DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 3, 5, and 10
RIN 0651-AA98
Changes to Implement the Patent Business Goals
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) has
established business goals for the organizations reporting to the
Commissioner for Patents (Patent Business Goals). The focus of the
Patent Business Goals is to increase the level of service to the public
by raising the efficiency and effectiveness of the Office's business
processes. In furtherance of the Patent Business Goals, the Office is
changing the rules of practice to eliminate unnecessary formal
requirements, streamline the patent application process, and simplify
and clarify the provisions of the rules of practice.
DATES: EFFECTIVE DATE: Nov. 7, 2000, unless otherwise provided.
The changes to 1.27, 1.78, 1.131, 1.132, 1.137, 1.152, 1.155,
1.324, 1.366, 1.740, and 1.760, and the removal of 1.44 are effective
Sep. 8, 2000.
The new two-year limit for requesting refunds under 1.26 will be
applied to any fee paid regardless of when it was paid. For previously
paid fees, the two-year time period for requesting a refund will expire
on Nov. 7, 2000 or the date that is two years from the date the fee was
paid.
APPLICABILITY DATES: Computer program listings in compliance with former
1.96 will be accepted until March 1, 2001. After that date, computer
program listings must comply with revised 1.96. Amendments in
compliance with former 1.121 will be accepted until March 1, 2001.
After that date, amendments must comply with revised 1.121.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((703) 305-8713) or
Robert W. Bahr ((703) 308-6906), Senior Legal Advisors, or Robert J.
Spar, Director ((703) 308-5107), Office of Patent Legal Administration
(OPLA), directly by phone, or by facsimile to (703) 305-1013, marked to
the attention of Mr. Bernstein, or by mail addressed to: Box
Comments--Patents, Commissioner for Patents, Washington, D.C. 20231.
Additionally, the following members of OPLA may be called directly for
the matters indicated:
Robert Bahr ((703) 308-6906): 1.22, 1.25, 1.26, 1.53, 1.55,
1.72, 1.76, 1.78, 1.112, 1.131, 1.132, 1.137, 1.138, 1.193, 1.311
through 1.313, 1.366, Part 5, and Part 10.
Hiram Bernstein ((703) 305-8713): 1.9, 1.22, 1.26 through 1.28,
1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.133,
1.136, 1.322 through 1.324, and Part 3.
Robert Clarke ((703) 305-9177): Processing and petition fees, and
1.52(b)(2).
James Engel ((703) 308-5106): 1.152 et seq.
Eugenia Jones ((703) 306-5586): 1.9, 1.27, and 1.28.
Jay Lucas ((703) 308-6868) or Anton Fetting ((703) 305-8449):
1.96, and 1.821 et seq.
Joe Narcavage ((703) 305-1795): 1.52(b)(6), 1.121, 1.125, and
1.173 et seq.
Kenneth Schor ((703) 308-6710): 1.97, 1.98, 1.173 et seq., 1.510
et seq., and Part 3.
Fred Silverberg ((703) 305-8986): 1.63 (oath or declaration) form.
Karin Tyson ((703) 306-3159): 1.14, 1.33, 1.44, 1.47, 1.51, 1.52
(except (b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85
(except (c)), 1.163, and 1.720 et seq.
SUPPLEMENTARY INFORMATION: The organizations reporting to the
Commissioner for Patents have established five business goals (Patent
Business Goals) to meet the Office's Year 2000 commitments. The Patent
Business Goals have been adopted as part of the Fiscal Year 1999
Corporate Plan Submission to the President. The five Patent Business
Goals are:
Goal 1: Reduce Office processing time (cycle time) to twelve months or
less for all inventions.
Goal 2: Establish fully-supported and integrated Industry Sectors.
Goal 3: Receive applications and publish patents electronically.
Goal 4: Exceed our customers' quality expectations, through the
competencies and empowerment of our employees.
Goal 5: Align fees commensurate with resource utilization and customer
efficiency.
This final rule makes changes to the regulations to support the Patent
Business Goals. A properly reengineered or reinvented system eliminates
the redundant or unnecessary steps that slow down processing and
frustrate customers. In furtherance of the Patent Business Goals, these
changes to the rules of practice take a fresh view of the business end
of issuing patents, and continue a process of simplification. Formal
requirements of rules that are no longer useful are eliminated. Once the
intent of an applicant is understood, the Office will simply go forward
with the processing. The essentials are maintained, while formalities
are greatly reduced. The object is to focus on the substance of
examination and decrease the time that an application for patent is
sidelined with unnecessary procedural issues.
In streamlining this process, the Office will be able to issue a patent
in a shorter time by eliminating formal requirements that must be
performed by the applicant, his or her representatives and the Office
itself. Applicants will benefit from a reduced overall cost to them for
receiving patent protection and from a faster receipt of their patents.
The Office initially published an advance notice of proposed rulemaking
containing twenty-one initiatives. See Changes to Implement the Patent
Business Goals, Advance Notice of Proposed Rulemaking, 63 FR 53497
(October 5, 1998), 1215 Off. Gaz. Pat. Office (October 27, 1998)
(Advance Notice). The Office published a notice of proposed rulemaking,
proposing a number of changes to the rules of practice to implement the
Patent Business Goals that contained about half of the topics set forth
in the advance notice plus additional items. See Changes to Implement
the Patent Business Goals, Notice of Proposed Rulemaking, 64 FR 53771
(October 4, 1999), 1228 Off. Gaz. Pat. Office 15 (November 2, 1999).
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
Advance Notice and Notice of Proposed Rulemaking is assumed.
The title "Commissioner of Patents and Trademarks" was changed to
"Director of the United States Patent and Trademark Office" by 4732
of the "American Inventors Protection Act of 1999" (Title IV of the
"Intellectual Property and Communications Omnibus Reform Act of 1999")
that was incorporated and enacted into law on November 29, 1999, by
1000(a)(9), Division B, of Public Law 106-113, 113 Stat. 1501 (1999). To
avoid inconsistent use of the title "Commissioner" and "Director" in the
rules of practice, the Office plans to change the title "Commissioner"
wherever it appears in the rules of practice to "Director" in a separate
rule change.
Discussion of Specific Rules and Response to Comments:
The Office received forty-eight written comments (from Intellectual
Property Organizations, Law Firms, Businesses, Patent Practitioners, and
others) 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.
Two general comments were received that the Office should conduct a
public hearing for every major rulemaking, and that in a proposed notice
of rulemaking the Office should use markings to indicate the proposed
changes in the rules.
Response: The suggestions are not adopted. The Office determined that a
public hearing was not warranted for this rulemaking. Further, while
markings to indicate the proposed changes might be helpful, on balance,
the additional delay in preparing the rulemaking with markings
outweighed the helpfulness of providing the markings.
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10, are
amended as follows:
Part 1:
Section 1.4: Section 1.4(b) is amended to refer to a patent or trademark
application, patent file, trademark registration file, or other
proceeding, rather than only an application file. Section 1.4(b) is also
amended to provide that the filing of duplicate copies of correspondence
in a patent or trademark application, patent file, trademark
registration file, or other proceeding should be avoided (except in
situations in which the Office requires the filing of duplicate copies),
and that the Office may dispose of duplicate copies of correspondence in
a patent or trademark application, patent file, trademark registration
file, or other proceeding. Finally, 1.4(b) and 1.4(c) are also
amended to change "should" to "must" because the Office needs separate
copies of papers directed to two or more files, or of papers dealing
with different subjects.
The explicit ability under 1.4 to dispose of duplicate correspondence
papers will be effective retroactively to any present duplicate
correspondence.
Section 1.6: Section 1.6(d)(9) is amended to delete the reference to
recorded answers under 1.684(c), as 1.684(c) has been removed and
reserved.
Section 1.9: Sections 1.9(c) through (f) relating to small entities are
removed and reserved with that subject matter transferred to amended
1.27(a).
For additional changes to small entity requirements see 1.27 and
1.28.
Section 1.9(i) is added to define "national security classified" as used
in 37 CFR Chapter 1 as meaning "specifically authorized under criteria
established by an Act of Congress or Executive order to be kept secret
in the interest of national defense or foreign policy and, in fact,
properly classified pursuant to such Act of Congress or Executive order."
Comment 1: One comment requested that the definitions in 1.9(f)
pertaining to small entity status be moved to the small entity
provisions found in 1.27 to provide a more cohesive policy statement,
and to provide a consolidated location, which would be helpful to small
entities.
Response: The comment has been adopted. Other comments related to
1.9(f) are treated in the context of 1.27(a) to which the subject
matter has been transferred.
Comment 2: The remaining comments confirmed the Office's analysis that
the proposed changes would be beneficial.
Section 1.12: Section 1.12(c)(1) is amended to change the reference to
the fee set forth in " 1.17(i)" to the fee set forth in " 1.17(h)."
This change is for consistency with the changes to 1.17(h) and
1.17(i). See discussion of changes to 1.17(h) and 1.17(i).
Section 1.14: Section 1.14 was proposed to be amended to eliminate the
provisions making continuity data of an application identified in a
patent available because such liberal public access to patent
application information was inconsistent with patent applications being
generally maintained in confidence. Since patent applications that are
also filed abroad are subject to the eighteen-month publication
provisions of the "American Inventors Protection Act of 1999" (Subtitle
E - Domestic Publication of Patent Applications Published Abroad), any
application that claims priority to a U.S. patent is likely to be
published. Accordingly, continuity data for applications that rely upon
the filing date of a U.S. patent should continue to be released and the
provision for doing so is retained in 1.14(b)(4).
Section 1.14 has been reformatted and amended to make it easier to
understand.
Section 1.14(a) is amended to define "status information" and "access."
"Status information" is defined as information that the application is
pending, abandoned, or patented, as well as the application's numeric
identifier. An application's numeric identifier is (1) the eight digit
application number, or (2) the six digit serial number and the filing
date, or the date of entry into the national stage. "Access" is defined
as providing the application file for review and copying of any material
in the file.
Section 1.14(b) is amended to state when status information may be
supplied, retaining the reasons set forth in prior 1.14(a)(1)(i).
Section 1.14(b)(3) is simplified so as to indicate that status
information will be given for international applications in which the
United States is designated, even if that application has not yet
entered the national stage. If, however, an international application
has not yet been assigned a U.S. application number, no such application
number can be provided by the Office. The material in former 1.14(b)
(timing of destruction) was proposed to be revised and was set forth as
proposed 1.14(f), but the material has been deleted instead. The
timing of any destruction of patent files and papers is governed by 44
U.S.C. 33 and 36 CFR 12, which require that records be retained in
accordance with the agency records schedules approved by the National
Archives and Records Administration (NARA) or the General Records
Schedule issued by NARA. The law also requires that the Office generate
a list of records and the dispositions of those records, and the
Comprehensive Records Schedule is such a list. According to this
schedule, an abandoned national patent application filed before June 8,
1995, will be destroyed after twenty years from the date of abandonment
unless it is referenced in a U.S. patent. Furthermore, the schedule
provides that national applications filed on or after June 8, 1995, will
be destroyed twenty-three years after the date of abandonment unless
referenced in a U.S. patent. In addition, the records schedule provides
that International application (home and search copy) files are
destroyed 20 years after their filing or deposit date. Since former
1.14(b) could not change any records retention schedule, it was decided
to delete former 1.14(b) (proposed as 1.14(f)) and to redesignate
proposed 1.14(g) through (k) as (f) through (j). For additional
information about the Office's Comprehensive Records Schedule or the
Office's records management program in general, the Office's Records
Officer should be contacted by telephone at (703) 308-7400, or by
facsimile at (703) 308-7407.
Section 1.14(c) is amended to state that a copy of an
application-as-filed may be obtained, upon payment of the appropriate
fee, when a U.S. patent incorporates the application by reference.
Section 1.14(d) is amended to correspond to prior 1.14(a)(3)(iii)
with additional text from prior 1.14(e)(2). Section 1.14(d) is
revised to state that an applicant, an attorney or agent of record, or
an applicant's assignee may authorize access to an application by filing
a power to inspect. In addition, 1.14(d) provides that if an executed
oath or declaration has not been filed, a registered attorney or agent
named in the papers filed with the application may have access, or
authorize another person to have access, to an application by filing a
power to inspect. A registered practitioner named in a letterhead would
not be sufficient, but rather a clear identification of the individual
as being a representative would be required. The form for a power to
inspect is PTO/SB/67.
Section 1.14(e) is amended to correspond to prior 1.14(a)(3) and
states that any person may obtain access to an application by submitting
a request for access if certain conditions apply. The form for a request
for access to an abandoned application is PTO/SB/68. Access to
international phase application files is governed by the provisions of
the PCT and not by 1.14. Section 1.14(e)(1), as amended, corresponds
to prior 1.14(a)(3)(ii). Section 1.14(e)(2)(i) corresponds to prior
1.14(a)(3)(iv)(A). Section 1.14(e)(2)(ii), as revised, corresponds to
prior 1.14(a)(3)(iv)(B). Section 1.14(e) does not include the
provisions of prior 1.14(a)(3)(iv)(C). This will now enable an
abandoned application that claims benefit of the filing date of an
application that is open to public inspection to be maintained in
confidence unless the abandoned application is open to public inspection
for some other reason.
Sections 1.14(f), (g), (h), and (i) contain the material of prior
1.14(c), (d), (f), and (g), respectively.
Section 1.14(j) is added to contain the material of prior 1.14(e) and
amendment is made to explain the requirements of a petition for access
and include the provisions of former 1.14(e)(1). Section 1.14(j) is
also revised to indicate that the Office, either sua sponte or on
petition, may provide access or copies of an application if necessary to
carry out an Act of Congress or if warranted by other special
circumstances. The Office may, for example, provide access to, or copies
of, applications to another Federal Government agency, such as a law
enforcement agency, whether the Office is acting on its own initiative
or in response to a petition from the other agency when access is needed
for a criminal investigation.
Comment 3: Two comments urged the Office to continue to provide status
information on applications that claim the benefit of the filing date of
an application for which status information is available. The
information was said to be very useful to the public and to provide some
measure of certainty as to whether any continuing applications have been
filed.
Response: The comments are adopted. The Office will continue to release
continuity data for all applications for which status information may be
given.
Comment 4: Several comments supported proposed 1.14, but addressed
proposed 1.14(d)(4), arguing that the filing of a power of attorney,
not an executed oath or declaration, should control whether the
registered attorney or agent named in the application papers under
1.53 or the national stage documents under 1.494 or 1.495 can sign
a power to inspect. The comments noted that the power of attorney need
not be filed with the oath or declaration, and that the attorney who
filed the application should be able to sign a power to inspect until a
power of attorney is filed wherein he is not named as an attorney.
Response: The suggestion is not adopted. Once an executed oath or
declaration is filed, the omission of a power of attorney may be
intentional on the part of the applicant and the attorney who filed the
application should not continue to be allowed to sign a power to
inspect. Provision has been made for the attorney who filed the
application to sign a power to inspect because an application without an
executed oath or declaration would not otherwise have anyone entitled to
inspect the application. Inventorship is not set until an executed oath
or declaration is filed (see 1.41(a)(1)). An attorney or agent is not
of record until an executed oath or declaration and a power of attorney
are filed (see 1.34(b)). An assignee is not permitted to take action
until an executed oath or declaration and an assignment are filed (see
3.73(b)). Accordingly, without an executed oath or declaration, an
executed power of attorney would be insufficient to make an attorney of
record. Furthermore, once an executed oath or declaration is filed, any
one of the named inventors may execute a power of attorney and it is no
longer necessary to have the attorney or agent who filed the application
be permitted to execute a power to inspect.
Comment 5: Two comments suggested allowing public inspection of all
applications relied upon for priority without a petition for access, and
not just those that are abandoned.
Response: Applications are normally maintained in confidence pursuant to
35 U.S.C. 122 and public access to any application relied upon for
priority in a U.S. Patent is not appropriate. An application that issues
as a patent may be a divisional application of a pending application and
the prosecution of the parent application may have little, if any,
subject matter in common with the patent. Accordingly, if a petition for
access is filed, only that part of the prosecution history and
application that relates to the subject matter claimed in the patent is
released to petitioner.
Comment 6: One comment suggested that the term "special circumstances"
be defined in the rule.
Response: The suggestion is not adopted. How the Office defines the term
"special circumstances" as used in 35 U.S.C. 122 and 1.14(j) is
addressed in the Manual of Patent Examining Procedure (MPEP)(February
2000) in 103 under the subsection titled "Petition for Access," and
whether "special circumstances" are present depends upon the particular
facts involved, which facts may be varied.
Section 1.17: Sections 1.17(h) and 1.17(i) are amended to restate the
introductory reference to the sections referring to 1.17(h) and
(i). Sections 1.17(h) and (i) are also amended to characterize the fee
set forth in 1.17(h) as a petition fee, and the fee set forth in
1.17(i) as a processing fee. Section 1.17(h) is amended to list only
those matters that require the exercise of judgment or discretion in
determining whether the request/petition will be granted or denied
(e.g., 1.47, 1.53, 1.182, 1.183, 1.313). Section 1.17(i) is amended to
list those matters that do not require the exercise of judgment or
discretion, but which are routinely granted once the applicant has
complied with the stated requirements (e.g., 1.41, 1.48, 1.55). Thus,
the Office is amending 1.17(h) and 1.17(i) to locate matters
requiring a petition in 1.17(h), and those matters that do not
require a petition, but only a processing fee, in 1.17(i). Section
1.17(i) is also amended to provide a processing fee for: (1) filing a
nonprovisional application in a language other than English (
1.52(d)), previously in 1.17(k); and (2) filing an oath or
declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity
different from the inventive entity set forth in the international stage
( 1.497(d)).
Section 1.17(k) provides a fee for filing a request for expedited
examination under 1.155(a).
Sections 1.17(l) and (m) are amended for clarity, to eliminate
unassociated text, and to reflect fiscal year 2001 fee amounts.
Section 1.17(p) is amended to include a reference to 1.97(d) as well
as to 1.97(c) in view of the amendment to 1.97(d) referencing
1.17(p) rather than 1.17(i). The fee set forth in 1.17(p) is also
changed from $240 to $180.
Section 1.17(q) is amended for consistency with 1.17(h) and
1.17(i), as the matters listed therein apply to provisional applications.
Comment 7: Comments were received opposing the change to 1.17(p).
Response: See the discussion thereof in 1.97(d).
Section 1.19: Section 1.19(a) is amended to clarify that the fees set
forth in 1.19(a)(1) do not apply to patents containing a color
photograph or drawing, that the fee in 1.19(a)(2) applies to plant
patents in color, and that the fee in 1.19(a)(3) applies to patents
(other than plant patents) containing a color drawing.
Former sections 1.19(b)(1) and (b)(2) are divided into three sections
( 1.19(b)(1), 1.19(b)(2), and 1.19(b)(3)), with the former provisions
of 1.19(b)(3) and 1.19(b)(4) being redesignated as 1.19(b)(4)
and 1.19(b)(5). Section 1.19(b)(1) refers to the application as filed.
Section 1.19(b)(2) is limited to charges for the paper portion of the
complete patent application file wrapper, namely: $200 for copies of the
first 400 pages of a patent application file wrapper and contents and
$40 for each additional one hundred pages, or fraction thereof. Section
1.19(b)(3) provides for a charge of $55 for a copy of a compact disc in
a patent application file wrapper, and $15 for each additional compact
disc when it is part of the same order. The submission of application
information on compact disc is now provided for in 1.52(e), 1.96
and 1.821 et seq.
Section 1.19(g) is removed and reserved. The practice of comparing and
certifying documents not produced by the Office is being eliminated. The
Office considers it appropriate to certify copies of documents only when
the copy of the document has been prepared by the Office.
Section 1.19(h) is also removed and reserved. The $25 fee under
1.19(h) for obtaining a corrected or duplicate filing receipt is no
longer necessary as the Office is now performing that service without
charge. Consequently, where there is an error in a filing receipt,
applicants need no longer provide a showing that the error was due to
Office mistake or pay a $25 fee for the corrected receipt. See Changes
In Practice In Supplying Certified Copies And Filing Receipts, 1199 Off.
Gaz. Pat. Office 38 (June 10, 1997).
Comment 8: One comment stated that the proposed fee of $250 for copies
of certified and uncertified patent-related file wrappers and contents
of 400 or fewer pages was excessive, and that $100 for the first 400
pages would be more reasonable, if it costs 25 cents a page for copying.
In addition, the comment stated that there should be no reason why a
flat page charge cannot be used; that with the proposed rule, the number
of pages would have to be counted to see whether the initial 400-page
limit has been reached, and that it should not be a burden to determine
the number of pages that have been copied.
Response: The comment is adopted to the extent that the cost for the
first 400 pages has been reduced to $200. Much of the cost per page for
copying a given application depends upon the difficulty in obtaining the
application, the time required putting the papers in condition for
copying and returning those same papers to the file in their original
condition, and the number of pages being fed instead of copied as a
single sheet. A fee of $200 has been determined to be the appropriate
price for locating, preparing, copying and mailing the average
application. As to charging based upon the number of pages, this
suggestion has been carefully considered but has not been adopted. In
order to improve efficiency, the Office needs to have a procedure which
will generally require the least communications between the requester
and the Office. If a flat $200 fee is charged for file wrappers with
fewer than 400 pages, then most requesters of file wrappers can pay the
set fee and receive their order without any additional communication
with the Office.When the file wrapper is larger than 400 pages, then the
Office either will have to receive a deposit account authorization for
any fees due which can be debited or request the additional money from
the requester. Since many requesters do not have deposit accounts and
others will be reluctant to allow any charge to be made to their deposit
account or credit card, having a system where the Office charges a set
fee for most orders and possibly contacting the requester to obtain
additional fees when the order is very large will assist requesters in
minimizing the risk of unexpectedly large charges.
Section 1.22: Section 1.22(b) is amended to change "should" to "must"
because the Office needs fees to be submitted in such a manner that it
is clear for which purpose the fees are paid. Section 1.22(b) is also
amended to provide that the Office may return fees that are not itemized
as required by 1.22(b), and that the provisions of 1.5(a) do not
apply to the resubmission of fees returned pursuant to 1.22.
Section 1.22 was proposed to be amended to add 1.22(c)(1) and (2)
to define by rule when a fee had been paid, such as when payment is made
by authorization to charge a deposit account, or by submission of a
check. An effect of the rule change would have been to change the
treatment for refund purposes of payments made by authorization to
charge a deposit account. The proposed amendment will not be made as
amendment is unnecessary in view of payment receipt dates already being
governed by other rules (e.g., 1.6, 1.8 and 1.10). Notwithstanding
the lack of amendment to 1.22, the Office is changing in one aspect
its treatment of authorizations to charge deposit accounts for refund
purposes, which aspect is not explicitly governed by other rules. The
Office will no longer treat authorizations to charge a deposit account
as being received by the Office as of the date that the deposit account
is actually debited for purposes of refund payments under 1.26 and
1.28. As of the effective date of this final rule, payment by
authorization to charge a deposit account will be treated for refund
purposes the same as payments by other means (e.g., check or credit card
charge authorization), with each being treated as paid (for refund
purposes) on the date of receipt in the Office as defined by 1.6
(Example 1). The advantage of using a certificate of mailing under
1.8 for timely reply to an Office action, while using the date of
receipt by the Office ( 1.6) of the payment for refund purposes, will
be retained (Example 2). The MPEP will be revised to contain the
substance of the formerly proposed amendment to 1.22(c).
Example 1: Payment of a large entity basic filing fee by authorization
to charge a deposit account is hand-carried to the Office on October 2,
2000. The deposit account is debited by the Office on February 2, 2001.
A request for refund of a portion of the filing fee, based on a request
for small entity status, is hand-carried to the Office on March 30,
2001. Under prior practice, the request for refund would be granted as
timely submitted within two months of debiting of the deposit account.
Under the new practice, the request for refund would be denied as
untimely made. Applicant would, however, under the amended rule, have
three months (rather than two) from the October 2, 2000 payment date to
submit the refund request.
Example 2: A Notice to File Missing Parts of Application was mailed on
November 10, 2000, requiring a large entity basic filing fee with the
standard period for reply of two months. A check for payment of the
large entity basic filing fee is mailed with a 1.8 certificate of
mailing date of January 10, 2001, and is actually received in the Office
on January 15, 2001. Under prior and current practice, the January 10,
2001 reply to the November 10, 2000 Notice to File Missing Parts of
Application, which was received in the Office on January 15, 2001, is a
timely reply without the need for an extension of time under
1.136(a), and the (new) three-month period for submission of a request
for refund based on small entity status under amended 1.28(a) would
expire on April 16, 2001 (April 15, 2001 being a Sunday). For a fee
payment made by authorization to charge a deposit account, the payment
is also timely and results in the same expiration for the refund period.
For express mail fee payments under 1.10, the express mail date is
the receipt date for the payment and calculating the three month refund
period and not the actual date of receipt of the payment in the Office.
Comment 9: One comment requested that explicit guidance be provided in
the MPEP as to what would constitute a sufficiently clear statement of
the purpose for which fees are being paid under 1.22(b). In
particular, the example was raised as to whether a statement that
"filing fees were being paid" would be sufficient if the fees being paid
included both a basic filing fee and an additional independent claim fee.
Response: The comment is adopted. The MPEP will be revised to provide
examples that will clarify what constitutes a sufficiently clear
statement. The intent of the amendment is to encourage a better
explanation by applicants so that Office employees can properly account
for the payments being made by applicants and not to find ways to hold a
statement deficient. Specifically, the reference to filing fees would be
sufficient to cover filing fees of all different types of applications
and all types of claims fees.
Comment 10: One comment opposed the addition of 1.22(c), as the
addition was confusing, particularly in regard to 1.8 and 1.10
payments, and the addition was not necessary to support the proposed
amendment to 1.26(b) for a two-year period for refunds from a date
certain.
Response: The comment is adopted and the proposed addition of 1.22(c)
will not be made. The amendment is not in fact necessary to define when
a fee has been paid, in view of the change in practice regarding
treatment of deposit account practices, supra, 1.8, or 1.10, and
the actual date of receipt (in the absence of 1.8 or 1.10 being
utilized). The MPEP will be modified to better clarify date of payments,
particularly as refund time periods are impacted.
Section 1.25: Section 1.25(b) is amended to provide that an
authorization to charge fees under 1.16 (which relates to national
application filing fees) in an application filed under 35 U.S.C. 371
will be treated as an authorization to charge fees under 1.492 (which
relates to national stage fees). There are many instances in which
papers filed for the purpose of entering the national stage under 35
U.S.C. 371 and 1.494 or 1.495 include an authorization to charge
fees under 1.16 (rather than fees under 1.492) which relates to
national applications under 35 U.S.C. 111. In such instances, the Office
treats the authorization as an authorization to charge fees under
1.492 since: (1) timely payment of the appropriate national fee under
1.492 is necessary to avoid abandonment of the application as to the
United States; and (2) the basic filing fee under 1.16 is not
applicable to such papers or applications. Therefore, the Office is
changing 1.25(b) to place persons filing papers to enter the national
stage under 35 U.S.C. 371 and 1.494 or 1.495 on notice as to how
an authorization to charge fees under 1.16 will be treated.
Section 1.25(b) is also amended to provide that an authorization to
charge fees set forth in 1.18 to a deposit account is subject to the
provisions of 1.311(b), and to bring together the two sentences
relating to sufficient funds.
Comment 11: See comment for 1.311.
Section 1.26: The Office is amending the rules of practice to provide
that all requests for refund must be filed within specified time
periods. The rules of practice do not (other than in the situation in
which a request for refund is based upon subsequent entitlement to small
entity status) set any time period (other than "a reasonable time")
within which a request for refund must be filed. In the absence of such
a time period, Office fee record keeping systems and business planning
must account for the possibility that a request for refund may be filed
at any time, including many years after payment of the fee at issue.
The new two year limit for requesting refunds under 1.26 will be
applied to any fee paid regardless of when it was paid. The two year
time period for requesting a refund will end two years and sixty days
from the date of publication in the Federal Register for fees paid prior
to sixty days from the date of publication in the Federal Register, or
two years from payment of the fee for fees paid on or after sixty days
from the date of publication in the Federal Register.
It is a severe burden on the Office to treat a request for refund filed
years after payment of the fee at issue. Since Office fee record keeping
systems change over time, the Office must check any system on which fees
for the application, patent, or trademark registration have been posted
to determine what fees were in fact paid. In addition, changes in fee
amounts, which usually occur on October 1 of each year, make it
difficult to determine with certainty whether a fee paid years ago was
the correct fee at the time and under the condition it was paid.
Accounting for the possibility that a request for refund may be filed
years after payment of the fee at issue causes business planning
problems. Without any set time period within which a request for refund
must be filed, the Office must maintain fee records, in any automated
fee record keeping system ever used by the Office, in perpetuity.
Finally, as the Office can never be absolutely certain that a submitted
fee was not paid by mistake or in excess of that required, the absence
of such a time period subjects the Office to unending and uncertain
financial obligations.
Accordingly, the Office is amending 1.26 to provide non-extendable
time periods within which any request for refund must be filed to be
timely.
Section 1.26(a) is amended by dividing its first sentence into two
sentences. Section 1.26(a) is further amended for consistency with 35
U.S.C. 42(d) (the Office "may refund any fee paid by mistake or any
amount paid in excess of that required"). Under 35 U.S.C. 42(d), the
Office may refund: (1) a fee paid when no fee is required (a fee paid by
mistake); or (2) any fee paid in excess of the amount of fee that is
required. See Ex parte Grady, 59 USPQ 276, 277 (Comm'r Pat. 1943) (the
statutory authorization for the refund of fees under the "by mistake"
clause is applicable only to a mistake relating to the fee payment). In
the situation in which an applicant or patentee takes an action "by
mistake" (e.g., files an application or maintains a patent in force "by
mistake"), the submission of fees required to take that action (e.g., a
filing fee submitted with such application or a maintenance fee
submitted for such patent) is not a "fee paid by mistake" within the
meaning of 35 U.S.C. 42(d). Section 1.26(a) is also amended to revise
the "change of purpose" provisions to read "[a]change of purpose after
the payment of a fee, as when a party desires to withdraw a patent or
trademark filing for which the fee was paid, including an application,
an appeal, or a request for an oral hearing, will not entitle a party to
a refund of such fee."ql
Section 1.26(a) is also amended to change the sentence "[a]mounts of
twenty-five dollars or less will not be returned unless specifically
requested within a reasonable time, nor will the payor be notified of
such amount; amounts over twenty-five dollars may be returned by check
or, if requested, by credit to a deposit account" to "[t]he Office will
not refund amounts of twenty-five dollars or less unless a refund is
specifically requested, and will not notify the payor of such amounts."
Except as discussed below, the Office intends to continue to review
submitted fees to determine that they have not been paid by mistake or
in excess of that required, and to sua sponte refund fees (of amounts
over twenty-five dollars) determined to have been paid by mistake or in
excess of that required. Section 1.26(a), however, is amended to
eliminate language that appears to obligate the Office to sua sponte
refund fees to be consistent with the provisions of 1.26(b) which
requires that any request for refund be filed within a specified time
period.
Section 1.26(a) is also amended to facilitate refunds by electronic
funds transfer. Section 31001(x) of the Omnibus Consolidated Rescissions
and Appropriations Act of 1996,Pub. L. 104-134, 110 Stat. 1321 (1996)
(the Debt Collection Improvement Act of 1996), amended 31 U.S.C. 3332 to
require that all disbursements by Federal agencies (subject to certain
exceptions and waivers) be made by electronic funds transfer. The
Department of the Treasury has implemented this legislation at 31 CFR
Part 208. See Management of Federal Agency Disbursements, Final Rule
Notice, 63 FR 51489 (September 25, 1998).Thus, 1.26(a) is amended to
enable the Office to: obtain the banking information necessary for
making refunds by electronic funds transfer in accordance with 31 U.S.C.
3332 and 31 CFR Part 208, or obtain the deposit account information to
make the refund to the deposit account, or to have the option of
refunding by treasury check.
Specifically, 1.26(a) is also amended such that if a party paying a
fee or requesting a refund does not instruct that refunds be credited to
a deposit account, the Office will attempt to make the refund by
electronic funds transfer. If such party does not provide the banking
information necessary for making refunds by electronic funds transfer,
or instruct the Office that refunds are to be credited to a deposit
account, the Commissioner may either require such banking information or
use the banking information on the payment instrument to make a refund.
This provision will authorize the Office to:(1) use the banking
information on the payment instrument (e.g., a personal check is
submitted to pay the fee) when making a refund due to an excess payment;
or (2) require such banking information including the existence of a
deposit account in other situations (e.g., a refund is requested or a
money order or certified bank check is submitted containing an excess
payment). The purpose of this change to 1.26(a) is to encourage
parties to submit the banking information necessary for making refunds
by electronic funds transfer (if not on the payment instrument)
up-front, and not to add a step (requiring such banking information) to
the refund process. If it is not cost-effective to require the banking
information necessary for making refunds by electronic funds transfer,
the Office may either: obtain the deposit account information, or simply
issue any refund by treasury check. See 31 CFR 208.4(f).
Section 1.26(a) also provides that any refund of a fee paid by credit
card will be by a credit to the credit card account to which the fee was
charged. The Office will not refund a fee paid by credit card by
Treasury check, electronic funds transfer, or credit to a deposit
account ( 1.25).
Section 1.26(b) provides that any request for refund must be filed
within two years from the date the fee was paid, except as otherwise
provided in 1.26(b) or in 1.28(a).
Section 1.26(b) also provides that if the Office charges a deposit
account by an amount other than an amount specifically indicated in an
authorization ( 1.25(b)), any request for refund based upon such
charge must be filed within two years from the date of the deposit
account statement indicating such charge, and that such request must be
accompanied by a copy of that deposit account statement. This provision
of 1.26(b) will apply, for example, in the following types of
situations: (1) a deposit account is charged for an extension of time as
a result of there being a prior general authorization in the application
( 1.136(a)(3)); or (2) a deposit account is charged for the
outstanding balance of a fee as a result of an insufficient fee being
submitted with an authorization to charge the deposit account for any
additional fees that are due. In these situations, the party providing
the authorization is not in a position to know the exact amount by which
the deposit account will be charged until the date of the deposit
account statement indicating the amount of the charge.
Finally, 1.26(b) provides that the time periods set forth in
1.26(b) are not extendable.
Section 1.27: The Office is simplifying applicant's request for small
entity status under 1.27. The currently used small entity statement
forms are eliminated as they are no longer needed. Some material in
1.9 and 1.28 is reorganized into 1.27.
The new standard for asserting a claim for small entity status under
1.27 will be effective on the date of publication in the Federal
Register.
Small entity status is established at any time by a simple assertion of
entitlement to small entity status. The previously required statements,
which include a formalistic reference to 1.9, are no longer required.
Payment of an exact small entity basic filing ( 1.16(a), (f), (g),
(h), or (k)) or national stage ( 1.492(a)(1), (a)(2), (a)(3),
(a)(4), or (a)(5)) fee is also considered an assertion of small entity
status. This is so even if the wrong exact basic filing or national fee
was selected. To establish small entity status after payment of the
basic filing or national stage fee as a non-small entity, a written
assertion of small entity status is required to be submitted.
The parties who can assert small entity status have been
expanded/liberalized to include one of several inventors (rather than
all the inventors), a partial assignee (rather than all the assignees),
or any attorney or agent identified in 1.33. Written assertion of
small entity status and the filing of a written assertion are not
necessarily performed by the same party. Compare 1.27(c)(2)(ii) with
1.27(c)(2)(iii).
Other clarifying changes are made including a transfer of material into
1.27 from 1.9 drawn towards definitions of a small entity and from
1.28 drawn towards:(1) assertions in related, continuing and reissue
applications; (2) notification of loss of entitlement to small entity
status; and (3) fraud on the Office in regard to establishing small
entity status or paying small entity fees.
While there is no change in the current requirement to make an
investigation in order to determine entitlement to small entity status,
a recitation is added noting the need for a determination of entitlement
prior to an assertion of status; the Office is only changing the ease
with which small entity status could be claimed once it has been
determined that a claim to such status is appropriate.
For additional changes to small entity requirements see 1.28.
Problem and Background: Section 1.27 formerly required that a request
for small entity status be accompanied by submission of an appropriate
statement that the party seeking small entity status qualified in
accordance with former 1.9. Either a reference to former 1.9 or a
specific statement relating to the former provisions of 1.9 was
mandatory. For a small business concern, the small business concern had
to either state that exclusive rights remain with the small business
concern, or if not, had to identify the party to which some rights had
been transferred so that the party to which rights have been transferred
could submit its own small entity statement (former
1.27(c)(1)(iii)).This led to the submission of multiple small entity
statements for each request for small entity status where rights in the
invention were split. In part, to ensure that at least the reference to
1.9 was complied with, the Office produced four types of small entity
statement forms (for inventors, small business concerns, non-profit
organizations, and non-inventor supporting a claim by another) that
included the required reference to 1.9 and specific statements as to
exclusive rights in the invention. Where an application had not been
assigned and there were multiple inventors, each inventor had to
actually sign a small entity statement, the execution of which must have
all been coordinated and submitted concurrently. Similarly, coordination
of execution and submission of statements were needed where there was
more than one assignee. Additionally, the statement forms relating to
small business concerns and non-profit organizations had to be signed by
an appropriate official empowered to act on behalf of the small business
concern or non-profit organizations. Refunds of non-small entity fees
could only be obtained if a refund was specifically requested within two
months of the payment of the full (non-small entity) fee and was
supported by all required small entity statements. See former
1.28(a)(1). The former two-month refund window under 1.28 was not
extendable.
The rigid requirements of 1.27 and 1.28 led to a substantial number
of problems. Applicants, particularly pro se applicants, did not always
recognize that a particular reference to former 1.9 was required in
their request to establish small entity status.They believed that all
they had to do was pay the small entity fee and state that they were a
small entity. Further, the time required to ascertain who were the
appropriate officials to sign the statement and to have the statements
(referring to former 1.9) signed and collected (where more than one
was necessary), resulted, in many instances, in small entities having to
pay the higher non-small entity fees and then seek a refund. These
situations resulted in: (1) small entity applicants also having to pay
additional fees (e.g., surcharges and extension(s) of time fees for the
delayed submission of the small entity statement form); (2) additional
correspondence with the Office to perfect a claim for small entity
status; and (3) the filing of petitions with petition fees to revive
abandoned applications. This increased the pendency of the prosecution
of the application in the Office and, in some cases, resulted in the
loss of patent term. For example, under former procedures, if a pro se
applicant filed a new application with small entity fees but without a
small entity statement, the Office mailed a notice to the pro se
applicant requiring the full basic filing fee of a non-small entity.
Even if the applicant timely filed a small entity statement, the
applicant needed to timely pay the small entity surcharge for the
delayed submission of the small entity statement to avoid abandonment of
the application. A second example was a non-profit organization paying
the basic filing fee as a non-small entity because of difficulty in
obtaining the non-profit small entity statement form signed by an
appropriate official. In this situation, a refund pursuant to 1.26,
based on establishing status as a small entity, could only be obtained
if a statement under 1.27 and the request for a refund of the excess
amount were filed within the non-extendable two-month period from the
date of the timely payment of the full fee. A third example was an
application filed without the basic filing fee on behalf of a small
business concern by a practitioner who included the standard
authorization to pay additional fees. The Office would have immediately
charged the non-small entity basic filing fee without specific
notification thereof at the time of the charge. By the time the deposit
account statement was received and reviewed, the two-month period for
refund could have expired.
Accordingly, a simpler procedure to establish small entity status will
reduce processing time within the Office and will be a tremendous
benefit to small entity applicants as it will eliminate the
time-consuming and aggravating processing requirements that were
mandated by the former rules. Thus, the instant simplification will help
small entity applicants to receive patents sooner with fewer
expenditures in fees and resources and the Office can issue the patent
with fewer resources.
Assertion as to entitlement to small entity status; assertion by
writing: The Office will now allow small entity status to be established
by the submission of a simple written assertion of entitlement to small
entity status. The former formal requirements of 1.27, which included
a reference to either former 1.9, or to the exclusive rights in the
invention, are eliminated.
The written assertion is not required to be presented in any particular
form. Written assertions of small entity status or references to small
entity fees will be liberally interpreted to represent the required
assertion. The written assertion can be made in any paper filed in or
with the application and need be no more than a simple sentence or a box
checked on an application transmittal letter or reply cover sheet. It is
the intent of the Office to modify its application transmittal forms to
provide for such a check box.Accordingly, small entity status can be
established without submission of any of the former small entity
statement forms (PTO/SB/09-12) that embody and comply with the former
requirements of 1.27 and which were previously used to establish
small entity status. Practitioners may, of course, continue to use such
forms or similar forms if they believe small entity forms serve an
educational purpose for their clients.
Assertion by Payment of Small Entity Basic Filing or Basic National Fee:
The payment of an exact small entity basic filing ( 1.16(a), (f),
(g), (h), or (k)) or basic national fee ( 1.492(a)(1), (a)(2),
(a)(3), (a)(4), or (a)(5)) is also considered to be a sufficient
assertion of entitlement to small entity status. An applicant filing a
patent application and paying an exact small entity basic filing or
basic national fee automatically establishes small entity status for the
application even without any further written assertion of small entity
status. This is so even if an applicant inadvertently selects the wrong
type of small entity basic filing or basic national fee for the
application being filed. If small entity status was not established when
the basic filing or basic national fee was paid, such as by payment of a
large entity basic filing or basic national fee, a later claim to small
entity status requires an (actual) written assertion. Payment of a small
entity fee other than a small entity basic bnfiling or basic national
fee (e.g., extension of time, or issue fee) without inclusion of a
written assertion is not sufficient.
Even though applicants can assert small entity status only by payment of
an exact small entity basic filing or basic national fee, the Office
encourages applicants to also file a written assertion of small entity
status as well as pay the exact amount of the small entity basic filing
or basic national fee. To that end, the Office intends to amend the
application transmittal forms (PTO/SB/05, PTO/SB/18, PTO/SB/19) to
include a check box that can be used as a written assertion of small
entity status. A written assertion will provide small entity status
should applicant fail to pay the exact small entity basic filing or
basic national fee. The limited provision providing for small entity
status by payment of an exact small entity basic filing or basic
national fee is only intended to act as a safety net to avoid possible
financial loss to inventors or small businesses that qualify for small
entity status. As noted in the discussion relating to 1.33(a), one
may not wish to solely rely upon use of a written assertion and pay the
exact amount of the basic filing or basic national fee, particularly for
assignees and submissions by one of the inventors, after an executed
oath or declaration under 1.63 has been submitted.
Caution: Even though small entity status is accorded where the wrong
type of small entity basic filing fee or basic national fee is selected
but the exact amount of the fee is paid, applicant still needs to pay
the correct small entity amount for the basic filing or basic national
fee where selection of the wrong type of fee results in a deficiency.
While an accompanying general authorization to charge any additional
fees suffices to pay the balance due of the proper small entity basic
filing or basic national fee, specific authorizations to charge fees
under 1.17 or extension of time fees do not suffice to pay any
balance due of the proper small entity basic filing or basic national
fee because they do not actually authorize payment of small entity
amounts.
Examples: Applications under 35 U.S.C. 111(a): If an applicant were to
file a utility application under 35 U.S.C. 111(a), yet only pay the
exact small entity amount for a design application (currently the small
entity filing fees for utility and design applications are $345 and
$155, respectively), small entity status for the utility application
would be accorded. See the following examples:
(1) Where the utility application under 35 U.S.C. 111(a) was filed
inadvertently with the exact small entity basic filing fee for a design
application rather than for a utility application and an authorization
to charge the filing fee was not present, the Office would accord small
entity status and mail a Notice to File Missing Parts of Application,
requiring the $190 difference between the small entity utility
application filing fee owed and the small entity design application
filing fee actually paid plus a small entity surcharge (of $65) for the
late submission of the correct filing fee.
(2) Where the utility application under 35 U.S.C. 111(a) was filed
without any filing fee but the $155 exact small entity filing fee for a
design application was inadvertently paid in reply to a Notice to File
Missing Parts of Application, small entity status would be established
even though the correct small entity filing fee for a utility
application was not fully paid. While the Office would notify applicant
of the remaining amount due, including the need for a small entity
surcharge in view of the deficiency in the filing fee, the period for
reply to pay the correct small entity utility basic filing fee and
surcharge would, however, continue to run. Small entity extensions of
time under 1.136(a) would be needed for the later submission of the
$190 difference between the $345 small entity utility basic filing fee
owed and the $155 small entity design filing fee inadvertently paid as
well as the small entity surcharge. If there was an authorization to
charge a deposit account in the reply to the Notice, the $190 difference
would have been charged along with the small entity $65 surcharge and
the period for reply to the Notice to File Missing Parts of Application
would not continue to run.
Applications entering the national stage under 35 U.S.C. 371: Section
1.492(a) sets forth five (5) different basic national fee amounts which
apply to different situations. If an applicant pays a basic national fee
which is the exact small entity amount for one of the fees set forth in
1.492(a), but not the particular fee which applies to that
application, the applicant will be considered to have made an assertion
of small entity status. This is true whether the fee paid is higher or
lower than the actual fee required. See the following examples.
(1) An applicant pays $485 (the small entity amount due under
1.492(a)(3), where the United States was neither the International
Searching Authority (ISA) nor the International Preliminary Examining
Authority (IPEA) and the search report was not prepared by the European
Patent Office (EPO) or Japanese Patent Office (JPO)) when in fact the
required small entity fee is $420 under 1.492(a)(5), because the JPO
or EPO prepared the search report. The applicant will be considered to
have made the assertion of small entity status. The office will apply
$420 to the payment of the basic national stage fee and refund the
overpayment of $65.
(2) An applicant pays $420 (the small entity fee due under
1.492(a)(5) where the search report was prepared by the EPO or JPO). In
fact, the search report was prepared by the Australian Patent Office and
no preliminary examination fee was paid to the United States Patent and
Trademark Office. Thus, the required small entity fee is $485 under
1.492(a)(3). The applicant will be considered to have made the assertion
of small entity status. If the applicant has authorized payment of fee
deficiencies to a deposit account, the Office will charge the $65 to the
deposit account and apply it and the $420 to the basic national fee. If
there is no authorization or there are insufficient funds in the deposit
account, the basic national fee payment is insufficient and the balance
is due. If the balance is not provided before 20 or 30 months from the
priority date has expired, the application will be abandoned.
If payment is attempted of the proper type of basic filing or basic
national fee (applicant correctly identifies the type of fee for the
type of application being filed), but the amount of the fee paid is not
the exact small entity fee required (an incorrect fee amount is
supplied) and a written assertion of small entity status is not present,
small entity status will not be accorded. The Office will mail a notice
of insufficient basic filing or basic national fee with a surcharge due
as in prior practice if an authorization to charge the basic filing or
basic national fee is not present. The Office does not consider a basic
filing or basic national fee submitted in an amount above the correct
fee amount, but below the non-small entity fee amount, as a request to
establish small entity status unless an additional written assertion is
also present. The submission of a basic filing or basic national fee
below the correct fee amount also does not serve to establish small
entity status.
Where an application is originally filed by a party, who is in fact a
small entity, with an authorization to charge fees (including basic
filing or national fees) and there is no indication (assertion) of
entitlement to small entity status present, that authorization is not
sufficient to establish small entity status unless the authorization is
specifically directed to small entity basic filing or basic national
fees. The general authorization to charge fees will continue to be acted
upon immediately and the full (not small entity) basic filing or basic
national fees will be charged. Applicant will have three months to
request a refund by asserting entitlement to small entity status. This
is so even if the application is a continuing application where small
entity status had been established in the prior application.
Parties who can assert entitlement to small entity status by writing:
The parties who can assert entitlement to small entity status by writing
includes all parties permitted by 1.33(b) to file a paper in an
application. This eliminates the additional requirement of obtaining the
signature of an appropriate party other than the party prosecuting the
application. By way of example, in the case of three pro se inventors
for a particular application, the three inventors upon filing the
application can submit a written assertion of entitlement to small
entity status and thereby establish small entity status for the
application. For small business concerns and non-profit organizations,
the practitioner can supply the assertion rather than require an
appropriate official of the small business concern or organization to
execute a small entity statement form. In addition, a written assertion
of entitlement to small entity status can be made by one of several
inventors or a partial assignee. Former practice did not require an
assignee asserting small entity status to submit a 3.73(b)
certification, and such certification is not now required under the
current revision either for partial assignees or for an assignee of the
entire right, title, and interest.
Inventors asserting small entity status: Any inventor (of record) is
permitted to submit a written assertion of small entity status,
including individuals identified as inventors but who are not officially
named of record as an executed 1.63 oath/declaration has not yet been
submitted. See 1.41(a)(1). Where an application is filed without an
executed oath/declaration pursuant to 1.53(f), the Office will accept
the written assertion of an individual who has merely been identified as
an inventor on filing of the application (e.g., application transmittal
letter) as opposed to having to be named as an inventor by the filing of
an executed 1.63 oath or declaration ( 1.41(a)(1)). Sections
1.4(d)(2) and 10.18(b) are seen as sufficient basis to permit any
individual to provide a written assertion so long as the individual
identifies himself or herself as an inventor. An actual inventor who has
not been identified as an inventor (e.g., by way of application
transmittal letter) or named as an inventor (i.e., executed 1.63 oath
or declaration) in the file record may not file a written assertion as
to small entity entitlement.
Where a 1.63 oath or declaration is later filed, any original written
assertion as to small entity status (which has been submitted to the
Office by an appropriate party under 1.33(b)) will remain unless
changed by an appropriate party under 1.27(f)(2). Where a later-filed
1.63 oath or declaration sets forth an inventive entity that does not
include the person who initially was identified as an inventor and who
asserted small entity status, small entity status will also remain.
A distinction exists, however, as to who can file a written assertion of
entitlement to small entity status once the written assertion is signed.
Sections 1.27(c)(2)(ii) and 1.33(b) permit one of several inventors to
file as well as sign a written assertion. The same is not true for a
partial assignee. Section 1.27(c)(2)(iii). While a partial assignee may
sign a written assertion, the written assertion must be filed by an
appropriate party under 1.33(b).
Parties who can assert entitlement to small entity status by payment of
basic filing or national fee: Where small entity status is sought by way
of payment of the basic filing or basic national fee, any party, such as
a partial assignee, may submit payment, such as by check, and small
entity status will be accorded.
Policy Considerations: Office policy and procedures already permit
establishment of small entity status in certain applications through
simplified procedures. For example, small entity status previously could
be established in a continuing or reissue application simply by payment
of the small entity basic filing fee if the prior application/patent had
small entity status. See former 1.28(a)(2). The instant concept of
payment of the small entity basic statutory filing fee to establish
small entity status in a new application is merely a logical extension
of that practice.
There may be some concern that elimination of the small entity statement
forms will result in applicants who are not actually entitled to small
entity status requesting such status. On balance, it seems that the
requirements produce more errors where small entity applicants who are
entitled to such status run afoul of procedural hurdles created by the
former requirements of 1.27 than the requirements prevent status
claims for those who are not in fact entitled to such status.
Continued Obligations for Thorough Investigation of Small Entity Status:
Applicants should not confuse the fact that the Office is making it
easier to assert small entity status with the need to do a complete and
thorough investigation before an assertion is made that they do, in
fact, qualify for small entity status. It should be clearly understood
that, even though it is much easier to assert and thereby establish
small entity status, applicants will continue to need to make a full and
complete investigation of all facts and circumstances before making a
determination of actual entitlement to small entity status. Where
entitlement to small entity status is uncertain, it should not be
claimed. See MPEP 509.03. The assertion of small entity status (even by
mere payment of the exact small entity basic filing fee) is not
appropriate until such an investigation has been completed. Thus, in the
previous example of the three pro se inventors, before one of the
inventors pays the small entity basic filing or basic national fee to
establish small entity status, the single inventor asserting entitlement
to small entity status needs to check with the other two inventors to
determine whether small entity status is appropriate.
If small entity status is desired on the basis that the entity is a
small business concern, the investigation should include a review of
whether the business is a small business concern as defined by section 3
of the Small Business Act (Public Law 85-536 as amended by Public Law
106-50). Review of whether the business is a "concern" as the term is
used in the regulations promulgated by the Small Business Administration
at 13 CFR 121 is also appropriate. Applicants should recognize that more
is involved than merely determining that the number of employees of the
business does not exceed a numerical cap. While 13 CFR 121.802
specifically addresses the size standards for paying reduced patent
fees, it is emphasized that the provisions of general applicability set
forth in 13 CFR 121 also apply. Thus, the definition of "business
concern" set forth in 13 CFR 121.105, the provisions regarding what is
an affiliation as set forth in 13 CFR 121.103, and the provisions on the
manner in which the number of employees should be calculated as set
forth in 13 CFR 121.106 are all read into 13 CFR 121.802. Additionally,
if the business has assigned, granted, conveyed or licensed (or is under
an obligation to do so) any rights in the invention to others directly
or indirectly, the same review for each other entity would also be
appropriate.
Furthermore, once status as a small entity has been established in an
application, a new determination of entitlement to small entity status
is needed when the issue fee is due and when any maintenance fee is due.
It should be appreciated that the costs incurred in appropriately
conducting the initial and subsequent investigations may outweigh the
benefit of claiming small entity status. For some applicants it may be
desirable to file as a large entity (by not filing a small entity
statement and by submitting large entity fees) rather than undertaking
the appropriate investigations which may be both difficult and
time-consuming.
The intent of 1.27 is that the person making the assertion of
entitlement to small entity status is the person in a position to know
the facts about whether or not status as a small entity can be properly
established. That person, thus, has a duty to investigate the
circumstances surrounding entitlement to small entity status to the
fullest extent.Therefore, while the Office is interested in making it
easier to claim small entity status, it is important to note that small
entity status must not be claimed unless the person or persons can
unequivocally make the required self-certification. Sections 1.27(h)(1)
and (2) recite former provisions in 1.28(d)(1) and (2) relating to
fraud practiced on the Office.
Consistent with 1.4(d)(2), the payment of a small entity basic filing
or national fee constitutes a certification under 10.18(b). Thus, a
simple payment of the small entity basic filing or basic national fee,
without a specific written assertion, activates the provisions of
1.4(d)(2) and, by that, invokes the self-certification requirement set
forth in 10.18(b), regardless of whether the party is a practitioner
or non-practitioner.
Clarification of Need for Investigation: Section 1.27(f) is clarified by
explicitly providing that a determination "should" be made of
entitlement to small entity status according to the requirement set
forth in 1.27(a) prior to asserting small entity status.The need for
such a determination of entitlement to small entity status prior to
assertion of small entity status is set forth in terms of that there
"should" be such a determination, rather than that there "must" be such
a determination. In view of the ease with which small entity status will
now be obtainable, it is deemed advisable to provide an explicit
direction that a determination of entitlement to small entity status,
pursuant to 1.27(a), should be made before its assertion.
Consideration was given to making the need for a determination a
requirement rather than advisory; however, the decision was made to make
it advisory, particularly in view of the following possible scenario:
One of three inventors submits a written assertion of entitlement to
small entity status without making any determination of entitlement to
such status, such as by checking with the other two inventors to see if
they have assigned any rights in the invention. Small entity status is
proper at the time asserted notwithstanding the lack of a proper
determination. If the determination is set forth as a requirement
("must"), the lack of such a determination might act to cause an unduly
harsh result where small entity status was in fact appropriate and the
failure to check prior to assertion is innocent. It is recognized that
the use of "should" may cause concern that a cavalier approach to
asserting entitlement to small entity status may be taken by encouraging
some who are asserting status not to make a complete determination as
the determination is not set forth as being mandatory. On balance, it is
thought that the use of "should" will lead to more equitable results.
The danger of encouraging the assertion of small entity status without a
prior determination as to qualification for small entity status is
thought to be small, because if the status turns out to be improper, the
lack of a prior determination may result in a failure to meet the lack
of deceptive intent requirements under 1.27(h) or 1.28(c). The
Office has noted that any attempt to improperly establish status as a
small entity will be viewed as a serious matter. See MPEP 509.03.
Removal of Status: Section 1.27(g)(2) is also clarified by providing
that once small entity status is established in an application, any
change in status from small to large entity also requires a specific
written assertion to that extent, rather than only payment of a large
entity fee, similar to current practice. For example, when paying the
issue fee in an application that has previously been accorded small
entity status and the required new determination of continued
entitlement to small entity status reveals that status has been lost,
applicant should not just simply pay the large issue fee or cross out
the recitation of small entity status on the returned copy of the notice
of allowance (PTOL-85(b)), but should submit a separate paper requesting
removal of small entity status pursuant to 1.27(g)(2).
Correction of any inadvertent and incorrect establishment of small
entity status is by way of a paper under 1.28(c) as in former
practice.
Paragraph by paragraph analysis: Section 1.27 is amended: (1) in its
title to reflect placement of the definitions for small entities in the
section (transferred from former 1.9(f)), (2) to indicate that an
establishment of small entity status permits the payment of small entity
fees, and (3) to reflect transfer of subject matter from 1.28
relating to determination of entitlement to and notification of loss of
entitlement to small entity status, and fraud on the Office.
Section 1.27 is amended to provide the definition of who can qualify to
pay small entity fees: the amendments (1) define a "person" to include
inventors and also noninventors holding rights in the invention; (2)
explain that qualification depends on whether any rights in the
invention were transferred and to whom; (3) provide that a license by a
person to the Government under certain situations does not bar
entitlement to small entity status.
Section 1.27(a) contains the subject matter relating to definitions of
small entities:(1) persons, (2) small business concerns; and (3)
nonprofit organizations, in one paragraph rather than previously in
1.9(c) through (e). The expression "independent inventor" of former
1.9(c) is replaced with the term "person" in current 1.27(a)(1) (and
other paragraphs of this section). The term "person" in 1.27(a)
includes individuals who are inventors and also individuals who are not
inventors but who have been transferred some right or rights in the
invention. This clarifies that individuals who are not inventors but who
have rights in the invention are covered by the provisions of 1.27.
Sections 1.27(a)(2)(i) and (a)(3)(i) retain the requirement of former
1.27 that in order for small entity businesses and nonprofit
organizations to remain entitled to small entity status, they must not
in some manner transfer or be under an obligation to transfer any rights
in the invention to any party that would not qualify for small entity
status. The absence of this requirement from former 1.9(d) and (e)
(small business concern and nonprofit organization, respectively),
notwithstanding its presence in former 1.9(c) (independent inventor),
led to confusion as to the existence of such a requirement for small
businesses concerns and nonprofit organizations. Former 1.9(d) and
(e), where this requirement was absent, have been deleted and it is now
made clear that these rights transfer requirement applies to all parties
(independent inventors, small business concerns and nonprofit
organizations, respectively).
Section 1.27(a)(2)(ii) has the term "size" removed from the reference to
standards set by the SBA as possibly misleading as the SBA standards for
entitlement to small entity status for small businesses require more
than a size determination.
Section 1.27(a)(4)(i) provides a new exception, relating to the granting
of a license to the U.S. Government by a person, that results from a
particular rights determination. Such a license would not bar
entitlement to small entity status. Similarly, 1.27 (a)(4)(ii) has
transferred to it (from former 1.27(c)(2) and (d)(2)) the current
exceptions relating to a licence to a Federal agency by a small business
or a nonprofit organization resulting from a particular funding
agreement.
Sections 1.27(b) through (e) are reformatted and amended to recite
"assertion" as a new means for establishing small entity status to
replace "statement," and new Sections 1.27 (f), (g)(1) and (g)(2), and
(h) are added.
Section 1.27(c) is reformatted to add 1.27(c)(1) through (c)(4).
Section 1.27(c)(1) permits assertion of small entity status by a writing
that is clearly identifiable ( 1.27(c)(1)(i)), is signed
( 1.27(c)(1)(ii)), and conveys the concept of small entity status without
the need for specific words but with a clear indication of an intent to
assert entitlement to small entity status ( 1.27(c)(1)(iii)).
Section 1.27(c)(2) makes submission of a written assertion to obtain
small entity status easier in view of increased categories of parties
who could sign and file such a paper.The parties who can sign the
written assertion are identified as: one of the parties who can
currently submit a paper under 1.33(b) ( 1.27(c)(2)(i)), at least
one of the individuals identified as an inventor (even though a 1.63
executed oath or declaration has not been filed) ( 1.27(c)(2)(ii))
rather than all the inventors (applicants) as required by 1.33(b)(4)
for other types of papers, or a partial assignee ( 1.27(c)(2)(iii))
rather than all the partial assignees and any applicant retaining an
interest as required by 1.33(b)(3) for other types of papers. A
3.73(b) certification is not required for an assignee under either
1.27(c)(2)(i) or (iii). The parties who can file the signed written
assertion include any one of the identified inventors
( 1.27(c)(2)(ii)), but not a partial assignee ( 1.27(c)(2)(iii))
unless resort is made to a party identified under 1.33(b).
Section 1.27(c)(3) permits the payment, by any party, of an exact amount
of one of the small entity basic filing ( 1.16(a), (f), (g), (h), or
(k)) or basic national ( 1.492(a)(1) through (a)(5)) fees to be
treated as a written assertion of entitlement to small entity status
even where an incorrect type of basic filing or basic national fee is
inadvertently selected in error. Section 1.27(c)(3)(i) provides that
where small entity status was accorded based on the payment of a wrong
type of small entity basic filing or basic national fee, the correct
small entity amount would still be owed along with the surcharge set
forth in 1.16(e) or (l) for the basic filing fee (there is no
surcharge for the basic national fee). Section 1.27(c)(3)(ii) provides
that payment of a small entity fee in its exact amount for a fee other
than what is provided for in 1.27(c)(3) is not sufficient to
establish small entity status absent a concomitant written assertion of
entitlement to small entity status.After a basic filing or basic
national fee is paid as a large entity, a refund under 1.28(a) of the
large entity portion can only be obtained by establishing small entity
status by a written assertion and not by paying a second basic filing or
basic national fee in a small entity amount. Payment of a large entity
basic filing or basic national fee precludes paying a second basic
filing or national fee in a small entity amount to establish small
entity status.
Section 1.27(c)(4) recites material transferred from former
1.28(a)(2).
Section 1.27(d) is amended to provide that fees other than the basic
filing and basic national fees can only be paid in small entity amounts
if submitted with or subsequent to a written assertion of entitlement to
small entity status. For refunds, where the small entity assertion is
submitted after payment of a large entity fee (rather than with or
subsequent to payment of a small entity fee), the paragraph clarifies
that an exception exists for 1.28(a) refunds (of the large entity
portion of a fee within three months of payment thereof if the refund
request is accompanied by a written assertion of entitlement to small
entity status).
Section 1.27(e)(1) is added to reference 1.27(g)(1) as the means of
changing small entity status. It is clarified that where rights in an
invention are assigned, or where there is an obligation to assign, to a
small entity subsequent to an assertion of entitlement to small entity
status, a second assertion is not required. Section 1.27(e)(2) clarifies
that once small entity status is withdrawn a new written assertion is
required to again obtain small entity status.
Section 1.27(f) is added to clarify the need to determine entitlement to
small entity status prior to asserting small entity status, and that the
Office generally does not question assertions of entitlement to small
entity status.
Section 1.27(g)(1) is added to contain material transferred from former
1.28. Section 1.27(g)(2) is added to revise the current reference to
the party who can sign a notification of loss of entitlement to small
entity status to require a party identified in 1.33(b).
Sections 1.27(h)(1) and (2) are added to contain material transferred
from former 1.28(d)(1) and (d)(2) relating to fraud attempted or
committed on the Office in regard to paying small entity fees. The
material has been reformatted slightly to create 1.27(h)(1)(i) and
(ii), and 1.27(h)(2)(i) and (ii).
Comment 12: Two comments state that the term "person" as proposed in
1.9(f) (now transferred to 1.27(a)(1)) is confusing. While person is
defined in the first sentence as an inventor or other individual, the
second sentence rather than using person uses inventor or other
individual as if to imply that an inventor or individual who has
transferred some rights is not a person within the meaning of 1.27.
This seems to be inconsistent with 1.27(c) that qualifies "person" as
a party entitled to small entity status even if an inventor has agreed
to license rights in the invention to another small entity. It was
suggested that the second sentence be deleted and combined with the
first sentence.An additional argument was made that while it is
understood that "person" was being used in the context of 1.27 small
entity rights, the normal legal definition of "person" includes
corporations and the term is therefore broader than the use made of it
in 1.27.It was suggested that another word be used or the term
"natural" be used as a modifier.
Response: The comments are not adopted. The use of "person" in the first
sentence of 1.27(a)(1) is intended to refer to those who can qualify
for small entity status. That the second sentence starts with "[a]n
inventor or other individual who has transferred some rights" is
intentional in that it may be that such inventor or individual cannot
qualify for small entity status if rights have been transferred to a
party who cannot qualify for small entity status. It is intended under
1.27(c) that an inventor who has transferred rights to another who can
qualify shall not be disqualified from claiming small entity status
whether an individual, small business or nonprofit organization. The use
of two sentences enables the separation of two different concepts -
where no transfer of rights has occurred, and where some transfer of
rights has occurred. Use of the suggested combined sentence may not make
it clear to small entities that circumstances where there is no transfer
of rights are included. Similarly, it is believed that the use of the
term "person" without a modifier of "natural" would have the best
opportunity for being understood by the target audience of 1.27.
Comment 13: Several comments supported the proposed change to 1.27,
as well as to 1.9 and 1.28.
Comment 14: Two comments opposed the ability to obtain small entity
status based on payment of a small entity filing fee in 1.27(c)(3)
(proposed as 1.27(b)(3)) maintaining that the entire procedure is now
very complex and would not be understood by the great majority of
practitioners and their support staffs and the Office support staff that
must administer the program. It is believed that it is not too much to
ask that someone seeking to claim small entity status make an
affirmative statement regarding eligibility for such status. Although
these procedures affect small entities to a greater extent, large
entities are affected by the costs that would be associated with trying
to implement a complex scheme of which small entities could not properly
avail themselves.
Response: The comments are not adopted. Sixty percent of all refund
requests that the Office handles are related to small entity status. As
outlined in the proposed rulemaking and again in this final rule, small
entities are having a very difficult time obtaining, in a timely manner,
a benefit that they are clearly entitled to, particularly for pro se
inventors.The amended rule will obviate many of the difficulties now
encountered by small entities.The payment of an exact amount of small
entity filing fee is seen to be just as much an affirmative act as the
submission of a statement of entitlement, and is probably far clearer an
act of intention to claim small entity status than resort only to wide
variants of language inevitably submitted by pro se applicants that must
then be interpreted by the Office. The Office will, however, endeavor to
have applicants supply an actual statement of entitlement to small
entity status by providing a check box for such (with a clear easily
understood statement) on application transmittal forms.
Comment 15: One comment states that 1.27(a)(4)(ii) (formerly
1.9(f)(4)(ii)) is confusing because it states that a "license" to a
Federal agency is not a "license" per se.Alternative language is
suggested to clarify the section.
Response: The comment is adopted.
Comment 16: One comment suggested a further simplification by permitting
any person authorized to act on behalf of the inventor/applicant to make
an assertion of entitlement to small entity status. The Office should
have an announced policy of not verifying whether the person making the
assertion is in fact authorized with the burden resting with applicant
that the person making the assertion is authorized to do so. The
situations where a person would not be authorized are thought to be so
rare as to justify the Office removing itself from determining proper
authorization.
Response: The comment is not adopted. Sections 1.27(c)(2)(i) through
(c)(2)(iii) identifies certain parties who can sign a written assertion
of entitlement to small entity status. The parties, while not all
encompassing, are nevertheless broadly defined and include all the
parties who can reasonably be expected to desire to submit a written
assertion. It is not seen that the Office should accept a written paper
from a party not so included. Section 1.27(c)(3), as made final, permits
any party (in addition to those parties defined in 1.27(c)(2)) to pay
the basic small entity filing fee and thereby assert entitlement to
small entity status. If a need were to arise for some party other than
those defined in 1.27(c)(2) to assert small entity status, it would
be expected to be close to the time of filing the application and when
the filing fee needs to be paid. In such circumstances, any party could
pay the small entity filing fee. To permit the acceptance of a paper by
a third party with whatever statements both germane to small entity
entitlement and whatever other matters might be raised therein would
seem to be burdening applicants with unnecessary problems.
Section 1.28: Section 1.28 is amended to be entirely reformatted with
some material transferred to 1.27.
Section 1.28(a) is amended to allow a three-month period (formerly a
two-month period) for refunds based on later establishment of small
entity status. See further discussion in 1.28(b)(1).
Section 1.28(b) is amended to set forth 1.28(b)(1), defining the
start date of the three- month refund period of 1.28(a) to be the
date that the full fee has been paid (transferred from former
1.28(a)(1)), and 1.28(b)(2), stating that the deficiency amount owed
under 1.28(c) is calculated by using the date on which the deficiency
was paid in full (transferred from former 1.28(c)).
Sections 1.28(b)(1) and (2) were proposed to be amended to refer to
1.22(c) setting forth a definition of when a fee has been paid by the
means used to pay the fee, but will not be so amended as the proposed
amendment to 1.22(c) will not be made. The subject matter of proposed
1.22(c), which proposed to set forth that the filing date for an
authorization to charge fees starts the period for refunds under
1.28(a) will, however, be given effect by internal instruction as of the
effective date of the instant final rule and will be reflected in the
MPEP. See the discussion of 1.22, above. The previous time period for
a refund request was two months from payment of the full fee. The date
of payment for refund purposes varied depending on the means the
applicant used to pay the required fee. For example, if the applicant
paid the required fee by check, the date of payment was the date on
which the fee paper, including the check, was filed in the Office.If the
applicant authorized a charge to a deposit account, however, the date of
payment was the date the Office debited the deposit account. In view of
the change in practice that results in 1.28(b)(1) according the same
date of payment for checks and authorizations to charge deposit
accounts, the refund period of 1.28(a) is extended to three
months.This will in part offset any shortening of the refund time period
that may result from starting the time period as of the receipt (or
1.8 or 1.10) date of the fee paper instead of the debit date for an
authorization to charge a deposit account. Additionally, in view of
changes in practice under 1.27 to ease the claiming of small entity
status, the need for refunds should diminish, and the different payment
date of an authorization to charge a deposit account for small entity
refund purposes should not cause much inconvenience to applicants.
Section 1.28(c) is amended to require that deficiency payments must be
submitted separately for each file ( 1.28(c)(1)) and must include the
itemization of the deficiency payment by identifying: the type of fee
along with the current fee amount ( 1.28(c)(2)(ii)(A)), the small
entity amount paid and when ( 1.28(c)(2)((ii)(B)), the deficiency owed
for each individual fee paid in error ( 1.28(c)(2)(ii)(C)), and the
total deficiency payment owed ( 1.28(c)(2)(ii)(D)), and is amended to
provide that any failure to comply with the separate payment and
itemization requirements will allow the Office at its option to charge a
processing fee or set a non-extendable one-month period for compliance
to avoid return of the paper ( 1.28(c)(3)).
In each of Fiscal Years 1999 and 2000, certain patent fees were reduced.
See Revision of Patent and Trademark Fees for Fiscal Year 2000, Final
Rule, 64 FR 67774 (December 3, 1999), and Revision of Patent Fees for
Fiscal Year 1999, Final Rule, 63 FR 67578 (December 8, 1998). Thus, a
sentence was added in 1.28(c)(2)(i) that requires a deficiency
payment to be at least equal to the amount paid in error as a small
entity and is also calculated as of the date the deficiency is paid in
full. For example, the basic filing fee for a utility application was
reduced from $760 to $690. Where the small entity basic filing fee had
been improperly paid by submission of $380 under the prior fee amount,
if the error was determined and paid in full when the new amount is in
effect, the balance owed at the date of payment in full would be $380
(the amount that is at least equal to the amount paid in error and not
$310 (the new large entity amount of $690- the small entity amount paid
in error of $380). (Note, for revival under 1.137, if abandonment
occurred for failure to pay a basic filing fee, the amount owed would be
the fee in effect when the 1.137 petition was filed and not the fee
previously owed causing abandonment.).
Paragraph by Paragraph Analysis: The title of 1.28 is revised in view
of transfer of material to 1.27 to focus on refunds and on how errors
in status are excused.
Sections 1.28(a) through (c) are reformatted.
Section 1.28(a)(1) is amended as 1.28(a).
Section 1.28(a) is amended to clarify that the period for a refund runs
from payment of the "full fee," and that it is the payment of the full
fee that is considered the significant event relative to establishing
status for a particular fee. Additionally, 1.28(a) amends the time
period for requesting a refund based upon later establishment of small
entity status. The time period is three months measured from the date of
the timely payment of the full fee.
Some subject matter in former 1.28(a)(2) has been transferred to
1.27(c)(4). The next to last sentence, relating to filing a continuing
or reissue application and referencing a small entity statement in the
prior application or patent, has been deleted as unnecessary.The
formerly required reference to status in the prior application or patent
is replaced by the equally easily written assertion of 1.27(c)(4) in
the related, continuing or reissue application. Written references to
small entity status in a prior application, including submission of a
copy of the small entity statement in a prior application, submitted in
a continuing application subsequent to the effective date of any final
rule, will be liberally construed under 1.27(c)(1)(iii). Similarly,
the last sentence of current 1.28(a)(2) is deleted as the payment
option for establishing small entity status in continuing or reissue
applications has been expanded in 1.27(c)(3) to include all
applications.
Caution: Although the Office intends to liberally construe what is
deemed to be anassertion of small entity status, the concept of
entitlement must be clearly conveyed.
Example 1: A prior application has been accorded small entity status. A
continued prosecution application (CPA) under 1.53(d) is filed with a
general authorization to charge fees that does not state that the fees
to be charged are small entity fees. Even though the CPA contains the
same application number as its prior application (and the small entity
statement), it would not be accorded small entity status and large
entity filing fees would be immediately charged. This would be so
because a new determination of entitlement to small entity status must
be made upon filing of a new application, such as a CPA. Accordingly, in
filing the CPA there must be some affirmative act to indicate that the
determination has been done anew and small entity status is still
appropriate. Wherea copy of the small entity statement from the prior
application, or a written assertion in the CPA application transmittal
letter, or an authorization to charge small entity fees was present, the
result would be reversed and small entity status would be accorded the
CPA application on filing.
Example 2: A request for continued examination under 1.114 is not the
filing of a new application and the application would retain any small
entity status previously accorded without the need to do a new
investigation or request status by written assertion or payment of an
exact small entity 1.17(e) fee.
The subject matter in former 1.28(a)(3) has been transferred to
1.27(e)(1).
Section 1.28(b) is amended to have its subject matter transferred to
1.27(g)(1) and (2).New 1.28(b)(1) and (b)(2) are added. Sections
1.28(b)(1) and (b)(2) were proposed to reference 1.22(c) which was
proposed to define the date that a fee was considered paid.In view of
the decision not to go forward with the proposed change to 1.22(c),
the references to 1.22(c) in 1.28(b)(1) and (2) will not proceed.
Section 1.28(b)(1) defines the date a fee is paid for the purpose of
starting the three- month period for refund. Former practice for
authorizations to charge deposit accounts was to give benefit of the
date that the deposit account was actually debited by the Office, which
was a later time than when the paper authorizing charge of the fee to a
deposit account was filed with the Office. That practice is now changed,
see discussion re 1.22, and the change will be reflected in the MPEP.
It is the date the fee paper is considered received in the Office, not
the date of debit of the fee to a deposit account, that will start the
three-month refund period.
Section 1.28(b)(2) states that the date when a deficiency payment,
pursuant to 1.28(c), is paid in full determines the amount of
deficiency that is due.
Example: A small entity issue fee has been paid in error in January and
a paper under 1.28(c) was submitted the following June with the
deficiency payment calculated based on the fees in effect as of June.
The deficiency payment was incorrectly determined so that the full
amount owed (for the issue fee) was not submitted in June. If the
mistake in the June payment is not discovered until the following
November, the extra amount owed must be recalculated to take into
account any (later legislation, October 1) increase in the issue fee.
Section 1.28(c) is amended to recite that separate submissions,
including separate payments and itemizations, are required for any
deficiency payment.
Section 1.28(c)(1) requires that a deficiency
paper/itemization/submission be limited to one application or one patent
file. Where, for example, the same set of facts has caused errors in
payment in more than one application and/or patent file, a separate
paper would need to be submitted in each file for which an error is to
be excused.
Section 1.28(c)(2) requires that for each fee that was erroneously paid
as a small entity, the deficiencies owed must be paid, and the payment
of the deficiencies must be itemized. Section 1.28(c)(2)(i) provides in
part where there has been a fee decrease, the deficiency owed is equal
to the amount (previously) paid in error and not the difference between
the amount (previously) paid in error and the new lower large entity
fee. Section 1.28(c)(2)(ii) requires the following itemizations: the
particular fee involved (e.g., basic filing fee, extension of time fee)
( 1.28(c)(2)(ii)(A)), the small entity fee amount actually paid and
when (for example, distinguishing between two one-month extension of
time fees erroneously paid on two different dates) ( 1.28(c)(2)(ii)(B)),
the actual deficiency owed for each fee previously
paid in error ( 1.28(c)(2)(ii)(C)), and the total deficiency owed that
is the sum of the individual deficiencies owed ( 1.28(c)(2)(ii)(D)).
Section 1.28(c)(3) addresses the failure to comply with the separate
submission, including separate payment and itemization requirements of
1.28(c)(1) and (c)(2). Section 1.28(c)(3), upon failure to comply,
permits the Office at its option either to charge a processing fee
( 1.17(i) is suitably amended) to process the paper or require compliance
within a one-month non-extendable time period to avoid return of the
paper.
Former 1.28(d)(1) and (d)(2) are amended to have the material
relating to fraud attempted or committed on the Office as to paying of
small entity fees, transferred to 1.27(h)(1) and (2). New
1.28(d) is added to clarify that any paper submitted under 1.28(c) is
also treated as a notification of loss of small entity status under
1.27(g)(2).
Section 1.33: Section 1.33(a) is reformatted to create additional
1.33(a)(1) and (a)(2) to separately identify the parties who can change
a correspondence address depending upon the presence or absence of a
1.63 oath/declaration. The revision is intended to make clear what may
be a confusing practice to applicants as to which parties can set forth
or change a correspondence address when an application does not yet have
an executed 1.63 oath or declaration by any of the inventors. See
1.14(d)(4) for a similar change regarding status and access information.
In this section references to a 1.63 oath/declaration are intended to
mean an executed oath/declaration by any inventor, but not necessarily
all the inventors.
Section 1.33(a) is amended to provide that in a patent application the
applicant must, either in an application data sheet ( 1.76), or in a
clearly identifiable manner elsewhere, in any papers submitted with an
application filing, specify a correspondence address to which the Office
will send notices, letters and other communications relating to the
application. It is now stated that where more than one correspondence
address is specified, the Office would determine which one to establish
as the correspondence address. This is intended to cover the situation
where an unexecuted application is submitted with conflicting addresses,
such as one correspondence address being given in the application
transmittal letter, and a different one in an accompanying unexecuted
1.63, or other similar situations. The determination of which of the
conflicting correspondence addresses to use will be made on a case by
case basis, to include such factors as: use of the correspondence
address in the earliest of two unexecuted declarations submitted at
different times, or if conflicting addresses appear in the same
declaration, use of the first correspondence address.
Section 1.33(a) requests the submission of a daytime telephone number of
the party to whom correspondence is to be addressed. While business is
to be conducted on the written record ( 1.2), a daytime telephone
number would be useful in initiating contact that could later be reduced
to a writing. The phone number would be changeable by any party who
could change the correspondence address. The term "registered" has been
placed before the expression "attorney or agent" for clarification
purposes. See also 1.33(b) of this section and sections 1.34 and 1.36.
Section 1.33(a)(1) provides that any party filing the application and
setting forth a correspondence address could later change the
correspondence address provided that a 1.63 oath/declaration by any
of the inventors has not been submitted. The parties who may so change
the correspondence address would include only the one inventor filing
the application, even if more than one inventor was identified on the
application transmittal letter. If two of three inventors filed the
application, the two inventors filing the application would be needed to
change the correspondence address. Additionally, any registered
practitioner named in the application transmittal letter, or a person
who has the authority to act on behalf of the party that will be the
assignee (if the application was filed by the party that will be the
assignee), could change the correspondence address. A registered
practitioner named in a letterhead would not be sufficient, but rather a
clear identification of the individual as being a representative would
be required. A company (to whom the invention has been assigned, or to
whom there is an obligation to assign the invention) who files an
application, is permitted to designate the correspondence address, and
to change the correspondence address, until such time as a (first)
1.63 oath/declaration is filed. The mere filing of a 1.63
oath/declaration that does not include a correspondence address does not
affect any correspondence address previously established on filing of
the application, or changed per 1.63(a)(1), even if the application
was filed by a company that is only a partial assignee. The expression
"party that will be the assignee," rather than assignee, is used in that
until a declaration is submitted, inventors have only been identified,
and any attempted assignment, or partial assignment, cannot operate for
Office purposes until the declaration is supplied. Hence, if the
application transmittal letter indicates that the application is being
filed on behalf of XYZ company, with an assignment to be filed later,
XYZ company would be allowed to change the correspondence address
without resort to 3.73(b) until an executed oath or declaration is
filed, and with resort to 3.73(b) after the oath or declaration is
filed.
Section 1.33(a)(2) retains the current requirements for changing a
correspondence address when a 1.63 oath/declaration by any of the
inventors has been filed. Where a correspondence address was set forth
or changed pursuant to 1.33(a)(1) (prior to the filing of a 1.63
oath or declaration), that correspondence address remains in effect upon
filing of a 1.63 declaration and can then only be changed pursuant to
1.33(a)(2).
Section 1.33(b) has been simplified to make it easier to understand who
are appropriate parties to file papers, particularly in view of the
change to 3.71(b). The paragraph has also been amended to provide an
exception for the filing of a written assertion of small entity status
under 1.27(c)(2)(ii). One of several inventors will now be able to
sign a written assertion of small entity status and be an appropriate
party to file such assertion/paper.
Section 1.33(b)(1) has the term "registered" placed before the
expression "attorney or agent" for clarification purposes. See also
1.33(a) and 1.34 and 1.36.
Section 1.33(b)(3) is amended to add a reference to 3.71.
Comment 17: One comment was received requesting that the ability to
change the correspondence address not be keyed to the filing of a
1.63 oath/declaration, especially when such oath/declaration is signed
by less than all the inventors and when it may in no way involve the
correspondence address. The flexibility to change the correspondence
address established by 1.33(a)(1) should remain until a party set
forth in 1.33(b), except 1.33(b)(2), establishes a correspondence
address.
Response: The comment is not adopted. Section 1.33(a)(1) increases the
flexibility in changing a correspondence address. Such increased
flexibility, however, should not extend past the time that applicants
can reasonably be expected to set forth a correspondence address, such
as when the inventors are named by the submission of an
oath/declaration. The submission of the oath/declaration will not alter
the current correspondence address of record unless the oath/declaration
intentionally does so by identifying a correspondence address, or an
accompanying paper to the oath/declaration does so. Upon submission of
the oath/declaration, the inventors are known for the first time and it
is now their call as to the appropriate correspondence address absent
intervention by the assignee of the entire right, title, and interest.
It is inappropriate that once an oath/declaration is submitted, a
practitioner without power of attorney or only one of the inventors can
continue to change the correspondence address.
Section 1.34: Sections 1.34(a) and (b) are amended to incorporate a
reference to 1.31. Section 1.34(b) is amended to place the term
"registered" before the expression "attorney or agent." Unlike 1.31,
which provides for an applicant being represented by registered patent
attorney or agent, former 1.34(b) (and 1.36) refers to an attorney
or agent who represents an applicant. The Office of Enrollment and
Discipline receives calls inquiring if 1.34(b) (and 1.36)
explicitly or implicitly authorize unregistered attorneys to practice
before the Office in view of the absence of the term "registered" in
these sections, which is not the case. The amendments to 1.34(a)
and (b) (and 1.36) bring 1.34(a) and (b) (and 1.36) into
conformity with 1.31, which permits an applicant to be represented by
a registered attorney, or a registered agent, and clarifies that the
attorney or agent referenced in 1.34(a) and (b) (and 1.36) is
only the registered attorney or registered agent referenced in 1.31.
See also 1.33(a) and (a)(1), and 1.36.
Section 1.36: See the discussion relating to 1.34.
Section 1.41: Section 1.41(a)(1) is amended to indicate that a paper
including the processing fee set forth in 1.17(i) is required for
supplying or changing the name(s) of the inventor(s) where an oath or
declaration prescribed in 1.63 is not filed during pendency of a
nonprovisional application, rather than a petition including a petition
fee, for consistency with the amendment to 1.17(i).
Section 1.41(a)(2) is amended to indicate that a paper including the
processing fee set forth in 1.17(q) is required for supplying or
changing the name(s) of the inventor(s) where a cover sheet prescribed
by 1.51(c)(1) is not filed during the pendency of a provisional
application, rather than a petition including a petition fee, for
consistency with the amendment to 1.17(q).
Section 1.41(a)(3) is amended to delete the language concerning an
alphanumeric identifier, and to provide that the name, residence, and
citizenship of each person believed to be an actual inventor should be
provided when the application papers pursuant to 1.53(b) are filed
without an oath or declaration, or the application papers pursuant to
1.53(c) are filed without a cover sheet.
Section 1.41(a)(4) is added to set forth that the inventors who
submitted an application under 1.494 or 1.495 are the inventors in
the international application designating the United States and that the
provisions of 1.48(f)(1), whereby submission of an executed
oath/declaration operates to change the inventorship, do not apply to
applications entering the national stage.
Section 1.41(c) is amended by replacement of the term "file" with a
recitation of physical or electronic delivery of the application to the
Office. Section 1.41(c) permits any person authorized by the applicant
to file a patent application in order to receive a filing date. The
amendment clarifies that 1.41(c) is intended to apply solely to the
(physical or electronic) delivery of a patent application to the Office
as opposed to being inclusive of acts preceding delivery of the
application relating to drafting or otherwise preparing an application.
Comment 18: One comment opposed the change to 1.41(a)(3). The comment
noted that the Office gave no justification for the change deleting the
instruction that an alphanumeric identifier should be supplied where no
inventor's name is being given. The change is believed to give the
impression of reversing the practice of not requiring identification of
inventors on filing of the application.
Response: The comment is not adopted. The availability of an
alphanumeric identifier is no longer explicitly set forth as the Office
much prefers that at least one inventor be identified, particularly to
aid in the national security screening of applications. To the extent
that the presence of the instruction would seem to encourage use of an
identifier other than the inventors, it is desirable to eliminate it.
There is, however, no intent on the part of the Office to reverse the
current practice and ban the use of an identifier other than an
inventor's name. It is noted that where an inventor's name is not
supplied, some other identifier is usually present, such as an attorney
docket number, and that may continue to be used as an identifier in the
absence of an inventor's name.
Comment 19: One comment opposed the change to 1.41(a)(4) stating that
it is unclear as to what the change means and that it would seem to
preclude correction of the inventorship after an international
application is filed.
Response: The comment is adopted in part as a clarifying parenthesis has
been added to the paragraph stating that 1.48(f) does not apply. The
intent of the change is not to preclude correction of inventorship in a
35 U.S.C. 371 national stage application, but to reflect that filing an
international application signed by all applicants and publishing it
locks in the naming of the inventors. Filing of a declaration does not
reset the inventors as it does in national 35 U.S.C. 111 practice.
Correction of inventorship for a national stage application can be done
under the provisions of 1.48(a) through (c).
Section 1.44: Section 1.44 is removed and reserved to eliminate the
requirement that proof of the power or authority of the legal
representative be recorded in the Office or filed in an application
under 1.42 or 1.43. Although proof of authority is no longer
required to be submitted to the Office, applicants may wish to consider
obtaining proof of authority of the legal representative and recording
such a document with any assignment documents for record-keeping
purposes. In order to make a patent application on behalf of a deceased
or incapacitated inventor, the legal representative may now simply sign
the 1.63 oath or declaration (which includes the full name and
citizenship of the deceased inventor as well as the residence and
mailing address, if not provided on an application data sheet) as the
legal representative of the particular inventor with the title "Legal
Representative" placed under the signature. In other words, in a
signature block containing the deceased or incapacitated inventor's
name, the legal representative will sign "for" the deceased or
incapacitated inventor supplying the representative's name and stating
that he or she is the legal representative. In addition, the legal
representative should provide his or her mailing address so that the
Office can directly communicate with the legal representative if
necessary. See 1.64(b).
The deletion of the 1.44 proof requirement for the legal
representative of 1.42 and 1.43 will be effective on the date of
publication in the Federal Register with 1.64 as to all pending
papers under 1.42 and 1.43 that have not had the proof requirement
satisfied. If a requirement for proof of authority has been made by an
examiner, the requirement can be satisfied by a reply referencing this
final rule.
Section 1.47: Section 1.47 is amended to refer to "the fee set forth in
1.17(h)" for consistency with the amendment to 1.17(h) and (i). See
discussion of the amendment to 1.17. Section 1.47 is also amended to
add a new 1.47(c) providing that the Office will send notice of the
filing of the application to all inventors who have not joined in the
application at the address(es) provided in the petition under 1.47,
and will publish notice of the filing of the application in the Official
Gazette. This provision is currently included in each of 1.47(a)
and 1.47(b). Section 1.47(c) also provides that the Office may dispense
with such notice provisions in a continuation or divisional application
where notice regarding the filing of the prior application has already
been sent to the nonsigning inventor(s). The patent statute gives the
Office great latitude as to the notice that must be given to an inventor
who has not joined in an application for patent. See 35 U.S.C. 116, 2
("after such notice to the omitted inventor as [the Commissioner]
prescribes"), and 118 ("upon such notice to [the inventor as the
Commissioner] deems sufficient"). Providing notice to a nonjoined
inventor in a continuation or divisional application places a
significant burden on the Office, especially when such continuation or
divisional application is filed using a copy of the oath or declaration
from a prior application under 1.63(d). In addition, providing
additional notice to the nonjoined inventor in the continuation or
divisional application provides little actual benefit to the nonjoined
inventor, as a similar notice was previously given during the processing
of the prior application. Thus, the Office considers it appropriate to
dispense with notice under 1.47 in situations (continuations or
divisionals of an application accorded status under 1.47) in which
the nonjoined inventor was previously given such notice in a prior
application.
Section 1.48: Section 1.48 is amended to have the title revised to
reference the statutory basis for the rule, 35 U.S.C. 116.
Sections 1.48(a) through (c) are amended to: delete the recitation of
"other than a reissue application" as such words are unnecessary in view
of the indication in the title of the section that the section does not
apply to reissue applications and the revision to 1.48(a) (discussed
below), to change "When" to "If," and to add "nonprovisional" before
"application" where it does not already appear.
Sections 1.48(a)(1) through (e)(1) are revised to replace the reference
to a "petition" with a reference to a "request." What is meant to be
encompassed by the term "petition," as it was used in the sections, may
be better defined by the term "request." The presence of "petition"
formerly in the sections was misleading to the extent that it may
indicate to applicants that papers under this section have to be filed
with the Office of Petitions when in fact amendments to correct the
inventorship under 1.48 are to be decided by the primary examiners in
the Technology Centers and should be submitted there. See MPEP
1002.02(e). Where, however, the 1.48 request is accompanied by a
petition under 1.183 seeking waiver of a requirement under 1.48,
both papers should be directed to the Office of Petitions.
The requirements for a statement formerly in 1.48(a)(1), (c)(1),
and (e)(1) are placed in 1.48(a)(2), (c)(2), and (e)(2) and
corresponding changes made in subsequent paragraphs.
Sections 1.48(b) and (d) are revised to indicate that a request to
correct the inventorship thereunder must be signed by a party as set
forth in 1.33(b) (which would enable a practitioner alone to sign all
the needed papers). The inventors, whether being added, deleted, or
retained, are not required to participate in a correction under these
paragraphs.Thus, the inventor(s) to be deleted pursuant to 1.48(b) in
a nonprovisional application, or added pursuant to 1.48(d) in a
provisional application, and those inventors that are retained in either
situation, are not required to participate in the inventorship
correction, such as by signing a statement of facts, or an oath or
declaration under 1.63.
Sections 1.48(a) through (e) are revised to define the fee required as a
"processing" fee, to delete the reference to a "petition," and to
indicate that amendment of the application to correct the inventorship
would require the filing of a request to correct the inventorship along
with other items, as set forth in the respective paragraphs of this .
The latter change is not one of substance but a clarification that the
amendment requirement of the statute, 35 U.S.C. 116, merely refers to
the change in Office records (face of the application file wrapper
corrected, notation on a previously submitted 1.63 oath/declaration,
change in Patent Application Location and Monitoring (PALM) data, and a
corrected filing receipt issued) that would be made upon the grant of a
1.48 request. Thus, amendment of the inventorship in an application is
not made as an amendment under 1.121. Where there is a need to make
an actual amendment under 1.121, such as when a cover page of the
specification recites the inventive entity, an amendment should also be
submitted. In the absence of such an amendment, the Office may, at its
option, correct the inventor's names on the cover sheet or in the
specification. Where an application needs a correction of inventorship
under 1.48 and a paper is submitted with a title that does not set
forth the paper as a request under 1.48, but it is clear from the
paper submitted that an inventorship correction is desired, a request
for a correction of inventorship under 1.48 will be inferred from the
paper submitted and will be treated under 1.48.
A request for a corrected filing receipt correcting a typing or office
error in the names of the inventors will not ordinarily be treated under
1.48. Any request to correct inventorship should be presented as a
separate paper. For example, placing a request under 1.48(b) to
correct the inventorship in the remarks section of an amendment may
cause the Office to overlook the request and not act on it.
Section 1.48(f)(1) is clarified to recite that its provision for
changing the inventorship only applies if an oath or declaration under
1.63 has not been submitted by any of the inventors, and that
submission of an oath or declaration under 1.63 by any of the
inventors is sufficient to correct an earlier identification of the
inventorship.
Example 1: An unexecuted application is filed identifying A, B, and C as
the inventors. A 1.63 declaration is also submitted signed only by A
and naming A, B, and C as the inventors. To complete the application
( 1.53(f)), a 1.63 oath or declaration by B and C identifying the
inventors as A, B, and C is needed. In attempting to reply to a Notice
to File Missing Parts of Application requiring the missing oath or
declaration by B and C, it is discovered that D is also an inventor. A
declaration by A, B, C, and D, if submitted without a request under
1.48(a) to correct the inventorship to A-D from A-C, will not be
accepted as a reply to the Notice to File Missing Parts of Application.
Thus, it should be clear that a first oath or declaration under 1.63
completed by less than all the inventors initially identified (whether
the oath or declaration is submitted at the time of filing of the
application or thereafter), will, under 1.48(f)(1), lock in the
inventorship, and the later filing of another declaration by a different
but, the actual entire inventive entity, will not be effective under
1.48(f)(1) to correct the inventorship.
Example 2: An application is filed identifying A, B, and C as the
inventors in the application transmittal letter, and a 1.63
declaration is concomitantly submitted only by A, naming only A, as the
sole inventor. The inventorship of the application is A (because of the
declaration of A). A later submitted 1.63 declaration by A, B, and C
would require a request under 1.48(a) to correct the inventorship to
A, B, and C before the declaration by A, B, and C could be accepted.
Section 1.48(f)(1) is amended to reference 1.497(d) for submission of
an executed oath or declaration naming an inventive entity different
from the inventive entity set forth in the international stage when
entering the national stage under 35 U.S.C. 371 and 1.494 or 1.495.
Section 1.48(h) is added to indicate that the provisions of this section
do not apply to reissue applications, and to reference 1.171 and
1.175 for correction of inventorship in reissue applications.
Section 1.48(i) is added to reference 1.324 and 1.634 for
corrections of inventorship in patents and interference proceedings,
respectively.
Sections 1.48(a) through (i) are amended to have titles added to make
locating the appropriate paragraph easier.
Section 1.51: Section 1.51(b) is amended to include a reference to
1.53(d), as a proper continued prosecution application under 1.53(d)
in which the basic filing fee has been paid is a complete application
under 1.51(b).
Section 1.52: The title of 1.52 is amended to reflect the addition of
1.52(e).
Sections 1.52(a) and (b) are amended to clarify the paper standard
requirements for papers submitted as part of the record of a patent
application or a reexamination proceeding. Section 1.52(a) sets forth
the paper standard requirements for all papers that are to become a part
of the permanent records of the Office, and 1.52(b) sets forth the
paper standard requirements for the application (specification,
including the claims, drawings, and oath or declaration) or a
reexamination proceeding where applicable and any amendments or
corrections to the application or proceeding. Papers making up the
application or proceeding where applicable or an amendment or correction
to the application or proceeding must meet the requirements of
1.52(a) and (b), but papers submitted for the record that do not make up
the application (e.g., a declaration under 1.132) or proceeding need
not meet the requirements of 1.52(b).
Section 1.52(a)(5) provides that for papers not in compliance with
1.52(a)(1), that applicant must, within a set time period, provide
appropriate substitute papers.
Section 1.52(b)(6) is being added to include optional paragraph
numbering as a basis for the new amendment practice in 1.121 and as
an aid to transitioning into total electronic filing. The amended rule
language sets forth a procedure for numbering the paragraphs of the
specification at the time of filing. This procedure will facilitate the
entry of amendments by providing a more uniform method for identifying
paragraphs in the specification to be amended, thus overcoming any
differences created by word processor formatting and pagination
variations.
The paragraph numbering procedure, in the interest of uniformity,
encourages applicants to use four digit Arabic numerals enclosed within
square brackets and including leading zeroes as the first element of the
paragraph. The numbers and brackets should be highlighted in bold (e.g.,
[0001]), and should appear as the first part of the paragraph
immediately to the right of the left margin. Approximately four
character spaces should follow the bracketed number before the beginning
of the actual text of the paragraph.
A paragraph is defined as a distinct passage, or section, of the
specification which has unity of meaning. A paragraph shall not contain
headers or drawings, but may contain nontext elements such as tables,
mathematical formulae, chemical structures, etc. The nontext elements
shall not normally, by themselves, be considered as paragraphs but must
always form part of the paragraph, either above, or around, the nontext
elements, and should not be independently numbered. Any type of list,
e.g., a bulleted or numbered list, should be treated as part of the
paragraph around or preceding the list, and should not be independently
numbered. Paragraph (or section) headers, such as "Description of the
Invention" or "Example 3," are not considered part of any paragraph and
should not be numbered.
The procedure for paragraph numbering encourages applicants to use any
method provided by existing word processing software to provide a number
as the first element of the paragraph. Handwriting of paragraphs numbers
while not encouraged will be permitted.
The Office will neither number the paragraphs or sections of the
specification, nor accept any instructions from applicants to do the
same.
Section 1.52(b)(7) provides that where papers not in compliance with
1.52(b)(1) through (b)(5) are submitted, the applicant, patent owner,
or requester in a reexamination proceeding, after notice by the Office,
must provide papers that do comply ( 1.52(b)(1) through (b)(5))
within a set time period in the notice.
Section 1.52(c) is amended to provide that: (1) alterations to the
application papers must (rather than "should") be made before the oath
or declaration is signed; (2) a substitute specification ( 1.125) is
required if the application papers do not comply with 1.52(a) and (b)
due to interlineations, erasures, cancellations or other alterations of
the application papers; and (3) if an oath or declaration is a copy of
the oath or declaration from a prior application, the application for
which such copy is submitted may contain alterations that do not
introduce matter that would have been new matter in the prior
application.
Section 1.52(d) was proposed to provide separately for nonprovisional
applications and provisional applications filed in a language other than
English. The proposal was not carried forward in the instant rulemaking
but will be treated in rulemaking relating to implementation of the
eighteen-month publication provisions of the "American Inventors
Protection Act of 1999." See Changes to Implement Eighteen-Month
Publication of Patent Applications, Notice of Proposed Rulemaking, 65 FR
17046, 17964 (April 5, 2000), 1233 Off. Gaz. Pat. Office 121 (April 25,
2000).
Section 1.52(e) is amended to itemize the parts of the specification
that may be submitted on a compact disc, and to specify that a compact
disc (CD-ROM or CD-R) meeting ISO 9660 format standards with ASCII data
files is the only acceptable archival electronic media for submissions.
The Office indicated in the Notice of Proposed Rulemaking that
submissions on microfiche placed a burden on the Office and the
applicant. The Office indicated that it intended to accept archival
electronic media. The burden of submitting and processing large
biotechnology "Sequence Listing" submissions in paper form can also be
avoided using archival electronic media. Large tables, common in the
biotechnology arts but sometimes received in other technologies, are now
also included among the items that may be submitted on acceptable
compact discs. Note that these specifications do not apply to the
computer readable form of Section 1.821(e), which is specified therein.
Section 1.52(e)(1) recites the three types of submissions that are
acceptable on the compact disc