that as applications filed prior to the implementation of 18-month publication will not have been image- or OCR-scanned into the electronic data base, the technical contents of an application filed under Sec. 1.62 in which the prior application was itself filed prior to the implementation of 18-month publication will not be contained in the electronic data base. The solution proposed in the 18-Month Publication Notice of Proposed Rulemaking was for the Office to obtain the microfiche copy of the prior application for applications under Sec. 1.62 which do not add additional disclosure (i.e., continuation or divisional applications) and image or OCR scan it into the electronic data base, and to amend Sec. 1.62 to provide that, where the application adds additional disclosure (i.e., is a continuation-in-part application), a substitute specification in compliance with Sec. 1.125 and drawings will be required. The proposal in the 18-Month Publication Notice of Proposed Rulemaking to obtain the microfiche copy of prior continuation or divisional applications is now considered unfeasible. A number of applications filed under Sec. 1.62 derive from a chain of applications filed under Sec. 1.62. The information pertaining to such an application's chain of prior applications contained within the Patent Application Location and Monitoring (PALM) system is not sufficiently comprehensive to readily and reliably indicate the prior application that contains a specification and drawings, and is not sufficiently reliable to avoid the occasional inclusion of an unrelated application in the chain of prior applications. This could result in the inadvertent publication of the specification and drawings of the wrong application. In addition, the microfiche copy of the prior application may be a microfiche of sheets of specification and/or drawings on 8\1/2\ by 14- inch paper, which paper size is not technically useable by the equipment which will be employed for pre-grant publication of patent applications. Attempts to reduce such sheets of specification and/or drawings to a paper size processible by pre-grant publication equipment results in electronic files which contain illegible text and figures. Moreover, the microfilming process under pre-grant publication differs from the previous microfilming process, and as such, the microfiche copy of such a prior application is sufficiently dissimilar from the microfiche copy of an application under pre-grant publication that it causes accurate technical date capture difficulties. In the event that legislation mandating the 18-month publication of patent application is enacted, it will be necessary to require a substitute specification in compliance with Sec. 1.125 and drawings including any changes to the prior application during the prosecution of the prior application or pursuant to Sec. 1.62(e) to continue Sec. 1.62 practice. Section 1.62 is now unnecessary due to: (1) The rule change to Sec. 1.4(d), (2) the proposed change to Sec. 1.53(b)(1) to expressly permit the filing of either a newly executed oath or declaration, or a copy of the executed oath or declaration filed to complete pursuant to Sec. 1.51(a)(1) the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a continuation or divisional application, (3) the proposed change to Sec. 1.53(b)(1) to permit the filing of a continuation or divisional application by all or by less than all the inventors named in a prior application, using a copy of the executed oath or declaration filed to complete the prior application, and (4) the proposed addition of Sec. 1.53(b)(3) to permit the filing of a continued prosecution application. The Office currently receives a number of petitions requesting that an application filed under Secs. 1.60 and 1.62 be accepted even though at the time of filing of the application, the application did not comply with all the requirements of Secs. 1.60 or 1.62 due to inadvertent error on the part of the applicant. The examination of these improper applications under Secs. 1.60 and 1.62 is delayed until a petition to accept the application is filed and granted. The large majority of the applications filed under Sec. 1.60, however, complied at the time of filing with the requirements of Sec. 1.53(b)(1), and the copy of the oath or declaration from the prior application is now acceptable as the oath or declaration for the application, regardless of whether the application is an application under Sec. 1.53 or Sec. 1.60. The removal of Sec. 1.60 and simplification of Sec. 1.62 will reduce the number of these types of petitions and will simplify the procedures for filing an application for both the Office and patent practitioners. It is anticipated that, subsequent to the removal of Secs. 1.60 and 1.62, applications purporting to be applications filed under Secs. 1.60 or 1.62 will be filed until the deletion of Secs. 1.60 and 1.62 become well known among patent practitioners. Applications purporting to be an application filed under Sec. 1.60 will simply be treated as a new application filed under Sec. 1.53 (i.e., the reference to Sec. 1.60 will simply be ignored). Applications purporting to be an application filed under Sec. 1.62 will be treated as continued prosecution applications under Sec. 1.53(b)(3), and those applications that do not meet the requirements of Sec. 1.53(b)(3) (e.g., continuation-in-part applications or continuations or divisional of applications filed before June 8, 1995) will be treated as improper continued prosecution applications under Sec. 1.53(b)(3). Such improper applications under Sec. 1.53(b)(3) may be corrected by [[Page 49829]] way of petition under Sec. 1.53(b)(c) (and $130 fee pursuant to Sec. 1.17(i)). Such a Sec. 1.53(c) petition in a continuation or divisional application will be granted on the condition that the applicant file: (1) The $130 petition fee, and (2) a true copy of the complete application designated as the prior application in the purported Sec. 1.62 application papers as filed, or, if the prior application was an application filed under Sec. 1.62, a true copy of its most immediate parent application which contained a specification and drawings as filed. Such a Sec. 1.53(c) petition in a continuation-in-part application will be granted on condition that the applicant file: (1) The $130 petition fee, and (2) a true copy of the complete application designated as the prior application in the purported Sec. 1.62 application papers as filed, or, if the prior application was an application filed under Sec. 1.62, a true copy of its most immediate parent application which contained a specification and drawings as filed, and any amendments submitted during the prosecution of the prior application. Section 1.63(a)(3) is proposed to be amended by requiring the post office address to appear in the oath or declaration and having the requirement from Sec. 1.41(a) for the full names of the inventors placed therein. Section 1.69, paragraph (b), would be amended to remove the requirement that the translation be verified in accordance with the proposed change to Sec. 1.4(d)(2). Paragraph (b) of this section is also being amended to clarify the need for a statement that the translation being offered is an accurate translation, as is proposed for Sec. 1.52, paragraph (a) and (d). Section 1.78(a)(1)(ii), as proposed, would remove the references to Secs. 1.60 and 62 in view of the proposed deletion of Secs. 1.60 and 62. Section 1.84, paragraph (b), is proposed to be amended by removing references to the filing of black and white photographs in design applications as unnecessary in view of the reference in Sec. 1.152 to Sec. 1.84(b). Section 1.91 is proposed to be amended for clarification purposes by additionally reciting ``Exhibits'' as well as models. The section is proposed to be amended to state that a model, working model or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application. This language is moved from Sec. 1.92. Section 1.92 is proposed to be removed and reserved and the language, as stated above, transferred to Sec. 1.91 for improved contextual purposes. Section 1.97 (c) through (e) are proposed to be amended by replacement of ``certification'' by ``statement,'' see comments relating to Sec. 1.4(d), and by clarifying the current use of ``statement'' by the terms ``information disclosure.'' Section 1.97(e)(2) is further amended to replace ``or'' by ``and'' to require that: No item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application and that no item of information contained in the information disclosure statement to the knowledge of the person signing the statement, after making reasonable inquiry, was known to any individual designated in Sec. 1.56(c) more than three months prior to the filing of the information disclosure statement. The use of ``and'' rather than ``or'' is in keeping with the intent of the rule as expressed in the MPEP 609, page 600-91, that the conjunction be conjunctive rather than disjunctive. The mere absence of an item of information from a foreign patent office communication was clearly not intended to represent an opportunity to delay the submission of the item when known more than three months prior to the filing of an information disclosure statement to an individual having a duty of disclosure under Sec. 1.56. Section 1.101 is proposed to be removed and reserved as relating to internal Office instructions. Section 1.102, paragraph (a), would be amended to remove the requirement that the showing be verified in accordance with the proposed change to Sec. 1.4(d)(2). Section 1.103, paragraph (a), would be amended by replacement of ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.104 is proposed to be removed and reserved as relating to internal Office instructions (the material of paragraph (c) would be present in the MPEP). Section 1.105 is proposed to be removed and reserved as relating to internal Office instructions. Section 1.108 is proposed to be removed and reserved as relating to internal Office instructions. Section 1.111(b) is proposed to be amended to explicitly recognize that a reply must be reduced to a writing which must point out the specific distinctions believed to render the claims, including any newly presented claims, patentable. It is noted that an examiner's amendment reducing a telephone interview to writing would comply with Sec. 1.2. In Sec. 1.112 it is proposed to remove as being unnecessary the statement that ``any amendments after a second Office action must ordinarily be restricted to the rejection, objections or requirements made in the office action'' to reflect actual practice wherein an unrestricted right of entry exists prior to a final rejection and that an application or patent under reexamination be considered repeatedly unless a final action is rendered. It is proposed to amend the section for clarification purposes by addition of a reference to reconsideration ``before final action.'' Section 1.113(a), as proposed, would add ``by the examiner'' after ``examination or consideration,'' change ``objections to form'' to ``objections as to form'' for clarity, and would replace ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.113(b), as proposed, would change ``clearly stating the reasons therefor'' to ``clearly stating the reasons in support thereof'' for clarity. A new Sec. 1.113(c) would be added to provide that the first action in an application will not be made final. See comments to Secs. 1.116 and 1.191. Section 1.115 is proposed to be replaced by new Sec. 1.115 that would contain material to be deleted from Secs. 1.117 through 1.119, 1.123 and 1.124. No change in substance is contemplated with the material of deleted sections being rearranged and edited for clarity and contextual purposes in the new section. The reference to ``application'' is intended to include reissue applications. Section 1.116(a), as proposed, would limit amendments after a final rejection or other final action (Sec. 1.113) to those amendments cancelling claims or complying with any requirement of form set forth in a previous Office action, and would replace the phrase ``any proceedings relative thereto'' with ``any related proceedings'' for clarity. Section 1.116(b), as proposed, would provide that any amendment not in compliance with Sec. 1.116(a) must be submitted with a request for an application under Sec. 1.53(b)(3) to ensure consideration of the amendment. Under Sec. 1.116, as proposed, amendments after final rejection or other final action would be limited to cancelling claims or complying with any requirement of form expressly set forth in a previous Office action. Currently, amendments after final which concern the merits of an application may, upon a showing of good and sufficient reasons why they are necessary and were not earlier presented, be entered and amendments after final which present rejected claims [[Page 49830]] in better form for consideration on appeal may be entered. This procedure causes delays in the ultimate issuance of the application as a patent, since applicants will await a ruling on whether such amendment will be entered prior to deciding whether to obtain the entry of such amendment through the filing of a continuing application. In addition, the expedited handling of numerous amendments after final, and the expedited consideration of whether there is an adequate showing of good and sufficient reasons why an amendment after final concerning the merits of an application is necessary and not earlier presented, or whether an amendment after final presents rejected claims in better form for consideration on appeal, places a significant burden on Office resources. Section 1.113(c), as proposed, would eliminate first action final practice, and, as such, would eliminate the necessity to submit an amendment after final simply to avoid a first action final in a continuing application. In view of this safeguard, and the delay and burden of the current practice for the treatment of amendments after final, Sec. 1.116 is proposed to be amended to limit those amendments that may be presented as a matter of right after a final rejection or other final action. Put simply, the proposed elimination of first action final practice by the Office is the quid pro quo for the proposed strict limitation of after final practice. Persons submitting comments objecting to this proposed limitation of after final practice should frame such comments in the context that the proposed elimination of first action final practice by the Office is coupled to the proposed limitation of after final practice. Section 1.116, as proposed, would not affect the authority of an examiner to enter in an application under final an amendment that places the application in condition for allowance, but does not strictly meet the requirements of Sec. 1.116(a). That is, in instances in which the applicant and examiner agree on an amendment that would place the application in condition for allowance, the examiner would retain the authority to enter the amendment, notwithstanding the requirements of Sec. 1.116(a). Where, however, the applicant and the examiner do not agree on whether an amendment would place an application in condition for allowance, and the amendment does not meet the requirements of Sec. 1.116(a), the applicant could not require the examiner to consider the amendment as a matter of right. Section 1.117 is proposed to be removed and reserved as the subject matter was transferred to proposed Sec. 1.115. Section 1.118 is proposed to be removed and reserved and its subject matter transferred to proposed Sec. 1.115. Section 1.119 is proposed to be removed and reserved and its subject matter transferred to proposed Sec. 1.115. Section 1.121 paragraphs (a) through (f) are proposed to be replaced with paragraphs (a) through (c), which separately treat amendments in non-reissue applications (paragraph (a)), amendments in reissue applications (paragraph (b)) and amendments in reexamination proceedings (paragraph (c)). Paragraphs (a) and (b) each separately treat amendment of the specification (paragraphs (a)(1) and (b)(1)) and of the claims (paragraphs (a)(2) and (b)(2)). In comparing amendment practice to the specificat'ion for non-reissue and reissue applications: When making an amendment to the specification of a non- reissue application a copy of all previous amendments would not be required, whereas for reissue applications a copy of all previous amendments to the patent specification would be required. In comparing amendment practice to the claims for non-reissue and reissue applications: When making an amendment to the claims of a non-reissue application or when new claims are added, a copy of all pending claims, including original claims that have never been amended, would be required, whereas for reissue applications a copy of only claims that are being amended or added would be required. Paragraph (a) of Sec. 1.121 would relate to amendments in non- reissue applications and retains a reference to Sec. 1.52. Paragraph (a)(1) would relate to the manner of making amendments in the specification other than in the claims. Paragraph (a)(1)(i) would require the precise point to be indicated where an amendment is made. Paragraph (a)(1)(ii) would allow amendments that are deletions only to be done by a direction to cancel rather than presenting the sentence(s), paragraph(s) and/or page(s) with brackets. This should be compared to cancellation of material from the patent specification in a reissue application (paragraph (b)((1)((ii)) or in a reexamination proceedings (Sec. 1.530(d)(1)(ii)--by way of a copy of the rewritten material). Paragraph (a)(1)(iii) would require all other amendments, such as additions or deletions mixed with additions, to be made by submission of a copy of the rewritten sentence(s), paragraph(s) and/or page(s) to permit the examiner to more readily recognize the changes that are being made. Current practice does not require the marking of an amendment to the specification in non-reissue applications. A change in one sentence, paragraph or page that results in only format changes to other pages not being amended are not to be submitted. Paragraph (a)(1)(iv) would identify the type of markings required by paragraph (a)(1)(iii), single underlining for added material and single brackets for material deleted. The marking would also be required to be applied in reference to the material as previously rewritten and not as originally presented if that differed from the previous presentation. Paragraph (a)(2) of Sec. 1.121 would relate to the manner of making amendments in the claims of a non-reissue application. Paragraph (a)(2)(i)(A) would permit cancellation of a claim by a direction to do so or by simply omitting a copy of the claim when a complete copy of all pending claims are presented pursuant to paragraph (a)(2)(ii) of this section. Paragraph (a)(2)(i)(B) would permit amendment of a previously submitted claim, other than mere cancellation by submission of a copy of the claim completely rewritten with markings pursuant to paragraph (a)(2)(iii) of this section rather than continuing to permit requests that the Office hand-enter changes of five or less words, Sec. 1.121(c)(2). Such rewriting would be construed as a direction that the rewritten claim be a replacement for the previously submitted claim. Paragraph (a)(2)(i)(C) sets forth that a new claim may only be added by the submission of a clean copy of the new claim. Paragraph (a)(2)(ii) of Sec. 1.121 would require that when a previously submitted claim is amended, or when a new claim is added, applicant must submit a separate copy of all pending claims to include all newly rewritten claims, all newly added claims, all previously rewritten claims that are still pending and any unamended claims that are still pending. This would enable the examiner to more quickly identify the claims that must be reviewed for the next Office action and would enable the printer to have a current version of the allowed claims for printing should the application be allowed. Compare with amendment of claims in reissue applications wherein only a copy of an amended patent claim or added claim is required, paragraph (b)(2)(i)(A) of this section, but not of previous claims (patent and added claims) that are not currently being amended. Current practice does not require a complete copy of all pending claims but only those claims being amended or added. [[Page 49831]] Paragraph (a)(2)(iii) of Sec. 1.121 would identify the type of marking required by paragraph (a)(2)(i)(B), single underlining for added material and single brackets for material deleted. Paragraph (a)(2)(iv) of Sec. 1.121 would provide that the failure to submit a copy of any previously submitted claim would be construed as a direction to cancel that claim. Paragraph (a)(3) of Sec. 1.121 would clarify that amendments to the original application drawings for non-reissue applications are not permitted and are to be made by way of a substitute sheet for each original drawing sheet that is to be amended. Paragraph (a)(4) of Sec. 1.121 would require that any amendment presented in a substitute specification must be presented under the provision of this section either prior to or concurrent with the submission of the substitute specification. Paragraph (b) of Sec. 1.121 would apply to amendments in reissue applications. Paragraph (b)(1) of Sec. 1.121 would relate to the manner of making amendments to the specification other than in the claims in reissue applications. Paragraph (b)(1)(i) would require the precise point to be indicated where an amendment is made. Paragraph (b)(1)(ii) would require that all amendments including deletions be made by submission of a copy of the rewritten paragraph(s) with markings. A change in one sentence, paragraph or page that results in only format changes to other pages not being amended are not to be submitted. Compare to amendments to the specification other than in the claims of non-reissue applications wherein deletions are permitted, paragraph (a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that each amendment to the specification must include all amendments to the specification relative to the patent as of the date of the submission. Compare to amendments to the specification other than claims in nonreissue applications wherein previous amendments to the specification are not required to accompany the current amendment to the specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would define the marking set forth in paragraph (b)(1)(ii) of section. Paragraph (b)(2) of Sec. 1.121 would relate to the manner of making amendments to the claims in reissue applications. Paragraph (b)(2)(i)(A) of Sec. 1.121 would require the entire text of each patent claim that is being amended and of each added claim rather than continuing to permit requests that the Office hand-enter changes of five or less words, Sec. 1.121(c)(2), but not of all pending claims, such as patent claims that have not been amended. Compare paragraph (a)(2)((ii). Additionally, provision would be made for the cancellation of a patent claim by a direction to cancel without the need for marking by brackets. Paragraph (b)(2)(i)(B) would require that patent claims not be renumbered. Paragraph (b)(2)(i)(C) would identify the type of marking required by paragraph (b)(2)(i)(A), single underlining for added material and single brackets for material deleted. Paragraph (b)(2)(ii) of Sec. 1.121 would require that each amendment submission set forth the status of all patent claims and all added claims as of the date of the submission, as not all claims (non- amended claims) are to be presented with each submission, paragraph (b)(2)(iv). The absence of submission of the claim status would result in an incomplete response, 35 U.S.C. 135. Paragraph (b)(2)(iii) of Sec. 1.121 would require that each claim amendment be accompanied by an explanation of the support in the disclosure of the patent for the amendment. The absence of an explanation would result in an incomplete response, 35 U.S.C. 135. Paragraph (b)(2)(iv) of Sec. 1.121 would require that each submission of an amendment to any claim (patent claim or added claim) requires copies of all amendments to the claims as of the date of the submission. A copy of a previous amendment would not meet the requirement of this section in that all amendments must be represented, as only the last amendment will be used for printing. Paragraph (b)(2)(v) of Sec. 1.121 would provide that the failure to submit a copy of any added claim would be construed as a direction to cancel that claim. Paragraph (b)(2)(vi) of Sec. 1.121 would clarify that: (1) No reissue patent would be granted enlarging the scope of the claims unless applied for within two years from the grant of the original patent (additional broadening outside the two-year limit is appropriate as long as some broadening occurred within the two-year period), and (2) no amendment may introduce new matter or be made in an expired patent. Paragraph (b)(3) of Sec. 1.121 clarify that amendments to the patent drawings are not permitted and that any change must be by way of a new sheet of drawings with the amended figures being identified as ``amended'' and with added figures identified as ``new'' for each sheet that has changed. Paragraph (c) of Sec. 1.121 would clarify that amendments in reexamination proceedings are to be made in accordance with Sec. 1.530. Section 1.121 as applied both to non-reissue and reissue applications does not provide for replacement pages whereby a new page would be physically substituted for a currently existing page. However, an applicant can direct that Page ______ be cancelled and the following inserted in its place. The wide availability of word processing should enable applicants to more easily submit updated material providing greater accuracy and thereby eliminating the need for the Office to hand-enter amendments. To that end, Sec. 1.125 is proposed to be amended to provide that a substitute specification may be submitted at any point up to payment of the issue fee as a matter of right. The proposed changes to Sec. 1.121 relate in part to the method of presenting amendments in reissue and reexamination proceedings, that would more closely parallel each other. The Office seeks guidance on the usefulness of bringing reissue and reexamination proceedings in closer harmony. Currently, both practitioners and Office personnel must retain a working knowledge of these infrequently used but vital avenues for review of an issued patent. The Office has identified the following areas for possible harmonization and would like comments as to the appropriateness of these areas, identification of other suitable areas for consideration and specific means to achieve harmonization in the identified areas, e.g., whether a concept or practice in one area should be applied to the other area or a new practice for both should be started: --Procedures for amending claims and the specification, Sec. 1.121 --To utilize a reissue certificate (similar to a reexamination certificate) attached to a copy of the original patent as the reissued patent. This procedure would eliminate the need to reprint the entire reissued patent. --Whether the special dispatch provisions of re-examination should be applied to reissue applications. Section 1.122 is proposed to be removed and reserved as representing internal Office instruction. Section 1.123 is proposed to be removed and reserved and its subject matter transferred to proposed Sec. 1.115 for better context. Section 1.124 is proposed to be removed and reserved and its subject matter transferred to proposed Sec. 1.115 for better context. Section 1.125 is proposed to be amended by addition of paragraphs (a) [[Page 49832]] through (d). Paragraph (a) would retain the current practice that a substitute specification may be required by the examiner and would be clarified to note that if the legibility of the application papers shall render it difficult to consider the case, the Office may require a substitute specification. Paragraph (b) of Sec. 1.125 would provide for the right of filing a substitute specification in an application other than a reissue application, at any point up to payment of the issue fee, if it is accompanied by a statement that the substitute specification includes no new matter and does not introduce any amendments unless they have been submitted in accordance with the requirements of Sec. 1.121(a) either prior to or concurrent with the submission of the substitute specification. In view of the proposed continued prosecution application under Sec. 1.53(b)(3) and the need to submit sentence, paragraph, and/or page changes under Sec. 1.121(a), liberalization of the substitute specification requirements is desirable. The requirement for a lack of new matter statement being verified would be deleted. See comments to Sec. 1.4(d). Paragraph (c) of Sec. 1.125 would clarify that a substitute specification is to be submitted without markings as to amended material. Paragraph (d) of Sec. 1.125 would not permit a substitute specification in reissue or reexamination proceedings as markings for changes from the patent are required therein. Section 1.133, paragraph (b), would be amended by replacement of ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.134 would be amended by replacement of ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.135, paragraphs (a) and (c), would be amended by replacement of ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Paragraph (b) is proposed to be amended to clarify that the admission of or refusal to admit any amendment after final rejection, and not just an amendment not responsive to the last Office action, shall not operate to save the application from abandonment. Section 1.135, paragraph (c), is proposed to be amended to provide that a new ``time period'' under Sec. 1.134 may be given if a reply to a non-final Office action is substantially complete but consideration of some matter or compliance with some requirement has been inadvertently omitted. This would replace the current practice whereby applicant may be given an opportunity to supply the omission through the setting of a ``time limit'' of one month that is not currently extendable. Generally, a new one month shortened statutory time period would be utilized enabling an applicant to petition for extensions of time under Sec. 1.136(a). Where 35 U.S.C. 133 requires a period longer than one month, i.e., actions mailed in the month of February, a shortened statutory period of 30 days will be set. The setting of a time period for reply under Sec. 1.134 rather than a time limit would result in the date of abandonment (when no further reply is filed) being the expiration of the new time period rather than, at present, the date of expiration of the period of reply set in the original Office action for which an incomplete reply was filed. Thus, the proposed amendment to paragraph (c) of Sec. 1.135 would permit the refiling of a continuing application as an alternative to completing the reply, whereas the current rule only permits an applicant to complete the reply that was held to be incomplete. Section 1.135, paragraph (c), is also proposed to be amended to remove an unnecessary reference to consideration of the question of abandonment and to clarify that the reply for which applicant may be given a new time period to reply to must be a ``non-final'' Office action. Section 1.136, paragraph (a)(1), is proposed to be amended to recite the availability of a maximum of five (5) rather than four (4) months as an extension of time when only a one (1) month or 30 day shortened statutory period or a non-statutory period for reply is set. Paragraph (a)(1) is would also be amended by replacement of ``respond'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.136, paragraph (a)(2), would be amended by replacement of ``respond'' with ``reply'' in accordance with the proposed change to Sec. 1.111 and other clarification changes. Section 1.136 is proposed to be amended by addition of paragraph (a)(3) that would now provide for the filing in an application a general authorization to treat any reply requiring a petition for an extension of time for its timely submission as containing a request therefor for the appropriate length of time. The authorization may be filed at any time prior to or with the submission of a reply that would require an extension of time for its timely submission, including submission with the application papers. Currently, the mere presence of a general authorization, submitted prior to or with a reply requiring an extension of time, to charge all required fees does not amount to a petition for an extension of time for that reply (MPEP 201.06 and 714.17) and under the proposed amended rule the submission of a reply requiring an extension of time for its timely submission would not be treated as an inherent petition for an extension of time absent an authorization for all necessary extensions of time. The Office will continue to treat all petitions for an extension of time as requesting the appropriate extension period notwithstanding an inadvertent reference to a shorter period for extension and will liberally interpret comparable papers as petitions for an extension of time. Applicants are advised to file general authorizations for payment of fees and petitions for extensions of times as separate papers rather than as sentences buried in papers directed to other matters (such as an application transmittal letter). The use of individual papers directed only to an extension of time or to a general authorization for payment of fees would permit the Office to more readily identify the presence of such items and list them individually on the application file jacket thereby providing ready future identification of these authorizations. Clarifying language is proposed for Sec. 1.136(a)(3) to reflect current practice that general authorizations to charge fees are effective to meet the requirement for the extension of time fee for responses filed concurrent or subsequent to the authorization. However, a general authorization to charge additional fees does not represent a petition for an extension of time, which petition must be separately requested. Section 1.137 is proposed to be amended by moving language presently codified, elsewhere to, inter alia, incorporate revival of abandoned applications and lapsed patents for the failure: (1) To timely reply to an Office requirement in a provisional application (Sec. 1.139), (2) to timely pay the issue fee for a design application (Sec. 1.155 paragraphs (b)-(f)), (3) to timely pay the issue fee for a utility or plant application (Sec. 1.316 paragraphs (b)-(f)), or to timely pay the full amount of the issue fee (Sec. 1.317 paragraphs (b)- (f)) (lapsed patents). Cites in parentheses reference where subject matter is contained in current rules. Section 1.137(a), as proposed, would further move into paragraph (a)(3) the requirement that a petition thereunder be ``promptly filed after the applicant is notified of, or otherwise becomes aware of, the abandonment.'' 35 U.S.C. 133 requires that ``it be shown * * * that such delay was unavoidable.'' This [[Page 49833]] requirement is regarded as requiring not only a showing that the delay which resulted in the abandonment of the application was unavoidable, but also a showing of unavoidable delay from the time an applicant becomes aware of the abandonment of the application until the filing of a petition to revive. See In re Application of Takao 17 USPQ2d 1155 (Comm'r Pat. 1990). The burden of continuing the process of presenting a grantable petition in a timely manner likewise remains with the applicant until the applicant is informed that the petition is granted. Id. An applicant seeking to revive an ``unavoidably'' abandoned application is expected to cause a petition under Sec. 1.137(a) to be filed without delay (i.e., promptly upon becoming notified, or otherwise becoming aware, of the abandonment of the application). As such, the placement of the requirement that a petition pursuant to Sec. 1.137(a) be filed promptly upon becoming notified, or otherwise becoming aware, of the abandonment of the application is appropriately located in paragraph (a)(3), since Sec. 1.137(a)(3) includes the requirement for a showing of unavoidable delay. The requirement that an applicant seeking to revive an application as ``unavoidably'' abandoned ``promptly'' file a petition under Sec. 1.137 is regarded as a requirement that a petition pursuant to Sec. 1.137(a) be filed without delay upon the applicant or his or her representative being notified of, or otherwise becoming aware of, the abandonment. Thus, under the current and proposed practice, the failure to file a petition under Sec. 1.137(a) within three months of the date the applicant or his or her representative is notified of, or otherwise becomes aware of, the abandonment would generally be regarded as a failure to ``promptly'' file a petition pursuant to Sec. 1.137. Providing a time period based upon the date of abandonment during which a petition pursuant to Sec. 1.137(b) must be filed to be timely, but providing no comparable time period within which a petition pursuant to Sec. 1.137(a) must be filed to be timely, results in the misapplication of Sec. 1.137 on the part of practitioners, which in turn results in an inordinate administrative burden to the Office. The Office is proposing to either: (1) Eliminate the time period requirement for filing a petition pursuant to Sec. 1.137(b), or (2) provide comparable time period requirements for filing either a petition pursuant to Sec. 1.137(a) and/or Sec. 1.137(b), which time period will be based upon the date of the first Office notification that the application had become abandoned or that the patent had lapsed. Interested persons are advised to comment on each of these proposals, since, depending upon further consideration by the Office and the comments received in response to this notice of proposed rulemaking, either proposal may be adopted in the final rule. Providing the period of ``within one year of the date on which the application became abandoned'' as the period during which a petition under Sec. 1.137(b) may be timely filed has had the undesirable effect of inducing applicants, or their representatives, to delay the filing of a petition under Sec. 1.137(b) until the end of this one year period. This deliberate delay in filing a petition under Sec. 1.137(b), or use of this one year period as an extension of time, is considered an abuse of Sec. 1.137(b). See In re Application of S., 8 USPQ2d 1630, 1632 (Comm'r Pats 1988). In addition, Sec. 1.137(b) was recently amended to require that any petition thereunder include a statement that the delay (i.e., the entire delay), and not merely the abandonment, was unintentional. See Final Rule, ``Changes in Procedures for Revival of Patent Applications and Reinstatement of Patents,'' published in the Federal Register at 58 FR 44277 (August 20, 1993) and in the Patent and Trademark Office Official Gazette at 1154 Off. Gaz. Pat Office 4 (September 14, 1993). As such, any intentional delay in filing a petition under Sec. 1.137(b) is prohibited by the current terms of the rule. Under current rules, in instances in which an applicant, or his or her representative, intentionally delays the filing of a petition under Sec. 1.137(b) until the end of this one year period, but files a petition under Sec. 1.137(b) within this one year period, the petition is timely under Sec. 1.137(b)(4), but the statement that ``the delay was unintentional'' is not appropriate. In instances in which the filing of a petition under Sec. 1.137(b) is intentionally delayed until the end of this one year period, and the applicant, or his or her representative, miscalculates the actual date of abandonment, or otherwise misdockets the end of this one year period, the statement that ``the delay was unintentional'' is likewise not appropriate, but the petition is also barred by the terms of the rule. In addition, subsequent petitions under Sec. 1.137(a) are, regardless of the original cause of the abandonment, barred due to the applicant's failure to cause a petition under Sec. 1.137(a) to be ``promptly filed after the applicant is notified of, or otherwise becomes aware of, the abandonment.'' See Application of S., 8 USPQ2d at 1632. Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable (e.g., that a rejection in an Office action cannot be overcome), or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered a deliberately chosen course of action, and the resulting delay cannot be considered ``unintentional'' within the meaning of 37 CFR 1.137(b). See In re Application of G., 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989). Likewise, where the applicant deliberately chooses not to either seek or persist in seeking the revival of an abandoned application, the resulting delay in seeking revival of the application cannot be considered ``unintentional'' within the meaning of 37 CFR 1.137. The correctness or propriety of the rejection, or other objection, requirement, or decision, by the Office, the appropriateness of the applicant's decision to abandon the application or to not seek or persist in seeking revival, or the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival, are immaterial to such intentional delay caused by the deliberate course of action chosen by the applicant. The intentional abandonment of an application, or an intentional delay in seeking either the withdrawal of a holding of abandonment in or the revival of an abandoned application, precludes a finding of unavoidable or unintentional delay pursuant to Sec. 1.137. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988). Proposed Elimination of the Time Period Requirement for Filing a Petition Pursuant to Sec. 1.137(b) Under this proposal, an intentional delay in the filing of a petition under Sec. 1.137(b) will not result in an untimely petition pursuant to Sec. 1.137(b). The statement that ``the delay was unintentional,'' however, will continue to be inappropriate. That is, where there is an intentional delay in the filing of a petition under Sec. 1.137(b), the statement that ``the delay was unintentional'' will continue to be inappropriate (i.e., the applicant, or his or her representative cannot properly make this statement, and thus cannot properly request revival of the application), but Sec. 1.137(b) would no longer include an additional time period requirement. It is anticipated that the effects of prosecution delay due to abandonment on patent term under Public Law 103-465, and the proposed [[Page 49834]] changes to Sec. 1.137(c), will eliminate any incentive to intentionally delay the revival of an abandoned application. An applicant, assignee, or his or her representative, desiring the revival of an application that has inadvertently or unintentionally become abandoned is expected to act without intentional delay in seeking revival of the application. The Office does not question whether there has been an intentional or otherwise impermissible delay when a petition pursuant to Sec. 1.137 is filed within three months of the date the applicant is first notified by the Office that the application is abandoned. Where, however, there is a greater delay between the date the applicant is first notified by the Office that the application is abandoned and the filing of a petition pursuant to Sec. 1.137(b), the Office may raise the question as to whether the delay was unintentional, and may require more than a mere statement that the delay was unintentional. The Office may question whether the delay was unintentional in instances in which an applicant fails to timely seek reconsideration of a decision refusing to revive an abandoned application (see Sec. 1.137(d)). Regardless of whether the time period requirement in Sec. 1.137(b) is eliminated, applicants seeking revival of an abandoned application are advised to file a petition pursuant to Sec. 1.137 within three months of first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office or third parties seeking to challenge any patent issuing from the application. While this proposal would permit revival pursuant to Sec. 1.137(b) without regard to the period of abandonment, Sec. 1.137(a) currently permits revival pursuant thereto without regard to the period of abandonment. In addition, the Office currently entertains petitions pursuant to Sec. 1.183, albeit under strictly limited conditions, to waive the time period requirement in Sec. 1.137(b). Since an application may currently be revived pursuant to Sec. 1.137 without regard to the period of abandonment, any current reliance upon the period of abandonment to ensure that the application will never issue as a patent is misplaced. Thus, the proposed elimination of the time period requirement in Sec. 1.137(b) would not significantly decrease the relationship between the period of abandonment of an application and the likelihood that such application would ever issue as a patent. In the event that the proposed elimination of the time period requirement for filing a petition pursuant to Sec. 1.137(b) is adopted, public comment is also requested on the application of this rule change to applications that were abandoned prior to the effective date of this rule change. This provision could be made effective as to petitions filed on or after the effective date of the rule change, which would permit the revival pursuant to Sec. 1.137(b) of applications abandoned for extended periods of time, provided that the entire delay was unintentional. This provision could also be made effective as to applications abandoned on or after the effective date, with the provisions of current Sec. 1.137(b) being applied to applications abandoned prior to the effective date of the rule change. This provision could also be made effective as to applications abandoned within and/or having a petition to revive filed within a specified period preceding the effective date of the rule change. Proposed Comparable Time Period Requirements Each of Secs. 1.137 (a) and (b) Based Upon the Date of the First Office Notification That the Application Had Become Abandoned or That the Patent Had Lapsed The Office is also considering amending each of Secs. 1.137 (a) and (b) to include an express requirement that a petition thereunder be filed within a time certain. Specifically, the Office is also considering amending Sec. 1.137(a) to include the express requirement that a petition thereunder be filed within three months of the date of the first Office notification that the application had become abandoned or that the patent had lapsed and amending Sec. 1.137(b) to include the requirement that a petition thereunder be filed within three months of the date of the first Office notification that the application had become abandoned or that the patent had lapsed, or within three months of the date of the first decision on a timely petition pursuant to Sec. 1.137(a). The ``promptly filed'' requirement in Sec. 1.137(a) is the subject of various interpretations by applicants seeking revival pursuant to Sec. 1.137(a). To avoid misunderstandings as to the timeliness with which the Office expects an applicant seeking revival pursuant to Sec. 1.137(a) to file a petition thereunder, the Office is considering amending Sec. 1.137(a) to include the express requirement that a petition thereunder be filed within a time certain. Providing a period during which a timely petition pursuant to Sec. 1.137 (a) and/or (b) may be filed based upon the date of the first Office notification that the application had become abandoned or that the patent had lapsed, rather than the date of abandonment or patent lapse, is considered a better measure of timeliness. In addition, providing such a period will reduce uncertainty as to the expiration of the period during which a timely petition pursuant to Sec. 1.137(b), as well as Sec. 1.137(a), may be filed. Therefore, the Office is also considering basing the period during which a timely petition under Sec. 1.137 (b), as well as Sec. 1.137(a), may be filed on the date of notification of the abandonment, rather than the date of abandonment, and considers that a period of within three months of the date of the first Office notification that the application had become abandoned or that the patent had lapsed to be the appropriate period. Under the appropriate circumstances, petitions under Sec. 1.183 to waive any time period requirement in Secs. 1.137(a) and/or (b) would be available. Waiver of any requirement of Sec. 1.137 will, in accordance with Sec. 1.183, be strictly limited to an ``extraordinary situation'' in which ``justice requires'' such waiver. Section 1.137(a)(1), as proposed, would replace the phrase ``a proposed response to continue prosecution of that application, or the filing of a continuing application, unless either has been previously filed'' with ``accompanied by the required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the proposed reply requirement may be met by the filing of a continuing application. In an abandoned application or a lapsed patent, for failure to pay any portion of the required issue fee, the proposed reply must be the issue fee or any outstanding balance thereof.'' Section 1.137(b)(1), as proposed, would likewise replace the phrase ``Accompanied by a proposed response to continue prosecution of that application, or filing of a continuing application, unless either has been previously filed'' with ``accompanied by the required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the proposed reply requirement may be met by the filing of a continuing application. In an abandoned application or a lapsed patent, for failure to pay any portion of the required issue fee, the proposed reply must be the issue fee or any outstanding balance thereof.'' While the revival of applications abandoned for failure to timely prosecute and for failure to timely pay the issue fee are proposed to be incorporated together in Sec. 1.137, the statutory provisions for the revival of an application abandoned for failure to timely prosecute and for failure to [[Page 49835]] timely submit the issue fee are mutually exclusive. See Brenner v. Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied 393 U.S. 926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the acceptance of a delayed payment of the issue fee, if the issue fee ``is submitted * * * and the delay in payment is shown to have been unavoidable.'' 35 U.S.C. 41(a)(7) likewise authorizes the acceptance of an ``unintentionally delayed payment of the fee for issuing each patent.'' Thus, 35 U.S.C. 41(a)(7) and 151 each require payment of the issue fee as a condition of reviving an application abandoned or patent lapsed for failure to pay the issue fee. Therefore, the filing of a continuing application without payment of the issue fee or any outstanding balance thereof is not an acceptable proposed reply in an application abandoned or patent lapsed for failure to pay any portion of the required issue fee. The Notice of Allowance requires the timely payment of the issue fee in effect on the date of its mailing to avoid abandonment of the application. In instances in which there is an increase in the issue fee by the time of payment of the issue fee required in the Notice of Allowance, the Office will mail a notice requiring payment of the balance of the issue fee then in effect. The phrase ``for failure to pay any portion of the required issue fee'' applies to those instances in which the applicant fails to pay either the issue fee required in the Notice of Allowance or the balance of the issue fee required in a subsequent notice. In such instances, the proposed reply must be the issue fee then in effect, if no portion of the issue fee was previously submitted, or any outstanding balance of the issue fee then in effect, if a portion of the issue fee was previously submitted. These proposed changes to Secs. 1.137 (a)(1) and (b)(1) are necessary to incorporate into Sec. 1.137 the revival of abandoned applications and lapsed patents for the failure to timely reply to an Office requirement in a provisional application, to timely pay the issue fee, or to timely pay the full amount of the issue fee. Sections 1.137 (a) and (b), as proposed, would each include a new paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that any petition thereunder must be accompanied by any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) required pursuant to Sec. 1.137(c), to include in Secs. 1.137 (a) and (b) an explicit reference to the terminal disclaimer requirement in Sec. 1.137(c). Section 1.137(c), as proposed, would change the phrase ``any petition pursuant to paragraph (a) of this section'' to ``any petition pursuant to this section.'' As the period for the timely filing of a petition under Sec. 1.137(b) would no longer be based upon the period of abandonment, administrative convenience no longer justifies not requiring, for all design applications and all other nonprovisional utility applications filed prior to June 8, 1995, a terminal disclaimer under Sec. 1.137(c) for all petitions pursuant to Sec. 1.137. In addition, the phrase ``not filed within six months of the date of abandonment of the application'' is proposed to be removed from Sec. 1.137(c). The only justification for the current six month limitation on the terminal disclaimer requirement in Sec. 1.137(c) is administrative convenience in treating a petition pursuant to Sec. 1.137(a) filed within six months of the date of abandonment. Since the date of abandonment is miscalculated in a significant number of instances, this provision of Sec. 1.137(c) leads to errors in determining when a terminal disclaimer is required pursuant to Sec. 1.137(c), and thus leads to delays in continuing prosecution of the abandoned application. In any event, administrative convenience is no longer considered an adequate justification for the effective different treatment that would result by operation of Pub. L. 103-465 of: (1) Applications filed on or after June 8, 1995, except for design applications, and (2) applications filed prior to June 8, 1995 and all design applications. Section 1.137(d), as proposed, would change ``application'' to ``abandoned application or lapsed patent'' to incorporate into Sec. 1.137 the revival of lapsed patents. Section 1.137(e), as proposed, would provide that the time periods set forth in Sec. 1.137 may be extended under the provisions of Sec. 1.136. Section 1.137(f), as proposed, will expressly provide that a provisional application, abandoned for failure to timely reply to an Office requirement, may be revived pursuant to Sec. 1.137 (a) or (b) so as to be pending for a period of no longer than twelve months from its filing date. In accordance with 35 U.S.C. 111(b)(5), Sec. 1.137(f), as proposed, will clearly indicate that ``[u]nder no circumstances will a provisional application be regarded as pending after twelve months from its filing date.'' Sections 1.139 (a) and (b) each currently provide that a provisional application may be revived so as to be pending for a period of no longer than twelve months from its filing date, and that under no circumstances will a provisional application be regarded as pending after twelve months from its filing date. Section 1.139 is proposed to be removed and reserved and its subject matter added to Sec. 1.137. Section 1.142 would be amended by replacement of ``response'' with ``reply'' in accordance with the proposed change to Sec. 1.111. Section 1.144 is proposed to be amended for clarification purposes. Section 1.146 is proposed to be amended for clarification purposes. Section 1.152 is proposed to be amended by removing the prohibition against color drawings and color photographs in design applications. Section 1.152 would be amended to permit the use of color photographs and color drawings in design applications subject to the petition requirements of Sec. 1.84(a)(2) inasmuch as color may be an integral element of the ornamental design. While pen and ink drawings may be lined for color, a clear showing of the configuration of the design may be obscured by this drafting method. New technologies, such as holographic designs, fireworks and laser light displays may not be accurately disclosed without the use of color. The term ``article'' of Sec. 1.152 would be replaced by the term ``design'' as 35 U.S.C. 171 requires that the claim be directed to the ``design for an article'' not the article, per se. Therefore, to comply with the requirements of 35 U.S.C. 112, first paragraph, it is only necessary that the design as embodied in the article be fully disclosed and not the article itself. The term ``must'' would be replaced by the term ``should'' to allow for latitude in the illustration of articles whose configuration may be understood without surface shading. Clarification language would be added to note that the use of solid black surfaces would be permitted for representation of the color black as well as color contrast and that photographs and ink drawings must not be combined as formal drawings in one application. Section 1.154 paragraph (a) would be amended to clarify that a voluntary submission (see comments under Sec. 1.152 relating to substitution of ``design'' for ``article'') may and should be made of ``a brief description of the nature and intended use of the article in which the design is embodied.'' It is current practice for design examiners, in appropriate cases, to inquire as to the nature and intended use of the article in which a claimed design is embodied. The submission of such description will allow for a more accurate initial classification, and aid in providing a proper and complete search at the time of the first action on the merits. In those [[Page 49836]] instances where this feature description is necessary to establish a clear understanding of the article in which the design is embodied, provision of the feature description would help in reducing pendency by eliminating the necessity for time consuming correspondence. Specifically, requests for information prior to first action would be avoided. Absent an amendment requesting deletion of the description it would be printed on any patent that would issue. Sections 1.155 (b) through (f) are proposed to be removed in view of the proposed amendments to Sec. 1.137. Section 1.163 is proposed to be amended to remove an unnecessary and outmoded reference to a ``legible carbon copy of the original'' specification for plant applications. Section 1.165 is proposed to be amended by removing a reference to the artistic and competent execution of plant patent drawings which is unnecessary in view of the reference to Sec. 1.84. Section 1.167 is proposed to be amended by removing and reserving paragraph (b) as unnecessary in view of Sec. 1.132. Section 1.171 would no longer require an order for a title report in reissue applications as the requirement for a certification on behalf of all the assignees under concomitantly amended Sec. 1.172(a) obviates the need for a title report and fee therefor. Section 1.171 is also proposed to be amended by deletion of the requirement for an offer to surrender the patent, which offer is seen to be redundant in view of Sec. 1.178. Section 1.172 is proposed to be amended to require that all assignees establish their ownership interest by submission of evidence of the chain of title or by specifying where such evidence is recorded in the Office. Section 1.175 relating to the content of the reissue oath or declaration (MPEP 1414), as well as Secs. 1.48 and 1.324 relating to correction of inventorship in an application and in a patent, respectively, are proposed to be amended to remove the requirement for a showing of a lack of deceptive intent based on facts and circumstances. As the Office no longer investigates fraud and inequitable conduct issues and a reissue applicant's statement of a lack of deceptive intent is normally accepted on its face (See MPEP 1448), the current requirement in Sec. 1.175(a)(5) that it be shown how the error(s) being relied upon arose or occurred without deceptive intent on the part of the applicant appears to be unduly burdensome upon applicants and the Office, and is proposed to be deleted. This would apply to the initially identified error(s), under paragraph (a), and any subsequently identified error(s) under paragraph (b). An initial reissue oath or declaration would be required to be filed pursuant to Sec. 1.175(a) limited to identification of the cause(s) of the reissue, and stating generally that all errors being corrected in the reissue application at the time of filing of the oath or declaration arose without deceptive intent. The current practice under Sec. 1.175(a)(3) and (a)(5) of specifically identifying all errors being corrected at the time of filing the initial oath or declaration would not be retained. Paragraph (b)(1) of Sec. 1.175 would require a supplemental reissue oath or declaration for errors corrected that were not covered by an earlier presented reissue oath or declaration, such as the initial oath or declaration pursuant to paragraph (a) of this section or one submitted subsequent thereto (a supplemental oath or declaration under this paragraph), stating generally that all errors being corrected which are not covered b