Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3 and 5
[Docket #: ]
RIN 0651-AA75
Changes to Implement 18-Month
Publication of Patent Applications
Agency: Patent and Trademark Office, Commerce.
Action: Notice of proposed rulemaking.
Summary: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent cases primarily to implement changes
related to the 18-month publication of patent applications in title 35,
United States Code, contained in the Patent Application Publication Act
of 1995 (H.R. 1733). Among the changes that are contained in H.R. 1733
would be the publication of patent applications after 18 months from the
earliest filing date for which a benefit is sought, and the addition of
provisional rights to the rights provided in a patent. These changes
would apply to utility and plant applications other than provisional
applications, but not to design applications. H.R. 1733 was introduced
in the House of Representatives on May 25, 1995. The amendments to title
35 relating to 18-month publication, if enacted as proposed, would be
effective on January 1, 1996.
Dates: A public hearing will be held on Tuesday, September 19, 1995, at
the Holiday Inn - National Airport, 15th Street and Jefferson Davis
Highway, Arlington, Virginia, at 9:30 a.m. Those wishing to present oral
testimony must request an opportunity to do so no later than September
14, 1995. Written comments must be submitted on or before September 19,
1995.
Addresses: Address written comments and requests to present oral
testimony to the Commissioner of Patents and Trademarks, Washington,
D.C. 20231, Attention: Stephen G. Kunin, Deputy Assistant Commissioner
for Patent Policy and Projects. In addition, written comments may also
be sent by facsimile transmission to (703) 305-8825, with a confirmation
copy mailed to the above address, or by electronic mail messages over
the Internet to early-pub@uspto.gov.
Written comments should include the following information:
- name and affiliation of the individual responding;
- an indication of whether comments offered represent views of the
respondent's organization or are the respondent's personal views; and
- if applicable, information on the respondent's organization,
including the type of organization (e.g., business, trade group,
university, non-profit organization).
Parties mailing written comments are asked to provide their comments
in machine readable format. Machine-readable submissions may be provided
on a 3 1/2 inch floppy disk formatted for use in either a Macintosh or
MSDOS-based computer. Machine-readable submissions should be provided as
unformatted text (e.g., ASCII or plain text), or as formatted text in
one of the following file formats: Microsoft Word (Macintosh, DOS or
Windows versions) or WordPerfect (Macintosh, DOS or Windows versions).
Written comments and transcripts of the hearings will be available
for public inspection on or about October 2, 1995, in Room 520 of
Crystal Park One, 2011 Crystal Drive, Arlington, Virginia, and will be
available on or about October 2, 1995, through anonymous file transfer
protocol (ftp) via the Internet (address: ftp.uspto.gov).
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
Commissioner of Patents and Trademarks, Washington, D.C. 20231.
Supplementary Information
This proposed rule change is designed primarily to implement the
changes in practice related to the publication of patent applications
provided for in H.R. 1733. A copy of this legislation may be obtained
from the individuals identified in the "For Further Information Contact"
section of the notice.
Section 122 of title 35, United States Code, currently provides that
patent applications are maintained in confidence until a patent is
granted. H.R. 1733, if enacted, would amend 35 U.S.C. 122 to provide
that each application for patent, except for design applications filed
under 35 U.S.C. 171 and provisional applications filed under 35 U.S.C.
111(b), shall be published "as soon as possible after the expiration of
a period of 18 months from the earliest filing date for which a benefit
is sought," but provides that applications that are no longer pending
and applications that are subject to a secrecy order under 35 U.S.C. 181
shall not be published.
H.R. 1733 includes a provision (35 U.S.C. 122(b)(2)) that, upon
request, an application of an independent inventor who has been accorded
status under 35 U.S.C. 41(h) will not be published until three months
after an Office action under 35 U.S.C. 132; however, applications filed
under 35 U.S.C. 363 and applications claiming the benefit of an earlier
filing date under 35 U.S.C. 119, 120, 121, 365(a) or 365(c) are not
eligible for such a request. In addition, H.R. 1733 provides that an
applicant making such a request must certify that the invention
disclosed in the application was not or will not be the subject of an
application filed in a foreign country. H.R. 1733 provides that the
Commissioner may establish appropriate procedures and fees for such a
request.
H.R. 1733, if enacted, would further amend 35 U.S.C. 119 to provide
that the claim and certified copy of the original foreign application
must be filed in the Office at such time during the pendency of the
application as required by the Commissioner, and that the Commissioner
may consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim. H.R. 1733, if enacted, would
likewise amend 35 U.S.C. 120 to provide that the Commissioner may
determine the time period during the pendency of the application within
which an amendment containing the specific reference to the earlier
filed application shall be submitted, and that the Commissioner may
consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim.
H.R. 1733, if enacted, would further amend 35 U.S.C. 102(e) to
include applications published pursuant to 35 U.S.C. 122(b) within its
scope. H.R. 1733, if enacted, would provide that the costs of early
publication shall be recovered by adjusting the filing, issue and
maintenance fees, by charging a separate publication fee, or by any
combination of these methods. H.R. 1733, if enacted, would also provide
that, upon issuance of the application as a patent, the patent shall,
where the invention claimed in the patent is identical to the invention
claimed in the published application, include provisional rights during
the period from publication until issuance of the patent.
H.R. 1733 also includes amendments relating to 20-year patent term
and provisional applications. Specifically, H.R. 1733 includes an
amendment to 35 U.S.C. 119(e) to provide that if the day that is twelve
months after the filing date of a provisional application falls on a
Saturday, Sunday, or Federal holiday within the District of Columbia,
the period of pendency of the provisional application shall be extended
to the next succeeding secular or business day. H.R. 1733 also includes
an amendment to 35 U.S.C. 154(b) to: (1) include an unusual
administrative delay by the Office in issuing the patent as a basis for
patent term extension; (2) provide that the total duration of all
extensions under 35 U.S.C. 154(b) shall not exceed ten years, as opposed
to the five year limit currently provided in Public Law 103-465; (3)
provide that no patent that has issued before the expiration of three
years after the filing date of the application or entry of the
application into the national stage under 35 U.S.C. 371 shall be
extended under 35 U.S.C. 154(b); (4) provide that no patent whose term
has been disclaimed beyond a specified date shall be extended under 35
U.S.C. 154(b) beyond the expiration date specified in the terminal
disclaimer, and (5) provide that any period of extension under 35 U.S.C.
154(b) shall be reduced by the period during which the applicant for
patent did not engage in reasonable efforts to conclude processing or
examination of the application, rather than the "due diligence"
provision applicable to extensions under 35 U.S.C. 154(b)(2) in Public
Law 103-465.
The current planning approach to the implementation of early
publication is to create an electronic data base which captures the
technical content, i.e., the specification, abstract, claims and
drawings, of the application-as-filed. A data capturing operation will
enable the creation of a data base containing image and text equivalent
of the technical contents of the application-as-filed. Application
materials will be digital image and/or optical character recognition
(OCR) scanned by the Office for entry into this electronic data base.
This electronic data base will be used to provide a source for (a)
meeting publication requirements for the applications, (b) providing a
basis for electronic searching and retrieval of applications, and (c)
providing a basis for producing copies of the technical contents of the
application-as-filed. The publication of an application will take the
form of publishing information necessary to identify the applicant and
the technical subject matter of the application, i.e., a Gazette Entry,
in a separate Gazette of Patent Application Notices, with a one-page
printed publication, i.e., a Patent Application Notice or PAN,
containing similar information for placement in the paper search files.
Published applications will be assigned a sequential Patent Application
Notice (PAN) number in the manner that issued patents are assigned a
sequential patent number. In addition, a document including the Patent
Application Notice and the technical contents of the
application-as-filed, designated as the Technical Contents Publication,
will be available to the public upon publication.
The digital images of the technical contents of the application-
as-filed, i.e., the Technical Contents Publication, will be available
for public review. Paper copies of the Patent Application Notice and
Technical Contents Publication will also be available for purchase
similar to the way paper copies of patents are currently available for
purchase. When budgetary and process considerations permit, text
searching of the Patent Application Notice and Technical Contents
Publication will be implemented.
The information provided to Patent and Trademark Depository Libraries
will be expanded to include weekly issues of the Gazette of Patent
Application Notices (provided by the Government Printing Office), and a
CD-ROM collection of facsimile images of the Patent Application Notices
and Technical Contents Publications. The public would also be able to
place subscription orders to receive weekly paper copies of the Patent
Application Notices and Technical Contents Publications published in
specific classes and subclasses similar to the way such orders are
currently placed for issued patents, as well as subscription orders to
receive the CD-ROM collection of facsimile images of the Patent
Application Notices and Technical Contents Publications.
H.R. 1733, as proposed, does not specifically exclude applications
that are national security classified from those applications to be
published. Executive Order 12356 and a number of statutes, e.g., 42
U.S.C. 2011 et seq. (the Atomic Energy Act of 1954), 15 U.S.C. 1155
(provides that the Secretary of Commerce shall respect and preserve the
security classification of inventions in the possession or control of
the Department of Commerce), and 18 U.S.C. 798 (provides criminal
sanctions for the disclosure of classified information) preclude the
publication of a national security classified application. Further, the
publication requirement in H.R. 1733, as proposed, provides some
latitude to the Commissioner to publish applications later than 18
months from the earliest filing date for which a benefit is sought.
Therefore, the publication of a national security classified application
will be delayed until such application is either declassified, which
will permit publication of the application, or subjected to a secrecy
order pursuant to 35 U.S.C. 181, which will exclude the application from
publication by the express terms of H.R. 1733, as proposed. In view of
national security considerations, and the current statutory prohibitions
on the disclosure of classified information, it is appropriate to
specifically exclude those applications that are national security
classified from publication under the provisions of H.R. 1733.
While H.R. 1733, if enacted, would not directly affect design
applications, this notice of proposed rulemaking includes a proposed
amendment to 1.154 such that the arrangement for a design application
will be consistent with the arrangements for a utility ( 1.77) or
plant ( 1.163) application, as well as a proposed amendment to 1.5
to provide that a paper concerning a provisional application must
identify the provisional application as such and by application number.
In addition, while this proposed rule change is designed primarily to
implement the changes in practice related to the publication of patent
applications provided for in H.R. 1733, a number of proposed rule
changes set forth in this notice of proposed rulemaking would be
desirable even in the absence of an 18-month publication system.
Specifically, this proposed rule change is also designed to: (1) clarify
which applications claiming the benefit of prior applications or 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) broaden the application of
1.131 to instances in which inventions of a pending application or
patent under reexamination and a patent held by a single party are not
identical, but not patentably distinct; (4) broaden the application of
1.78(c) and (d) to patents under reexamination, (5) clarify the
practice for the delivery or mailing of patents; (6) provide for the
treatment of national security classified applications; (7) expedite the
entry of international applications into the national stage; and (8)
amend a number of rules for consistency and clarity. Since these
proposed rule changes may be adopted as final rules even in the absence
of an 18-month publication system, interested persons are advised to
comment on any proposed rule change, regardless of whether H.R. 1733 is
enacted. If H.R. 1733 is amended during the legislative process, the
final rules will comply with this legislation as enacted. If H.R. 1733
is not enacted, the proposed rules that would implement publication of
patent applications would be withdrawn.
In a Notice of Public Hearing and Request for Comments on 18-Month
Publication of Patent Applications (18-Month Publication Notice)
published in the Federal Register at 59 FR 63966 (December 12, 1994) and
in the Patent and Trademark Office Official Gazette at 1170 Off. Gaz.
Pat Office 390-94 (January 3, 1995), the Office requested public comment
on the procedures the Office should adopt if an 18-month publication
system was enacted. The 18-Month Publication Notice set forth the
Office's planning approach for the implementation of 18-month
(pre-grant) publication of patent applications, and specifically
presented fourteen (14) questions on which comment was invited. An oral
hearing was conducted on February 15, 1995.
Sixty-five (65) written comments, as well as two (2) Law Review
articles concerning the pre-grant publication of pending patent
applications, were submitted. Of the sixty-five (65) comments, forty
(40) submitted comments directed to at least one of the questions
presented in the 18-Month Publication Notice. Sixteen (16) persons
testified at the public hearing conducted on February 15, 1995.
Response to Comments on the 18-Month Publication Notice
The following questions were presented in the 18-Month Publication
Notice. Each question is followed by a summary of the comments submitted
in response to the question, and the proposed disposition of the issue
presented in the question.
1. Should the PTO require that all official application-related
materials be delivered to a central location? Specifically,what problems
would a requirement that all official application-related materials be
delivered to a central location cause?
Summary: A slight majority of the comments opposed a requirement that
all official application-related materials be delivered to a central
location.
Response: As the Office currently considers the delivery of all official
application-related materials to a central location to be unnecessary to
the currently planned approach to implementation of 18-month
publication, no change to the rules of practice to require that all
official application-related materials be delivered to a central
location will be proposed.
2. Should the PTO adopt a standard application format? If so, what
portions of the application papers should the PTO require be submitted
in a standard size and/or format, and what sanction (e.g., surcharge)
should be established for the failure to comply with these requirements?
Summary: A majority of the comments favored the implementation of a
standard application format, so long as an applicant was given a time
period in which to comply with this format, i.e., failure to comply with
the standard application format did not deprive the application of a
filing date. In addition, a number of comments indicated that any
additional requirements should not be inconsistent with European Patent
Office (EPO) or Patent Cooperation Treaty (PCT) requirements, or in
excess of those requirements necessary for the implementation of
18-month publication.
Response: The Office is proposing to change the rules of practice to
institute only those additional standardizations which are consistent
with the requirements set forth in PCT Rule 11, and are considered
necessary for the digital image and OCR scanning of application
materials into an electronic data base. Those additional
standardizations are that: (1) applications be submitted on flexible,
strong, smooth, non-shiny, durable and white paper (PCT Rule 11.3); (2)
the papers be typewritten by a typewriter or word-processor, i.e.,
hand-written application materials would no longer be acceptable, with 1
1/2 or double spaced lines (PCT Rule 11.9(c)), and in permanent "dark"
ink (PCT Rule 11.9(d)) and portrait orientation, i.e., with the shorter
sides of the paper on the top and bottom (PCT Rule 11.2(d)); (3) the
sheets of papers 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) (PCT Rule 11.5),
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) (PCT Rule
11.6(a)); (4) the pages of the application be numbered consecutively,
with the numbers being centrally located above or below the text (PCT
Rule 11.7); and (5) the claims be on a separate sheet (PCT Rule 11.4).
Finally, 1.52(b) and 1.84(x) are proposed to be amended to provide
that no holes should be provided in the paper or drawing sheets due to
the potential for their interference with the scanning operation.
Section 1.52(b) currently requires that application papers be written
on but one side, and 1.72(b) currently requires that the abstract be
on a separate sheet. In an application filed without: (1) typewritten
application papers on flexible, strong, smooth, non-shiny, durable and
white paper; (2) 1 1/2 or double spaced lines in portrait orientation;
(3) permanent "dark" ink typing; (4) sheets of papers of 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); (5) the pages of the application including claims and abstract be
numbered consecutively, starting with page one, with the numbers being
centrally located above or below the text; (6) application papers typed
on but one side; and (7) an abstract and claims on a separate sheet, the
applicant will be given a time period, non-extendable under 1.136(a),
in which to file a substitute specification in compliance with 1.125
on application papers in compliance with 1.52(a) and (b). The
Office, however, does not propose to require a surcharge for the failure
to comply with these standardizations on filing.
Additional standardizations to the rules of practice concerning
drawings requirements are also being proposed. Currently, 1.84(f)
permits paper sizes of 21.6 cm. by 35.6 cm. (8 1/2 by 14 inches), 21.6
cm. by 33.1 cm. (8 1/2 by 13 inches), 21.6 cm. by 27.9 cm. (8 1/2 by 11
inches), and 21.0 cm. by 29.7 cm. (DIN size A4). Section 1.84(f), as
proposed, would permit paper sizes of only 21.0 cm. by 29.7 cm. (DIN
size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). The use of these
paper sizes, which correspond to the paper sizes required under
1.52(b), as proposed, would not impact the current Automated Patent
System (APS) database, and would permit a fully automatic scanning
operation due to their similar size. To electronically store, display,
and print drawings paper sheet sizes up to 21.6 cm. by 35.6 cm. (8 1/2
by 14 inches) would require modifications of the APS system hardware,
software, displays, and printers. In addition, the digital image
scanning of drawing paper sheet sizes up to 21.6 cm. by 35.6 cm. (8 1/2
by 14 inches) would require a semi-automatic scanning operation, thus
increasing scanning costs significantly. Therefore, 1.84(f), as
proposed, would permit paper sheet sizes of only 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 2.5 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 on 21.0 cm. by 29.7 cm. (DIN size A4)
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) sheets (PCT Rule
11.6(c)). As PCT Rule 11.6(d) provides that the margin requirements
apply to 21.0 cm. by 29.7 cm. (DIN size A4) sheets such that a copy of
the drawings sheet on a 21.0 cm. by 29.7 cm. (DIN size A4) sheet leaves
the required margin, the requirement for drawing sheet sizes of only
21.6 cm. by 27.9 cm. (8 1/2 by 11 inches) or 21.0 cm. by 29.7 cm. (DIN
size A4) is not a substantive drawing limitation in excess of PCT Rule
11.
Currently, formal drawings are not required until an application has
been allowed. As a drawing figure will be included in the Gazette Entry
in the Gazette of Patent Application Notices, as well as the Patent
Application Notice, drawings of sufficient quality for digital image
scanning into an electronic data base will be necessary for the initial
processing of the application. In instances in which an application is
filed with drawings of such poor quality as to preclude their digital
image scanning into the electronic data base, it will be necessary to
set a time period, non-extendable under 1.136(a), in which to file
drawings of sufficient clarity, contrast, and quality and in the proper
size and format for electronic reproduction by digital imaging.
Currently, a complete application under 1.51(a) does not require
an abstract on a separate sheet, claims on a separate sheet, application
papers typed on but one side of the paper, or application papers or
drawings of sufficient clarity, contrast, or quality or in the proper
size or format for electronic reproduction, and, as such, an application
may be filed under 1.60 from a prior application not in a format
necessary for the image and/or OCR scanning of the application materials
into an electronic data base. Therefore, an amendment to 1.60(d) is
necessary to assure the prompt filing of application papers including an
abstract and claims on a separate sheet, application papers typed on but
one side of the paper, and application papers and drawings of sufficient
clarity, contrast, and quality and in the proper size and format for
electronic reproduction.
Currently, the filing of the copy of the specification from the prior
application, or a new specification, in an application filed under
1.62 is considered improper. As applications filed prior to January 1,
1996, will not have been image- or OCR- scanned into the electronic data
base, the technical contents of an application filed under 1.62 in
which the prior application was itself filed prior to January 1, 1996,
will not be contained in the electronic data base. For applications
under 1.62 which do not add additional disclosure, i.e., continuation
or divisional applications, the Office will obtain the microfiche copy
of the prior application and image or OCR scan it into the electronic
data base. For applications under 1.62 which add additional
disclosure, i.e., continuation-in-part applications, a substitute
specification and drawings will be necessary for image or OCR scanning
into the electronic data base. Therefore, an amendment has been proposed
to 1.62 to provide that, where the application is a
continuation-in-part application, a substitute specification in
compliance with 1.125 and drawings will be required.
Section 1.62 currently provides that no copy of the prior application
or new specification is required, and further provides that the filing
of such a copy or specification will be considered improper, and a
petition is necessary to obtain the date of deposit of the request for
an application under 1.62 as the filing date. Section 1.62, as
proposed, would provide that the failure to provide any required
substitute specification would not affect the filing date of the
application, but a time period, non-extendable under 1.136(a), would
be set for its filing. Section 1.62, as proposed, would further provide
that any new specification filed in an application under 1.62 would
not be considered part of the original application papers, but would be
treated as a substitute specification under 1.125. Any request to
treat a new specification filed in an application under 1.62 as part
of the original application papers may be by way of petition under
1.182.
Finally, amendments to 1.77, 1.154, and 1.163 have been proposed
to provide a standard arrangement for utility, design, and plant
applications, respectively. This standard arrangement will include,
inter alia, a Fee Transmittal form for utility, design, and plant
applications, a Utility Patent Application Transmittal form, a Design
Patent Application Transmittal form, a Plant Patent Application
Transmittal form, and a Plant Color Coding Sheet for plant applications.
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, as well as a standard Declaration form and Plant Patent
Application Declaration form, are included as an Appendix A to this
notice of proposed rulemaking.
3. Assuming that the entire application is not published, what
information concerning the application should be publishedin the Gazette
of Patent Application Notices?
Summary: A slight majority of the comments indicated that the printed
publication should include the entire application, or at least the
claims, each independent claim, or a claim of each statutory class in
the application. The remaining comments that did not oppose pre-grant
publication indicated that any Patent Application Notice should contain
information similar to what is published in the Official Gazette or
sufficient information to determine whether further investigation was
warranted. Those comments that opposed any pre-grant publication opposed
publication of any information other than the applicant's name, address
and a "non-enabling" abstract of the invention.
Response: The Technical Contents Publication will include a copy of the
Patent Application Notice, and the specification, abstract, claims and
drawings of the application-as-filed. The Technical Contents Publication
will be available for public review through video display terminals in
the Public Search Room and through CD-ROM collections of facsimile
images of Patent Application Notices and Technical Contents Publications
in the Patent and Trademark Depository Libraries. Copies of the Patent
Application Notices and Technical Contents Publications will also be
available for purchase under the conditions that paper copies of patents
are currently available for purchase. When budgetary and process
constraints permit, text searching of the Patent Application Notices and
Technical Contents Publications will be implemented.
H.R. 1733, if enacted, would not provide any appropriations to cover
the costs of early publication, but would provide that these costs are
to be recovered by adjusting the filing, issue and maintenance fees, by
charging a separate publication fee, or by any combination of these
methods, i.e., that the patent applicant is to bear the costs of
publication. A number of comments have criticized this method of
allocating the publication costs as pre-grant publication provides no
benefit to the patent applicant. The Office was required to balance the
requests for a printed publication conveying the greatest amount of
application information with those comments opposing additional
publication costs. To provide the maximum amount of application
information at the lowest cost to applicant, the specification,
abstract, claims and drawings of the application- as-filed will be
available for public review in the Technical Contents Publication.
4. Should the patent applicant receive a copy of the published
application -- either published notice and/or application content at
time of publication?
Summary: A majority of the comments indicated that the applicant should
receive a copy of the Patent Application Notice.
Response: The Office proposes to provide for the delivery of the Patent
Application Notice similar to the current delivery of patents.
5. Should the PTO permit an accelerated examination? If so, under what
conditions?
Summary: A majority of the comments favored permitting accelerated
examination. A number of comments indicated that accelerated examination
should be provided for applicants who either: (1) meet the current
conditions for accelerated examination; or (2) pay a relatively high
fee, i.e., that the Office should add the payment of a high accelerated
examination fee to the current conditions for providing an accelerated
examination. A number of comments, however, indicated that adding the
payment of a high accelerated examination fee to those conditions for
providing an accelerated examination would benefit large companies at
the expense of small entities.
Response: The Office will provide accelerated examination only under the
current conditions set forth in 1.102, as described in MPEP 708.02.
Accelerated examination is currently provided depending upon the subject
matter of the invention, medical condition of the applicant, business
circumstances, or the willingness of the applicant to participate in a
special accelerated examination procedure. Increasing the number of
applications receiving accelerated examinations could diminish the
availability or speed of accelerated examination to an individual
applicant because there will be more applications receiving an
accelerated examination. It would further delay the examination of
applications not provided with accelerated examination. Adding a
condition for providing accelerated examination which bears no
relationship to the merits of the application or circumstances of the
applicant, i.e., for the mere payment of a fee, is not considered
appropriate. Therefore, the Office does not propose to change the
conditions under which the examination of an application will be
accelerated.
The Office, however, will continue to make special an application
under the conditions currently set forth in MPEP 708.02 (VIII), special
examining procedures for certain new applications - accelerated
examination. MPEP 708.02 (VIII) provides that a new application may be
granted special status provided that the applicant: (1) submits a
written petition to make special accompanied by the fee set forth in
1.17(i); (2) presents all claims directed to a single invention, or if
the Office determines that all the claims presented are not obviously
directed to a single invention, will make an election without traverse
as a prerequisite to the grant of special status; (3) submits a
statement that a pre-examination search was made; (4) submits one copy
each of the references deemed most closely related to the subject matter
encompassed by the claims; (5) submits a detailed discussion of the
references pointing out with the particularity required by 1.111(b)
and (c) how the claimed subject matter is distinguishable over the
references; and (6) submits any affidavit or declaration under 1.131
that is necessary to overcome the references before the application is
taken up for action, but in no event later than one month after request
for special status. An application granted special status under MPEP
708.02 (VIII) will be taken up by the examiner before all other
categories of applications except those clearly in condition for
allowance and those with set time limits, such as examiner's answers,
etc., and will be given a complete first action which will include all
essential matters of merit as to all claims.
6. Since the cost for publishing applications must be recovered from
fees, how should the cost of publication be allocated among the various
fees, including the possibility of charging a separate publication fee?
Summary: The overwhelming majority of comments opposed a separate
publication fee. Most comments indicated that the costs of publication
should be spread over the existing fees, with the remaining comments
indicating that these costs should be absorbed by those accessing the
published applications or the Office.
Response: H.R. 1733, if enacted, would not provide appropriations for
the Office to absorb the publication cost, but provides that the
"Commissioner shall recover the costs of early publication ... by
adjusting the filing, issue, and maintenance fees, by charging a
separate publication fee, or by any combination of these methods."
Notwithstanding that H.R. 1733, if enacted, would not authorize the
Office to recover the costs of publication through those seeking access
to the published application, the demand for publication products, e.g.,
Patent Application Notices and Technical Contents Publications, would
not be consistent, and it would not be possible to project the demand
for publication products with the degree of precision necessary to
recover a substantial portion of the publication costs through the
inclusion of such costs in the fees charged for the publication
products. In addition, the Office will supply, inter alia, CD-ROM
collections of facsimile images of the Patent Application Notices and
Technical Contents Publications under the condition that CD-ROM
collections of patent images are currently supplied. As the Office has
no authority to control the further duplication of such images, it would
not be practicable to attempt to recover publication costs through
increases in the fees charged for publication products, since those
persons desiring copies of Patent Application Notices or Technical
Contents Publications would simply obtain them from the original
purchasers of the CD-ROM collections, who need not include any
publication costs in their prices. Therefore, the Office proposes to
adjust the filing, issue, and maintenance fees to recover the costs of
publication.
In a Notice of Proposed Rulemaking published in the Federal Register
at 60 FR 27934 (May 26, 1995) and in the Patent and Trademark Office
Official Gazette at 1174 Off. Gaz. Pat Office 134-50 (May 30, 1995), a
number of changes to the rules of practice to, inter alia, adjust patent
and trademark fees to reflect the fluctuations in the Consumer Price
Index (CPI) pursuant to 35 U.S.C. 41(f) were proposed (Patent and
Trademark Fee Notice of Proposed Rulemaking). The proposed patent and
trademark fee adjustments, if adopted in final rules, would take effect
on October 2, 1995 (October 1, 1995 being a Sunday), prior to the
effective date of the fee increase in this notice of proposed rulemaking
to recover the costs of publication. The proposed amendments to
1.19(b)(1)(i) and 1.19(b)(1)(ii) are repeated in this notice of proposed
rulemaking for clarity. The Office estimates that it will cost about $9
million to publish applications in Fiscal Year 1996. To allocate these
costs among the filing fees of those applications which the Office
anticipates will be filed in Fiscal Year 1996, the issue fee for those
applications for which the Office anticipates payment of an issue fee in
Fiscal Year 1996, and maintenance fees due at three (3) years and six
(6) months, seven (7) years and six (6) months, and eleven (11) years
and six (6) months for those patents for which the Office anticipates
payment of the respective maintenance fees in Fiscal Year 1996, a
further increase in the filing fee for an original nonprovisional (35
U.S.C. 111(a)) or reissue application to $780 ($390 for a small entity)
and a plant application to $540 ($270 for a small entity), issue fee for
an original or reissue application to $1280 ($640 for a small entity)
and a plant application to $660 ($330 for a small entity), maintenance
fee due at three (3) years and six (6) months to $1020 ($510 for a small
entity), maintenance fee due at seven (7) years and six (6) months to
$2020 ($1010 for a small entity), and maintenance fee due at eleven (11)
years and six (6) months to $3020 ($1510 for a small entity) is
necessary to recover the costs of publication in Fiscal Year 1996. A
comparison of existing fee amounts, fee amounts proposed in the Patent
and Trademark Fee Notice of Proposed Rulemaking, and fee amounts
proposed in this notice of proposed rulemaking is included as an
Appendix B to this notice of proposed rulemaking.
7. Should the PTO require an affirmative communication from a patent
applicant indicating that the applicant does not wish the application to
be published, or should failure to timely submit a publication fee be
taken as instruction not to publish the application? That is, should an
application be published unless the applicant affirmatively indicates
that the application is not to be published, regardless of whether a
publication fee has been submitted?
What latitude should the PTO permit for late submission of a
publication fee?
Summary: An overwhelming majority of the comments (except for those who
opposed any pre-grant publication) favored a requirement that an
applicant affirmatively communicate that an application is being
expressly abandoned to avoid publication of the application at 18 months.
Response: The Office does not process applications as abandoned until
seven (7) months after the mailing date of an Office action to allow for
extensions of time under 1.136(a) and mailing delays. Where no
response to an Office action setting a shortened statutory period for
response of three (3) months mailed at 13 months after filing in an
application is received, the application becomes abandoned by operation
of 35 U.S.C. 133 at 16 months after filing, but is not recognized or
processed by the Office as an abandoned application until 20 months
after filing, and thus would be published in regular course at 18
months. Therefore, an applicant intending to permit an application to
become abandoned for failure to respond to an Office action mailed
within seven (7) months of the projected publication date must take
affirmative action to avoid publication of the application.
The Office intends to indicate the projected date of publication on
the filing receipt. Any person who wants to avoid publication of the
application at 18 months must submit a letter of express abandonment in
sufficient time to permit the Office to act on the letter. Likewise, any
person who considers the projected date of publication on the filing
receipt to be incorrect must submit a request to correct the projected
date of publication in sufficient time to permit the Office to act on
the request.
Currently, the Office considers two (2) months to be the minimum time
necessary to avoid publication of an application. Therefore, any letter
of express abandonment or request to withdraw the application from
publication submitted less than two (2) months from the projected date
of publication will not be considered effective to avoid publication of
the application at the projected date of publication. The Office also
intends to indicate on the filing receipt the date by which an
application must be expressly abandoned to avoid its publication.
8. The delayed filing of either a claim for priority under 35 U.S.C. 119
or 120 may result in the delayed publication of the application. Should
priority or benefit be lost if not made within a reasonable time after
filing? What latitude should the PTO permit for late claiming of
priority or benefit?
Summary: A large majority of the comments indicated that claims for
priority under 35 U.S.C. 119 and 120 should be lost if not timely filed.
A number of comments also indicated that there should be provisions for
the acceptance of late claims for priority.
Response: The submission of a claim for priority under 35 U.S.C. 119 or
120 later than four (4) months prior to the publication date appropriate
for an application claiming that priority date will result in delays in
the publication of the application and will interfere with the
publication process. Therefore, the Office proposes to change the rules
of practice to provide that claims for priority under 35 U.S.C. 119 or
120 must be made within two (2) months of filing, or fourteen (14)
months from the filing date for which a benefit is desired, whichever is
later. To avoid a potential loss of patent rights to an applicant who
inadvertently failed to present a timely claim for priority, the Office
further proposes to provide for the acceptance of late claims for
priority submitted during the pendency of the application with a
surcharge, so long as the delay in submitting the claim for priority was
unintentional.
9. Once the patent has issued, should the paper document containing
information similar to that published in the Gazette of Patent
Application Notices, i.e., the Patent Application Notice, be removed
from the search files, and should publication information be included on
the issued patent?
Summary: A majority of the comments indicated that the Patent
Application Notice should not be removed from the search files.
Response: The Office will not remove the Patent Application Notice from
the search files upon issuance of the patent.
10. After publication, should access to the content of the application
file be limited to the originally filed application papers? If not, what
degree of access should be permitted? Should access be limited to the
content before publication, or should it extend to materials added after
publication?
Summary: A majority of the comments indicated that, upon publication,
the access to the content of the application file should not be limited.
Response: The Office proposes to change the rules of practice to provide
that, upon publication, access to the entire content of the application
file would be permitted. To avoid undue interference with the
examination of the application, however, the public access to the
application file of a pending published application is proposed to be
limited to obtaining, upon the payment of the fee set forth in
1.19(b)(2), a copy of the application file produced during non-working
hours by the Office when the application file is made available by the
appropriate patent application processing organization. The Office also
proposes to provide, upon the payment of the fee(s) set forth in
1.19(b)(4), as proposed, a copy of specifically identified document(s)
contained in a pending published application.
The Office will provide public access to a database containing
information concerning the status of a pending published application and
the content of the application file similar to that contained in the
Patent Application Location and Monitoring (PALM) system. Using this
database, interested members of the public will be able to ascertain the
status of a pending published application to determine whether obtaining
a copy of the file wrapper and content of the application or any
document(s) in the file wrapper is warranted. In addition, this database
can also be used to permit specific identification of the document(s) of
which a copy is desired, assuming that obtaining a copy of the entire
file wrapper and content is not considered warranted.
The Office specifically proposes to provide a copy of a specifically
identified document contained in a pending published application for a
fee of $75.00. Each paper in the application file to which a separate
paper number is assigned constitutes a document in the application. As
the cost of obtaining a pending published application from its location
in the various patent application processing organizations throughout
the Office is a substantial portion of the cost of providing a copy of
the file wrapper and content of a pending published application, the fee
for providing a copy of the first requested document from a pending
published application must recover the cost of obtaining the
application. The Office, however, will provide copies of additional
documents from the same application in the same request for a fee of
$25.00 per document.
11. After publication, should assignment records of a
publishedapplication also be made accessible to the public?
Summary: An overwhelming majority of the comments indicated that, upon
publication, the assignment records of an application should be
accessible to the public.
Response: The Office proposes to change the rules of practice to provide
that, upon publication, the assignment records of the application would
be available by both application and Patent Application Notice (PAN)
number and open to public inspection through the existing Patent
Assignment Search System. The Office further proposes to permit
applicants to indicate on the assignment cover sheet whether they want
assignment information to be printed on the Patent Application Notice.
The Office, however, does not propose to require that any assignment
information be printed on the Patent Application Notice.
12. After publication, should access include the deposit ofbiological
materials as set forth in 1.802 et seq.?
Summary: A majority of the comments indicated that, upon publication,
any deposit of biological materials should be accessible to the public.
A number of comments, however, indicated that such access should be
limited in the manner similar to that in European or Japanese laws, or
that such access should be limited to experimental use.
Response: Section 1.809(c) currently provides that the applicant need
not provide any necessary deposit of biological materials until three
(3) months from the mailing of the Notice of Allowance and Issue Fee
Due. The deposit of biological materials on filing of an application are
often required by foreign laws. Applicants may not be able to claim
priority under these laws based upon an earlier United States
application filed without any necessary deposit of biological materials.
The laws and rules of practice of the United States, however, do not
require an applicant to make any deposit of biological materials until
the application is allowed. See, In re Lundak, 723 F.2d 1216, 227 USPQ
90 (Fed. Cir. 1985). Accordingly, the Office proposes to change the
rules of practice to provide that, upon publication, any deposit of
biological materials that has been made would be available after deposit
under the same conditions that such deposit of biological material would
be available for an issued patent.
13. What types of problems will be encountered if all amendments must be
made by (a) substitute paragraphs and claims, (b) substitute pages, or
(c) replacement of the entire application?
Summary: A majority of the comments indicated that, if the rules of
practice regarding the submission of amendments were changed, a
requirement for substitute paragraphs and claims, or substitute pages
would be acceptable.
Response: The Office currently considers changes in the procedures for
entering amendments into applications to be unnecessary to the current
planning approach to implementation of 18-month publication, and, as
such, no change to the rules of practice to require substitute
paragraphs and claims, substitute pages, or replacement of the entire
application is being proposed.
14. Should protest procedures be modified to permit the thirdparty
submission of prior art only prior to a specific period after
publication of the application? What action should be taken with respect
to untimely submissions by a third party?
Summary: A majority of comments indicated that third party submissions
of prior art patents and publications should be permitted for a limited
period upon publication, but the overwhelming majority of comments
opposed any pre-grant opposition procedure.
Response: The Office does not intend to institute any procedures that
would amount to pre-grant opposition. H.R. 1732 was also introduced in
the House of Representatives on May 25, 1995, and, if enacted, will
expand reexamination, i.e., post-grant opposition, proceedings to
provide a third party requester with increased participation rights,
including the right to appeal any decisions favorable to patentability
to the Board of Patent Appeals and Interferences and to the courts. In
view of the opposition to pre-grant third party participation, i.e.,
support for the continued ex parte examination of pending applications,
the Office proposes to change the rules of practice to limit the period
for filing protests and petitions for the institution of public use
proceedings.
The Office proposes to change the rules of practice concerning
protests to provide that a submission by a third party in a pending
application would be considered if: (1) it is submitted within two
months of the date the application was published or prior to the mailing
of a notice of allowance under 1.311, whichever occurs first; (2) the
submission has been served on the applicant in accordance with 1.248
if filed after the date the application was published, and the
submission indicates such service; (3) the submission is accompanied by
a $220 fee if submitted after publication of the application; and (4)
the application is still pending when the submission and application
file is brought before the examiner.
The $220 fee for a protest submitted after publication of the
application is considered appropriate. Any party submitting a protest
after publication has benefitted by the publication of the application.
The third party should not obtain this benefit solely at the expense of
the patent applicant, but should obtain this benefit only upon payment
of a fee. In addition, it is expected that any protest submitted after
publication of the application will be considered late in the
prosecution of the application, which will cause inconvenience both to
the patent applicant and the Office. Therefore, the requirement for the
payment of a fee is considered appropriate to defray the costs of the
belated consideration of any such submission and discourage the
submission of protests having questionable merit.
Third parties may continue to submit information concerning prior
public use of the invention in accordance with 1.292.
Currently, 1.292 does not set forth a time period within which a
petition for the institution of public use proceedings must be filed.
The Office proposes to further amend 1.292 to provide that the public
use petition will be entered if submitted within two months of the
publication date of the application or prior to the mailing of a notice
of allowance under 1.311, whichever occurs first.
The proposed changes to 1.291 and 1.292 are intended to limit
any right of third parties to have information entered and considered in
a pending application. They do not vest the applicant with any right to
prevent the Office from sua sponte making such information of record in
the application or relying upon such information in subsequent
proceedings in the application, i.e., they do not limit the authority of
the Office to re-open the prosecution of an application to consider any
information deemed relevant to the patentability of any claim.
A number of miscellaneous comments concerning the 18-month
publication of patent applications were also received.
Comment 1: A number of comments opposed any pre-grant publication of
pending applications as an improper limiting of the right of a patent
applicant to maintain trade secrets, or argued that any pre-grant
publication should not occur prior to 24 or 60 months from the earliest
filing date.
Response: H.R. 1733, if enacted, would require the Commissioner to
publish pending applications at 18 months. The proposed changes to the
rules of practice concern the implementation of an 18-month publication
system mandated by statute, not the advisability of an 18-month
publication system. If legislation containing provisions for the
publication of pending applications is enacted, it is not expected that
the Office would have the discretion to determine whether or when
pending applications are to be published. That is, it is expected that
any legislation containing provisions for the publication of pending
applications will mandate whether and when applications are to be
published.
Comment 2: A number of comments indicated that the publication of
pending applications should be joined with provisional rights.
Response: H.R. 1733, as proposed, provides for provisional rights. This
issue, however, was not treated in the 18-Month Publication Notice or
this notice of proposed rulemaking since it does not affect the way
business is conducted with or within the Office.
Comment 3: One comment indicated that the requirement under 35 U.S.C.
112, first paragraph, for a disclosure of a best mode should be
eliminated in view of 18-month publication.
Response: The requirement in 35 U.S.C. 112, first paragraph, for a
disclosure of a best mode is a statutory, not regulatory, requirement.
Therefore, the Office has no authority to eliminate or limit this
requirement of the patent statutes.
Comment 4: One comment indicated that any publication of patent
applications should address the situation in which: (1) an applicant
files a continuing application prior to receiving a patent, and then
maintains the pendency of continuing application(s), which are
maintained in confidence, to obtain claims of various scope; (2) a
second party invests resources in developing a product which does not
infringe the claims of the patent, but which the applicant could draft
claims in the continuing application(s) to cover; and (3) the applicant
then permits a continuing application having claims which covers the
second party's product to issue, thus checkmating the second party.
Response: H.R. 1733, if enacted, would provide that applications shall
be published "as soon as possible after the expiry of a period of 18
months from the earliest filing date for which a benefit is sought." Any
continuing application which claims priority from any prior application
would be published either 18 months after the filing date of the
earliest filed prior application or as soon as possible after filing of
the continuing application, and thus would not be maintained in
confidence.
Comment 5: One comment indicated that applicants should obtain the
defensive benefit of their filing date in a published application
regardless of whether the application issues as a patent, either by
statute or rule.
Response: H.R. 1733, if enacted, would provide that a published
application is prior art under 35 U.S.C. 102(e) as of its filing date.
As prior art is defined by statute, i.e., 35 U.S.C. 102, the Office has
no authority to promulgate regulations defining what does or does not
constitute prior art.
Comment 6: One comment indicated that any rulemaking should be postponed
until there is pending legislation, and it is clear as to what form
18-month publication will take.
Response: As legislation has been introduced, it is now appropriate to
initiate the rulemaking process, the form that 18-month publication will
likely take is known. As such, in light of the changes that would be
necessitated by this legislation, the requirement for a rapid
implementation, if enacted, and a desire on the part of the Office to
receive public input prior to initiating the rulemaking process. If H.R.
1733 is amended during the legislative process, the final rules will
comply with this legislation as enacted. If H.R. 1733 is not enacted,
the proposed rules that would implement publication of patent
applications would be withdrawn.
Comment 7: One comment indicated that it is unclear as to whether, when
a restriction requirement is applied, each application will require a
separate publication fee.
Response: No separate publication fee has been proposed. In accordance
with current practice, each application would require separate filing,
issue, and maintenance fees, which fees will be increased to recover the
costs of publication.
Comment 8: Several comments indicated that the Office should not impose
access fees for either copying the paper application files, or searching
and copying a published application from any electronic data base.
Response: As discussed supra, the Office intends to provide free public
access to images of the Patent Application Notices and Technical
Contents Publications through video display terminals in the Public
Search Room and through CD-ROM collections of facsimile images of Patent
Application Notices and Technical Contents Publications in the Patent
and Trademark Depository Libraries. Copies of the Patent Application
Notices, Technical Contents Publications, or copies of the file wrapper
and contents of the application will be available for a fee. The costs
of publication have been allocated primarily to those applicants whose
applications are being published. Since publication primarily benefits
those seeking access to the published applications, it is reasonable to
require such persons to pay a fee for making copies of the Patent
Application Notices and Technical Contents Publications, or obtaining a
copy of the file wrapper and application contents of a published
application from the Office.
Comment 9: One comment indicated that the publication of applications
may result in instances in which third parties will submit information
to the applicant directly, rather than to the Office. In instances in
which the applicant was previously aware of the information, but did not
consider it material, the applicant cannot submit the information to the
Office in that application (if after final or allowance), but will be
charged with a 1.56 violation if they do not file a continuation
application to have it considered. Thus, 1.56 should be amended such
that an applicant in this situation no longer has a duty to submit
information to the Office.
Response: Section 1.56 expressly provides that there is no duty to
submit information which is not material to the patentability of any
existing claim. Since the applicant previously determined that the
information was not material, the fact that a third party has provided
this previously known material to the applicant has no effect on the
applicant's compliance with 1.56. Second, since the applicant was
previously aware of this information, the applicant is under a duty to
bring such information to the attention of the Office if it is material,
regardless of the actions of any third party, and the applicant is not
under a duty to bring such information to the attention of the Office if
it is not material, again regardless of the actions of any third party.
In either instance, the third party's actions have no bearing on whether
the applicant is in compliance with 1.56. Therefore, no change to
1.56 is being proposed.
Comment 10: One comment indicated that 1.56 should be modified or
abolished. Where information is brought to the attention of the
applicant after allowance, the applicant should be considered to have
met his or her duty of disclosure under 1.56 if the applicant simply
chooses to permit the patent to issue, as the public can take care of
itself through reexamination or whatever opposition proceedings are
instituted.
Response: As indicated supra, no change to 1.56 is being proposed. In
addition, the Office is proposing to limit third party protest
procedures, and is not proposing to develop any procedures amounting to
pre-grant opposition. Since the Office is continuing the ex parte
examination of applications, the proposed modification or abolition of
1.56 is not considered appropriate.
Comment 11: One comment indicated that an applicant should be allowed to
request early publication.
Response: Section 1.306(d) is being proposed to provide for petitions
requesting early publication.
Comment 12: One comment indicated that the Office should require that
the text of all applications be filed in digital form, and the
publication of applications should be purely digital, i.e., that Office
should not print any publication.
Response: 35 U.S.C. 22 provides that "[t]he Commissioner may require
papers filed in the Patent and Trademark Office to be printed or
typewritten." Therefore, the Office does not currently have the
authority to require that application papers be submitted in digital
form. The Office is considering the legislative and regulatory changes
that would be necessary to permit purely digital filing of application
papers; however, requiring all applicants to submit application papers
in digital form at this time would place an unnecessary burden on those
applicants lacking word-processing resources. In addition, the Office
received a substantial number of comments requesting a printed
publication containing more information, as well as a number of comments
opposing the promulgation of any regulations concerning a standard
application format which were in excess of EPO and PCT regulations and
not necessary to 18-month publication.
Comment 13: One comment indicated that the Office should clearly define
or eliminate the "formal" pre-examination search requirement in MPEP
708.02.
Response: MPEP 708.02(VIII) provides that an application may be granted
special status under the condition that, inter alia, the applicant:
Submits a statement that a pre-examination search was made, and
specifying whether by the inventor, attorney, agent, professional
searchers, etc., and listing the field of search by class and subclass,
publication, Chemical Abstracts, foreign patents, etc. A search made by
a foreign patent office satisfies this requirement.
This definition of a pre-examination search is reasonably clear as to
what actions are necessary for an applicant to have satisfied this
requirement of MPEP 708.02(VIII), and the requirement for a
pre-examination search is basic to the justification for granting
special status to an application on that basis. No changes to 37 CFR
1.102 are being proposed.
Comment 14: One comment indicated that the publication of applications
at 18 months will create a security review problem, especially where a
nonprovisional, i.e., 35 U.S.C. 111(a), application claiming the benefit
of a prior provisional application not subject to a secrecy order
contains additional material which must be reviewed. Therefore, the
Office should require that any nonprovisional applications claiming the
benefit of a prior provisional application indicate any additional
material by underlining and bracketing.
Response: Provisional applications will increase the number of
applications requiring security screening. All provisional applications
will require security screening immediately after filing in the same
manner as nonprovisional applications due to the licensing provision of
35 U.S.C. 184. Any subsequent U.S. patent application claiming the
benefit of a prior provisional application will also require security
screening unless it is evident on its face that no additional subject
matter is contained in the application beyond that in the provisional
application. It would be beneficial for the applicant to provide this
information to the Office upon filing of the nonprovisional application.
Thus, the Office is considering suggesting that applicants employ a
standard application transmittal letter similar to the standard
transmittal letter for transmitting an international application to the
United States Receiving Office (PTO-1382). This standard transmittal
letter would indicate, inter alia: (1) any difference between a
provisional application and a nonprovisional application claiming the
benefit of the provisional application; (2) the residence of the
inventor(s) to avoid the unnecessary screening of foreign origin
applications; and (3) any Government interests in the application, which
applications should be screened through contract provisions.
Comment 15: One comment indicated that the Office should automatically
place a secrecy order on any nonprovisional application in which the
prior provisional application was under a secrecy order.
Response: The Office does not have the authority to impose a secrecy
order without a specific recommendation from a defense agency. 35 U.S.C.
181. Additionally, all secrecy orders include the provision that any
other patent application already or hereafter filed in this or any
foreign country which contains any significant part of the subject
matter of the application under secrecy order also falls within the
scope of the secrecy order and must be brought to the immediate
attention of Licensing and Review. See 5.2(d). All papers pertaining
to such applications must be filed under the provisions of 5.33,
i.e., to the attention of Licensing and Review. Thus, the applicant is
obligated to maintain proper security of any nonprovisional application
that claims benefit of a prior provisional application under a secrecy
order.
Comment 16: One comment expressed concern that the defense agencies may
not have sufficient time to complete national security review of
applications made available to them under 35 U.S.C. 181 prior to
publication at 18 months from the earliest filing date for which a
benefit is sought, and suggested that applications not be published
until they have been cleared by the defense agencies.
Response: H.R. 1733, if enacted, would provide for withholding an
application from publication beyond 18 months from the earliest filing
date for which a benefit is sought if the application is under a secrecy
order or abandoned. There is no provision for delaying the publication
of an application until a completion of all reviews under 35 U.S.C. 181.
In addition, 35 U.S.C. 184 authorizes foreign filing of an application
without the need for a license once the application has been on file for
at least six (6) months. In view of 35 U.S.C. 184, the defense agencies
must complete all security reviews within six (6) months of filing to
prevent public disclosure. Thus, security review must be completed
within six (6) months of the actual U.S. filing date. For those
applications due for publication prior to six (6) months from the actual
filing date, e.g., those claiming the benefit of an earlier application
filed more than 18 months prior and those which a petition for early
publication has been granted, considerations of national security
mandate a limited delay in publication. The Office will not pass an
application for publication that is still under review by a defense
agency unless it has been on file for at least six (6) months and the
defense agency has been provided a minimum of three (3) months to review
the application.
Comment 17: One comment indicated that the digitized images of the
application file contents should be available in magnetic tape form in
the morning of the day of publication.
Response: Digitized images of the Patent Application Notice and
Technical Contents Publication will be available in magnetic tape form
for a fee to all parties as soon as possible after publication similar
to the way in which digitized images of granted patents are provided,
assuming that there is interest in such products.
Comment 18: One comment indicated that it is unclear as to whether an
examiner can cite the Patent Application Notice, and whether the
examiner will be required to supply the full application specification.
Response: When an examiner cites a published application, a copy of the
Technical Contents Publication will be provided with the Office action
under the same conditions that a copy of the entire patent of any cited
patent would currently be provided. That is, where an examiner would
provide only those portions of a patent relied upon, rather than a copy
of the entire patent due to its size, i.e., in instances of jumbo
patents, the examiner would similarly be expected to provide only those
portions of a published application relied upon in instances of jumbo
applications.
Comment 19: One comment indicated that the entire application as filed
should be published, otherwise the abandoned published application must
be permanently stored in a manner that would permit on-site retrieval.
Response: The Technical Contents Publication of any published
application will be electronically available, without any necessity for
retrieval of the actual application file. Therefore, a printed
publication of the application-as-filed would not provide any
information not electronically available. Nevertheless, the actual file
of an abandoned application may be readily obtained regardless of where
it is stored.
Comment 20: One comment indicated that the 18-Month Publication Notice
did not set forth the capacity of Patent and Trademark Depository
Libraries (PTDLs) to: (1) collect fees, (2) provide librarians of
assistance, and (3) house new publications.
Response: Each PTDL sets its own service standard procedures. Any
customer must directly contact the PTDL to ascertain its customer
service standards and requirements. Nevertheless, as the Office proposes
to publish only a Patent Application Notice, rather than the entire
application-as-filed, in printed form, and further proposes to provide
the Patent Application Notices and Technical Contents Publications to
PTDLs through CD-ROM collections of facsimile images, this publication
of applications would appear to alleviate, rather than exacerbate, any
publication storage housing problems.
Comment 21: One comment indicated that the Office should provide a first
Office action on the merits in all patent applications within 14 months
of the actual filing date of the application in the United States.
Response: The ability of the Office to process application within any
established time frame is entirely dependent upon the staff and
resources allocated by Congress, the Office of Management and Budget
(OMB), and the Department of Commerce (DoC). In January of 1995, the
first Office action was mailed within 14 months of the actual filing
date of the application in the United States in ninety-two (92) percent
of all applications in which a first Office action was mailed. Any
applicant who absolutely needs a first Office action on the merits
mailed within 14 months of the actual filing date of the application
should consider a petition to make special using the special examining
procedure for certain new applications set forth in MPEP 708.02(VIII).
In addition, any independent inventor meeting the requirements set forth
in 35 U.S.C. 122(b)(2) and 1.306(e), as proposed, may wish to
consider filing the application with a petition under 1.306(e).
Comment 22: One comment noted the current procedure of permitting
applicants to submit trade secret material and later expunge the
material if it is not necessary to patentability, and indicated that new
procedures should be implemented in the content of pre-grant publication
of pending applications.
Response: The current procedures for the treatment of petitions to
expunge trade secret, proprietary, or protective order material are set
forth in MPEP 724.05. Applicants are cautioned, in MPEP 724.05, that in
instances in which a decision on the petition is not made prior to the
date on which the application issues as a patent, any material in the
application file will remain open to public inspection, and, as such,
petitions to expunge must be filed as soon as possible. Under an
18-month publication system, any material in the application file on the
date the application is published would likewise remain open to public
inspection. However, as petitions to expunge are considered under
1.182, i.e., petitions not otherwise provided for, no change to the
rules of practice regarding petitions to expunge is being proposed.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1, 3 and 5, are
proposed to be amended as follows:
Section 1.4(a), as proposed, would add Patent Application Notices and
Technical Contents Publications to those services and facilities which
correspondence with the Office may comprise.
Section 1.5(a), as proposed, would provide that any letter concerning
an application must identify on the top page in a conspicuous location,
the application number (consisting of the series code and the serial
number) or serial number and filing date assigned to that application by
the Office, or the international application number of the international
application, regardless of whether the application is a published
application. That is, the identification required for a pending or
abandoned application would not change due to its status as a published
application.
Section 1.5(f), as proposed, would provide that a paper concerning a
provisional application must identify the application as such and by the
application number.
Section 1.5(g), as proposed, would provide that a paper relating to a
Patent Application Notice should identify it as such and by the Patent
Application Notice number. That is, a paper concerning a published
application must identify the application by application number, not
Patent Application Notice number; however, a paper concerning the Patent
Application Notice per se must identify it by Patent Application Notice
number.
Section 1.9(a), as proposed, would define an international
application in subparagraph (a)(4), rather than in paragraph (b).
Section 1.9(b), as proposed, would now define a published application
as an application for patent which has been published pursuant to 35
U.S.C. 122(b).
A new 1.9(h), as proposed, would define national security
classified as specifically authorized under criteria established by Act
of Congress or Executive Order to be kept secret in the interest of
national defense or foreign policy and in fact properly classified
pursuant to Act of Congress or Executive Order.
Section 1.11, as proposed, would provide that, like an issued patent
or a statutory invention registration, the specification, drawings, and
all papers relating to the case in the file of an abandoned published
application would be open to inspection by the public. Section 1.11, as
proposed, would further provide that a copy of the specification,
drawings, and all papers relating to the case in the file of any
published application, a patent, or statutory invention registration may
be obtained upon the payment of the fee set forth in 1.19(b)(2). That
is, while the actual application file of an abandoned published
application, patent, and statutory invention registration would be
available for public inspection, the actual application file of a
pending published application would not be available for public
inspection, but a copy of the specification, drawings, and all papers
relating to a pending published application would, upon the payment of
the fee set forth in 1.19(b)(2), be provided to any member of the
public.
Section 1.12, as proposed, would provide that the assignment records
relating to published applications are available and open to public
inspection at the Office, and copies of those assignment records may be
obtained upon request and payment of the fee. Section 1.12 would further
exclude the assignment records of published applications from those
records that are preserved in confidence. Finally, 1.12, as proposed,
would revise paragraph (c) to read "preserved in confidence under
1.14" for consistency with 1.14.
Section 1.13, as proposed, would provide that, like an issued patent,
certified and non-certified copies of Patent Application Notices,
Technical Contents Publications, and the file wrapper and contents of
published applications would, upon payment of a fee, be furnished to any
person.
Section 1.14, as proposed, would 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), as proposed, would provide that published
applications are excluded from those pending and abandoned applications
which are maintained in confidence. Section 1.14(a), as proposed, would
further change "the United States of America has been indicated as a
Designated State in a published international application" to "a
published international application in which the United States of
America has been indicated as a Designated State" for clarity, and add
"U.S. published application" to those documents in which identification
of an application by application number or serial number and filing date
would entitle the public to status information concerning the
application. Section 1.14(a), as proposed, would further provide that
reference to an application in a U.S. published application or patent,
or identification of an application by application number or serial
number and filing date in a published patent document or a published
international application in which the United States of America has been
indicated as a Designated State would entitle the public to the
application number, filing date, and status information concerning any
application claiming the benefit of the identified or referenced
application. Finally, 1.14(a), as proposed, would replace the phrase
"serial number" with "application number or serial number and filing
date" since the mere reference to a serial number without the series
code (application number) or filing date would not constitute a
reference to a specific single application.
Section 1.14(b), as proposed, would provide that published
applications, as well as applications that are referred to in a
published application, are excluded from those abandoned applications
which are not open to public inspection. Section 1.14(b), as proposed,
would further provide that applications that are referred to in
applications open to public inspection pursuant to this section and
applications which claim the benefit of an application open to public
inspection pursuant to this section are also excluded from those
abandoned applications which are not open to public inspection. Finally,
1.14(b), as proposed, would further remove applications that have
been published pursuant to 35 U.S.C. 122(b) from those abandoned
applications that may be destroyed after 20 years from their filing date.
Section 1.16(a), (h) and (g), as proposed, would increase the filing
fee for an original nonprovisional (35 U.S.C. 111(a)) or reissue
application to $780 ($390 for small entities), and plant application to
$540 ($270 for small entities). The filing fee for a design application
would not be affected by this proposed rule change.
Section 1.17(i), as proposed, would add petitions under 1.306(d)
for early publication of an application, petitions under 1.306(e) for
deferred publication of an application, and under 1.701(f) for patent
term extension based upon administrative delays not specifically
provided for to the list of petitions for which the fee set forth in
1.17(i) is required.
A new 1.17(t), as proposed, would be added to establish the fee
for submitting a protest under 1.291 after publication of an
application.
A new 1.17(u), as proposed, would be added to establish the
surcharge for accepting a late claim for priority under 35 U.S.C.
119(a)-(d) or for the benefit of a prior application under 35 U.S.C.
119(e), 120 or 121 filed during the pendency of the application.
Section 1.18(a) and (c), as proposed, would increase the issue fee
for an original or reissue application to $1280 ($640 for small
entities), and plant application to $660 ($330 for small entities). The
issue fee for a design application would not be affected by this
proposed rule change.
Section 1.19(a)(1), as proposed, would add Patent Application Notices
to the documents that the Office would supply in the manner of a patent
upon payment of a fee.
A new 1.19(a)(4), as proposed, would add Technical Contents
Publications to the documents that the Office would supply upon payment
of a fee.
Section 1.19(b)(2), as proposed, would add the file wrapper and
contents of published applications to the files that the Office would
supply a copy of upon payment of a fee.
Current 1.19(b)(4), as proposed, would be redesignated as
1.19(b)(5), and would add the assignment records of published
applications to the assignment records that the Office would supply upon
payment of a fee.
A new 1.19(b)(4), as proposed, would provide the fees for a
certified or uncertified copy of documents contained in a pending
application. Section 1.19(b)(4)(i), as proposed, would provide that the
fee for a certified or uncertified copy of the first document contained
in a pending application would be $75.00. Section 1.19(b)(4)(ii), as
proposed, would provide that the fee for a copy of each commonly
requested additional document contained in such pending application
would be $25.00. That is, while the fee for the first document contained
in a pending application would be $75.00, the fee for a copy of each
additional document contained in the same pending application and
requested together with the first document would be $25.00. Where,
however, a person requests a first document from a pending published
application, and subsequently requests an additional document, the
additional document was not commonly requested with the first document,
and the fee for the additional document would be $75.00. Nevertheless,
the fee for any further additional document(s) commonly requested with
the additional document would be $25.00 per additional document.
Section 1.19(c), as proposed, would provide that copies of all
Technical Contents Publications published annually would also be
provided to libraries upon payment of the fee for copies of all patents
issued annually.
Section 1.20(e)-(g), as proposed, would increase the fee for
maintaining an original or reissue patent in force beyond four years,
eight years, and twelve years, respectively, to $1020, $2020, and $3020,
respectively ($510, $1010, and $1510, respectively, for small entities).
Section 1.24, as proposed, would add the purchase of copies of Patent
Application Notices and Technical Contents Publications to those
documents for which the coupons set forth therein may be used.
Section 1.51(a)(1), as proposed, would further provide that a
complete application comprises, inter alia, an abstract.
Section 1.52(a), as proposed, would provide that all papers which are
to become a part of the permanent records of the Office must be legibly
typed in permanent dark ink in portrait orientation on flexible, strong,
smooth, non-shiny, durable and white paper. Currently, 1.52(a)
permits such papers to be hand-written, and does not limit the color of
the ink or paper, quality of the paper, or orientation of the typing.
Section 1.52(a), as proposed, would further provide that the application
papers must be presented in a form having sufficient clarity and
contrast between the paper and the typing thereon to permit electronic
reproduction by use of digital imaging and optical character
recognition, as well as the direct reproduction currently provided for.
Section 1.52(a), as proposed, would further provide that substitute
typewritten papers "will," rather than "may," be required if the
original application papers are not of the required quality. As any
substitute typewritten 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), as
proposed, would include a specific reference to 1.125.
Section 1.52(b), as proposed, would provide that the claims must be
set forth on a separate sheet. Section 1.72(b) currently provides that
the abstract must be set forth on a separate sheet. Thus, 1.52(b),
as proposed, and 1.72(b) would require that the abstract and claims be
set forth on a separate sheet. Section 1.52(b), as proposed, would
further provide that 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), 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 provided in the paper sheets. Section
1.52(b) currently provides that papers must be written on but one side,
but this phrase is proposed to be changed to "typed on but one side" to
conform to 1.52(a) which, as proposed, would no longer permit
hand-written or hand-printed ("written or printed") papers. Section
1.52(b), as proposed, would further provide that the lines "must,"
rather than "should," be 1 1/2 or double spaced, and that the pages
"must," rather than "should," be numbered consecutively, starting with
page one, with the numbers being centrally located above or below the
text. Finally, 1.52(b), as proposed, would 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.
Section 1.52(d), as proposed, would provide that where an application
is filed in a language other than English, the verified English
translation of the non-English-language application and the fee set
forth in 1.17(k) are required to be filed with the application or
within such time period as may be set by the Office, and that extensions
of time pursuant to 1.136(a) would not be available for submitting
the English translation.
Section 1.53(d)(1), as proposed, would further provide that the
applicant will be given a time period within which to file an abstract
and claims on a separate sheet, or substitute specification in
compliance 1.125 with papers typed on but one side of the paper or
new sheets of drawings, each of the substitute specification and sheets
of drawings of sufficient clarity, contrast, and quality, and in a
proper size and format for electronic reproduction in instances in which
the application papers did not comply with 1.52(a) and (b), as
proposed, or the drawings were of such poor quality as to preclude their
digital image scanning into the electronic data base. Section
1.53(d)(1), as proposed, would further provide that extensions of time
pursuant to 1.136(a) would not be available for filing an abstract
and claims on a separate sheet, and a substitute specification with
papers typed on but one side of the paper and sheets of drawings, each
of sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction.
Section 1.54(b), as proposed, would provide that the applicant will
be informed of the application number, filing date, and projected
publication date on a filing receipt. The phrase "application serial
number" would be changed to "application number" for consistency with
1.5(a).
Section 1.55(a), as proposed, would provide that any claim to
priority under 35 U.S.C. 119(a)-(d) must be stated within two months of
filing or within fourteen months of the date of the prior foreign
application, whichever is later, and must identify the prior foreign
application by specifying its application number, country, and day,
month and year of its filing. The proposed amendment to 1.55,
however, would not affect claims to priority under 35 U.S.C. 172, and
would not affect the time periods set forth in 1.55(a) for the
perfection of any claim for priority under 35 U.S.C. 119 (a)-(d), i.e.,
the filing of a certified copy of the foreign application.
Section 1.55(c), as proposed, would provide a procedure for the
acceptance of claim to priority under 35 U.S.C. 119(a)-(d) presented
after the time period set in 1.55(a). The procedure would require the
filing of a petition during the pendency of the application requesting
acceptance of the delayed claim, the surcharge set forth in 1.17(u),
and a statement that the delay was unintentional.
Section 1.55(d), as proposed, would provide that the time periods set
forth in this section, i.e., two months of filing or within fourteen
months of the filing date of the prior foreign application as set forth
in 1.55(a), and during the pendency of the application as set forth
in 1.55(c), cannot be extended.
Section 1.58(b), as proposed, would be removed and reserved as
unnecessary in view of the proposed amendments to 1.52(a) and (b).
Section 1.58(c), as proposed, would delete the sentence "[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 "[h]and lettering must be neat, clean, and have a minimum character
height of 0.08 inch (2.1 mm.)" to conform to the typing and paper size
and orientation limitations in 1.52(a) and (b), as proposed.
Section 1.58(c), as proposed, would further provide metric dimensions
with English equivalents in parentheticals, rather than vice versa.
Section 1.60(d), as proposed, would provide that the applicant will
be given a time period, which is not extendable under 1.136(a),
within which to file an abstract and claims on a separate sheet, and a
substitute specification in compliance with 1.125 with papers typed
on but one side of the paper and sheets of drawings, each of sufficient
clarity, contrast, and quality and in the proper size and format for
electronic reproduction where the papers of the prior application did
not comply with 1.52(a) and (b), as proposed, or the drawings of
the prior application were of such poor quality as to preclude their
digital image scanning into the electronic data base.
Section 1.62(d), as proposed, would provide that the applicant will
be given a time period, which is not extendable under 1.136(a),
within which to file any substitute specification and drawings required
under 1.62(e)(2), discussed infra.
Section 1.62(e), as proposed, would be subdivided into paragraphs
(e)(1) and (e)(2) for clarity. Section 1.62(e)(1), as proposed, would
contain the first two (2) sentences of 1.62(e) without change.
Section 1.62(e)(2), as proposed, would provide that a substitute
specification and drawings would be required when the application being
filed under 1.62 is a continuation-in-part application. Section
1.62(e) currently provides that no copy of the prior application or new
specification is required, that the filing of a copy of the prior
application or new specification is in fact considered improper, and
that a petition with instructions to cancel the copy of the prior
application or new specification is necessary to obtain the date of
deposit of the request for an application under 1.62 as the filing
date. Section 1.62(e)(2), as proposed, would provide that any new
specification filed will not be considered part of the original
application papers, but will be treated as a substitute specification in
accordance with 1.125.
Section 1.62(f), as proposed, would amend "35 U.S.C. 122" to read "35
U.S.C. 122(a)" to reflect the changes in H.R. 1733, if enacted, would
change "secrecy" to "confidence" as is found in 1.14, as proposed,
and would change "37 CFR 1.14" to " 1.14" for consistency.
Section 1.72(b), as proposed, would provide that the abstract should
be prior to the first page of the specification, rather than following
the claims, to conform to 1.77, as proposed.
Section 1.75, as proposed, would include an amendment to paragraph
(g), and would add two new paragraphs. Section 1.75(g), as proposed,
would add the phrase "the least restrictive claim should be presented as
claim number 1" to paragraph (g) to facilitate the selection of a
representative claim. Section 1.75(h), as proposed, would provide that
the claim or claims must be set forth on a separate sheet. Section
1.75(i), as proposed, would 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 to facilitate the digital image
and/or OCR scanning of the claim into the electronic data base.
Section 1.77, as proposed, would 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)
abstract of the disclosure; (4) title of the invention; or an
introductory portion stating the name, citizenship, and residence of the
applicant, and the title of the invention may be used; (5)
cross-reference to related applications; (6) statement regarding
federally sponsored research or development; (7) reference to a
"Microfiche appendix; (8) background of the invention; (9), brief
summary of the invention; (10) brief description of the several views of
the drawing; (11), detailed description; (12) claim or claims; (13)
drawings; (14) executed oath or declaration; and (15) sequence listing.
The phrase "if applicable" is proposed to be 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, as proposed, would further provide that the (1)
abstract of the disclosure; (2) title of the invention; (3)
cross-reference to related applications; (4) statement regarding
federally sponsored research or development; (5) background of the
invention; (6) brief summary of the invention; (7) brief description of
the several views of the drawing; (8) detailed description; (9) claim or
claims; 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, as proposed, would be amended to
change the reference to 1.96(b) in 1.77(c)(2), 1.77(a)(7) as
proposed, to 1.96(c) for consistency with 1.96, as proposed.
Section 1.78(a)(2), as proposed, would provide that any claim to the
benefit of any prior filed copending nonprovisional application or
international application designating the United States of America must
be stated within two months of filing or fourteen months from the filing
date of the prior application, whichever is later, and must include an
identification of the prior application by application number.
Section 1.78(a)(3), as proposed, would delete the sentence "[s]ince a
provisional application can be pending for no more than twelve months,
the last day of pendency may occur on a Saturday, Sunday, or Federal
holiday within the District of Columbia which for copendency would
require the nonprovisional application to be filed prior to the
Saturday, Sunday, or Federal holiday." In view of the proposed amendment
in H.R. 1733 to 35 U.S.C. 119(e), the provisions of 1.7 would be
applicable to a nonprovisional application claiming the benefit of a
prior provisional application.
Section 1.78(a)(4), as proposed, would provide that any claim to the
benefit of any prior filed copending provisional application must be
stated within two months of filing or within fourteen months of the
filing date of the prior application, whichever is later, and must
include an identification of the prior application by application number.
Section 1.78(a)(5), as proposed, would provide a procedure for the
acceptance of a delayed claim to priority under 35 U.S.C. 119(e), 120 or
121. The procedure would require the filing of a petition during the
pendency of the application requesting acceptance of the delayed claim,
the surcharge set forth in 1.17(u), and a statement that the delay
was unintentional.
Section 1.78(a)(6), as proposed, would provide that the time periods
set forth in this paragraph, i.e., two months of filing or within
fourteen months of the filing date of the prior application as set forth
in 1.78(a)(2) and (a)(4), and during the pendency of the
application as set forth in 1.78(a)(5), cannot be extended.
Section 1.78(c), as proposed, would change "two or more applications
or an application and a patent" to "an application or a patent under
reexamination and an application or a patent" such that the provisions
of 1.78(c) will also be applicable to a patent under reexamination.
Section 1.78(c), as proposed, would further 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(d), as proposed, would change "obviousness-type double
patenting rejection" to "non-statutory double patenting rejection" as
current examining procedures authorize non- obviousness-type double
patenting rejections, as well as obviousness-type double patenting
rejections (MPEP 804(II)), and either may be obviated by filing a
terminal disclaimer in accordance with 1.321(b). Section 1.78(d), as
proposed, would further change each instance of "application" to
"application or a patent under reexamination" for consistency with
1.321(b) 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 non-statutory double patenting rejection in a
patent under reexamination may be obviated by filing a terminal
disclaimer in accordance with 1.321(b).
Section 1.84(c), as proposed, would 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. As the back side of a drawing sheet
will not be scanned into the electronic data base, an applicant can
include other identifying indicia on the back side the drawing sheet.
Section 1.84(f), as proposed, would 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), as proposed, would be amended to delete the margin
requirements for the sheet sizes that would no longer be acceptable if
the proposed change to 1.84(f) were adopted. Section 1.84(g), as
proposed, would be further amended to provide that, to facilitate
digital image scanning of the drawing sheets, the sheets should have
scan targets (cross-hairs) on two cater-corner margin corners. Finally,
1.84(g), as proposed, would 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(j), as proposed, would provide that one of the views
should be suitable for publication in the Patent Application Notice, and
the Gazette of Patent Application Notices, as well as the Official
Gazette, as the illustration of the invention.
Section 1.84(x), as proposed, would be 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 1.85, as proposed, would provide that drawings must be
suitable for "electronic" reproduction "by digital imaging" before being
admitted for examination. As discussed supra, as a drawing figure will
be included in the Gazette Entry in the Gazette of Patent Application
Notices and the Patent Application Notice, drawings suitable for
electronic reproduction by digital imaging would be necessary for the
initial processing of the application.
Section 1.96, as proposed, would be amended to designate the text
preceding current paragraph (a) as paragraph (a), and would redesignate
current paragraphs (a) and (b) as paragraphs (b) and (c), respectively.
New 1.96(a), as proposed, would be 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), as proposed, would be further amended to 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 original copies from the
computer 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," to 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
to delete the phrase "if the copy is to be used for camera ready copy."
Section 1.96(a)(1), new 1.96(b)(1) as proposed, currently provides
that the requirements of 1.84 apply to computer program listings
submitted as sheets of drawings, and 1.96(a)(2), new 1.96(b)(2) as
proposed, currently provides that the requirements of 1.52 apply to
computer program listings submitted as part of the specification.
Section 1.52(b), as proposed, would require that the sheets of paper 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 1.52(a), as proposed, would require
that application papers be legibly typed in permanent dark ink in
portrait orientation.
New 1.96(c), as proposed, would be amended to change the
references to 1.77(c)(2) in new 1.96(c) to 1.77(a)(7) for
consistency with 1.77, as proposed, to change "may" and "should" to
"must," to delete the sentence "[a]ll computer program listings
submitted on paper will be printed as part of the patent," to relocate
the phrase "except as modified or clarified below" in subsection (c)(2),
to 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, to change to sentences
"[e]ither Computer-Output-Microfilm (COM) ouput or copies of
photographed paper copy may be submitted" and "[i] the former case, NMA
standards MS1 and MS2 apply; in the latter case, standard MS5 applies"
to "[c]omputer-Output-Microfilm (COM) ouput may be submitted in
accordance with either NMA standard MS1 or MS2," to change "serial
number" to "application number," and to provide metric dimensions with
English equivalents in parentheticals, rather than vice versa.
Section 1.97(a)-(d), as proposed, would be amended to include the
phrase "for an applicant for patent or for reissue of a patent, or an
owner of a patent under reexamination" in paragraph (a) and "by the
applicant or patent owner" 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, both
discussed infra. Section 1.97(c), as proposed, would be 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 1.98, as proposed, would provide that any Patent Application
Notice or Technical Contents Publication listed in an information
disclosure statement must be identified by applicant, Patent Application
Notice number or Technical Contents Publication number and publication
date. Section 1.98, as proposed, would also limit those U.S. patent
applications of which a copy need not be included to unpublished
applications.
Section 1.107, as proposed, would provide that if domestic published
applications are cited by the examiner, their Technical Contents
Publication number, publication date, the names of the applicants must
be stated. Section 1.107, as proposed, would be amended to delete the
phrase "and the classes of inventions."
Section 1.108, as proposed, would further except published
applications from those abandoned applications that will not be cited as
references.
Section 1.131(a), as proposed, would include pending or patented U.S.
published applications which substantially show or describe but do not
claim the same patentable invention, as defined in 1.601(n), and
abandoned U.S. published applications as references to which the
provisions of 1.131 apply. Pending or patented U.S. applications
would be treated in the same manner that U.S. patents are currently
treated, i.e., 1.131 would apply only if the pending or patented
application does not claim the same patentable invention. Abandoned U.S.
published applications would be treated in the manner that foreign
patents or printed publications are currently treated. As U.S. published
applications, either pending, abandoned or patented, may constitute
prior art under 35 U.S.C. 102(a) or (e), this change, and the change to
1.132 infra, are necessary to accommodate such references.
In a Notice pf Proposed Rulemaking published in the Federal Register
at 59 FR 49876 (September 30, 1994) and in the Official Gazette at 1167
Off. Gaz. Office 96-97 (October 25, 1994)( 1.131 Notice of Proposed
Rulemaking), 1.131(a) was proposed to be amended to inter alia
broaden its application to instances in which inventions of a pending
application or patent under reexamination and a patent held by a single
party are not identical as set forth in 35 U.S.C. 102, but not
patentably distinct, and changes to 1.131 were adopted as a final
rule. 60 FR 21043 (May 1, 1995); 1174 Off. Gaz. Pat. Office 155 (May 30,
1995).
An amendment to 1.131(a) was proposed to avoid a potential
conflict between 1.131(a) and 1.602(a) in instances in which
1.131(a) prohibits the filing of affidavits or declarations thereunder
when the same patentable invention as defined in 1.601(n) is being
claimed, but 1.602(a) prohibits, unless good cause is shown, the
declaration or continuance of an interference when the application(s)
and patent are owned by a single party. While this conflict between two
pending applications can be avoided by filing a continuation-in-part
application merging the conflicting inventions into a single
application, this conflict can result in hardship where there is a
pending application and an issued patent that can no longer be merged by
filing a continuation-in-part application.
Specifically, the proposed amendment to 1.131(a) in the 1.131
Notice of Proposed Rulemaking would have permitted the filing of an
affidavit or declaration thereunder 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 pending application or patent under reexamination and patent
upon which the rejection was based were owned by a single party. This
proposed amendment to 1.131(a) in the 1.131 Notice of Proposed
Rulemaking, however, was withdrawn in the final rule to permit further
study.
Section 1.131(a), as currently proposed, would 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. Section 1.131(a)(3), as proposed, would not require
common ownership at the time the latter invention was made, but
consistent with 1.602(a), would require only that there be common
ownership when the 1.131 affidavit or declaration is under
consideration.
Where the patent upon which the rejection is based is not prior art
under 35 U.S.C. 102(a) or (e), but is prior art only under 35 U.S.C.
102(f) or (g), to the pending application or patent under reexamination,
and the invention claimed in the pending application or patent under
reexamination is not identical as set forth in 35 U.S.C. 102, the issue
is whether the subject matter of the other patent and the invention
claimed in the pending application or patent under reexamination were,
at the time the invention was made, owned by the same person or subject
to an obligation of assignment to the same person, i.e., whether the
patent upon which the rejection is based is disqualified as prior art
under the second paragraph of 35 U.S.C. 103, and 1.78(c) and (d)
are applicable to this issue. Where, however, the patent upon which the
rejection is based is prior art under 35 U.S.C. 102(a) or (e), it cannot
be disqualified as prior art under the second paragraph of 35 U.S.C.
103, and as such 1.78(c) and (d) are inapplicable. Section
1.131(a)(3), as currently proposed, would permit a showing of prior
invention in an application or patent under reexamination where the
application or patent under reexamination and patent upon which the
rejection was based were owned by a single party.
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, 1.131(a)(3), as proposed,
provides only for a showing of prior invention to avoid a rejection
based upon a patent. In situations in which two pending applications
claiming patentably indistinct but not identical inventions are held by
a single party but cannot be merged into a single application, petitions
under 1.183 will be entertained for waiver of the 1.131
requirement that the rejection be based upon a patent.
Section 1.131, as proposed, would not affect a statutory or non-
statutory double patenting rejection. Specifically, affidavits or
declarations under 1.131 will continue to be ineffective where the
claims of the pending application or the patent undergoing reexamination
are rejected under 35 U.S.C. 101 for double patenting and the claims of
the pending application or the patent under reexamination claim the
identical invention of a patent. However, where patentably indistinct
but not identical inventions are claimed, a non-statutory double
patenting rejection can be overcome by filing an appropriate terminal
disclaimer.
Section 1.132, as proposed, would change "domestic" to "U.S." for
consistency with 1.131, and would include U.S. pending published
applications which substantially show or describe but do not claim the
invention, and abandoned published applications as references to which
the provisions of 1.132 apply for the reasons discussed supra.
Section 1.136(a), as proposed, would provide that extensions under
1.136(a) are not available where the response is to a requirement for an
English translation, an abstract or claims on a separate sheet, or
substitute specification or sheets of drawings of sufficient clarity,
contrast, and quality and in the proper size and format for electronic
reproduction submitted pursuant to 1.52(d), 1.53(d), 1.60(d),
1.62(d), 1.494(c), or 1.495(c), or an oath or declaration submitted
pursuant to 1.494(c) or 1.495(c).
Section 1.138, as proposed, would add "or publication" to the end of
the sentence that "express abandonment of the application may not be
recognized by the Office unless it is actually received by appropriate
officials in time to act thereon before the date of issue" to clarify
that the express abandonment must be filed in sufficient time to permit
its correlation with the application file and the termination of the
publication process. Section 1.138, as proposed, would further provide
that an applicant seeking to abandon an application to avoid publication
of the application must submit a proper letter of express abandonment at
least two months prior to the projected date of publication to allow
sufficient time to permit the appropriate officials to recognize the
abandonment and remove the application from the publication process, and
that unless an applicant receives written acknowledgement of the letter
of express abandonment prior to the projected date of publication,
applicant should expect that the application will be published in due
course.
Section 1.154, as proposed, would 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) description; (8) 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 proposed to be 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.
A new 1.163(c), as proposed, would be 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) abstract of the disclosure; (4) title of the
invention; (5) cross-reference to related applications; (6) statement
regarding federally sponsored research or development; (7) background of
the invention; (8) brief summary of the invention; (9) brief description
of the drawing; (10) detailed botanical description; (11) claim; (12)
drawings (in duplicate); (13) executed oath or declaration; and (14)
Plant Color Coding Sheet. The phrase "if applicable" is proposed to be
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.
A new 1.163(d), as proposed, would be 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 recognized 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 is a systematic manner will facilitate
the examination of the application.
Section 1.291, as proposed, would provide that a protest must be
filed within two months of the date the application is published or
prior to the mailing of a Notice of Allowance, whichever occurs first,
to be considered timely, and that any protest submitted after
publication must be accompanied by the fee set forth in 1.17(t). In
addition, 1.291(a)(2), as proposed, would require that any protest
filed after the date the application was published be served upon the
applicant in accordance with 1.248, i.e., filing two copies of the
protest in the Office would not be acceptable. As a protest cannot be
considered subsequent to issuance of the application as a patent,
1.291(b), as proposed, would provide that the protest will be considered
if the application is still pending when the protest and application
file is brought before the examiner, i.e., that the application was
pending at the time the protest was filed would be immaterial to its
ultimate consideration. Finally, 1.291, as proposed, would further
locate 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 paragraph (b).
Section 1.292, as proposed, would be amended to delete the phrase "is
filed by one having information of the pendency of an application" as
applications will no longer necessarily be maintained in confidence
throughout their entire pendency, 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, as proposed, would further
require that any petition filed after the date the application was
published be served on the applicant in accordance with 1.248.
Finally, 1.292, as proposed, would provide that a petition to
institute public use proceedings must be filed within two months of the
date the application is published or prior to the mailing of a Notice of
Allowance, whichever occurs first, to be considered timely.
Sections 1.305 through 1.309 are proposed to be added to set forth
the procedures for the 18-month publication of patent applications.
Section 1.305, as proposed, would provide that applications may be
withdrawn from publication at the initiative of the Office or upon
request by the applicant. The basis for the withdrawal of an application
from publication would be limited to: (1) a mistake on the part of the
Office, e.g., the application is abandoned or has issued as a patent, or
the projected publication date is not at 18 months from the earliest
filing date for which a benefit is sought; (2) the application is either
national security classified or subject to a secrecy order pursuant to
35 U.S.C. 181; or (3) express abandonment of the application.
Section 1.306(a), as proposed, would provide that applications under
35 U.S.C. 111(a), 161 or 371 will be published as soon as possible after
the expiration of a period of 18 months from the filing date, including
the earliest filing date for which a benefit is sought, but excludes
applications that: (1) are national security classified or subject to a
secrecy order pursuant to 35 U.S.C. 181; (2) have issued as a patent;
(3) are recognized by the Office as no longer pending, i.e., are
abandoned; or (4) were previously published through early publication.
Section 1.306(b), as proposed, would provide that the publication of
an application will include a notice designated as a "Gazette Entry"
containing information such as the application number, filing date,
title, inventor's name, abstract, a drawing figure, a representative
claim, and U.S. and IPC classification in a Gazette of Patent
Application Notices, and a printed publication designated as a Patent
Application Notice or PAN containing information such as the application
number, filing date, title, inventor's name, correspondence address,
abstract, a drawing figure, a representative claim, and U.S. and IPC
classification. In addition, 1.306(b), as proposed, would provide
that the publication of an application will include a document
designated as a Technical Contents Publication containing the Patent
Application Notice, and the specification, abstract, claims, and
drawings of the original application papers. Finally, 306(b), as
proposed, would provide that publication would include public access to
a copy of the specification, drawings, and all papers relating to the
application file in accordance with 1.11.
Section 1.306(c), as proposed, would provide that provisional
applications under 35 U.S.C. 111(b) shall not be published, and that
design applications under 35 U.S.C. 171 and reissue applications under
35 U.S.C. 251 shall not be published pursuant to 1.306. H.R. 1733, if
enacted, would not authorize the publication of design applications
(prior to their issuance as patents) or provisional applications.
Reissue applications are currently published through the announcement in
the Official Gazette of the filing of the reissue application, and the
opening of the application to public inspection in accordance with
1.11(b).
Section 1.306(d), as proposed, would provide for the early
publication of applications. Any request for early publication of an
application should be filed as soon as possible, and must be by way of
petition, including the fee set forth in 1.17(i). In addition, any
application must include an abstract and claims on a separate sheet, any
substitute specification or drawings required pursuant to 1.53(d),
1.60(d), or 1.62(d), and any English translation required pursuant to
1.52(d). The Office cannot assure publication of an application on any
certain date, and, as such, requests for publication on a date certain
will be treated as a request for publication as soon as possible.
Finally, as H.R. 1733, if enacted, would not authorize the publication
of provisional applications, no consideration will be given to any
request for the early publication of a provisional application.
Section 1.306(e), as proposed, would implement the provisions in H.R.
1733 (35 U.S.C. 122(b)(2)) for, under limited circumstances, not
publishing an application under 35 U.S.C. 122(b) until three months
after an Office action under 35 U.S.C. 132. Section 1.306(e), as
proposed, would specifically provide that an applicant who is an
independent inventor and has been accorded status under 35 U.S.C. 41(h)
in an application that does not claim the benefit of an earlier filing
date under 35 U.S.C. 119, 120, 121, 365(a) or 365(c) may request that
the application not be published until three months after an action on
the merits, and that a petition requesting that the application not be
published until three months after an action on the merits must be
submitted on filing, and accompanied by the petition fee set forth in
1.17(i) and a certification that the invention disclosed in the
application was not or will not be the subject of an application filed
in a foreign country, which certification must be verified if made by a
person not registered to practice before the Patent and Trademark Office.
Section 1.307, as proposed, would provide for the delivery of the
printed publication, i.e., the Patent Application Notice or PAN, to the
correspondence address of record, which is the manner in which a patent
is currently delivered to the patentee.
Section 1.308, as proposed, would provide for the correction of the
printed publication, but such correction would be granted only for a
significant mistake made by the Office which is apparent from Office
records.
Section 1.315, as proposed, would change "the attorney or agent of
record, if there be one; or if the attorney or agent so requests, 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 requests" to "the correspondence address of record. See
1.33(a)" for simplicity as patents are currently mailed to the patentee
at the correspondence address of record.
Section 1.321(c), as proposed, would change "double patenting
rejection" to "non-statutory double patenting rejection" for consistency
with 1.78(c), as proposed, and to clarify that the filing of a
terminal disclaimer is ineffective to overcome a statutory double
patenting rejection.
Section 1.492(a), as proposed, would increase the basic national fee
for international applications entering the national stage under 35
U.S.C. 371 to: (1) $710 ($355 for a small entity) where an international
preliminary examination fee as set forth in 1.482 has been paid on
the international application to the Office; (2) $780 ($390 for a small
entity) where no international preliminary examination fee as set forth
in 1.482 has been paid to the Office, but an international search fee
as set forth in 1.445(a)(2) has been paid on the international
application to the Office as an International Searching Authority; (3)
$1040 ($520 for a small entity) where no international preliminary
examination fee as set forth in 1.482 has been paid and no
international search fee as set forth in 1.445(a)(2) has been paid on
the international application to the Office; (4) $120 ($60 for a small
entity) where the international preliminary examination fee as set forth
in 1.482 has been paid to the Office and the international
preliminary examination report states that the criteria of novelty,
inventive step (non-obviousness), and industrial applicability, as
defined in PCT Article 33(1) to (4) have been satisfied for all the
claims presented in the application entering the national stage (see
1.496(b)); and (5) $910 ($455 for a small entity) where a search report
on the international application has been prepared by the European
Patent Office or the Japanese Patent Office.
Section 1.494(c) and (g), as proposed, would provide that the
applicant will be given a time period within which to file an abstract
and claims on a separate sheet, or substitute specification in
compliance 1.125 with papers typed on but one side of the paper or
new sheets of drawings, each of the substitute specification and sheets
of drawings of sufficient clarity, contrast, and quality, and in a
proper size and format for electronic reproduction in instances in which
the application papers did not comply with 1.52(a) and (b), as
proposed, or the drawings were of such poor quality as to preclude their
digital image scanning into the electronic data base. Section 1.494(c),
as proposed, would further provide that extensions of time pursuant to
1.136(a) would not be available for filing an English translation, oath
or declaration, abstract and claims on a separate sheet, and a
substitute specification with papers typed on but one side of the paper
and sheets of drawings, each of sufficient clarity, contrast, and
quality and in the proper size and format for electronic reproduction.
Section 1.495(c) and (h), as proposed, would provide that the
applicant will be given a time period within which to file an abstract
and claims on a separate sheet, or substitute specification in
compliance 1.125 with papers typed on but one side of the paper or
new sheets of drawings, each of the substitute specification and sheets
of drawings of sufficient clarity, contrast, and quality, and in a
proper size and format for electronic reproduction in instances in which
the application papers did not comply with 1.52(a) and (b), as
proposed, or the drawings were of such poor quality as to preclude their
digital image scanning into the electronic data base. Section 1.495(c),
as proposed, would further provide that extensions of time pursuant to
1.136(a) would not be available for filing an English translation, oath
or declaration, abstract and claims on a separate sheet, and a
substitute specification with papers typed on but one side of the paper
and sheets of drawings, each of sufficient clarity, contrast, and
quality and in the proper size and format for electronic reproduction.
The proposed rules to implement 18-month publication provide that
extensions of time pursuant to 1.136(a) are not available for
submissions which will affect the publication of the application.
Section 1.53(d)(1), as proposed, does not exclude extensions of time
pursuant to 1.136(a) for the filing of an oath or declaration as the
absence of an oath or declaration for an application filed under 35
U.S.C. 111(a) does not affect the publication of the application.
Section 1.306(a), as proposed, does not provide for the publication of a
national application for patent which resulted from an international
application until after compliance with 35 U.S.C. 371, and an
international application is not in compliance with 35 U.S.C. 371 until
an oath or declaration is filed. See 35 U.S.C. 371(c)(4). Therefore, the
absence of an oath or declaration will affect the publication of an
application under 35 U.S.C. 371. Accordingly, 1.494(c) and
1.495(c), unlike 1.53(d)(1), provide that the period for filing the
oath or declaration cannot be extended pursuant to 1.136(a) to
consistently provide that extensions of time pursuant to 1.136(a) are
not available for submissions which will affect the publication of the
application.
Section 1.497(a), as proposed, would be 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), as
proposed, would 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), as proposed, would be subdivided into paragraphs
(b)(1) and (b)(2). Section 1.497(b)(1), as proposed, would 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),
as proposed, would 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 (
1.42, 1.43 or 1.47), the oath or declaration shall state the
relationship of the person to the inventor and, upon information and
belief, the facts which the inventor is required to state" such that
1.497(b), as proposed, would be parallel to 1.64.
Section 1.497(c), as proposed, would be added to provide that the
oath or declaration must comply with the requirements of 1.63.
Section 1.497(c), as proposed, would further provide that in instances
in which the oath or declaration does not comply with 1.63, but meets
the requirements of 1.497(a) and (b), as proposed, 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.
Section 1.701(a), as proposed, would add "an unusual administrative
delay by the Office" to the bases for extension of patent term due to
prosecution delay. H.R. 1733 provides that the Commissioner shall
prescribe regulations to govern the particular circumstances deemed to
be an unusual administrative delay. Section 1.701(a)(4)(i), as proposed,
would set forth the failure to act on a reply under 1.111 or appeal
brief under 1.192 within six months of the date it was filed; the
failure to act on an application within six months of the date of a
decision under 1.196 by the Board of Patent Appeals and Interferences
where claims stand allowed in an application or the nature of the
decision requires further action by the examiner; and the failure to
issue a patent within six months of the date that the issue fee was paid
and all outstanding requirements were satisfied as circumstances
constituting a prima facie unusual administrative delay. In an
application entitled to an extension under 1.701(a)(3), however, any
unusual administrative delay during the appellate proceeding would be
disregarded under 1.701(a)(4) in accordance with the "not
overlapping" provision in 1.701(b). Requests for patent term
extension based upon circumstances not specifically set forth in
1.701(a)(4)(i) as a prima facie unusual administrative delay must be
specifically requested by petition and would be considered on a
case-by-case basis. Section 1.701(a), as proposed, would further add
"subject to the provisions of this section" and delete the phrase "if
the patent is not subject to a terminal disclaimer due to the issuance
of another patent claiming subject matter that is not patentably
distinct from that under appellate review" from paragraph (a)(3).
Section 1.701(b), as proposed, would add paragraph (c)(4) to those
paragraphs summed in calculating the period of extension, and change the
maximum extension from five years to ten years in accordance with H.R.
1733.
Section 1.701(c), as proposed, would provide that the period of delay
is the sum of the number of days, if any, in the period of unusual delay
by the Office. That is, the ordinary delay in processing and examining
an application would not be included under 1.701(c), as proposed, in
determining the extension under 1.701(b). For example, (1) where
there was a failure to act on a reply under 1.111 within six months
of the date it was filed, the period of delay is the number of days in
excess of six months, if any, in the period beginning on the date a
reply under 1.111 was filed and ending on the mailing date of an
action in response thereto, (2) where there was a failure to act on an
appeal brief under 1.192 within six months of the date it was filed,
and the application is not entitled to an extension under
1.701(a)(3), the period of delay is the number of days in excess of six
months, if any, in the period beginning on the date an appeal brief
under 1.192 was filed and ending on the mailing date of either a
notification under 1.192(d) or examiner's answer under 1.193, and
(3) where there was a failure to issue a patent within six months of the
date that the issue fee was paid and all outstanding requirements were
satisfied, 1.701(a)(3), the period of delay is the number of days in
excess of six months, if any, in the period beginning on the date the
issue fee was paid or all outstanding requirements were satisfied,
whichever is later, and the date the patent was issued.
Section 1.701(d), as proposed, would change "[t]he period of delay
set forth in paragraph (c)(3)" to "[t]he period set forth in paragraph
(c)," as the limitation on patent term extension in H.R. 1733 based upon
an applicant's failure to engage in reasonable efforts to conclude
processing or examination of the application is not limited to extension
under 35 U.S.C. 154(b)(2), i.e., delays during appellate proceedings.
Section 1.701(d), as proposed, would further delete "any time during the
period of appellate review that occurred before three years from the
filing date of the first national application for a patent presented for
examination." Public Law 103-465 provides that extensions under 35
U.S.C. 154(b)(2) shall be reduced by any time during the period of
appellate review that occurred before three years from the filing date
of the first national application for patent presented for examination,
where H.R. 1733 provides only that no patent shall be extended under 35
U.S.C. 154(b) that has issued before the expiration of three years after
the filing date of the application or entry of the application into the
national stage under 35 U.S.C. 371, whichever is later, not taking into
account any claim to the benefit of the filing date of any application
under 35 U.S.C. 120, 121, or 365(c).
Section 1.701(d), as proposed, would further change "any time during
the period of appellate review, as determined by the Commissioner,
during which the applicant for patent did not act with due diligence"
and "[i]n determining the due diligence of an applicant, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review" to "any time during the processing or
examination of the application, as determined by the Commissioner,
during which the applicant for patent failed to engage in reasonable
efforts to conclude processing or examination of the application," "[i]n
determining whether an applicant failed to engage in reasonable efforts
to conclude processing or examination of the application, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the entire prosecution of the application to determine
whether the applicant exhibited that degree of timeliness as may
reasonably be expected from, and which is ordinarily exercised by, an
applicant for patent seeking to conclude the processing or examination
of the application," and "[c]ircumstances constituting a failure to
engage in reasonable efforts to conclude processing or examination of
the application include: (1) requesting suspension of action under
1.103, and (2) abandonment of the application."
H.R. 1733 provides that the period of extension under 35 U.S.C.
154(b) shall be reduced by a period equal to the time during the
processing or examination of the application leading to the patent in
which the applicant failed to engage in reasonable efforts to conclude
processing or examination of the application and that the Commissioner
shall prescribe regulations establishing the circumstances that
constitute a failure of an applicant to engage in reasonable efforts to
conclude processing or examination of an application. Section
1.701(d) specifically sets forth requesting suspension of action under
1.103 and abandonment of the application as examples of prima facie
failures to engage in reasonable efforts to conclude processing or
examination of the application. In determining whether an applicant
engaged in reasonable efforts to conclude processing or examination of
the application, however, the facts and circumstances of applicant's
actions during the entire prosecution of the application will be
considered on a case-by-case basis to determine whether the applicant
exhibited that degree of timeliness as may reasonably be expected from,
and which is ordinarily exercised by, an applicant for patent seeking to
conclude the processing or examination of the application. As such, it
is not possible to list all of the specific circumstances in
1.701(d). That is, circumstances other than the examples specifically
set forth 1.701(d) may, on a case-by-case basis, be considered the
failure to engage in reasonable efforts to conclude the processing or
examination of the application.
A new 1.701(e), as proposed, would provide that no patent shall be
extended under this section: (1) beyond the expiration date specified in
a terminal disclaimer in a patent whose term has been disclaimed in such
terminal disclaimer, or (2) an instance in which the patent issued
before the expiration of three years after the filing date of the
application or entry of the application into the national stage under 35
U.S.C. 371, whichever is later, not taking into account any claim to the
benefit of the filing date of any application under 35 U.S.C. 120, 121,
or 365(c). H.R. 1733 provides these limitations on extensions under 35
U.S.C. 154(b).
A new 1.701(f), as proposed, would provide that any extension of
patent term under 1.701(a)(4) on the basis of an administrative delay
other than one specifically set forth in 1.701(a)(4)(i)(A)-(C) must
be requested by petition. Due to the necessity for individualized
determinations of patent term extensions based upon prosecution delay
due to an unusual administrative delay by the Office not specifically
provided for, such extensions of patent term under 1.701(a)(4) must
be specifically requested by petition in a timely manner. Section
1.701(f), as proposed, would specifically provide that any petition for
patent term extension based upon 1.701(a)(4) for an unusual
administrative delay by the Office other than one specifically set forth
in 1.701(a)(4)(i)(A)-(C) cannot be filed prior to the mailing of a
notice of allowance under 1.311 and must be accompanied by a
statement of the facts involved, the administrative delay by the Office
to be reviewed, the period of extension requested, and the fee set forth
in 1.17(i). The petition may include a request that the petition fee
be refunded if an extension of the patent term under 1.701(a)(4) is
granted.
Section 1.808(a), as proposed, would provide that upon the publishing
of the application, all restrictions imposed by the depositor on the
availability to the public of the deposited material will be irrevocably
removed, subject to provisions of 1.808(b).
Section 3.31, as proposed, would provide that the assignment cover
sheet may, but need not, include an indication that the assignment
information is to be printed on the Patent Application Notice. Section
3.31, as proposed, would further provide that, due to constraints in the
publication process, any such indication not submitted within two months
of filing or fourteen months from the earliest filing date for which a
benefit is claimed, whichever is later, may result in the assignment
information not being printed on the Patent Application Notice.
Section 5.1, as proposed, would include a new paragraph (c) which
would provide defense agencies adequate time to complete national
security review under 35 U.S.C. 181 before an application would be
released for publication under 1.306. Specifically, the period for
completion of a defense agency review would be six (6) months from the
actual U.S. filing date for applications filed under 35 U.S.C. 111(a) or
three (3) months from the date the application was made available to the
defense agency for review, whichever is later.
Section 5.1, as proposed, would further include a new paragraph (d)
which would set forth the current practice that applications on
inventions not made in the United States and on inventions in which the
Federal Government has a known property interest are not made available
to defense agencies under 5.2(b).
A new 5.9, as proposed, would set forth the procedures for the
treatment of national security classified applications. The procedures
set forth in this section, except for those pertaining to the
publication of applications pursuant to 1.306, are the current
procedures for the treatment of national security classified
applications. It is, however, considered appropriate to implement these
procedures through the rulemaking process.
35 U.S.C. 181 authorizes the withholding of the grant of a patent on
an application that has been placed under a secrecy order; however,
title 35, United States Code, does not specifically authorize the
withholding of the grant of a patent on an application that is national
security classified, but not placed under a secrecy order. Nevertheless,
the Office is prohibited by Executive Order and statute from disclosing
a national security classified application. Therefore, procedures for
obtaining a secrecy order pursuant to 35 U.S.C. 181 on a national
security classified application, or the declassification of such
application, are necessary.
Section 5.9(a), as proposed, would provide that patent applications
and papers that are national security classified and contain authorized
national security markings of "Confidential," "Secret" or "Top Secret"
are accepted by the Office, that national security classified documents
mailed to the Office must be addressed in compliance with 5.33, and
that national security classified documents may be hand-carried to
Licensing and Review.
Section 5.9(b), as proposed, would provide that a national security
classified patent application will not be published pursuant to 1.306
or allowed pursuant to 1.311 of this chapter until the application is
declassified.
Section 5.9(c), as proposed, would clarify that, in a national
security classified application, it is the applicant's responsibility to
either obtain a secrecy order pursuant to 5.2, or have the
application declassified by the relevant department or agency. Section
5.9(c), as proposed, would further provide that in a national security
classified patent application filed without a notification pursuant to
5.2(a), i.e., a recommendation for imposition of a secrecy order from
the relevant department or agency, the Office will set a time period
within which the application must be declassified, a secrecy order must
be obtained, or evidence of a good faith effort to obtain a secrecy from
the relevant department or agency must be presented in order to prevent
abandonment of the application.
Section 5.9(d), as proposed, would provide for instances in which,
after an effort to obtain a secrecy order, the national security
classified application has not been declassified and a secrecy order has
not been obtained. Section 5.9(d), as proposed, would specifically
provide that in each instance in which the national security classified
application has not been declassified and a secrecy order has not been
obtained, but the applicant has presented evidence of a good faith
effort to obtain a secrecy order, the Office will again set a time
period within which the application must be declassified, a secrecy
order pursuant to 5.2 must be obtained, or evidence of a good faith
effort to again obtain a secrecy order pursuant to 5.2 from the
relevant department or agency must be presented in order to prevent
abandonment of the application. This process will reiterate until the
application becomes abandoned, e.g., through a lack of a good faith
effort to obtain a secrecy order or failure to prosecute under 35 U.S.C.
133, the application is declassified, or a secrecy order is obtained.
Other Considerations
The proposed rule changes are in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
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 these proposed rule changes will not
have a significant economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal
impact of these proposed changes is to require that application papers
be filed in a format which permits their digital image and OCR scanning
into an electronic data base, and that claims for the benefit of the
filing date of prior foreign and domestic applications be submitted
promptly to permit publication of the application at 18 months from the
earliest filing date for which a benefit is sought.
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.
These proposed rule changes contain a collection of information
requirements subject to the Paperwork Reduction Act of 1980, 44 U.S.C.
3501 et seq. The initial patent application filing is currently approved
by the Office of Management and Budget under Control No. 0651-0032.
Public reporting burden for the collection of information for filing the
initial patent application is estimated to average 11 hours per
response, including the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
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 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 routines (optical character recognition, etc.)
to record and process information concerning applications. Public
reporting burden for these collections of information is estimated to
average:(1) 12 minutes per response for the Fee Transmittal form, (2) 12
minutes per response for the Utility Patent Application Transmittal
form, (3) 12 minutes per response for the Design Patent Application
Transmittal form, (4) 12 minutes per response for the Plant Patent
Application Transmittal form, (5) 12 minutes per response for the Plant
Color Coding Sheet, (6) 24 minutes per response for the Declaration
form, and (7) 24 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.
The assignment cover sheet is currently approved by the Office of
Management and Budget under Control No. 0651-0027. Public reporting
burden for the collection of information on the assignment cover sheet
is estimated to average 30 minutes per response, including the time for
reviewing instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing the collection
of information.
Send comments regarding this burden estimate or any other aspect of
this collection of information, including suggestions for reducing this
burden to the Office of Assistance Quality and Enhancement Division,
Patent and Trademark Office, Washington, D.C. 20231, and to the Office
of Information and Regulatory Affairs, Office of Management and Budget,
Washington, D.C. 20503 (ATTN: Paperwork Reduction Act Projects 0651-0027
and 0651-0032). 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 have
been submitted to the Office of Management and Budget for clearance
under the Paperwork Reduction Act. See 60 FR 35174 (July 6, 1995).
Written comments and recommendations for the proposed information
collection should be sent to Maya A. Bernstein, OMB Desk Officer, room
10236, New Executive Office Building, Washington, D.C. 20230.
Notice is hereby given that pursuant to the authority granted to the
Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent and
Trademark Office proposed to amend Title 37 of the Code of Federal
Regulations as set forth below.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
Businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents, Reporting
and record keeping requirements.
37 CFR Part 5
Classified information, foreign relations, inventions and patents.
For the reasons set forth in the preamble, 37 CFR Parts 1, 3 and 5
are proposed to be amended as follows, with removals indicated by
brackets ([]) and additions by arrows (><):
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.4 is proposed to be amended by revising paragraph (a)(1) to
read as follows:
1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the Office,
such as general inquiries, requests for publications supplied by the
Office, orders for printed copies of patents >, patent application
notices, technical contents publications< or trademark registrations,
orders for copies of records, transmission of assignments for recording,
and the like, and
* * * * *
3. Section 1.5 is proposed to be amended by revising paragraph (a) and
adding paragraphs (f) and (g) to read as follows:
1.5 Identification of application, patent, or registration.
(a) No correspondence relating to an application should be filed
prior to when notification of the application number is received from
the Patent and Trademark Office. When a letter directed to the Patent
and Trademark Office concerns a previously filed application for a
patent, >including a published application,< it must identify on the top
page in a conspicuous location, the application number (consisting of
the series code and the serial number; e.g., 07/123,456), or the serial
number and filing date assigned to that application by the Patent and
Trademark Office, or the international application number of the
international application. Any correspondence not containing such
identification will be returned to the sender where a return address is
available. The returned correspondence will be accompanied with a cover
letter which will indicate to the sender that if the returned
correspondence is resubmitted to the Patent and Trademark Office within
two weeks of the mail date on the cover letter, the original date of
receipt of the correspondence will be considered by the Patent and
Trademark Office as the date of receipt of the correspondence.
Applicants may use either the Certificate of Mailing or Transmission
procedure under 1.8 or the Express Mail procedure under 1.10 for
resubmissions of returned correspondence if they desire to have the
benefit of the date of deposit in the United States Postal Service. If
the returned correspondence is not resubmitted within the two-week
period, the date of receipt of the resubmission will be considered to be
the date of receipt of the correspondence. The two-week period to
resubmit the returned correspondence will not be extended. If for some
reason, returned correspondence is resubmitted with proper
identification later than two weeks after the return mailing by the
Patent and Trademark Office, the resubmitted correspondence will be
accepted but given its date of receipt. In addition to the application
number, all letters directed to the Patent and Trademark Office
concerning applications for patents should also state "PATENT
APPLICATION," the name of the applicant, the title of the invention, the
date of filing the same, and, if known, the group art unit or other unit
within the Patent and Trademark Office responsible for considering the
letter and the name of the examiner or other person to which it has been
assigned.
* * * * *
>(f) When a paper concerns a provisional application, it should identify
the application as such and include the application number.
(g) A paper relating to a patent application notice should identify
it as such and include the patent application notice number.<
4. Section 1.9 is proposed to be amended by revising paragraphs (a) and
(b) and adding a paragraph (h) to read as follows:
1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under 35 U.S.C. 111, or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under 35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
>(4)<[(b)] An international application as used in this chapter means
an international application for patent filed under the Patent
Cooperation Treaty prior to entering national processing at the
Designated Office stage.
>(b) A published application as used in this chapter means an
application for patent which has been published pursuant to 35 U.S.C.
122(b).<
* * * * *
>(h) National security classified as used in this chapter means
specifically authorized under criteria established by Act of Congress or
Executive order to be kept secret in the interest of national defense or
foreign policy and in fact properly classified pursuant to Act of
Congress or Executive order.<
5. Section 1.11 is proposed to be amended by revising paragraph (a) to
read as follows:
1.11 Files open to the public.
(a) [After a patent has been issued or a statutory invention
registration has been published, the] >The< specification, drawings, and
all papers relating to the case in the file of >an abandoned published
application, a< [the] patent >,< or >a< statutory invention registration
are open to inspection by the public >.< [, and copies may be obtained
upon paying the fee therefor.] >A copy of the specification, drawings,
and all papers relating to the case in the file of a published
application, a patent, or statutory invention registration may be
obtained upon the payment of the fee set forth in 1.19(b)(2).< See
2.27 for trademark files.
* * * * *
6. Section 1.12 is proposed to be amended by revising paragraphs (a)-(c)
to read as follows:
1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Patent and
Trademark Office for patents and trademarks. The assignment records,
relating to original or reissue patents, including digests and indexes,
for assignments recorded on or after May 1, 1957, >published
applications,< and assignment records relating to pending or abandoned
trademark applications and to trademark registrations, for assignments
recorded on or after January 1, 1955, are open to public inspection at
the Patent and Trademark Office, and copies of those assignment records
may be obtained upon request and payment of the fee set forth in 1.19
and 2.6 of this chapter.
(2) All records of assignments of patents recorded before May 1,
1957, and all records of trademark assignments recorded before January
1, 1955, are maintained by the National Archives and Records
Administration (NARA). The records are open to public inspection.
Certified and uncertified copies of those assignment records are
provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending
or abandoned application >which has not been published pursuant to 35
U.S.C. 122(b)< are not available to the public. Copies of any such
assignment records and information with respect thereto shall be
obtainable only upon written authority of the applicant or applicant's
assignee or attorney or agent or upon a showing that the person seeking
such information is a bona fide prospective or actual purchaser,
mortgagee, or licensee of such application, unless it shall be necessary
to the proper conduct of business before the Office or as provided by
these rules.
(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< [secrecy] under 1.14, or any information
with respect thereto, must
(1) Be in the form of a petition accompanied by the petition fee set
forth in 1.17(i), 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.
* * * * *
7. Section 1.13 is proposed to be revised to read as follows:
1.13 Copies and certified copies.
(a) Non-certified copies of patents >, patent application notices,
technical contents publications, file wrapper and contents of published
applications,< and trademark registrations and of any records, books,
papers, or drawings within the jurisdiction of the Patent and Trademark
Office and open to the public, will be furnished by the Patent and
Trademark Office to any person, and copies of other records or papers
will be furnished to persons entitled thereto, upon payment of the fee
therefor.
(b) Certified copies of the patents >, patent application notices,
technical contents publications, file wrapper and contents of published
applications,< and trademark registrations and of any records, books,
papers, or drawings within the jurisdiction of the Patent and Trademark
Office and open to the public or persons entitled thereto will be
authenticated by the seal of the Patent and Trademark Office and
certified by the Commissioner, or in his name attested by an officer of
the Patent and Trademark Office authorized by the Commissioner, upon
payment of the fee for the certified copy.
8. Section 1.14 is proposed to be amended by revising paragraphs (a)-(b)
and (e) to read as follows:
1.14 Patent applications preserved in >confidence< [secrecy].
(a) Except as provided in 1.11(b) >,< pending patent applications
>which have not been published pursuant to 35 U.S.C. 122(b)< are
preserved in >confidence.< [secrecy.] No information will be given by
the Office respecting the filing by any particular person of an
application for a patent, the pendency of any particular case before it,
or the subject matter of any particular application, nor will access be
given to or copies furnished of any pending application or papers
relating thereto, without written authority in that particular
application from the applicant or his assignee or attorney or agent of
record, unless the application has been identified by >application
number or< serial number >and filing date< in a published patent
document >, a U.S. published application,< or >a published international
application in which< the United States of America has been indicated as
a Designated State [in a published international application], in which
case status information such as whether it is pending, abandoned, or
patented may be supplied, >or unless the application claims the benefit
of the filing date of an application that has been referred to in a U.S.
published application or patent, or identified by application number or
serial number and filing date in a published patent document or a
published international application in which the United States of
America has been indicated as a Designated State, in which case the
application number, filing date, and status information such as whether
it is pending, abandoned, or patented may be supplied,< or unless it
shall be necessary to the proper conduct of business before the Office
or as provided by this part. Where an application has been patented, the
patent number and issue date may also be supplied.
(b) [Except as provided in 1.11(b), abandoned] >Abandoned<
applications >which have not been published pursuant to 35 U.S.C.
122(b)< are likewise not open to public inspection, except >as provided
in 1.11(b) and as set forth below.< [that if] >If< an application
referred to in a U.S. >published application or< patent, >application
open to public inspection pursuant to this section, application which
claims the benefit of the filing date of an application open to public
inspection pursuant to this section,< or in an application in which the
applicant has filed an authorization to open the complete application to
the public, is abandoned and is available, it may be inspected or copies
obtained by any person on written request, without notice to the
applicant. Complete applications ( 1.51(a)) which are abandoned >and
have not been published pursuant to 35 U.S.C. 122(b)< may be destroyed
after 20 years from their filing date, except those to which particular
attention has been called and which have been marked for preservation.
Abandoned applications will not be returned.
* * * * *
(e) Any request by a member of the public seeking access to, or
copies of, any pending or abandoned application preserved in
>confidence< [secrecy] pursuant to paragraphs (a) and (b) of this
section, or any papers relating thereto, must
(1) Be in the form of a petition and be accompanied by the petition
fee set forth in 1.17(i), 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.
9. Section 1.16 is proposed to be amended by revising paragraphs (a) and
(g)-(h) to read as follows:
1.16 National application filing fees
(a) Basic fee for filing each application for an original patent,
except provisional, design or plant cases:
By a small entity ( 1.9(f)) >$390.00< [$365.00]
By other than a small entity >780.00< [730.00]
* * * * *
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity ( 1.9(f)) >270.00< [245.00]
By other than a small entity >540.00< [490.00]
(h) Basic fee for filing each reissue application:
By a small entity ( 1.9(f)) >390.00< [365.00]
By other than a small entity >780.00< [730.00]
* * * * *
10. Section 1.17 is proposed to be amended by revising paragraph (i) and
adding new paragraphs (t) and (u) to read as follows:
1.17 Patent application processing fees
* * * * *
(i) For filing a petition to the Commissioner under a section of this
part listed below which refers to this
paragraph 130.00
1.12 - for access to an assignment record.
1.14 - for access to an application.
1.53 - to accord a filing date.
1.55 - for entry of late priority papers.
1.60 - to accord a filing date.
1.62 - to accord a filing date.
1.97(d) - to consider an information disclosure statement.
1.102 - to make application special
1.103 - to suspend action in application.
1.177 - for divisional reissues to issue separately.
1.312 - for amendment after payment of issue fee.
1.313 - to withdraw an application from issue.
> 1.306(d) - for early publication of an application.
1.306(e) - to defer publication of an application.<
1.314 - to defer issuance of a patent.
1.666(b) - for access to interference settlement agreement.
> 1.701(f) - for patent term extension based upon adminis
trative delay not specifically provided for.<
3.81 - for patent to issue to assignee, assignment sub
mitted after payment of the issue fee.
* * * * *
>(t) For filing a protest under 1.291 in an application after
the date the application was published 220.00
(u) For the acceptance of a late claim for priority under 35 U.S.C.
119(a)-(d) or for acceptance of a late claim for the benefit of a prior
application under 35 U.S.C. 119(e), 120 or 121 filed during the pendency
of the application 1500.00<
11. Section 1.18 is proposed to be amended by revising paragraphs (a)
and (c) to read as follows:
1.18 Patent Issue Fees
(a) Issue fee for issuing each original or reissue patent, except a
design or plant patent:
By a small entity ( 1.9(f)) >$640.00< [$605.00]
By other than a small entity >1280.00< [1210.00]
* * * * *
(c) Issue fee for issuing a plant patent:
By a small entity ( 1.9(f)) >330.00< [305.00]
By other than a small entity >660.00< [610.00]
12. Section 1.19 is proposed to be amended by revising paragraphs
(a)-(d) to read as follows:
1.19 Document supply fees.
The Patent and Trademark Office will supply copies of the following
documents upon payment of the fees indicated:
(a) Uncertified copies of patents >, patent application notices, and
technical contents publications<:
(1) Printed copy of a >patent application notice,< patent, including
a design patent, statutory invention registration, or defensive
publication document, except plant or statutory invention registration
containing color drawing:
(i) Regular service $3.00
(ii) Overnight delivery to PTO Box or overnight fax 6.00
(iii) Expedited service for copy ordered by expedited mail or fax
delivery service and delivered to the customer within two workdays
25.00
(2) Printed copy of a plant patent in color 12.00
(3) Copy of a utility patent or statutory invention registration
containing color drawing (see 1.84(a)(2)) 24.00
>(4) Copy of a technical contents publication 9.00<
(b) Certified and uncertified copies of Office documents:
(1) Certified or uncertified copy of patent application as filed:
(i) Regular service >15.00< [12.00]
(ii) Expedited local service >30.00< [24.00]
(2) Certified or uncertified copy of >published application or<
patent-related file wrapper and contents 150.00
(3) Certified or uncertified copy of Office records, per document >,<
except >those contained in a pending application and< as otherwise
provided in this section 25.00
>(4) Certified or uncertified copy of documents contained in a
pending application:
(i) First document contained in a pending
application 75.00
(ii) For each commonly requested additional document contained in
such pending application 25.00
(5)< [(4)] For assignment records, abstract of title and
certification, per >published application or< patent 25.00
(c) Library service (35 U.S.C. 13): For providing to libraries copies
of all patents issued annually >and technical contents publications
published annually<, per annum 50.00
(d) For list of all United States >published applications,< patents
and statutory invention registrations in a
subclass 3.00
* * * * *
13. Section 1.20 is proposed to be amended by revising paragraphs
(e)-(g) to read as follows:
1.20 Post-issuance fees
* * * * *
(e) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond four years; the fee is due by three years and six
months after the original grant
By small entity ( 1.9(f)) >510.00< [480.00]
By other than a small entity >1020.00< [960.00]
(f) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond eight years; the fee is due by seven years and six
months after the original grant
By a small entity ( 1.9(f)) >1010.00< [965.00]
By other than a small entity >2020.00< [1930.00]
(g) For maintaining an original or reissue patent, except a design or
plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years; the fee is due by eleven years and
six months after the original grant
By a small entity ( 1.9(f)) >1510.00< [1450.00]
By other than a small entity >3020.00< [2900.00]
* * * * *
14. Section 1.24 is proposed to be revised to read as follows:
1.24 Coupons.
Coupons in denominations of three dollars, for the purchase of
patents, >patent application notices and technical contents
publications,< designs, defensive publications, statutory invention
registrations, and trademark registrations are sold by the Patent and
Trademark Office for the convenience of the general public; these
coupons may not be used for any other purpose. The three-dollar coupons
are sold individually and in books of 50 for $150.00. These coupons are
good until used; they may be transferred but cannot be redeemed.
15. Section 1.51 is proposed to be amended by revising paragraph (a)(1)
to read as follows:
1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of
Patents and Trademarks.
(1) A complete application filed under 1.53(b)(1) comprises:
(i) A specification, including >an abstract and< a claim or claims,
see 1.71 to 1.77;
(ii) An oath or declaration, see 1.63 and 1.68;
(iii) Drawings, when necessary, see 1.81 to 1.85; and
(iv) The prescribed filing fee, see 1.16.
* * * * *
16. Section 1.52 is proposed to be amended by revising paragraphs
(a)-(b) and (d) 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,] typed [, or printed] in
permanent >dark< ink >in portrait orientation on flexible, strong,
smooth, non- shiny, durable and white paper.< [or its equivalent in
quality.] All of the application papers must be presented in a form
having sufficient clarity and contrast between the paper and the
[writing,] typing [, or printing] 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 printed] papers of suitable quality >will<
[may] be required. >See 1.125 for filing substitute typewritten
papers constituting a substitute specification.<
(b) >Except for drawings, the< [The] application papers
(specification, including claims, abstract, oath or declaration, and
papers as provided for in 1.42, 1.43, 1.47, etc.) and also papers
subsequently filed, must be plainly >typed< [written] on but one side of
the paper >, with the abstract and claims set forth on a separate sheet.
See 1.72(b) and 1.75(h)<. The [size of all] 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).< [should be 8 to 8 1/2 by 10 1/2
to 13 inches (20.3 to 21.6 cm. by 26.6 to 33.0 cm.).] >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 provided in the sheets.< [A margin of at least
approximately one inch (2.5 cm.) must be reserved on the left-hand of
each page. The top of each page of the application, including claims,
must have a margin of at least approximately 3/4 inch (2 cm.).] The
lines must [not be crowded too closely together; typewritten lines
should] be 1 1/2 or double spaced. The pages of the application
including claims and abstract >must< [should] be numbered consecutively,
starting with 1, the numbers being centrally located above or
preferably, below, the text. >See 1.84 for drawings.<
* * * * *
(d) An application may be filed in a language other than English. A
verified English translation of the non-English-language application and
the fee set forth in 1.17(k) are required to be filed with the
application or within such time >period< as may be set by the Office.
>The period for filing the verified English translation cannot be
extended pursuant to 1.136(a).<
17. Section 1.53 is proposed to be amended by revising paragraph (d)(1)
to read as follows:
1.53 Serial Number, filing date, and completion of application.
* * * * *
(d)(1) If an application which has been accorded a filing date
pursuant to paragraph (b)(1) of this section does not include the
appropriate filing fee >,<[or]an oath or declaration by the applicant,
>an abstract on a separate sheet, claims on a separate sheet, papers
typed on but one side of the paper, or application papers or sheets of
drawings of sufficient clarity, contrast, and quality, and in the proper
size and format for electronic reproduction,< applicant will be so
notified, if a correspondence address has been provided >. The applicant
will be< [and] given a period of time within which to >correct the
deficiencies< [file the fee, oath or declaration] and to pay the
surcharge as set forth in 1.16(e) >if the application did not include
the basic filing fee or the oath or declaration by the applicant< in
order to prevent abandonment of the application. A copy of the "Notice
to File Missing Parts" form mailed to applicant should accompany any
response thereto submitted to the Office. If the required filing fee is
not timely paid, or if the processing and retention fee set forth in
1.21(l) is not paid within one year of the date of mailing of the
notification required by this paragraph, the application will be
disposed of. No copies will be provided or certified by the Office of an
application which has been disposed of or in which neither the required
basic filing fee nor the processing and retention fee has been paid. The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section. If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, oath or
declaration >, abstract or claims on a separate sheet, papers typed on
but one side of the paper, papers and sheets of drawings of sufficient
clarity, contrast, and quality and in the proper size and format for
electronic reproduction,< and to pay the surcharge as set forth in
1.16(e) >if the application did not include the basic filing fee or the
oath or declaration by the applicant< in order to prevent abandonment of
the application; or, if no basic filing fee has been paid, one year from
the filing date to pay the processing and retention fee set forth in
1.21(l) to prevent disposal of the application. >The period for filing
an abstract and claims on a separate sheet, and a substitute
specification and sheets of drawings of sufficient clarity, contrast,
and quality and in the proper size and format for electronic
reproduction cannot be extended pursuant to 1.136(a).<
* * * * *
18. Section 1.54 is proposed to be 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 [serial] number >,<
[and] filing date >, and projected publication date< by a filing receipt.
19. Section 1.55 is proposed to be amended by revising paragraph (a) and
adding paragraphs (c)-(d) to read as follows:
1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of a prior foreign application under the
conditions specified in 35 U.S.C. 119 (a)-(d) and 172. The claim to
priority >under 35 U.S.C. 172< need be in no special form and may be
made by the attorney or agent if the foreign application is referred to
in the oath or declaration as required by 1.63. >The claim to
priority under 35 U.S.C. 119(a)-(d) must be presented within two months
of filing or fourteen months from the filing date of the prior foreign
application, whichever is later, must identify the prior foreign
application by specifying its application number, country, and the day,
month and year of its filing, and may be made by the attorney or agent
if the foreign application is referred to in the oath or declaration as
required by 1.63.< The [claim for priority and the] certified copy of
the foreign application specified in 35 U.S.C. 119(b) must be filed in
the case of an interference ( 1.630), when necessary to overcome the
date of a reference relied upon by the examiner, when specifically
required by the examiner, and in all other cases, before the patent is
granted. If the [claim for priority or the] certified copy of the
foreign application is filed after the date the issue fee is paid, it
must be accompanied by a petition requesting entry and by the fee set
forth in 1.17(i). If the certified copy filed is not in the English
language, a translation need not be filed except in the case of
interference; or when necessary to overcome the date of a reference
relied upon by the examiner; or when specifically required by the
examiner, in which event an English language translation must be filed
together with a statement that the translation of the certified copy is
accurate. The statement must be a verified statement if made by a person
not registered to practice before the Patent and Trademark Office.
* * * * *
>(c) If a claim to priority under 35 U.S.C. 119(a)-(d) is presented
after the time period provided by paragraph (a) of this section, the
claim may be accepted if the claim identifying the prior foreign
application by specifying its application number, country, and the day,
month and year of its filing is filed during the pendency of the
application and the delay in stating the claim was unintentional. A
petition to accept a delayed claim to priority under 35 U.S.C.
119(a)-(d) must be accompanied by:
(1) The surcharge set forth in 1.17(u); and,
(2) A statement that the delay was unintentional. The statement must
be a verified statement if made by a person not registered to practice
before the Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the delay was
unintentional.
(d) The time periods set forth in this section cannot be extended.<
20. Section 1.58 is proposed to be amended by removing and reserving
paragraph (b) and revising paragraph (c) to read as follows:
1.58 Chemical and mathematical formulas and tables.
* * * * *
(b) >[Reserved]< [All tables and chemical and mathematical formulas
in the specification, including claims, and amendments thereto, must be
on paper which is flexible, strong, white, smooth, non-shiny, durable in
order to permit use as camera copy when printing any patent which may
issue. A good grade of bond paper is acceptable; watermarks should not
be prominent. India ink or its equivalent, or solid black typewriter,
should be used to secure perfectly black solid lines.]
(c) To facilitate camera copying when printing, the width of formulas
and tables as presented should be limited normally to >12.7 cm. (5
inches)< [5 inches (12.7 cm.)] so that it may appear as a single column
in the printed patent. [If 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.] Typewritten characters used in
such formulas and tables must be from a block (nonscript) type font or
lettering style having capital letters which are at least >2.1 mm. (0.08
inch)< [0.08 inch (2.1 mm.)] high (e.g., elite type). [Hand lettering
must be neat, clean, and have a minimum character height of 0.08 inch
(2.1 mm.)]. A space at least >.64 cm. (1/4 inch)< [1/4 inch (6.4 mm.)]
high should be provided between complex formulas and tables and the
text. Tables should have the lines and columns of data closely spaced to
conserve space, consistent with high degree of legibility.
21. Section 1.60 is proposed to be amended by revising paragraph (d) to
read as follows:
1.60 Continuation or divisional application for invention disclosed
in a prior application.
* * * * *
(d) If an application filed pursuant to paragraph (b) of this section
is otherwise complete, but does not include the appropriate filing fee,
a true copy of the oath or declaration from the prior complete
application, showing the signature or an indication it was signed, >or
the prior application did not include an abstract and claims on a
separate sheet, and application papers typed on but one side of the
paper with application papers or sheets of drawings of sufficient
clarity, contrast, or quality in the proper size and format for
electronic reproduction,< a filing date will be granted and applicant
will be so notified and given a period of time within which to file the
fee, or the true copy of the oath or declaration >, an abstract and
claims on a separate sheet, substitute specification in compliance with
1.125 with papers typed on but one side of the paper and sheets of
drawings, each of the substitute specification and sheets of drawings of
sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction,< and to pay the surcharge as set
forth in 1.16(e) >if the application did not include the basic filing
fee or the copy of the oath or declaration from the prior application<
in order to prevent abandonment of the application. The notification
pursuant to this paragraph may be made simultaneously with any
notification pursuant to paragraph (c) of this section. >The period for
filing an abstract and claims on a separate sheet and a substitute
specification and sheets of drawings of sufficient clarity, contrast,
and quality for electronic reproduction cannot be extended pursuant to
1.136(a).<
22. Section 1.62 is proposed to be amended by revising paragraphs
(d)-(f) to read as follows:
1.62 File wrapper continuing procedure.
* * * * *
(d) If an application which has been accorded a filing date pursuant
to paragraph (a) of this section does not include the appropriate basic
filing fee pursuant to paragraph (b) of this section, or an oath or
declaration by the applicant in the case of a continuation-in-part
application pursuant to paragraph (c) of this section, >or any
substitute specification and drawings pursuant to subparagraph (e)(2) of
this section,< applicant will be so notified and given a period of time
within which to file the fee, oath[,]or declaration >, substitute
specification, and drawings< and to pay the surcharge as set forth in
1.16(e) >if the application did not include the basic filing fee or oath
or declaration< in order to prevent abandonment of the application. The
notification pursuant to this paragraph may be made simultaneously with
any notification of a defect pursuant to paragraph (a) of this section.
>The period for filing a substitute specification cannot be extended
pursuant to 1.136(a).<
(e)>(1)< an application filed under this section will utilize the
file wrapper and contents of the prior application to constitute the new
continuation, continuation-in-part, or divisional application but will
be assigned a new application [serial] number. Changes to the prior
application must be made in the form of an amendment to the prior
application as it exists at the time of filing the application under
this section.
>(2)< No copy of the prior [application or new] specification >or
drawings< is required >, unless the application is a
continuation-in-part application containing any additional disclosure,
in which case a substitute specification in compliance with 1.125 and
drawings are required. Any new specification filed will not be
considered part of the original application papers, but will be treated
as a substitute specification in accordance with 1.125<. [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< [secrecy] by the applicant under 35
U.S.C. 122>(a)< to the extent that any member of the public who is
entitled under the provisions of > < [37 CFR] 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.
* * * * *
23. Section 1.72 is proposed to be 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 be set forth on a separate sheet, preferably >prior to the first
page of the specification< [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.
24. Section 1.75 is proposed to be 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< [All] dependent claims should be grouped together with the
claim or claims to which they refer to the extent possible.
>(h) The claim or claims must be set forth 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.<
25. Section 1.77 is proposed to be 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:
[(a)] >(1) Utility Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Abstract of the disclosure.
(4)< Title of the invention; or an introductory portion stating the
name, citizenship, and residence of the applicant, and the title of the
invention may be used.
>(5)<[(c)(1)] Cross-reference to related applications [, if any].
>(6)< [(2)] >Statement regarding federally sponsored research or
development.
(7)< Reference to a "Microfiche appendix" [if any].
(See 1.96 >(c)< [(b)]). The total number of microfiche and total
number of frames should be specified.
>(8)< [(d)] >Background of the invention
(9)< brief summary of the invention.
>(10)< [(e)] Brief description of the several views of the drawing [,
if there are drawings].
>(11)< [(f)] Detailed description.
>(12)< [(g)] Claim or claims.
>(13)< [(h) Abstract of the disclosure.
(i) Signed oath or declaration.
(j)] Drawings.
>(14) Executed oath or declaration.
(15) Sequence Listing (See 1.821 et seq.).
(b) The elements set forth in subparagraphs (a)(3)-(a)(6),
(a)(8)-(a)(12) and (a)(15) should appear in upper case, without
underlining or bold type, as section headings. If no text follows the
section heading, with the phrase "Not Applicable" should follow the
section heading.<
26. Section 1.78 is proposed to be amended by revising paragraphs (a)
and (c)-(d) to read as follows:
1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a)(1) A nonprovisional application may claim an invention disclosed
in one or more prior filed copending nonprovisional applications or
international applications designating the United States of America. In
order for a nonprovisional application to claim the benefit of a prior
filed copending nonprovisional application or international application
designating the United States of America, each prior application must
name as an inventor at least one inventor named in the later filed
nonprovisional application and disclose the named inventor's invention
claimed in at least one claim of the later filed nonprovisional
application in the manner provided by the first paragraph of 35 U.S.C.
112. In addition, each prior application must be:
(i) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in 1.53(b)(1), 1.60
or 1.62 and include the basic filing fee set forth in 1.16; or
(iii) entitled to a filing date as set forth in 1.53(b)(1) and
have paid therein the processing and retention fee set forth in
1.21(l) within the time period set forth in 1.53(d)(1).
(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 >, within two
months of filing or within fourteen months of the filing date of the
prior application, whichever is later,< 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(b)).
(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed copending
provisional applications. [Since a provisional application can be
pending for no more than twelve months, the last day of pendency may
occur on a Saturday, Sunday, or Federal holiday within the District of
Columbia which for copendency would require the nonprovisional
application to be filed prior to the Saturday, Sunday, or Federal
holiday.] In order for a nonprovisional application to claim the benefit
of one or more prior filed copending provisional applications, each
prior provisional application must name as an inventor at least one
inventor named in the later filed nonprovisional application and
disclose the named inventor's invention claimed in at least one claim of
the later filed nonprovisional application in the manner provided by the
first paragraph of 35 U.S.C. 112. In addition, each prior provisional
application must be:
(i) complete as set forth in 1.51(a)(2); or
(ii) entitled to a filing date as set forth in 1.53(b)(2) and
include the basic filing fee set forth in 1.16(k).
(4) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must >, within two
months of filing or within fourteen months of the filing date of the
prior application, whichever is later,< contain or be amended to contain
in the first sentence of the specification following the title a
reference to each such prior provisional application, identifying it as
a provisional application, and including the provisional application
number (consisting of series code and serial number).
>(5) If a claim to the benefit of any prior filed copending
nonprovisional application or international application designating the
United States of America is presented in a nonprovisional application
after the time period provided by subparagraph (a)(2) of this section,
or if a claim to the benefit of any prior filed copending provisional
application is presented in a nonprovisional application other than for
a design patent after the time period provided by subparagraph (a)(4) of
this section, the claim may be accepted in the application if the claim
identifying the prior application by application number or international
application number and international filing date is filed during the
pendency of the application and the delay in stating the claim was
unintentional. A petition to accept a delayed claim to the benefit of a
prior filed copending application must be accompanied by:
(i) The surcharge set forth in 1.17(u); and,
(ii) A statement that the delay was unintentional. The statement must
be a verified statement if made by a person not registered to practice
before the Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the delay was
unintentional.
(6) The time periods set forth in this paragraph cannot be extended.<
* * * * *
(c) Where >an< [two or more] application[s,]>or a patent under
reexamination< [or an application] and >an application or< a patent
naming different inventors >are< [and] 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. In
addition to making said statement, the assignee may also explain why an
interference should or should not be declared.
(d) 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<. >A non-statutory< [An obviousness-type] double
patenting rejection may be obviated by filing a terminal disclaimer in
accordance with 1.321(b).
27. Section 1.84 is proposed to be amended by revising paragraphs (c),
(f)-(g), (j) and (x) to read as follows:
1.84 Standards for drawings.
* * * * *
(e) 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) 21.6 cm. by 35.6 cm. (8 1/2 by 14 inches),
(2) 21.6 cm. by 33.1 cm. (8 1/2 by 13 inches),
(3) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), or
(4)] >(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.< [The following
margins are required:
(1) On 21.6 cm. by 35.6 cm. (8 1/2 by 14 inches) drawing sheets, each
sheet must include a top margin of 5.1 cm. (2 inches), and bottom and
side margins of .64 cm. (1/4 inch) from the edges, thereby leaving a
sight no greater than 20.3 cm. by 29.8 cm. (8 by 11 3/4 inches).
(2) On 21.6 cm. by 33.1 cm. (8 1/2 by 13 inches) drawing sheets, each
sheet must include a top margin of 2.5 cm. (1 inch) and bottom and side
margins of .64 cm. (1/4 inch) from the edges, thereby leaving a sight no
greater than 20.3 cm. by 29.8 cm. (8 by 11 3/4 inches).
(3) On 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets, each
sheet must include a top margin of 2.5 cm. (1 inch) and bottom and side
margins of .64 cm. (1/4 inch) from the edges, thereby leaving a sight no
greater than 20.3 cm. by 24.8 cm. (8 by 9 3/4 inches).
(4) On 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, each]
>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<.
* * * * *
(j) View for Official Gazette. One of the views should be suitable for
publication in the Official Gazette >, the patent application notice,
and the Gazette of Patent Application Notices< as the illustration of
the invention.
* * * * *
(x) Holes. >No holes should be provided in the drawing sheets.< [The
drawing sheets may be provided with two holes in the top margin. The
holes should be equally spaced from the respective side edges, and their
center lines should be spaced 7.0 cm. (2 3/4 inches) apart.]
(See 1.152 for design drawings, 1.165 for plant drawings, and
1.174 for reissue drawings.)
28. Section 1.85 is proposed to be amended by revising paragraph (a) to
read as follows:
1.85 Corrections to drawings.
(a) The requirements of 1.84 relating to drawings will be strictly
enforced. A drawing not executed in conformity thereto, if suitable for
>electronic< reproduction >by digital imaging< , may be admitted for
examination but in such case a new drawing must be furnished.
* * * * *
29. Section 1.96 is proposed to be revised to read as follows:
1.96 Submission of computer program listings.
>(a)< 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< [these rules] 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.< [in the following
forms:]
>(b)< [(a)] Material which will be printed in the patent. If the
computer program listing is contained on 10 printout pages or less, it
must be submitted either as drawings or as part of the specification.
(1) Drawings. The listing may 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) The listing may be submitted as part of the
specification in accordance with the provisions of 1.52, at the end
of the description but before the claims.
(ii) >Any< [The] 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. Such 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. [When 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.] Any amendments must be made by way of submission of
a substitute sheet >.< [if the copy is to be used for camera ready copy.]
>(c)< [(b)] As an appendix which will not be printed. If a computer
program listing printout is 11 or more pages long, applicants >must<
[may] submit such listing in the form of microfiche, referred to in the
specification (see 1.77 >(a)(7)< [(c)(2)]). 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<
[should] be made at the beginning of the specification at the location
indicated in 1.77 >(a)(7)< [(c)(2)]. Any amendments thereto must be
made by way of revised microfiche. [All computer program listings
submitted on paper will be printed as part of the patent.]
(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 below,
computer-generated< [Computer-generated] information submitted as >a
"microfiche appendix"< [an appendix] to an application [for patent]
shall be in [the form of microfiche in] accordance with the standards
set forth in the following American National Standards Institute (ANSI)
or National Micrographics Association (NMA) standards (Note: As new
editions of these standards are published, the latest shall apply):
ANSI PH 1.28-1976-Specifications for Photographic Film
for Archival records, Silver-Gelatin Type, on Cellulose Ester
Base.
ANSI PH 1.41-1976 Specifications for Photographic Film
for Archival Records, Silver-Gelatin Type, on Polyester
Base.
NMA-MSI (1971) Quality Standards for Computer Output
Microfilm.
ANSI/NMA MS2 (1978) Format and Coding Standards for
Computer Output Microfilm.
NMA MS5 (ANSI PH 5.9-1975) Microfiche of Documents.
ANSI PH 2.19 (1959)-Diffuse Transmission Density.
[except as modified or clarified below:]
(i) [Either] Computer-Output-Microfilm (COM) output [or copies of
photographed paper copy] may be submitted >in accordance with either< [.
In the former case,] NMA >standard< [standards] MS1 >or< [and] MS2 >.<
[apply; in the latter case, standard MS5 applies.]
(ii) Film submitted shall be first generation (camera film) negative
appearing microfiche (with emulsion on the back side of the film when
viewed with the images right reading).
(iii) 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.
(iv) Film submitted shall have a thickness of at least >0.13 mm (.005
inches)< [.005 inches (0.13 mm)] and not more than >0.23 mm (.009
inches)< [.009 inches (0.23 mm)] for either cellulose acetate base or
polyester base type.
(v) Both microfiche formats A1 (98 frames, 14 columns x 7 rows) and
A3 (63 frames, 9 columns x 7 rows) which are described in NMA standard
MS2 (A1 is also described in MS5) are acceptable for use in preparation
of microfiche submitted.
(vi) At least the left-most 1/3 (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
>application< [serial] 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 in-formation for the microfiche, such as 1 of 4, 2 of 4, etc.
(vii) Additional requirements which apply specifically to microfiche
of filmed paper copy:
(A) The first frame of each microfiche submitted shall contain a
standard test target which contains five NBS Micro-copy Resolution Test
Charts (No.1010A), one in the center and one in each corner. See
illustration on page 2 of NMA Recommended Practice MS104, Inspection and
Quality Control of First Generation Silver Halide Microfilm. See also
paragraph 7 of NMA-MS5.
(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) so that reproduction copies
may be expected to comply with provisions of paragraph 7.1.4 of NMA
Standard MS5.
(F) Background density of negative appearing camera master microfiche
of filmed paper documents shall be within the range of 0.9 to 1.2 and
line density should be no greater than 0.08. The density shall be visual
diffuse density as measured using the method described in ANSI Standard
PH 2.19.
(G) An index, when included, should appear in the last frame (lower
right hand corner when data is right-reading) of each microfiche. See
NMA-MS5, paragraph 6.6.
(viii) Microfiche generated by Computer Output Microfilm (COM).
(A) Background density of negative-appearing COM-generated camera
master microfiche shall be within the range of 1.5 to 2.0 and line
density should be no greater than 0.2. The density shall be visual
diffuse density as described in ANSI PH2.19.
(B) The first frame of each microfiche submitted should contain a
resolution test frame in conformance with NMA standard MS1.
(C) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(D) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(E) 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.
(F) An index, when included, should appear on the last frame (lower
right hand corner when data is right reading) of each microfiche.
(G) Amendment of microfiche must be made by way of replacement
microfiche.
30. Section 1.97 is proposed to be amended by revising paragraphs
(a)-(d) to read as follows:
1.97 Filing of an information disclosure statement.
(a) In order >for an applicant for patent or for reissue of a patent, or
an owner of a patent under reexamination< 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.
(b) An information disclosure statement shall be considered by the
Office if filed >by the applicant or patent owner<:
(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 or patent owner< after the period
specified in paragraph (b) of this section, but 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,
provided the statement is accompanied by either a certification as
specified in paragraph >(e)< [(3)] of this section or the fee set forth
in 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed >by the applicant or patent owner< after the mailing
date of either:
(1) A final action under 1.113 or
(2) A notice of allowance under 1.311, whichever occurs first, but
before payment of the issue fee, provided the statement is accompanied
by:
(i) A certification as specified in paragraph (e) of this section,
(ii) A petition requesting consideration of the information
disclosure statement, and
(iii) The petition fee set forth in 1.17(i).
* * * * *
31. Section 1.98 is proposed to be amended by revising paragraphs
(a)-(b) to read as follows:
1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under 1.97 shall
include:
(1) list of all patents, publications or other information submitted for
consideration by the Office;
(2) A legible copy of:
(i) Each U.S. >patent application notice, technical contents publication
and U.S.< and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
and
(iii) All other information or that portion which caused it to be
listed, except that no copy of >an unpublished<[a]U.S. patent
application need be included; and
(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in 1.56(c) most knowledgeable
about the content of the information, of each patent, publication, or
other information listed that is not in the English language. The
concise explanation may be either separate from the specification or
incorporated therein.
(b) Each U.S. patent listed in an information disclosure statement
shall be identified by patentee, patent number and issue date. >Each
U.S. patent application notice or technical contents publication listed
in an information disclosure statement shall be identified by applicant,
patent application notice number or technical contents publication
number and publication date.< Each foreign patent or published foreign
patent application shall be identified by the country or patent office
which issued the patent or published the application, an appropriate
document number, and the publication date indicated on the patent or
published application. Each publication shall be identified by author
(if any), title, relevant pages of the publication, date, and place of
publication.
* * * * *
32. Section 1.107 is proposed to be 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 [, and the classes of inventions]
must be stated. >If domestic published applications are cited by the
examiner, their technical contents publication number, publication date,
and the names of the applicants 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.
* * * * *
33. Section 1.108 is proposed to be revised to read as follows:
1.108 Abandoned applications not cited.
Abandoned applications as such will not be cited as references >,<
except those which >are published applications or< have been opened to
inspection by the public following a defensive publication.
34. Section 1.131 is proposed to be 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 >or pending or patented published
application< to another 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 >, an abandoned U.S. published application,< 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 >, published application< 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 >U.S. published application or
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 >, published
application< 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 >, published application< or
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.
>(3) Notwithstanding the provisions of paragraph (a)(1), a showing
may be made under this section where the inventions defined by a claim
in an application or a patent under reexamination and by a claim in U.S.
patent or pending or patented published application are not identical as
set forth in 35 U.S.C. 102, and where the inventions are owned by the
same party, unless the date of such patent or published application is
more than one year prior to the date on which the inventor's or patent
owner's application was filed in this country.<
* * * * *
35. Section 1.132 is proposed to be 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 [domestic] >U.S.< patent >or pending U.S.
published application< which substantially shows or describes but does
not claim the invention, or on reference to a foreign patent, >an
abandoned U.S. published application,< or to a printed publication, or
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 or
lacking in utility, or frivolous or injurious to public health or
morals, affidavits or declarations traversing these references or
objections may be received.
36. Section 1.136 is proposed to be amended by revising paragraph (a) to
read as follows:
1.136 Filing of timely responses with petition and fee for extension
of time and extensions of time for cause.
(a)(1) If an applicant is required to respond within a nonstatutory
or shortened statutory time period, applicant may respond up to four
months after the time period set if a petition for an extension of time
and the fee set in 1.17 are filed prior to or with the response,
unless:
(i) Applicant is notified otherwise in an Office action,
(ii) >The response is to a requirement for an English translation, an
abstract or claims on a separate sheet, or substitute specification or
sheets of drawings of sufficient clarity, contrast, and quality and in
the proper size and format for electronic reproduction submitted
pursuant to 1.52(d), 1.53(d), 1.60(d), 1.62(d), 1.494(c) or
1.495(c), or an oath or declaration submitted pursuant to 1.494(c)
or 1.495(c),
(iii)< The response is a reply brief submitted pursuant to
1.193(b),
>(iv)< [(iii)] The response is a request for an oral hearing
submitted pursuant to 1.194(b),
>(v)< [(iv)] The response is to a decision by the Board of Patent
Appeals and Interferences pursuant to 1.196, 1.197 or 1.304, or
>(vi)< [(v)] The application is involved in an interference declared
pursuant to 1.611.
(2) The date on which the response, the petition, and the fee have
been filed is the date of the response and also the date for purposes of
determining the period of extension and the corresponding amount of the
fee. The expiration of the time period is determined by the amount of
the fee paid. In no case may an applicant respond later than the maximum
time period set by statute, or be granted an extension of time under
paragraph (b) of this section when the provisions of this paragraph are
available. See 1.136(b) for extensions of time relating to >the
filing of an English translation pursuant to 1.52(d), 1.494(c) or
1.495(c), the filing of an abstract or claims on a separate sheet,
substitute specification or sheets of drawings of sufficient clarity,
contrast, and quality and in the proper size and format for electronic
reproduction pursuant to 1.53(d), 1.60(d), 1.62(d), 1.494(c), or
1.495(c), the filing of an oath or declaration pursuant to 1.494(c)
or 1.495(c), or< proceedings pursuant to 1.193(b), 1.194, 1.196 or
1.197. See 1.304 for extension of time to appeal to the U.S. Court of
Appeals for the Federal Circuit or to commence a civil action. See
1.550(c) for extension of time in reexamination proceedings and 1.645
for extension of time in interference proceedings.
37. Section 1.138 is proposed to be revised to read as follows:
1.138 Express abandonment.
An application may be expressly abandoned by filing in the Patent and
Trademark Office a written declaration of abandonment signed by the
applicant and the assignee of record, if any, and identifying the
application. An application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or agent of
record. A registered attorney or agent acting under the provision of
1.34(a), or of record, may also expressly abandon a prior application as
of the filing date granted to a continuing application when filing such
a continuing application. Express abandonment of the application may not
be recognized by the Office unless it is actually received by
appropriate officials in time to act thereon before the date of issue
>or publication. An applicant seeking to abandon an application to avoid
publication of the application must submit a proper letter of express
abandonment more than two months prior to the projected date of
publication to allow sufficient time to permit the appropriate officials
to recognize the abandonment and remove the application from the
publication process, and unless an applicant receives written
acknowledgement of the letter of express abandonment prior to the
projected date of publication, applicant should expect that the
application will be published in regular course<.
38. Section 1.154 is proposed to be 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< [The following order of arrangement
should be observed in framing design specifications]:
>(1) Design Application Transmittal Form.
(2) Fee Transmittal Form.
(3)< [(a)] 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)< [(b)] Description of the figure or figures of the
drawing.
>(7)< [(c)] Description [, if any].
>(8)< [(d)] Claim.
>(9) Drawings or photographs
(10)< [(e)] Executed oath or declaration (See 1.153(b)).
39. Section 1.163 is proposed to be 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) Abstract of the disclosure.
(4) Title of the invention.
(5) Cross-reference to related applications.
(6) Statement regarding federally sponsored research or
development.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the drawing.
(10) Detailed Botanical Description.
(11) Claim.
(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 recognized 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.<
40. Section 1.291 is proposed to be amended by revising paragraphs
(a)-(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 [timely] submitted >:
(i) prior to the date the application was published or the mailing of
a notice of allowance under 1.311, whichever occurs first, or
(ii) within two months of the date the application was published or
prior to the mailing of a notice of allowance under 1.311, whichever
occurs first, if accompanied by the fee set forth in 1.17(t)<; and
(2) The protest is either served upon the applicant in accordance
with 1.248, or >, if submitted prior to the date the application was
published,< filed with the Office in duplicate in the event service is
not possible.
[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 disposed of and will not be considered by the
Office.]
(b) 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. >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 disposed of and
will not be considered by the Office.<
* * * * *
41. Section 1.292 is proposed to be amended by revising paragraphs
(a)-(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 [and the fee set forth in
1.17(j), is filed by one having information of the pendency of an
application and] 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 [should either: (1) Reflect
that a copy of the same has been served upon the applicant or upon his
attorney or agent of record; or (2) be filed with the Office in
duplicate in the event service is not possible. 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, if submitted prior to the date the application was published,
filed with the Office in duplicate in the event service is not possible;
and,
(3) The petition is submitted within two months of the date the
application was published or prior to the mailing of a notice of
allowance under 1.311, whichever occurs first.<
* * * * *
42. A new, undesignated center heading and new sections 1.305 through
1.308 are proposed to be added to Subpart B-National Processing
Provisions to read as follows:
>PUBLICATION OF APPLICATIONS
1.305 Withdrawal from publication.
Applications may be withdrawn from publication at the initiative of
the Office or upon request by the applicant. An application will not be
withdrawn from publication for any reason except:
(a) A mistake on the part of the Office;
(b) The application is either national security classified (see
5.9(b)) or subject to a secrecy order pursuant to 35 U.S.C. 181; or,
(c) Express abandonment of the application pursuant to 1.138.
1.306 Publication of application.
(a) A U.S. national application for patent which was either filed in
the Office under 35 U.S.C. 111(a) or which resulted from an
international application after compliance with 35 U.S.C. 371, or an
application filed in the Office under 35 U.S.C. 161 will be published as
soon as possible after the expiration of a period of 18 months from the
filing date, including the earliest filing date for which a benefit is
sought, unless:
(1) The application is national security classified (see 5.9(b))
or subject to a secrecy order pursuant to 35 U.S.C. 181;
(2) The application has issued as a patent;
(3) The application is recognized by the Office as no longer pending;
or,
(4) The application was previously published pursuant to paragraph
(d) of this section.
(b) The publication of an application shall consist of:
(1) A notice designated as a "Gazette Entry" containing information
such as the application number, filing date, title, inventor's name,
abstract, a drawing figure (if appropriate), a representative claim, and
U.S. and International Patent Classification (IPC) classification(s) in
a Gazette of Patent Application Notices;
(2) A printed publication designated as a "patent application notice"
containing information such as the application number, filing date,
title, inventor's name, correspondence address, abstract, a drawing
figure (if appropriate), a representative claim, and U.S. and
International Patent Classification (IPC) classification(s);
(3) A document designated as a "technical contents publication"
containing the patent application notice and the specification,
abstract, claim(s), and drawing(s); and
(4) Public access to a copy of the specification, drawings, and all
papers relating to the application file in accordance with 1.11(a).
(c) Provisional applications filed in the Office under 35 U.S.C.
111(b) shall not be published, and design applications filed in the
Office under 35 U.S.C. 171 and reissue applications filed in the Office
under 35 U.S.C. 251 shall not be published pursuant to this section.
(d) Applications that will be published pursuant to paragraph (a) of
this section may be published earlier than as set forth in paragraph (a)
upon petition by the applicant. Any petition requesting early
publication of an application must be accompanied by the fee set forth
in 1.17(i) and filed as soon as possible. No consideration will be
given to requests for early publication in an application lacking an
abstract or claims on a separate sheet, any English translation required
pursuant to 1.52(d), or substitute specification or drawings required
pursuant to 1.53(d), 1.60(d), or 1.62(d). No consideration will be
given to requests for publication on a certain date, and such requests
will be treated as a request for publication as soon as possible.
(e) An applicant who is an independent inventor and has been accorded
status under 35 U.S.C. 41(h) in an application that will be published
pursuant to paragraph (a) of this section and does not claim the benefit
of an earlier filing date under 35 U.S.C. 119, 120, 121, 365(a) or
365(c) may request that the application not be published until three
months after an action on the merits. A petition requesting that the
application not be published until three months after an action on the
merits must be submitted with the filing of the application and be
accompanied by:
(1) The petition fee set forth in 1.17(i); and,
(2) A certification that the invention disclosed in the application
was not or will not be the subject of an application filed in a foreign
country. The certification must be verified if made by a person not
registered to practice before the Patent and Trademark Office.
1.307 Delivery of the printed publication.
The patent application notice will be delivered or mailed on the day
of its publication to the correspondence address of record. See
1.33(a).
1.308 Correction of the printed publication.
A request for a certificate of correction for the patent application
notice will only be granted when the Office makes a significant mistake
which is apparent from Office records.<
43. Section 1.315 is proposed to be revised to read as follows:
1.315 Delivery of patent.
The patent will be delivered or mailed >upon issuance< [on the day of
its date] to >the correspondence address of record. See 1.33(a).<
[the attorney or agent of record, if there be one; or if the attorney or
agent so requests, 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 requests.]
44. Section 1.321 is proposed to be 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 >non-statutory<
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.
45. Section 1.492 is proposed to be amended by revising paragraph (a) to
read as follows:
1.492 National stage fees.
* * * * *
(a) * * * * *
(1) Where an international preliminary examination fee as set forth
in 1.482 has been paid on the international application to the United
States Patent and Trademark Office:
By a small entity ( 1.9(f)) >$355.00< [$330.00]
By other than a small entity >710.00< [660.00]
(2) Where no international preliminary examination fee as set forth
in 1.482 has been paid to the United States Patent and Trademark
Office, but an international search fee as set forth in 1.445(a)(2)
has been paid on the international application to the United States
Patent and Trademark Office as an International Searching Authority:
By a small entity ( 1.9(f)) >390.00< [365.00]
By other than a small entity >780.00< [730.00]
(3) Where no international preliminary examination fee as set forth
in 1.482 has been paid and no international search fee as set forth
in 1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office:
By a small entity ( 1.9(f)) >520.00< [490.00]
By other than a small entity >1040.00< [980.00]
(4) Where the international preliminary examination fee as set forth
in 1.482 has been paid to the United States Patent and Trademark
Office and the international preliminary examination report states that
the criteria of novelty, inventive step (non-obviousness), and
industrial applicability, as defined in PCT Article 33(1) to (4) have
been satisfied for all the claims presented in the application entering
the national stage (see 1.496(b)):
By a small entity ( 1.9(f)) >60.00< [46.00]
By other than a small entity >120.00< [92.00]
(5) Where a search report on the international application has been
prepared by the European Patent Office or the Japanese Patent Office:
By a small entity ( 1.9(f)) >455.00< [425.00]
By other than a small entity >910.00< [850.00]
46. Section 1.494 is proposed to be amended by revising paragraphs (c)
and (g) to read as follows:
1.494 Entering the national stage in the United States of America as
a Designated Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) >,< [and/or]
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497),
>(3) An abstract or claims on a separate sheet (see 1.72(b) and
1.75(h)),
(4) Papers typed on but one side of the paper (see 1.52(b)), and/or
(5) Application papers or sheets of drawings of sufficient clarity,
contrast, and quality, and in the proper size and format for electronic
reproduction (see 1.52(a) and (b) and 1.85(a)),< applicant will be
so notified and given a period of time within which to file the
>English< translation >,< [and/or] oath or declaration >, abstract or
claims on a separate sheet, and a substitute specification in compliance
with 1.125 with papers typed on but one side of the paper and sheets
of drawings, each of the substitute specification and sheets of drawings
of sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction< in order to prevent abandonment of
the application. The payment of the processing fee set forth in
1.492(f) is required for acceptance of an English translation later than
the expiration of 20 months after the priority date. The payment of the
surcharge set forth in 1.492(e) is required for acceptance of the
oath or declaration of the inventor later than the expiration of 20
months after the priority date. >The period for filing the English
translation, oath or declaration, an abstract and claims on a separate
sheet, and a substitute specification and sheets of drawings of
sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction cannot be extended pursuant to
1.136(a).< A copy of the notification mailed to applicant should
accompany any response thereto submitted to the Office.
* * * * *
(g) An international application becomes abandoned as to the United
States 20 months from the priority date if the requirements of paragraph
(b) of this section have not been complied with within 20 months from
the priority date where the United States has been designated but not
elected by the expiration of 19 months from the priority date. If the
requirements of paragraph (b) of this section are complied with within
20 months from the priority date but any required translation of the
international application as filed >,< [and/or] the oath or declaration
>, abstract or claims on a separate sheet, and/or substitute
specification in compliance with 1.125 with papers typed on but one
side of the paper and sheets of drawings, each of the substitute
specification and sheets of drawings of sufficient clarity, contrast,
and quality and in the proper size and format for electronic
reproduction< are not timely filed, an international application will
become abandoned as to the United States upon expiration of the time
period set pursuant to paragraph (c) of this section.
47. Section 1.495 is proposed to be amended by revising paragraphs (c)
and (h) to read as follows:
1.495 Entering the national stage in the United States of America as
an Elected Office
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) >,< [and/or]
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497),
>(3) An abstract or claims on a separate sheet (see 1.72(b) and
1.75(h)),
(4) Papers typed on but one side of the paper (see 1.52(b)), and/or
(5) Application papers or sheets of drawings of sufficient clarity,
contrast, and quality, and in the proper size and format for electronic
reproduction (see 1.52(a) and (b) and 1.85(a)),< applicant will be
so notified and given a period of time within which to file the
>English< translation >,< [and/or] oath or declaration >, abstract or
claims on a separate sheet, and a substitute specification in compliance
with 1.125 with papers typed on but one side of the paper and sheets
of drawings, each of the substitute specification and sheets of drawings
of sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction< in order to prevent abandonment of
the application. The payment of the processing fee set forth in
1.492(f) is required for acceptance of an English translation later than
the expiration of 30 months after the priority date. The payment of the
surcharge set forth in 1.492(e) is required for acceptance of the
oath or declaration of the inventor later than the expiration of 30
months after the priority date. >The period for filing the English
translation, oath or declaration, an abstract and claims on a separate
sheet, and a substitute specification and sheets of drawings of
sufficient clarity, contrast, and quality and in the proper size and
format for electronic reproduction cannot be extended pursuant to
1.136(a).< A copy of the notification mailed to applicant should
accompany any response thereto submitted to the Office.
* * * * *
(h) An international application becomes abandoned as to the United
States 30 months from the priority date if the requirements of paragraph
(b) of this section have not been complied with within 30 months from
the priority date where the United States has been elected by the
expiration of 19 months from the priority date. If the requirements of
paragraph (b) of this section are complied with within 30 months from
the priority date but any required translation of the international
application as filed >,< [and/or] the oath or declaration >,abstract or
claims on a separate sheet, and/or a substitute specification in
compliance with 1.125 with papers typed on but one side of the paper
and sheets of drawings, each of the substitute specification and sheets
of drawings of sufficient clarity, contrast, and quality and in the
proper size and format for electronic reproduction< are not timely
filed, an international application will become abandoned as to the
United States upon expiration of the time period set pursuant to
paragraph (c) of this section.
48. Section 1.497 is proposed to be 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 [, if the
inventor,] 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.< [in accordance with 1.63.]
(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 ( 1.42, 1.43 or 1.47),< [international application was made
as provided in 1.422, 1.423 or 1.425,] the >oath or declaration
shall state the relationship of the person< [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.
>(c) The oath or declaration must comply with the requirements of
1.63; however, 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). If the oath or declaration does not meet the requirements of
1.63, a supplemental oath or declaration in compliance with 1.63
will be required in accordance with 1.67.<
49. Section 1.701 is proposed to be revised as follows:
1.701 Extension of patent term due to prosecution delay.
(a) A patent, other than for designs, issued on an application filed
on or after June 8, 1995, is >, subject to the provisions of this
section,< entitled to extension of the patent term if the issuance of
the patent was delayed due to:
(1) interference proceedings under 35 U.S.C. 135(a); and/or
(2) the application being placed under a secrecy order under 35
U.S.C. 181; and/or
(3) appellate review by the Board of Patent Appeals and Interferences
or by a Federal court under 35 U.S.C. 141 or 145, if the patent was
issued pursuant to a decision reversing an adverse determination of
patentability >; and/or< [and if the patent is not subject to a terminal
disclaimer due to the issuance of another patent claiming subject matter
that is not patentably distinct from that under appellate review.]
>(4) an unusual administrative delay by the Office.
(i) Circumstances constituting an unusual administrative delay by the
Office include the failure to:
(A) act on a reply under 1.111 or appeal brief under 1.192
within six months of the date it was filed;
(B) act on an application within six months of the date of a decision
under 1.196 by the Board of Patent Appeals and Interferences where
claims stand allowed in an application or the nature of the decision
requires further action by the examiner ( 1.197); and
(C) issue a patent within six months of the date that the issue fee
was paid or all outstanding requirements were satisfied, whichever is
later.<
(b) The term of a patent entitled to extension under paragraph (a) of
this section shall be extended for the sum of the periods of delay
calculated under paragraphs (c)(1), (c)(2), (c)(3) >, (c)(4)< and (d) of
this section, to the extent that these periods are not overlapping, up
to a maximum of >ten< [five] years. The extension will run from the
expiration date of the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section for
an application is the sum of the following periods, to the extent that
the periods are not overlapping:
(i) with respect to each interference in which the application was
involved, the number of days, if any, in the period beginning on the
date the interference was declared or redeclared to involve the
application in the interference and ending on the date that the
interference was terminated with respect to the application; and
(ii) the number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Patent and Trademark
Office due to interference proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the termination of
the suspension.
(2) The period of delay under paragraph (a)(2) of this section for an
application is the sum of the following periods, to the extent that the
periods are not overlapping:
(i) the number of days, if any, the application was maintained in a
sealed condition under 35 U.S.C. 181;
(ii) the number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under 1.193 in the application
under secrecy order and ending on the date the secrecy order and any
renewal thereof was removed;
(iii) the number of days, if any, in the period beginning on the date
applicant was notified that an interference would be declared but for
the secrecy order and ending on the date the secrecy order and any
renewal thereof was removed; and
(iv) the number of days, if any, in the period beginning on the date
of notification under 5.3(c) and ending on the date of mailing of the
notice of allowance under 1.311.
(3) The period of delay under paragraph (a)(3) of this section is the
sum of the number of days, if any, in the period beginning on the date
on which an appeal to the Board of Patent Appeals and Interferences was
filed under 35 U.S.C. 134 and ending on the date of a final decision in
favor of the applicant by the Board of Patent Appeals and Interferences
or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action
under 35 U.S.C. 145.
>(4) The period of delay under paragraph (a)(4) of this section is
the sum of the number of days, if any, in the period of unusual delay by
the Office.<
(d) The period [of delay] set forth in paragraph (c)[(3)] shall be
reduced by >any time during the processing or examination of the
application, as determined by the Commissioner, during which the
applicant for patent failed to engage in reasonable efforts to conclude
processing or examination of the application. In determining whether an
applicant failed to engage in reasonable efforts to conclude processing
or examination of the application, the Commissioner may examine the
facts and circumstances of the applicant's actions during the entire
prosecution of the application to determine whether the applicant
exhibited that degree of timeliness as may reasonably be expected from,
and which is ordinarily exercised by, an applicant for patent seeking to
conclude the processing or examination of the application. Circumstances
constituting a failure to engage in reasonable efforts to conclude
processing or examination of the application include:
(1) requesting suspension of action under 1.103, and
(2) abandonment of the application.< [:
(1) any time during the period of appellate review that occurred
before three years from the filing date of the first national
application for patent presented for examination; and
(2) any time during the period of appellate review, as determined by
the Commissioner, during which the applicant for patent did not act with
due diligence. In determining the due diligence of an applicant, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review.]
>(e) No patent term shall be extended under this section:
(1) beyond the expiration date specified in a terminal disclaimer in
a patent whose term has been disclaimed in such terminal disclaimer;
(2) in a patent issued before the expiration of three years after the
filing date of the application or entry of the application into the
national stage under 35 U.S.C. 371, whichever is later, not taking into
account any claim to the benefit of the filing date of any application
under 35 U.S.C. 120, 121, 365(c).
(f) Any extension of patent term under paragraph (a)(4) of this
section on the basis of an administrative delay other than one
specifically set forth in paragraphs (a)(4)(i)(A)-(C) must be requested
by petition. A petition for an extension of patent term based upon
unusual administrative delay by the Office other than one specifically
set forth in paragraphs (a)(4)(i)(A)-(C) cannot be filed prior to the
mailing of a notice of allowance under 1.311 and must be accompanied
by:
(1) a statement of the facts involved, the administrative delay by
the Office to be reviewed, and the period of extension requested; and,
(2) the fee set forth in 1.17(i). The petition may include a
request that the petition fee be refunded if an extension of the patent
term under paragraph (a)(4) of this section is granted.<
50. Section 1.808 is proposed to be amended by revising paragraph (a) to
read as follows:
1.808 Furnishing of samples.
(a) A deposit must be made under conditions that assure that:
(1) Access to the deposit will be available during pendency of the
patent application making reference to the deposit to one determined by
the Commissioner to be entitled thereto under 1.14 and 35 U.S.C.
122>(a)<, and
(2) Subject to paragraph (b) of this section, all restrictions
imposed by the depositor on the availability to the public of the
deposited material will be irrevocably removed upon the >publication of
the application under 1.306 or< granting of the patent.
* * * * *
PART 3 - ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE
51. The authority citation for 37 CFR Part 3 would continue to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
52. Section 3.31 is proposed to be amended by redesignating paragraph
(b) as paragraph (c) and adding a new paragraph (b) to read as follows:
3.31 Cover sheet content.
* * * * *
(b) >For a patent application, the cover sheet may include an
indication that the assignment information is to be printed on the
patent application notice. If the assignment and cover sheet containing
the above-mentioned indication is not submitted within two months of
filing or fourteen months from the earliest filing date for which a
benefit is claimed, whichever is later, the assignment information may
not be printed on the patent application notice.
(c)< A cover sheet may not refer to both patents and trademarks.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
53. The authority citation for 37 CFR Part 5 would continue to read as
follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq.; the
Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; and the
Nuclear Non- Proliferation Act of 1978, 22 U.S.C. 3201 et seq.; and the
delegations in the regulations under these Acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
54. Section 5.1 is proposed to be amended by adding new paragraphs (c)
and (d) to read as follows:
5.1 Defense inspection of certain applications.
* * * * *
>(c) Defense agency inspection must be promptly completed to enable
those applications due for publication under 1.306 of this chapter to
be published in regular course. Applications under defense agency review
will be released for publication six months from the actual U.S. filing
date or three months from the date the application was made available to
a defense agency under paragraph (b) of this section, whichever is later.
(d) Applications on inventions not made in the United States and on
inventions in which the U.S. Government has a property interest will not
be made available to defense agencies under 5.2(b).<
55. A new section 5.9 is proposed to be added to Part 5 to read as
follows:
> 5.9 National security classified applications.
(a) Patent applications and papers relating thereto that are national
security classified and contain authorized national security markings of
"Confidential," "Secret" or "Top Secret," as appropriate, are accepted
by the Office. National security classified documents mailed to the
Office must be addressed in compliance with 5.33. National security
classified documents may be hand-carried to Licensing and Review.
(b) A national security classified patent application will not be
published pursuant to 1.306 or allowed pursuant to 1.311 of this
chapter until the application is declassified.
(c) The applicant in a national security classified patent
application must obtain a secrecy order pursuant to 5.2. In a
national security classified patent application filed without a
notification pursuant to 5.2(a), the Office will set a time period
within which the application must be declassified, a secrecy order
pursuant to 5.2 must be obtained, or evidence of a good faith effort
to obtain a secrecy order pursuant to 5.2 from the relevant
department or agency must be presented in order to prevent abandonment
of the application.
(d) Where evidence of a good faith effort to obtain a secrecy order
pursuant to 5.2 from the relevant department or agency is presented
within the time period set by the Office, but the application has not
been declassified and a secrecy order pursuant to 5.2 has not been
obtained, the Office will again set a time period within which the
application must be declassified, a secrecy order pursuant to 5.2
must be obtained, or evidence of a good faith effort to again obtain a
secrecy order pursuant to 5.2 from the relevant department or agency
must be presented in order to prevent abandonment of the application.<
July 27, 1995 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks