Interim Waiver of 37 C.F.R. 1.84(b)(1) for Petitions to Accept Black and White Photographs and Advance Notice of Change to M.P.E.P. 608.02 The Patent and Trademark Office (PTO) is sua sponte waiving 37 C.F.R. 1.84(b)(1) to the extent that a petition and petition fee are no longer required in order to accept black and white photographs in lieu of drawings. The reason for this waiver is that the PTO intends to amend 37 C.F.R. 1.84(b)(1) to eliminate the requirement for a petition and petition fee. Because a significant period of time will elapse before any final rule change can be promulgated, effective as of the publication date of this notice, the PTO will, sua sponte, waive 37 CF.R. 1.84(b)(1) to the extent that a petition and petition fee are no longer required for acceptance of black and white photographs in applications that are pending as of the publication date of this notice or any applications filed thereafter. If an Office action has been mailed which requires a petition under 37 C.F.R. 1.84(b)(1) and/or a petition fee, an acceptable reply to the Office action would be a reference to this notice and a request that the requirement be withdrawn. However, any petition fees set forth in 37 C.F.R. 1.17(i) which were paid prior to the publication date of this notice will not be refunded, since they were required at the time they were paid. A fee authorized to be charged to a deposit account is considered to have been paid on the date the paper with the authorization was filed. Any petition fees set forth in 37 C.F.R. 1.17(i) paid or authorized to be paid after the publication date of this notice will not have been required at the time the fees were paid or authorized and may be refunded. See 37 C.F.R. 1.26(a). Manual of Patent Examining Procedure, Section 608.02 will be amended consistent with this Notice. Background of 37 C.F.R. 1.84(b)(1) and Rationale for Amendment Currently, under 37 C.F.R. 1.84(b)(1), the PTO will accept black and white photographs in utility and design patent applications in lieu of drawings upon the granting of a petition to accept the photographs. However, petitions under 37 C.F.R. 1.84(b)(1) do not serve a usefulpurpose in the examination process and therefore unnecessarily delay the issuance of patents containing black and white photographs. As noted in "Interim Waiver of 37 C.F.R. 1.84(b)(1) for Petitions to Accept Black and White Photographs Filed with Only One Set of Photographs," 1211 O.G. 34 (June 9, 1998), the PTO can now process black and white photographs for design and utility applications in the same manner as drawings for design and utility applications. Since the special handling process has been eliminated, a petition is no longer necessary. In addition, the requirement for a petition for black and white photographs as set forth in 37 C.F.R. 1.84(b)(1) does not address when black and white photographs are acceptable in an application instead of drawings. Manual of Patent Examining Procedure (MPEP), section 608.02, states that the photographs or photomicrographs "must show the invention more clearly than they can be done by India ink drawings," but 37 C.F.R 1.84(b)(1) does not include this language. Accordingly, petitions under 37 C.F.R. 1.84(b)(1) are grantable if the petition fee set forth in 37 C.F.R. 1.17(i) is included and the photographs are either properly mounted or on double weight photographic paper, even though photographs may not be acceptable instead of drawings in that application because the subject matter is capable of illustration by a drawing. See 37 C.F.R. 1.81(c). For example, a photograph of a syringe would not be acceptable if the syringe is capable of being drawn. In addition, the requirement of a petition to accept black and white photographs leads to delays in issuance of patents containing photographs (increases the cycle time of applications with photographs) and misuses valuable resources for several reasons. First, the petitions take time to decide, which adds to the processing time of applications with black and white photographs. Second, an added delay is caused by the practice of applicants first filing petitions under 37 C.F.R. 1.84(b)(1) while applications are being prepared for issuance and are no longer in the Technology Centers, where such petitions are decided, which requires applications with the petition and photograph(s) to be returned to the Technology Centers for treatment of the petitions. For these reasons, the requirement of 37 C.F.R. 1.84(b)(i) for a petition and petition fee should be eliminated. This change in procedure should not change the number of applications in which photographs are filed. Photographs continue to be acceptable only in applitations in which the invention is not capable of being illustrated in an ink drawing or where the invention is shown more clearly in a photograph. For example, photographs or photomicrographs of electrophoresis gels, blots, e.g., immunological, western, Southern, and northern, autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, metallurgical microstructures, textile fabrics, grain structures, and ornamental effects continue to be acceptable. If a photograph that is filed in an application shows an invention which is capable of illustration, the examiner will, pursuant to 37 C.F.R. 1.81(c) and/or 37 C.F.R. 1.83(c), require a drawing of the subject matter. For example, syringes are capable of being drawn and drawings would generally demonstrate the details thereof more clearly (for example, cross hatching can be included to show the materials used). If a photograph (or a copy of a photograph) of a syringe is filed with the application, the examiner should require a drawing in lieu of the photograph. If the subsequently submitted drawing contains new matter, however, the examiner will not approve entry of the drawing, so applicants should be careful when initially submitting photographs instead of drawings. See MPEP 608.02(h) and 608.04. (The issue of new matter can also arise if a poor quality photograph or a photocopy of a photograph which is a poor reproduction is originally submitted and a better quality or the original photograph is later submitted and shows details beyond that shown in the photograph or photocopy that was originally submitted.) It is noted that this change in procedure only applies to black and white photographs for utility and design applications. The current requirements for petitions for color drawings or color photographs are not affected. Color drawings and color photographs require special handling in the Office and the requirement for a petition is one mechanism for ensuring that these applications are properly processed. Thus, a petition, petition fee, and a reference in the specification continue to be necessary in design and utility applications for color drawings or color photographs to be accepted under 37 C.F.R. 1.84(a)(2). If there are any questions or comments about this change in practice, they should be forwarded to Karin Tyson, Senior Legal Advisor, by facsimile at (703) 308-6916, by telephone at (703) 305-9285, or by e-mail at karin.tyson@uspto.gov. July 1, 1998 STEPHEN G. KUNIN Deputy Assistant Commisioner for Patent Policy and Projects Interim Waiver of 37 C.F.R. 1.163(b) for Two Copies of a Specification of an Application for a Plant Patent The Patent and Trademark Office (PTO) is sua sponte waiving 37 C.F.R 1,163(b) to no longer require two copies of a specification for an application for a plant patent. The reason for this waiver is that the PTO intends to amend 37 C.F.R. 1.163(b) to eliminate this requirement. Because a significant period of time will elapse before any final rule change can be promulgated, effective as of the publication date of this notice, the PTO will, sua sponte, waive 37 C.F.R. 1.163(b) to the extent that two copies of the specification of a plant patent application are no longer required. Background of 37 C.F.R. 1.163(b) and Rationale for Amendment Under the existing rule, two copies of the specification, including the claim, of an application for a plant patent are required. The reason for this requirement was so that one copy of the application could be forwarded to the Agricultural Research Service of the Department of Agriculture where necessary for examination of the application. However, the Office seldom requests the assistance of the Department of Agriculture in the examination of plant patent applications and the duplicate copies of the specification are removed from the application file and stored separately. In the unusual situation where the duplicate copy of the specification required by 37 C.F.R. 1.163(b) has not been provided, plant patent examiners have not been requiring a duplicate copy and, instead, have been making the required copy. If the requirement for two copies is eliminated, and the Office desires the assistance of the Department of Agriculture, the Office will make the required duplicate copy. The elimination of the duplicate copy requirement will reduce the burden on plant patent applicants in filing an application for a plant patent. Furthermore, by elimination of this requirement, the storage space required for plant patent applications will be reduced, since the Office will no longer have to store duplicate copies. Any duplicate copies of the plant application specification submitted after the publication date of this notice or that are currently being stored by the Office may be discarded. This change in practice does not effect the number of color drawings or color photographs that are required for a plant patent application. Two copies of color drawings or color photographs continue to be required for processing of a plant patent application. 37 C.F.R. 1.165(b). One of the two copies of the drawings is placed in the application file and is used during prosecution of the application, including printing of the patent. The second copy is used in the interference files, where it is also available to be sent to the Department of Agriculture, should the need arise. The second copy is also available for use by the printer in the event that the first copy is lost or damaged. If there are any questions or comments about this change in practice, they should be forwarded to Karin Tyson, Senior Legal Advisor, by facsimile at (703) 308-6916, by telephone at (703) 305-9285, or by e-mail at karin.tyson@uspto.gov. July 1, 1998 STEPHEN G. KUNIN Deputy Assistant Commissioner for Patent Policy and Projects