Highlights of the 21 Topics in the Advance Notice of Proposed Rulemaking (ANPR) Changes to Implement the Patent Business Goals - October 5, 1998

1. Simplifying request for small entity status (37 CFR 1.27).

Summary: The PTO is considering simplifying applicant's request for small entity status. The currently used small entity statement forms would be eliminated as they would no longer be needed.

Specifics of Change being Considered: Small entity status would be established at any time by a simple assertion of entitlement to small entity status without the currently required formalistic reference to 37 CFR 1.9. Payment of the (exact) small entity basic filing fee would be considered an assertion of small entity status. To establish small entity status after payment of the basic filing fee, a written assertion of small entity status would be required to be submitted with or prior to a fee payment. There would be no change in the current requirement to make an investigation in order to determine entitlement to small entity status; the PTO would only be changing the ease with which small entity status can be claimed once it has been determined that a claim to such status is appropriate.

2. Requiring separate surcharges and supplying filing receipts (37 CFR 1.53).

Summary: The PTO is considering charging separate surcharges in a nonprovisional application for the delayed submission of an oath/declaration, and the application filing fee, and issuing another filing receipt, without charge, to correct any errors or to update filing information, as needed.

Specifics of Change Being Considered: The PTO would charge a separate surcharge (currently $130) for each missing part item that is submitted in a delayed manner. Thus, the delayed submission of both an oath/declaration under 37 CFR 1.63, and the payment of the basic filing fee in a nonprovisional application filed under 35 U.S.C. 111(a), would result in the imposition of two surcharges (totaling $260). The change under consideration would not apply to provisional applications filed under 35 U.S.C. 111(b) and 37 CFR 1.53(c). In addition, as the basic national fee must be submitted by the expiration of the applicable twenty- or thirty-month period in 35 U.S.C. 371(b) in a PCT application, the change under consideration would also be inapplicable to applications filed under the PCT.

While the PTO would be charging a separate surcharge for each missing part submitted in a delayed manner, the PTO would also be providing three new user-friendly services which were requested by, and would provide benefits that are desired by, our customers. The three new user-friendly services are: (1) issuing a corrected filing receipt without the fee presently required by 37 CFR 1.9(h) when an oath/declaration, and/or the payment of the application filing fee are submitted in a delayed manner; (2) issuing a corrected filing receipt without the fee presently required by 37 CFR 1.19(h), and without a question as to fault, for any error in the filing receipt; and (3) placing a copy of each filing receipt supplied to the applicant in the application file as evidence of issuance of the filing receipt.

3. Permitting delayed submission of an oath or declaration, and changing the time period for submission of the basic filing fee and English translation (37 CFR 1.52, 1.53).

Summary: The PTO is considering amending 37 CFR 1.53 to provide that an executed oath or declaration for a nonprovisional application would not be required until the expiration of a period that would be set in a "Notice of Allowability" (PTOL-37). The PTO is also considering amending 37 CFR 1.52 and 1.53 to provide that the basic filing fee and an English translation (if necessary) for a nonprovisional application must be submitted within one month (plus any extensions under 37 CFR 1.136) from the filing date of the application.

Specifics of Change Being Considered: The PTO is considering amending 37 CFR 1.53 to provide that an executed oath or declaration for a nonprovisional application would not be required until the applicant is notified that it must be submitted within a one-month period that would be set in a "Notice of Allowability," provided that the following are submitted within one month (plus any extensions under 37 CFR 1.136) from the filing date of the application: (1) the name(s), residence(s), and citizenship(s) of the person(s) believed to be the inventor(s); (2) all foreign priority claims; and (3) a statement submitted by a registered practitioner that: (a) an inventorship inquiry has been made, (b) the practitioner has sent a copy of the application (as filed) to each of the person(s) believed to be the inventor(s), (c) the practitioner believes that the inventorship of the application is as indicated by the practitioner, and (d) the practitioner has given the person(s) believed to be the inventor(s) notice of their obligations under 37 CFR 1.63(b). In addition, the PTO is considering requiring an applicant to file a continuing application to file an executed oath or declaration naming an inventorship different from that previously stated by the practitioner once prosecution in an application is closed.

The PTO is also considering amending 37 CFR 1.52 and 1.53 to provide, by rule, that the basic filing fee and an English translation (if the application was filed in a language other than English) for a nonprovisional application must be submitted within one month (plus any extensions under 37 CFR 1.136) from the filing date of the application. Applicants will not be given a notice (e.g., a "Notice To File Missing Parts" (PTO-1533)) that the basic filing fee is missing or insufficient, unless the application is filed with an insufficient basic filing fee that at least equals the basic filing fee that was in effect the previous fiscal year. Finally, the filing receipt will indicate the amount of filing fee received and remind applicants that the basic filing fee must be submitted within one month (plus any extensions under 37 CFR 1.136) from the filing date of the application.

These changes will permit the PTO to virtually eliminate the current practice of mailing notices (e.g., a "Notice To File Missing Parts") during the initial processing of a nonprovisional application to require submission of an oath or declaration, basic filing fee, or an English translation.

4. Limiting the number of claims in an application (37 CFR 1.75).

Summary: The PTO is considering a change to 37 CFR 1.75 to limit the number of total and independent claims that will be examined (at one time) in an application.

Specific Change Being Considered: The PTO is considering a change to the rules of practice to: (1) limit the number of total claims that will be examined (at one time) in an application to forty; and (2) limit the number of independent claims that will be examined (at one time) in an application to six. In the event that an applicant presented more than forty total claims or six independent claims for examination at one time, the PTO would withdraw the excess claims from consideration, and require the applicant to cancel the excess claims. This change would apply to all non-reissue utility applications filed on or after the effective date of the rule change, to all reissue utility applications in which the application for the original patent was subject to this change, and to national applications filed under 35 U.S.C. 111(a), as well as national applications that resulted from a PCT international application.

5. Harmonizing standards for patent drawings (37 CFR 1.84).

Summary: The PTO is considering harmonizing the requirements for patent drawings in 37 CFR 1.84 with the requirements for drawings in the Patent Cooperation Treaty (PCT).

Specifics of Change Being Considered: Amending 37 CFR 1.84 to be more similar to PCT Rule 11.13.

6. Printing patents in color (37 CFR 1.84).

Summary: The PTO is considering printing design and utility patents that have color drawings or color photographs in color, along with imposing a fee to cover the extra processing and publication costs.

Specifics of Change Being Considered: The PTO is considering deleting the current requirement for a petition (and $130 petition fee) to accept color drawings or photographs. The PTO is also considering printing in color design and utility patents with color drawings or color photographs, and charging a fee to recover the PTO's cost of processing and printing design and utility patents with such color drawings or color photographs. The cost to the public for ordering color copies would continue to be governed by 37 CFR 1.19(a)(2) (for plant patents) and 1.19(a)(3) (for utility patents).

7. Reducing time for filing corrected or formal drawings (37 CFR 1.85).

Summary: The PTO is considering reducing the time period for submitting corrected or formal drawings from three months to one month from the mailing of the "Notice of Allowability" (extensions of time under 37 CFR 1.136 being permitted). The PTO is also requesting comment on the advisability of requiring submission of corrected or formal drawings upon an indication of allowable subject matter.

Specifics of Change Being Considered: The PTO is considering amending 37 CFR 1.85(c) to require either that: (1) corrected or formal drawings be submitted within one month of the mailing of the "Notice of Allowability" (extensions of time under 37 CFR 1.136 being permitted); or (2) formal drawings be submitted in reply to any Office action indicating allowable subject matter, and, if a drawing correction has been required, requiring that corrected drawings be submitted in reply to the next Office action indicating allowable subject matter.

8. Permitting electronic submission of voluminous material (37 CFR 1.96, 1.821).

Summary: The PTO is considering rule changes to permit the voluntary submission of large computer program listings and nucleotide and/or amino acid sequence listings in only a machine-readable form. This would save the handling of heavy and voluminous paper listings.

Specifies of Change Being Considered: Suitable changes would be made to 37 CFR 1.96 and 1.821 et seq. to: (1) permit machine readable computer program listings to be submitted as the official copy provided it is submitted in an appropriate archival medium; (2) permit a machine-readable submission of the nucleotide and/or amino acid sequence listings as the official copy provided it is submitted in an appropriate archival medium; and (3) no longer require the voluminous paper submissions of computer program listings or nucleotide and/or amino acid sequence listings.

9. Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98).

Summary: The PTO is considering revising 37 CFR 1.98 to establish new requirements and/or limits on information submitted as part of an Information Disclosure Statement (IDS).

Specifics of Change Being Considered: In order to limit IDS submissions to relevant information and to ensure full consideration of an IDS by the PTO, the PTO is considering imposing the following additional requirements for IDS submissions: (1) a statement in the IDS that each citation has been personally reviewed by the registered practitioner who represents applicant, or by at least one inventor where applicant is not represented by a registered practitioner; (2) a copy of each cited U.S. application; and (3) a unique description of each citation's importance relative to each independent claim, or specific dependent claim(s) if that is why it was cited, except that a description would not be required for: (a) any ten citations, and (b) any item cited in a corresponding application by a foreign patent office, PCT international searching authority (ISA), or PCT international preliminary examining authority (IPEA), provided the search report or office action in the English language is also submitted.

The description of each citation would have to set forth a teaching or showing of a feature relative to the claimed invention which is not taught or shown by other citations in the IDS or is taught in a different manner. The description of each citation must be unique to that citation, in that an applicant would not be permitted to provide a description of a citation that is merely cumulative to that of other citations.

10. Refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98).

Summary: The PTO is considering revising 37 CFR 1.98 to reserve the PTO's authority to not consider submissions of an Information Disclosure Statement (IDS) in unduly burdensome circumstances, even where all the stated requirements of 37 CFR 1.98 are met.

Specifics of Change Being Considered: An unduly burdensome IDS submission may be denied consideration even though it complies with 37 CFR 1.98. For example, extremely large documents and compendiums may not be accepted if submitted. Applicant will, however, be notified and given an opportunity to modify the submission to eliminate the burdensome aspect of the IDS.

11. Providing no cause suspension of action (37 CFR 1.103).

Summary: The PTO is considering adding an additional suspension of action practice, under which an applicant may request deferred examination of an application without a showing of "good and sufficient cause," and for an extended period of time. The applicant would be required to waive the confidential status of the application under 35 U.S.C. 122, and agree to publication of the application.

Specifics of Change Being Considered: Prior to the first Office action of an application, the applicant may request deferred examination provided the application is entitled to a filing date, the filing fee has been paid, any needed English-language translation of the application has been filed, and all "outstanding requirements" have been satisfied, except that the oath or declaration need not be submitted. If an oath or declaration has not been submitted, the names of all of the persons believed to be the inventors must, in good faith, have been identified. Upon request by the applicant, the PTO may defer examination for a period not to exceed three years. Applicant would be required to waive his or her right to have the application kept in confidence under 35 U.S.C. 122, and pay a fee for publication of the application.

12. Requiring a handling fee for preliminary amendments and supplemental replies (37 CFR 1.111).

Summary: The PTO is considering imposing a handling fee for certain preliminary amendments and for all supplemental replies.

Specifics of Change Being Considered: The PTO is considering replacing the current practice of allowing unlimited preliminary amendments and multiple supplemental replies to be filed without requiring any fee with a new practice where a handling fee would be charged for each preliminary amendment filed later than a specified time period after the filing date of the application, and for each supplemental reply that is filed after the initial reply to an Office action has been filed.

13. Changing amendment practice to replacement by paragraphs/claims (37 CFR 1.121).

Summary: The PTO is considering changing the manner of making amendments to require that all amendments to the specification including the claims be presented in the form of replacement paragraphs and claims, respectively.

Specifics of Change Being Considered: The PTO is considering replacing the current system for making amendments in non-reissue applications with amendment to the specification by replacement paragraphs and amendment to a claim by a replacement claim. This would eliminate the PTO's need to enter changes by handwriting in red ink. Deletions of a paragraph or a claim would be by instruction to cancel. Replacement paragraphs and claims would be a clean copy that is printer-ready, which can be optical character recognition (OCR) scanned during the publishing process. A marked-up copy of the changed paragraphs or claims, using the applicant's choice of mark-up system, would also be supplied as an aid to the examiner. All paragraphs in the specification, including charts, tables, equations, etc., would have to be numbered. An option to provide substitute specifications would be retained for submission of extensive changes.

14. Providing for presumptive elections (37 CFR 1.141).

Summary: The PTO is considering a change to restriction practice to eliminate the need for a written restriction requirement and express election in most restriction situations.

Specifics of Change Being Considered: The PTO is considering a change to restriction practice to provide: (1) that if more than one independent and distinct invention is claimed in an application, the applicant is considered to have constructively elected the invention first presented in the claims; (2) for rejoinder of certain process claims in an application containing allowed product claims; and (3) for rejoinder of certain combination claims in an application containing allowed subcombination claims. This will, in most restriction situations, eliminate the need for a written restriction requirement separate from an Office action on the merits and an express election by the applicant, which will reduce pendency and PTO cycle time. This change would apply to nonreissue applications filed under 35 U.S.C. 111(a), and would not apply to reissue applications or applications filed under the PCT.

15. Creating a "rocket docket" for design applications (37 CFR 1.155).

Summary: The PTO is considering an expedited procedure to reduce the processing time for the examination of design applications.

Specifics of Change Being Considered: The PTO is considering a change to the rules of practice, so that design applicants may for a fee (roughly estimated at approximately $900) request to have their applications expedited. The PTO would also require the applicant to conduct a pre-examination search and file formal drawings. The applications would be individually examined with priority and the clerical processing would be conducted by special expediters and/or monitored by special expediters to achieve expeditious processing through initial application processing and the Design Examining Group.

16. Requiring identification of broadening in a reissue application (37 CFR 1.173).

Summary: The PTO is considering a change to 37 CFR 1.173 to require reissue applicants to identify all occurrences of broadening of the claimed invention in the reissue application.

Specifics of Change Being Considered: Reissue applicants would be specifically required to point out all occurrences of broadening of the claims. This will alert examiners to consider issues involving broadening relative to the two-year limit and the recapture doctrine. While this requirement is being imposed on applicants, the examiner will still be expected to independently look for and to appropriately treat any broadening issues under 35 U.S.C. 251,  1 and 4. If applicant fails to note a broadening and the examiner does identify a broadening, the examiner would not be permitted to make any rejection or objection as to the failure of applicant to identify the broadening.

17. Changing multiple reissue application treatment (37 CFR 1.177).

Summary: The PTO is considering an amendment to 37 CFR 1.177 to streamline the processing of divisional (or multiple) reissue applications.

Specifics of the Change Being Considered: The PTO is considering an amendment to 37 CFR 1.177 to: (1) eliminate the current requirements of 37 CFR 1.177 that multiple reissue applications be referred to the Commissioner and issue simultaneously; and (2) require that each of the multiple reissue applications contains a specific cross-reference to each of the other reissue applications. Each reissue application would have to present all original claims (amended, unamended, or deleted). Issuance of reissues where no changes have been made would not be permitted.

18. Creating alternative review procedures for applications under appeal (37 CFR 1.192).

Summary: The PTO is considering alternative review procedures to reduce the number of appeals forwarded to the Board of Patent Appeals and Interferences.

Specifics of Change Being Considered: The PTO is considering two alternative review procedures to reduce the number of appeals having to be forwarded to the Board of Patent Appeals and Interferences (Board) for decision. Both review procedures involve a review that would be available upon request and payment of a fee by the appellant, and would involve review by at least one other PTO official. The first review would occur after the filing of a notice of appeal but before the filing of an appeal brief and involve a review of all rejections of a single claim being appealed to see whether any rejection plainly fails to establish a prima facie case of unpatentability. The second review would occur after the filing of an appeal brief and involve a review of all rejections on appeal.

19. Eliminating preauthorization of payment of the issue fee (37 CFR 1.311).

Summary: The PTO is considering amending 37 CFR 1.311(b) to eliminate the option of filing an authorization to charge an issue fee to a deposit account before the notice of allowance is mailed.

Specifics of Change Being Considered: 37 CFR 1.311(b) currently permits an authorization to be filed either before or after the mailing of a notice of allowance. The PTO is considering an amendment to 37 CFR 1.311(b) to permit an authorization to be filed after, but not before, the notice of allowance is mailed.

20. Reevaluating the Disclosure Document Program

Summary: The PTO is seeking customer feedback to assess the value of the Disclosure Document Program. From a preliminary evaluation it appears that: (1) it is unclear whether many inventors actually get any benefit from this program; (2) some inventors use this program as a result of actions by invention promotion firms which mislead them into believing that they are actually filing an application for a patent; and (3) better benefits and protection are afforded to inventors if they file a provisional application for patent instead.

Specifics of Change being Considered: The PTO is evaluating the Disclosure Document Program under the Paperwork Reduction Act (44 U.S.C. ch. 35) in order to determine if it is serving the needs of those inventors who have been using it and whether the PTO can encourage use of provisional application practice instead of the practice of filing a Disclosure Document and, subsequently, filing either a provisional or nonprovisional application.

21. Creating a PTO review service for applicant-created forms.

Summary: The PTO is considering establishing a new service, where the PTO would review, for a fee, a form prepared by a member of the public that is intended to be used for future correspondence to the PTO.

Specifies of Change Being Considered: A form intended to be used for future correspondence with the PTO could be submitted to the PTO for review. The PTO would charge a fee (roughly estimated at approximately $200) for each form up to four pages long for this review service. After the review is completed, the PTO would send the submitter a written report, including comments and suggestions, if any, even though the PTO will not formally "approve" any form. The form and all related documents submitted for the review would also be returned to the submitter. If a (reviewed) form is modified in view of a PTO written report, comments and/or suggestion, the revised form could be resubmitted to the PTO for a follow up review for an additional charge (roughly estimated at approximately $50). After a form has been reviewed and revised, as may be needed, to comply with the PTO's written report, it will be acceptable for the form to indicate if it is a substitute for a PTO form and/or that it has been "reviewed by the PTO."