Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 7, and 10
[Docket #: 960606163-7130-02]
RIN 0651-AA80
Changes to Patent Practice and Procedure
Agency: Patent and Trademark Office, Commerce.
Action: Final Rule.
Summary: The Patent and Trademark Office (Office) is amending the rules
of practice 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. Exemplary changes include:
(1) simplification of the procedure for filing continuation and
divisional applications; (2) amendment of a number of rules to permit
the filing of a statement that errors were made without deceptive
intent, without a requirement for a further showing of facts and
circumstances; and (3) elimination of the requirement that the
inventorship be named in an application on the day of its filing, which
eliminates the need for certain petitions to correct inventorship.
Effective Date: December 1, 1997.
For Further Information Contact: Hiram H. Bernstein or Robert W. Bahr,
Senior Legal Advisors, by telephone at (703) 305-9285, or by mail
addressed to: Box Comments--Patents, Assistant Commissioner for Patents,
Washington, DC 20231 marked to the attention of Mr. Bernstein or by
facsimile to (703) 308-6916.
Supplementary Information: This rule change implements the
Administration's program of reducing the regulatory burden on the
American public in accordance with the changes proposed in the Notice of
Proposed Rulemaking entitled "1996 Changes to Patent Practice and
Procedure" (Notice of Proposed Rulemaking), published in the Federal
Register at 61 FR 49819 (September 23, 1996), and in the Official
Gazette at 1191 Off. Gaz. Pat. Office 105 (October 22, 1996). The
changes involve: (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 management 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.
Changes to proposed rules: This Final Rule contains a number of changes
to the text of the rules as proposed for comment. The significant
changes (as opposed to additional grammatical corrections) are discussed
below. Familiarity with the Notice of Proposed Rulemaking is assumed.
Discussion of Specific Rules and Response to Comments: Forty-three
written comments were received in response to the Notice of Proposed
Rulemaking. The written comments have been analyzed. For contextual
purposes, the comment on a specific rule and response to the comment are
provided with the discussion of the specific rule. Comments in support
of proposed rule changes generally have not been reported in the
responses to comments sections.
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, 7, and 10
are amended as follows:
Part 1:
Section 1.4: Section 1.4, paragraphs (d)(1) and (2), are amended to be
combined into 1.4 paragraphs (d)(1)(i) and (d)(1)(ii). Section
1.4(d)(1)(ii) is also amended to include the phrase "direct or indirect
copy" to clarify that the copy of the document(s) constituting the
correspondence submitted to the Office may be a copy of a copy (of any
generation) of the original document(s), or a direct copy of the
original document(s).
Section 1.4(d)(2) is amended to provide that the presentation to the
Office (whether by signing, filing, submitting, or later advocating) of
any paper by a party, whether a practitioner or non-practitioner,
constitutes a certification under 10.18(b), and that violations of
10.18(b)(2) may subject the party to sanctions under 10.18(c). That
is, by presenting a paper to the Office, the party is making the
certifications set forth in 10.18(b), and is subject to sanctions
under 10.18(c) for violations of 10.18(b)(2), regardless of
whether the party is a practitioner or non-practitioner. The sentence
"[a]ny practitioner violating 10.18(b) may also be subject to
disciplinary action" clarifies that a practitioner may be subject to
disciplinary action in lieu of or in addition to sanctions under
10.18(c) for violations of 10.18(b).
Section 1.4(d)(2) is amended so that the certifications set forth in
10.18(b) are automatically made upon presenting any paper to the Office
by the party presenting the paper. The amendments to 1.4(d) and
10.18 support the 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 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 change to 1.4(d) and 10.18 automatically
incorporates 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 amendments to 1.4(d) and 10.18 support
an amendment to 1.97 ( 1.637 and 1.673 will be reviewed at a
later date in connection with other matters) that changes the
requirements for certifications to requirements for statements. This
change in practice does not affect the separate verification requirement
for an oath or declaration under 1.63, affidavits or declarations
under 1.130, 1.131, and 1.132, or statements submitted in support
of a petition under 5.25 for a 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 is also
maintained, as such requirements are made rarely and only when deemed
necessary (e.g., when persons persist in translations which appear on
their face to be inaccurate). The requirements for certification of
service on parties in 1.248, 1.510, 1.637 and 10.142 are also
maintained.
Section 1.4 is also amended to add 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 transferred
from 1.33(b) for consistent contextual purposes.
Section 1.6: Section 1.6(d)(3) is amended to provide that continued
prosecution applications under 1.53(d) may be transmitted to the
Office by facsimile. However, the procedures described in 1.8 do not
apply to, and no benefit under 1.8 will be given to, a continued
prosecution application under 1.53(d). That is, an applicant may file
a continued prosecution application by facsimile transmission, but the
filing date accorded such continued prosecution application will be the
date the complete transmission of the continued prosecution application
is received in the Office. For example, a continued prosecution
application transmitted by facsimile from Cali fornia at 10:30 pm
(Pacific time) on November 18, 1997, and received in the Office at 1:30
am (Eastern time) on November 19, 1997, will be accorded a filing date
of November 19, 1997. An applicant filing a continued prosecution
application by facsimile transmission bears the responsibility of
transmit ting such application in a manner and at a time that will
ensure its complete and timely ( 1.53(d)(1)(ii)) receipt in the Office.
An applicant filing an application under 1.53(d) (a continued
prosecution application) by facsimile must include an authorization to
charge (at least) the basic filing fee to a deposit account, or the
application must be treated under 1.53(f) as having been filed
without the basic filing fee (as fees cannot otherwise be transmitted by
facsimile). To avoid paying the late filing surcharge under 1.16(e),
an application (including an application under 1.53(d)) must include
the basic filing fee ( 1.16(e)). As such, payment of the basic filing
fee for an application under 1.53(d) on any date later than the
filing date of the application under 1.53(d) (even if paid within the
period for reply to the last action in the prior application) is
ineffective to avoid the late filing surcharge under 1.16(e).
Therefore, unless an application under 1.53(d) filed by facsimile
includes an authorization to charge the basic filing fee to a deposit
account, the applicant will be given a notification requiring payment of
the appropriate filing fee ( 1.53(d)(3)) and the late filing surcharge
under 1.16(e) to avoid abandonment of the 1.53(d) application.
Section 1.6(d)(3) is also amended to delete the reference to
1.8(a)(2)(ii)(D) as this paragraph was deleted in the Final Rule
entitled "Communications with the Patent and Trademark Office"
("Communications with the Office"), published in the Federal Register at
61 FR56439, 56443 (November 1, 1996), and in the Official Gazette at
1192 Off. Gaz. Pat. Office 95 (November 26, 1996).
Section 1.6(d)(6) is amended to reflect the transfer of material from
5.6, 5.7, and 5.8 to 5.1 through 5.5.
Section 1.6(e)(2) is amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.6(f) is added to provide for the situation in which the Office
has no evidence of receipt of an application under 1.53(d) (a
continued prosecution application) transmitted to the Office by
facsimile transmission. Section 1.6(f) requires that a showing
thereunder include, inter alia, a copy of the sending unit's report
confirming transmission of the application under 1.53(d) or evidence
that came into being after the complete transmission of the application
under 1.53(d) and within one business day of the complete
transmission of the application under 1.53(d). Therefore, applicants
are advised to retain copies of the sending unit's reports in situations
in which such unit is used to transmit applications under 1.53(d) to
the Office or otherwise maintain a log book of the transmission of any
application under 1.53(d) to the Office. See also "Communications
with the Patent and Trademark Office" Final Rule.
No comments were received regarding the proposed change to 1.6.
Section 1.8: Section 1.8(a)(2)(i)(A) is amended to specifically refer to
a request for a continued prosecution application under 1.53(d) as a
correspondence filed for the purposes of obtaining an application filing
date, which is excluded by 1.8(a)(2)(i)(A) from the procedure set
forth in 1.8. The purpose of this amendment is to render it clear
that, notwithstanding that a continued prosecution application under
1.53(d) may be filed by facsimile transmission, the procedure set forth
in 1.8 does not apply to a request for a continued prosecution
application under 1.53(d) (or any correspondence filed for the
purpose of obtaining an application filing date). That is, the date on
the certificate of transmission ( 1.8(a)) of an application under
1.53(d) is not controlling (or even relevant), in that an application
under 1.53(d) (a continued prosecution application) filed by
facsimile transmission will not be accorded a filing date as of the date
on the certificate of transmission ( 1.8(a)), unless Office records
indicate, or applicant otherwise establishes pursuant to 1.6(f),
receipt in the Office of the complete application under 1.53(d) on
the date on the certificate of transmission, and that date is not a
Saturday, Sunday, or Federal holiday.
Section 1.8(b)(3) is amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.9: Section 1.9(d) is amended to define a small business
concern as used in 37 CFR Chapter I as any business concern meeting the
size standards set forth in 13 CFR Part 121 to be eligible for reduced
patent fees. The regulations of the Small Business Administration (SBA)
set forth the size standards of a business concern to be eligible for
reduced patent fees. See 13 CFR 121.802. Thus, the language in 1.9(d)
duplicating such size standards is deleted as redundant, and to avoid
confusion in the event that such size standards are subsequently changed
by the SBA. The MPEP will include SBA's regulations concerning size
standards for a business concern to be eligible for reduced patent fees.
Section 1.9(f) is amended to add the phrase "eligible for reduced patent
fees" to clarify that a small entity as used in 37 CFR Chapter I is
limited to an independent inventor, a small business concern or a
non-profit organization that is eligible for reduced patent fees under
35 U.S.C. 41(h)(1).
Section 1.10: Sections 1.10(d) and (e) are amended to remove the
requirement for a statement that is verified.
Comment 1: One comment suggested that 1.10 be amended to clearly set
forth the controlling date for correspondence filed by "Express Mail"
under 1.10.
Response: Section 1.10 was substantially amended in the "Communications
with the Office" Rule Final (discussed supra). Section 1.10(a) as
amended in the aforementioned Final Rule provides that: (1)
correspondence received by the Office that was delivered by the "Express
Mail Post Office to Addressee" service of the United States Postal
Service (USPS) under 1.10 will be considered filed in the Office on
the date of deposit with the USPS; (2) the date of deposit with the USPS
is shown by the "date-in" on the "Express Mail" mailing label or other
official USPS notation; and (3) if the USPS deposit date cannot be
determined, the correspondence will be accorded the Office receipt date
as the filing date.
Section 1.11: Section 1.11(b) is amended to provide that the filing of a
continued prosecution application under 1.53(d) of a reissue
application will not be announced in the Official Gazette. Although the
filing of a continued prosecution application of a reissue application
constitutes the filing of a reissue application, the announcement of the
filing of such continued prosecution application would be redundant in
view of the announcement of the filing of the prior reissue application
in the Official Gazette.
Section 1.14: Section 1.14(a) is amended to: (1) clarify the provisions
of 1.14(a); (2) provide that copies of an application-as-filed may be
provided to any person on written request accompanied by the fee set
forth in 1.19(b), without notice to the applicant, if the application
is incorporated by reference in a U.S. patent; and (3) treat
applications in the file jacket of a pending application under
1.53(d) as pending rather than abandoned in determining whether copies
of, and access to, such applications will be granted.
Under current practice, the public is entitled to access to the original
disclosure (or application-as-filed) of an application, when the
application is incorporated by reference into a U.S. patent. See In re
Gallo, 231 USPQ 496 (Comm'r Pat. 1986). Section 1.14(a)(2) is added to
avoid the need for a petition under 1.14(e) to obtain a copy of the
original disclosure (or application-as-filed) of an application that is
incorporated by reference into a U.S. patent.
Section 1.14 is also amended to add a paragraph (f) to recognize the
change to 1.47(a) and(b) which add exceptions to maintaining pending
applications in confidence by providing public notice to nonsigning
inventors of the filing of a patent application.
Comment 2: One comment stated that the change from "applications
preserved in secrecy" to "applications preserved in confidence" suggests
a lower level of security for the applications permitting greater
discovery by third parties.
Response: The term "secrecy" in 1.14 was changed to "confidence" in
the Final Rule entitled "Miscellaneous Changes in Patent Practice"
("Miscellaneous Changes in Patent Practice"), published in the Federal
Register at 61 FR 42790 (August 19, 1996), and in the Official Gazette
at 1190 Off. Gaz. Pat. Office 67 (September 17, 1996). This change did
not represent a change in practice, but merely conformed the language of
1.14 to that of 35 U.S.C. 122 (the term "secrecy" is a term of art in
regard to matters of national security, and its former use in 1.14
was inappropriate).
Section 1.16: Section 1.16 is amended to add new paragraphs (m) and (n)
including the unassociated text following paragraphs (d) and (l).
No comments were received concerning 1.16.
Section 1.17: Section 1.17 (and 1.136(a)) adds 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 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. Section 1.17(a)(5) provides
the small entity and other than small entity amounts for the new
fifth-month extension fee.
Section 1.17(a) is being amended to permit a petition for a fifth-month
extension of time. As the Office may set a shortened statutory period
for reply of one-month or thirty days, whichever is longer, this
authority for a petition under 1.136(a) will permit an applicant to
extend the period for reply until the six-month statutory maximum (35
U.S.C. 133) without resorting to a petition under 1.136(b), or to
extend by five months, pursuant to 1.136(a), a non-statutory period
for taking action (e.g., the time period in 1.192(a) for filing an
appeal brief).
Section 1.17 paragraphs (e), (f), and (g) are rewritten as 1.17
paragraphs (b), (c), and (d).
Section 1.17(h) is amended to delete references to petitions under
1.47, 1.48, and 1.84. Sections 1.47, 1.48, and 1.84(a) and (b) are
amended to contain a reference to the petition fee set forth in
1.17(i), rather than the petition fee set forth in 1.17(h).
Section 1.17(i) is amended to: (1) add a petition under 1.41 to
supply the name(s) of the inventor(s) after the filing date without an
oath or declaration as prescribed by 1.63, excepting provisional
applications; (2) add a petition under 1.47 for filing by other than
all the inventors or a person not the inventor; (3) add a petition under
1.48 for correction of inventorship, except in provisional
applications; (4) add a petition under 1.59 for expungement and
return of information; (5) delete the references to petitions under
1.60 and 1.62 in view of the deletion of 1.60 and 1.62; (6) add a
petition under 1.84 for accepting color drawings or photographs; and
(7) add a petition under 1.91 for entry of a model or exhibit.
Section 1.17(q) is amended to add a petition under 1.41 to supply the
name(s) of the inventor(s) after the filing date without a cover sheet
as prescribed by 1.51(c)(1) in a provisional application.
Section 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 are also amended to replace the
phrases "response" and "respond" with the phrase "reply" for consistency
with 1.111.
Comment 3: One comment questioned why the terms "respond" and "response"
in the rules of practice were being replaced with the term "reply."
Response: It is appropriate to use a single term ("reply") throughout
the rules of practice, to the extent possible, to refer to that "reply"
by an applicant to an Office action required to avoid abandonment and
continue prosecution.
Comment 4: At least one comment noted that there is no statutory
authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the
fifth month extension of time.
Response: While the Notice of Proposed Rulemaking proposed a fifth month
extension fee of $2010, a Notice of Proposed Rulemaking entitled
"Revision of Patent and Trademark Fees for Fiscal Year 1998" ("1998 Fee
Revision"), published in the Federal Register at 62 FR 24865 (May 7,
1997), and in the Official Gazette at 1198 Off. Gaz. Pat. Office 97 (May
27, 1997), proposed that this fee be set at $2060. The Office is now
adopting the $2060 fifth month extension fee as proposed in the "1998
Fee Revision" Notice of Proposed Rulemaking.
Under 35 U.S.C. 41(a)(8)(C) (1991), the Commissioner is authorized to
charge $340 for any third or subsequent petition for a one-month
extension of time. However, under 35 U.S.C. 41(f), the additional fee
established pursuant to 35 U.S.C. 41(a)(8)(C) for a subsequent petition
for a one-month extension of time has been increased to $560 (i.e., $560
is the current difference (established under 35 U.S.C. 41(a)(8)(C))
between the $1510 fee for a four-month extension of time and the $950
three-month extension of time). The $1510 fee for a four-month extension
of time plus the $560 fee for an additional month is $2070 (this differs
from the $2060 fee proposed in the "1998 Fee Revision" Notice of
Proposed Rulemaking due to rounding). Therefore, the Office is
authorized under 35 U.S.C. 41(a)(8) to establish a fee of $2060 for a
five-month extension of time.
Section 1.21: Section 1.21(l) is amended for consistency with 1.53,
and 1.21(n) is amended to change the reference to an improper
application under 1.60 or 1.62 to a reference to an application in
which proceedings are terminated pursuant to 1.53(e).
No comments were received regarding the proposed change to 1.21.
Section 1.26: Section 1.26(a) is amended to better track the statutory
language of 35 U.S.C. 42(d) and to add 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.
No comments were received regarding the proposed change to 1.26.
Section 1.27: Section 1.27 paragraphs (a) through (d) are amended to
remove the requirement that a statement filed thereunder be "verified,"
and to replace "aver" and "averring" with "state" and "stating." See
comments relating to 1.4(d). Section 1.27(b) is also amended for
clarification with the movement of a clause relating to "any verified
statement" within a sentence.
No comments were received regarding the proposed change to 1.27.
Section 1.28: Section 1.28(a) is amended to remove the requirement for a
statement that is "verified." See comments relating to 1.4(d).
Section 1.28(a) is also amended to provide that a new small entity
statement is not required for a continuing or reissue application where
small entity status is still proper and reliance is placed 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) is further amended
to state that the payment of a small entity basic statutory filing fee
in a nonprovisional application, which claims benefit under 35 U.S.C.
119(e), 120, 121, or 365(c) of a prior application (including a
continued prosecution application) or in a reissue application, where
the prior application or the patent has small entity status, will
constitute a 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 a 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(d) 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.
Comment 5: One comment asked whether the change to 1.28 regarding
small entity requires that a small entity statement be filed with each
continuing application.
Response: While the filing of a continuing application requires a new
determination of entitlement to small entity status, 1.28(a)
continues to permit reliance on a small entity statement filed in a
prior application for nonprovisional continuing applications.
Section 1.28(c) is amended to remove the requirement for a statement of
facts explaining how an error in payment of a small entity fee(s)
occurred in good faith and how and when the error was discovered. A fee
deficiency payment under 1.28(c) must include the difference between
fee(s) originally paid as a small entity and the other than small entity
fee(s) in effect at the time of payment of the complete fee deficiency.
A fee deficiency payment under 1.28(c) will be treated as a
representation by the party submitting the 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 feed efficiency payment
specifically authorized.
Comment 6: One comment suggested that 1.28(c) be amended to clarify
current Office practice regarding the acceptance of papers under
1.28(c)(2) in light of two recent District Court decisions: (1) Haden
Schweitzer Corp. v. Arthur B. Myr Industries, Inc., 901 F.Supp. 1235, 36
USPQ2d 1020 (E.D. Mich. 1995); and (2) DH Technology, Inc. v. Synergstex
International, Inc., 937 F. Supp. 902, 40 USPQ2d 1754 (N.D. Cal. 1996).
Response: The Office is also aware of a recent District Court decision
in Jewish Hospital of St. Louis v. Idexx Laboratories, 951 F. Supp 1, 42
USPQ2d 1720 (D. Me. 1996), that relies on 1.28(c)(2) exclusively. The
changes to 1.28(c) are not directed to the issue of whether
1.28(c)(2) must be viewed as the exclusive remedy. Nevertheless, an
applicant or patentee can avoid undesirable results by not claiming
small entity status unless it is absolutely certain that the applicant
or patentee is entitled to small entity status (i.e., resolving any
doubt,uncertainty, or lack of information in favor of payment of the
full fee). See MPEP 509.03 ("Small entity status must not be established
unless the person or persons signing the . . . statement can
unequivocally make the required self-certification" (emphasis added)).
Section 1.33: Section 1.33 is amended to 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) is 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 was in 1.33(a), would be inconsistent with unamended
1.63(c) that states that the residence must appear in the oath or
declaration. The requirement for placement of the post office address is
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 includes a
reference to 1.34(b), use of the terms "provided," "furnished" rather
than "notified," and "application" rather than "case," and deletion of
the expression "of which the Office."
The former language of 1.33(b) is transferred to new 1.4(g).
Section 1.33(b) is amended to set forth the signature requirement for
papers filed in an application (formerly in 1.33(a)). Section 1.33(b)
is specifically amended to provide that amendments and other papers
filed in an application must be signed by: (1) an attorney or agent of
record appointed in compliance with 1.34(b); (2) a registered
attorney or agent not of record who acts in are presentative capacity
under the provisions of 1.34(a); (3) the assignee of record of the
entire interest (if there is such); (4) an assignee of record of an
undivided part interest (if there is such), so long as the amendment or
other paper is also signed by any assignee(s) of the remaining interest
and any applicant retaining an interest; or (5) all of the applicants,
including applicants under 1.42, 1.43 and 1.47, unless there is an
assignee of record of the entire interest and such assignee has chosen
to prosecute the application to the exclusion of the applicant(s), and,
as such, has taken action in the application in accordance with
3.71 and 3.73. This is not a change in practice, but simply a
clarification of current signature requirements.
No comments were received regarding the proposed change to 1.33.
Section 1.41: Section 1.41(a) (and 1.53) is amended to no longer
require that a patent be applied for in the name of the actual inventors
for an application for patent to be accorded a filing date. The
requirement for use of full names is moved to 1.63(a) for better
context. Section 1.41(a) is specifically amended: (1) to provide that a
patent is applied for in the name(s) of the actual inventor(s); (2) to
add paragraphs (a)(1) and (a)(2) indicating how the inventorship is set
forth in a nonprovisional and provisional application; and (3) to add
paragraph (a)(3) indicating the need for an identifier consisting of
alphanumeric characters if no name of an actual inventor is provided.
Section 1.41(a)(1) provides that the inventorship of a nonprovisional
application is that inventorship set forth in the oath or declaration as
prescribed by 1.63, except as provided for in 1.53(d)(4) and
1.63(d). Section 1.41(a)(1) also provides that if an oath or declaration
as prescribed by 1.63 is not filed during the pendency of a
nonprovisional application, the inventorship is that inventorship set
forth in the application papers filed pursuant to 1.53(b), unless a
petition under this paragraph accompanied by the fee set forth in
1.17(i) is filed supplying the name(s) of the inventor(s).
Section 1.41(a)(2) provides that the inventorship of a provisional
application is that inventorship set forth in the cover sheet as
prescribed by 1.51(c)(1). Section 1.41(a)(2) also provides that if a
cover sheet as prescribed by 1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
1.53(c), unless a petition under this paragraph accompanied by the fee
set forth in 1.17(q) is filed supplying the name(s) of the
inventor(s).
35 U.S.C. 120 and 1.78(a) require, inter alia, that an application
have at least one inventor in common with a prior application to obtain
the benefit of the filing date of such application. Considering the
executed oath or declaration (or cover sheet in a provisional
application) the sole mechanism for naming the inventor(s) would operate
as a trap in the event that an application were abandoned prior to the
filing of an oath or declaration in favor of a continuing application
(or in the event that a cover sheet was not filed in a provisional
application). To avoid this result, 1.41 as adopted provides that the
inventorship is that inventorship named in an executed oath or
declaration under 1.63 (or in the cover sheet under 1.51(c)(1) in
a provisional application), but that if no executed oath or declaration
under 1.63 (or cover sheet under 1.51(c)(1) in a provisional
application) is filed during the pendency of the application, the
inventorship will be considered to be the inventor(s) named in the
original application papers.
In the peculiar situation in which no inventor is named in the original
application papers (or the correct inventor(s) are not named in the
original application papers), and no executed oath or declaration under
1.63 (or cover sheet under 1.51(c)(1) in a provisional application)
is filed during the pendency of the application, it will be necessary
for the applicant to file a petition under 1.41(a) (and appropriate
fee) to name the inventor(s). No explanation (other than that the paper
is supplying or changing the name(s) of the inventor(s)) or showing off
acts concerning the inventorship or any delay in naming the inventorship
is required or desired in a petition under 1.41(a). The petition fee
is required to cover (or defray in a provisional application) the costs
of updating the Office's records for the application.
Where no inventor(s) is named on filing, the Office requests that an
identifying name be submitted for the application. The use of very short
identifiers should be avoided to prevent confusion. Without supplying at
least a unique identifying name 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 should be specific, alphanumeric characters of reasonable length,
and should 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 include the name of the
person(s) believed to be the inventor for identification purposes.
Failure to apprise the Office of the application identifier being used
may 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.
As any inventor(s) named in the original application papers is
considered to be the inventor(s) only when no oath or declaration under
1.63 is filed in a nonprovisional application or cover sheet under
1.51(c)(1) filed in a provisional application, the recitation of the
inventorship in an application submitted under 1.53(b) or (d) without
an executed oath or declaration or cover sheet, respectively, 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 1.41 or 1.48.
Comment 7: One comment noted that when an application is filed only an
alphanumeric identifier may be used, which would of necessity require a
correction of inventorship, and questioned how a verified statement
under 1.48(a) could be filed as there would be no person to sign such
statement, whether the Office will require that the name(s) of the
inventor(s) be submitted within a specified period, and whether the
filing date will be lost if the name(s) of the inventor(s) is not
submitted within such period.
Response: The name(s) of the inventor(s) in a nonprovisional application
are provided in the oath or declaration under 1.63 ( 1.41(a)(2))
and the name(s) of the inventor(s) in a provisional application are
provided in the cover sheet ( 1.41(a)(3)). Thus, an application filed
without the name(s) of the inventor(s) must also have been filed without
an oath or declaration under 1.63 (nonprovisional) or cover sheet
(provisional).
The Office will set a time period in a nonprovisional application filed
without an oath or declaration under 1.63 for the filing of such an
oath or declaration ( 1.53(f)). The Office will set a time period in a
provisional application filed without a cover sheet for the filing of
such cover sheet ( 1.53(g)). The subsequently filed oath or
declaration or cover sheet will provide the name(s) of the inventor(s).
No petition under 1.48(a) would be required where there was an
alphanumeric identifier (and not a name of a person) or where the
person(s) set forth as the inventor(s) was incorrect.
In the event that an oath or declaration or cover sheet is not timely
filed, the application will become abandoned and the inventorship will
be considered to be the inventor(s) named in the original application
papers. The failure to timely file an oath or declaration, cover sheet,
or the name(s) of the inventor(s) is not a filing date issue.
Comment 8: One comment thought that the proposed change eliminating the
need to identify any inventor would lead to sloppy filing procedures and
that it should in almost all cases be possible for practitioners to
correctly identify the inventors at the time of filing.
Response: Experience has demonstrated that a significant number of
applications filed under 1.53(b) without an executed oath or
declaration have been filed with incorrect inventorships with
explanations running from "there was no time to investigate the
inventorship" to "the inventors contacted either did not understand the
inventorship requirements under U.S. patent law or did not appreciate
that the claims as filed included or did not include the contribution of
the omitted or erroneously added inventor." Additionally, Office
experience is that while almost all 1.48(a) petitions concerning such
matters are eventually granted, only a small percentage are granted on
the initial petition thereby causing a prolonged prosecution period,
which is undesirable in view of the amendment to 35 U.S.C. 154 contained
in the Uruguay Round Agreements Act (URAA), Pub. L. 103-465, 108 Stat.
4809 (1994).
Section 1.47: Section 1.47 paragraphs (a) and (b) are amended, pursuant
to 35 U.S.C. 116 and 35 U.S.C 118, to provide for publication in the
Official Gazette of a notice of filing for all applications, except for
continued prosecution applications under 1.53(d), 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,
after grant of the 1.47 petition, will include: The application
number, filing date, invention title and name(s) of the nonsigning
inventor(s). Letters returned as undeliverable are difficult to match
with the related application file, and when matched with the file, the
applications are burdensome to flag as requiring further action by the
Office. Accordingly, the return of letters is not a desirable means of
triggering publication of a notice to a nonsigning inventor as to the
filing of the application. Furthermore, when a returned letter is used
as such a trigger, another review of the application must be made for
returned correspondence. As the best time for review of returned letters
is after allowance, but before issuance, of an application, processing
of the application would be delayed and done at a time that could be
best used for printing related processing requirements. Printing of
notice of the filing of all applications wherein 1.47 status is
granted does not require any such review to be made. In order to best
balance the obligation of providing notice to inventors and efficient
processing of applications, notice in the Official Gazette of the filing
of 1.47 applications will be prepared essentially at the same time
that the letter notice is directly sent to the nonsigning inventor.
Paragraphs (a) and (b) of this section are also amended to exclude the
filing of continued prosecution applications under 1.53(d) from the
notice requirement.
Section 1.47 is also amended for clarification purposes. A reference to
an "omitted inventor" in 1.47(a) is replaced with "nonsigning
inventor." The statements in 1.47 paragraphs (a)and (b) that a patent
will be granted upon a satisfactory showing to the Commissioner are
deleted as unnecessary. Section 1.47(b) is amended to clarify that it
applies only where none of the inventors are willing or can be found to
sign the oath or declaration by substitution of "an inventor" by "all
the inventors." The use of "must state" in regard to the last known
address is 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 is deleted as redundant in view of the
requirement appearing earlier in 1.47(b) calling for "proof of
pertinent facts."
Comment 9: One comment believed that the amendment to 1.47(b) results
in a change in practice permitting an assignee to proceed thereunder
only where all the inventors refuse to sign, and that the assignee
should not be precluded from making the required declaration where only
one inventor refuses to cooperate as the other inventors may not have
personal knowledge of the facts.
Response: While the specific language of 1.47(b) is amended to recite
the condition that "all the inventors refuse to execute an application"
the prior use of the term "inventor" was intended to mean and was
interpreted as meaning all inventors. See MPEP 409.03(b). Accordingly,
the language clarification is not a change in practice.
Although it is unclear as to what particular "facts" the comment is
addressed to that the other inventors would not have personal knowledge
of, facts as to the inventorship of the noncooperating inventor would
better lie with the other inventors who are after all required to be
joint inventors, 35 U.S.C. 116, and therefore the other inventors should
have the best knowledge of the facts required for a declaration under
1.63. Any declaration of facts, in support of the petition, to show,
e.g., that an inventor has refused to sign a declaration after having
been given an opportunity to do so, should be made by someone with
first-hand knowledge of the events, such as the attorney who presented
the inventor with the application papers.
Section 1.48: Section 1.48 provides for correction of inventorship in an
application (other than a reissue application). Section 1.324 provides
for correction of inventorship in a patent. Sections 1.171 and 1.175
provide for correction of inventorship in a patent via a reissue
application.
Section 1.48 is amended in its title to clarify that the section
concerns patent applications, other than reissue applications, and not
patents. Where a patent names an incorrect inventive entity, the
inventorship error may be corrected by reissue. See MPEP 1402. Where a
reissue application names an incorrect inventive entity in the executed
reissue oath or declaration (whether the reissue application is filed
for the sole purpose or in-part to correct the inventorship, or is filed
for purposes other than correction of the inventorship), a new reissue
oath or declaration in compliance with 1.175 may be submitted with
the correct inventorship without a petition under 1.48. This is
because it is the inventorship of the patent being reissued that is
being corrected (via a reissue application).
35 U.S.C. 251, 3, provides that the provisions of title 35, U.S.C.,
relating to applications apply to reissue applications. 35 U.S.C. 116,
3, authorizes the Commissioner to permit correction of inventorship
in an application under such terms as the Commissioner prescribes. The
Commissioner has determined that correction of inventorship in a reissue
application may be accomplished under 35 U.S.C. 251 via the reissue oath
or declaration, without resort to a petition under 1.48. Therefore,
1.48 has been amended to specifically exclude its applicability to
correction of inventorship in a reissue application.
Section 1.48(a) will 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 amended to apply
only to correction of inventor or inventors, in applications, other than
reissue applications, from that named in an originally filed executed
oath or declaration andnot to the naming of inventors or others for
identification purposes under 1.41. The statement to be submitted
will 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 requirement that any amendment of the inventorship under
1.48(a) be "diligently" made has been removed. The applicability of
a rejection under 35 U.S.C. 102(f) or (g) against an application with
the wrong inventorship set forth therein and any patent that would issue
thereon is a sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
Comment 10: Two comments expressed opposition to deletion of the
diligence requirement in 1.48 paragraphs (a) through (c) in that
removal thereof would seem to promote delay in correction of the
inventorship and decrease the importance of having the correct
inventorship.
Response: In addition to the motivation noted in the explanation of the
rules for not allowing a patent to issue with improper inventorship, the
criteria for correction of the inventorship becomes more restrictive
subsequent to issuance under 1.324 (having a statutory basis under 35
U.S.C. 256) than under 1.48(a) (having a statutory basis under 35
U.S.C. 116). 35 U.S.C. 256 requires participation by all the parties
including each original named inventor, which participation may be
harder to obtain after the patent has issued. Petitions under 1.48(a)
filed earlier while the application is pending may seek waiver under
1.183 of participation of some of the parties needed to participate.
Additionally, petitions under 1.48 in pending applications are not
entered as a matter of right in rejected (the criteria of 1.116
applies) or allowed (the criteria of 1.312 applies) applications. See
1.48(a) and MPEP 201.03.
A clarifying reference to 1.634 is 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 requires 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
requirement is deleted. Additionally, the persons from whom a statement
is required now includes any person who through error was not named 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 is amended to remove the requirement that the statement be
verified in accordance with the change to 1.4(d)(2) and 10.18.
Comment 11: One comment opposed the removal of the Office from examining
the issue of inventorship as substantive law invalidates patents that
have issued in the names of incorrect inventors and the Office is
charged with the duty of examining applications for the purpose of
denying issue to those applications that do not meet the standards of
patentability. Where an oath has originally been filed asserting the
proper inventor is one entity and a subsequent paper asserts that the
proper inventor is another, under such circumstances "the facts are
inherently suspect" and an investigation by the Office is warranted and
required by statute.
Response: The amendments to 1.48 have otherwise received overwhelming
support.
The Office has pursued the existence of improper inventorship in
applications by rejection under 35 U.S.C. 102(f) or (g) and will
continue to do so independent of the change in the verified statement
requirements under 1.48 paragraphs (a) or (c). A request to change
inventorship, however, often requested by the current inventors or
assignee on their own initiative is not seen to be inherently fraught
with deceptive intent as to warrant a close and detailed examination
absent more. A statement that the error was made without deceptive
intent is seen to be a sufficient investigation complying with the
statutory requirement under 35 U.S.C. 116, particularly as most
petitions are eventually granted or an application can be refiled naming
the new desired inventive entity. Refiling of the application to change
the inventorship will not cause the Office, absent more, to initiate an
investigation as to the correct inventorship or cause a rejection under
35 U.S.C. 102(f) or (g) to be made. Additionally, it should be noted
that the Office views a petition under 1.48 to be a procedural matter
and not to represent a substantive determination as to the actual
inventorship. See MPEP 201.03, Verified Statement of Facts.
For those situations where there was deceptive intent, the Office is
lacking certain necessary tools for a thorough inquiry (e.g., subpoena
authority) to ascertain the truth thereof (as in other situations under
1.28 and 1.56). However, the inquiry cannot be waived by the Office
due to the statutory requirement under 35 U.S.C. 116. There is no other
reasonable course of action than to accept as an explanation for the
execution of a 1.63 oath or declaration setting forth an erroneous
inventive entity that the inventor did not remember the contribution of
the omitted inventor at the time the oath or declaration was executed
(absent subpoena power and inter parties hearings), and therefore
further inquiries into the matter other than a statement of lack of
deceptive intent are a waste of Office resources.
Comment 12: One comment suggested that in limiting the submission of a
verified statement of facts to only the parties being added or deleted
as inventors, agreement of the original named inventors should also be
obtained as is currently done when verified statements of facts from all
the original named inventors are required.
Response: Agreement or acquiescence of the original named inventors, to
the extent that they remain as inventors, to the new inventorship will
be obtained through the retained requirement that the actual inventive
entity complete a new oath or declaration under 1.63, which must set
forth the new inventive entity. Additionally, through the rule changes
to this section and 1.28 and 1.175 the Office is decreasing its
investigation of claims relating to a lack of deceptive intent. The
remaining purpose of these rules is to force the applicant(s) to merely
make an assertion as to a lack of deceptive intent thereby permitting
subsequent reviewers (tribunals or otherwise) to determine, in light of
all the available facts, whether the applicant(s) complied with the
statute.
Section 1.48(a)(2) is 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 is only 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, apetition 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) is 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) is also 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) is also amended to remove the requirement that a
petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102(f) or (g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
Section 1.48(b) is amended to have a clarifying reference to 1.634
added for instances when inventorship correction is necessary during an
interference.
Comment 13: A comment noted that the literal wording of 1.48(b)
permits correction thereunder only where the correct inventors were
named on filing thereby excluding correction under 1.48(b) where an
incorrect inventorship was named on filing that was subsequently
corrected under 1.48(a) and, subsequent to the correction prosecution
of the application, required additional correction under 1.48(b).
Response: The comment is accepted and 1.48(b) has been modified to
delete "when filed" after "nonprovisional application" for clarification
purposes. Additionally, the term "originally" in the first sentence of
paragraph (b) has been replaced with "currently."
Section 1.48(c) is amended so that a petition thereunder no longer needs
to meet the current requirements of 1.48(a), which are also 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 is 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 paragraphs (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 previous
requirement for diligence in filing the petition based on an amendment
to the claims is not 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.
Section 1.48(c)(2) is amended to 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 is only 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) is 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. A citation to 3.73(b) is presented.
Section 1.48(d) is 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) is also clarified to specify that 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.
Section 1.48(d)(1) is also amended to remove the requirement that the
statement be verified in accordance with the change to 1.4(d)(2)
and 10.18.
Section 1.48(e)(1) is 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," requiring only a statement that the inventorship
error occurred without deceptive intent. Paragraph (e)(1) is also
amended to remove the requirement that the statement be verified in
accordance with the change to 1.4(d)(2) and 10.18. 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 (35 U.S.C. 111(b)(5)), 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 subsequently filed
nonprovisional application.
Section 1.48(e)(3) is 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. A
reference to 3.73(b) is added.
Section 1.48(f) is added to provide that the later filing of an executed
oath or declaration (or cover sheet ( 1.51(c)(1)) in a provisional
application) during the pendency of the application would act to correct
the inventorship without a specific petition for such correction and
will be used to further process the application notwithstanding any
inventorship or other identification name earlier presented.
Section 1.48(g) is 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: Section 1.51, paragraphs (a)(1) and (a)(2), are re-written
as 1.51, paragraphs(b) and (c), respectively, and 1.51(b) is
re-written as 1.51(d). Section 1.51(c) covering the use of an
authorization to charge a deposit account is removed as unnecessary in
view of 1.25(b).
No comments were received regarding the proposed change to 1.51.
Section 1.52: Section 1.52, paragraphs (a) and (d), are amended to
remove the requirement that the translation be verified in accordance
with the change to 1.4(d)(2) and 10.18. Section 1.52, paragraph
(c), is amended to remove the reference to 1.123 through 1.125 to:
(1) reflect a transfer of material from 1.123 and 1.124 to
1.121; (2) further clarify that 1.125 is not a vehicle amendment of
an application; and (3) to clarify that alterations to application
papers may be made on, as well as before, the signing of the oath or
declaration. Section 1.52, paragraphs (a) and (d), are also amended to
clarify the need for a statement that the translation being offered is
an accurate translation, as in 1.69(b).
Comment 14: Two comments were received asking whether the attorney can
sign the statement that the translation is accurate, and how much
firsthand knowledge does a practitioner need to know that the
translation is accurate.
Response: The Office will accept a statement that the translation is
accurate from any party. However, any party signing such statement must
keep in mind the averments that are made under 1.4(d) and 10.18.
The actual firsthand knowledge needed by a practitioner is that amount
of knowledge to comply with the averments in 1.4(d) and 10.18.
Comment 15: A comment questioned whether there is any difference between
the previous language of "verified translation" and the present language
of "accurate translation."
Response: The previous language was directed at a verification that the
translation is accurate. A verification requirement is now unnecessary
due to the amendments to 1.4(d) and 10.18. Thus, 1.52(d) is
amended to include the more direct term "accurate."
Section 1.53: Section 1.53 is amended to include headings for each
paragraph for purposes of clarity.
Section 1.53(a) is amended to state that "[a]ny papers received in the
Patent and Trademark Office which purport to be an application for a
patent will be assigned an application number for identification
purposes." That is, the Office will refer to papers purporting to be an
application for a patent as an "application" and assign such
"application" an application number for identification purposes. This
reference, however, does not imply that such papers meet the
requirements in 1.53(b) to be accorded a filing date or constitute an
"application" within the meaning of 35 U.S.C. 111.
Section 1.53(b) is amended to provide that: (1) the filing date of an
application for patent filed under 1.53(b) is the date on which a
specification as prescribed by 35 U.S.C. 112 containing a description
pursuant to 1.71 and at least one claim pursuant to 1.75, and any
drawing required by 1.81(a) are filed in the Office; (2) no new
matter may be introduced into an application after its filing date; (3)
a continuation or divisional application filed by all or by fewer than
all of the inventors named in a prior nonprovisional application may be
filed under 1.53(b) or (d); and (4) a continuation or divisional
application naming an inventor not named in the prior nonprovisional
application or a continuation-in-part application must be filed under
1.53(b).
Section 1.53(c) is amended to provide for provisional applications
(formerly provided for in 1.53(b)(2)). Section 1.53(c) includes the
language of former 1.53(b)(2), with certain changes for purposes of
clarity. Section 1.53(c)(i), for example, includes language requiring
either the provisional application cover sheet required by 1.51(c)(1)
or a cover letter identifying the application as a provisional
application. The cover letter may be an application transmittal letter
or some other paper identifying the accompanying papers as a provisional
application.
Section 1.53(d) is amended to provide for continued prosecution
applications. Section 1.53(d)(1) provides that a continuation or
divisional application, but not a continuation-in-part, of a prior
nonprovisional application may be filed as a continued prosecution
application under 1.53(d), subject to the conditions specified in
paragraph (d)(1)(i) and (d)(1)(ii). That is, an application under
1.53(d) cannot be a continuation-in-part application, and the prior
application cannot be a provisional application.
Section 1.53(d)(1)(i) specifies that the prior application be either:
(1) complete as defined by 1.51(b) and filed on or after June 8,
1995; or (2) the national stage of an international application in
compliance with 35 U.S.C. 371 and filed on or after June 8, 1995. The
phrase "prior" application in 1.53(d)(1) means the application
immediately prior to the continued prosecution application under
1.53(d), in that a continued prosecution application under 1.53(d)
may claim the benefit under 35 U.S.C. 120, 121, or 365(c) of
applications filed prior to June 8, 1995 so long as the application that
is immediately prior to the continued prosecution application under
1.53(d) was filed on or after June 8, 1995.
Section 1.53(d)(1)(ii) specifies that the application under 1.53(d)
be filed before the earliest of: (1) payment of the issue fee on the
prior application, unless a petition under 1.313(b)(5) is granted in
the prior application; (2) abandonment of the prior application; or (3)
termination of proceedings on the prior application.
Section 1.53(d)(2) provides that the filing date of a continued
prosecution application is the date on which a request on a separate
paper for an application under 1.53(d) is filed. That is, a request
for an application under 1.53(d) cannot be submitted within papers
filed for another purpose (e.g., the filing of a "conditional" request
for a continued prosecution application within an amendment after final
for the prior application is an improper request for a continued
prosecution application under 1.53(d)).
In addition, a "conditional" request for a continued prosecution
application will not be permitted. Any "conditional" request for a
continued prosecution application submitted (as a separate paper) with
an amendment after final in an application will be treated as an
unconditional request for a continued prosecution application of such
application. This will result (by operation of 1.53(d)(2)(v)) in the
abandonment of such (prior) application, and (if so instructed in the
request for a continued prosecution application) the amendment after
final in the prior application will be treated as a preliminary
amendment in the continued prosecution application.
Section 1.53(d)(2) further provides that an application filed under
1.53(d): (1) must identify the prior application ( 1.53(d)(i)); (2)
discloses and claims only subject matter disclosed in the prior
application (i.e., is a continuation or divisional, but not a
continuation-in-part) ( 1.53(d)(1)(ii)); (3) names as inventors the
same inventors named in the prior application on the date the
application under 1.53(d) was filed, except as provided in
1.53(d)(4) ( 1.53(d)(2)(iii)); (4) includes the request for an
application under 1.53(d), will utilize the file jacket and contents
of the prior application, including the specification, drawings and oath
or declaration, from the prior application to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes ( 1.53(d)(2)(iv)); and (5) is
a request to expressly abandon the prior application as of the filing
date of the request for an application under 1.53(d) (
1.53(d)(2)(v)).
Section 1.53(d)(3) provides that the filing fee for a continued
prosecution application filed under 1.53(d) is: (1) the basic filing
fee as set forth in 1.16; and (2) any additional 1.16 fee due
based on the number of claims remaining in the application after entry
of any amendment accompanying the request for an application under
1.53(d) and entry of any amendments under 1.116 not entered in the
prior application which applicant has requested to be entered in the
continued prosecution application. See 35 U.S.C. 41(a)(1)-(4).
Section 1.53(d)(4) provides that an application filed under 1.53(d)
may be filed by fewer than all the inventors named in the prior
application, provided that the request for an application under
1.53(d) when filed is accompanied by a statement requesting deletion of
the name or names of the person or persons who are not inventors of the
invention being claimed in the new application, and that no person may
be named as an inventor in an application filed under 1.53(d) who was
not named as an inventor in the prior application on the date the
application under 1.53(d) was filed, except by way of a petition
under 1.48. Thus, an application under 1.53(d) must name as
inventors either the same as ( 1.53(d)(2)(iii)) or fewer than all of (
1.53(d)(4)) the inventors named in the prior application. A request
for an application under 1.53(d) purporting to name as an inventor a
person not named as an inventor in the prior application (even if
accompanied by a new oath or declaration under 1.63 listing that
person as an inventor) will be treated as naming the same inventors
named in the prior application ( 1.53(d)(2)(iii)).
Section 1.53(d)(5) provides that: (1) any new change must be made in the
form of an amendment to the prior application; (2) no amendment in an
application under 1.53(d) (a continued prosecution application) may
introduce new matter or matter that would have been new matter in the
prior application; and (3) any new specification filed with the request
for an application under 1.53(d) will not be considered part of the
original application papers, but will be treated as a substitute
specification in accordance with 1.125. Pursuant to the provisions of
1.53(d)(5), where applicant desires entry of an amendment in the
application under 1.53(d) that was previously denied entry under
1.116 in the prior application, the applicant must request its entry
(and pay any additional claims fee required by 1.53(d)(3)(ii)) in the
application under 1.53(d) prior to action by the Office in the
application under 1.53(d). Any amendment submitted with the request
for an application under 1.53(d) that seeks to add matter that would
have been new matter in the prior application will be objected to under
1.53(d), and the applicant will be required to cancel the subject
matter that would have been new matter in the prior application.
Section 1.53(d)(6) provides that the filing of a continued prosecution
application under 1.53(d) will be construed to include a waiver of
confidentiality 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, copies of, or information concerning either the prior
application or any continuing application filed under the provisions of
this paragraph may be given similar access to, copies of, or similar
information concerning, the other application(s) in the application file.
Section 1.53(d)(7) provides that a request for an application under
1.53(d) is a specific reference under 35 U.S.C. 120 to every application
assigned the application number identified in such request, and that no
amendment in a continued prosecution application under 1.53(d) shall
delete this specific reference to any prior application. That is, other
than the identification of the prior application in the request required
by 1.53(d) for a continued prosecution application, a continued
prosecution application needs no further identification of or reference
to the prior application (or any prior application assigned the
application number of such application under 1.53(d)) under 35 U.S.C.
120 and 1.78(a)(2).
Section 1.53(d)(8) provides that in addition to identifying the
application number of the prior application, applicant is urged to
furnish in the request for an application under 1.53(d) the following
information relating to the prior application to the best of his or her
ability: (1) title of invention; (2) name of applicant(s); and (3)
correspondence address.
Section 1.53(d)(9) provides that: (1) envelopes containing only requests
and fees for filing an application under 1.53(d) should be marked
"Box CPA" and (2) requests for an application under 1.53(d) filed by
facsimile transmission should be clearly marked "Box CPA."
Section 1.53(e)(1) provides that if an application deposited under
1.53 paragraphs (b), (c), or (d) does not meet the respective
requirements in 1.53 paragraphs (b), (c), or (d) to be entitled to a
filing date, applicant will be so notified, if a correspondence address
has been provided, and given a time period within which to correct the
filing error.
Section 1.53(e)(2) provides that: (1) any request for review of a
notification pursuant to 1.53(e)(1), 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 1.53(e); (2) any
petition under 1.53(e) must be accompanied by the fee set forth in
1.17(i) in an application filed under 1.53 paragraphs (b) or (d), and
the fee set forth in 1.17(q) in an application filed under
1.53(c); and (3) in 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
(e)(1) of this section will be the date the filing error is corrected.
Section 1.53(e)(3) provides that if an applicant is notified of a filing
error pursuant to 1.53(e)(1), but fails to correct the filing error
within the given time period or otherwise timely ( 1.181(f)) take
action pursuant to 1.53(e)(2), proceedings in the application will be
considered terminated, and that where proceedings in an application are
terminated pursuant to 1.53(e)(3), the application may be disposed
of, and any filing fees, less the handling fee set forth in 1.21(n),
will be refunded.
Section 1.53(f) is amended to include the language of former
1.53(d)(1) and to provide that the oath or declaration required for a
continuation or divisional application under 1.53(b) may be a copy of
the executed oath or declaration filed in the prior application (under
1.63(d)).
Section 1.53 paragraphs (g), (h), (i), and (j) are added and include the
language of former 1.53 paragraphs (d)(2), (e)(1), (e)(2), and (f),
respectively.
Comment 16: The majority of the comments supported the deletion of
1.60 and 1.62 in favor of the proposed amendment to 1.53.
Response: The Office is deleting 1.60 and 1.62 in favor of an
amended 1.53.
Comment 17: Several comments suggested that the Office adopt a continued
prosecution procedure for applications filed on or after June 8, 1995
similar to the practice set forth in 1.129(a), rather than the
continued prosecution application practice set forth in 1.53(d).
Response: Section 532(a)(2)(A) of Pub. L. 103-465 provides specific
authorization for the practice set forth in 1.129(a). There is
currently no statutory authority for the Office to simply charge the
patent fees set forth in 35 U.S.C. 41(a) for further examination of an
application. 35 U.S.C. 41(d) would authorize the Office to further
examine an application for a fee that recovers the estimated average
cost to the Office of such further examination; however, as 35 U.S.C.
41(h) is applicable only to fees under 35 U.S.C. 41(a) and (b), the
Office would not be authorized to provide a small entity reduction in
regard to such fee. Thus, the only mechanism by which the Office may
provide further examination for a fee to which the small entity
reduction is applicable is via a continuing application.
Section 209 of H.R. 3460, 104th Cong., 2d Sess. (1996), would have
provided statutory authority for the further reexamination of an
application for a fee to which the small entity reduction was
applicable. Section 209 of H.R. 400, 105th Cong., 1st Sess. (1997),
ifenacted, will provide statutory authority for the further
reexamination of an application for a fee to which the small entity
reduction will be applicable.
Comment 18: One comment stated that the combination of 1.53, 1.60,
and 1.62 into a single 1.53 was complex and confusing. Another
comment suggested that 1.53 be split into a number of sections, or
that headings be used in 1.53 in the manner that headings are used in
1.84 and 1.96.
Response: Placing the provisions of 1.53 into multiple sections,
rather than multiple paragraphs of a single section, would not result in
a simplification of its provisions. The Office considers it appropriate
to place the filing provisions concerning all applications
(nonprovisional, provisional, and continued prosecution) into a single
section to reduce the confusion as to the filing requirements for any
application for patent. Section 1.53 as adopted includes headings in
each paragraph of 1.53 to indicate the subject to which each of these
paragraphs pertains.
Comment 19: One comment suggested amending 1.53 to require applicants
to indicate changes to the disclosure in a continuation or divisional
application.
Response: The suggestion is not adopted. The Office did not propose to
amend 1.53 to require applicants to indicate changes to the
disclosure in any continuing application. Thus, adopting a change to
impose this additional burden on an applicant is not considered
appropriate in this Final Rule.
Comment 20: One comment suggested that the Office permit applicants to
file a statement requesting deletion of an inventor in a continuation or
divisional application any time prior to or coincident with the mailing
of an issue fee payment. The comment questioned whether the time period
in 1.53(e)(1) addresses this issue.
Response: Unless a statement requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application accompanies the copy of the executed oath or
declaration submitted in accordance with 1.63(d) in an application
filed pursuant to 1.53(b), or accompanies the request for an
application under 1.53(d) in an application filed pursuant to
1.53(d), the inventorship of the continuation or divisional application
filed under 1.53(b) using a copy of the oath or declaration of the
prior application pursuant to 1.63(d) or filed under 1.53(d) will
be considered identical to that in the prior application, and correction
of the inventorship (if appropriate) must be by way of 1.48.
Identification of the inventorship is necessary to the examination of an
application (e.g., 35 U.S.C. 102(f) and (g)). As such, the Office must
require identification of the inventorship prior to examination of an
application.
Section 1.53(e)(1) applies in those instances in which papers filed as
an application under 1.53(b), (c), or (d) do not meet the respective
requirements of 1.53(b), (c), or (d) to be entitled to a filing date.
Submitting an oath or declaration is not a filing date issue, and naming
the inventors is no longer a filing date issue. Thus, the provisions of
1.53(e) do not apply to the filing of a statement requesting deletion
of an inventor in a continuation or divisional application.
Comment 21: One comment questioned whether 1.53(d) applies only to
applications filed on or after June 8, 1995, and questioned whether
1.53(d) should be made applicable to pending applications filed prior to
June 8, 1995. The comment also questioned the relationship between
1.129(a) and 1.53(d).
Response: Section 1.53(d), by its terms, permits the filing of a
continuation or divisional thereunder of only a nonprovisional
application that, inter alia, is either: (1) complete as defined by
1.51(b) and filed on or after June 8, 1995 or; (2) resulted from entry
into the national stage of an international application in compliance
with 35 U.S.C. 371 filed on or after June 8, 1995. While 1.53(d) and
1.129(a) both provide for the continued prosecution of an application,
these sections are distinct in that they apply to a virtually mutually
exclusive class of applications and have separate requirements (e.g., a
request for a 1.53(d) application may be filed subsequent to the
filing of an appeal brief, so long as the request is filed before the
earliest of: (1) payment of the issue fee on the prior application,
unless a petition under 1.313(b)(5) is granted in the prior
application; (2) abandonment of the prior application; or (3)
termination of proceedings on the prior application).
Comment 22: One comment suggested that the rules of practice permit the
execution of copies of an oath or declaration by fewer than all of the
inventors, without cross-reference to the other copies to facilitate
contemporaneous executions by geographically separated inventors.
Response: The suggestion is not adopted. Section 1.63(a)(3) requires
that an oath (or declaration), inter alia, identify each inventor. The
rules of practice permit inventors to execute separate oaths (or
declarations), so long as each oath (or declaration) sets forth all of
the inventors (the necessary cross-reference). That is, 1.63(a)(3)
prohibits the execution of separate oaths (or declarations) in which
each oath (or declaration) sets forth only the name of the executing
inventor. An amendment to the rules of practice to permit an inventor to
execute an oath or declaration that does not set forth each inventor
would not only lead to confusion as to the inventorship of an
application, but would be inconsistent with the requirement in 35 U.S.C.
115 that the applicant make an oath (or declaration) that the applicant
believes himself (or herself) to be the original and first inventor of
the subject matter for which a patent is sought, as the oaths or
declarations would conflict as to the inventorship of the application.
Comment 23: Several comments suggested that the statement required under
35 U.S.C. 120 in a continued prosecution application will be confusing
as the continued prosecution application will have the same application
number as the prior application. One comment indicated that this will
cause confusion: (1) as to which application is being referenced in a 35
U.S.C. 120 statement in the divisional application when a divisional
application under 1.53(b) and a continued prosecution application
filed under 1.53(d) are filed from the same prior application; and
(2) in docketing applications as most commercially available software
identify applications by application number. Another comment questioned
what sentence was required pursuant to 1.78(a)(2) in a continued
prosecution application.
Response: 35 U.S.C. 120 provides that an application may obtain the
benefit of the filing date of an earlier filed application if, inter
alia, the application "contains or is amended to contain a specific
reference to the earlier filed application." Section 1.78(a) requires
that this specific reference be in the first sentence of the
specification and identify each earlier filed application by application
number or international application number and international filing date
and relationship of the applications. Thus, while a "specific reference
to the earlier filed application" is a requirement of statute (35 U.S.C.
120), the particulars of this specific reference (by application number,
filing date, and relationship) is a requirement of regulation (
1.78(a)), not the patent statute.
The purpose of the "specific reference" requirement of 35 U.S.C. 120 is
to provide notice to the public of the filing date upon which a patentee
may rely to support the validity of the patent:
[35 U.S.C. 120] embodies an important public policy. The information
required to be disclosed is information that would enable a person
searching the records of the Patent Office to determine with a minimum
of effort the exact filing date upon which a patent applicant is relying
to support the validity of his application or the validity of a patent
issued on the basis of one of a series of applications. In cases such as
this, in which two or more applications have been filed and the validity
of a patent rests upon the filing date of an application other than that
upon which the patent was issued, a person, even if he had conducted a
search of the Patent Office records, could unwittingly subject himself
to exactly this type of infringement suit unless the later application
adequately put him on notice that the applicant was relying upon a
filing date different from that stated in the later application.
Sampson v. Ampex Corp., 463 F.2d 1042, 1045, 174 USPQ 417, 419 (2d Cir.
1972); see also Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d
90, 93, 160 USPQ 177, 179(7th Cir. 1968) ("Congress may well have
thought that [35 U.S.C.] 120 was necessary to eliminate the burden on
the public to engage in long and expensive search of previous
applications in order to determine the filing date of a later patent . .
. . The inventor is the person best suited to understand the relation of
his applications, and it is no hardship to require him to disclose this
information").
To reduce the delay in processing a continued prosecution application,
the Office will maintain in its records (e.g., in the Patent Application
Locating and Monitoring (PALM) records for an application) for
identification purposes the application number and filing date of the
prior application. Thus, in a continued prosecution application, the
application number of the continued prosecution application will be the
application number of the prior application, and the filing date
indicated on any patent issuing from a continued prosecution application
will be the filing date of the prior application (or, in a chain of
continued prosecution applications, the filing date of the application
immediately preceding the first continued prosecution application in the
chain). In addition, as a continued prosecution application will use the
file wrapper of the prior application, the prior application will be
available upon inspection of the continued prosecution application.
Unless excepted from 1.78(a)(2), the first sentence of a continued
prosecution application would consist of a reference to that application
as a continuation or divisional of an application having the identical
application number and the effective filing date of (the filing date to
be printed on any patent issuing from) the continued prosecution
application. Such a sentence would provide no useful information to the
public.
Therefore, 1.53(d)(7) as adopted provides that a request for an
application under 1.53(d) is a specific reference under 35 U.S.C. 120
to every application assigned the application number identified in such
request, and 1.78(a)(2) as adopted provides that the request for a
continued prosecution application under 1.53(d) is the specific
reference under 35 U.S.C. 120 to the prior application. That is, the
continued prosecution application includes the request for an
application under 1.53(d) ( 1.53(d)(2)(iv)), and the recitation of
the application number of the prior application in such request (as
required by 1.53(d)) is the "specific reference to the earlier filed
application" required by 35 U.S.C. 120. No further amendment to the
specification is required by 35 U.S.C. 120 or 1.78(a) for a continued
prosecution application for such continued prosecution application to
contain the required specific reference to the prior application, as
well as any other application assigned the application number of the
prior application (e.g., in instances in which a continued prosecution
application is the last in a chain of continued prosecution
applications).
Where an application claims a benefit under 35 U.S.C. 120 of a chain of
applications, the application must make a reference to the first
(earliest) application and every intermediate application. See Sampson,
463 F.2d at 1044-45, 174 USPQ at 418-19; Sticker Indus. Supply Corp.,
405 F.2d at 93, 160 USPQ at 179; Hovlid v. Asari, 305 F.2d 747, 751, 134
USPQ162, 165 (9th Cir. 1962); see also MPEP 201.11. In addition, every
intermediate application must also make a reference to the first
(earliest) application and every application after the first application
and before such intermediate application.
In the situation in which there is a chain of continued prosecution
applications, each continued prosecution application in the chain will,
by operation of 1.53(d)(7), contain the required specific reference
to its immediate prior application, as well as every other application
assigned the application number identified in such request. Put simply,
a specific reference to a continued prosecution application by
application number and filing date will constitute a specific reference
to: (1) the non-continued prosecution application originally assigned
such application number (the prior application as to the first continued
prosecution application in the chain); and (2) every continued
prosecution application assigned the application number of such
non-continued prosecution application.
Where the non-continued prosecution application originally assigned such
application number itself claims the benefit of a prior application or
applications under 35 U.S.C. 120, 121, or 365(c), 1.78(a)(2)
continues to require that such application contain in its first sentence
a reference to any such prior application(s). As a continued prosecution
application uses the specification of the prior application, such a
specific reference in the prior application (as to the continued
prosecution application) will constitute such a specific reference in
the continued prosecution application, as well as every continued
prosecution application in the event that there is a chain of continued
prosecution applications.
Where an applicant in an application filed under 1.53(b) seeks to
claim the benefit of an application filed under 1.53(d) under 35
U.S.C. 120 or 121 (as a continuation, divisional, or
continuation-in-part), 1.78(a)(2) requires a reference to the
continued prosecution application by application number in the first
sentence of such application. Section 1.78(a)(2) has been amended to
also provide that "[t]he identification of an application by application
number under this section is the specific reference required by 35
U.S.C. 120 to every application assigned that application number." Thus,
where a referenced continued prosecution application is in a chain of
continued prosecution applications, this reference will constitute a
reference under 35 U.S.C. 120 and 1.78(a)(2) to every continued
prosecution application in the chain as well as the non-continued
prosecution application originally assigned such application number.
Therefore, regardless of whether an application is filed under
1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a
continued prosecution application is, by operation of 1.53(d)(7) and
1.78(a)(2), a claim to every application assigned the application
number of such continued prosecution application. In addition,
applicants will not be permitted to choose to delete such a claim as to
certain applications assigned that application number (e.g., for patent
term purposes).
Finally, while it is recognized that using a common application number
(and file wrapper) for a continued prosecution application and its prior
application (which may also be a continued prosecution application) will
necessitate docketing modifications (as well as the Office's PALM
system), the burden of such modifications is outweighed by the benefits
that will result from the elimination of the initial processing of such
applications.
Comment 24: One comment suggested that the phrase "now refiled" be used
in lieu of "now abandoned" to reflect the status of the prior
application.
Response: Under 35 U.S.C. 120, the status of an application is one of
three conditions: (1) pending; (2) patented; or (3) abandoned. See In re
Morganroth, 6 USPQ2d 1802, 1803 (Comm'r Pat. 1988). As the filing of a
continued prosecution application under 1.53(d) operates to expressly
abandon the prior application under 1.53(d)(2)(v), the status of the
prior application is appropriately designated as "abandoned."
Comment 25: Several comments suggested that the proposed continued
prosecution application practice be made applicable in instances in
which the prior application was filed prior to June 8, 1995, to expedite
the prosecution of such applications.
Response: Permitting the continued prosecution application practice to
be applicable in instances in which the prior application was filed
prior to June 8, 1995, would result in confusion as to whether the
patent issuing from the continued prosecution application is entitled to
the provisions of 35 U.S.C. 154(c). As the continued prosecution
application practice was not in effect prior to June 8, 1995, no patent
issuing from a continued prosecution application is entitled to the
provisions of 35 U.S.C. 154(c).
As discussed supra, the application number of a continued prosecution
application will be the application number of the prior application, and
the filing date indicated on any patent issuing from a continued
prosecution application will be the filing date of the prior application
(or, in a chain of continued prosecution applications, the filing date
of the application immediately preceding the first continued prosecution
application in the chain). Thus, any patent issuing from a continued
prosecution application, where the prior application was filed prior to
June 8, 1995, will indicate that the filing date of the application for
that patent was prior to June 8, 1995, which will confuse the public
(and possible the patentee) into believing that such patent is entitled
to the provisions of 35 U.S.C. 154(c).
The Office has implemented 532(a)(2)(A) of Pub. L. 103-465 in
1.129(a) to conclude the examination of applications pending at least
two years as of June 8, 1995, taking into account any reference made in
such application to any earlier filed application under 35 U.S.C.
120,121, and 365(c). Further examination of any application may be
obtained via the filing of a continuing application under 1.53(b).
Requiring applications filed prior to June 8, 1995, that are not
eligible for the transitional procedure set forth in 1.129(a) to
obtain further examination via the filing of a continuing application
under 1.53(b) is a reasonable requirement to avoid confusion as to
whether a patent issuing from a continued prosecution ( 1.53(d))
application is entitled to the provisions of 35 U.S.C. 154(c).
Comment 26: One comment suggested that the phrase "most immediate prior
national application" rather than "prior application" was confusing. The
comment further stated that if the prior application was one filed under
1.62, there is no copy in that complete application of the (oath or)
declaration filed in the application under 1.62.
Response: The phrase "most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c)" is changed
to "prior application." An application under 1.53(d), 1.60, or 1.62
must ultimately be a continuing application of an application filed
under 1.53(b). Where the prior application is an application under
1.60, the oath or declaration is the copy of the oath or declaration
from the prior application vis-ašsm©-vis the application under 1.60
submitted in accordance with 1.60(b)(2). Where the prior application
is an application under 1.62 or 1.53(d), the oath or declaration is
the oath or declaration from the prior application vis-ašsm©-vis the
application under 1.62 or 1.53(d). Where there is a chain of
applications under 1.62 or 1.53(d) preceding the prior application
to an application under 1.53(d), the oath or declaration of the prior
application will be the oath or declaration of the application under
1.53 or 1.60 immediately preceding the chain of applications under
1.62 or 1.53(d), as each application in the chain of applications under
1.62 or 1.53(d) utilizes the oath or declaration of the prior
application.
Comment 27: One comment suggested that applications filed under
1.53(d) should be taken up as amended applications, rather than as newly
filed applications.
Response: The comment implies that taking up a continued prosecution
application as an amended application may result in the examiner acting
on the application in a more timely manner than if the application were
accounted for as a new application. The matter is under consideration
along with other administrative issues, and a decision shall be made in
due course.
Comment 28: One comment suggested that 1.129(a) be amended so as not
to be limited to applications under final rejection, such that an
applicant in an application in which a notice of allowance under
1.311 has been mailed may obtain entry of an information disclosure
statement without regard to the requirements of 1.97(d).
Response: The Notice of Proposed Rulemaking did not propose to amend
1.129(a). While the language of 532(a)(2)(A) of Pub. L. 103-465 does
not expressly exclude the further examination of an application that has
been allowed (as opposed to an application under a final rejection),
102(d) of Pub. L. 103-465 provides that "[t]he statement of
administrative action approved by the Congress under section 101(a)
shall be regarded as an authoritative expression by the United States
concerning the interpretation and application of the Uruguay Round
Agreements and this Act in any judicial proceeding in which a question
arises concerning such interpretation or application." The statement of
administrative action specifies that such further examination is to
facilitate the completion of prosecution of applications pending before
the Office, and to permit applicants to present a submission after the
Office has issued a final rejection on an application. See H.R. Rep.
826(i), 103rd Cong., 2nd Sess. 1005-06, reprinted in 1984 U.S.C.C.A.N.
3773, 4298.
Upon mailing of a notice of allowance under 1.311, prosecution of an
application before the Office is concluded. The proposed amendment to
obtain further examination pursuant to 1.129(a) after allowance would
nullify (rather than facilitate) the completion of prosecution of the
above-identified application, and, as such, would be inconsistent with
the purpose for the provisions of 532(a)(2)(A) of Pub. L. 103-465.
Comment 29: One comment questioned how the filing of a continued
prosecution application would result in less delay than the filing of a
continuing application under 1.53(b), as a continued prosecution
application would be subject to pre-examination processing delays.
Response: The Office will not issue a new filing receipt for a continued
prosecution application under 1.53(d). See 1.54(b). By not issuing
a filing receipt for a continued prosecution application, the Office
will be able to perform the pre-examination of any continued prosecution
application in the examining group to which the prior application was
assigned. Likewise, 1.6(d) has been amended to permit an applicant to
file a continued prosecution application under 1.53(d) by facsimile,
and the use of this means of filing a continued prosecution application
will avoid the delay inherent in routing an application (or any paper)
from the mailroom to the appropriate examining group. These provisions
will enable the Office to process a continued prosecution application in
the manner that a submission under 1.129(a) is processed.
Comment 30: One comment questioned whether the filing date of a
continued prosecution application is the filing date for determining
patent term, or is significant only in establishing copendency. Another
comment questioned what filing date was relevant for determining patent
term.
Response: Notwithstanding that a continued prosecution application is
assigned the application number of the prior application, the filing
date of the continued prosecution application is the date on which the
request for such continued prosecution application was filed (
1.53(d)). While the filing date of the continued prosecution application
is relevant to establishing the copendency required by 35 U.S.C. 120 and
1.78(a) between the continuedprosecution application and the prior
application, the filing date of a continued prosecution application will
never be relevant to the term under 35 U.S.C. 154(b) of any patent
issuing from the continued prosecution application.
Any continued prosecution application under 1.53(d) will be filed on
or after June 8, 1995, and will claim the benefit of an earlier
application as a continuation or divisional application. Section
1.53(d)(7) specifically provides that:
A request for an application under this paragraph is the specific
reference required by 35 U.S.C. 120 to every application assigned the
application number identified in such request. No amendment in an
application under this paragraph shall delete this specific reference to
any prior application.
Thus, an application under 1.53(d) cannot be amended to delete the
specific reference to the prior application, as well as the specific
reference to any application to which the prior application contains a
specific reference under 35 U.S.C. 120, 121, and 365(c). As an
application under 1.53(d) will also contain a specific reference to
at least one other application under 35 U.S.C. 120, 121, and 365(c), the
expiration date under 35 U.S.C. 154(b)(2) of any patent issuing from the
application under 1.53(d) will be based upon the filing date of the
prior application (or the earliest application to which the prior
application contains a specific reference under 35 U.S.C. 120, 121, and
365(c)).
Comment 31: One comment argued that the Office should address not only
the filing requirements for continuing applications, but also the cause
of the filing of continuing applications. The comment specifically
argued that the current second action final practice should be
reevaluated as an applicant no longer has an incentive to delay the
prosecution of an application due to Pub. L. 103-465.
Response: The suggestion is being taken under advisement as part of a
comprehensive effort by the Office to reengineer the entire patent
process. However, it should be noted that any changes to the current
second action final practice to provide additional examination of an
application prior to a final Office action would necessitate a
corresponding increase in patent fees.
Comment 32: One comment suggested that the Office simply eliminate the
"true copy" requirement of 1.60, rather than add new provisions
permitting the use of a copy of the oath or declaration of a prior
application. The comment also suggested that the Office simply amend
1.62 to eliminate the requirement that the Office assign a new
application number to the application, rather than add a new 1.53(d).
Response: The amendments to 1.53 do not simply make minor changes to
1.60 and 1.62. Sections 1.60 and 1.62 are anachronisms that have
outlived their usefulness. A significant number of applications filed
under 1.60 do not meet the requirements of 1.60 (and, as such are
improper), but would be proper under 1.53 (in the absence of a
reference to 1.60). The elimination of 1.60 will result in a
reduction in the Office's burden in treating and the applicant's burden
in correcting these improper applications under 1.60, as such
applications would generally have been proper applications if filed
under 1.53 (without a reference to 1.60). Section 1.63(d) retains
most of the benefits of 1.60, but eliminatesthe filing "traps" of
1.60.
Section 1.62 practice also causes problems concerning its prohibition
against including a new or substitute specification, and its permitting
the filing of a continuation-in-part. To avoid continued prosecution
application practice under 1.53(d) being confused with the former
file-wrapper-continuation practice under 1.62, the Office has deemed
it advisable to use a new 1.53(d) rather than 1.62 in regard to
continued prosecution application practice.
Comment 33: One comment stated that the Office should anticipate the
filing of applications containing a reference to 1.60 or 1.62 for
some period.
Response: That applications containing a reference to 1.60 or 1.62
will continue to be filed has been anticipated. The treatment of such
applications is discussed infra with respect to the elimination of
1.60 and 1.62.
Comment 34: One comment stated that the safeguard in 1.60 concerning
the filing of an application lacking all of the pages of specification
or sheets of drawings of the prior application has not been retained in
1.53(b). The comment suggested that 1.53 contain a presumption that
a continuation or divisional be presumed, absent evidence to the
contrary, to be the filing of an application identical to the prior
application.
Response: The Court of Customs and Patent Appeals (CCPA) has held that a
mere reference to another application, patent, or publication is not an
incorporation of anything therein into the application containing such
reference. See In re de Seversky, 474 F.2d 671, 177 USPQ144 (CCPA 1973);
see also Dart Industries v. Banner, 636 F.2d 684, 207 USPQ 273
(CCPA1980) (related decision). These decisions relied upon In re Lund,
376 F.2d 982, 153 USPQ625 (CCPA 1967), which considered the
incorporation by reference issue in the context of whether a prior art
patent adequately incorporated by reference a prior application. The
court, in Lund, specifically stated:
There is little in the term "continuation-in-part" which would suggest
to the reader of the patent that a disclosure of the nature of Example 2
is present in the earlier application and should be considered a part of
the patent specification. Thus, we cannot agree that the subject matter
of claim 3 is tacitly "described" in the Margerison patent within the
meaning of 102(e).
Id. at 989, 153 USPQ 631-32 (footnote discussing the definition of
"continuation-in-part" as set forth in MPEP 201.08 omitted). While the
holdings in Dart Industries, de Seversky and Lund appear to be based
upon the definitions of the various categories of continuing
applications set forth in the MPEP (and thus could be changed by a
revision to the MPEP), the Office is not at this time inclined to
disturb settled law in this area.
Nevertheless, an applicant may incorporate by reference the prior
application by including, in the continuing application-as-filed, a
statement that such specifically enumerated prior application or
applications are "hereby incorporated herein by reference." The
inclusion of this incorporation by reference of the prior application(s)
will permit an applicant to amend the continuing application to include
any subject matter in such prior application(s), without the need for a
petition.
Section 1.54: Section 1.54(b) is amended to add the phrase "unless the
application is an application filed under 1.53(d)." To minimize
application processing delays in applications filed under 1.53(d),
such applications will not be processed by the Office of Initial Patent
Examination as new applications.
No comments were received regarding the proposed change to 1.54.
Section 1.55: Section 1.55(a) is amended to remove the requirement that
the statement be verified in accordance with the change to
1.4(d)(2) and 10.18.
No comments were received regarding the proposed change to 1.55.
Section 1.59: Section 1.59 is amended: (1) by revising the title to
indicate that expungement of information from an application file would
come under this section; (2) by revising the existing paragraph and
designating it as paragraph (a)(1); and (3) by adding paragraphs
(a)(2),(b) and (c). Section 1.59(a)(1) retains the general prohibition
on the return of information submitted in an application, but no longer
limits that prohibition to an application that has been accorded a
filing date under 1.53. The portion of the paragraph relating to the
Office furnishing copies of application papers has been shifted to new
paragraph (c). Section 1.59(a)(2) makes explicit that information,
forming part of the original disclosure (i.e., written specification
including the claims, drawings, 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.
Section 1.59(b) provides 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.
Section 1.59(b) covers the current practice set forth in MPEP 724.05
where information is submitted as part of an information disclosure
statement and 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 reply 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
dismissed as premature or 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.
Petitions to expunge were formerly considered under 1.182, with the
Office of Petitions consulting with the examiner on the materiality of
the information at issue prior to rendering a decision. A possible
result of the amendment to 1.59 would be to have petitions under
1.59 to expunge simply decided by the examiner who determines the
materiality of the information.
Comment 35: One comment suggested that petitions to expunge under
1.59 should be decided by Group Directors or officials in the Office of
Petitions, rather than by examiners. The comment argued that any
individual examiner would decide such a petition so rarely that it would
be difficult to produce uniform and consistent decisions.
Response: The preamble has been amended to reflect that a possible
result of the rule change is to have petitions under 1.59 decided by
the examiners. The heart of most petitions to expunge is a determination
as to whether the material sought to be expunged is material to
examination, a matter that is now referred to examiners prior to a
decision on the petition. Given the major role examiners now play in
expungement matters, it is not clear why examiners would be rendering
inconsistent decisions, particularly as so many other matters are
routinely assigned to examiners including petitions under 1.48.
Nevertheless, the comment is not germane to 1.59 as proposed (or
adopted), but concerns the internal Office delegation of such petitions
for consideration. Moreover, a petition to expunge a part of the
original disclosure would have to be filed under 1.183 and would
continue to be decided in the Office of Petitions.
Comment 36: A comment in requesting some examples of things that may be
expunged asked whether a design code listing as an appendix in an
application may be expunged.
Response: The standard set forth in paragraph (b) of 1.59 permits
information other than what is enumerated in paragraph (a) of the
section to be expunged if it is established to the satisfaction of the
Commissioner that the return of the information is appropriate. The
types of information and rationales why the information may be returned
are varied and will be evaluated on a case-by-case basis with the basic
inquiry being whether the information is material to examination of the
application. However, to the extent that an appendix to a specification
of an application is considered part of the original disclosure it
cannot be expunged from the file under 1.59(a)(2).
Section 1.59(b) also covers information that was unintentionally
submitted in an application, provided that: (1) the Office can effect
such return prior to the issuance of any patent on the application in
issue; (2) 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; (3)
the information has not otherwise been made public; (4) 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 (5) it is established to the satisfaction of the
Commissioner that the information to be returned is not material
information under 1.56. A request to return information that has not
been clearly identified as information that may be later subject to such
a 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.
Section 1.59(b) also covers the situation where an unintended heading
has been placed on papers so that they are present in an incorrect
application file. In such a 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 the need of a petition.
Section 1.59(c) 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: Section 1.60 is removed and reserved.
Section 1.60 is now unnecessary due to the amendment to 1.63(d) to
expressly permit the filing in a continuation or divisional application
using a copy of the oath or declaration filed in the prior application,
and to provide ( 1.63(d)(2)) for the filing of a continuation or
divisional application by all or by fewer than all the inventors named
in a prior application.
See comments relating to 1.53.
Section 1.62: Section 1.62 is removed and reserved.
Section 1.62 is unnecessary due to the addition of 1.53(d) to permit
the filing of a continued prosecution application.
It is anticipated that 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. An application
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(d), and
those applications that do not meet the requirements of 1.53(d)
(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(d). Such an improper
application under 1.53(d) may be accepted and treated as a proper
application under 1.53(b) by way of petition under 1.53(e) (and
submission of the $130 fee pursuant to 1.17(i)).
A petition under 1.53(e) to accept and treat an improper application
under 1.53(d) as a proper application under 1.53(b) must include:
(1) the $130 petition fee; (2) a true copy of the complete application
designated as the prior application in the purported 1.62 application
papers; (3) any amendments entered in the prior application; and (4) any
amendments submitted but not entered in the prior application and
directed to be entered in the purported 1.62 application papers. In
an application purporting to be a continuation or divisional application
under 1.62, the true copy of the prior application will constitute
the original disclosure of the application under 1.53(b), and any
amendments entered in the prior application or not entered in the prior
application but directed to be entered in the purported 1.62
application papers and submitted with the 1.53(e) petition will be
entered in the application under 1.53(b) and considered by the
examiner for new matter under 35 U.S.C. 112, 1, and 132. In an
application purporting to be a continuation-in-part application under
1.62, the true copy of the prior application, any amendments entered in
the prior application or not entered in the prior application but
directed to be entered in the purported 1.62 application papers and
submitted with the 1.53(e) petition, and any preliminary amendment
submitted with the purported 1.62 application will constitute the
original disclosure of the application under 1.53(b).
See comments relating to 1.53.
Section 1.63: Section 1.63(a)(3) is amended to require the post office
address to appear in the oath or declaration and to have the requirement
from 1.41(a) for the full names of the inventors placed therein.
Comment 37: Two comments raised the issue regarding the continued
requirement that both a post office address and a residence be supplied
and indicated that the residence is not required by statute, the post
office address is sufficient for communication purposes, and that the
burden of submitting both far outweighs the infrequent need to contact
any particular inventor by passing counsel so that the residence alone
should be sufficient.
Response: Under the proposed comment the applicants would still be
required to submit either the residence or post office address. To
request that they also supply the other or state that both are the same
is not seen to be a significant burden as the information is to be
supplied on the oath or declaration form that they must sign anyway and
spaces can be provided to ensure that the information is supplied. While
neither the residence nor the post office address are statutory
requirements, the Office requires this information for the applicant's
benefit. As more than one person may have the same name, a person's name
is often not sufficient to provide a unique identification of the
inventor. Thus, the Office also requires an inventor's residence (which
is not required to be sufficiently detailed to suffice as a post office
address) to specifically identify the person(s) named in the oath or
declaration as the inventor(s), which is a common practice for legal
documents. The post office address is also required in the event that
the Office finds it necessary to directly contact the inventor(s). It is
not uncommon for an inventor to revoke a power of attorney or
authorization of agent in a paper providing no address for future
correspondence from the Office. Also, the Office will need to directly
contact the inventor if the Office is notified of the death of a sole
attorney or agent of record (MPEP 406).
Section 1.63(d) is amended to: (1) relocate its current language in a
new 1.63(e); and (2) provide that a newly executed oath or
declaration is not required under 1.51(b)(2) and 1.53(f) in a
continuation or divisional application filed by all or by fewer than all
of the inventors named in a prior nonprovisional application containing
an oath or declaration as prescribed by 1.63, provided that a copy of
the executed oath or declaration filed in the prior application is
submitted for the continuation or divisional application and the
specification and drawings filed in the continuation or divisional
application contain no matter that would have been new matter in the
prior application. The copy of the oath or declaration must show the
signature of the inventor(s) or contain an indication thereon that the
oath or declaration was signed (e.g., the notation "/s/" on the line
provided for the signature).
A continuation or divisional application may be filed under 35 U.S.C.
111(a) using the procedures set forth in 1.53(b), by providing
either: (1) a copy of the prior application, including a copy of the
oath or declaration in such prior application, as filed; or (2) a new
specification and drawings and a copy of the oath or declaration as
filed in the prior application so long as no matter is included in the
new specification and drawings that would have been new matter in the
prior application. The specification and drawings of a continuation or
divisional application is not limited to a reproduction or "true copy"
of the prior application, but may be revised for clarity or contextual
purposes vis-a-vis the prior application in the manner that an
applicant may file a substitute specification ( 1.125) or amend the
drawings of an application so long as it does not result in the
introduction of new matter. Of course, 35 U.S.C. 115 requires that a
supplemental oath or declaration meeting the requirements of 1.63 be
filed in the continuation or divisional application, if a claim is
allowed in the continuation or divisional application which is drawn to
subject matter originally shown or described in the prior application
but not substantially embraced in the statement of the invention or
claims originally presented in the prior application as filed. See
1.67(b).
The patent statute and rules of practice do not require that an oath or
declaration include a 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. 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.
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 1.63(d).
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 application as a new non-continuing application.
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
divisional.
To continue the practice in 1.60(b)(4) of permitting the filing of a
continuation or divisional application by all or by fewer than all of
the inventors named in a prior application without a newly executed oath
or declaration, new 1.63(d)(2) provides that the copy of the oath or
declaration submitted for a continuation or divisional application under
1.63(d) 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 copy
of the executed oath or declaration from the prior application.
Accordingly, if a petition under 1.48(a) or (c) was granted in the
prior application, an oath or declaration filed in a continuation or
divisional application pursuant to 1.63(d) should be the oath or
declaration also executed by the added inventor(s). For situations where
an inventor or inventors are to be added in a continuation or divisional
application, see 1.63(d)(5).
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(b) to sign an amendment in the continuation or divisional
application.
Section 1.63(d)(3) provides for the situation in which the executed oath
or declaration of which a copy is submitted for a continuation or
divisional application was originally filed in a prior application
accorded status under 1.47. Section 1.63(d)(3)(i) requires a copy of
any decision granting a petition to accord 1.47 status to such
application, unless each nonsigning inventor(s) or legal representative
(pursuant to 1.42 or 1.43) has filed an oath or declaration to join
in an application of which the continuation or divisional application
claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where a nonsigning
inventor or legal representative (pursuant to 1.42 or 1.43)
subsequently joins in any application of which the continuation or
divisional application claims a benefit under 35 U.S.C. 120, 121 or
365(c), 1.63(d)(3)(ii) also requires a copy of any oath or
declaration filed by an inventor or legal representative to subsequently
join in such application.
Section 1.63(d)(4) provides that where the power of attorney (or
authorization of agent) or correspondence address was changed during the
prosecution of the prior application, the change in power of attorney
(or authorization of agent) or correspondence address must be identified
in the continuation or divisional application, or the Office may not
recognize in the continuation or divisional application the change of
power of attorney (or authorization of agent) or correspondence address
during the prosecution of the prior 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, and
1.63(d)(5) expressly states 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.
New 1.63(e) provides that a newly executed oath or declaration must
be filed in a continuation-in-part application, which application may
name all, more, or fewer than all of the inventors named in the prior
application, and includes the language relocated from former 1.63(d)
concerning an oath or declaration in a continuation-in-part application.
Comment 38: One comment suggested that the practice of permitting the
use of an executed oath or declaration of a prior application creates a
trap for the unwary in the situation in which an applicant believes in
error that no new matter has been added in the "continuation"
application and does not file a new declaration.
Response: The situation outlined in the comment is less of a trap for
the unwary than the situation in which an applicant files a substitute
specification and believes in error that no new matter has been added,
in that the error in the "continuation" may be corrected by
redesignation of the application as a continuation-in-part and the
filing of a new oath or declaration. Nevertheless, it remains the
applicant's responsibility to review any substitute specification or new
specification submitted for a continuation application to determine that
it contains no new matter. See MPEP 608.01(q). An applicant is advised
to simply file a continuing application with a newly executed oath or
declaration when it is questionable as to whether the continuing
application adds material that would have been new matter if presented
in the prior application.
Comment 39: One comment suggested that the option of submitting "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 . . . the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c)" was
strange at best as the applicant or representative should have a copy of
the oath or declaration that was filed to complete the prior application
or could obtain one from Office records.
Response: The suggestion is adopted. Section 1.63(d) as adopted provides
that: "[a] newly executed oath or declaration is not required under
1.51(b)(2) and 1.53(f) in a continuation or divisional application
filed by all or by fewer than all of the inventors named in a prior
nonprovisional application containing an oath or declaration as
prescribed by paragraphs (a) through (c) of this section, provided that
a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional application."
Comment 40: One comment questioned whether 1.53 (or 1.63) is
consistent with 1.48 as to whether the oath or declaration filed in a
continuing ap