BILLING CODE 3510-16



DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1



[Docket No: 950620162-6014-02]



RIN 0651-AA75



            Miscellaneous Changes in Patent Practice



AGENCY:  Patent and Trademark Office, Commerce.



ACTION:  Final Rule.



SUMMARY:  The Patent and Trademark Office (Office) is amending

the rules of practice in patent cases to implement a number of

miscellaneous changes proposed in the rulemaking entitled

"Changes to Implement 18-Month Publication of Patent

Applications" (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 1177 Off. Gaz. Pat.

Office 61 (August 15, 1995), that are not directly related to the

18-month publication of patent applications.  While the proposed

rule changes in the Notice of Proposed Rulemaking were designed

primarily to implement the changes in practice related to the

publication of patent applications provided for in H.R. 1733,

these miscellaneous proposed changes clarify current rules of

practice, without regard to the publication of patent

applications.



DATES:  Effective Date:  September 23, 1996.



Applicability Date: Sections 1.52(a) and (b), 1.58, 1.72(b),

1.75(g), (h) and (i), 1.77, 1.84(c), (f), (g) and (x), 1.96,

1.154, and 1.163 of 37 CFR apply to applications filed on or

after September 23, 1996.



FOR FURTHER INFORMATION CONTACT:  Stephen G. Kunin by telephone

at (703) 305-8850, by facsimile at (703) 305-8825, by electronic

mail at rbahr@uspto.gov, or Jeffrey V. Nase by telephone at

(703) 305-9285, or by mail marked to the attention of Stephen G.

Kunin, addressed to the Assistant Commissioner for Patents,

Washington, D.C. 20231.  For copies of the forms discussed in

this final rule package, contact the Customer Service Center of

the Office of Initial Patent Examination at (703) 308-1214.



SUPPLEMENTARY INFORMATION

This final rule package is designed to implement the

miscellaneous changes set forth in the proposed rulemaking

entitled "Changes to Implement 18-Month Publication of Patent

Applications" (Notice of Proposed Rulemaking) that are not

directly related to 18-month publication of patent applications

and that are considered desirable even in the absence of an 18-

month publication system.



The Notice of Proposed Rulemaking indicated that, in addition to

implementing the 18-month publication of patent applications, the

Office also proposed to: (1) clarify which applications claiming

the benefit of prior applications, or which prior applications

for which a benefit is claimed in a later application, will be

preserved in confidence; (2) amend the rules pertaining to the

format and standards for application papers and drawings to

improve the standardization of patent applications; (3) provide

for those instances in which inventions of a pending application

or patent under reexamination and inventions of a patent held by

a single party are not identical, but not patentably distinct;

(4) clarify the practice for the delivery or mailing of patents;

(5) expedite the entry of international applications into the

national stage; and (6) amend a number of rules for consistency

and clarity.  The Notice of Proposed Rulemaking stated that these

proposed rule changes may be adopted as final rules even in the

absence of an 18-month publication system, and advised interested

persons to comment on any proposed rule change, regardless of

whether H.R. 1733 is enacted.



To avoid delays in the implementation of rule changes considered

desirable even in the absence of an 18-month publication system,

this final rule package provides for changes to 37 CFR

§§ 1.12(c), 1.14, 1.52(a) and (b), 1.54, 1.58, 1.62(e) and (f),

1.72(b), 1.75(g), 1.77, 1.78(a) and (c), 1.84(c), (f), (g) and

(x), 1.96, 1.97, 1.107, 1.110, 1.131, 1.132, 1.154, 1.163, 1.291,

1.292, 1.315, 1.321 and 1.497, and adds new §§ 1.5(f), 1.75(h)

and (i), and 1.130, all of which are based upon the changes

proposed in the Notice of Proposed Rulemaking.



Implementation of 18-month publication held in abeyance pending

Congressional action on H.R. 1733



The Notice of Proposed Rulemaking also proposed changes to 37 CFR

§§ 1.4, 1.5(a), 1.9, 1.11, 1.12(a) and (b), 1.13, 1.16, 1.17,

1.18, 1.19, 1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a),

1.84(j), 1.85, 1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495,

1.701, 1.808, 3.31, 5.1, new §§ 1.5(g), 1.306 through 1.308 and

5.9, and further changes to §§ 1.14, 1.54, 1.62, 1.107, 1.131,

1.132, 1.291 and 1.292 to implement the 18-month publication of

patent applications as contained in H.R. 1733 and provide

procedures for the treatment of national security classified

applications.  The adoption of changes to these rules is held in

abeyance pending Congressional action on H.R. 1733.



The proposed rule changes in the Notice of Proposed Rulemaking to

provide new procedures for the treatment of national security

classified applications are also being held in abeyance.  These

proposed rule changes are separable from the implementation of 18-

month publication; however, they are sufficiently related to the

implementation of 18-month publication that they are also being

held in abeyance pending Congressional action on H.R. 1733.

In the event that H.R. 1733 is enacted, a final rule package to

implement this legislation will be published.  Final rules to

implement 18-month publication of patent applications based upon

the Notice of Proposed Rulemaking and the comments received in

response to the Notice of Proposed Rulemaking may be adopted

without either an additional public hearing or an additional

proposal being published for comment.



Implementation of the miscellaneous changes proposed in the

Notice of Proposed Rulemaking



The following paragraphs of this section include:  (1) a

discussion of the rules being added or amended in this final rule

package, (2) the reasons for those additions and amendments, and

(3) an analysis of the comments received in response to the

Notice of Proposed Rulemaking.



Changes to proposed rules:  These final rules contain a number of

changes to the text of the rules as proposed for comment.  The

significant changes are discussed below.  Familiarity with the

Notice of Proposed Rulemaking is assumed.



Sections 1.14(a) and (b) have been re-written for clarity.

Section 1.14(a)(1) provides that patent applications are

generally preserved in confidence.  Section 1.14(a)(2) sets forth

the circumstances under which status information concerning an

application may be supplied, and § 1.14(a)(3) sets forth the

circumstances under which access to, or copies of, an application

may be provided.  Section 1.14(b) provides that abandoned

applications may be destroyed after 20 years from their filing

date.  The reference to paragraph (b) in § 1.14(e) has been

deleted for consistency with the changes to paragraphs (a) and

(b) of § 1.14.



Section 1.52(a) is being changed to provide that all papers which

are to become a part of the permanent records of the Patent and

Trademark Office must be legibly "written either by a typewriter

or mechanical printer in permanent dark ink or its equivalent,"

rather than "typed in permanent dark ink."  This change will

permit the filing of papers printed by any computer operated

printer, such as a laser printer which uses toner rather than

ink, and will avoid a conflict between § 1.52(a) and Patent

Cooperation Treaty (PCT) Rule 11.9.  The phrase "when required by

the Office" was also added to § 1.52(a).

Section 1.52(b) is being changed to provide that:  (1) the

application papers must be plainly written with each page printed

on only one side of a sheet of paper, with the claim or claims

commencing on a separate sheet and the abstract commencing on a

separate sheet; (2) the lines of the specification, and any

amendments to the specification, must be 1 1/2 or double spaced;

and (3) the pages of the specification including claims and

abstract must be numbered consecutively, starting with 1, the

numbers being centrally located above or preferably, below, the

text.  This change will clarify:  (1) the separate sheet

requirement for both the claims and abstract, (2) that the lines

of the papers not comprising the specification and amendments

thereto need not be 1 1/2 or double spaced, and (3) that the

specification, and not the transmittal sheets or other forms,

must be numbered.



Section 1.58 is being changed to provide that chemical and

mathematical formulae and tables must be presented in compliance

with §§ 1.52(a) and (b), except that chemical and mathematical

formulae or tables may be placed in a landscape orientation if

they cannot be presented satisfactorily in a portrait

orientation.  This replaces the requirement that "[t]o facilitate

camera copying when printing, the width of formulas and tables as

presented should be limited normally to 12.7 cm. (5 inches) so

that it may appear as a single column in the printed patent."

However, chemical and mathematical formulae and tables must still

otherwise comply with §§ 1.52(a) and (b).  This change will avoid

a conflict between § 1.58 and PCT Rule 11.10(d).  Section 1.58 is

also being changed to require "0.21 cm." rather than "2.1 mm." to

ensure consistency.



Section 1.72 is being changed to provide that the abstract must

commence on a separate sheet, preferably following the claims.

This change will avoid renumbering pages of a specification

submitted in the arrangement set forth in § 1.77 when filing the

application as an international application.



Section 1.75(h) is being changed to provide that the claim or

claims must commence on a separate sheet.  This change will

clarify that § 1.75 requires that the claim or claims commence or

begin on a separate sheet, rather than requiring that all of the

claims must be on a single separate sheet or that each claim must

be on a separate sheet.



Section 1.77 is being changed to position the abstract as element

"(12)" following the claims, rather than element "(3)" prior to

the first page of the specification to conform to § 1.72.



Section 1.78(a)(2) is being changed to replace the reference to

§ 1.14(b) with a reference to § 1.14(a).



Section 1.78(c) is being changed to replace the phrase "[w]here

an application or a patent under reexamination and an application

or a patent" with the phrase "[w]here an application or a patent

under reexamination and at least one other application," since

conflicting claims between an application or a patent under

reexamination and a patent will be provided for in new § 1.130.

Section 1.78(c) is also being changed to delete the sentence

"[i]n addition to making said statement, the assignee may also

explain why an interference should or should not be declared,"

since the Office will not, unless good cause is shown, declare or

continue an interference when the application(s) and patent are

owned by a single party.



Section 1.78(d) is removed.  The provisions of § 1.78(d), as

proposed, are in new § 1.130(b), since § 1.130 provides for

conflicting claims between an application or a patent under

reexamination and a patent.



Section 1.84(x) is being changed from "[n]o holes should be

provided in the drawings sheets" to "[n]o holes should be made by

the applicant in the drawing sheets" to clarify that the

application papers, including drawings, should be submitted by

the applicant without holes provided therein, but that the Office

will drill holes through the application papers during the pre-

examination processing of the application.



Section 1.96(b) is being changed to provide that a listing

submitted as part of the specification "must be direct printouts

(i.e., not copies) from the computer's printer" for clarity.



Section 1.96(c) is being changed to substitute a reference to

36 CFR Part 1230 (Micrographics) for the enumerated American

National Standards Institute (ANSI) and National Micrographics

Association (NMA) standards.  As 36 CFR Part 1230 sets forth the

micrographic requirements for government records, it is

appropriate to reference this provision, rather than promulgate

separate standards for micrographics employed in patent

applications.



Section 1.97 is being changed to delete any reference to a

reexamination proceeding or a patent owner.  The submission of an

information disclosure statement during a reexamination

proceeding is governed by § 1.555(a).



Section 1.97(a) is being changed from "[i]n order for an

applicant for patent or for reissue of a patent to have

information considered by the Office during the pendency of a

patent application, an information disclosure statement in

compliance with § 1.98 should be filed in accordance with this

section" to "[i]n order for an applicant for a patent or for a

reissue of a patent to have an information disclosure statement

in compliance with § 1.98 considered by the Office during the

pendency of the application, it must satisfy paragraph (b), (c),

or (d) of this section" for clarity.  Sections 1.97(c) and (d)

are also being changed to clarify the conditions in § 1.97(c)

under which a certification as specified in § 1.97(e) or the fee

set forth in § 1.17(p) is required, and the conditions in

§ 1.97(d) under which a certification as specified in § 1.97(e),

a petition, and the petition fee set forth in § 1.17(i) are

required.



Section 1.110 is amended to change the reference to § 1.78(d) to

a reference to § 1.130 for consistency.



The proposed addition of a new § 1.131(a)(3) is being withdrawn

in this final rule package.  This proposed change, as well as the

provisions of former § 1.78(d), has been re-written as a new

§ 1.130.  New § 1.130(a) will provide a procedure for the

disqualification of a commonly owned patent claiming a patentably

indistinct but not identical invention.  New § 1.130(b) will

include the provisions of former § 1.78(d).



Section 1.131(a) is being changed to replace the phrase "U.S.

patent to another" with "U.S. patent to another or others."



Section 1.154(a)(7) is being changed to add "[f]eature" prior to

"[d]escription," and § 1.154(a)(8) is being changed to add "a

single" prior to "claim."



Section 1.163 is being changed to position the abstract as

element "(11)" following the claims, rather than element "(3)"

prior to the first page of the specification.  This change will

parallel the change to § 1.77.  In addition, § 1.163(c)(10) is

being changed to add "a single" prior to "claim."



Section 1.497(b)(2) is being changed to provide that "[i]f the

person making the oath or declaration is not the inventor, the

oath or declaration shall state the relationship of the person to

the inventor, the facts required by §§ 1.42, 1.43 or 1.47, and,

upon information and belief, the facts which the inventor would

have been required to state" to better set forth the requirements

of an oath or declaration by a person who is not the inventor.

Section 1.497(c) is being changed to delete the initial phrase

"[t]he oath or declaration must comply with the requirements of

§ 1.63; however," since it is unnecessary.



Discussion of Specific Rules



Title 37 of the Code of Federal Regulations, Part 1 is amended as

follows:



Section 1.5(f) is added to provide that a paper concerning a

provisional application must identify the application as such and

by the application number.



Section 1.12 is amended to revise paragraph (c) to read

"preserved in confidence under § 1.14" for consistency with

§ 1.14.



Section 1.14 is amended to revise the title and paragraphs (a)

and (e) to read "preserved in confidence" for consistency with

the language in 35 U.S.C. 122.



Section 1.14(a) is amended to add a paragraph (a)(1) to provide

that patent applications are generally preserved in confidence

pursuant to 35 U.S.C. 122, and that no information will be given

concerning the filing, pendency, or subject matter of any

application for patent, and no access will be given to, or copies

furnished of, any application or papers relating thereto, except

as set forth in § 1.14.



Section 1.14(a) is also amended to add a paragraph (a)(2) to

provide that status may be supplied:  (1) concerning an

application or any application claiming the benefit of the filing

date of the application, if the application has been identified

by application number or serial number and filing date in a

published patent document; (2) concerning the national stage

application or any application claiming the benefit of the filing

date of a published international application, if the United

States of America has been indicated as a Designated State in the

international application; or (3) when it has been determined by

the Commissioner to be necessary for the proper conduct of

business before the Office.  Status information includes

information such as whether the application is pending,

abandoned, or patented, as well as the application number and

filing date.  The inclusion of applications claiming the benefit

of the filing date of applications so identified is to avoid

misleading the public in instances in which the application

identified as set forth in § 1.14(a)(2) is abandoned, but an

application claiming the benefit of the filing date of the

identified application (e.g., a continuing application) is

pending.



Section 1.14(a) is also amended to add a new paragraph (a)(3) to

provide that access to, or copies of, an application may be

provided:  (1) when the application is open to the public as

provided in § 1.11(b); (2) when written authority in that

application from the applicant, the assignee of the application,

or the attorney or agent of record has been granted; (3) when it

has been determined by the Commissioner to be necessary for the

proper conduct of business before the Office, or (4) to any

person on written request, without notice to the applicant, when

the application is abandoned and available and is:  (a) referred

to in a U.S. patent, (b) referred to in an application open to

public inspection, (c) an application which claims the benefit of

the filing date of an application open to public inspection, or

(d) an application in which the applicant has filed an

authorization to lay open the complete application to the public.



Section 1.14(b) is amended to provide that complete applications

(§ 1.51(a)) which are abandoned may be destroyed and hence may

not be available for access or copies as permitted by paragraph

(a)(3)(iv) of this section after 20 years from their filing date,

except those to which particular attention has been called and

which have been marked for preservation.  The sentence in

§ 1.14(b) concerning the non-return of abandoned applications is

deleted as duplicative of the provision in § 1.59, which provides

that papers in an application which has received a filing date

will not be returned, and is unrelated to the preservation of

applications in confidence under § 1.14.



Section 1.52(a) is amended to provide that all papers which are

to become a part of the permanent records of the Office must be

legibly written by a typewriter or mechanical printer in

permanent dark ink or its equivalent in portrait orientation on

flexible, strong, smooth, non-shiny, durable and white paper.

Section 1.52(a) is further amended to provide that the

application papers must be presented in a form having sufficient

clarity and contrast between the paper and the writing thereon to

permit electronic reproduction by use of digital imaging and

optical character recognition, as well as the direct photocopy

reproduction currently provided for.  Section 1.52(a) is further

amended to provide that substitute typewritten or mechanically

printed papers "will" be required if the original application

papers are not of the required quality.  As any substitute

typewritten or mechanically printed papers containing the subject

matter of the originally filed application papers would

constitute a substitute specification, the provisions of § 1.125

governing the entry of a substitute specification would be

applicable, and § 1.52(a) is amended to include a specific

reference to § 1.125.



Section 1.52(b) is amended to provide that the claim or claims

must commence on a separate sheet and the abstract must commence

on a separate sheet.  Section 1.72(b) provides that the abstract

must commence on a separate sheet, and § 1.75(h) provides that

the claim or claims must commence on a separate sheet.  Section

1.52(b) is amended to provide that the sheets of paper must all

be the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or

21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), with a top margin of

at least 2.0 cm. (3/4 inch), a left side margin of at least

2.5 cm. (1 inch), a right side margin of at least 2.0 cm.

(3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch),

and that no holes should be made in the submitted paper sheets.

Section 1.52(b) is further amended to provide that the lines of

the specification, and any amendments to the specification,

"must" be 1 1/2 or double spaced, and that the pages of the

specification "must" be numbered consecutively, starting with

page one, with the numbers being centrally located above or below

the text.  Finally, § 1.52(b) is amended to specifically

reference drawings to clarify that drawings are part of the

application papers, but that the standards for drawings are set

forth in § 1.84.



The proposed changes to §§ 1.52(a) and (b), 1.58, 1.72(b),

1.75(g), (h), and (i), 1.77, 1.84(c), (f), (g), and (x), 1.96,

1.154, and 1.163 pertaining to the format and standards for

application papers and drawings in the Notice of Proposed

Rulemaking are considered desirable, regardless of whether H.R.

1733 is enacted.



While the vast majority of applications currently comply with

§§ 1.52(a) and (b), 1.58, 1.72(b), 1.75(h), 1.84(c), (f), (g),

and (x), and 1.96 as adopted in this final rule, those

applications which do not comply with §§ 1.52(a) and (b), 1.58,

1.84(c), (f), (g), and (x), and 1.96 as adopted in this final

rule (e.g., applications containing hand-written papers) create

an inordinate administrative burden on the Office during the

initial processing, examination, and publishing of the

application as a patent.  In addition, the Office plans to

replace or augment the current microfilming process with

electronic data capture of at least the technical content (i.e.,

the specification, abstract, claims and drawings) of the

application-as-filed for internal Office use, regardless of

whether H.R. 1733 is enacted.  Therefore, the Office will no

longer permit these relatively few applicants to submit

application papers and drawings that do not meet the standards

set forth in §§ 1.52(a) and (b), 1.58, 1.84(c), (f), (g), and

(x), and 1.96 as adopted in this final rule.



The application format set forth in §§ 1.75(g) and (i), 1.77,

1.154, and 1.163 as adopted in this final rule merely expresses

the Office's preferences for format of utility, design and plant

applications.  They do not set forth mandatory requirements for

application papers and drawings.



Section 1.54(b) is amended to change "application serial number"

to "application number" for consistency with § 1.5(a).



Section 1.58(b) is removed and is reserved as unnecessary in view

of the amendments to §§ 1.52(a) and (b).



Section 1.58(c) is amended to provide that chemical and

mathematical formulae and tables must be presented in compliance

with §§ 1.52(a) and (b), except that chemical and mathematical

formulae or tables may be placed in a landscape orientation if

they cannot be presented satisfactorily in a portrait

orientation.  Section 1.58(c) is further amended to delete the

following sentences to conform to the writing and paper size and

orientation limitations in §§ 1.52(a) and (b):  (1) "[t]o

facilitate camera copying when printing, the width of formulas

and tables as presented should be limited normally to 12.7 cm.

(5 inches) so that it may appear as a single column in the

printed patent"; (2) "[i]f it is not possible to limit the width

of a formula or table to 5 inches (12.7 cm.), it is permissible

to present the formula or table with a maximum width of 10

3/4 inches (27.3 cm.) and to place it sideways on the sheet"; and

(3) "[h]and lettering must be neat, clean, and have a minimum

character height of 0.08 inch (2.1 mm.)."  Section 1.58(c) is

further amended to insert "chosen" between "must be" and "from a

block (nonscript) type font."  Section 1.58(c) is further amended

to provide metric dimensions with English equivalents in

parentheticals, rather than vice versa.



Section 1.62(e) is amended to change "application serial number"

to "application number" for consistency with § 1.5(a).



Section 1.62(f) is amended to change "secrecy" to "confidence" as

is found in 35 U.S.C. 122 and § 1.14, and change "37 CFR 1.14" to

"§ 1.14" for consistency.



Section 1.72(b) is amended to provide that the abstract must

"commence," rather than "be set forth," on a separate sheet.

This change will conform the "separate sheet" requirement for the

abstract with that for the claims.



Section 1.75 is amended to include an amendment to paragraph (g),

and would add two new paragraphs.  Section 1.75(g) is amended to

add the phrase "[t]he least restrictive claim should be presented

as claim number 1" to the beginning of the paragraph.  Section

1.75(h) is added to provide that the claim or claims must

commence on a separate sheet.  Section 1.75(i) is added to

provide that where a claim sets forth a plurality of elements or

steps, each element or step of the claim should be separated by a

line indentation.



Section 1.77 is amended to provide that the elements of the

application, if applicable, should appear in the following order:

(1) Utility Application Transmittal Form; (2) Fee Transmittal

Form; (3) title of the invention; or an introductory portion

stating the name, citizenship, and residence of the applicant,

and the title of the invention; (4) cross-reference to related

applications; (5) statement regarding federally sponsored

research or development; (6) reference to a "Microfiche appendix;

(7) background of the invention; (8), brief summary of the

invention; (9) brief description of the several views of the

drawing; (10) detailed description of the invention; (11) claim

or claims; (12) abstract of the disclosure; (13) drawings;

(14) executed oath or declaration; and (15) sequence listing.

The phrase "if applicable" is inserted in the heading, rather

than associated with any particular listed element, to clarify

that § 1.77 does not per se require that an application include

all of the listed elements, but merely provides that any listed

element included in the application should appear in the order

set forth in § 1.77.  Section 1.77 is further amended to provide

that the (1) title of the invention; (2) cross-reference to

related applications; (3) statement regarding federally sponsored

research or development; (4) background of the invention;

(5) brief summary of the invention; (6) brief description of the

several views of the drawing; (7) detailed description of the

invention; (8) claim or claims; (9) abstract of the disclosure;

and (10) sequence listing, should appear in upper case, without

underlining or bold type, as section headings, and if no text

follows the section heading, the phrase "Not Applicable" should

follow the section heading.  Finally, § 1.77 is amended to change

the reference to § 1.96(b) in § 1.77(a)(6) to § 1.96(c) for

consistency with § 1.96.



Section 1.78(a)(2) is amended to replace the reference to

§ 1.14(b) with a reference to § 1.14(a) for consistency with

§§ 1.14(a) and (b) as amended.



Section 1.78(c) is amended to change "two or more applications,

or an application and a patent" to "an application or a patent

under reexamination and at least one other application" such that

the provisions of § 1.78(c) will also be applicable to a patent

under reexamination.  Section 1.78(c) is also amended to correct

"inventors and owned by the same party contain conflicting

claims" to read "inventors are owned by the same party and

contain conflicting claims."  Section 1.78(c) is also amended to

delete the sentence "[i]n addition to making said statement, the

assignee may also explain why an interference should or should

not be declared."

Section 1.78(d) is removed.  The provisions of former § 1.78(d),

as proposed, are in new § 1.130(b).



Section 1.84(c) is amended to provide that a reference to the

application number, or, if an application number has not been

assigned, the inventor's name, may be included in the left-hand

corner of the drawing sheet, provided that reference appears

within 1.5 cm. (9/16 inch) from the top of the sheet.



Section 1.84(f) is amended to provide that the size of all

drawing sheets in an application must be either 21.0 cm. by

29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by

11 inches) to conform to the requirement in § 1.52(b) concerning

papers in an application.



Section 1.84(g) is amended to delete the margin requirements for

the sheet sizes that are no longer acceptable in view of the

changes to § 1.84(f).  Section 1.84(g) is further amended to

provide that the sheets should have scan targets (cross-hairs) on

two catercorner margin corners.  Finally, § 1.84(g) is amended to

increase the bottom and side margins such that each sheet must

include a top margin of at least 2.5 cm. (1 inch), a left side

margin of at least 2.5 cm. (1 inch), a right side margin of at

least 1.5 cm. (9/16 inch), and a bottom margin of at least

1.0 cm. (3/8 inch), thereby leaving a sight no greater than

17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4)

drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm.

(6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by

11 inch) drawing sheets.



Section 1.84(x) is amended to delete the provisions indicating

the proper location for holes in a drawing sheet, and provide

that no holes should be provided in the drawing sheets.



Section 1.96 is amended to designate the text preceding current

paragraph (a) as paragraph (a) "General," and would redesignate

current paragraphs (a) and (b) as paragraphs (b) and (c),

respectively.  New § 1.96(a) is further amended to insert a

period between "specification" and "[a] computer," to change

"these rules" to "this section," and to change "may be submitted

in patent applications in the following forms" to "may be

submitted in patent applications as set forth in paragraphs (b)

and (c) of this section."



New § 1.96(b) is further amended to:  (1) change the sentences

"[t]he listing may be submitted as part of the specification in

the form of computer printout sheets (commonly 14 by 11 inches in

size) for use as 'camera ready copy' when a patent is

subsequently printed" and "[s]uch computer printout sheets must

be original copies from the computer with dark solid black

letters not less than 0.21 cm. high, on white, unshaded and

unlined paper, the printing on each sheet must be limited to an

area 9 inches high by 13 inches wide, and the sheets should be

submitted in a protective cover" to "[a]ny listing submitted as

part of the specification must be direct printouts (i.e., not

copies) from the computer's printer with dark solid black letters

not less than 0.21 cm. high, on white, unshaded and unlined

paper, and the sheets should be submitted in a protective cover";

(2) delete the sentence "[w]hen printed in patents, such computer

printout sheets will appear at the end of the description but

before the claims and will usually be reduced about 1/2 in size

with two printout sheets being printed as one patent

specification page"; and (3) delete the phrase "if the copy is to

be used for camera ready copy."  New § 1.96(b)(1) provides that

the requirements of § 1.84 apply to computer program listings

submitted as sheets of drawings, and new § 1.96(b)(2) provides

that the requirements of § 1.52 apply to computer program

listings submitted as part of the specification.



New § 1.96(c) is amended to:  (1) change the references to

§ 1.77(c)(2) in § 1.96(c) to § 1.77(a)(6) for consistency with

§ 1.77; (2) change "may" and "should" to "must"; (3) delete the

sentence "[a]ll computer program listings submitted on paper will

be printed as part of the patent"; (4) relocate the phrase

"except as modified or clarified below" in subsection (c)(2);

(5) change the phrase "computer-generated information submitted

as an appendix to an application for patent shall be in the form

of microfiche in accordance with the standards" to

"computer-generated information submitted as a 'microfiche

appendix' to an application shall be in accordance with the

standards" for clarity; (6) change the references to the specific

American National Standards Institute (ANSI) or National

Micrographics Association (NMA) standards with 36 CFR Part 1230;

(7) change "serial number" to "application number"; and

(8) provide metric dimensions with English equivalents in

parentheticals, rather than vice versa.



Section 1.97(a) is amended to include the phrase "for an

applicant for patent or for reissue of a patent."  Paragraphs (a)-

(d) are amended to include the phrase "by the applicant" to

clarify that § 1.97 is not available for any third party seeking

to have information considered in a pending application.  Any

third party seeking to have information considered in a pending

application must proceed under §§ 1.291 or 1.292.  As discussed

supra, §§ 1.97(a), (c) and (d) are also being amended for

clarity.  Section 1.97(c) is further amended to correct the

phrase "certification as specified in paragraph (3) of this

section" to read "certification as specified in paragraph (e) of

this section."



Section 1.107 is amended to delete the phrase "and the classes of

inventions."



Section 1.110 is amended to change the reference to § 1.78(d) to

a reference to § 1.130 for consistency with the removal of

§ 1.78(d), and the location of the provisions of former § 1.78(d)

in § 1.130(b).



A new paragraph (a)(3) in § 1.131 was proposed in the Notice of

Proposed Rulemaking to permit a showing of prior invention in a

pending application or patent under reexamination to avoid a

rejection under 35 U.S.C. 103 based upon a patent which qualifies

as prior art only under 35 U.S.C. 102(a) or (e), where the

application or patent under reexamination and the patent upon

which the rejection is based are both owned by a single party, so

long as the invention claimed in the pending application or

patent under reexamination and in the other patent are not

identical as set forth in 35 U.S.C. 102.  Upon further study, it

is considered appropriate to disqualify such patents, and provide

for the obviation of judicially created double patenting

rejections in an application or a patent under reexamination by

the filing of a terminal disclaimer in accordance with

§ 1.321(c), in a separate § 1.130.



New § 1.130(a) provides that when any claim of an application or

a patent under reexamination is rejected under 35 U.S.C. 103 on a

U.S. patent to another or others which is not prior art under

35 U.S.C. 102(b), and the inventions defined by the claims in the

application or patent under reexamination and by the claims in

the patent are patentably indistinct but not identical as set

forth in 35 U.S.C. 101, and the inventions are owned by the same

party, the applicant or owner of the patent under reexamination

may disqualify the patent as prior art.  Section 1.130(a)

specifically provides that the patent can be disqualified as

prior art by submission of:  (1) a terminal disclaimer in

accordance with § 1.321(c), and (2) an oath or declaration

stating that the application or patent under reexamination and

the patent are currently owned by the same party, and that the

inventor named in the application or patent under reexamination

is the prior inventor under 35 U.S.C. 104.



Where inventions defined by the rejected claims in the

application or a patent under reexamination and by the claims in

the patent upon which the rejection is based are patentably

distinct, the rejection may be overcome pursuant to § 1.131.

Since § 1.130 applies only when inventions defined by the claims

in an application or a patent under reexamination and by the

claims in the patent are patentably indistinct, § 1.130 expressly

provides that an oath or declaration submitted pursuant to

§ 1.130 to disqualify a patent must be accompanied by a terminal

disclaimer in accordance with § 1.321(c).



As the conflict between two pending applications can be avoided

by filing a continuation-in-part application merging the

conflicting inventions into a single application, § 1.130 is

limited to rejections based upon a patent.



New § 1.130(b) includes the provisions of former § 1.78(d), as

proposed in the Notice of Proposed Rulemaking.  Former § 1.78(d)

was proposed to be amended to change "obviousness-type double

patenting rejection" to "non-statutory double patenting

rejections" as current examining procedures authorize non-

obviousness-type double patenting rejections, as well as

obviousness-type double patenting rejections (See section 804(II)

of the Manual of Patent Examining Procedure (MPEP)), and either

may be obviated by filing a terminal disclaimer in accordance

with § 1.321(c).  The phrase "non-statutory double patenting

rejection," however, is being replaced with "judicially created

double patenting rejection" to better set forth the legal basis

for the rejection.



Section 1.78(d) was also proposed to be amended to change each

instance of "application" to "application or a patent under

reexamination" for consistency with § 1.321 and to clarify that

double patenting is a proper consideration in reexamination (Ex

parte Obiaya, 227 USPQ 58, 60-61 (Bd. Pat. App. & Inter. 1985)),

and that a judicially created double patenting rejection in a

patent under reexamination may be obviated by filing a terminal

disclaimer in accordance with § 1.321(c).



New § 1.130(b) specifically provides that where an application or

a patent under reexamination claims an invention which is not

patentably distinct from an invention claimed in a commonly owned

patent with the same or a different inventive entity, a double

patenting rejection will be made in the application or a patent

under reexamination, and that a judicially created double

patenting rejection may be obviated by filing a terminal

disclaimer in accordance with § 1.321(c).



Section 1.131 is amended to change "U.S. patent to another" to

"U.S. patent to another or others" to parallel the language in

35 U.S.C. 102(a), as well as 35 U.S.C. 102(e).



Section 1.132 is amended to change "domestic patent" to "U.S.

patent," and "does not claim the invention" to "does not claim

the same patentable invention, as defined in § 1.601(n)" for

consistency with § 1.131.



Section 1.154 is amended to provide that the elements of a design

application, if applicable, should appear in the following order:

(1) Design Application Transmittal Form; (2) Fee Transmittal

Form; (3) preamble, stating name of the applicant and title of

the design; (4) cross-reference to related applications;

(5) statement regarding federally sponsored research or

development; (6) description of the figure or figures of the

drawing; (7) feature description; (8) a single claim;

(9) drawings or photographs; and (10) executed oath or

declaration.  The phrase "[t]he following order of arrangement

should be observed in framing design specifications" is changed

to "[t]he elements of the design application, if applicable,

should appear in the following order" to clarify that § 1.154

does not per se require that an application include all of the

listed elements, but merely provides that any listed element

included in the application should appear in the order set forth

in § 1.154.  This amendment to § 1.154, however, does not modify

the current requirement that an application for a design patent

have but a single claim.

A new § 1.163(c) is added to provide that the elements of a plant

application, if applicable, should appear in the following order:

(1) Plant Application Transmittal Form; (2) Fee Transmittal Form;

(3) title of the invention; (4) cross-reference to related

applications; (5) statement regarding federally sponsored

research or development; (6) background of the invention;

(7) brief summary of the invention; (8) brief description of the

drawing; (9) detailed botanical description; (10) a single claim;

(11) abstract of the disclosure; (12) drawings (in duplicate);

(13) executed oath or declaration; and (14) Plant Color Coding

Sheet.  The phrase "if applicable" is included in the heading,

rather than associated with any particular listed element, to

clarify that § 1.163 does not per se require that an application

include all of the listed elements, but merely provides that any

listed element included in the application should appear in the

order set forth in § 1.163.  This amendment to § 1.163, however,

does not modify the current requirement that an application for a

plant patent have but a single claim.



A new § 1.163(d) is added to define a plant color coding sheet.

A plant color coding sheet is a sheet that specifies a color

coding system as designated in a color dictionary, and lists

every plant structure to which color is a distinguishing feature

and the corresponding color code which best represents that plant

structure.  The plant color coding sheet will provide a means for

applicants to uniformly convey detailed color characteristics of

the plant.  Providing this information in a systematic manner

will facilitate the examination of the application.



Section 1.291 is amended to provide that a protest must be filed

prior to the mailing of a Notice of Allowance to be considered

timely.  As a protest cannot be considered subsequent to issuance

of the application as a patent, § 1.291(b) is amended to provide

that the protest will be considered if the application is still

pending when the protest and application file are provided to the

examiner (i.e., that the application was pending at the time the

protest was filed would be immaterial to its ultimate

consideration).  Finally, the sentences "[p]rotests raising fraud

or other inequitable conduct issues will be entered in the

application file, generally without comment on those issues" and

"[p]rotests which do not adequately identify a pending patent

application will be disposed of and will not be considered by the

Office" in § 1.291 are changed to "[p]rotests raising fraud or

other inequitable conduct issues will be entered in the

application file, generally without comment on those issues" and

"[p]rotests which do not adequately identify a pending patent

application will be returned to the protestor and will not be

further considered by the Office," respectively, and are located

in paragraph (b).  The Office will acknowledge protests prior to

their entry into the application file or return to the protestor,

as appropriate.



Section 1.292 is amended to delete the phrase "is filed by one

having information of the pendency of an application" as

unnecessary, and would move the requirement for the fee set forth

in § 1.17(j) from paragraph (a) to paragraph (b) where the

conditions for entry of a petition for the institution of public

use proceedings are set forth.  Section 1.292 is amended to

further require that any petition be served on the applicant in

accordance with § 1.248, or be filed with the Office in duplicate

in the event that service on the applicant is not possible.

Finally, § 1.292 is amended to provide that a petition to

institute public use proceedings to be considered timely must be

filed prior to the mailing of a Notice of Allowance.



Section 1.315 is amended to change "the attorney or agent of

record, if there be one; or if the attorney or agent so request,

to the patentee or assignee of an interest therein; or, if there

be no attorney or agent, to the patentee or to the assignee of

the entire interest, if he so request" to "the correspondence

address of record.  See § 1.33(a)."  This change is to simplify

§ 1.315, and because patents are currently mailed to the patentee

at the correspondence address of record.



Section 1.321(c) is amended to change "double patenting

rejection" to "judicially created double patenting rejection" for

consistency with § 1.78(c) and to clarify that the filing of a

terminal disclaimer is ineffective to overcome a statutory double

patenting rejection.



Section 1.497(a) is amended to provide that an applicant in an

international application must file an oath or declaration that:

(1) is executed in accordance with either §§ 1.66 or 1.68,

(2) identifies the specification to which it is directed,

(3) identifies each inventor and the country of citizenship of

each inventor, and (4) states that the person making the oath or

declaration believes the named inventor or inventors to be the

original and first inventor or inventors of the subject matter

which is claimed and for which a patent is sought, rather than an

oath or declaration in accordance with § 1.63, to enter the

national stage pursuant to §§ 1.494 or 1.495.  Currently, the

failure to file an oath or declaration in strict compliance with

§ 1.63 results in non-compliance with § 1.497, and thus 35 U.S.C.

371, which in turn delays the entry of the international

application into the national stage.  To expedite the entry of

international applications into the national stage, § 1.497(a) is

amended to require only an oath or declaration that is properly

executed, identifies the specification to which it is directed,

and, as required by 35 U.S.C. 115, identifies each inventor and

the country of citizenship of each inventor and states that the

person making the oath or declaration believes the named inventor

or inventors to be the original and first inventor or inventors

of the subject matter which is claimed and for which a patent is

sought.



Section 1.497(b) is subdivided into paragraphs (b)(1) and (b)(2).

Section 1.497(b)(1) is amended to provide that the oath or

declaration must be made by all of the actual inventors except as

provided for in §§ 1.42, 1.43 or 1.47.  Section 1.497(b)(2) is

amended to change "[i]f the international application was made as

provided in §§ 1.422, 1.423 or 1.425, the applicant shall state

his or her relationship to the inventor and, upon information and

belief, the facts which the inventor is required by § 1.63 to

state" to "[i]f the person making the oath or declaration is not

the inventor, the oath or declaration shall state the

relationship of the person to the inventor, the facts required by

§§ 1.42, 1.43 or 1.47, and, upon information and belief, the

facts which the inventor would have been required to state."



Section 1.497(c) is added to provide that the oath or declaration

must comply with the requirements of § 1.63.  Section 1.497(c)

further provides that in instances where the oath or declaration

does not comply with § 1.63, but meets the requirements of

§ 1.497(a) and (b), the oath or declaration will be accepted as

complying with 35 U.S.C. 371(c)(4) and §§ 1.494(c) or 1.495(c),

thus permitting the application to enter the national stage and

the assignment of dates under 35 U.S.C. 102(e) and 371(c).  A

supplemental oath or declaration in compliance with § 1.63,

however, will be required in accordance with § 1.67.



Response to Comments

Two hundred and forty-two written comments were received in

response to the Notice of Proposed Rulemaking.  A public hearing

was held on September 19, 1995.  Eight persons testified at the

public hearing.



The written comments, and the testimony at the public hearing,

have been analyzed.  In the event that H.R. 1733 is enacted, the

comments directed to the proposed changes to the rules of

practice to implement the 18-month publication of patent

applications will be considered and addressed in the final rule

package to implement 18-month publication.  Responses to the

comments germane to the changes in this final rule package

follow.



     Comment :  One comment suggested that, in the absence of an

     18-month publication system, the proposed rules relating to

     application format and standardization of applications be

     republished to give the public an opportunity to comment on

     the desirability of these changes in the absence of an 18-

     month publication system.



Response:  The Notice of Proposed Rulemaking specifically stated

that the proposed rules relating to application format and

standardization of applications may be adopted as final rules

even in the absence of an 18-month publication system, and

specifically advised interested members of the public to comment

on the advisability of the proposed rules relating to application

format and standardization of applications, regardless of the

legislative action on H.R. 1733.  Thus, the public was given an

opportunity to comment on the desirability of these changes in

the absence of an 18-month publication system.  Because the

standardization of applications is generally favored and will

substantially improve the Office's ability to efficiently and

effectively process applications, delaying their adoption as

final rules is not justified.



     Comment :  One comment stated that the Office has the

     authority to require that applications be submitted in

     computer-readable form, and in fact requires sequence

     listings to be submitted in such form.  The comment

     suggested that the cost of electronically scanning

     application papers, as well as errors in scanning the

     application papers, can be avoided by requiring applicants

     to provide the specification in computer-readable form.

     Another comment stated that the Office has the authority to

     permit electronic filing, and electronic filing should be

     permitted.  Several other comments indicated that scanning

     an application into a data base, rather than permitting

     applicants to provide a copy of the application on an

     electronic medium, is more costly, and is further more

     likely to introduce errors that could render text searching

     unreliable.  And, several comments suggested that the

     scanning and typesetting costs associated with the current

     publication process for issued patents could be reduced by

     the acceptance of electronic media in place of or in

     addition to the paper medium currently provided for in the

     rules of practice.  These comments further suggested that

     the Office should establish fees that reflect the reduced

     cost to the Office when a copy of an application is provided

     on an electronic medium (i.e., should establish reduced fees

     for those who submit a copy of their application on an

     electronic medium), which fee structure would provide an

     incentive to supply a copy of an application on an

     electronic medium.



Response:  As discussed in the Notice of Proposed Rulemaking,

while the Office is considering the legislative and regulatory

changes that would be necessary to permit purely electronic

filing of application papers, it does not currently have in place

an automated system for the acceptance and processing of

application papers in electronic form, other than for sequence

listings.  Moreover, the Office does not currently have the

statutory authority to rebate statutory patent filing fees to

reflect any reduced cost to the Office due to the submission of a

copy of an application on an electronic medium.  The Office will

give the comments further consideration as it designs and

develops the Patent Application Management (PAM) system.



     Comment :  Several comments noted that §§ 1.52(a) and (b)

     impose a standard on applicants not currently observed by

     the Office, and questioned whether papers in the application

     file prepared by the Office will comply with §§ 1.52(a) and

     (b).



Response:  Sections 1.52(a) and (b) apply to the application

papers, and amendments or corrections thereto.  As such,

§§ 1.52(a) and (b) do not apply to those papers in the

application file prepared by the Office, since they do not become

part of the printed patent.



     Comment :  One comment noted that proposed § 1.52 appears to

     be neutral with regard to numbering the lines (e.g., a line

     number every five lines) of the specification, and suggested

     that line numbering is a beneficial practice which should be

     permitted, and even encouraged.



Response:  Section 1.52 neither requires nor prohibits line

numbering.  Applicants are encouraged, but not required, to

number the lines of the specification.  The Office will give the

suggestion further study and consideration in future rulemaking.



     Comment :  One comment noted that when paragraphs are

     separated by a blank line only (i.e., no indentation) and

     end between pages, it is not possible to tell that a

     paragraph break occurred.  The comment suggested that the

     application format requirements should additionally require

     an indentation at the beginning of each new paragraph.



Response:  It is desirable that a specification include an

indentation at the beginning of a new paragraph.  This

requirement, however, was not proposed for comment in the Notice

of Proposed Rulemaking.  In addition, PCT Rule 11 does not

require that the beginning of each new paragraph in the

specification be indented.



     Comment :  One comment noted that § 1.52(a) would prohibit

     handwriting or hand-printing on papers which are to become

     permanent Office records.  The comment questioned whether

     this requirement would also apply to papers issued in the

     Office.  The comment suggested revising Office practice to

     prohibit an examiner from handwriting comments on official

     papers (e.g., advisory actions or interview summary records)

     because:  (1) the handwriting is not always decipherable,

     and (2) the handwriting as it comes through on the carbon

     copies furnished to applicants is frequently too light at

     least in part to be decipherable.



Response:  The Office's goal is to create a readable

administrative record of the prosecution of every application.

The Office is currently designing, testing and implementing

electronic forms and Office action writing software to avoid or

minimize the need for hand-writing/printing in Office

communications.  Any applicant receiving an Office communication

in which the handwriting is not decipherable, or does not

adequately appear on the carbon copies to be decipherable, should

request a legible copy of such communication from the Office.



     Comment :  Several comments noted that the limitations in

     §§ 1.52(a) and (b) regarding "typed" and "ink" appear to

     exclude computer and laser printers, as well as commercially

     or mechanically printed papers such as declaration forms.

     Another comment noted that the limitations in §§ 1.52(a) and

     (b) regarding "typed" and "ink" are more restrictive than

     PCT Rule 11.9(a) and (d).



Response:  The phrase "printed" was proposed to be deleted since

it could be read to mean that hand-printing is acceptable.

Section 1.52(a) will require, in part, that "[a]ll papers which

are to become a part of the permanent records of the Patent and

Trademark Office must be legibly written either by a typewriter

or mechanical printer in permanent dark ink or its equivalent in

portrait orientation on flexible, strong, smooth, non-shiny,

durable, and white paper."  This will clarify that papers printed

by a computer-operated laser, or any mechanical printer are

acceptable, but that hand-printed papers are not.  This change

will also avoid inconsistencies with the requirements of PCT Rule

11.9.



     Comment :  One comment noted that the proposed changes to

     § 1.52(a) did not include any limitations regarding

     permissible type fonts.  The comment questioned, since the

     purpose of the proposed rule change was to permit optical

     character recognition (OCR) scanning of the application

     papers, whether script fonts would be permissible.



Response:  Section 1.52(a) does not include any express

prohibition against the use of script fonts.  Nevertheless,

§ 1.52(a) requires that "the application papers must be presented

in a form having sufficient clarity and contrast between the

paper and the writing thereon to permit . . . electronic

reproduction by use of digital imaging and optical character

recognition."  Any application papers, including application

papers containing a script font, that are not in a form having

sufficient clarity and contrast between the paper and the writing

thereon to permit electronic reproduction by use of digital

imaging and optical character recognition will be objected to as

not in compliance with § 1.52(a).  Therefore, the Office cautions

applicants not to submit application papers having script fonts.



     Comment :  One comment noted that § 1.52(b) would require

     that all papers (including drawings per proposed § 1.84) be

     limited to either DIN size A4 or 8 1/2 by 11 inches, which

     would eliminate the currently allowed paper sizes of 8 1/2

     by 13 or 14 inches.  The comment questioned whether this

     would also apply to the official papers issued by the

     Office, noting that the Office currently issues papers

     having a paper size mix of 8 1/2 by 11, 13, and 14 inches,

     which presents problems for applicants.  The comment

     suggested that the Office should not issue papers of a size

     not permitted in § 1.52.



Response:  The Office is currently in the process of

standardizing to either 21.0 cm. by 29.7 cm. (DIN size A4) or

21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).



     Comment :  One comment suggested that the Office should not

     issue papers with writing on the back side in accordance

     with § 1.52(b).



Response:  The Office currently includes informational language

on the back side of certain forms.  The alternatives to issuing

such forms with writing on the back side are:  (1) not providing

this information to applicants, (2) reducing the print size to

permit all of the information to be located on the front of the

form, or (3) routinely providing multiple page forms.  Since none

of the alternatives are preferable to simply including

informational language on the back side of certain forms, the

Office will continue to include information language on the back

of papers issued by the Office, until it fully transforms all of

its forms to electronically generated forms.



     Comment :  One comment questioned whether the phrase "claims

     on a separate sheet" in § 1.52(b) means that:  (1) all of

     the claims must appear on a single separate sheet, (2) each

     claim must appear on a separate sheet, or (3) the claims

     (claim 1) must begin or commence on a separate sheet.  The

     comment suggested the PCT wording that the claims shall

     commence on a separate sheet if the rule is intended to

     require that the claims (claim 1) must begin or commence on

     a separate sheet.



Response:  The phrase has been changed to "the claim or claims

commencing on a separate sheet" to clarify that the claims must

begin or commence on a separate sheet to parallel PCT

requirements.  Thus, §§ 1.52(b) and 1.75(h) require that the

claims (claim 1) must begin or commence on a separate sheet.

Sections 1.52(b) and 1.75(h) do not require that all of the

claims be set forth on a single sheet, or that each claim be set

forth on a separate sheet.



     Comment :  One comment questioned whether the phrase

     "abstract and claims on a separate sheet" in § 1.52(b) means

     that the abstract is to be on one separate sheet, and the

     claims are to be (or commence) on another separate sheet.



Response:  The phrase has been changed to "the claim or claims

commencing on a separate sheet and abstract commencing on a

separate sheet" to clarify that the claims must commence on one

separate sheet and the abstract must commence on another separate

sheet.



     Comment :  One comment noted that the requirement in

     § 1.52(b), as proposed, will require that the lines in the

     oath or declaration, as well as quotations from the rules,

     the MPEP, and court decisions in subsequently filed

     amendments, be 1 1/2 or double spaced, and is inconsistent

     with the forms included for comment with the Notice of

     Proposed Rulemaking.



Response:  Section 1.52(b) has been changed to require, inter

alia, that "[t]he lines of the specification, and any amendments

to the specification, must be 1 1/2 or double spaced."  The

requirement for 1 1/2 or double spacing will not apply to oaths

or declarations, pre-printed forms, or all of the statements in

the "Remarks" section of an amendment.  Applicants are

nevertheless requested to submit papers with lines 1 1/2 or

double spaced, except in standardized forms or where single-

spacing may be stylistically necessary (e.g., block quotations).



     Comment :  One comment questioned whether the requirement in

     § 1.52(b), as proposed, that papers have lines 1 1/2 or

     double spaced will apply to Office actions.  The comment

     suggested that not placing block quotations from the

     statutes and regulations in single spacing will decrease the

     readability of Office actions.



Response:  As discussed supra, §§ 1.52(a) and (b) are designed to

facilitate patent printing and do not apply to Office actions.

Section 1.52(b) has been changed to require, inter alia, that

"[t]he lines of the specification, and any amendments to the

specification, must be 1 1/2 or double spaced."  Therefore, the

requirement for 1 1/2 or double spaced lines will not apply to

Office actions.



     Comment :  Several comments objected to the requirement that

     tables be in portrait orientation as inconsistent with PCT

     rules, and as causing tables to be split over multiple

     pages.



Response:  The suggestions are adopted.  Section 1.58 will state

that "[c]hemical and mathematical formulae and tables must be

presented in compliance with §§ 1.52(a) and (b), except that

chemical and mathematical formulae or tables may be placed in a

landscape orientation if they cannot be presented satisfactorily

in a portrait orientation," rather than "[t]o facilitate camera

copying when printing, the width of formulae and tables as

presented should be limited normally to 12.7 cm. (5 inches) so

that it may appear as a single column in the printed patent."



     Comment :  One comment stated that § 1.72 is contrary to PCT

     Rule 11.4(a), and will require renumbering of the

     application pages for later filing of that application in

     the European Patent Office (EPO) or under the PCT.



Response:  Section 1.72, as proposed in the Notice of Proposed

Rulemaking, provided that the abstract be "preferably prior to

the first page of the specification," and, as such, merely

expressed the Office's preference for the location of the

abstract as prior to the first page of the specification.

Nevertheless, to avoid the undesirable result of requiring an

applicant who submitted an application in the format set forth in

§ 1.77 to renumber the specification pages for filing that

application in the EPO or under the PCT, § 1.72 is changed to

state that the preferable location of the abstract is following

the claims.



     Comment :  One comment stated that requiring that the rarely

     used section headings (e.g., statement regarding federally

     sponsored research and development) be followed by the

     phrase "not-applicable" is confusing.



Response:  Section 1.77 is permissive rather than mandatory.  As

such, any applicant finding the format suggested therein to be

confusing is at liberty to simply include those section headings

applicable to the particular application.  The use of each

section heading, even when the section is "not-applicable," is

desirable in that it apprises the Office that the section at

issue has been considered and deemed inapplicable.  Simply not

providing a section heading is ambiguous as to whether the

applicant considers the section inapplicable or has not

considered whether the section is applicable to the application.

In addition, the use of such section headings will be of greater

benefit when the Office implements procedures to permit the

electronic filing of patent applications.



     Comment :  One comment stated that the requirements set

     forth in § 1.77 are in addition to those required by the

     PCT.  The comment argued that the Office cannot require

     international applications entering the national stage under

     35 U.S.C. 371 to comply with these requirements.



Response:  As discussed supra, § 1.77 merely expresses the

Office's preference for the arrangement of the application

elements.  The Office may advise an applicant that the

application does not comply with the format set forth in § 1.77,

and suggest this format for the applicant's consideration;

however, the Office will not require any application to comply

with the format set forth in § 1.77.  Therefore, there is no

conflict between § 1.77 and the PCT.



     Comment :  One comment noted that §§ 1.154 and 1.163 apply

     to design and plant applications, and, as such, they are not

     in conflict with PCT Rules.  The comment suggested that it

     would, however, be preferable that all types of U.S.

     applications maintain the same order of application

     elements, and that this order be the order set forth by the

     PCT Rules.



Response:  As discussed supra, the arrangement of the elements of

an application set forth in § 1.77 is not mandatory, and, as

such, § 1.77 is not in conflict with the PCT or PCT Rules.

Section 1.77 merely expresses the Office's preference for the

arrangement of the elements of an application.  The Office's

preference for the format of design applications (§ 1.154) and

plant applications (§ 1.163) is the same as the Office's

preference for utility applications (§ 1.77).

     Comment :  One comment stated that in the absence of

     statutory requirements for the application elements proposed

     in §§ 1.77, 1.154, and 1.163, the rule should clearly state

     that these application elements or arrangements are

     preferred but not mandatory.



Response:  Sections 1.77, 1.154, and 1.163 employ the phrase

"should" rather than "must," which is the language of a precatory

statement.  Therefore, §§ 1.77, 1.154, and 1.163 currently state

that these application elements or arrangements are preferred,

but are not mandatory.



     Comment :  One comment questioned whether the Application

     Transmittal Form, and Fee Transmittal Form set forth in

     § 1.77 should be numbered pages 1 and 2 pursuant to § 1.52,

     and further questioned where the drawings and oath or

     declaration are to be numbered.



Response:  Section 1.52 has been changed to provide that the

pages of the specification, not the application, should be

consecutively numbered beginning with page 1.  The Application

Transmittal Form, and Fee Transmittal Form set forth in § 1.77

are not part of the specification.  As such, they should not be

numbered as pages 1 and 2, respectively.  Likewise, the drawings

and oath or declaration are not part of the specification, and

need not be numbered.



     Comment :  One comment stated that the failure to include

     the phrase "not applicable" by all of the application

     elements not required by statute or regulation rendered it

     unclear as to whether the Office would object to the lack of

     an application element for which the phrase "not applicable"

     is not included.



Response:  The Office anticipates that an applicant choosing to

use the Transmittal forms provided by the Office will arrange his

or her application in the format suggested by the Office.  The

patent statutes and regulations set forth the requirements for a

complete application, as well as the requirements for obtaining a

filing date in an application.  Applications are examined for

compliance with the patent statutes and regulations, not for

consistency with any particular transmittal form.



     Comment :  One comment noted, in regard to § 1.84(c), that

     the drawings of an international application, which are

     often used for processing in the Office, will have the World

     Organization (WO) publication number and International

     Bureau (IB) publication date on the top of the drawing.



Response:  The WO publication number and IB publication date

placed on the top of the drawing of an international application

is not objectionable under § 1.84(c).



     Comment :  One comment stated that the scan target points

     conflict with PCT Rule 11.6(e).  As such, the scan target

     points would have to be removed from applications to be

     filed as an international application.  The comment further

     stated that these target points are unnecessary in view of

     the paper size and margin requirements.



Response:  Section 1.84(g) states that drawings "should," and not

"must," have scan target points printed on two catercorner margin

corners.  Thus, § 1.84(g) merely expresses the Office's

preference for scan target points on the drawings for filming and

printing purposes, which are considered desirable due to the

different sights on 21.0 cm. by 29.7 cm. (DIN size A4) and

21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.  An

applicant wishing to provide scan target points on drawings that

will later be filed in the EPO may simply copy the drawings to be

filed in the EPO, place the scan target points only on the Office

copy of the drawings, and submit the copy of the drawings

containing the scan target points to the Office.  Likewise,

applicants filing drawings that were previously filed in the EPO

should simply add scan target points only to the copy of the

drawings to be filed in the Office.  Nevertheless, as § 1.84(g)

merely expresses a preference for scan target points for Office

filming and printing purposes, an applicant intending to later

file the application in the EPO, or any applicant, is at liberty

to not include such scan target points on the drawings.  The

Office will not object to the absence of scan target points on

any drawings filed in the Office.  Therefore, § 1.84(g) does not

include a requirement in excess of, or inconsistent, with PCT

Rules.



     Comment :  One comment stated that the term "catercorner" is

     slang, and suggested that it be replaced in § 1.84(g) with a

     phrase such as "diagonally opposite."



Response:  The term "catercorner" is not slang.  While there are

a number of acceptable English phrases to denote diagonally

opposite, the term "catercorner" was selected to avoid using a

multiple word phrase where a single word will suffice.



     Comment :  One comment stated that the language proposed to

     be added to § 1.97 regarding a reexamination or patent owner

     is inconsistent with § 1.533 and suggested that it be

     deleted.



Response:  The suggestion is adopted.



     Comment :  One comment stated that § 1.131 does not specify

     whether the phrase "application" includes provisional

     applications.  The comment suggested that § 1.131 be amended

     to state "unless the date of such patent or publication is

     more than one year prior to the earliest date on which the

     inventor's or patent owner's application or provisional

     application from which that application claims priority

     therefrom was filed in this country."



Response:  The proposed change to § 1.131 is not adopted.  It is

well established that the filing date of any abandoned

application co-pending with and referred to in a patent is the

effective date of the patent with respect to the common subject

matter disclosed in the patent and abandoned application.  See In

re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948).  Section 1.131

does not make a specific reference to nonprovisional applications

for which a benefit is claimed under 35 U.S.C. 120; however, it

is understood that the effective date of any patent sought to be

antedated pursuant to § 1.131 is the earliest filing date of any

application to which the patent is entitled to under 35 U.S.C.

120 with respect to the common subject matter disclosed in the

patent and the application.  The provisions of title 35, except

for 35 U.S.C. 115, 131, 135 and 157, apply to provisional

applications.  35 U.S.C. 111(b)(8).  It is therefore likewise

unnecessary to specifically reference provisional applications in

§ 1.131.



     Comment :  Several comments objected to §§ 1.291 and 1.292

     as pre-grant opposition, especially in view of the pre-grant

     publication of pending applications that would be provided

     for in H.R. 1733, if enacted, and the expanded reexamination

     that would be provided for in H.R. 1732, if enacted.  The

     comments either suggested that the protest and public use

     proceeding provisions of §§ 1.291 and 1.292 be severely

     limited or abolished.



Response:  The changes to §§ 1.291 and 1.292 place greater

obligations on third parties seeking to use these sections.  As

such, this rule change does not add to any third party's ability

to participate in the prosecution of a pending application.

Nevertheless, as neither H.R. 1732 nor H.R. 1733 has presently

been enacted, analysis of whether modification of §§ 1.291 and

1.292 in addition to that proposed in the Notice of Proposed

Rulemaking is desirable in a pre-grant publication or expanded

reexamination system is held in abeyance pending enactment of

H.R. 1733 or 1732.



     Comment :  One comment noted that any standardization of

     patent applications should not include pre-printed forms

     taking eleven hours to complete.  The comment further

     suggested that word-processor versions of any collection of

     information, rather than pre-printed forms, would be of

     greater assistance to members of the public.



Response:  Initially, the Notice of Proposed Rulemaking indicated

that the initial patent application (e.g., the specification,

drawings, as well as the standard forms), not merely the proposed

standardized forms, is a collection of information estimated to

average eleven hours to complete.  The Notice of Proposed

Rulemaking stated that the public reporting burden for these

collections of information is estimated to average:  (1) twelve

minutes per response for the Fee Transmittal form, (2) twelve

minutes per response for the Utility Patent Application

Transmittal form, (3) twelve minutes per response for the Design

Patent Application Transmittal form, (4) twelve minutes per

response for the Plant Patent Application Transmittal form,

(5) twelve minutes per response for the Plant Color Coding Sheet,

(6) twenty-four minutes per response for the Declaration form,

and (7) twenty-four minutes per response for the Plant Patent

Application Declaration.  Nevertheless, the final rules do not

require the use of any standardized form.  The Office publishes

standardized forms only as an aid to practitioners and

applicants.



     Comment :  One comment questioned whether use of the

     standardized versions of the various forms would be

     required.  Another comment stated that the Office has no

     authority to require the use of the published forms in the

     absence of statutory authority.



Response:  Use of the forms included for comment with the Notice

of Proposed Rulemaking is not mandatory.  That is, an applicant

need not use the standardized versions of the Fee Transmittal

form, Utility Patent Application Transmittal form, Design Patent

Application Transmittal form, Plant Patent Application

Transmittal form, Plant Color Coding Sheet, Declaration form and

Plant Patent Application Declaration form, and need not use any

fee transmittal form, application transmittal form, or plant

color coding sheet.  These forms were created to assist

applicants in filing a patent application and to help ensure the

filing of a complete application accompanied by the appropriate

fees, thereby avoiding unnecessary delays in the examination of

the application.



     Comment :  One comment stated that the Office should not

     require the use of mandated forms, and if the Office

     requires the use of mandated forms, the Office should revise

     the forms to render them readily reproducible by

     conventional software, and should arrange for versions of

     these forms in various formats to be distributed by the

     Internet, bulletin board, or floppy disk.  Another comment

     suggested that the Office should make its form or templates

     available for electronic copying.



Response:  Copies of the standard forms provided by the Office

may be obtained by contacting the Customer Service Center of the

Office of Initial Patent Examination at (703) 308-1214.  Also,

many standardized forms have been loaded on the Office's Internet

Website and may be electronically copied via the Internet through

anonymous file transfer protocol (ftp) (address: ftp.uspto.gov).

Nevertheless, use of the forms included for comment with the

Notice of Proposed Rulemaking is not mandatory.



     Comment :  One comment questioned why there is a box with an

     instruction to type a plus sign in the box at the very top

     of the standardized forms.



Response:  As discussed supra, the Office plans to replace or

augment the current microfilming process with an electronic data

base which captures at least the technical content of the

application-as-filed for internal Office use.  Typing a plus sign

(+) into this box will facilitate the image scanner in aligning

the remaining typing on the form during the scanning process.



     Comment :  One comment questioned:  (1) why the application

     transmittal forms do not have a place for applicant to

     indicate the type of new utility application being

     transmitted (e.g., a provisional, original, continuation,

     division, continuation-in-part, reissue), and (2) how the

     Office official will obtain this information for entry in

     the official use "application type" box.



Response:  The Utility Patent Application Transmittal form sets

forth instructions for filing utility applications under § 1.53

in the arrangement set forth in § 1.77.  All non-reissue,

nonprovisional utility applications (i.e., original,

continuation, divisional, and continuation-in-part applications)

filed under § 1.53 should be submitted using the Utility Patent

Application Transmittal form.  The Design Patent Application

Transmittal form sets forth instructions for filing design

applications in the arrangement set forth in § 1.154.  All non-

reissue design applications should be submitted using the Design

Patent Application Transmittal form.  The Plant Patent

Application Transmittal form sets forth instructions for filing

plant applications in the arrangement set forth in § 1.163.  All

non-reissue, nonprovisional plant applications should be

submitted using the Plant Patent Application Transmittal form.



A Reissue Patent Application Transmittal form is also available,

and all applications for the reissue of a patent should be

submitted using the Reissue Patent Application Transmittal form.

The cover sheet provided for in § 1.53(b)(2)(i) for a provisional

application functions as a transmittal sheet for a provisional

application.  As such, the standardized Provisional Application

Cover Sheet is the transmittal form for a provisional

application.  The provisional application cover sheet was

published in the rulemaking entitled "Changes to Implement 20-

Year Patent Term and Provisional Applications," in the Federal

Register at 60 FR 20230-31 (April 25, 1995), and in the Patent

and Trademark Office Official Gazette at 1174 Off. Gaz. Pat

Office 45-46 (May 2, 1995).



To provide a place on the Application Transmittal form for claims

under 35 U.S.C. 119, 120, or 121 would require the use of an

unacceptably smaller font on the Application Transmittal form.

The Declaration forms provide a place for stating claims under

35 U.S.C. 119, 120 or 121.  The inclusion on filing of an

executed or unexecuted Declaration form containing this

information would assist the Office in ascertaining whether the

application is an original, continuation, divisional, or

continuation-in-part application.  In addition, in the event that

H.R. 1733 is enacted, and the proposed changes to §§ 1.55(a) and

1.78(a)(2) are adopted substantially as proposed, the routine

inclusion of claims for priority under 35 U.S.C. 119, 120, or 121

in an executed or unexecuted declaration form accompanying the

application papers would be an excellent mechanism for avoiding

an inadvertent failure to timely submit a claim for priority

under 35 U.S.C. 119, 120, or 121.



     Comment :  One comment noted that the heading "DECLARATION"

     does not state the types of applications with which the

     declaration form could be used.  The comment questioned

     whether it is intended to be used with any type of

     nonprovisional application except plant applications for

     which a separate form is proposed.



Response:  The declaration form containing the heading

"DECLARATION" is intended to be used with any type of

nonprovisional application except plant applications, for which a

separate Plant Declaration form is provided.



     Comment :  One comment suggested that in the foreign

     priority claim section of the Declaration form, the last

     line, the phrase "having a filing date before that of the

     application on which priority is claimed" should be changed

     to "for which priority is not claimed," to cover those

     foreign applications which have a filing date after that of

     the application on which priority is claimed and the benefit

     of which applicant does not want to claim.  The comment also

     indicated that, frequently, an application is filed after

     the Convention Year.



Response:  The suggestion is not adopted.  Section 1.63(c)

requires that an oath or declaration in any application in which

a claim for priority is made pursuant to § 1.55 identify ... "any

foreign application having a filing date before that of the

application on which priority is claimed, by specifying the

application number, country, day, month, and year of its filing."

Thus, the language in the Declaration form aids applicants in

submitting a declaration in compliance with § 1.63(c).  Any

foreign application having a filing date before that of the

application on which priority is claimed is, by definition, a

foreign application for which priority is not claimed.



     Comment :  One comment suggested that in the foreign

     priority claim section, the right hand columns, the heading

     should be corrected to "Certified Copy Attached" since the

     Office does not routinely want uncertified copies.



Response:  The suggestion is adopted.  The Declaration form has

been modified accordingly.



     Comment :  One comment noted that the Fee Calculation and

     Application Transmittal are currently on a single

     sheet/form, where the proposed forms provide a separate

     sheet/form for each.  The comment also noted that the

     current Declaration form is a single sheet, where the

     proposed Declaration form contains multiple sheets.



Response:  The Office currently receives application

transmittals, fee calculations/transmittals and declarations in a

variety of forms and in a multitude of formats.  The proposed

forms were developed as a result of an analysis of the current

practices and requirements of applicants, as well as the Office's

plans to scan application data from these forms into an

electronic data base.  The Fee Transmittal form was created to

aid applicants in submitting the fees due on filing a new patent

application, as well as the fees that may be due throughout the

prosecution of the application.  The Application Transmittal

serves to both aid applicants in filing a complete application,

and simplify the pre-examination processing of the application.

To permit the inclusion of additional fee calculation and

application transmittal information on the standardized forms,

and to provide a Fee Transmittal form for use throughout the

prosecution of the application, a separate Fee Transmittal form

and Application Transmittal form were developed.  A multi-page

Declaration form is necessary to accommodate the Office's plans

to scan application data from this Declaration form into an

electronic data base.



     Comment :  One comment indicated that the meaning or purpose

     of "suffix" in the inventor signature block is unclear, and

     requested an explanation as to whether it refers to "Jr." or

     "II," or whether it is a place to put the mother's name for

     those inventors whose family name is followed by their

     mother's name.

Response:  The field on the Declaration form labeled (inventor)

"suffix" is intended to provide the applicant with an option to

indicate family position relative to age.  Examples of an

inventor's suffix are:  Jr., Sr., and III.  This information is

tracked by the Office and is necessary to print patents which

accurately reflect bibliographic information about the inventor.

The use of this field and the data expected will be clarified and

specified in the form instructions.



     Comment :  One comment questioned the meaning or purpose of

     "Applicant Authority" in the last line of the inventor data

     block.



Response:  The phrase "Applicant Authority" indicates the

authority that the applicant has in executing the application

(e.g., inventor, executor (§ 1.42), assignee (§ 1.47(b)).  This

field is an optional field for the applicant to complete.  The

electronic versions of the proposed standard declaration forms

would provide the applicant with directions and a list of valid

codes that correspond with a specific identification of the

authority the applicant retains (e.g., the Authority Code for an

executor will be "04").

     Comment :  One comment stated that due to the spacing and

     small fonts on the fee transmittal form, this sheet cannot

     be used with a conventional word processor.



Response:  To accommodate all the fee descriptions on a one-page

fee transmittal it was necessary to use smaller fonts in the

form's design.  These fonts are available in Word and

WordPerfect.  An electronic version of the fee transmittal will

be available from the Office soon.



     Comment :  One comment stated that the "one form fits all"

     mentality of the fee transmittal form should be reconsidered

     since certain fees are submitted only once during the

     prosecution of an application.



Response:  The proposed standard one-page fee form is primarily

to facilitate and simplify the fee payment process.  The one-page

fee transmittal is intended to aid applicants in providing

complete fee information to the Office for each application and

paper submission.  This will enable the Office to more

efficiently process and record fee payments, which will avoid

delays in the prosecution of an application.

OTHER CONSIDERATIONS



This final rule change is in conformity with the requirements of

the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive

Order 12612, and the Paperwork Reduction Act of 1995, 44 U.S.C.

3501 et seq.  It has been determined that this final rule is not

significant for the purposes of Executive Order 12866.



The Assistant General Counsel for Legislation and Regulation of

the Department of Commerce has certified to the Chief Counsel for

Advocacy, Small Business Administration, that this rule change

will not have a significant economic impact on a substantial

number of small entities (Regulatory Flexibility Act, 5 U.S.C.

605(b)).  The principal effect of this rule change is to simplify

and clarify the rules governing the form of patent application

papers.



The Office has also determined that this notice has no Federalism

implications affecting the relationship between the National

Government and the States as outlined in Executive Order 12612.



Notwithstanding any other provision of law, no person is required

to respond to nor shall any person be subject to a penalty for

failure to comply with a collection of information subject to the

requirements of the Paperwork Reduction Act unless that

collection of information displays a currently valid OMB control

number.



This final rule package contains a collection of information

subject to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et

seq.  This collection of information is currently approved by the

Office of Management and Budget under Control No. 0651-0032.

This collection of information includes the initial patent

application filing, the Fee Transmittal form, the Utility Patent

Application Transmittal form, the Design Patent Application

Transmittal form, the Plant Patent Application Transmittal form,

the Plant Color Coding Sheet, the Declaration form, and the Plant

Patent Application Declaration form.  The above-mentioned forms

will reduce the burden and uncertainty associated with the

submission of an application and related information, and enhance

the Office's ability to use standardized automation techniques

(optical character recognition, etc.) to record and process

information concerning applications.  The public reporting burden

for these collections of information is estimated to average:

(1) ten hours per response for the specification and drawings of

an application, (2) twelve minutes per response for the Fee

Transmittal form, (3) twelve minutes per response for the Utility

Patent Application Transmittal form, (4) twelve minutes per

response for the Design Patent Application Transmittal form,

(5) twelve minutes per response for the Plant Patent Application

Transmittal form, (6) twelve minutes per response for the Plant

Color Coding Sheet, (7) twenty-four minutes per response for the

Declaration form, and (8) twenty-four minutes per response for

the Plant Patent Application Declaration.  These estimates

include the time for reviewing instructions, searching existing

data sources, gathering and maintaining the data needed, and

completing and reviewing the collections of information.



Send comments regarding this burden estimate or any other aspect

of this collection of information, including suggestions for

reducing this burden to the Office of System Quality and

Enhancement, Data Administration Division, Patent and Trademark

Office, Washington, D.C. 20231, and to the Office of Information

and Regulatory Affairs, Office of Management and Budget,

Washington, DC 20503 (ATTN:  Paperwork Reduction Act Project 0651-

0032).



List of Subjects



37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of

Information, Inventions and patents, Reporting and record keeping

requirements, Small Businesses.



For the reasons set forth in the preamble, 37 CFR Part 1 is

amended as follows:



PART 1 - RULES OF PRACTICE IN PATENT CASES





.    The authority citation for 37 CFR Part 1 continues to read

as follows:



Authority: 35 U.S.C. 6, unless otherwise noted.





.    Section 1.5 is amended by adding paragraph (f) to read as

follows:

§ 1.5 Identification of application, patent or registration.

*  *  *  *  *

     (f) When a paper concerns a provisional application, it

should identify the application as such and include the

application number.





.    Section 1.12 is amended by revising paragraph (c) to read as

follows:



§ 1.12 Assignment records open to public inspection.

*  *  *  *  *

     (c) Any request by a member of the public seeking copies of

any assignment records of any pending or abandoned patent

application preserved in confidence under § 1.14, or any

information with respect thereto, must:

     (1) Be in the form of a petition accompanied by the petition

fee set forth in § 1.17(i); or

     (2) Include written authority granting access to the member

of the public to the particular assignment records from the

applicant or applicant's assignee or attorney or agent of record.

*  *  *  *  *





.    Section 1.14 is amended by revising the section heading and

paragraphs (a), (b), and (e) to read as follows:



§ 1.14 Patent applications preserved in confidence.

     (a)(1) Patent applications are generally preserved in

confidence pursuant to 35 U.S.C. 122.  No information will be

given concerning the filing, pendency, or subject matter of any

application for patent, and no access will be given to, or copies

furnished of, any application or papers relating thereto, except

as set forth in this section.

     (2) Status information, which includes information such as

whether the application is pending, abandoned, or patented, as

well as the application number and filing date, may be supplied:

     (i)   Concerning an application or any application claiming

the benefit of the filing date of the application, if the

application has been identified by application number or serial

number and filing date in a published patent document,

     (ii)  Concerning the national stage application or any

application claiming the benefit of the filing date of a

published international application, if the United States of

America has been indicated as a Designated State in the

international application, or

     (iii) When it has been determined by the Commissioner to be

necessary for the proper conduct of business before the Office.

     (3) Access to, or copies of, an application may be provided:

     (i)   When the application is open to the public as provided

in § 1.11(b),

     (ii)  When written authority in that application from the

applicant, the assignee of the application, or the attorney or

agent of record has been granted,

     (iii) When it has been determined by the Commissioner to be

necessary for the proper conduct of business before the Office,

or

     (iv)  To any person on written request, without notice to

the applicant, when the application is abandoned and available

and is:

     (A) Referred to in a U.S. patent,

     (B) Referred to in an application open to public inspection,     (C) An application

which claims the benefit of the filing date of an application open to public inspection,

or

     (D) An application in which the applicant has filed an

authorization to lay open the complete application to the public.     (b) Complete

applications (§ 1.51(a)) which are abandoned may be destroyed and hence may not be

available for access or copies as permitted by paragraph (a)(3)(iv) of this section after

20 years from their filing date, except those to which particular attention has been

called and which have been marked for preservation.

*  *  *  *  *

     (e) Any request by a member of the public seeking access to,

or copies of, any pending or abandoned application preserved in

confidence pursuant to paragraph (a) of this section, or any

papers relating thereto, must:

     (1) Be in the form of a petition and be accompanied by the

petition fee set forth in § 1.17(i); or

     (2) Include written authority granting access to the member

of the public in that particular application from the applicant

or the applicant's assignee or attorney or agent of record.

*  *  *  *  *





.    Section 1.52 is amended by revising paragraphs (a) and (b)

to read as follows:



§ 1.52 Language, paper, writing, margins.

     (a) The application, any amendments or corrections thereto,

and the oath or declaration must be in the English language

except as provided for in § 1.69 and paragraph (d) of this

section, or be accompanied by a verified translation of the

application and a translation of any corrections or amendments

into the English language.  All papers which are to become a part

of the permanent records of the Patent and Trademark Office must

be legibly written either by a typewriter or mechanical printer

in permanent dark ink or its equivalent in portrait orientation

on flexible, strong, smooth, non-shiny, durable, and white paper.

All of the application papers must be presented in a form having

sufficient clarity and contrast between the paper and the writing

thereon to permit the direct reproduction of readily legible

copies in any number by use of photographic, electrostatic,

photo-offset, and microfilming processes and electronic

reproduction by use of digital imaging and optical character

recognition.  If the papers are not of the required quality,

substitute typewritten or mechanically printed papers of suitable

quality will be required.  See § 1.125 for filing substitute

typewritten or mechanically printed papers constituting a

substitute specification when required by the Office.

     (b) Except for drawings, the application papers

(specification, including claims, abstract, oath or declaration,

and papers as provided for in this part and also papers

subsequently filed, must have each page plainly written on only

one side of a sheet of paper, with the claim or claims commencing

on a separate sheet and the abstract commencing on a separate

sheet.  See §§ 1.72(b) and 1.75(h).  The sheets of paper must be

the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or

21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).  Each sheet must

include a top margin of at least 2.0 cm. (3/4 inch), a left side

margin of at least 2.5 cm. (1 inch), a right side margin of at

least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm.

(3/4 inch), and no holes should be made in the sheets as

submitted.  The lines of the specification, and any amendments to

the specification, must be 1 1/2 or double spaced.  The pages of

the specification including claims and abstract must be numbered

consecutively, starting with 1, the numbers being centrally

located above or preferably, below, the text.  See § 1.84 for

drawings.

*  *  *  *  *





.    Section 1.54 is amended by revising paragraph (b) to read as

follows:



§ 1.54 Parts of application to be filed together; filing receipt.

*  *  *  *  *

     (b) Applicant will be informed of the application number and

filing date by a filing receipt.





.    Section 1.58 is amended by removing and reserving paragraph

(b) and revising the section heading and paragraph (c) to read as

follows:



§ 1.58 Chemical and mathematical formulae and tables.

*  *  *  *  *

     (b) [Reserved]

     (c) Chemical and mathematical formulae and tables must be

presented in compliance with § 1.52(a) and (b), except that

chemical and mathematical formulae or tables may be placed in a

landscape orientation if they cannot be presented satisfactorily

in a portrait orientation.  Typewritten characters used in such

formulae and tables must be chosen from a block (nonscript) type

font or lettering style having capital letters which are at least

0.21 cm. (0.08 inch) high (e.g., elite type).  A space at least

0.64 cm. (1/4 inch) high should be provided between complex

formulae and tables and the text.  Tables should have the lines

and columns of data closely spaced to conserve space, consistent

with a high degree of legibility.





.    Section 1.62 is amended by revising paragraphs (e) and (f)

to read as follows:



§ 1.62 File wrapper continuing procedure.

*  *  *  *  *

     (e) An application filed under this section will utilize the

file wrapper and contents of the prior application to constitute

the new continuation, continuation-in-part, or divisional

application but will be assigned a new application number.

Changes to the prior application must be made in the form of an

amendment to the prior application as it exists at the time of

filing the application under this section.  No copy of the prior

application or new specification is required.  The filing of such

a copy or specification will be considered improper, and a filing

date as of the date of deposit of the request for an application

under this section will not be granted to the application unless

a petition with the fee set forth in § 1.17(i) is filed with

instructions to cancel the copy or specification.

     (f) The filing of an application under this section 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 § 1.14 to access to, or

information concerning either the prior application or any

continuing application filed under the provisions of this section

may be given similar access to, or similar information

concerning, the other application(s) in the file wrapper.

*  *  *  *  *





.    Section 1.72 is amended by revising paragraph (b) to read as

follows:



§ 1.72 Title and abstract.

*  *  *  *  *

     (b) A brief abstract of the technical disclosure in the

specification must commence on a separate sheet, preferably

following the claims, under the heading "Abstract of the

Disclosure."  The purpose of the abstract is to enable the Patent

and Trademark Office and the public generally to determine

quickly from a cursory inspection the nature and gist of the

technical disclosure.  The abstract shall not be used for

interpreting the scope of the claims.





.    Section 1.75 is amended by revising paragraph (g) and adding

paragraphs (h) and (i) to read as follows:



§ 1.75 Claim(s).

*  *  *  *  *

     (g) The least restrictive claim should be presented as claim

number 1, and all dependent claims should be grouped together

with the claim or claims to which they refer to the extent

practicable.

     (h) The claim or claims must commence on a separate sheet.

     (i) Where a claim sets forth a plurality of elements or

steps, each element or step of the claim should be separated by a

line indentation.





.    Section 1.77 is revised to read as follows:



§ 1.77 Arrangement of application elements.

     (a) The elements of the application, if applicable, should

appear in the following order:

     (1)  Utility Application Transmittal Form.

     (2)  Fee Transmittal Form.

     (3)  Title of the invention; or an introductory portion

stating the name, citizenship, and residence of the applicant,

and the title of the invention.

     (4)  Cross-reference to related applications.

     (5)  Statement regarding federally sponsored research or

development.

     (6)  Reference to a "Microfiche appendix."  (See § 1.96

(c)).  The total number of microfiche and total number of frames

should be specified.

     (7)  Background of the invention.

     (8)  Brief summary of the invention.

     (9)  Brief description of the several views of the drawing.

     (10) Detailed description of the invention.

     (11) Claim or claims.

     (12) Abstract of the Disclosure.

     (13) Drawings.

     (14) Executed oath or declaration.

     (15) Sequence Listing (See §§ 1.821 through 1.825).

     (b) The elements set forth in paragraphs (a)(3) through

(a)(5), (a)(7) through (a)(12) and (a)(15) of this section should

appear in upper case, without underlining or bold type, as

section headings.  If no text follows the section heading, the

phrase "Not Applicable" should follow the section heading.





.    Section 1.78 is amended by removing paragraph (d) and

revising paragraphs (a)(2) and (c) to read as follows:



§ 1.78 Claiming benefit of earlier filing date and cross

references to other applications.

(a) *  *  *  *  *

     (2) Any nonprovisional application claiming the benefit of

one or more prior filed copending nonprovisional applications or

international applications designating the United States of

America must contain or be amended to contain in the first

sentence of the specification following the title a reference to

each such prior application, identifying it by application number

(consisting of the series code and serial number) or

international application number and international filing date

and indicating the relationship of the applications.

Cross-references to other related applications may be made when

appropriate.  (See § 1.14(a)).

*  *  *  *  *

     (c) Where an application or a patent under reexamination and

at least one other application naming different inventors are

owned by the same party and contain conflicting claims, and there

is no statement of record indicating that the claimed inventions

were commonly owned or subject to an obligation of assignment to

the same person at the time the later invention was made, the

assignee may be called upon to state whether the claimed

inventions were commonly owned or subject to an obligation of

assignment to the same person at the time the later invention was

made, and if not, indicate which named inventor is the prior

inventor.





.    Section 1.84 is amended by revising paragraphs (c), (f)-(g),

and (x) to read as follows:



§ 1.84 Standards for drawings.

*  *  *  *  *

     (c) Identification of drawings.  Identifying indicia, if

provided, should include the application number or the title of

the invention, inventor's name, docket number (if any), and the

name and telephone number of a person to call if the Office is

unable to match the drawings to the proper application.  This

information should be placed on the back of each sheet of

drawings a minimum distance of 1.5 cm. (5/8 inch) down from the

top of the page.  In addition, a reference to the application

number, or, if an application number has not been assigned, the

inventor's name, may be included in the left-hand corner,

provided that the reference appears within 1.5 cm. (9/16 inch)

from the top of the sheet.

*  *  *  *  *

     (f) Size of paper.  All drawing sheets in an application

must be the same size.  One of the shorter sides of the sheet is

regarded as its top.  The size of the sheets on which drawings

are made must be:

     (1) 21.0 cm. by 29.7 cm. (DIN size A4), or

     (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

     (g) Margins.  The sheets must not contain frames around the

sight; i.e., the usable surface, but should have scan target

points, i.e., cross-hairs, printed on two catercorner margin

corners.  Each sheet must include a top margin of at least

2.5 cm. (1 inch), a left side margin of at least 2.5 cm.

(1 inch), a right side margin of at least 1.5 cm. (9/16 inch),

and a bottom margin of at least 1.0 cm. (3/8 inch), thereby

leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm.

by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater

than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm.

by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.

*  *  *  *  *

     (x) Holes.  No holes should be made by applicant in the

drawing sheets.  (See § 1.152 for design drawings, § 1.165 for

plant drawings, and § 1.174 for reissue drawings.)





.    Section 1.96 is revised to read as follows:



§ 1.96 Submission of computer program listings.

     (a) General.  Descriptions of the operation and general

content of computer program listings should appear in the

description portion of the specification.  A computer program

listing for the purpose of this section is defined as a printout

that lists in appropriate sequence the instructions, routines,

and other contents of a program for a computer.  The program

listing may be either in machine or machine-independent (object

or source) language which will cause a computer to perform a

desired procedure or task such as solve a problem, regulate the

flow of work in a computer, or control or monitor events.

Computer program listings may be submitted in patent applications

as set forth in paragraphs (b) and (c) of this section.

     (b) Material which will be printed in the patent.  If the

computer program listing is contained on ten printout pages or

less, it must be submitted either as drawings or as part of the

specification.

     (1) Drawings.  If the listing is submitted as drawings, it

must be submitted in the manner and complying with the

requirements for drawings as provided in § 1.84.  At least one

figure numeral is required on each sheet of drawing.

     (2) Specification.

     (i) If the listing is submitted as part of the

specification, it must be submitted in accordance with the

provisions of § 1.52, at the end of the description but before

the claims.

     (ii) Any listing submitted as part of the specification must

be direct printouts (i.e., not copies) from the computer's

printer with dark solid black letters not less than 0.21 cm.

high, on white, unshaded and unlined paper, and the sheets should

be submitted in a protective cover.  Any amendments must be made

by way of submission of substitute sheets.

     (c) As an appendix which will not be printed.  If a computer

program listing printout is eleven or more pages long, applicants

must submit such listing in the form of microfiche, referred to

in the specification (see § 1.77(a)(6)).  Such microfiche filed

with a patent application is to be referred to as a "microfiche

appendix."  The "microfiche appendix" will not be part of the

printed patent.  Reference in the application to the "microfiche

appendix" must be made at the beginning of the specification at

the location indicated in § 1.77(a)(6).  Any amendments thereto

must be made by way of revised microfiche.

     (1) Availability of appendix.  Such computer program

listings on microfiche will be available to the public for

inspection, and microfiche copies thereof will be available for

purchase with the file wrapper and contents, after a patent based

on such application is granted or the application is otherwise

made publicly available.

     (2) Submission requirements.  Except as modified or

clarified in this paragraph (c)(2), computer-generated

information submitted as a "microfiche appendix" to an

application shall be in accordance with the standards set forth

in 36 CFR Part 1230 (Micrographics).

     (i)   Film submitted shall be a first generation (camera

film) negative appearing microfiche (with emulsion on the back

side of the film when viewed with the images right-reading).

     (ii)  Reduction ratio of microfiche submitted should be 24:1

or a similar ratio where variation from said ratio is required in

order to fit the documents into the image area of the microfiche

format used.

     (iii) At least the left-most third (50 mm. x 12 mm.) of the

header or title area of each microfiche submitted shall be clear

or positive appearing so that the Patent and Trademark Office can

apply an application number and filing date thereto in an

eye-readable form.  The middle portion of the header shall be

used by applicant to apply an eye-readable application

identification such as the title and/or the first inventor's

name.  The attorney's docket number may be included.  The final

right-hand portion of the microfiche shall contain sequence

information for the microfiche, such as 1 of 4, 2 of 4, etc.

     (iv)  Additional requirements which apply specifically to

microfiche of filmed paper copy:

     (A) The first frame of each microfiche submitted shall

contain a test target.

     (B) The second frame of each microfiche submitted must

contain a fully descriptive title and the inventor's name as

filed.

     (C) The pages or lines appearing on the microfiche frames

should be consecutively numbered.

     (D) Pagination of the microfiche frames shall be from left

to right and from top to bottom.

     (E) At a reduction of 24:1, resolution of the original

microfilm shall be at least 120 lines per mm. (5.0 target).

     (F) An index, when included, should appear in the last frame

(lower right-hand corner when data is right-reading) of each

microfiche.

     (v)   Microfiche generated by Computer Output Microfilm.

     (A) The first frame of each microfiche submitted should

contain a resolution test frame.

     (B) The second frame of each microfiche submitted must

contain a fully descriptive title and the inventor's name as

filed.

     (C) The pages or lines appearing on the microfiche frames

should be consecutively numbered.

     (D) It is preferred that pagination of the microfiche frames

be from left to right and top to bottom but the alternative,

i.e., from top to bottom and from left to right, is also

acceptable.

     (E) An index, when included, should appear on the last frame

(lower right-hand corner when data is right-reading) of each

microfiche.





.    Section 1.97 is amended by revising paragraphs (a) through

(d) to read as follows:



§ 1.97 Filing of information disclosure statement.

     (a) In order for an applicant for a patent or for a reissue

of a patent to have an information disclosure statement in

compliance with § 1.98 considered by the Office during the

pendency of the application, it must satisfy paragraph (b), (c),

or (d) of this section.

     (b) An information disclosure statement shall be considered

by the Office if filed by the applicant:

     (1) Within three months of the filing date of a national

application;

     (2) Within three months of the date of entry of the national

stage as set forth in § 1.491 in an international application; or

     (3) Before the mailing date of a first Office action on the

merits, whichever event occurs last.

     (c) An information disclosure statement shall be considered

by the Office if filed by the applicant after the period

specified in paragraph (b) of this section, provided that the

statement is accompanied by either a certification as specified

in paragraph (e) of this section or the fee set forth in

§ 1.17(p), and is filed before the mailing date of either:

     (1) A final action under § 1.113; or

     (2) A notice of allowance under § 1.311, whichever occurs

first.

     (d) An information disclosure statement shall be considered

by the Office if filed by the applicant after the period

specified in paragraph (c) of this section, provided that the

statement is filed on or before payment of the issue fee and is

accompanied by:

     (1) A certification as specified in paragraph (e) of this

section;

     (2) A petition requesting consideration of the information

disclosure statement; and

     (3) The petition fee set forth in § 1.17(i).

*  *  *  *  *





.    Section 1.107 is amended by revising paragraph (a) to read

as follows:



§ 1.107 Citation of references.

     (a) If domestic patents are cited by the examiner, their

numbers and dates, and the names of the patentees must be stated.

If foreign published applications or patents are cited, their

nationality or country, numbers and dates, and the names of the

patentees must be stated, and such other data must be furnished

as may be necessary to enable the applicant, or in the case of a

reexamination proceeding, the patent owner, to identify the

published applications or patents cited.  In citing foreign

published applications or patents, in case only a part of the

document is involved, the particular pages and sheets containing

the parts relied upon must be identified.  If printed

publications are cited, the author (if any), title, date, pages

or plates, and place of publication, or place where a copy can be

found, shall be given.

*  *  *  *  *





.    Section 1.110 is revised to read as follows:



§ 1.110 Inventorship and date of invention of the subject matter

of individual claims.

     When more than one inventor is named in an application or

patent, the Patent and Trademark Office, when necessary for

purposes of an Office proceeding, may require an applicant,

patentee, or owner to identify the inventive entity of the

subject matter of each claim in the application or patent.  Where

appropriate, the invention dates of the subject matter of each

claim and the ownership of the subject matter on the date of

invention may be required of the applicant, patentee or owner.

See also §§ 1.78(c) and 1.130.





.    A new § 1.130 is added after the undesignated center heading

"Affidavits Overcoming Rejections" to read as follows:



§ 1.130 Affidavit or declaration to disqualify commonly owned

patent as prior art.

     (a) When any claim of an application or a patent under

reexamination is rejected under 35 U.S.C. 103 in view of a U.S.

patent which is not prior art under 35 U.S.C. 102(b), and the

inventions defined by the claims in the application or patent

under reexamination and by the claims in the patent are not

identical but are not patentably distinct, and the inventions are

owned by the same party, the applicant or owner of the patent

under reexamination may disqualify the patent as prior art.  The

patent can be disqualified as prior art by submission of:

     (1) A terminal disclaimer in accordance with § 1.321(c), and

     (2) An oath or declaration stating that the application or

patent under reexamination and the patent are currently owned by

the same party, and that the inventor named in the application or

patent under reexamination is the prior inventor under 35 U.S.C.

104.

     (b) When an application or a patent under reexamination

claims an invention which is not patentably distinct from an

invention claimed in a commonly owned patent with the same or a

different inventive entity, a double patenting rejection will be

made in the application or a patent under reexamination.  A

judicially created double patenting rejection may be obviated by

filing a terminal disclaimer in accordance with § 1.321(c).





.    Section 1.131 is amended by revising paragraph (a) to read

as follows:



§ 1.131 Affidavit or declaration of prior invention to overcome

cited patent or publication.

     (a)(1) When any claim of an application or a patent under

reexamination is rejected under 35 U.S.C. 102(a) or (e), or

35 U.S.C. 103 based on a U.S. patent to another or others which

is prior art under 35 U.S.C. 102(a) or (e) and which

substantially shows or describes but does not claim the same

patentable invention, as defined in § 1.601(n), or on reference

to a foreign patent or to a printed publication, the inventor of

the subject matter of the rejected claim, the owner of the patent

under reexamination, or the party qualified under §§ 1.42, 1.43,

or 1.47, may submit an appropriate oath or declaration to

overcome the patent or publication.  The oath or declaration must

include facts showing a completion of the invention in this

country or in a NAFTA or WTO member country before the filing

date of the application on which the U.S. patent issued, or

before the date of the foreign patent, or before the date of the

printed publication.  When an appropriate oath or declaration is

made, the patent or publication cited shall not bar the grant of

a patent to the inventor or the confirmation of the patentability

of the claims of the patent, unless the date of such patent or

printed publication is more than one year prior to the date on

which the inventor's or patent owner's application was filed in

this country.

     (2) A date of completion of the invention may not be

established under this section before December 8, 1993, in a

NAFTA country, or before January 1, 1996, in a WTO member country

other than a NAFTA country.

*  *  *  *  *





.    Section 1.132 is revised to read as follows:



§ 1.132 Affidavits or declarations traversing grounds of

rejection.

     When any claim of an application or a patent under

reexamination is rejected on reference to a U.S. patent which

substantially shows or describes but does not claim the same

patentable invention, as defined in § 1.601(n), on reference to a

foreign patent, on reference to a printed publication, or on

reference to facts within the personal knowledge of an employee

of the Office, or when rejected upon a mode or capability of

operation attributed to a reference, or because the alleged

invention is held to be inoperative, lacking in utility,

frivolous, or injurious to public health or morals, affidavits or

declarations traversing these references or objections may be

received.





.    Section 1.154 is revised to read as follows:



§ 1.154 Arrangement of specification.

     (a) The elements of the design application, if applicable,

should appear in the following order:

     (1)  Design Application Transmittal Form.

     (2)  Fee Transmittal Form.

     (3)  Preamble, stating name of the applicant and title of

the design.

     (4)  Cross-reference to related applications.

     (5)  Statement regarding federally sponsored research or

development.

     (6)  Description of the figure or figures of the drawing.

     (7)  Feature Description.

     (8)  A single claim.

     (9)  Drawings or photographs.

     (10) Executed oath or declaration (See § 1.153(b)).

     (b) [Reserved]





.    Section 1.163 is amended by adding new paragraphs (c) and

(d) to read as follows:



§ 1.163 Specification.

*  *  *  *  *

     (c) The elements of the plant application, if applicable,

should appear in the following order:

     (1)  Plant Application Transmittal Form.

     (2)  Fee Transmittal Form.

     (3)  Title of the invention.

     (4)  Cross-reference to related applications.

     (5)  Statement regarding federally sponsored research or

development.

     (6)  Background of the invention.

     (7)  Brief summary of the invention.

     (8)  Brief description of the drawing.

     (9)  Detailed Botanical Description.

     (10) A single claim.

     (11) Abstract of the Disclosure.

     (12) Drawings (in duplicate).

     (13) Executed oath or declaration.

     (14) Plant color coding sheet.

     (d) A plant color coding sheet as used in this section means

a sheet that specifies a color coding system as designated in a

color dictionary, and lists every plant structure to which color

is a distinguishing feature and the corresponding color code

which best represents that plant structure.





.    Section 1.291 is amended by revising paragraphs (a) and (b)

to read as follows:



§ 1.291 Protests by the public against pending applications.

     (a) Protests by a member of the public against pending

applications will be referred to the examiner having charge of

the subject matter involved.  A protest specifically identifying

the application to which the protest is directed will be entered

in the application file if:

     (1) The protest is submitted prior to the mailing of a

notice of allowance under § 1.311; and

     (2) The protest is either served upon the applicant in

accordance with § 1.248, or filed with the Office in duplicate in

the event service is not possible.

     (b) Protests raising fraud or other inequitable conduct

issues will be entered in the application file, generally without

comment on those issues.  Protests which do not adequately

identify a pending patent application will be returned to the

protestor and will not be further considered by the Office.  A

protest submitted in accordance with the second sentence of

paragraph (a) of this section will be considered by the Office if

the application is still pending when the protest and application

file are brought before the examiner and it includes:

     (1) A listing of the patents, publications, or other

information relied upon;

     (2) A concise explanation of the relevance of each listed

item;

     (3) A copy of each listed patent or publication or other

item of information in written form or at least the pertinent

portions thereof; and

     (4) An English language translation of all the necessary and

pertinent parts of any non-English language patent, publication,

or other item of information in written form relied upon.

*  *  *  *  *





.    Section 1.292 is amended by revising paragraphs (a) and (b)

to read as follows:



§ 1.292 Public use proceedings.

     (a) When a petition for the institution of public use

proceedings, supported by affidavits or declarations is found, on

reference to the examiner, to make a prima facie showing that the

invention claimed in an application believed to be on file had

been in public use or on sale more than one year before the

filing of the application, a hearing may be had before the

Commissioner to determine whether a public use proceeding should

be instituted.  If instituted, the Commissioner may designate an

appropriate official to conduct the public use proceeding,

including the setting of times for taking testimony, which shall

be taken as provided by §§ 1.671 through 1.685.  The petitioner

will be heard in the proceedings but after decision therein will

not be heard further in the prosecution of the application for

patent.

     (b) The petition and accompanying papers, or a notice that

such a petition has been filed, shall be entered in the

application file if:

     (1) The petition is accompanied by the fee set forth in

§ 1.17(j);

     (2) The petition is served on the applicant in accordance

with § 1.248, or filed with the Office in duplicate in the event

service is not possible; and

     (3) The petition is submitted prior to the mailing of a

notice of allowance under § 1.311.

*  *  *  *  *





.    Section 1.315 is revised to read as follows:



§ 1.315 Delivery of patent.

     The patent will be delivered or mailed upon issuance to the

correspondence address of record.  See § 1.33(a).





.    Section 1.321 is amended by revising paragraph (c) to read

as follows:

§ 1.321 Statutory disclaimers, including terminal disclaimers.

*  *  *  *  *

     (c) A terminal disclaimer, when filed to obviate a

judicially created double patenting rejection in a patent

application or in a reexamination proceeding, must:

     (1) Comply with the provisions of paragraphs (b)(2) through

(b)(4) of this section;

     (2) Be signed in accordance with paragraph (b)(1) of this

section if filed in a patent application or in accordance with

paragraph (a)(1) of this section if filed in a reexamination

proceeding; and

     (3) Include a provision that any patent granted on that

application or any patent subject to the reexamination proceeding

shall be enforceable only for and during such period that said

patent is commonly owned with the application or patent which

formed the basis for the rejection.





.    Section 1.497 is revised to read as follows:



§ 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).

     (a) When an applicant of an international application

desires to enter the national stage under 35 U.S.C. 371 pursuant

to §§ 1.494 or 1.495, he or she must file an oath or declaration

that:

     (1) Is executed in accordance with either §§ 1.66 or 1.68;

     (2) Identifies the specification to which it is directed;

     (3) Identifies each inventor and the country of citizenship

of each inventor; and

     (4) States that the person making the oath or declaration

believes the named inventor or inventors to be the original and

first inventor or inventors of the subject matter which is

claimed and for which a patent is sought.

     (b) (1) The oath or declaration must be made by all of the

actual inventors except as provided for in §§ 1.42, 1.43 or 1.47.

     (2) If the person making the oath or declaration is not the

inventor, the oath or declaration shall state the relationship of

the person to the inventor, the facts required by §§ 1.42, 1.43

or 1.47, and, upon information and belief, the facts which the

inventor would have been required to state.

     (c) If the oath or declaration meets the requirements of

paragraphs (a) and (b) of this section, the oath or declaration

will be accepted as complying with 35 U.S.C. 371(c)(4) and

§§ 1.494(c) or 1.495(c).  However, if the oath or declaration

does not also meet the requirements of § 1.63, a supplemental

oath or declaration in compliance with § 1.63 will be required in

accordance with § 1.67.





Date:___________      ______________________________________
                      Bruce A. Lehman
                      Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks