Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3, 5 and 7
[Docket No.960606163-6163-01]
RIN: 0651-AA80
1996 Changes to Patent Practice and Procedure
Ageny: Patent and Trademark Office, Commerce.
Action: Notice of Proposed Rulemaking.
Summary: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent cases to simplify the requirements of
the rules, rearrange portions of the rules for better context, and
eliminate unnecessary rules or portions thereof as part of a
government-wide effort to reduce the regulatory burden on the American
public. The procedure for filing of continuation and divisional
applications would be simplified. Another type of simplification being
proposed that would affect several rules is the acceptance of a
statement that errors were made without deceptive intent, unaccompanied
by any further showing of facts and circumstances. The naming of
inventors would no longer be required on filing of the application in
order to obtain a filing date, which would eliminate the need for
certain petitions to correct inventorship.
Dates: Written comments must be received on or before November 25, 1996
to ensure consideration.
Comments will be available for public inspection after receipt and
will be available on the Internet (address: regreform@.uspto.gov).
Commentators should note that since their comments will be made publicly
available, information that is not desired to be made public, such as
the address and phone number of the commentator, should not be included
in the comments. A public hearing will not be conducted.
Addresses: Comments should be sent by mail message over the Internet
addressed to regreform@.uspto.gov.
Comments may also be submitted by mail addressed to: Box Comments -
Patents, Assistant Commissioner for Patents, Washington, D.C. 20231,
Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although
comments may be submitted by mail or FAX, the Office prefers to receive
comments via the Internet. Where comments are submitted by mail, the
Office would appreciate the comments to be electronically filed on a DOS
formatted 3 1/4 inch disk along with a paper copy of the comments.
The comments will be available for public inspection in Suite 520, of
One Crystal Park, 2011 Crystal Drive, Arlington, Virginia.
For Further Information Contact: Hiram H. Bernstein, by telephone at
(703) 305-9285 or by mail addressed to: Box Comments - Patents,
Assistant Commissioner for Patents, Washington, D.C. 20231 marked to the
attention of Mr. Bernstein or by FAX to (703) 308-6916.
Supplementary Information: This proposed rule change seeks to implement
President Clinton's program of reducing the regulatory burden on the
American public, which program is supported by the Office as published
in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19,
20 and 22. The proposed changes are directed towards: (1) simplification
of procedures for filing continuation and divisional applications,
establishing lack of deceptive intent in reissues, petition practice,
and in the filing of papers correcting improperly requested small entity
status; (2) elimination of unnecessary requirements, such as certain
types of petitions to correct inventorship under 1.48; (3) removal of
rules and portions thereof that merely represent instructions as to the
internal affairs of the Office more appropriate for inclusion in the
Manual of Patent Examining Procedure (MPEP); (4) rearrangement of
portions of rules to improve their context; and (5) clarification of
rules to aid in understanding of the requirements that they set forth.
The Office is particularly interested in comments as to whether the
proposed rules if adopted should be applied to already pending reissue
oaths or declarations under the new proposed standards of 1.175 as it
is to be amended under the final rule and already pending petitions and
papers under 1.28(c)(2), 1.48 and 1.324 as they are to be amended
under the final rule for such papers submitted prior to the effective
date of any final rule change, i.e., should the advantages proposed by
these suggested rule changes that are incorporated into the final rule
be applied retroactively to papers submitted prior to the effective date
of the final rule.
Discussion of Specific Rules
If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7 are
amended as proposed:
Section 1.4(d) paragraphs (1) and (2) would be amended to place the
current subject matter of both paragraphs into paragraphs (d)(1)(i) and
(ii) with a clarifying reference in paragraph (d)(1)(ii) to the
submission of a copy of a copy.
Paragraph (d)(2) of 1.4 would be amended so that the
certifications set forth in the rule would be automatically made upon
presenting any paper to the Office by the party presenting the paper and
in an added paragraph (d)(3)(ii) identifying by the statute, 18 U.S.C.
1001 that sets forth the required standards of conduct. Sanctions would
be set forth in a 1.4(d)(3)(i) for violation of the certifications in
1.4(d)(2) and for violations of the standards of conduct in
1.4(d)(3)(ii).
The proposed amendments to 1.4(d) would support proposed
amendments to 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69,
1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will
be reviewed at a later date in connection with other matters), 3.26, and
5.4 that would delete the requirement for verification (MPEP 602) of
statements of facts by applicants and other parties who are not
registered to practice before the Office. The absence of a required
verification has been a source of delay in the prosecution of
applications, particularly where such absence is the only defect noted.
The proposed change to 1.4(d) would automatically incorporate
required averments thereby eliminating the necessity for a separate
verification for each statement of facts that is to be presented, except
for those instances where the verification requirement is retained.
Similarly, the proposed amendments to 1.4(d) would support a proposed
amendment to 1.97 ( 1.637 and 1.673 will be reviewed at a later
date in connection with other matters) that would change the
requirements for certifications to requirements for statements. The oath
or declaration under 1.63 and affidavits under 1.131 and 1.132
would not be affected. The requirement in 5.25(a)(3) for a verified
statement would bemaintained, as the required explanation must include a
showing of facts (evidence), not mere allegations, which will be weighed
by the official deciding the petition for retroactive license. The
statements in 1.494(e) and 1.495(f) that verification of
translations of documents filed in a language other than English may be
required would be maintained, as such requirements are made rarely and
only when deemed necessary (when persons persist in translations which
appear on their face to be inaccurate, for example). The requirements
for certification of service on parties in 1.248, 1.510, 1.637 and
10.142 would be maintained.
Section 1.4 would also have a new paragraph (g) related to an
applicant who has not made of record a registered attorney or agent
being required to state whether assistance was received in the
preparation or prosecution of a patent application. This is proposed to
be transferred from 1.33(b) for consistent contextual purposes.
Section 1.6 paragraph (e)(2) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.8 paragraph (b)(3) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.10 would be amended to remove the requirement for a
statement that is verified. See comments to 1.4(d). It is also
proposed to clarify the section by substitution of "averring to the
fact" with "stating."
Section 1.14 would have the title and paragraphs (a) and (e) amended
to replace the term "secrecy" by "confidence" to conform to the usage in
35 U.S.C. 122. Paragraph (a) of 1.14 would have a reference to serial
number changed to application number. Section 1.14 would also be amended
to have paragraph (f) added to recognize the proposed change to
1.47(a) and (b) that are also exceptions to maintaining pending
applications in confidence by providing public notice of the prospective
issuance of a pending application to nonsigning inventors.
Section 1.17 (and 1.136(a)) would add a recitation to an extension
of time fee payment for a reply filed within a fifth month after a
nonstatutory or shortened statutory period for reply was set. Section
1.17(a) is specifically proposed to be subdivided into paragraphs (a)(1)
through (a)(5), with paragraphs (a)(1) through (a)(4) setting forth the
amounts for one-month through four-month extension fees proposed in
Revision of Patent Fees for Fiscal Year 1997, 1186 Off. Gaz. Pat. Office
14 (May 7, 1996); 61 FR 19224 (May 1, 1996). Paragraph (a)(5) would
provide the small and other than small entity amounts for the newly
proposed fifth-month extension fee. Sections 1.17(b), (c) and (d) are
proposed to be removed as unnecessary in view of proposed 1.17(a)(1)
through (a)(5).
Fee levels, as proposed by the Revision of Patent Fees for Fiscal
Year 1997, were used in establishing the fifth-month extension of time
fees for large and small entities for paragraph (a)(5) of 1.17. A
shortened statutory period for reply of one month may be set, thereby
allowing a fifth month for reply within the six-month statutory period
for response. Section 1.17(a) is being amended to recognize the
availability of a fifth-month extension of time when a one-month or a
thirty-day shortened statutory period is set (e.g., in a written
requirement for restriction). The addition of a fifth-month would then
also become available for replies with nonstatutory periods of time set,
such as for replies to Notices to File Missing Parts of Applications.
Section 1.17(i), as proposed, would: add a petition fee under 1.59
for expungement and return of papers, delete the references to petitions
under 1.60 and 1.62 to accord a filing date in view of the proposed
deletion of 1.60 and 1.62, and to change "divisional reissues" to
"multiple reissue applications." Moreover, 1.17, as well as
1.103, 1.112, 1.113, 1.133, 1.134, 1.135, 1.136, 1.142, 1.144, 1.146,
1.191, 1.192, 1.291, 1.294, 1.484, 1.485, 1.488, 1.494, 1.495, 1.530,
1.550, 1.560, (1.605, 1.617, 1.640, and 1.652 will be reviewed at a
later date in connection with other matters), 1.770, 1.785, (1.821 will
be reviewed at a later date in connection with other matters), and 5.3,
would replace the phrases "response" and "respond" with "reply" for
consistency with 1.111.
Section 1.21(n), as proposed, would delete the reference to an
improper application under 1.60 or 1.62 in view of the proposed
deletion of 1.60 and 1.62.
Section 1.26(a) is proposed to be amended to better track the
statutory language of 35 U.S.C. 42(d) by deleting "[m]oney" and
"actual," adding "fee" and adding back language relating to refunds of
fees paid that were not "required" that was inadvertently dropped in the
July 1, 1993, publication of title 37 CFR, and from subsequent
publications.
Section 1.27(a) through (d) would be amended to remove the
requirement that a statement filed thereunder be "verified." See
comments relating to 1.4(d). Section 1.27(b) is proposed to be
amended for clarification with the movement of a clause relating to "any
verified statement" within a sentence.
Section 1.28(a) would be amended to remove the requirement for a
statement that is "verified." See comments relating to 1.4(d).
Section 1.28(a) would also be amended to provide that a new small
entity statement would not be required for reissue or continued
prosecution ( 1.53(b)(3)) applications where small entity status is
still proper and reliance is had on a reference to a small entity
statement filed in a prior application or patent or a copy thereof is
supplied.
Section 1.28(a) would be further amended to state that the payment of
a small entity basic statutory filing fee in a nonprovisional continuing
application, which claims benefit under 35 U.S.C. 119(e), 120, 121, or
365(c) of a prior application or in a continuing prosecution
application, or in a reissue application, wherein the prior application
or the patent has small entity status, will substitute for the reference
in the continuing or reissue application to the small entity statement
in the prior application or in the patent, thereby establishing small
entity status in such nonprovisional application.
Section 1.28(a) is also amended to require a new determination of
continued entitlement to small entity status for continued prosecution
applications filed under 1.53(b)(3) and to clarify that the refiling
of applications as continuations, divisions and continuation-in-part
applications and the filing of reissue applications also require a new
determination of continued entitlement to small entity status prior to
reliance on small entity status in a prior application or patent.
Section 1.28(c) would have the requirement removed for a statement of
facts explaining how an error in payment of small entity fees occurred
in good faith and how and when the error was discovered. A fee
deficiency payment based on the difference between fees originally paid
as a small entity and the current large entity amount at the time of
full payment of the fee deficiency will be deemed to constitute a belief
by the party submitting the deficiency payment that small entity status
was established in good faith and that the original payment of small
entity fees was made in good faith. Any paper submitted under 1.28(c)
will be placed in the appropriate file without review after the
processing of any check or the charging of any fee deficiency payment
specifically authorized.
Section 1.33 would no longer provide that the required residence and
post office address of the applicant can appear elsewhere than in the
oath or declaration under 1.63. Section 1.63(a)(3) would be amended
to require that the post office address as well as the residence be
identified therein and not elsewhere. Permitting the residence to be
elsewhere in the application other than the oath or declaration, as in
current 1.33(a), is inconsistent with current 1.63(c) that states
the residence must appear in the oath or declaration. The requirement
for placement of the post office address is proposed to be made
equivalent to the requirement for the residence to eliminate confusion
between the two, which often are the same destination and are usually
provided in the oath or declaration. The reference in 1.33(a) to the
assignee providing a correspondence address has been moved within
1.33(a) for clarification. Other clarifying language including a
reference to 1.34(b), use of the terms "provided," "furnished" rather
than "notified," and "application" rather than "case," while "of which
the Office" would be deleted.
Section 1.33(b) would be removed and the subject matter transferred
to new 1.4(g).
Section 1.41(a) (and 1.53) would no longer require that a patent
be applied for in the name of the actual inventors for an application
for patent to receive a filing date. The requirement for use of full
names would be moved to 1.63(a) for better context. The requirement
for naming of the inventor or inventors would be replaced with only a
request that such names or an identifying name be submitted on filing of
the application. The use of very short identifiers should be avoided to
prevent confusion. Without supplying at least an identifying name that
is specific the Office may have no ability or only a delayed ability to
match any papers submitted after filing of the application and before
issuance of an identifying Application number with the application file.
Any identifier used that is not an inventor's name must be specific,
alphanumeric characters of reasonable length, and must be presented in
such a manner that it is clear to application processing personnel what
the identifier is and where it is to be found. It is strongly suggested
that applications filed without an executed oath or declaration under
1.63 or 1.175 continue to use an inventor's name for identification
purposes. Failure to apprise the Office of the application identifier
being used will result in applicants having to resubmit papers that
could not be matched with the application and proof of the earlier
receipt of such papers where submission was time dependent.
Paragraph (a) of 1.41 would also be amended to recite that the
actual inventor or inventors of an application are set forth in an
executed 1.63 oath or declaration to correspond to the proposed
change in 1.53(b)(1)(iii). Hence, the recitation of the inventorship
in an application submitted under 1.53(d) without an executed
oath or declaration for purposes of identification may be changed merely
by the later submission of an oath or declaration executed by a
different inventive entity without recourse to a petition under 1.48.
Section 1.47 would be amended to provide for publication in the
Official Gazette of a notice of filing for all applications submitted
under this section rather than only when notice to the nonsigning
inventor(s) is returned to the Office undelivered or when the address of
the nonsigning inventor(s) is unknown. The information to be published
includes: the Application number, filing date, invention title and
inventors identifying the missing inventor.
Section 1.47 would also be amended for clarification purposes. A
reference to an "omitted inventor" in 1.47(a) would be replaced with
"nonsigning inventor." Statements in 1.47(a) and (b) that a patent
will be granted upon a satisfactory showing to the Commissioner would be
deleted as unnecessary. Section 1.47(b) is proposed to be amended to
clarify that it applies only where none of the inventors are willing or
can be found to sign the Declaration by substitution of "an inventor" by
"all the inventors." The use of "must state" in regard to the last known
address would be deleted as redundant in view of the explicit
requirement for such address in the rule. The sentence in 1.47(b)
referring to the filing of the assignment, written agreement to assign
or other evidence of proprietary interest would be deleted as redundant
in view of the requirement appearing earlier in 1.47(b) calling for
"proof of pertinent facts."
Section 1.48 for inventorship corrections in an application (
1.324, for inventorship corrections in a patent, and 1.175, for
reissue declarations) would no longer require factual showings to
establish a lack of deceptive intent. All that will be needed is a
statement to that effect.
Section 1.48 would be amended in its title to clarify that the
section is related to patent applications as opposed to patents.
Section 1.48(a) would not require correction of the inventorship if
the inventorship or other identification under 1.41 was set forth in
error on filing of the application. Section 1.48(a) is proposed to be
amended to apply only to correction of inventor or inventors from that
named in an originally filed executed oath or declaration and not to the
naming of inventors or others for identification purposes as is
currently proposed under 1.41. The statement to be submitted would be
required only from the person named in error as an inventor or from the
person who through error was not named as an inventor rather than from
all the original named inventors so as to comply with 35 U.S.C. 116. The
present requirement that any amendment of the inventorship under
1.48(a) be "diligently" made would be removed. The applicability of a
rejection under 35 U.S.C. 102(f)/(g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is deemed to provide sufficient motivation for prompt correction
of the inventorship without the need for a separate requirement for
diligence.
A clarifying reference to 1.634 would be added in 1.48(a) for
instances when inventorship correction is necessary during an
interference and has been moved from 1.48(a)(4) for improved
contextual purposes.
The 1.48(a)(1) statement would require a statement only as to the
lack of deceptive intent rather than a statement of facts to establish
how the inventorship error was discovered and how it occurred, since the
latter is proposed to be deleted. Additionally, the persons from whom a
statement is required now includes any person not named in error as an
inventor but limits statements from the original named inventors to only
those persons named in error as inventors rather than all persons
originally named as inventors including those correctly named. The
paragraph would be amended to remove the requirement that the statement
be verified in accordance with the proposed change to 1.4(d)(2).
Section 1.48(a)(2) would be amended for clarification purposes to
indicate the availability of 1.42, 1.43 or 1.47 in meeting the
requirement for an executed oath or declaration under 1.63 from each
actual inventor. Section 1.47 would only be applicable to the person to
be added as an inventor (inventors named in an application transmittal
letter can be deleted without petition). For those persons already
having submitted an executed oath or declaration under 1.63, a
petition under 1.183, requesting waiver of reexecution of an oath or
declaration, may be an appropriate remedy. The requirement for an oath
or declaration is maintained in 1.48(a) notwithstanding its
replacement in 1.324 for issued patents by a statement of agreement
or lack of disagreement with the requested change in view of the need to
satisfy the duty of disclosure requirement in a pending application that
is set forth in a 1.63 oath or declaration.
Section 1.48(a)(4) would be amended to include a citation to
3.73(b) to clarify the requirements for submitting a written consent of
assignee, which is subject to the requirement under 3.73(b), and to
delete the reference to an application involved in an interference,
which is being moved to 1.48(a). Section 1.48(a)(4) would also be
amended to clarify that the assignee required to submit its written
consent is only the existing assignee of the original named inventors at
the time the petition is filed and not any party that would become an
assignee based on the grant of the inventorship correction.
Section 1.48(b) would also be amended to remove the requirement that
a petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102(f)/(g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is deemed to provide sufficient motivation for prompt correction
of the inventorship without the need for a separate requirement for
diligence.
Section 1.48(b) would have a clarifying reference to 1.634 added
for instances when inventorship correction is necessary during an
interference.
Section 1.48(c) would be amended so that a petition thereunder no
longer need meet the current requirements of 1.48(a), which are also
proposed to be changed. A statement from each inventor being added that
the inventorship amendment is necessitated by amendment of the claims
and that the error occurred without deceptive intent would be required
under 1.48(c)(1) rather than the previous requirement of a statement
from each original named inventor. The previous requirements under
1.48(a) for an oath or declaration, the written consent of an assignee
and the written consent of any assignee are retained, but are now
separately set forth in 1.48(c)(2) through (c)(4). The particular
circumstances of a petition under this paragraph, adding an inventor due
to an amendment of the claims that incorporates material attributable to
the inventor to be added, is seen to be indicative of a lack of
deceptive intent in the original naming of inventors. Accordingly, all
that must be averred to is that an amendment of the claims has
necessitated correction of the inventorship and that the inventorship
error existing in view of the claim amendment occurred without deceptive
intent. The current requirement for diligence in filing the petition
based on an amendment to the claims would not be retained as applicants
have the right, prior to final rejection or allowance, to determine when
particular subject matter is to be claimed. Applicants should note that
any petition under 1.48 submitted after allowance is subject to the
requirements of 1.312, and a petition submitted after final rejection
is not entered as a matter of right. The statement of facts must be a
verified statement if made by a person not registered to practice before
the Patent and Trademark Office.
Section 1.48(c)(2) would clarify the availability of 1.42, 1.43
and 1.47 in meeting the requirement for an executed oath or declaration
under 1.63. Section 1.47 would only be applicable to the person to be
added as an inventor. For those persons already having an executed oath
or declaration under 1.63 a petition under 1.183, requesting
waiver of reexecution of an oath or declaration, may be an appropriate
remedy.
Section 1.48(c)(4) would clarify that the assignee required to submit
its written consent is only the existing assignee of the original named
inventors at the time the petition is filed and not any party that would
become an assignee based on the grant of the inventorship correction. A
citation to 3.73(b) would be presented.
Section 1.48(d) would be amended by addition of "their part" to
replace "the part of the actual inventor or inventors" and of "omitted"
to replace "actual" to require statements from the inventors to be added
rather than from all the actual inventors so as to comply with 35 U.S.C
116. Section 1.48(d)(1) would also be clarified to identify the error to
be addressed is the inventorship error. It is not expected that the
party filing a provisional application will normally need to correct an
error in inventorship under this paragraph by adding an inventor therein
except when necessary under 1.78 to establish an overlap of
inventorship with a continuing application. Automatic correction of the
inventorship is not possible as is the case for nonprovisional
applications when an executed oath or declaration under 1.63 with the
correct inventorship is later filed; sincean oath or declaration is not
to be submitted in provisional applications, 1.51(a)(2).
Section 1.48(d)(1) would be amended to remove the requirement that
the statement be verified in accordance with the proposed change to
1.4(d)(2).
Section 1.48(e)(1) would be amended to replace a requirement in
provisional applications that the required statement be one "of facts"
directed towards "establishing that the error" being corrected "occurred
without deceptive intention," thereby requiring only a statement that
the inventorship error occurred without deceptive intent. Paragraph
(e)(1) would also be amended to remove the requirement that the
statement be verified in accordance with the proposed change to
1.4(d)(2). It is not expected that the party filing a provisional
application would need to file a petition under this paragraph since the
application will go abandoned by operation of law, 1.53(e)(2), and
the need to delete an inventor will not affect the overlap of
inventorship needed to claim priority under 1.78(a)(3) for any
continuing application.
Section 1.48(e)(3) would be amended to clarify that the assignee
required to submit its written consent is only the prior existing
assignee before correction of the inventorship is granted and not any
party that would become an assignee based on the grant of the
inventorship correction and a reference to 3.73(b) would be added.
Section 1.48(f) would be added to provide that the later filing of an
executed oath or declaration would act to correct the inventorship
without a specific petition for such correction and would be used to
issue a filing receipt and process the application notwithstanding any
inventorship or other identification name earlier presented.
Section 1.48(g) would be added to specifically recognize that the
Office may require such other information as may be deemed appropriate
under the particular circumstances surrounding a correction of the
inventorship.
Section 1.51(c) covering the use of an authorization to charge a
deposit account is proposed to be removed as unnecessary in view of
1.25(b).
Section 1.52 paragraphs (a) and (d) would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to 1.4(d)(2). Paragraphs (a) and (d) of this section
would also be amended to clarify the need for a statement that the
translation being offered is an accurate translation, as is also
proposed in 1.69 paragraph (b).
Section 1.53(b)(1), as proposed, would remove: (1) the phrase "in the
name of the actual inventor or inventors as required by 1.41," and
(2) the sentence "[i]f all the names of the actual inventor or inventors
are not supplied when the specification and any required drawing are
filed, the application will not be given a filing date earlier than the
date upon which the names are supplied unless a petition with the fee
set forth in 1.17(i) is filed which sets forth the reasons the delay
in supplying the names should be excused." These proposed changes are
consistent with the proposed change to 1.41. Section 1.53(b)(1) (and
1.41(a)) would no longer require that a patent be applied for in the
name of the actual inventors for an application for patent to receive a
filing date.
Section 1.53(b)(1), as proposed, would change (1) "[a] continuation
or divisional application (filed under the conditions specified in 35
U.S.C. 120, 121 or 365(c) and 1.78(a)) may be filed under this
section, 1.60 or 1.62" and (2) "[a] continuation-in-part
application may also be filed under this section or 1.62" to (1)
[a]continuation or divisional application (filed under the conditions
specified in 35 U.S.C. 120, 121 or 365(c) and 1.78(a)) may be filed
under this paragraph or paragraph (b)(3) of this section" and (2) "[a]
continuation-in-part application must be filed under this paragraph,
respectively. Upon the deletion of 1.60 and 1.62, any
continuation-in-part applications must be filed under 1.53(b)(1), but
a continuation or divisional application may be filed under
1.53(b)(1) or (b)(3).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i) expressly providing that any continuation or divisional
application may be filed by all or by less than all of the inventors
named in a prior application, and that a newly executed oath or
declaration is not required pursuant to 1.51(a)(1)(ii) and 1.53(d)
in a continuation or divisional application filed by all or by less than
all of the inventors named in a prior application, provided that one of
the following is submitted: (1) a copy of the executed oath or
declaration filed to complete ( 1.51(a)(1)) the most immediate prior
national application for which priority is claimed under 35 U.S.C. 120,
121 or 365(c), or (2) a copy of an unexecuted oath or declaration, and a
statement that the copy is a true copy of the oath or declaration that
was subsequently executed and filed to complete ( 1.51(a)(1)) the most
immediate prior national application for which priority is claimed under
35 U.S.C. 120, 121 or 365(c). The phrase "most immediate prior national
application" is proposed rather than "prior application" to accommodate
those situations in which the prior application was filed under current
1.60 or 1.62, or where the prior application was itself a
continuation or divisional application and filed with a copy of the
executed oath or declaration from a prior application pursuant to
1.53(b)(1)(i). As is currently the situation under 1.60 and 1.62,
the applicant's duty of candor and good faith including compliance with
the duty of disclosure requirements of 1.56 is continuous and applies
to the continuation, divisional or continued prosecution ( 1.53(b)(3))
application, notwithstanding the lack of a newly executed oath or
declaration. Therefore, applicants should be informed of the intent to
file a continuation, divisional or continued prosecution application
with a copy of the proposed claimed supplied. New 1.53(b)(1)(i), as
proposed, would also reference 1.53(d) for the filing of a
continuation or divisional application without the concomitant
submission of a newly executed oath or declaration or a copy of the oath
or declaration for the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath
or declaration for the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be
accompanied by a statement from applicant, counsel for applicant or
other authorized party requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application. Where the continuation or divisional application
and copy of the oath or declaration from the prior application is filed
without a statement from an authorized party requesting deletion of the
names of any person or persons named in the prior application, the
continuation or divisional application will be treated as naming as
inventors the person or persons named in the prior application, taking
into account any petition for correction of inventorship pursuant to
1.48 in the prior application that has been granted prior to the filing
of the continuation or divisional application. For situations where an
inventor or inventors are to be added in a continuation or divisional
application see paragraph (ii) under this section.
The statement requesting the deletion of the names of the person or
persons who are not inventors in the continuation or divisional
application must be signed by person(s) authorized pursuant to
1.33(a) to sign an amendment in the continuation or divisional
application. That is, such a statement must be signed by: (1) all of the
inventors in the continuation or divisional application (see MPEP
714.01(a)), (2) the assignee of record of the entire interest in the
continuation or divisional application in compliance with 3.73(b)
(see MPEP 324), (3) an attorney or agent of record, or (4) a registered
attorney or agent acting in a representative capacity pursuant to
1.34(a).
Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B)
providing that where the power of attorney or correspondence address was
changed during the prosecution of the prior application, the change in
power of attorney or correspondence address must be identified in the
continuation or divisional application.
Section 1.53(b)(1), as proposed, would add a new paragraph (ii)
providing that a newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application. For situations where an inventor or inventors are
to be added in a continuation or divisional application the Office will
not require a petition pursuant to 1.48, but will require only the
newly executed oath or declaration naming the correct inventorship in
the continuation or divisional application under 1.53. For deletion
of inventors in a continuation or divisional application see
1.53(b)(1)(i) and (b)(3). New 1.53(b)(1)(ii), as proposed, would also
provide that a newly executed oath or declaration must be filed in a
continuation-in-part application, which application may name all, more,
or less than all of the inventors named in the prior application.
Section 1.53(b)(1)(iii), as proposed, would clarify that the
inventorship is not set forth in an application until an executed oath
or declaration is submitted therein in accordance with the proposed
change to 1.41(a). Where the inventorship was voluntarily set forth
on filing an application without an executed oath or declaration
pursuant to 1.53(d) for purposes of identification, the actual
inventorship of the application will be controlled by the later
submission of an executed oath or declaration which may change what was
originally identified as the inventorship without recourse to a petition
under 1.48 in accordance with the proposed change to 1.41(a).
Section 1.53(b)(2), as proposed, would remove the phrase "in the name
of the actual inventor or inventors as required by 1.41" and the
sentence "[i]f all the names of the actual inventor or inventors are not
supplied when the specification and any required drawing are filed, the
provisional application will not be given a filing date earlier than the
date upon which the names are supplied unless a petition with the fee
set forth in 1.17(q) is filed which sets forth the reasons the delay
in supplying the names should be excused." Section 1.53(b)(2) (and
1.41(a)) would no longer require that a patent be applied for in the
name of the actual inventors for an application for patent to receive a
filing date.
Section 1.53(b)(2)(ii), as proposed, would change the phrase "treated
as" to "converted to" for clarity.
Section 1.53(b)(3) is proposed to be added to provide for the filing
of a continued prosecution application.
Section 532 of the Uruguay Round Agreement Act (Public Law 103-465,
532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the
term of patent protection begins on the date of patent grant and ends on
the date 20 years from the filing date of the application. As any delay
in the prosecution of the application will reduce the term of patent
protection, reducing unnecessary delays in the prosecution of
applications is a mutual interest of patent applicants and the Office.
An applicant in a nonprovisional application filed on or after June
8, 1995, must file a continuing application to obtain further
examination subsequent to a final rejection or other final action. The
current continuing practice under 1.60 and 1.62 of processing an
application filed thereunder with a new application number and filing
date delays the examination of such continuing applications. Therefore,
the Office proposes to eliminate this delay by: (1) not assigning a new
application number to an application filed under 1.53(b)(3), and (2)
not processing the application filed under 1.53(b)(3) with a filing
date of the request for an application under 1.53(b)(3). Rather, a
continued prosecution application would retain the application number
and the filing date of the prior application to which it relates for
identification purposes thereby allowing examination to proceed without
the delays that would be caused by the current need to assign to
applications filed under 1.60 and 1.62 a new application number and
filing date as of the date the Rule 60 or 62 application was requested
(submitted).
Section 1.53(b)(3), as proposed, would specifically provide that: (1)
in a complete nonprovisional application ( 1.51(a)(1)) filed on or
after June 8, 1995, a continuation or divisional application that
discloses and claims only subject matter disclosed in that prior
complete application and names as inventors the same or less than all
the inventors named in that prior complete application may be filed
under this paragraph, and (2) the filing date of the continued
prosecution application, such as for continuity purposes under 35 U.S.C.
120 and 1.78, is the date on which a request for an application under
this paragraph, including identification of the prior application number
is filed.
The specific reference to the prior application required by 35 U.S.C.
120 and 1.78(a)(2) will be satisfied by a sentence that the continued
prosecution application is a continuation or divisional, as appropriate,
of prior application number ##/###,###, filed ##/##/##, now abandoned,
notwithstanding that the so identified application number and filing
date are also the application number and filing date assigned to the
continued prosecution application under this paragraph. Where the
continued prosecution application derives from a chain of 1.53(b)(3)
applications assigned a common application number and filing date, a
sentence that the application is a continuation or divisional, as
appropriate, of the common application number and filing date will
constitute a specific reference (35 U.S.C. 120 and 1.78(a)(2)) to
each application assigned that application number and filing date. Since
1.53(b)(3) is proposed to be limited to continuations and
divisionals, the actual filing date of the request for an application
under 1.53(b)(3) will be relevant only to the copendency requirement
of 35 U.S.C. 120 and 1.78 and patent term vis-a-vis Public Law
103-465. Nevertheless, 1.53(b)(3) is proposed to be limited to a
continuation or divisional of a complete application filed on or after
June 8, 1995, so as to avoid any dispute as to whether the application
is subject to 20-year patent term as set forth in Public Law 103-465.
That is, any continuation or divisional of an application filed prior to
June 8, 1995, as well as any continuation-in-part, must be filed under
1.53(b)(1).
Section 1.53(b)(3)(i)(A), as proposed, would provide that an
application under 1.53(b)(3) (a continued prosecution application)
will use the specification, drawings and oath or declaration from the
prior complete application and will be assigned its application number
for identification purposes.
Section 1.53(b)(3)(i)(B), as proposed, would provide that the filing
of a request for a continued prosecution application is a request to
expressly abandon the prior application as of the filing date granted
the application under 1.53(b)(3).
Section 1.53(b)(3)(i)(C), as proposed, would provide that a continued
prosecution application must be filed before the payment of the issue
fee, abandonment of, or termination of proceedings on the prior
application with the filing date of a request for a continued
prosecution application being the date on which a request for a
continued prosecution application including identification of the
application number of the prior complete application is filed
Section 1.53(b)(3)(ii)(A) and (B), as proposed, would provide that
filing fee for a continued prosecution application is the statutory
basic filing fee as set forth in 1.16 and any additional fee due
based on the number of claims remaining in the application after entry
of any amendment accompanying the request for an application under this
section and entry of any amendments under 1.116 unentered in the
prior application which applicant has requested to be entered in the new
application.
In instances in which a continued prosecution application is
submitted without the basic statutory filing fee or any additional
claims fee due, the Office will continue to mail a "Notice of Missing
Parts" under 1.53(d)(1) and give the applicant a period of time
within which to file the fee and to pay the surcharge under 1.16(e)
to prevent abandonment of the application (see 1.53(d)(1)). Thus, the
filing of a continued prosecution application without the basic
statutory filing fee or any additional claims fee due will result in a
delay in the initial processing of the application. An applicant,
however, may eliminate or limit this delay by either filing the request
for a continued prosecution application with the appropriate filing fee
or not delaying the submission of the appropriate filing fee until the
mailing of or expiration of the period for response to the "Notice of
Missing Parts."
Section 1.53(b)(3)(iii), as proposed, would provide that if a
continued prosecution application is filed by less than all the
inventors named in the prior application, a statement must accompany the
application when filed requesting deletion of the names of the person or
persons who are not inventors of the invention being claimed in the
continued prosecution application. Where an application is filed under
1.53(b)(3) without a statement requesting deletion of the names of any
person or persons named in the prior application, the application will
be treated as naming as inventors the person or persons named in the
prior application, taking into account any grant of a petition
correcting inventorship in the prior application pursuant to 1.48. To
correct the inventorship in the continued prosecution application, the
Office will not require a petition pursuant to 1.48 as the
application is to be filed without a newly executed oath or declaration,
but will require only a newly executed oath or declaration naming the
correct inventorship in the continued prosecution application, which is
similar to the requirements for correction of the inventorship in
applications filed under 1.53(b)(1) without a newly executed oath or
declaration.
Section 1.53(b)(3)(iv), as proposed, would require that any new
change be made in the form of an amendment to the prior application, and
would provide that any new specification filed with the request for an
application under 1.53(b)(3) would not be considered part of the
original application papers, but would be treated as a substitute
specification in accordance with 1.125. In the event that legislation
mandating the 18-month publication of patent applications (e.g., H.R.
1733) is enacted, it will be necessary to amend proposed
1.53(b)(3)(iii) to require a substitute specification in compliance with
1.125 and drawings including only those changes to the prior
application during the prosecution of the prior application.
Section 1.53(b)(3)(v), as proposed, would provide that the filing of
a continued prosecution application will be construed to include a
waiver of confidence by the applicant under 35 U.S.C. 122 to the extent
that any member of the public who is entitled under the provisions of
1.14 to access to, or information concerning either the prior
application or any application filed under the provisions of
1.53(b)(3) may be given similar access to, or similar information
concerning, the other application(s) in the file wrapper.
Section 1.53(b)(3)(vi)(A) through (D), as proposed, would provide
that the applicant is urged to furnish in the request for an application
under 1.53(b)(3) the following information relating to the prior
application to the best of his or her ability: (A) title as originally
filed and as last amended, (B) name of applicant as originally filed and
as last amended, (C) current correspondence address of applicant, and
(D) identification of prior foreign application and any priority claim
under 35 U.S.C. 119.
Section 1.53(b)(3)(vii), as proposed, would provide that envelopes
containing only requests and fees for filing an application under
1.53(b)(3) should be marked "Box CPA."
Section 1.53(c), as proposed, would replace its current language with
three paragraphs treating: (1) applications found to be improper or
incomplete, (2) any requests for review of a notification that an
application has been found to be improper or incomplete, and (3)
termination of proceedings in an application for failure to timely
correct a filing error or seek review of a notification that an
application has been found to be improper or incomplete.
Section 1.53(c)(1), as proposed, would specifically provide that
"[i]f any application filed under paragraph (b) of this section is found
to be incomplete or improper, applicant will be so notified and given a
time period within which to correct the filing error."
Section 1.53(c)(2), as proposed, would specifically provide that
"[a]ny request for review of a notification pursuant to paragraph (c)(1)
of this section, or a notification that the original application papers
lack a portion of the specification or drawing(s), must be by way of a
petition pursuant to this paragraph," "[a]ny petition under this
paragraph must be accompanied by the fee set forth in 1.17(i) in an
application filed under paragraphs (b)(1) or (b)(3) of this section, and
the fee set forth in 1.17(q) in an application filed under paragraph
(b)(2) of this section," and "[i]n the absence of a timely ( 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (c)(1) of this section will be the date the filing error is
corrected."
Section 1.53(c)(3), as proposed, would specifically provide that
"[i]f an applicant is notified of a filing error pursuant to paragraph
(c)(1) of this section, but fails to correct the filing error within the
given time period or otherwise timely ( 1.181(f)) take action pursuant
to paragraph (c)(2) of this section, proceedings in the application will
be considered terminated" and "[w]here proceedings in an application are
terminated pursuant to this paragraph, the application may be returned
or otherwise disposed of, and any filing fees, less the handling fee set
forth in 1.21(n), will be refunded" Section 1.53(c)(3), as proposed
would not provide that proceedings in the application will be considered
terminated for failure to timely respond to a notification that the
original application papers lack a portion of the specification or
drawing(s). Thus, the failure to timely seek review of a notification
that the original application papers lack a portion of the specification
or drawing(s) will not result in termination of proceedings in (or
abandonment of) the application, but will simply result in such portion
of the specification or drawing(s) not being considered part of the
original disclosure of the application.
Section 1.53(d)(1), as proposed, would change "paragraph (b)(1) of
this section" to "paragraphs (b)(1) or (b)(3) of this section," such
that 1.53(d)(1) would be applicable to applications filed under
1.53(b)(1) and (b)(3), where 1.53(d)(2) would be applicable to
applications filed under 1.53(b)(2) (i.e., provisional applications).
While 1.53(d)(1) addresses both the filing fee and the oath or
declaration, the oath or declaration of an application under
1.53(b)(3) will be the oath or declaration of the prior complete (
1.51(a)(1)) application. As such, an oath or declaration will not be
required under 1.53(d)(1) for a proper application under
1.53(b)(3).
Section 1.53(d)(1), as proposed, would be further amended to add the
phrases "including a continuation, divisional, or continuation-in-part
application" and "pursuant to 1.63 or 1.175, which may be a copy of
the executed oath or declaration filed to complete ( 1.51(a)(1)) the
most immediate prior national application for which priority is claimed
under 35 U.S.C. 120, 121 or 365(c), or a copy of an unexecuted oath or
declaration, and a statement that the copy is a true copy of the oath or
declaration that was subsequently executed and filed to complete (
1.51(a)(1)) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a
continuation or divisional application" for clarity and consistency with
1.53(b)(1). A reference to submission of a copy of a Notice to File
Missing Parts would be removed.
Section 1.54(b), as proposed, would add the phrase "unless the
application is an application filed under 1.53(b)(3)." To minimize
application processing delays in applications filed under 1.53(b)(3),
as proposed, such applications will not be processed by the Office of
Initial Patent Examination as new applications.
Section 1.55 paragraph (a) would be amended to remove the requirement
that the statement be verified in accordance with the proposed change to
1.4(d)(2).
Section 1.59 would be amended: by revising the title to indicate that
expungement of information from an application file would come under
this section, by revising the existing paragraph and designating it as
paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c).
Paragraph (a)(1) would retain the general prohibition on the return of
information submitted in an application which has a filing date. The
portion of the paragraph relating to the Office furnishing copies of
application papers has been shifted to new paragraph (c). Paragraph
(a)(2) would make explicit that information, forming part of the
original disclosure, i.e., written specification, drawings, claims and
any preliminary amendment specifically incorporated into an executed
oath or declaration under 1.63 and 1.175, will not be expunged from
the application file.
Paragraph (b) of 1.59 would provide an exception to the general
prohibition of paragraph (a) on the expungement and return of
information and would allow for such when it is established to the
satisfaction of the Commissioner that the requested expungement and
return is appropriate.
Paragraph (b) of 1.59 is intended to cover the current practice
set forth in MPEP 724.05 where the submitted information has initially
been identified as trade secret, proprietary, and/or subject to a
protective order and where applicant may file a petition for its
expungement and return that will be granted upon a determination by the
examiner that the information is not material to patentability. Any such
petition should be submitted in response to an Office action closing
prosecution so that the examiner can make a determination of materiality
based on a closed record. Any petition submitted earlier than close of
prosecution may be returned unacted upon. In the event pending
legislation for pre-grant publication of applications, which provides
public access to the application file, is enacted, then the timing of
petition submissions under this section will be reconsidered. A result
of the proposed amendment to this section would be to have a petition to
expunge decided under the instant rule by the examiner who determines
the materiality of the information to be expunged rather than by the
Office of Petitions under 1.182, which prior to rendering a decision
on the petition consults with the examiner on materiality of the
information at issue.
Paragraph (b) of 1.59 is also intended to cover information that
was unintentionally submitted in an application, provided that: (i) the
Office can effect such return prior to the issuance of any patent on the
application in issue, (ii) that it is stated that the information
submitted was unintentionally submitted and the failure to obtain its
return would cause irreparable harm to the party who submitted the
information or to the party in interest on whose behalf the information
was submitted, (iii) the information has not otherwise been made public,
(iv) there is a commitment on the part of the petitioner to retain such
information for the period of any patent with regard to which such
information is submitted, and (v) it is established to the satisfaction
of the Commissioner that the information to be returned is not material
information under 1.56. Requests to return information that have not
been clearly identified as information that may be later subject to such
request by marking and placement in a separate sealed envelope or
container shall be treated on a case-by-case basis. It should be noted
that the Office intends to start electronic scanning of all papers filed
in an application, and the practicality of expungement from the
electronic file created by a scanning procedure is not as yet
determinable. Applicants should also note that unidentified information
that is a trade secret, proprietary, or subject to a protective order
that is submitted in an Information Disclosure Statement may
inadvertently be placed in an Office prior art search file by the
examiner due to the lack of such identification and may not be
retrievable.
Paragraph (b) of 1.59 is also intended to cover the situation
where an unintended heading has been placed on papers so that they are
present in an incorrect application file. In such situation, a petition
should request return of the papers rather than transfer of the papers
to the correct application file. The grant of such a petition will be
governed by the factors enumerated above in regard to the unintentional
submission of information. Where the Office can determine the correct
application file that the papers were actually intended for, based on
identifying information in the heading of the papers, e.g., Application
number., filing date, title of invention and inventor(s) name(s), the
Office will transfer the papers to the correct application file for
which they were intended without need of a petition.
Added paragraph (c) of 1.59 retains the practice that copies of
application papers will be furnished by the Office upon request and
payment of the cost for supplying such copies.
Section 1.60 is proposed to be removed and reserved.
In the notice of proposed rulemaking entitled "Changes to Implement
20-Year Patent Term and Provisional Application" (20-Year Term Notice of
Proposed Rulemaking) published in the Federal Register at 59 FR 63951
(December 12, 1994), and in the Patent and Trademark Office Official
Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3, 1995), 1.60 was
proposed to be removed due to the rule change to 1.4(d), which
permits the filing of a copy of an oath or declaration. The proposed
removal of 1.60 in the 20-Year Term Notice of Proposed Rulemaking,
however, was withdrawn in the final rule to permit further study.
A continuation or divisional application may be filed under 35 U.S.C.
111(a) using the procedures set forth in 1.53, by providing a copy of
the prior application, including a copy of the oath or declaration in
such prior application, as filed. The patent statutes and rules of
practice do not require that an oath or declaration include a recent
date of execution, and the Examining Corps has been directed not to
object to an oath or declaration as lacking either a recent date of
execution or any date of execution. This change in examining practice
will appear in the next revision of the MPEP. As discussed supra, the
applicant's duty of candor and good faith including compliance with the
duty of disclosure requirements of 1.56 is continuous and applies to
the continuing application.
Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a
continuation or divisional application by all or by less than all of the
inventors named in a prior application without a newly executed oath or
declaration. To continue this practice, 1.53 is proposed to be
amended to provide that any continuation or divisional application may
be filed by all or by less than all of the inventors named in a prior
application, but where a newly executed oath or declaration is not
submitted for a continuation or divisional application filed by less
than all the inventors named in the prior application, the copy of the
oath or declaration for the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be
accompanied by a statement requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application. A newly executed oath or declaration will
continue to be required in a continuation or divisional application
naming an inventor not named in the prior application, or a
continuation-in-part application.
Section 1.60 is now unnecessary due to: (1) the rule change to
1.4(d), (2) the proposed addition of 1.53(b)(1)(i) to expressly
permit the filing of either a newly executed oath or declaration, or a
copy of the executed oath or declaration filed to complete pursuant to
1.51(a)(1) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a
continuation or divisional application, (3) the proposed addition of
1.53(b)(1)(i) to permit the filing of a continuation or divisional
application by all or by less than all the inventors named in a prior
application, using a copy of the executed oath or declaration filed to
complete the prior application, and (4) the proposed addition of
1.53(b)(3) to permit the filing of a continued prosecution application.
A new application containing a copy of an oath or declaration under
1.63 referring to an attached specification is indistinguishable from a
continuation or divisional application containing a copy of an oath or
declaration from a prior application submitted pursuant to
1.53(b)(1)(i), as proposed. Unless an application is submitted with a
statement that the application is a continuation or divisional
application ( 1.78(a)(2)), the Office will process such a new
application without requiring a new oath or declaration. Applicants are
advised to clearly designate any continuation or divisional application
as such to avoid the issuance of a filing receipt that does not indicate
that the application is a continuation or division.
Section 1.62 is proposed to be removed and reserved.
In the proposed rulemaking entitled "Changes to Implement 18-Month
Publication of Patent Applications" (18-Month Publication Notice of
Proposed Rulemaking) published in the Federal Register at 60 FR 42352
(August 15, 1995), and in the Patent and Trademark Office Official
Gazette at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995), 1.62(e)
was proposed to be amended to require a substitute specification in
compliance with 1.125 and drawings where the application filed under
1.62 is a continuation-in-part application. The 18-Month Publication
Notice of Proposed Rulemaking proposed to digital image and/or optical
character recognition (OCR) scan application material into an electronic
data base, which data base would be used to publish the application
(e.g., for producing copies of the technical contents of the
application-as-filed). The 18-Month Publication Notice of Proposed
Rulemaking indicated that as applications filed prior to the
implementation of 18-month publication will not have been image- or
OCR-scanned into the electronic data base, the technical contents of an
application filed under 1.62 in which the prior application was
itself filed prior to the implementation of 18-month publication will
not be contained in the electronic data base.
The solution proposed in the 18-Month Publication Notice of Proposed
Rulemaking was for the Office to obtain the microfiche copy of the prior
application for applications under 1.62 which do not add additional
disclosure (i.e., continuation or divisional applications) and image or
OCR scan it into the electronic data base, and to amend 1.62 to
provide that, where the application adds additional disclosure (i.e., is
a continuation-in-part application), a substitute specification in
compliance with 1.125 and drawings will be required.
The proposal in the 18-Month Publication Notice of Proposed
Rulemaking to obtain the microfiche copy of prior continuation or
divisional applications is now considered unfeasible. A number of
applications filed under 1.62 derive from a chain of applications
filed under 1.62. The information pertaining to such an application's
chain of prior applications contained within the Patent Application
Location and Monitoring (PALM) system is not sufficiently comprehensive
to readily and reliably indicate the prior application that contains a
specification and drawings, and is not sufficiently reliable to avoid
the occasional inclusion of an unrelated application in the chain of
prior applications. This could result in the inadvertent publication of
the specification and drawings of the wrong application.
In addition, the microfiche copy of the prior application may be a
microfiche of sheets of specification and/or drawings on 8 and 1/2 by
14-inch paper, which paper size is not technically useable by the
equipment which will be employed for pre-grant publication of patent
applications. Attempts to reduce such sheets of specification and/or
drawings to a paper size processible by pre-grant publication equipment
results in electronic files which contain illegible text and figures.
Moreover, the microfilming process under pre-grant publication differs
from the previous microfilming process, and as such, the microfiche copy
of such a prior application is sufficiently dissimilar from the
microfiche copy of an application under pre-grant publication that it
causes accurate technical date capture difficulties.
In the event that legislation mandating the 18-month publication of
patent application is enacted, it will be necessary to require a
substitute specification in compliance with 1.125 and drawings
including any changes to the prior application during the prosecution of
the prior application or pursuant to 1.62(e) to continue 1.62
practice.
Section 1.62 is now unnecessary due to: (1) the rule change to
1.4(d), (2) the proposed change to 1.53(b)(1) to expressly permit the
filing of either a newly executed oath or declaration, or a copy of the
executed oath or declaration filed to complete pursuant to 1.51(a)(1)
the most immediate prior national application for which priority is
claimed under 35 U.S.C. 120, 121 or 365(c), in a continuation or
divisional application, (3) the proposed change to 1.53(b)(1) to
permit the filing of a continuation or divisional application by all or
by less than all the inventors named in a prior application, using a
copy of the executed oath or declaration filed to complete the prior
application, and (4) the proposed addition of 1.53(b)(3) to permit
the filing of a continued prosecution application.
The Office currently receives a number of petitions requesting that
an application filed under 1.60 and 1.62 be accepted even though at
the time of filing of the application, the application did not comply
with all the requirements of 1.60 or 1.62 due to inadvertent error
on the part of the applicant. The examination of these improper
applications under 1.60 and 1.62 is delayed until a petition to
accept the application is filed and granted. The large majority of the
applications filed under 1.60, however, complied at the time of
filing with the requirements of 1.53(b)(1), and the copy of the oath
or declaration from the prior application is now acceptable as the oath
or declaration for the application, regardless of whether the
application is an application under 1.53 or 1.60. The removal of
1.60 and simplification of 1.62 will reduce the number of these
types of petitions and will simplify the procedures for filing an
application for both the Office and patent practitioners.
It is anticipated that, subsequent to the removal of 1.60 and
1.62, applications purporting to be applications filed under 1.60
or 1.62 will be filed until the deletion of 1.60 and 1.62 become
well known among patent practitioners. Applications purporting to be an
application filed under 1.60 will simply be treated as a new
application filed under 1.53 (i.e., the reference to 1.60 will
simply be ignored).
Applications purporting to be an application filed under 1.62 will
be treated as continued prosecution applications under 1.53(b)(3),
and those applications that do not meet the requirements of
1.53(b)(3) (e.g., continuation-in-part applications or continuations or
divisional of applications filed before June 8, 1995) will be treated as
improper continued prosecution applications under 1.53(b)(3). Such
improper applications under 1.53(b)(3) may be corrected by way of
petition under 1.53(b)(c) (and $130 fee pursuant to 1.17(i)).
Such a 1.53(c) petition in a continuation or divisional
application will be granted on the condition that the applicant file:
(1) the $130 petition fee, and (2) a true copy of the complete
application designated as the prior application in the purported 1.62
application papers as filed, or, if the prior application was an
application filed under 1.62, a true copy of its most immediate
parent application which contained a specification and drawings as
filed. Such a 1.53(c) petition in a continuation-in-part application
will be granted on condition that the applicant file: (1) the $130
petition fee, and (2) a true copy of the complete application designated
as the prior application in the purported 1.62 application papers as
filed, or, if the prior application was an application filed under
1.62, a true copy of its most immediate parent application which
contained a specification and drawings as filed, and any amendments
submitted during the prosecution of the prior application.
Section 1.63(a)(3) is proposed to be amended by requiring the post
office address to appear in the oath or declaration and having the
requirement from 1.41(a) for the full names of the inventors placed
therein.
Section 1.69, paragraph (b), would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to 1.4(d)(2). Paragraph (b) of this section is also
being amended to clarify the need for a statement that the translation
being offered is an accurate translation, as is proposed for 1.52,
paragraph (a) and (d).
Section 1.78(a)(1)(ii), as proposed, would remove the references to
1.60 and 62 in view of the proposed deletion of 1.60 and 62.
Section 1.84, paragraph (b), is proposed to be amended by removing
references to the filing of black and white photographs in design
applications as unnecessary in view of the reference in 1.152 to
1.84(b).
Section 1.91 is proposed to be amended for clarification purposes by
additionally reciting "Exhibits" as well as models. The section is
proposed to be amended to state that a model, working model or other
physical exhibit may be required by the Office if deemed necessary for
any purpose in examination of the application. This language is moved
from 1.92.
Section 1.92 is proposed to be removed and reserved and the language,
as stated above, transferred to 1.91 for improved contextual purposes.
Section 1.97(c) through (e) are proposed to be amended by replacement
of "certification" by "statement," see comments relating to 1.4(d),
and by clarifying the current use of "statement" by the terms
"information disclosure." Section 1.97(e)(2) is further amended to
replace "or" by "and" to require that: no item of information contained
in the information disclosure statement was cited in a communication
from a foreign patent office in a counterpart foreign application and
that no item of information contained in the information disclosure
statement to the knowledge of the person signing the statement, after
making reasonable inquiry, was known to any individual designated in
1.56(c) more than three months prior to the filing of the information
disclosure statement. The use of "and" rather than "or" is in keeping
with the intent of the rule as expressed in the MPEP 609, page 600-91,
that the conjunction be conjunctive rather than disjunctive. The mere
absence of an item of information from a foreign patent office
communication was clearly not intended to represent an opportunity to
delay the submission of the item when known more than three months prior
to the filing of an information disclosure statement to an individual
having a duty of disclosure under 1.56.
Section 1.101 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.102, paragraph (a), would be amended to remove the
requirement that the showing be verified in accordance with the proposed
change to 1.4(d)(2).
Section 1.103, paragraph (a), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.104 is proposed to be removed and reserved as relating to
internal Office instructions (the material of paragraph (c) would be
present in the MPEP).
Section 1.105 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.108 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.111(b) is proposed to be amended to explicitly recognize
that a reply must be reduced to a writing which must point out the
specific distinctions believed to render the claims, including any newly
presented claims, patentable. It is noted that an examiner's amendment
reducing a telephone interview to writing would comply with 1.2.
In 1.112 it is proposed to remove as being unnecessary the
statement that "any amendments after a second Office action must
ordinarily be restricted to the rejection, objections or requirements
made in the office action" to reflect actual practice wherein an
unrestricted right of entry exists prior to a final rejection and that
an application or patent under reexamination be considered repeatedly
unless a final action is rendered. It is proposed to amend the section
for clarification purposes by addition of a reference to reconsideration
"before final action."
Section 1.113(a), as proposed, would add "by the examiner" after
"examination or consideration," change "objections to form" to
"objections as to form" for clarity, and would replace "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.113(b), as proposed, would change "clearly stating the
reasons therefor" to "clearly stating the reasons in support thereof"
for clarity.
A new 1.113(c) would be added to provide that the first action in
an application will not be made final. See comments to 1.116 and
1.191.
Section 1.115 is proposed to be replaced by new 1.115 that would
contain material to be deleted from 1.117 through 1.119, 1.123 and
1.124. No change in substance is contemplated with the material of
deleted sections being rearranged and edited for clarity and contextual
purposes in the new section. The reference to "application" is intended
to include reissue applications.
Section 1.116(a), as proposed, would limit amendments after a final
rejection or other final action ( 1.113) to those amendments
cancelling claims or complying with any requirement of form set forth in
a previous Office action, and would replace the phrase "any proceedings
relative thereto" with "any related proceedings" for clarity.
Section 1.116(b), as proposed, would provide that any amendment not
in compliance with 1.116(a) must be submitted with a request for an
application under 1.53(b)(3) to ensure consideration of the amendment.
Under 1.116, as proposed, amendments after final rejection or
other final action would be limited to cancelling claims or complying
with any requirement of form expressly set forth in a previous Office
action. Currently, amendments after final which concern the merits of an
application may, upon a showing of good and sufficient reasons why they
are necessary and were not earlier presented, be entered and amendments
after final which present rejected claims in better form for
consideration on appeal may be entered. This procedure causes delays in
the ultimate issuance of the application as a patent, since applicants
will await a ruling on whether such amendment will be entered prior to
deciding whether to obtain the entry of such amendment through the
filing of a continuing application. In addition, the expedited handling
of numerous amendments after final, and the expedited consideration of
whether there is an adequate showing of good and sufficient reasons why
an amendment after final concerning the merits of an application is
necessary and not earlier presented, or whether an amendment after final
presents rejected claims in better form for consideration on appeal,
places a significant burden on Office resources.
Section 1.113(c), as proposed, would eliminate first action final
practice, and, as such, would eliminate the necessity to submit an
amendment after final simply to avoid a first action final in a
continuing application. In view of this safeguard, and the delay and
burden of the current practice for the treatment of amendments after
final, 1.116 is proposed to be amended to limit those amendments that
may be presented as a matter of right after a final rejection or other
final action. Put simply, the proposed elimination of first action final
practice by the Office is the quid pro quo for the proposed strict
limitation of after final practice. Persons submitting comments
objecting to this proposed limitation of after final practice should
frame such comments in the context that the proposed elimination of
first action final practice by the Office is coupled to the proposed
limitation of after final practice.
Section 1.116, as proposed, would not affect the authority of an
examiner to enter in an application under final an amendment that places
the application in condition for allowance, but does not strictly meet
the requirements of 1.116(a). That is, in instances in which the
applicant and examiner agree on an amendment that would place the
application in condition for allowance, the examiner would retain the
authority to enter the amendment, notwithstanding the requirements of
1.116(a). Where, however, the applicant and the examiner do not agree on
whether an amendment would place an application in condition for
allowance, and the amendment does not meet the requirements of
1.116(a), the applicant could not require the examiner to consider the
amendment as a matter of right.
Section 1.117 is proposed to be removed and reserved as the subject
matter was transferred to proposed 1.115.
Section 1.118 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115.
Section 1.119 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115.
Section 1.121 paragraphs (a) through (f) are proposed to be replaced
with paragraphs (a) through (c), which separately treat amendments in
non-reissue applications (paragraph (a)), amendments in reissue
applications (paragraph (b)) and amendments in reexamination proceedings
(paragraph (c)). Paragraphs (a) and (b) each separately treat amendment
of the specification (paragraphs (a)(1) and (b)(1)) and of the claims
(paragraphs (a)(2) and (b)(2)). In comparing amendment practice to the
specification for non-reissue and reissue applications: when making an
amendment to the specification of a non-reissue application a copy of
all previous amendments would not be required, whereas for reissue
applications a copy of all previous amendments to the patent
specification would be required. In comparing amendment practice to the
claims for non-reissue and reissue applications: when making an
amendment to the claims of a non-reissue application or when new claims
are added, a copy of all pending claims, including original claims that
have never been amended, would be required, whereas for reissue
applications a copy of only claims that are being amended or added would
be required.
Paragraph (a) of 1.121 would relate to amendments in non-reissue
applications and retains a reference to 1.52. Paragraph (a)(1) would
relate to the manner of making amendments in the specification other
than in the claims. Paragraph (a)(1)(i) would require the precise point
to be indicated where an amendment is made. Paragraph (a)(1)(ii) would
allow amendments that are deletions only to be done by a direction to
cancel rather than presenting the sentence(s), paragraph(s) and/or
page(s) with brackets. This should be compared to cancellation of
material from the patent specification in a reissue application
(paragraph (b)((1)((ii)) or in a reexamination proceedings (
1.530(d)(1)(ii) - by way of a copy of the rewritten material). Paragraph
(a)(1)(iii) would require all other amendments, such as additions or
deletions mixed with additions, to be made by submission of a copy of
the rewritten sentence(s), paragraph(s) and/or page(s) to permit the
examiner to more readily recognize the changes that are being made.
Current practice does not require the marking of an amendment to the
specification in non-reissue applications. A change in one sentence,
paragraph or page that results in only format changes to other pages not
being amended are not to be submitted. Paragraph (a)(1)(iv) would
identify the type of markings required by paragraph (a)(1)(iii), single
underlining for added material and single brackets for material deleted.
The marking would also be required to be applied in reference to the
material as previously rewritten and not as originally presented if that
differed from the previous presentation.
Paragraph (a)(2) of 1.121 would relate to the manner of making
amendments in the claims of a non-reissue application. Paragraph
(a)(2)(i)(A) would permit cancellation of a claim by a direction to do
so or by simply omitting a copy of the claim when a complete copy of all
pending claims are presented pursuant to paragraph (a)(2)(ii) of this
section. Paragraph (a)(2)(i)(B) would permit amendment of a previously
submitted claim, other than mere cancellation by submission of a copy of
the claim completely rewritten with markings pursuant to paragraph
(a)(2)(iii) of this section rather than continuing to permit requests
that the Office hand-enter changes of five or less words,
1.121(c)(2). Such rewriting would be construed as a direction that the
rewritten claim be a replacement for the previously submitted claim.
Paragraph (a)(2)(i)(C) sets forth that a new claim may only be added by
the submission of a clean copy of the new claim.
Paragraph (a)(2)(ii) of 1.121 would require that when a previously
submitted claim is amended, or when a new claim is added, applicant must
submit a separate copy of all pending claims to include all newly
rewritten claims, all newly added claims, all previously rewritten
claims that are still pending and any unamended claims that are still
pending. This would enable the examiner to more quickly identify the
claims that must be reviewed for the next Office action and would enable
the printer to have a current version of the allowed claims for printing
should the application be allowed. Compare with amendment of claims in
reissue applications wherein only a copy of an amended patent claim or
added claim is required, paragraph (b)(2)(i)(A) of this section, but not
of previous claims (patent and added claims) that are not currently
being amended. Current practice does not require a complete copy of all
pending claims but only those claims being amended or added.
Paragraph (a)(2)(iii) of 1.121 would identify the type of marking
required by paragraph (a)(2)(i)(B), single underlining for added
material and single brackets for material deleted.
Paragraph (a)(2)(iv) of 1.121 would provide that the failure to
submit a copy of any previously submitted claim would be construed as a
direction to cancel that claim.
Paragraph (a)(3) of 1.121 would clarify that amendments to the
original application drawings for non-reissue applications are not
permitted and are to be made by way of a substitute sheet for each
original drawing sheet that is to be amended.
Paragraph (a)(4) of 1.121 would require that any amendment
presented in a substitute specification must be presented under the
provision of this section either prior to or concurrent with the
submission of the substitute specification.
Paragraph (b) of 1.121 would apply to amendments in reissue
applications. Paragraph (b)(1) of 1.121 would relate to the manner of
making amendments to the specification other than in the claims in
reissue applications. Paragraph (b)(1)(i) would require the precise
point to be indicated where an amendment is made. Paragraph (b)(1)(ii)
would require that all amendments including deletions be made by
submission of a copy of the rewritten paragraph(s) with markings. A
change in one sentence, paragraph or page that results in only format
changes to other pages not being amended are not to be submitted.Compare
to amendments to the specification other than in the claims of
non-reissue applications wherein deletions are permitted, paragraph
(a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that each
amendment to the specification must include all amendments to the
specification relative to the patent as of the date of the submission.
Compare to amendments to the specification other than claims in
nonreissue applications wherein previous amendments to the specification
are not required to accompany the current amendment to the
specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would define
the marking set forth in paragraph (b)(1)(ii) of section. Paragraph
(b)(2) of 1.121 would relate to the manner of making amendments to
the claims in reissue applications. Paragraph (b)(2)(i)(A) of 1.121
would require the entire text of each patent claim that is being amended
and of each added claim rather than continuing to permit requests that
the Office hand-enter changes of five or less words, 1.121(c)(2), but
not of all pending claims, such as patent claims that have not been
amended. Compare paragraph (a)(2)((ii). Additionally, provision would be
made for the cancellation of a patent claim by a direction to cancel
without the need for marking by brackets. Paragraph (b)(2)(i)(B) would
require that patent claims not be renumbered. Paragraph (b)(2)(i)(C)
would identify the type of marking required by paragraph (b)(2)(i)(A),
single underlining for added material and single brackets for material
deleted.
Paragraph (b)(2)(ii) of 1.121 would require that each amendment
submission set forth the status of all patent claims and all added
claims as of the date of the submission, as not all claims (non-amended
claims) are to be presented with each submission, paragraph (b)(2)(iv).
The absence of submission of the claim status would result in an
incomplete response, 35 U.S.C. 135.
Paragraph (b)(2)(iii) of 1.121 would require that each claim
amendment be accompanied by an explanation of the support in the
disclosure of the patent for the amendment. The absence of an
explanation would result in an incomplete response, 35 U.S.C. 135.
Paragraph (b)(2)(iv) of 1.121 would require that each submission
of an amendment to any claim (patent claim or added claim) requires
copies of all amendments to the claims as of the date of the submission.
A copy of a previous amendment would not meet the requirement of this
section in that all amendments must be represented, as only the last
amendment will be used for printing.
Paragraph (b)(2)(v) of 1.121 would provide that the failure to
submit a copy of any added claim would be construed as a direction to
cancel that claim.
Paragraph (b)(2)(vi) of 1.121 would clarify that: 1) no reissue
patent would be granted enlarging the scope of the claims unless applied
for within two years from the grant of the original patent (additional
broadening outside the two-year limit is appropriate as long as some
broadening occurred within the two-year period), and 2) no amendment may
introduce new matter or be made in an expired patent.
Paragraph (b)(3) of 1.121 clarify that amendments to the patent
drawings are not permitted and that any change must be by way of a new
sheet of drawings with the amended figures being identified as "amended"
and with added figures identified as "new" for each sheet that has
changed.
Paragraph (c) of 1.121 would clarify that amendments in
reexamination proceedings are to be made in accordance with 1.530.
Section 1.121 as applied both to non-reissue and reissue applications
does not provide for replacement pages whereby a new page would be
physically substituted for a currently existing page. However, an
applicant can direct that Page _____ be cancelled and the following
inserted in its place. The wide availability of word processing should
enable applicants to more easily submit updated material providing
greater accuracy and thereby eliminating the need for the Office to
hand-enter amendments. To that end, 1.125 is proposed to be amended
to provide that a substitute specification may be submitted at any point
up to payment of the issue fee as a matter of right.
The proposed changes to 1.121 relate in part to the method of
presenting amendments in reissue and reexamination proceedings, that
would more closely parallel each other. The Office seeks guidance on the
usefulness of bringing reissue and reexamination proceedings in closer
harmony. Currently, both practitioners and Office personnel must retain
a working knowledge of these infrequently used but vital avenues for
review of an issued patent. The Office has identified the following
areas for possible harmonization and would like comments as to the
appropriateness of these areas, identification of other suitable areas
for consideration and specific means to achieve harmonization in the
identified areas, e.g., whether a concept or practice in one area should
be applied to the other area or a new practice for both should be
started:
- Procedures for amending claims and the specification, 1.121
- To utilize a reissue certificate (similar to a reexamination
certificate) attached to a copy of the original patent as the reissued
patent. This procedure would eliminate the need to reprint the entire
reissued patent.
- Whether the special dispatch provisions of reexamination should be
applied to reissue applications.
Section 1.122 is proposed to be removed and reserved as representing
internal Office instruction.
Section 1.123 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115 for better context.
Section 1.124 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115 for better context.
Section 1.125 is proposed to be amended by addition of paragraphs (a)
through (d). Paragraph (a) would retain the current practice that a
substitute specification may be required by the examiner and would be
clarified to note that if the legibility of the application papers shall
render it difficult to consider the case, the Office may require a
substitute specification.
Paragraph (b) of 1.125 would provide for the right of filing a
substitute specification in an application other than a reissue
application, at any point up to payment of the issue fee, if it is
accompanied by a statement that the substitute specification includes no
new matter and does not introduce any amendments unless they have been
submitted in accordance with the requirements of 1.121(a) either
prior to or concurrent with the submission of the substitute
specification. In view of the proposed continued prosecution application
under 1.53(b)(3) and the need to submit sentence, paragraph, and/or
page changes under 1.121(a), liberalization of the substitute
specification requirements is desirable. The requirement for a lack of
new matter statement being verified would be deleted. See comments to
1.4(d).
Paragraph (c) of 1.125 would clarify that a substitute
specification is to be submitted without markings as to amended material.
Paragraph (d) of 1.125 would not permit a substitute specification
in reissue or reexamination proceedings as markings for changes from the
patent are required therein.
Section 1.133, paragraph (b), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.134 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.135, paragraphs(a) and (c), would be amended by replacement
of "response" with "reply" in accordance with the proposed change to
1.111. Paragraph (b) is proposed to be amended to clarify that the
admission of or refusal to admit any amendment after final rejection,
and not just an amendment not responsive to the last Office action,
shall not operate to save the application from abandonment.
Section 1.135, paragraph (c), is proposed to be amended to provide
that a new "time period" under 1.134 may be given if a reply to a
non-final Office action is substantially complete but consideration of
some matter or compliance with some requirement has been inadvertently
omitted. This would replace the current practice whereby applicant may
be given an opportunity to supply the omission through the setting of a
"time limit" of one month that is not currently extendable. Generally, a
new one month shortened statutory time period would be utilized enabling
an applicant to petition for extensions of time under 1.136(a). Where
35 U.S.C. 133 requires a period longer than one month, i.e., actions
mailed in the month of February, a shortened statutory period of 30 days
will be set. The setting of a time period for reply under 1.134
rather than a time limit would result in the date of abandonment (when
no further reply is filed) being the expiration of the new time period
rather than, at present, the date of expiration of the period of reply
set in the original Office action for which an incomplete reply was
filed. Thus, the proposed amendment to paragraph (c) of 1.135 would
permit the refiling of a continuing application as an alternative to
completing the reply, whereas the current rule only permits an applicant
to complete the reply that was held to be incomplete.
Section 1.135, paragraph (c), is also proposed to be amended to
remove an unnecessary reference to consideration of the question of
abandonment and to clarify that the reply for which applicant may be
given a new time period to reply to must be a "non-final" Office action.
Section 1.136, paragraph (a)(1), is proposed to be amended to recite
the availability of a maximum of five (5) rather than four (4) months as
an extension of time when only a one (1) month or 30 day shortened
statutory period or a non-statutory period for reply is set. Paragraph
(a)(1) is would also be amended by replacement of "respond" with "reply"
in accordance with the proposed change to 1.111.
Section 1.136, paragraph (a)(2), would be amended by replacement of
"respond" with "reply" in accordance with the proposed change to
1.111 and other clarification changes.
Section 1.136 is proposed to be amended by addition of paragraph
(a)(3) that would now provide for the filing in an application a general
authorization to treat any reply requiring a petition for an extension
of time for its timely submission as containing a request therefor for
the appropriate length of time. The authorization may be filed at any
time prior to or with the submission of a reply that would require an
extension of time for its timely submission, including submission with
the application papers. Currently, the mere presence of a general
authorization, submitted prior to or with a reply requiring an extension
of time, to charge all required fees does not amount to a petition for
an extension of time for that reply (MPEP 201.06 and 714.17) and under
the proposed amended rule the submission of a reply requiring an
extension of time for its timely submission would not be treated as an
inherent petition for an extension of time absent an authorization for
all necessary extensions of time. The Office will continue to treat all
petitions for an extension of time as requesting the appropriate
extension period notwithstanding an inadvertent reference to a shorter
period for extension and will liberally interpret comparable papers as
petitions for an extension of time. Applicants are advised to file
general authorizations for payment of fees and petitions for extensions
of times as separate papers rather than as sentences buried in papers
directed to other matters (such as an application transmittal letter).
The use of individual papers directed only to an extension of time or to
a general authorization for payment of fees would permit the Office to
more readily identify the presence of such items and list them
individually on the application file jacket thereby providing ready
future identification of these authorizations.
Clarifying language is proposed for 1.136(a)(3) to reflect current
practice that general authorizations to charge fees are effective to
meet the requirement for the extension of time fee for responses filed
concurrent or subsequent to the authorization. However, a general
authorization to charge additional fees does not represent a petition
for an extension of time, which petition must be separately requested.
Section 1.137 is proposed to be amended by moving language presently
codified, elsewhere to, inter alia, incorporate revival of abandoned
applications and lapsed patents for the failure: (1) to timely reply to
an Office requirement in a provisional application ( 1.139), (2) to
timely pay the issue fee for a design application ( 1.155 paragraphs
(b)-(f)), (3) to timely pay the issue fee for a utility or plant
application ( 1.316 paragraphs (b)-(f)), or to timely pay the full
amount of the issue fee ( 1.317 paragraphs (b)-(f)) (lapsed patents).
Cites in parentheses reference where subject matter is contained in
current rules.
Section 1.137(a), as proposed, would further move into paragraph
(a)(3) the requirement that a petition thereunder be "promptly filed
after the applicant is notified of, or otherwise becomes aware of, the
abandonment." 35 U.S.C. 133 requires that "it be shown . . . that such
delay was unavoidable." This requirement is regarded as requiring not
only a showing that the delay which resulted in the abandonment of the
application was unavoidable, but also a showing of unavoidable delay
from the time an applicant becomes aware of the abandonment of the
application until the filing of a petition to revive. See In re
Application of Takao 17 USPQ2d 1155 (Comm'r Pat. 1990). The burden of
continuing the process of presenting a grantable petition in a timely
manner likewise remains with the applicant until the applicant is
informed that the petition is granted. Id. An applicant seeking to
revive an "unavoidably" abandoned application is expected to cause a
petition under 1.137(a) to be filed without delay (i.e., promptly
upon becoming notified, or otherwise becoming aware, of the abandonment
of the application). As such, the placement of the requirement that a
petition pursuant to 1.137(a) be filed promptly upon becoming
notified, or otherwise becoming aware, of the abandonment of the
application is appropriately located in paragraph (a)(3), since
1.137(a)(3) includes the requirement for a showing of unavoidable delay.
The requirement that an applicant seeking to revive an application as
"unavoidably" abandoned "promptly" file a petition under 1.137 is
regarded as a requirement that a petition pursuant to 1.137(a) be
filed without delay upon the applicant or his or her representative
being notified of, or otherwise becoming aware of, the abandonment.
Thus, under the current and proposed practice, the failure to file a
petition under 1.137(a) within three months of the date the applicant
or his or her representative is notified of, or otherwise becomes aware
of, the abandonment would generally be regarded as a failure to
"promptly" file a petition pursuant to 1.137.
Providing a time period based upon the date of abandonment during
which a petition pursuant to 1.137(b) must be filed to be timely, but
providing no comparable time period within which a petition pursuant to
1.137(a) must be filed to be timely, results in the misapplication of
1.137 on the part of practitioners, which in turn results in an
inordinate administrative burden to the Office. The Office is proposing
to either: (1) eliminate the time period requirement for filing a
petition pursuant to 1.137(b), or (2) provide comparable time period
requirements for filing either a petition pursuant to 1.137(a) and/or
1.137(b), which time period will be based upon the date of the first
Office notification that the application had become abandoned or that
the patent had lapsed. Interested persons are advised to comment on each
of these proposals, since, depending upon further consideration by the
Office and the comments received in response to this notice of proposed
rulemaking, either proposal may be adopted in the final rule.
Providing the period of "within one year of the date on which the
application became abandoned" as the period during which a petition
under 1.137(b) may be timely filed has had the undesirable effect of
inducing applicants, or their representatives, to delay the filing of a
petition under 1.137(b) until the end of this one year period. This
deliberate delay in filing a petition under 1.137(b), or use of this
one year period as an extension of time, is considered an abuse of
1.137(b). See In re Application of S., 8 USPQ2d 1630, 1632 (Comm'r Pats
1988). In addition, 1.137(b) was recently amended to require that any
petition thereunder include a statement that the delay (i.e., the entire
delay), and not merely the abandonment, was unintentional. See Final
Rule, "Changes in Procedures for Revival of Patent Applications and
Reinstatement of Patents," published in the Federal Register at 58 FR.
44277 (August 20, 1993) and in the Patent and Trademark Office Official
Gazette at 1154 Off. Gaz. Pat Office 4 (September 14, 1993). As such,
any intentional delay in filing a petition under 1.137(b) is
prohibited by the current terms of the rule.
Under current rules, in instances in which an applicant, or his or
her representative, intentionally delays the filing of a petition under
1.137(b) until the end of this one year period, but files a petition
under 1.137(b) within this one year period, the petition is timely
under 1.137(b)(4), but the statement that "the delay was
unintentional" is not appropriate. In instances in which the filing of a
petition under 1.137(b) is intentionally delayed until the end of
this one year period, and the applicant, or his or her representative,
miscalculates the actual date of abandonment, or otherwise misdockets
the end of this one year period, the statement that "the delay was
unintentional" is likewise not appropriate, but the petition is also
barred by the terms of the rule. In addition, subsequent petitions under
1.137(a) are, regardless of the original cause of the abandonment,
barred due to the applicant's failure to cause a petition under
1.137(a) to be "promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment." See Application of S., 8
USPQ2d at 1632.
Where the applicant deliberately permits an application to become
abandoned (e.g., due to a conclusion that the claims are unpatentable
(e.g., that a rejection in an Office action cannot be overcome), or that
the invention lacks sufficient commercial value to justify continued
prosecution), the abandonment of such application is considered a
deliberately chosen course of action, and the resulting delay cannot be
considered "unintentional" within the meaning of 37 CFR 1.137(b). See In
re Application of G., 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989). Likewise,
where the applicant deliberately chooses not to either seek or persist
in seeking the revival of an abandoned application, the resulting delay
in seeking revival of the application cannot be considered
"unintentional" within the meaning of 37 CFR 1.137. The correctness or
propriety of the rejection, or other objection, requirement, or
decision, by the Office, the appropriateness of the applicant's decision
to abandon the application or to not seek or persist in seeking revival,
or the discovery of new information or evidence, or other change in
circumstances subsequent to the abandonment or decision not to seek or
persist in seeking revival, are immaterial to such intentional delay
caused by the deliberate course of action chosen by the applicant.
The intentional abandonment of an application, or an intentional
delay in seeking either the withdrawal of a holding of abandonment in or
the revival of an abandoned application, precludes a finding of
unavoidable or unintentional delay pursuant to 1.137. See In re
Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).
Proposed elimination of the time period requirement for filing a
petition pursuant to 1.137(b):
Under this proposal, an intentional delay in the filing of a petition
under 1.137(b) will not result in an untimely petition pursuant to
1.137(b). The statement that "the delay was unintentional," however,
will continue to be inappropriate. That is, where there is an
intentional delay in the filing of a petition under 1.137(b), the
statement that "the delay was unintentional" will continue to be
inappropriate (i.e., the applicant, or his or her representative cannot
properly make this statement, and thus cannot properly request revival
of the application), but 1.137(b) would no longer include an
additional time period requirement. It is anticipated that the effects
of prosecution delay due to abandonment on patent term under Public Law
103-465, and the proposed changes to 1.137(c), will eliminate any
incentive to intentionally delay the revival of an abandoned application.
An applicant, assignee, or his or her representative, desiring the
revival of an application that has inadvertently or unintentionally
become abandoned is expected to act without intentional delay in seeking
revival of the application. The Office does not question whether there
has been an intentional or otherwise impermissible delay when a petition
pursuant to 1.137 is filed within three months of the date the
applicant is first notified by the Office that the application is
abandoned. Where, however, there is a greater delay between the date the
applicant is first notified by the Office that the application is
abandoned and the filing of a petition pursuant to 1.137(b), the
Office may raise the question as to whether the delay was unintentional,
and may require more than a mere statement that the delay was
unintentional. The Office may question whether the delay was
unintentional in instances in which an applicant fails to timely seek
reconsideration of a decision refusing to revive an abandoned
application (see 1.137(d)).
Regardless of whether the time period requirement in 1.137(b) is
eliminated, applicants seeking revival of an abandoned application are
advised to file a petition pursuant to 1.137 within three months of
first notification that the application is abandoned to avoid the
question of intentional delay being raised by the Office or third
parties seeking to challenge any patent issuing from the application.
While this proposal would permit revival pursuant to 1.137(b)
without regard to the period of abandonment, 1.137(a) currently
permits revival pursuant thereto without regard to the period of
abandonment. In addition, the Office currently entertains petitions
pursuant to 1.183, albeit under strictly limited conditions, to waive
the time period requirement in 1.137(b).
Since an application may currently be revived pursuant to 1.137
without regard to the period of abandonment, any current reliance upon
the period of abandonment to ensure that the application will never
issue as a patent is misplaced. Thus, the proposed elimination of the
time period requirement in 1.137(b) would not significantly decrease
the relationship between the period of abandonment of an application and
the likelihood that such application would ever issue as a patent.
In the event that the proposed elimination of the time period
requirement for filing a petition pursuant to 1.137(b) is adopted,
public comment is also requested on the application of this rule change
to applications that were abandoned prior to the effective date of this
rule change. This provision could be made effective as to petitions
filed on or after the effective date of the rule change, which would
permit the revival pursuant to 1.137(b) of applications abandoned for
extended periods of time, provided that the entire delay was
unintentional. This provision could also be made effective as to
applications abandoned on or after the effective date, with the
provisions of current 1.137(b) being applied to applications
abandoned prior to the effective date of the rule change. This provision
could also be made effective as to applications abandoned within and/or
having a petition to revive filed within a specified period preceding
the effective date of the rule change.
Proposed comparable time period requirements each of 1.137(a)
and (b) based upon the date of the first Office notification that the
application had become abandoned or that the patent had lapsed:
The Office is also considering amending each of 1.137(a) and (b)
to include an express requirement that a petition thereunder be filed
within a time certain. Specifically, the Office is also considering
amending 1.137(a) to include the express requirement that a petition
thereunder be filed within three months of the date of the first Office
notification that the application had become abandoned or that the
patent had lapsed and amending 1.137(b) to include the requirement
that a petition thereunder be filed within three months of the date of
the first Office notification that the application had become abandoned
or that the patent had lapsed, or within three months of the date of the
first decision on a timely petition pursuant to 1.137(a).
The "promptly filed" requirement in 1.137(a) is the subject of
various interpretations by applicants seeking revival pursuant to
1.137(a). To avoid misunderstandings as to the timeliness with which the
Office expects an applicant seeking revival pursuant to 1.137(a) to
file a petition thereunder, the Office is considering amending
1.137(a) to include the express requirement that a petition thereunder
be filed within a time certain. Providing a period during which a timely
petition pursuant to 1.137(a) and/or (b) may be filed based upon the
date of the first Office notification that the application had become
abandoned or that the patent had lapsed, rather than the date of
abandonment or patent lapse, is considered a better measure of
timeliness. In addition, providing such a period will reduce uncertainty
as to the expiration of the period during which a timely petition
pursuant to 1.137(b), as well as 1.137(a), may be filed.
Therefore, the Office is also considering basing the period during
which a timely petition under 1.137 (b), as well as 1.137(a), may
be filed on the date of notification of the abandonment, rather than the
date of abandonment, and considers that a period of within three months
of the date of the first Office notification that the application had
become abandoned or that the patent had lapsed to be the appropriate
period.
Under the appropriate circumstances, petitions under 1.183 to
waive any time period requirement in 1.137(a) and/or (b) would be
available. Waiver of any requirement of 1.137 will, in accordance
with 1.183, be strictly limited to an "extraordinary situation" in
which "justice requires" such waiver.
Section 1.137(a)(1), as proposed, would replace the phrase "a
proposed response to continue prosecution of that application, or the
filing of a continuing application, unless either has been previously
filed" with "accompanied by the required reply, unless previously filed.
In a nonprovisional application abandoned for failure to prosecute, the
proposed reply requirement may be met by the filing of a continuing
application. In an abandoned application or a lapsed patent, for failure
to pay any portion of the required issue fee, the proposed reply must be
the issue fee or any outstanding balance thereof."
Section 1.137(b)(1), as proposed, would likewise replace the phrase
"Accompanied by a proposed response to continue prosecution of that
application, or filing of a continuing application, unless either has
been previously filed" with "accompanied by the required reply, unless
previously filed. In a nonprovisional application abandoned for failure
to prosecute, the proposed reply requirement may be met by the filing of
a continuing application. In an abandoned application or a lapsed
patent, for failure to pay any portion of the required issue fee, the
proposed reply must be the issue fee or any outstanding balance thereof."
While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are proposed to be
incorporated together in 1.137, the statutory provisions for the
revival of an application abandoned for failure to timely prosecute and
for failure to timely submit the issue fee are mutually exclusive. See
Brenner v. Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied
393 U.S. 926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the
acceptance of a delayed payment of the issue fee, if the issue fee "is
submitted ... and the delay in payment is shown to have been
unavoidable." 35 U.S.C. 41(a)(7) likewise authorizes the acceptance of
an "unintentionally delayed payment of the fee for issuing each patent."
Thus, 35 U.S.C. 41(a)(7) and 151 each require payment of the issue fee
as a condition of reviving an application abandoned or patent lapsed for
failure to pay the issue fee. Therefore, the filing of a continuing
application without payment of the issue fee or any outstanding balance
thereof is not an acceptable proposed reply in an application abandoned
or patent lapsed for failure to pay any portion of the required issue
fee.
The Notice of Allowance requires the timely payment of the issue fee
in effect on the date of its mailing to avoid abandonment of the
application. In instances in which there is an increase in the issue fee
by the time of payment of the issue fee required in the Notice of
Allowance, the Office will mail a notice requiring payment of the
balance of the issue fee then in effect. The phrase "for failure to pay
any portion of the required issue fee" applies to those instances in
which the applicant fails to pay either the issue fee required in the
Notice of Allowance or the balance of the issue fee required in a
subsequent notice. In such instances, the proposed reply must be the
issue fee then in effect, if no portion of the issue fee was previously
submitted, or any outstanding balance of the issue fee then in effect,
if a portion of the issue fee was previously submitted.
These proposed changes to 1.137(a)(1) and (b)(1) are necessary
to incorporate into 1.137 the revival of abandoned applications and
lapsed patents for the failure to timely reply to an Office requirement
in a provisional application, to timely pay the issue fee, or to timely
pay the full amount of the issue fee.
Sections 1.137(a) and (b), as proposed, would each include a new
paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that
any petition thereunder must be accompanied by any terminal disclaimer
(and fee as set forth in 1.20(d)) required pursuant to 1.137(c),
to include in 1.137(a) and (b) an explicit reference to the
terminal disclaimer requirement in 1.137(c).
Section 1.137(c), as proposed, would change the phrase "any petition
pursuant to paragraph (a) of this section" to "any petition pursuant to
this section." As the period for the timely filing of a petition under
1.137(b) would no longer be based upon the period of abandonment,
administrative convenience no longer justifies not requiring, for all
design applications and all other nonprovisional utility applications
filed prior to June 8, 1995, a terminal disclaimer under 1.137(c) for
all petitions pursuant to 1.137.
In addition, the phrase "not filed within six months of the date of
abandonment of the application" is proposed to be removed from
1.137(c). The only justification for the current six month limitation on
the terminal disclaimer requirement in 1.137(c) is administrative
convenience in treating a petition pursuant to 1.137(a) filed within
six months of the date of abandonment. Since the date of abandonment is
miscalculated in a significant number of instances, this provision of
1.137(c) leads to errors in determining when a terminal disclaimer is
required pursuant to 1.137(c), and thus leads to delays in continuing
prosecution of the abandoned application. In any event, administrative
convenience is no longer considered an adequate justification for the
effective different treatment that would result by operation of Public
Law 103-465 of: (1) applications filed on or after June 8, 1995, except
for design applications, and (2) applications filed prior to June 8,
1995 and all design applications.
Section 1.137(d), as proposed, would change "application" to
"abandoned application or lapsed patent" to incorporate into 1.137
the revival of lapsed patents.
Section 1.137(e), as proposed, would provide that the time periods
set forth in 1.137 may be extended under the provisions of 1.136.
Section 1.137(f), as proposed, will expressly provide that a
provisional application, abandoned for failure to timely reply to an
Office requirement, may be revived pursuant to 1.137(a) or (b) so as
to be pending for a period of no longer than twelve months from its
filing date. In accordance with 35 U.S.C. 111(b)(5), 1.137(f), as
proposed, will clearly indicate that "[u]nder no circumstances will a
provisional application be regarded as pending after twelve months from
its filing date." Sections 1.139(a) and (b) each currently provide that
a provisional application may be revived so as to be pending for a
period of no longer than twelve months from its filing date, and that
under no circumstances will a provisional application be regarded as
pending after twelve months from its filing date.
Section 1.139 is proposed to be removed and reserved and its subject
matter added to 1.137.
Section 1.142 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.144 is proposed to be amended for clarification purposes.
Section 1.146 is proposed to be amended for clarification purposes.
Section 1.152 is proposed to be amended by removing the prohibition
against color drawings and color photographs in design applications.
Section 1.152 would be amended to permit the use of color photographs
and color drawings in design applications subject to the petition
requirements of 1.84(a)(2) inasmuch as color may be an integral
element of the ornamental design. While pen and ink drawings may be
lined for color, a clear showing of the configuration of the design may
be obscured by this drafting method. New technologies, such as
holographic designs, fireworks and laser light displays may not be
accurately disclosed without the use of color.
The term "article" of 1.152 would be replaced by the term "design"
as 35 U.S.C. 171 requires that the claim be directed to the "design for
an article" not the article, per se. Therefore, to comply with the
requirements of 35 U.S.C. 112, first paragraph, it is only necessary
that the design as embodied in the article be fully disclosed and not
the article itself. The term "must" would be replaced by the term
"should" to allow for latitude in the illustration of articles whose
configuration may be understood without surface shading. Clarification
language would be added to note that the use of solid black surfaces
would be permitted for representation of the color black as well as
color contrast and that photographs and ink drawings must not be
combined as formal drawings in one application.
Section 1.154 paragraph (a) would be amended to clarify that a
voluntary submission (see comments under 1.152 relating to
substitution of "design" for "article") may and should be made of "a
brief description of the nature and intended use of the article in which
the design is embodied." It is current practice for design examiners, in
appropriate cases, to inquire as to the nature and intended use of the
article in which a claimed design is embodied. The submission of such
description will allow for a more accurate initial classification, and
aid in providing a proper and complete search at the time of the first
action on the merits. In those instances where this feature description
is necessary to establish a clear understanding of the article in which
the design is embodied, provision of the feature description would help
in reducing pendency by eliminating the necessity for time consuming
correspondence. Specifically, requests for information prior to first
action would be avoided. Absent an amendment requesting deletion of the
description it would be printed on any patent that would issue.
Sections 1.155(b) through (f) are proposed to be removed in view of
the proposed amendments to 1.137.
Section 1.163 is proposed to be amended to remove an unnecessary and
outmoded reference to a "legible carbon copy of the original"
specification for plant applications.
Section 1.165 is proposed to be amended by removing a reference to
the artistic and competent execution of plant patent drawings which is
unnecessary in view of the reference to 1.84.
Section 1.167 is proposed to be amended by removing and reserving
paragraph (b) as unnecessary in view of 1.132.
Section 1.171 would no longer require an order for a title report in
reissue applications as the requirement for a certification on behalf of
all the assignees under concomitantly amended 1.172(a) obviates the
need for a title report and fee therefor. Section 1.171 is also proposed
to be amended by deletion of the requirement for an offer to surrender
the patent, which offer is seen to be redundant in view of 1.178.
Section 1.172 is proposed to be amended to require that all assignees
establish their ownership interest by submission of
vidence of the chain of title or by specifying where such evidence is
recorded in the Office.
Section 1.175 relating to the content of the reissue oath or
declaration (MPEP 1414), as well as 1.48 and 1.324 relating to
correction of inventorship in an application and in a patent,
respectively, are proposed to be amended to remove the requirement for a
showing of a lack of deceptive intent based on facts and circumstances.
As the Office no longer investigates fraud and inequitable conduct
issues and a reissue applicant's statement of a lack of deceptive intent
is normally accepted on its face (See MPEP 1448), the current
requirement in 1.175(a)(5) that it be shown how the error(s) being
relied upon arose or occurred without deceptive intent on the part of
the applicant appears to be unduly burdensome upon applicants and the
Office, and is proposed to be deleted. This would apply to the initially
identified error(s), under paragraph (a), and any subsequently
identified error(s) under paragraph (b). An initial reissue oath or
declaration would be required to be filed pursuant to 1.175(a)
limited to identification of the cause(s) of the reissue, and stating
generally that all errors being corrected in the reissue application at
the time of filing of the oath or declaration arose without deceptive
intent. The current practice under 1.175(a)(3) and (a)(5) of
specifically identifying all errors being corrected at the time of
filing the initial oath or declaration would not be retained.
Paragraph (b)(1) of 1.175 would require a supplemental reissue
oath or declaration for errors corrected that were not covered by an
earlier presented reissue oath or declaration, such as the initial oath
or declaration pursuant to paragraph (a) of this section or one
submitted subsequent thereto (a supplemental oath or declaration under
this paragraph), stating generally that all errors being corrected which
are not covered by an earlier presented oath or declaration pursuant to
paragraphs (a) and (b) of this section arose without any deceptive
intention on the part of the applicant. A supplemental oath or
declaration that refers to all errors that are being corrected,
including errors covered by a reissue oath or declaration submitted
pursuant to paragraph (a) of this section, would be acceptable. The
specific requirement for a supplemental reissue oath or declaration to
cover errors sought to be corrected subsequent to the filing of an
initial reissue oath or declaration is not a new practice, but merely
recognition of a current requirement for a supplemental reissue oath or
declaration when additional errors are to be corrected. However, the
current practice of specifically identifying all supplemental errors
being corrected in a supplemental reissue oath or declaration would
not be retained. A supplemental oath or declaration under paragraph
(b)(1) would be required to be submitted prior to allowance. The
supplemental oath or declaration may be submitted with any
amendment prior to allowance, paragraph (b)(1)(i), or in order to
overcome a rejection under 35 U.S.C. 251 made by the examiner where
there are errors sought to be corrected that are not covered by a
previously filed reissue oath or declaration, paragraph
(b)(1)(ii). Any such rejection by the examiner will include a
statement that the rejection may be overcome by submission of a
supplemental oath or declaration, which oath or declaration states that
the errors in issue arose without any deceptive intent on the part of
the applicant. A supplemental oath or declaration under paragraph (b)
would only be required for errors sought to be corrected during
prosecution of the reissue application. Where an Office action contains
only a rejection under 35 U.S.C. 251 and indicates that a supplemental
oath or declaration under this paragraph would overcome the rejection,
applicants are encouraged to authorize the payment of the issue fee at
the time the supplemental reissue oath or declaration is submitted in
view of the clear likelihood that the reissue application will be
allowed on the next Office action. Such authorization will reduce the
delays in the Office awaiting receipt of the issue fee. Where there are
no errors to be corrected over those already covered by an oath or
declaration submitted under paragraphs (a) and (b)(1) of this section,
e.g., the application is allowed on first action, or where a
supplemental oath or declaration has been submitted prior to allowance
and no further errors have been corrected, a supplemental oath or
declaration under this paragraph, or additional supplemental oath or
declaration under paragraph (b)(1), would not be required.
Paragraph (b)(2) would provide that for any error sought to be
corrected after allowance, e.g., under 1.312, a supplemental oath or
declaration must accompany the requested correction stating that the
error(s) to be corrected arose without any deceptive intent on the part
of the applicant.
The quotes around lack of deceptive intent in 1.175(a)(6) would be
removed as the exact language would not be required. Section
1.175(a)(7), referencing 1.56, is proposed to be removed as
unnecessary in view of the reference to 1.56 in 1.63 that is also
referred to by 1.175(a). Section 1.175(b) noting the ability of
applicant to file affidavits or declarations of others and the ability
of the examiner to require additional information would be deleted as
unnecessary in view of 1.132 and 35 U.S.C 132. A reference to
1.53(b) would be inserted in newly proposed 1.175(c) to clarify that
the initial oath or declaration under 1.175(a) including those
requirements under 1.63 need not be submitted (with the
specification, drawing and claims) in order to obtain a filing date.
37 CFR 1.176 would be amended to permit the Office to require
restriction between claims added in a reissue application and the
original patent claims, where the claims added in the reissue
application are separate and distinct from the original patent claims.
This change is provided to deal with the added examination burden
which results when new inventions are added via the reissue application.
The Office would continue to not require restriction between original
claims of the patent, i.e., between claims that were in the patent prior
to filing the reissue application. In order for restriction to be
required between the original patent claims and the newly added claims,
the newly added claims must be separate and distinct from the original
patent claims. Restriction between multiple inventions in the newly
added claims would also be possible provided the newly added claims are
drawn towards separate and distinct inventions.
Section 1.177 is proposed to be amended to discontinue the current
practice that copending reissue applications must be issued
simultaneously unless ordered otherwise by the Commissioner pursuant to
petition.
Section 1.177 is proposed to be further amended by creating
paragraphs (a) through (d) to clarify when multiple reissue patents may
be issued and the conditions that applicant must comply wi