DEPARTMENT OF COMMERCE

                   United States Patent and Trademark Office

                             37 CFR Parts 1 and 5

                                 RIN 0651-AB05

Changes to Implement Eighteen-Month Publication of Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement certain
provisions of the American Inventors Protection Act of 1999. These
provisions of the American Inventors Protection Act of 1999 provide,
with certain exceptions, for the publication of pending patent
applications (other than design applications) at eighteen months from
the earliest claimed priority date.

DATES: EFFECTIVE DATE: November 29, 2000.

APPLICABILITY DATE: Sections 1.103(d), 1.211, 1.213, 1.215, 1.217,
1.219, and 1.221, and the changes to      1.14, 1.55, 1.72, 1.78, 1.85,
1.99, 1.137, 1.138, and 1.311, apply to any patent application filed on
or after November 29, 2000, and to any patent application in which
applicant requests voluntary publication.

FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Robert W.
Bahr, Karin L. Tyson, or Robert A. Clarke by telephone at (703)
308-6906, or by mail addressed to: Box Comments--Patents, Assistant
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 872-9411, marked to the attention of Robert W. Bahr.

Concerning the electronic filing system (EFS): Jay Lucas or Michael
Lewis by electronic mail message via the Internet addressed to
jay.lucas@uspto.gov.

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 1999
(Title IV of the Intellectual Property and Communications Omnibus Reform
Act of 1999 (S. 1948) as introduced in the 106th Congress on November
17, 1999) was incorporated and enacted into law on November 29, 1999, by
   1000(a)(9), Division B, of Pub. L. 106-113, 113 Stat. 1501 (1999).
The American Inventors Protection Act of 1999 contains a number of
changes to title 35, United States Code. This notice revises the rules
of practice to implement the provisions of      4501 through 4508
(Subtitle E, Domestic Publication of Patent Applications Published
Abroad) of the American Inventors Protection Act of 1999. These
provisions of the American Inventors Protection Act of 1999 provide
that, with certain exceptions, applications for patent shall be
published promptly after the expiration of a period of eighteen months
from the earliest filing date for which a benefit is sought under title
35, United States Code ("eighteen- month publication").

Section 4502 of the American Inventors Protection Act of 1999 amends 35
U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications for patent
shall be published promptly after the expiration of a period of eighteen
months from the earliest filing date for which a benefit is sought under
title 35, United States Code, and that an application may be published
earlier than the end of such eighteen-month period at the request of the
applicant. Section 4502 of the American Inventors Protection Act of 1999
(35 U.S.C. 122(b)) also contains a number of exceptions to
eighteen-month publication of patent applications.

First: An application shall not be published if it is: (1) no longer
pending; (2) subject to a secrecy order under 35 U.S.C. 181 or an
application for which publication or disclosure would be detrimental to
national security; (3) a provisional application under 35 U.S.C. 111(b);
or (4) an application for a design patent under 35 U.S.C. chapter 16.
See 35 U.S.C. 122(b)(2)(A) and (d).

Second: An application shall not be published if an applicant makes a
request upon filing, certifying that the invention disclosed in the
application has not and will not be the subject of an application filed
in another country, or under a multilateral international agreement,
that requires eighteen-month publication. An applicant may rescind such
a request at any time. In addition, an applicant who has made such a
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen-month publication, must notify the Office of such filing within
forty-five days after the date of the filing of such foreign or
international application. An applicant's failure to timely provide such
a notice to the Office will result in abandonment of the application
(subject to revival if it is shown that the delay in submitting the
notice was unintentional). If an applicant rescinds such a request or
notifies the Office that an application was filed in a foreign country,
or under a multilateral international agreement, that requires
eighteen-month publication, the application is subject to eighteen-month
publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).

Third: If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office eliminating any part or description of the invention
in such application that is not also contained in any of the
corresponding applications filed in a foreign country. If the redacted
copy of the application is received within sixteen months after the
earliest filing date for which a benefit is sought under title 35,
United States šbnCode, the Office may publish only the redacted copy of
the application. See 35 U.S.C. 122(b)(2)(B)(v).

Section 4503(a) of the American Inventors Protection Act of 1999 amends
35 U.S.C. 119(b) to provide that no application for patent shall be
entitled to a right of priority under 35 U.S.C. 119(a)-(d) unless a
claim is filed in the Office, identifying the foreign application by
specifying the application number of that foreign application, the
intellectual property authority or country in or for which the
application was filed, and the date of filing the application, at such
time during the pendency of the application as required by the Office.
Section 4503(a) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(b) to provide that the Office may consider the
failure of the applicant to timely file a claim for priority as a waiver
of any such claim, and may establish procedures, including the payment
of a surcharge, to accept an unintentionally delayed claim under 35
U.S.C. 119(b)-(d). Section 4503(a) of the American Inventors Protection
Act of 1999 also amends 35 U.S.C. 119(b) to authorize the Office to
determine whether to require a certified copy of the original foreign
application.

Section 4503(b)(1) of the American Inventors Protection Act of 1999
amends 35 U.S.C. 120 to provide that no application shall be entitled to
the benefit of an earlier filed application under 35 U.S.C. 120 unless
an amendment containing the specific reference to the earlier filed
application is submitted at such time during the pendency of the
application as required by the Office. Section 4503(b)(1) of the
American Inventors Protection Act of 1999 also amends 35 U.S.C. 120 to
provide that the Office may consider the failure to submit such an
amendment within that time period as a waiver of any benefit under 35
U.S.C. 120, and may establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission of an
amendment under 35 U.S.C. 120.

Section 4503(b)(2) of the American Inventors Protection Act of 1999
amends 35 U.S.C. 119(e) to provide that no application shall be entitled
to the benefit of an earlier filed provisional application under 35
U.S.C. 119(e) unless an amendment containing the specific reference to
the earlier filed provisional application is submitted at such time
during the pendency of the application as required by the Office.
Section 4503(b)(2) of the American Inventors Protection Act of 1999 also
amends 35 U.S.C. 119(e) to provide that the Office may consider the
failure to submit such an amendment within that time period as a waiver
of any benefit under 35 U.S.C. 119(e), and the Office may establish
procedures, including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment under 35 U.S.C.
119(e) during the pendency of the application.

Case law has indicated that, in certain instances, priority claims may
be perfected after issuance. The U.S. Court of Appeals for the District
of Columbia has held that the equitable or remedial provisions of 35
U.S.C. 251 authorize patentees to correct or perfect a claim for
priority under 35 U.S.C. 119 in an issued patent by reissue. See Brenner
v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). The
U.S. District Court for the District of Columbia applied this rationale
to permit a patentee to amend an intermediate abandoned application in a
chain of applications for which a benefit was claimed under 35 U.S.C.
120 to include the specific reference required by 35 U.S.C. 120. See
Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In appropriate
circumstances, the Office has permitted patentees to perfect claims
under 35 U.S.C. 119, 120, or 121 in an issued patent by certificate of
correction under 35 U.S.C. 255 and    1.323. See In re Schuurs, 218 USPQ
443 (Comm'r Pat. 1983); In re Lambrech, 202 USPQ 620 (Comm'r Pat. 1976);
In re Van Esdonk, 187 USPQ 671 (Comm'r Pat. 1975).

The amendments to 35 U.S.C. 119 and 120 provide that the Office may
consider the failure of the applicant to file a timely claim under 35
U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and 1.78
implement these amendments to 35 U.S.C. 119 and 120 by specifying time
periods during the pendency of the application within which claims under
35 U.S.C. 119(a)-(d), 119(e), and 120 must be stated or are considered
waived. 35 U.S.C. 119(b), 119(e), and 120 each provide that the Office
may establish procedures to accept an unintentionally delayed submission
of a claim under 35 U.S.C. 119(b), 119(e), or 120 (respectively);
however, 35 U.S.C. 119(e) requires that such unintentionally delayed
claim (amendment) be submitted during the pendency of the application.
Thus, a claim under 35 U.S.C. 119(a)-(d) or 120 for the benefit of a
prior application may be added (or corrected) in an issued patent by
reissue or certificate of correction (assuming the conditions for
reissue or certificate of correction are otherwise met) by submitting
such untimely claim under the procedures established in    1.55 or
1.78 (including payment of any applicable surcharge). A claim under 35
U.S.C. 119(e) for the benefit of a prior provisional application,
however, must be added or corrected during the pendency of the
application.

Section 4504 of the American Inventors Protection Act of 1999 amends 35
U.S.C. 154 to provide that, subject to a number of conditions, a patent
includes the right to obtain a reasonable royalty during the period
beginning on the date of publication of the application for such patent
under 35 U.S.C. 122(b) (or the date of publication under Patent
Cooperation Treaty (PCT) Article 21(2) of an international application
designating the United States) and ending on the date the patent is
issued ("provisional rights").

Section 4505 of the American Inventors Protection Act of 1999 amends 35
U.S.C. 102(e) to, inter alia, set forth the conditions under which an
application published under 35 U.S.C. 122(b) or under PCT Article 21(2)
is prior art as of its filing date.

Section 4506 of the American Inventors Protection Act of 1999 provides
that the Office shall recover the cost of early publication required by
35 U.S.C. 122(b) by charging a separate publication fee after a notice
of allowance is given under 35 U.S.C. 151.

Section 4508 of the American Inventors Protection Act of 1999 provides
that its eighteen- month publication provisions take effect on November
29, 2000, and apply to applications (other than for a design patent)
filed under 35 U.S.C. 111(a) on or after November 29, 2000, and to
applications in compliance with 35 U.S.C. 371 that resulted from
international applications filed under 35 U.S.C. 363 on or after
November 29, 2000.

The Office published a notice proposing changes to the rules of practice
to implement the provisions of      4501 through 4508 (Subtitle E,
Domestic Publication of Patent Applications Published Abroad) of the
American Inventors Protection Act of 1999. See Changes to Implement
Eighteen-Month Publication of Patent Applications, Notice of Proposed
Rulemaking, 65 FR 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121
(Apr. 25, 2000) (notice of proposed rulemaking). This final rule adopts
changes to the rules of practice to implement the provisions of
4501 through 4508 of the American Inventors Protection Act of 1999.

The Office's planning approach to eighteen-month publication
includes:(1) disseminating a publication document (patent application
publication) for each published application; and (2) providing (under
conditions set forth below) any member of the public with access to the
file wrapper and contents of each published application (which may be
limited to a copy of the file wrapper and contents of the application).

Patent application publication: The patent application publication will
include a front page containing information similar to that contained on
the front page of a patent, and the drawings (if any) and specification
(including claims) of the published application.To create the patent
application publication, the Office plans to use its Patent Application
Capture and Review (PACR) system to create an electronic database (PACR
database) containing: (1) the application papers and drawings deposited
on the filing date of the application; and (2) any subsequently filed
application papers and drawings needed to create the patent application
publication. The application information contained in the Office's PACR
database will be used to create the patent application publication,
unless the applicant provides a copy of the application via the Office's
electronic filing system (EFS) to be used to create the patent
application publication (discussed below).

The Office currently uses the PACR database as the Office's record of
the application papers submitted on the filing date šxnof the
application (i.e., the original disclosure of the invention). The
application papers submitted on the filing date of the application,
however, may not include the content needed (e.g., an abstract), and the
application papers or drawings may not be of sufficient quality (e.g.,
papers not having sufficient contrast to permit electronic capture by
digital imaging and conversion to text by optical character recognition
or drawings not having sufficient quality) to be used to create a patent
application publication. Since the patent application publication will
be a prior art document (and, in most cases, the prior art document
having the earliest effective date under 35 U.S.C. 102(a), (b), and
(e)), the Office must consider the usability of the patent application
publication as a prior art document when determining what drawing
quality is needed to create the patent application publication.

If the application papers submitted on the filing date of the
application do not include the content needed, or the application papers
or drawings are not of sufficient quality to be used, to create a patent
application publication, the Office of Initial Patent Examination (OIPE)
will issue a notice requiring that the applicant submit the needed
application content, or application papers or drawings of sufficient
quality, for use in creating a patent application publication. The
applicant's reply to that notice (application papers and drawings needed
to create the patent application publication) will then be added to the
PACR database. The Office must separate the application papers and
drawings deposited on the filing date of the application and the
subsequently filed application papers and drawings in its PACR database
because the PACR database is also used to create any requested certified
copy of the application (which may only include the application papers
and drawings deposited on the filing date of the application).

Initially, an application filed under 35 U.S.C. 111(a) (nonprovisional)
must be entitled to a filing date (i.e., contains a written description
of the invention, a drawing (if necessary for an understanding of the
invention), and at least one claim) for the application to be in
condition for publication. In addition, if an application filed under 35
U.S.C. 111(a) otherwise entitled to a filing date appears to omit a
portion of the description or a drawing figure, the omitted portion of
the description or drawing figure(s) must be supplied, or the period for
supplying such portion of the description or drawing figure(s) must have
expired, for the application to be in condition for publication. The
requirements for an application filed under 35 U.S.C. 111(a) to be
entitled to a filing date and the treatment of an application filed
under 35 U.S.C. 111(a) that appears to omit a portion of the description
or a drawing figure is set forth in sections 601.01(d) through 601.01(g)
of the Manual of Patent Examining Procedure (7th ed.1998) (Rev. 1, Feb.
2000)(MPEP).

In addition, an application filed under 35 U.S.C. 111(a) must include an
executed oath or declaration (   1.63), an abstract (   1.72(b)), and an
English translation (if filed in a language other than English), for the
application to have the content necessary to create the patent
application publication. For eighteen-month publication purposes, the
oath or declaration must at a minimum: (1) name each inventor at least
by a family and given name; and (2) be signed by each inventor or a
party qualified to sign under      1.42, 1.43, or 1.47 in compliance
with    1.64. Finally, an application filed under 35 U.S.C. 111(a) will
not be published until the basic filing fee (   1.16(a) or (g)) is paid.

A PCT international application must satisfy the requirements of 35
U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C.
122(b) (and to have the content necessary to create the patent
application publication).

Even if an application has the content necessary to create the patent
application publication, the application papers and drawings must also
be reviewed to determine whether they are of sufficient quality to be
used in creating the patent application publication. To be of sufficient
quality to create the patent application publication, the specification
must be on sheets of paper that: (1) are flexible, strong, smooth,
non-shiny, durable, and white; (2) are either A4 (21 cm x 29.7 cm) or
8-1/2" x 11" with each sheet having a left margin of at least 2.5 cm
(1") and top, bottom, and right margins of at least 2.0 cm (3/4"); (3)
are written on one side only in portrait orientation; (4) are plainly
and legibly written either by a typewriter or machine printer in
permanent dark ink or its equivalent; (5) have lines that are either
1-1/2 or double-spaced; and (6) have sufficient clarity and contrast
between the paper and the writing on the paper to permit direct
reproduction and electronic capture by digital imaging and optical
character recognition.These quality standards and requirements are
currently set forth in    1.52(a) and (b). In addition, the title must
meet the length requirement of    1.72(a); the abstract must commence on
a separate sheet and meet the word-length requirement of    1.72(b); the
claims must commence on a separate sheet; and the sequence listing (if
applicable) must comply with      1.821 through 1.825.

As discussed above, the Office must consider not only whether drawings
are of sufficient quality to create a publication (the patent
application publication), but whether they are sufficient for the
publication to be routinely used as a prior art document. Thus, the
drawing sheets (if drawings are included) must comply with the following
requirements of    1.84. Drawings must be done in dark ink (not pencil),
except where color drawings or photographs are permitted. Photographs
(or photomicrographs) are not permitted unless they are reproducible and
the invention cannot be clearly illustrated in an ink drawing. See
Interim Waiver of 37 C.F.R.    1.84(b)(1) for Petitions to Accept Black
and White Photographs and Advance Notice of Change to M.P.E.P.
608.02, Notice, 1213 Off. Gaz. Pat. Office 108 (Aug. 4, 1998). Drawing
sheets must be reasonably free from erasures and must be free from
alterations, overwritings, interlineations, folds, and copy marks.
Drawing sheets must be either 21.0 cm by 29.7 cm (DIN size A4) or 21.6
cm by 27.9 cm (8 « by 11 inches). Each drawing sheet must include a top
margin of at least 2.5 cm (1 inch), a left side margin of at least 2.5
cm (1 inch), a right side margin of at least 1.5 cm (5/8 inch), and a
bottom margin of at least 1.0 cm (3/8 inch). Lines, numbers, and letters
must be clean, dark (not of poor line quality), uniformly thick, and
well defined. The English alphabet must be used for letters, except
where another alphabet is customarily used (such as the Greek alphabet
to indicate angles, wavelengths, and mathematical formulas). Numbers,
letters, and reference characters must measure at least 0.32 cm (1/8
inch) in height. Lead lines are required for each reference character
(except for those which indicate the surface or cross section on which
they are placed, in which case the reference character must be
underlined to make it clear that a lead line has not been left out by
mistake). The drawing views must also be numbered in consecutive Arabic
numerals, starting with 1.

Finally, the specification (including the claims) must not contain
drawings or flow diagrams. See    1.58(a).

In September of 1996, the Office revised the standard and format
requirements for the specification (including the abstract and claims),
drawings, and other application papers set forth in    1.52 and    1.84
for the purpose of obtaining initial application papers in condition for
eighteen-month publication. See Miscellaneous Changes in Patent
Practice, Final Rule Notice, 61 FR 42790 (Aug. 19, 1996), 1190 Off. Gaz.
Pat. Office 67 (Sept. 17, 1996). Applicants are advised that the Office
will: (1) begin enforcement of the provisions of    1.52(a) and (b) and
  1.84 during the pre-examination processing of patent applications; and
(2) not permit applicants to request that objections under    1.52(a)
and (b) and    1.84 made during the pre-examination processing of a
patent application be held in abeyance pending allowance of the
application.

As discussed below, if applicant timely provides the Office with a copy
of the application via the Office electronic filing system, the Office
will use the electronic copy provided by the applicant (rather than the
PACR database records) to create the patent application publication.
Applicants may use this procedure to obtain inclusion of amendments
submitted during prosecution in the patent application publication.
Applicants must use this procedure when requesting: (1) voluntary
publication of an application; (2) republication of a previously
pubšbnlished application; or (3) publication of only a redacted copy of
an application.

Electronic filing system: The electronic filing system (EFS) is an
electronic system for the submission of patent applications to the
Office. The EFS encompasses the preparation of the application parts in
a special manner on the applicant's computer (authoring), the assembling
of the pieces of the application so authored, and the secure
communication of that application to the Office. The same EFS software
must be used by applicants who wish to submit a copy of the application
for the patent application publication.

The steps for submission of an electronic version of a patent
application are as follows:(1) obtaining a digital certificate; (2)
obtaining the authoring and the submission-software packages from the
Office; (3) authoring the patent application; and (4) assembling the
parts of the application, and validating, digitally signing, and
submitting the application.

To file a copy of an application using the EFS, an applicant (or
representative) must submit a request and receive an Office digital
certificate to enable secure communication between the applicant and the
Office. A digital certificate will allow the authorized person to
conduct electronic filing of one or more applications, as well as have
access to the Office's Patent Application Information Retrieval (PAIR)
software to display patent application status information.

The digital certificate is given to individuals and firms that obtain a
customer number, and also request a digital certificate. Instructions on
how to obtain the necessary digital certificate are located at the
Office's Electronic Business Center on the Office's Internet Web site
(http://www.uspto.gov) (under the section Electronic Business Center,
select New User for the PAIR system).

The Office makes its branded version of the security software product
called Entrust Direct software available to authorized persons. The
software operates in conjunction with an Office Public Key
Infrastructure (PKI) that is secure and enables communication only
between the Office and authorized persons who are registered with the
Office.

A person signing up for EFS application filing receives a package with
his or her digital certificate including: (1) the software that will
attach a digital signature to a document or set of documents; (2) an
authoring tool that will allow the applicant to convert a standard
patent application into a specialized format; and (3) the electronic
Packaging and Validation Engine (ePave) program that will assemble the
parts of the application, validate that the parts are complete, encrypt
and digitally sign them, and then send them to the Office.

The applicant is responsible for correctly authoring the electronic
application, which is defined as reformatting the application into a
form that complies with the requirements of XML (the standard eXtensible
Markup Language of Internet authoring). The XML requires that all the
pieces of information in the application (e.g., the inventor's name,
title of the invention, and the claims) are tagged with standard XML
named tags before and after each piece of information. For example, XML
could require that the title be tagged:

                   <app title> MAKING A WIDGIT </app title>

The tagged information, in turn, is ordered and positioned on the
submitted document according to the formula for that document in the
document type definition (DTD). The DTD contains a list of all the
tagged data elements (pieces of information) that should be on that
document, and the relative positioning of the elements. When combined
with the document's style sheet (which contains formatting information),
the DTD will completely define what the document should contain and,
when printed or viewed, what it will look like.

The applicant does the authoring using the software authoring tool given
to him or her by the Office and operating on the applicant's computer.
The authoring tool displays a template on applicant's computer screen
listing all of the data elements that should be in a patent application
(according to the Office's DTD). The applicant clicks in the desired
data element and types information into the template. For example, the
applicant clicks the data element "TITLE" and types "MAKING A WIDGIT"
into the template. The authoring tool will add the tags, paragraph
numbers, and other elements that are required by XML. The applicant can
continue through this whole process adding the required information to
each of the data elements in the template until the application is fully
authored.

The applicant can also use the authoring tool to "cut and paste" a
previously written application into the proper format. In this mode, the
applicant will open up that written application, and also open up the
authoring tool template to reveal the data elements.When the applicant
clicks in the data element, the applicant will copy the relevant section
from the previously written application and paste that section into the
template (for tagging by the authoring tool).

Paper copies of the oath or declaration (   1.63), drawings, and certain
other documents are scanned on the applicant's digital scanner and
stored in tagged image file format (TIFF). The TIFF is not tagged by the
authoring tool, but is similar to an electronic photograph.

Using either mode, the applicant will produce a copy of the application
in compliance with the Office EFS, including a specification and claims
(in XML), an oath or declaration (in TIFF), and drawings (also in TIFF).

Once the various parts of the application are prepared, the applicant
will use the software tool ePave to assemble those parts and submit the
application to the Office. The ePave software interacts with the
applicant to fill out an electronic transmittal and fee information
letter. This document is developed in the tagged XML format. The
applicant then uses the ePave software to associate these documents with
the previously produced application.

This association of the related files to be submitted is called
bundling. The bundle of files that will be sent to the Office will be
compressed using Zip technology to reduce their size. Then ePave will
apply the digital signature to the compressed bundle, to indicate who is
sending the package to the Office, and check the file's integrity. The
digital signature process also encrypts the bundle, for safety during
transmission.

The authoring tool and ePave software on the applicant's computer
perform all of this activity almost invisibly. The applicant must enter
a password to apply the digital signature, and the software will finish
processing the application for submission to the Office. During the
processing of a copy of an application for submission to the Office for
use in a patent application publication, the applicant will be advised
that the application of a digital signature constitutes a statement that
the EFS copy of the application contains no new matter, and, except for
a redacted copy of an application (which requires the concurrent
submission of other certifications on paper), that the EFS copy of the
application corresponds to the application as amended by any amendment
filed in the application. When processing is finished, the software will
ask the applicant if the list of displayed files should be sent to the
Office. The applicant will click or otherwise express his or her
concurrence, and the EFS application files are electronically
transmitted to the Office.

On receipt of the bundle of files comprising the application, the Office
stores the bundle and takes it apart. The bundle is decrypted, the
digital signature is checked, and the integrity of the package is
confirmed. In the course of events, the Office sends an acknowledgment
back to the applicant's computer providing the date and time of
submission, the names and sizes of the files received, and other
information to confirm the submission.

Obviously, an application submitted via EFS cannot include a payment by
check or money order. Therefore, any publication fee or processing fee
required for a copy of an application submitted via EFS for use in the
patent application publication must be paid by an authorization to
charge the fee to a credit card or Office deposit account.

The Office originally indicated that if a copy of an application being
submitted to the Office for eighteen-month publication purposes contains
a sequence listing, and the sequence listing is identical to a sequence
listing previously submitted to the Office in compliance with      1.821
through 1.825, the EFS copy of the application may contain a reference
to the previously filed sequence listing in lieu of a copy of the
previously filed sequence listing. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR at 17950, 1233
Off. Gaz. Pat. Office at 124. The Office, however, has determined that
permitting an EFS copy of an application to reference a previously filed
sequence listing (rather than include a copy of the sequence listing)
will increase the chance for errors in the sequence listing included in
the patent application publication.Thus, the Office is requiring that if
a copy of an application being submitted to the Office for
eighteen-month publication purposes contains a sequence listing, the EFS
copy of the application must contain a text file copy of the sequence
listing that if printed out on paper would be in compliance with
1.823.

Finally, if the file containing a copy of an application being submitted
to the Office for eighteen-month publication purposes occupies ten
megabytes of memory or more, the copy of the application should be
submitted on a Compact Disk-Read Only Memory (CD- ROM) or Compact
Disk-Recordable (CD-R). The CD-ROM or CD-R containing the copy of the
application should be addressed to: Box PGPub.

While the Office is using EFS for both new application filing and
submission of a copy of a previously filed application for publication
purposes, an EFS submission of a copy of an application for publication
purposes will be different from the EFS submission of a new application.
For example, the EFS submission of a copy of an application for
publication purposes will not require an oath or declaration (in TIFF).
In addition, the acknowledgment receipts issued by the Office will be
different for the EFS submission of a copy of an application for
publication purposes than it will be for the EFS submission of a new
application.

Publication process: The current planning approach involves a
fourteen-week publication cycle that results in the publication of
patent application publications on Thursday of each week. Ideally, the
publication date of an application will be the first Thursday after the
date that is eighteen months after the filing date of the application,
or if the application claims the benefit of an earlier filing date, the
first Thursday after the date that is eighteen months after the earliest
filing date for which a benefit is sought. An application, however, may
not be published the first Thursday after the date that is eighteen
months after the earliest filing date for which a benefit is sought if
the application is not in condition for publication approximately
fourteen months after the earliest filing date for which a benefit is
sought (eighteen months less the fourteen-week publication cycle).

Obviously, there are events that will delay publication of some
applications until a later date: e.g., (1) the application claims the
benefit under 35 U.S.C. 120 of an application filed more than eighteen
months before the actual filing date of the application; (2) the basic
filing fee or oath (or declaration) is not provided within eighteen
months after the earliest filing date for which a benefit is sought; or
(3) the application does not contain papers or drawings of publication
quality within eighteen months after the earliest filing date for which
a benefit is sought. In such situations, the publication date of an
application will be the first Thursday after the date that is fourteen
weeks after the application is in condition for publication. Applicants
who attempt to delay publication by intentionally delaying the
submission of the application content necessary for publication,
however, may encounter a reduction in any patent term adjustment under
35 U.S.C. 154(b) (see 35 U.S.C. 154(b)(2)(C)(ii) and    1.704(b)).

The Office plans to indicate a projected publication date on the filing
receipt or indicate "to be determined" if the application is not in
condition for publication. If events change the projected publication
date by more than two weeks (e.g., claim for priority under 35 U.S.C.
119(e) presented after mailing of the filing receipt) or the application
content necessary for publication is provided, the Office will issue a
change notification indicating the revised projected publication date.

The publication process involves producing weekly volumes of patent
application publications on a variety of media: e.g., the Office's
Examiner Automated Search Tool (EAST) and Web-based Examiner Search Tool
(WEST) search systems, optical disk products for sale to the public, and
exchange with the Office's Intellectual Property exchange partners.
Patent application publications will be available for viewing by the
public in the Public Search Room via an on-line search system. The
Office does not plan to provide paper copies of the patent application
publications for placement in either the Public Search Room or the
examiners' search rooms. The Office, however, will provide paper copies
of the patent application publications to any member of the public on
request (for a fee) in the manner that paper copies of patents are
currently provided.

The publication process provides for: (1) assembly of application
bibliographic information for the patent application publication at
fourteen weeks prior to the projected publication date; (2) assembly of
the technical content (specification, including claims and abstract, and
drawings) of the application for the patent application publication at
nine weeks prior to the projected publication date; and (3) placement of
the application information as assembled into the patent application
publication on publication media (e.g., optical disks, magnetic tape) at
four weeks prior to the projected publication date.

Any applicant seeking to abandon the application for the purpose of
avoiding publication must take appropriate action (see    1.138
discussed below) well prior to the projected publication date. If the
application is not expressly abandoned at least four weeks prior to the
projected publication date, the Office will probably not be able to
avoid publication of the application or at least some application
information because the Office will place the application (along with
the thousands of other applications being published each week) on
publication media (e.g., optical disks, magnetic tape) four weeks prior
to the projected date. This does not imply that a request to expressly
abandon an application to avoid publication (   1.138) filed prior to
this "four-week" time frame will ensure that the Office will be able to
remove an application from publication. The Office simply cannot ensure
that it can remove an application from publication or avoid publication
of application information any time after the publication process for
the application is initiated.

Access to the file wrapper and contents of a published application: The
Office plans to permit: (1) any member of the public to obtain (for a
fee) a copy of the complete file wrapper and contents of, or a copy of a
specific paper in, any published application, provided that no redacted
copy was timely submitted for publication; (2) any member of the public
to obtain (for a fee) an appropriately redacted copy of the file wrapper
and contents of, or a copy of a specific paper in, any published
application for which a redacted copy was timely submitted for
publication; and (3) any member of the public to physically inspect
(subject to the same conditions that apply to inspection of patented
files) the file of any abandoned published application, provided that no
redacted copy was timely submitted for publication.

Any member of the public may obtain status information concerning any
published application via the Office's PAIR system. Permitting physical
inspection of pending published applications, however, would interfere
with the Office's ability to act on the applications within the time
frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the Office
must limit public access to the file wrapper of pending published
applications to obtaining a copy produced by the Office (for a fee) to
avoid conferring patent term adjustment on the applicant due to actions
by members of the public.

Section 4805 of the American Inventors Protection Act of 1999 provides
that the Comptroller General (in consultation with the Office) shall
conduct a study and submit a report to Congress on the potential risks
to the United States biotechnology industry relating to biological
deposits in support of biotechnology patents, and that the Office shall
consider the recommendations of such study in drafting regulations
affecting biological deposits (including any modification of    1.801 et
seq.). Therefore, this notice does not contain any amendment to    1.801
et seq. concerning the treatment of biological deposits in applications
subject to eighteen-month publication.

Section 4732 of the American Inventors Protection Act of 1999 changed
(among other things) the title "Commissioner" to "Director." The title
"Commissioner," however, is not being changed to "Director" where it
appears in the rules of practice involved in this final rule because
legislation is pending before Congress that (if enacted) would restore
the former title "Commissioner." See Intellectual Property Technical
Amendments Act of 2000, H.R. 4870, 106th Cong. (2000).

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Parts 1 and 5, are amended
as follows:

Section 1.9: Section 1.9(c) is amended to define a published application
as used in 37 CFR chapter I to mean an application for patent which has
been published under 35 U.S.C. 122(b).

Section 1.11: Section 1.11(a) is amended to include the file of an
abandoned published application (except if a redacted copy of the
application was used for the patent application publication) among the
files that are open to inspection by the public.

Section 1.12: Section 1.12(a)(1) is amended to include the assignment
records of a published patent application among the patent assignment
records that are available to the public. Section 1.12(b) is amended to
provide that the patent assignment records, digests, and indexes are
available to the public unless they relate to pending or abandoned
patent applications that have not been published under 35 U.S.C. 122(b).

Section 1.13: Section 1.13 is amended to include patent application
publications among the records of the United States Patent and Trademark
Office that are open to the public, and of which a copy (certified or
uncertified) will be furnished (upon payment of the appropriate fee).

Section 1.14: Section 1.14(a) is amended to generally maintain the
confidentiality of applications that have not been published as a U.S.
patent application publication (see 35 U.S.C. 122(b)) pursuant to 35
U.S.C. 122(a). Status information is defined to include identification
of whether the application has been published under 35 U.S.C. 122(b), as
well as whether the application is pending, abandoned, or patented, and
the application numerical identifier.

Section 1.14(b) is amended to provide that status information may also
be supplied when the application is referred to by its numerical
identifier in a U.S. patent application publication as well as a U.S.
patent or a published international application. Section 1.14(b) is also
amended to provide that status information may be supplied for an
application which claims the benefit of the filing date of an
application for which status information may be supplied. As a result,
the public will be able to obtain continuity data for applications that
have been published as a U.S. patent application publication or as a
U.S. patent.

Section 1.14(c)(1) provides that a copy of an application-as-filed or a
file wrapper and contents may be supplied where the appropriate fee is
paid, and: (1) the application is incorporated by reference in a U.S.
patent application publication or U.S. patent; or (2) the application is
relied upon for priority under 35 U.S.C. 119(e) or 120 in a U.S. patent
application publication or U.S. patent.

Section 1.14(c)(2) provides that copies of the file wrapper and contents
of an application are available to the public when the application has
been published as a U.S. patent application publication.

Section 1.14(e) is amended to provide public access to an abandoned
application that is referenced in a U.S. patent application publication,
as well as a U.S. patent, or another application that is open to public
inspection.

Section 1.14(i) provides for greater access to international application
files kept by the Office and applies to applications having an
international filing date on or after November 29, 2000. Specifically,
35 U.S.C. 374 equates the publication under the PCT of an international
application designating the U.S. to the publication of a U.S.
application under 35 U.S.C. 122(b). After publication of an application
under 35 U.S.C. 122(b), the Office will make available copies of the
application files and also allow for access to those files in accordance
with    1.14(c) and (e), respectively. Therefore, after publication of
an international application designating the U.S. under PCT Article 21,
the Office will make available copies of, and allow access to, those
international application files which are kept in the Office (the Home,
Search, and Examination Copies) to the extent permitted under the PCT.
Additionally,    1.14(i)(2) provides that copies of English language
translations of international applications, which were published in a
non-English language and which designated the U.S., and which have been
submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be
available to the public. Requests for copies of, or access to, an
application file under    1.14(i) must be in the form of a written
request and must include a showing that the international application
has been published and that the U.S. was designated. Such a showing
should preferably be in the form of the submission of a copy of the
front page of the published international application. Additionally,
requests for copies of international application files must also be
accompanied by the appropriate fee.

Section 1.14(j) is amended to provide that this section not only applies
when the Office provides access to or copies of the application, but
also when the Office provides access to or copies of a part of an
application.

Section 1.17: The heading of    1.17 is amended to include a reference
to reexamination to clarify that the enumerated fees in    1.17 may also
apply during reexamination proceedings, as well as to patent
applications.

Section 1.17(h) is amended to include a petition under    1.138(c) to
expressly abandon an application to avoid publication among the
petitions requiring the fee ($130) set forth in    1.17(h).

Section 1.17(i) is amended to include processing a redacted copy of a
paper submitted in the file of an application in which a redacted copy
was submitted for the patent application publication (   1.217),
processing a request for voluntary publication or republication of an
application (   1.221), and processing a belated submission under
1.99 (   1.99(e)) to the processing services requiring the processing
fee ($130) set forth in    1.17(i).

Sections 1.17(l) and 1.17(m) are amended to set forth the fees for
filing a petition under    1.137 for revival of a terminated
reexamination proceeding (on the basis of unavoidable and unintentional
delay). Section 1.17(l) is amended to reflect that its $110 petition fee
($55 for a small entity) is required for a petition under    1.137(a) to
revive a terminated reexamination proceeding on the basis of an
unavoidable failure of the patent owner to timely respond. Section
1.17(m) is amended to reflect that its $1,240 petition fee ($620 for a
small entity) is required for a petition under    1.137(b) to revive a
terminated reexamination proceeding on the basis of an unintentional
failure to timely respond.Note, however, that the newly enacted
unintentional revival provisions of the American Inventors Protection
Act of 1999 are not effective in any reexamination until November 29,
2000.

Section 1.17(p) is amended to make its fee ($180) applicable to a
third-party submission under    1.99, as well as an information
disclosure statement under    1.97(c) or (d).

Section 1.17(t) is added to set forth the surcharge ($1,240) for
accepting an unintentionally delayed claim for priority under 35 U.S.C.
119, 120, 121, or 365(a) or 365(c) (     1.55 and 1.78).

Section 1.18: Section 1.18(d) is added to specify the publication fee
($300). In view of this addition to    1.18, the heading of    1.18 is
also amended to refer to "post-allowance (including issue) fees" (
instead of only "issue fees").

Section 1.19: Section 1.19(a) is amended to provide that its $3 (regular
service), $6 (next business day delivery to Office Box), or $25
(expedited delivery by commercial delivery service) fee would also be
applicable to a request for a copy of the paper portion of a patent
application publication. The $25 fee set forth in    1.19(a)(4) would
apply to a request for a certified copy of a patent application
publication.

Section 1.24: Section 1.24 is removed and reserved. The practice of
using coupons to purchase, e.g., patents, statutory invention
registrations, and trademark registrations, is inefficient compared to
alternatives such as payment by credit card (especially for orders
placed via the Internet). Coupons sold by the Office (before coupon
practice is abolished) may still be used but cannot be redeemed.

Section 1.52: Section 1.52(d) is amended to provide for nonprovisional
applications and provisional applications filed in a language other than
English. The provisions concerning the treatment of nonprovisional
applications filed in a language other than English are revised for
clarity, but otherwise remain unchanged (   1.52(d)(1)).

Section 1.52(d)(2) provides that if a provisional application is filed
in a language other than English, an English translation will not be
required in the provisional application. Section 1.52(d)(2) also contains
a reference to    1.78(a) concerning the requirements for claiming the
benefit of the filing date of such a provisional application in a later
filed nonprovisional application.

Section 1.55: Section 1.55 is amended to implement the provisions of 35
U.S.C. 119(b) as amended by    4503(a) of the American Inventors
Protection Act of 1999, by providing:(1) a time period within which a
claim for the benefit of a prior foreign application must be stated or
waived; and (2) provisions for the acceptance of an unintentionally
delayed submission of a claim to the benefit of a prior foreign
application.

Section 1.55(a) is amended to provide that: (1) in an original
application filed under 35 U.S.C. 111(a) (other than a design
application), the claim for priority must be presented during the
pendency of the application, and within the later of four months from
the actual filing date of the application or sixteen months from the
filing date of the prior foreign application; (2) in an application that
entered the national stage from an international application after
compliance with 35 U.S.C. 371, the claim for priority must be made
during the pendency of the application and within the time limit set
forth in the PCT and the Regulations under the PCT; and (3) the claim
for priority and the certified copy of the foreign application specified
in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before
the patent is granted.

Section 1.55(c) provides that any claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) not presented within the time period provided by
1.55(a) is considered to have been waived. Section 1.55(c) also provides
that if a claim to priority under 35 U.S.C. 119(a)-(d) or 365(a) is
presented after the time period provided by    1.55(a), the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country, and the day, month and year
of its filing was unintentionally delayed. Section 1.55(c) also provides
that a petition to accept a delayed claim for priority under 35 U.S.C.
119(a)-(d) or 365(a) must be accompanied by: (1) the surcharge set forth
in    1.17(t); and (2) a statement that the entire delay between the
date the claim was due under    1.55(a)(1) and the date the claim was
filed was unintentional, and that the Commissioner may require
additional information where there is a question whether the delay was
unintentional.

Section 1.72: Section 1.72(a) is amended to provide that the title of
the invention may not exceed 500 characters in length. The title
character number limitation is necessary to ensure that the title can be
captured and recorded in the Office's Patent Application Locating and
Monitoring (PALM) system. Section 1.72(a) is also amended to provide
that characters that cannot be captured and recorded in the Office's
automated information systems (e.g., PALM) may not be reflected in the
Office's records in such systems or in documents created by the Office.
Thus, if a title includes a character (images) that cannot be captured
by PALM, that title will not appear in the Office's PALM records for
that application, and may not be reflected in documents (e.g., a filing
receipt, patent application publication, or patent) created by the
Office.

Section 1.76: Section 1.76 is amended to provide for the inclusion of
assignee information in a new    1.76(b)(7). Section šxn1.76(b)(7)
provides that: (1) assignee information includes the name (either person
or juristic entity) and address of the assignee of the entire right,
title, and interest in an application; and (3) the inclusion of this
information on the application data sheet does not substitute for
compliance with any requirement of 37 CFR part 3 to have an assignment
recorded by the Office. Providing assignee information on the
application data sheet is considered a request to include such
information on the patent application publication, since there is no
other reason for including such information on the application data
sheet.

Section 1.78: Section 1.78(a) is amended to implement the provisions of
35 U.S.C. 119(e) and 120 as amended by    4503(b) of the American
Inventors Protection Act of 1999, by providing: (1) a time period within
which a claim to the benefit of a prior nonprovisional or provisional
application must be stated or waived; and (2) provisions for the
acceptance of the unintentionally delayed submission of a claim to the
benefit of a prior nonprovisional or provisional application.

Section 1.78(a)(2) is amended to provide that (except for a continued
prosecution application filed under    1.53(d)) any claim to the benefit
of a nonprovisional application or international application must be
made during the pendency of the application and within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior application. Section 1.78(a)(2) also
provides that the failure to timely submit the reference required by 35
U.S.C. 120 and    1.78(a)(2) is considered a waiver of any benefit under
35 U.S.C. 120, 121, or 365(c) to such prior application, but that the
time period set forth in    1.78(a)(2) does not apply to an application
for a design patent.

Section 1.78(a)(2) also provides that if the application claims the
benefit of an international application, the first sentence of the
specification must include an indication of whether the international
application was published under PCT Article 21(2) in English (regardless
of whether benefit to such application is claimed in the application
data sheet).

Sections 1.78(a)(3) and 1.78(a)(4) are redesignated as      1.78(a)(4)
and 1.78(a)(5), respectively.

Section 1.78(a)(3) provides that if the reference required by 35 U.S.C.
120 and    1.78(a)(2) is presented in a nonprovisional application after
the time period provided by    1.78(a)(2), the claim under 35 U.S.C.
120, 121, or 365(c) for the benefit of a prior filed copending
nonprovisional application or international application designating the
United States may be accepted if the reference identifying the prior
application by application number or international application number
and international filing date was unintentionally delayed. Section
1.78(a)(3) also provides that a petition to accept an unintentionally
delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior filed copending application must be accompanied by: (1) the
surcharge set forth in    1.17(t); and (2) a statement that the entire
delay between the date the claim was due under    1.78(a)(2) and the
date the claim was filed was unintentional, but the Commissioner may
require additional information where there is a question whether the
delay was unintentional.

Section 1.78(a)(4) is amended to provide that, for a nonprovisional
application to claim the benefit of a provisional application, the
provisional application must be entitled to a filing date as set forth
in    1.53(c), and the basic filing fee set forth in    1.16(k) must be
paid within the time period set forth in    1.53(g).

Section 1.78(a)(5) provides that any nonprovisional application claiming
the benefit of a provisional application filed in a language other than
English must (in addition to the reference required by 35 U.S.C. 119(e)
and    1.78(a)(5)) contain an English language translation of the
non-English language provisional application and a statement that the
translation is accurate. Section 1.78(a)(5) also provides any claim for
the benefit of a provisional application and English language
translation of a non-English language provisional application must be
submitted during the pendency of the nonprovisional application, and
within the later of four months from the actual filing date of the
nonprovisional application or sixteen months from the filing date of the
prior provisional application. Section 1.78(a)(5) also provides that the
failure to timely submit the reference and English language translation
of a non-English language provisional application required by 35 U.S.C.
119(e) and    1.78(a)(5) is considered a waiver of any benefit under 35
U.S.C. 119(e) to such prior provisional application.

Section 1.78(a)(6) provides that if the reference or English language
translation of a non- English language provisional application required
by 35 U.S.C. 119(e) and    1.78(a)(5) is presented in a nonprovisional
application after the time period provided by    1.78(a)(5), the claim
under 35 U.S.C. 119(e) for the benefit of a prior filed provisional
application may be accepted during the pendency of the nonprovisional
application if the reference identifying the prior application by
provisional application number and any English language translation of a
non-English language provisional application were unintentionally
delayed. Section 1.78(a)(6) also provides that a petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior filed provisional application must be accompanied by: (1) the
surcharge set forth in    1.17(t); and (2) a statement that the entire
delay between the date the claim was due under    1.78(a)(5) and the
date the claim was filed was unintentional, but that the Commissioner
may require additional information where there is a question whether the
delay was unintentional.

Section 1.84: Section 1.84(a)(2) is amended to provide that color
drawings are not permitted in an application, or copy thereof, submitted
under the Office electronic filing system. Section 1.84(a)(2) is also
amended to provide that any petition to accept color drawings must
include a black and white photocopy that accurately depicts, to the
extent possible, the subject matter shown in the color drawing. Since
1.84(b) provides that color photographs will be accepted in utility
patent applications if the conditions for accepting color drawings have
been satisfied, the provisions and restrictions in amended    1.84(a)(2)
would also apply to color photographs.

Section 1.84(e) is amended to provide that photographs must be developed
on paper meeting the sheet-size requirements of    1.84(f) and the
margin requirements of    1.84(g).

Section 1.84(j) is amended to refer to the view suitable for the front
page of the patent application publication and patent, rather than the
view suitable for the Official Gazette, since the front page of the
patent (and patent application publication) includes the information
that is (or would be) included in the Official Gazette, and the Office
does not plan on creating an Official Gazette for patent application
publications. Section 1.84(j) is also amended to provide that: (1) one
of the views should be suitable for inclusion on the front page of the
patent application publication and patent as the illustration of the
invention; and (2) applicant may suggest a single view (by figure
number) for inclusion on the front page of the patent application
publication and patent. Applicants should indicate in the application
transmittal letter the figure number of the view suggested for inclusion
on the front page of the patent application publication and patent. The
Office, however, is not bound by applicant's suggestion.

Section 1.85: Section 1.85(a) is amended to provide that a utility or
plant application will not be placed on the files for examination until
objections to the drawings have been corrected. As discussed above,
these objections will concern deficiencies that must be corrected for
the drawings to be of sufficient quality for use in creating a patent
application publication. For example, the drawings must be reproducible
and any text in the drawings must be in the English language. Since the
Office plans to use the copy of the application (including the drawings)
from its PACR database to create the patent application publication, the
Office must require that new or corrected drawings correcting the
objections to the drawings be filed before the application is released
from OIPE and placed on the files for examination.

Even if an applicant files the application with a request that the
application not be published pursuant to 35 U.S.C. 122(b), the applicant
may rescind that request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). In
addition, at the time the Office is recording a copy of the application
in its PACR database, the Office is not in a position to know whether
the applicant will file an electronic filing system copy of the
application for use in creating the patent application publication.
Therefore, the Office must be prepared to create a patent application
publication from its PACR database for each application and insist that
objections to the drawings be corrected in all utility and plant
applications before the application can be released from OIPE.

Section 1.85(a) is also amended to provide that (except as provided in
 1.215(c)) any patent application publication will not include drawings
filed after the application has been placed on the files for
examination. Thus, corrected drawings submitted after the application
has been released from OIPE will not be added to the PACR database or
used to create the patent application publication.

Section 1.85(a) is also amended to provide that, unless applicant is
otherwise notified in an Office action, objections to the drawings in a
utility or plant application will not be held in abeyance, and a request
to hold objections to the drawings in abeyance will not be considered a
bona fide attempt to advance the application to final action (
1.135(c)).That is, if an Office action or notice contains an objection
to the drawings (and does not expressly permit such objection to be held
in abeyance) and the applicant's reply does not correct the objection,
the applicant will be advised that the reply is non-responsive and given
the remainder of the period set in the original Office action or notice
(and not a new period under    1.135(c)) within which to correct the
objection.

Since design applications are not subject to the eighteen-month
publication provisions of 35 U.S.C. 122(b), drawings in a design
application will continue to be admitted for examination if the drawings
meet the requirements of    1.84(e), (f), and (g) and are suitable for
reproduction.

Section 1.98: Section 1.98(a)(2)(i) is amended to also refer to U.S.
patent application publications. Section 1.98(b) is amended to provide
that each U.S. patent application publication listed in an information
disclosure statement shall be identified by applicant, patent
application publication number, and publication date.

Section 1.99: Section 1.99(a) provides that a submission by a member of
the public of patents or publications relevant to a pending published
application will be entered in the application file if the submission
complies with the requirements of    1.99 and the application is still
pending when the submission and application file are brought before the
examiner. The entry of such a submission does not mean that the patents
or printed publications contained in the submission will be necessarily
considered and cited by the examiner. If the examiner considers a patent
or printed publication contained in the submission to be pertinent in
determining patentability, the examiner will initial that patent or
printed publication on the listing of the patents or publications
submitted for consideration by the Office. Unless, however, a patent or
publication in a submission under    1.99 is discussed during
prosecution, the patent or publication will not be deemed to have been
"considered" pursuant to the Office's Portola guidelines. See Guidelines
for Reexamination of Cases in View of In re Portola Packaging, Inc., 110
F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), Notice, 64 FR 15346 (Mar. 31,
1999), 1223 Off. Gaz. Pat. Office 124 (June 22, 1999).

Section 1.99(b) provides that a submission under    1.99 must identify
the application to which it is directed by application number and
include: (1) the fee set forth in    1.17(p); (2) a listing of the
patents or publications submitted for consideration by the Office
(including the date of publication of each patent or publication); (3) a
copy of each listed patent or publication in written form or at least
the pertinent portions; and (4) an English language translation of all
the necessary and pertinent parts of any non-English language patent or
publication in written form relied upon.

Section 1.99(c) provides that a submission under    1.99 must be served
upon the applicant in accordance with    1.248.

Section 1.99(d) provides that a submission under    1.99 may not include
any explanation of the patents or publications, or any other
information, and that a submission under    1.99 is limited to ten total
patents or publications. Section 1.99(d) also provides that the Office
will dispose of such explanation or information if included in a
submission under    1.99. The Office plans to review submissions under
 1.99 (e.g., by a Supervisory Patent Examiner) to determine whether they
are limited to patents and publications before the submission is placed
in the file of the application and forwarded to the examiner, and to
remove any explanations or information (other than patents and
publications) from the submission before it is placed in the file of the
application and forwarded to the examiner.

Section 1.99(e) provides that a submission under    1.99 must be filed
within two months from the date of publication of the application (
1.215(a)), or prior to the mailing of a notice of allowance (   1.311),
whichever is earlier. Section 1.99(e) also provides that any submission
under    1.99 not filed within this period is permitted only when the
patents or publications could not have been submitted to the Office
earlier, and must also be accompanied by the processing fee set forth in
   1.17(i). The phrase "publication of the application (   1.215(a))"
means that republication of an application under    1.211 has no effect
on (e.g., does not restart) the period specified in    1.99(e). Section
1.99(e) also provides that a submission by a member of the public to a
pending published application that does not comply with the requirements
of    1.99 will be returned or discarded.

Section 1.99(f) provides that the involvement of a member of the public
in filing a submission under    1.99 ends with the filing of the
submission.

Section 1.103: Section 1.103 is amended to provide for deferred
examination for up to three years from the earliest filing date for
which a benefit is claimed under title 35, United States Code, at the
request of the applicant. The Office previously proposed a "deferred
examination" practice (in addition to the current suspension of action
practices) to implement the Patent Business Goals. See Changes to
Implement the Patent Business Goals, Advance Notice of Proposed
Rulemaking, 63 FR 53498, 53516-17 (Oct. 5, 1998), 1215 Off. Gaz. Pat.
Office 87, 104-05 (Oct. 27, 1998). The Office, however, did not proceed
with proposing changes to    1.103 to implement a "deferred examination"
practice. See Changes to Implement the Patent Business Goals, Notice of
Proposed Rulemaking, 64 FR 53772, 53775 (Oct. 4, 1999), 1228 Off. Gaz.
Pat. Office 15, 18 (Nov. 2, 1999). The Office is now proceeding with
changes to    1.103 to implement a "deferred examination" practice.

Section 1.103(d) is added to provide for deferral of examination if the
applicant requests deferred examination under    1.103(d) and pays the
publication fee set forth in    1.18(d) and the processing fee set forth
in    1.17(i). The following conditions must also be met:(1) the
application must be filed on or after November 29, 2000 (or be an
application for which applicant requests voluntary publication), and be
an original (i.e., non-reissue) utility or plant application filed under
   1.53(b) (i.e., not a continued prosecution application under
1.53(d)) or an application resulting from entry of an international
application into the national stage after compliance with    1.494 or
1.495; (2) the applicant must not have filed a nonpublication request
under    1.213(a), or have filed a request under    1.213(b) to rescind
a previously filed nonpublication request; (3) the application must be
in condition for publication as provided in    1.211(c); and (4) the
Office must not have issued either an Office action under 35 U.S.C. 132
or a notice of allowance under 35 U.S.C. 151.

The reasons given for opposition to the October 1998 proposal concerning
"deferred examination" were that: (1) the "deferred examination" of an
application under an extended suspension of action and the publication
of an application under such suspension of action would create
uncertainty over legal rights; and (2) the publication provisions of
such a suspension of action procedure amount to an eighteen-month
publication system that is not authorized by 35 U.S.C. 122. The Office
is adopting its deferred examination proposal because: (1) since the
deferral of examination under    1.103(d) is limited to three years from
the earliest filing date for which a benefit is claimed under title 35,
United States Code, there will be no greater uncertainty over legal
rights than currently exists under reissue or continuing application
practice; and (2) 35 U.S.C. 122(b) now provides for eighteen-month
publication of patent applications (with certain exceptions).

Section 1.104: Section 1.104(a) is amended by eliminating the provisions
concerning the circumstances under which an examiner will consider
applications to be copending (   1.104(a)(5)). This material pertains
only to internal instructions to examiners and is considered appropriate
for inclusion in the MPEP rather than the rules of practice.

Section 1.104(d) is amended to provide that if domestic (U.S.) patent
application publications are cited by the examiner, their publication
number, publication date, and the names of the applicants will be stated.

Section 1.130: Section 1.130(a) is amended to refer to published
applications (as well as patents). Specifically,    1.130 is also
applicable to a rejection of a claim in an application or patent under
reexamination based upon a patent application publication in the
situation in which the application or patent under reexamination and the
published application are currently owned by the same party.

Section 1.131: Section 1.131(a) is amended to provide that: (1) the
effective date of a U.S. patent, U.S. patent application publication, or
international application publication under PCT Article 21(2) is the
earlier of its publication date or the date that it is effective as a
reference under 35 U.S.C. 102(e); and (2) prior invention may not be
established under    1.131 if the rejection is based upon either a U.S.
patent or a U.S. patent application publication of a pending or patented
application to another or others which claims the same patentable
invention as defined in    1.601(n).

Section 1.132: Section 1.132 is revised to provide that when any claim
of an application or a patent under reexamination is rejected or
objected to, any evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way of an
oath or declaration under this section. This adopts the long-standing
policy that any oath or declaration not otherwise provided for is
considered under    1.132. See MPEP 716.

Section 1.132 as adopted does not provide that an oath or declaration
may not be submitted under    1.132 to traverse a rejection if the
rejection is based upon a U.S. patent or a U.S. patent application
publication of a pending or patented application to another or others
which claims the same patentable invention as defined in    1.601(n). If
an oath or declaration is submitted under    1.132 to traverse a
rejection, and the rejection is based upon a U.S. patent or a U.S.
patent application publication of a pending or patented application to
another or others which claims the same patentable invention as defined
in    1.601(n), the Office will consider on a case-by-case basis whether
the oath or declaration may be considered sufficient to overcome the
rejection, or whether the applicant will be required to establish
priority of invention through an interference proceeding.

Section 1.137: Section 1.137 is amended to: (1) make its provisions
applicable to the revival of a terminated reexamination proceeding; (2)
provide for the revival of an application abandoned pursuant to 35
U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the
filing of an application in a foreign country or under a multinational
treaty; and (3) reorganize certain provisions for clarity.

Section 1.137 (including its heading) is amended to provide for revival
of ex parte reexamination proceedings terminated under    1.550(d), for
revival of inter partes reexamination proceedings terminated under
1.957(b), or for revival of rejected claims terminated under    1.957(c)
in an inter partes reexamination proceeding where further prosecution
has been limited to claims found allowable at the time of the failure to
respond. These changes to    1.137 were discussed in the notice of
proposed rulemaking to implement the optional inter partes reexamination
provisions of the American Inventors Protection Act of 1999. See Rules
to Implement Optional Inter Partes Reexamination Proceedings, Notice of
Proposed Rulemaking, 65 FR 18154 (Apr. 6, 2000), 1234 Off. Gaz. Pat.
Office 93 (May 23, 2000).

Specifically,    1.137(a) is amended to include revival of unavoidably
terminated reexamination proceedings. The unavoidable delay provisions
of 35 U.S.C. 133 are imported into and are applicable to reexamination
proceedings by 35 U.S.C. 305 and 314. See In re Katrapat, 6 USPQ2d 1863
(Comm'r Pats. 1988). Section 1.137(b) is amended to provide for revival
of unintentionally terminated reexamination proceedings. The
unintentional delay fee provisions of 35 U.S.C. 41(a)(7) are imported
into and are applicable to all reexamination proceedings by    4605 of
the American Inventors Protection Act of 1999. Note that these changes
pertain to all reexaminations (i.e., both ex parte reexaminations filed
under    1.510 and inter partes reexaminations filed under    1.913) and
become effective on November 29, 2000 (one year after enactment of the
American Inventors Protection Act of 1999).

The reconsideration provisions of    1.137 (formerly    1.137(d), and
1.137(e) as adopted) are amended to provide that extensions of time for
requesting reconsideration of a decision dismissing or denying a
petition requesting revival of a terminated reexamination proceeding
under    1.137(a) or    1.137(b) must be filed under    1.550(c) for a
terminated ex parte reexamination proceeding, or under    1.956 for a
terminated inter partes reexamination proceeding.

Section 1.137(f) provides for the revival of an application abandoned
for failure to timely notify the Office of a foreign filing. As
discussed above, if an applicant makes a request (nonpublication
request) upon filing with the appropriate certifications, the
application will not be published under 35 U.S.C. 122(b)(1). See 35
U.S.C. 122(b)(2)(B)(i). An applicant who has made a nonpublication
request but who subsequently files an application directed to the
invention disclosed in the application filed in the Office in a foreign
country, or under a multilateral international agreement, that requires
eighteen- month publication, must notify the Office of such filing
within forty-five days after the date of such filing, with the failure
to timely provide such a notice to the Office resulting in abandonment
of the application. See 35 U.S.C. 122(b)(2)(B)(iii). 35 U.S.C.
122(b)(2)(B)(iii), however, also provides that an application abandoned
as a result of the failure to timely provide such a notice to the Office
is subject to revival if the "delay in submitting the notice was
unintentional." See id.

35 U.S.C. 122(b)(2)(B)(iii) provides for revival only on the basis of
unintentional delay, and not on the basis of unavoidable delay. Compare
35 U.S.C. 122(b)(2)(B)(iii) ("delay . . . was unintentional") with 35
U.S.C. 111(a)(4) ("delay . . . was unavoidable or unintentional").
Therefore,    1.137(f) provides that a nonprovisional application
abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely
notify the Office of the filing of an application in a foreign country
or under a multinational treaty that requires eighteen-month publication
may be revived only pursuant to    1.137(b). Section 1.137(f) also
provides that the reply requirement of    1.137(c) is met by the
notification of such filing in a foreign country or under a
multinational treaty, but the filing of a petition under    1.137 will
not operate to stay any period for reply that may be running against the
application. Since the Office cannot ascertain whether an application is
abandoned under 35 U.S.C. 122(b)(2)(B)(iii), the Office may continue to
process and examine the application until the applicant notifies the
Office that the application is abandoned. Therefore,    1.137(f)
provides that the filing of a petition under    1.137 to revive such an
application will not operate to stay any period for reply that may be
running against the application.

Section 1.137 is also amended to locate the "reply requirement"
provisions in    1.137(c), rather than include duplicative provisions
concerning the reply requirement in each of    1.137(a) and (b). Thus,
the terminal disclaimer provisions of    1.137(c), reconsideration
provisions of    1.137(d), and provisional application provisions of
1.137(e) are moved to    1.137(d),    1.137(e), and    1.137(g),
respectively. In addition,    1.137(c) also provides that in an
application abandoned for failure to pay the publication fee, the
required reply must include payment of the publication fee. Thus, even
if an application abandoned for failure to pay the publication fee is
being revived solely for purposes of continuity with a continuing
application, the petition to revive under    1.137 must include payment
of the publication fee (unless previously submitted).

Section 1.137 is also amended to take into account the provisions of 35
U.S.C. 119(e)(3), which extend the pendency of a provisional application
to the next succeeding secular or business day if the day that is twelve
months after the filing date of the provisional application falls on a
Saturday, Sunday, or Federal holiday within the District of Columbia.
Section 1.138: Section 1.138(a) is amended to add "or publication" to
clarify that a letter of express abandonment may not be recognized by
the Office unless it is actually received by appropriate officials in
time to act before the date of publication.

Section 1.138(c) is added to provide for a petition for express
abandonment to avoid publication. Section 1.138(c) provides that an
applicant seeking to abandon an application to avoid publication of the
application (see    1.211(a)(1)) must submit a declaration of express
abandonment by way of a petition including the fee set forth in
1.17(h) in sufficient time to permit the appropriate officials to
recognize the abandonment and remove the application from the
publication process. The petition will be granted when it is recognized
in sufficient time to avoid publication of application information and
will be denied when it is not recognized in sufficient time to avoid
publication of application information. This will avert the situation in
which an applicant files a letter of express abandonment to avoid
publication, the letter of express abandonment is not recognized in
sufficient time to avoid publication, upon publication the applicant
wishes to rescind the letter of express abandonment, and the Office
cannot revive the application (once the letter of express abandonment is
recognized) because the application was expressly and intentionally
abandoned by the applicant.

As discussed above, the publication process is a fourteen-week process,
and the applicant should expect that the petition will not be granted
and the application will be published in regular course unless such
declaration of express abandonment and petition are received by the
appropriate officials more than four weeks prior to the projected date
of publication.

Section 1.165: Section 1.165(b) is amended to provide that if plant
application drawings include a color drawing or photograph, a black and
white photocopy that accurately depicts, to the extent possible, the
subject matter shown in the color drawing or photograph must be
submitted.

Section 1.211: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221 are
added to provide for the pre-grant publication of applications under 35
U.S.C. 122(b).

Section 1.211(a) provides that (with certain exceptions) each U.S.
national application for patent filed in the Office under 35 U.S.C.
111(a) and each international application in compliance with 35 U.S.C.
371 will be published promptly after the expiration of a period of
eighteen months from the earliest filing date for which a benefit is
sought under title 35, United States Code.

Section 1.211(a)(1) provides that the Office will not publish
applications that are recognized as no longer pending. The phrase
"recognized by the Office as no longer pending" covers the situation in
which the period for reply (either the shortened statutory period or the
maximum extendable period for reply) to an Office action has expired,
but the Office has not yet entered the change of status (to abandoned)
of the application in the PALM system and mailed a notice of
abandonment. An application will remain in the publication process until
the PALM system indicates that the application is abandoned.Obviously,
once the PALM system indicates that an application is abandoned, the
Office will attempt to remove the application from the publication
process and avoid dissemination of application information. How much
dissemination of application information can be avoided depends upon how
close it is to the publication date when the Office recognizes the
application as abandoned. Unless an applicant has received a notice of
abandonment, an applicant who wants to abandon the application to avoid
publication must file a petition under    1.138(c) to expressly abandon
the application and avoid publication. An applicant permitting an
application to become abandoned (for failure to reply to an Office
action) to avoid publication by passively waiting for the Office to
recognize that the application has become abandoned must bear the risk
that the Office will not recognize that the application has become
abandoned and change the status of the application in the PALM system in
sufficient time to avoid publication.

Section 1.211(a)(2) provides that the Office will not publish
applications that are national security classified (see    5.2(c)),
subject to a secrecy order under 35 U.S.C. 181, or under national
security review.

Section 1.211(a)(3) provides that the Office will not publish
applications that have issued as patents in sufficient time to be
removed from the publication process. If the pre-grant publication
process coincides with the patent issue process, the Office will
continue with the pre-grant publication process until a patent actually
issues. This is because there are many instances in which the Office
mails a notice of allowance (   1.311) in an application but the
application does not issue as a patent in regular course (abandonment
due to failure to pay the issue fee, or withdrawal from issue either sua
sponte by the Office or on petition of the applicant). Therefore, the
Office will not discontinue the pre- grant publication process until a
patent has actually issued. Since the Office cannot discontinue the
pre-grant publication process during the last two weeks of the
publication process, this will result in a few applications being issued
as patents and subsequently being published as patent application
publications. The Office will refund the publication fee (if paid) if
the application is not published as a patent application publication,
but will not refund the publication fee if the application is published
as a patent application publication, even if it is published after the
patent issues.

Section 1.211(a)(4) also provides that the Office will not publish
applications that were filed with a nonpublication request in compliance
with    1.213(a).

Section 1.211(b) provides that provisional applications under 35 U.S.C.
111(b) shall not be published. Section 1.211(b) also provides that
design applications under 35 U.S.C. chapter 16 and reissue applications
under 35 U.S.C. chapter 25 shall not be published under    1.211.
Provisional applications under 35 U.S.C. 111(b) and design applications
under 35 U.S.C. chapter 16 are excluded from the pre-grant publication
provisions of 35 U.S.C. 122(b). See 35 U.S.C. 122(b)(2)(A)(iii) and
(iv). Reissue applications under 35 U.S.C. chapter 25 are not maintained
in confidence under 35 U.S.C. 122(a). See    1.11(b).

Section 1.211(c) provides that the Office will not publish an
application filed under 35 U.S.C. 111(a) until it includes the basic
filing fee, an English translation if in a language other than English,
and an executed oath or declaration. Section 1.211(c) also provides that
publishing may be delayed until the application includes a specification
having papers in compliance with    1.52 and an abstract (   1.72(b)),
drawings in compliance with    1.84, and a sequence listing in
compliance with      1.821 through 1.825 (if applicable), and until any
petition under    1.47 is granted. That is, if an application does not
contain the application content on papers or drawings of sufficient
quality to create a patent application publication by eighteen months
from its earliest claimed filing date, the Office will publish the
application as soon as practical after these deficiencies are corrected.

Section 1.211(d) provides that the Office may refuse to publish an
application, or to include a portion of an application in the patent
application publication (   1.215), if publication of the application or
portion thereof would violate Federal or state law, or if the
application or portion thereof contains offensive or disparaging
material. A similar provision exists in PCT practice, in that the
International Bureau (IB) may omit expressions or drawings in an
international application from its publications if the expressions or
drawings are contrary to morality or public order, or contain
disparaging statements. See PCT Article 21(6) and Rule 9.

Section 1.211(e) provides that the publication fee set forth in
1.18(d) must be paid in each application published under this section
before the patent will be granted, but does not require that the
publication fee be paid prior to publication. If an application is
subject to publication under this section, the sum specified in the
notice of allowance under    1.311 will also include the publication fee
which must be paid within three months from the date of mailing of the
notice of allowance to avoid abandonment of the application. This
three-month period is not extendable. If the application is not
published under this section, the publication fee (if paid) will be
refunded.

Section 1.213: Section 1.213 implements the provisions of 35 U.S.C.
122(b)(2)(B)(i)-(iii). An applicant may request that the application not
be published under 35 U.S.C. 122(b) and    1.211 if the invention
disclosed in an application has not been and will not be the subject of
an application filed in another country, or under a multilateral
international agreement, that requires publication of applications
eighteen months after filing. Section 1.213(a) requires that a request
that an application not be published under 35 U.S.C. 122(b)
(nonpublication request) must: (1) be submitted with the application
upon filing; (2) state in a conspicuous manner that the application is
not to be published under 35 U.S.C. 122(b); (3) contain a certification
that the invention disclosed in the application has not been and will
not be the subject of an application filed in another country, or under
a multilateral agreement, that requires publication at eighteen months
after filing; and (4) be signed in compliance with    1.33(b). The
requirement that a nonpublication request be submitted "upon filing" is
a requirement of statute (35 U.S.C. 122(b)(2)(B)(i)), and, as such, the
Office must deny any petition requesting a waiver of this provision of
 1.213(a).

Section 1.213(b) provides that the applicant may rescind a
nonpublication request at any time. See 35 u.s.c. 122(b)(2)(B)(ii).
Section 1.213(b) also provides that a request to rescind a
nonpublication request under    1.213(a) must: (1) identify the
application to which it is directed (   1.5); (2) state in a conspicuous
manner that the request that the application is not to be published
under 35 U.S.C. 122(b) is rescinded; and (3) be signed in compliance
with    1.33(b). Once a request under    1.213(b) to rescind a
nonpublication request is filed and processed by the Office, the
application will be scheduled for publication in accordance with
1.211(a).

Section 1.213(c) reiterates the provisions of 35 U.S.C.
122(b)(2)(B)(iii). Section 1.213(c) specifically states that if an
applicant who has submitted a nonpublication request under    1.213(a)
subsequently files an application directed to the invention disclosed in
the application in which the nonpublication request was submitted in
another country, or under a multilateral international agreement, that
requires publication of applications eighteen months after filing, the
applicant must notify the Office of such filing within forty-five days
after the date of the filing of such foreign or international
application. The failure to timely notify the Office of the filing of
such foreign or international application shall result in abandonment of
the application in which the nonpublication request was submitted. See
35 U.S.C. 122(b)(2)(B)(iii).

Section 1.215: Section 1.215(a) indicates that the publication of an
application under 35 U.S.C. 122(b) shall include a patent application
publication. The Office will not mail a paper copy of the patent
application publication to the applicant, but will mail a notice to the
applicant indicating that the application has been published.

Section 1.215(a) also provides that the date of publication shall be
indicated on the patent application publication.

Section 1.215(a) also provides that (except as discussed below in
1.215(c)) the patent application publication will be based upon the
application papers deposited on the filing date of the application,
except for preliminary amendments, as well as the executed oath or
declaration submitted to complete the application, and any application
papers or drawings submitted in reply to a preexamination notice
requiring a title and abstract in compliance with    1.72, application
papers in compliance with    1.52, drawings in compliance with    1.84,
or a sequence listing in compliance with      1.821 through 1.825.That
is, the patent application publication will not reflect the application
as it was amended during the examination process, but will only reflect
the application as recorded in the Office's PACR database.

Section 1.215(b) provides a mechanism by which applicants may have
assignee information (the name and address of the assignee of the entire
right, title, and interest in an application) included on the patent
application publication. To have assignee information included on the
patent application publication, the applicant must include the assignee
information on the application transmittal sheet or the application data
sheet under    1.76. Providing assignee information on the application
transmittal sheet or the application data sheet will be treated as an
indication that the assignee information is being provided for inclusion
on the patent application publication. Providing assignee information on
the application transmittal sheet or the application data sheet does not
substitute for compliance with any requirement of 37 CFR part 3 to have
an assignment recorded by the Office.

If applicant wants to submit assignee information for inclusion on the
patent application publication after filing (i.e., after the application
transmittal sheet or the application data sheet has been filed),
applicant must file a supplemental application data sheet (   1.76)
containing the assignee information. This applies to changes to
previously submitted assignee information, as well as assignee
information being provided for the first time.Nevertheless, assignee
information may not be included on the patent application publication
unless this information is provided on the application transmittal sheet
or application data sheet included with the application on filing.

Section 1.215(c) provides a mechanism by which applicants may have the
patent application publication reflect the application as amended during
the examination process (rather than the application information as
recorded in the Office's PACR database). Section 1.215(c) provides that
the Office will use an applicant-supplied copy of the application
(specification, drawings, and oath or declaration), provided that: (1)
the copy is in compliance with the Office electronic filing system (EFS)
requirements; and (2) the EFS copy is filed within one month of the
actual filing date of the application or fourteen months of the earliest
filing date for which a benefit is sought, whichever is later.

The fourteen-month period differs from the sixteen-month period provided
in    1.217 for submitting a redacted copy of an application because the
sixteen-month period provided in    1.217 is not based upon the
fourteen-week publication cycle but is provided for by statute (35
U.S.C. 122(b)(2)(B)(v)).

Section 1.215(d) provides that if the copy of the application does not
comply with the Office EFS requirements, the Office will publish the
application based upon the application records in the Office's PACR
database (as provided in    1.215(a)). If, however, the Office has not
started the publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under    1.215(c) in
creating the patent application publication.

Section 1.217: Section 1.217(a) implements the provisions of 35 U.S.C.
122(b)(2)(B)(v), and provides that if an applicant has filed
applications in one or more foreign countries, directly or through a
multilateral international agreement, and such foreign-filed
applications or the description of the invention in such foreign-filed
applications is less extensive than the application or description of
the invention in the application filed in the Office, the applicant may
submit a redacted copy of the application filed in the Office for
publication, eliminating any part or description of the invention that
is not also contained in any of the corresponding applications filed in
a foreign country. Section 1.217(a) also provides that the Office will
publish the application as provided in    1.215(a) unless the applicant
files a redacted copy of the application in compliance with    1.217
within sixteen months after the earliest filing date for which a benefit
is sought under title 35, United States Code. This sixteen-month period
is provided by statute (35 U.S.C. 122(b)(2)(B)(v)), and as such,
requests for waiver of this sixteen-month period will be denied.

As discussed above, this sixteen-month period provided in    1.217
differs from the fourteen-month period provided in    1.215(c) because
the sixteen-month period provided in    1.217 is not based upon the
fourteen-week publication cycle but is provided for by statute (35
U.S.C. 122(b)(2)(B)(v)). If a redacted copy of an application is
submitted in compliance with    1.217 but later than four months prior
to the projected publication date, the Office will be required to
reprocess the patent application publication (for which assembly will
have already started) using the redacted copy of the application
provided by applicant.

Section 1.217(b) provides that the redacted copy of the application must
be submitted in compliance with the Office EFS requirements. Section
1.217(b) also provides that the title of the invention in the redacted
copy of the application must correspond to the title of the application
at the time the redacted copy of the application is submitted to the
Office.The Office uses the title of the invention (among other
information) as provided in an EFS copy of an application to confirm the
identity of the application for which the EFS copy is submitted. Thus,
if a portion of the title has been redacted such that the title (as
redacted) in the EFS copy of the application is different from the title
of the invention for the application as shown in PALM, it will appear
that the redacted EFS copy of the application incorrectly identifies the
application for which the redacted EFS copy is submitted. If an
applicant wants to redact a portion of the title, the applicant must
first submit an amendment to the title of the invention such that it
will correspond to the title as redacted. Section 1.217(b) also provides
that if the redacted copy of the application does not comply with the
Office EFS requirements, the Office will publish the application based
upon the unredacted records in the Office's PACR database.

Section 1.217(c) provides that the applicant must also concurrently
submit in paper (   1.52(a)) to be filed in the application: (1) a
certified copy of each foreign-filed application that corresponds to the
application for which a redacted copy is submitted; (2) a translation of
each such foreign-filed application that is in a language other than
English, and a statement that the translation is accurate; (3) a
marked-up copy of the application showing the redactions in brackets;
and (4) a certification that the redacted copy of the application
eliminates only the part or description of the invention that is not
contained in any application filed in a foreign country, directly or
through a multilateral international agreement, that corresponds to the
application filed in the Office. The provisions of    1.217(c) are
designed to ensure that any patent application publication based upon a
redacted copy of an application contains the parts and description of
the invention contained in any of the corresponding applications filed
in a foreign country.

Section 1.217(d) provides a mechanism for obtaining an appropriately
redacted copy of the application contents to provide to members of the
public requesting a copy of the file wrapper and contents of the
application. Section 1.217(d) provides that the Office will provide a
complete unredacted copy of the file wrapper and contents of an
application for which a redacted copy was submitted under    1.217 (upon
payment of a fee) unless the applicant complies with the requirements of
   1.217(d). Since the processing required to provide redacted copies of
the application content is the result of an applicant choosing to submit
a redacted copy under    1.217, it is appropriate to require the
applicant to timely provide appropriate redacted copies of Office
correspondence and applicant submissions, and to pay a processing fee
for the special handling required for these papers, should the applicant
wish to maintain the redacted portions of the application in confidence
prior to the grant of a patent.

Section 1.217(d)(1) provides that the applicant must accompany the
submission required by    1.217(c) with: (1) a copy of any Office
correspondence previously received by applicant including any desired
redactions, and a second copy of all Office correspondence previously
received by applicant showing the redacted material in brackets; and (2)
a copy of each submission previously filed by the applicant including
any desired redactions, and a second copy of each submission previously
filed by the applicant showing the redacted material in brackets.
Section 1.217(d)(2) provides that the applicant must also: (1) within
one month of the date of mailing of any correspondence from the Office,
file a copy of such Office correspondence including any desired
redactions, and a second copy of such Office correspondence showing the
redacted material in brackets; and (2) with each submission by the
applicant, include a copy of such submission including any desired
redactions, and a second copy of such submission showing the redacted
material in brackets. Section 1.217(d)(3) provides that each submission
under    1.217(d)(1) or    1.217(d)(2) must also be accompanied by the
processing fee set forth in    1.17(i) and a certification that the
redactions are limited to the elimination of material that is relevant
only to the part or description of the invention that is not contained
in the redacted copy of the application submitted for publication. If
the applicant fails to comply with these requirements, the Office will
provide a complete unredacted copy of the file wrapper and contents of
the application to any member of the public (upon payment of a fee).

Section 1.217(e) provides that the certificate of mailing or
transmission procedures set forth in provisions of    1.8 do not apply
to the time periods set forth in    1.217.

Section 1.219: Section 1.219 implements the provisions of 35 U.S.C.
122(b)(1) that authorize (but do not require) the Office to publish
earlier than at the eighteen-month period set forth in 35 U.S.C.
122(b)(1) at the request of the applicant. Section 1.219 provides that
any request for early publication must be accompanied by the publication
fee set forth in    1.18(d). Section 1.219 provides that if the
applicant does not submit a copy of the application in compliance with
the Office EFS requirements, the Office will publish the application
based upon the application records in the Office's PACR database (as
provided in    1.215(a)). Section 1.219 also provides that no
consideration will be given to requests for publication on a certain
date (which includes a request that certain applications be published on
the same date), and such requests will be treated as a request for
publication as soon as possible.

Section 1.221: Section 1.221 provides for voluntary publication of
applications filed before, but pending on, November 29, 2000, and for
requests for republication of applications previously published under
1.211. Applicants may request republication of an application under
1.221 to obtain a patent application publication that: (1) corrects
immaterial errors or errors not the result of Office mistake; or (2)
reflects the application as amended during prosecution of the
application.

Section 1.221(a) provides that a request for voluntary publication or
republication must include a copy of the application in compliance with
the Office EFS requirements and be accompanied by the publication fee
set forth in    1.18(d) and the processing fee set forth in    1.17(i).

Voluntary publication or republication of applications is not mandated
by 35 U.S.C. 122(b)(1). Thus, if a request for voluntary publication or
republication does not comply with the requirements of    1.221, or the
copy of the application does not comply with the Office EFS
requirements, the Office will not publish the application based upon the
application records in the Office's PACR database (as provided in
1.215(a)). Rather, the Office will simply not publish the application
and will refund the publication fee (but not the processing fee).

Section 1.221(b) provides that the Office will grant a request for a
corrected or revised patent application publication other than as
provided in    1.221(a) only when the Office makes a material mistake
which is apparent from Office records. The phrase "material mistake"
means a mistake that affects the public's ability to appreciate the
technical disclosure of the patent application publication or determine
the scope of the provisional rights that an applicant may seek to
enforce upon issuance of a patent (e.g., error in the claims, serious
error in a portion of the written description or drawings that is
necessary to support the claims). The Office will permit applicants to
review the bibliographic information contained in the Office's PALM
database via its PAIR system. Therefore, applicants are expected to
review that information and bring errors to the Office's attention at
least fourteen weeks before the projected date of publication. Section
1.221(b) also provides that any request for a corrected or revised
patent application publication other than as provided in    1.221(a)
must be filed within two months from the date of the patent application
publication, and that this period is not extendable.

Section 1.291: Section 1.291(a)(1) implements the provisions of 35
U.S.C. 122(c), which specify that the Office shall establish appropriate
procedures to ensure that no protest or other form šxnof pre-issuance
opposition to the grant of a patent may be initiated after publication
of the application without the applicant's express written consent.
Section 1.291 is amended to provide that a protest must be submitted
prior to the date the application was published or the mailing of a
notice of allowance under    1.311, whichever occurs first.

Section 1.292: Section 1.292(b)(3) is amended to require that any
petition to institute a public use proceeding be submitted prior to the
date the application was published or mailing of a notice of allowance
under    1.311, whichever occurs first.

Section 1.311: Section 1.311(a) is amended to provide that the sum
specified in the notice of allowance may (in addition to the issue fee)
also include the publication fee, in which case the issue fee and
publication fee (   1.211(f)) must both be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. Section 1.311(a) is also amended to provide that this
three-month period is not extendable. Section 1.311(b) is amended to
provide that an authorization to charge any of the post-allowance fees
set forth in    1.18 to a deposit account may be filed in an individual
application only after mailing of the notice of allowance.

Section 1.417: Section 1.417 is added to provide for the submission of
international publications or English language translations of
international applications pursuant to 35 U.S.C. 154(d)(4). This section
sets forth the requirements for the filing of an English language
international publication or translation of an international application
in order to ensure proper handling by the Office. Section 1.417 provides
that such a submission must clearly identify the international
application to which it pertains under    1.5(a), and unless it is being
submitted pursuant to    1.494 or    1.495, must be clearly identified
as a submission pursuant to 35 U.S.C. 154(d)(4). Failure to properly
identify such submissions will result in the English language
international publication or translation of the international
application being processed as the filing of a national application
under 35 U.S.C. 111(a). Additionally, failure to properly identify the
international publication or translation as a submission under 35 U.S.C.
154(d)(4) may cause the Office to be unable to properly track or
retrieve the international publication or translation in relation to its
international application number. Section 1.417 also provides that such
submissions should be marked "Box PCT."

The submission of an international publication or translation of an
international application for the purposes of national stage entry in
accordance with    1.494 or    1.495 may also be relied upon as the
submission for the purposes of 35 U.S.C. 154(d)(4).Likewise, an earlier
filed international publication or translation (submitted for the
purposes of 35 U.S.C. 154(d)(4) and properly identified as such) may
also be relied upon for the purpose of satisfying the requirement of 35
U.S.C. 371(c)(2). If applicant intends to rely on such an earlier filed
international publication or translation, the submission of documents
under    1.494(f) and    1.495(g) should include an indication that the
international publication or translation has been previously submitted
for the purposes of 35 U.S.C. 154(d)(4) to avoid the mailing of either a
Notice of Abandonment (PCT/DO/EO/909) indicating that a copy of the
international application was not timely filed, or a Notice of Missing
Requirements (PCT/DO/EO/905) indicating that a translation of the
international application is required. While (as discussed above)
applicants may rely on an earlier filed international publication or
translation for the purposes of national stage entry and processing, the
Office strongly recommends that a second copy of the international
publication or translation be included with the initial national stage
papers in order to ensure the integrity of the first submitted
international publication or translation. Otherwise, processing of the
national stage application may result in the alteration of the
originally filed international publication or translation through, e.g.,
the entry of amendments.

Section 1.494: Section 1.494(f) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in    1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).

Section 1.495: Section 1.495(g) is amended to exempt a copy of the
international publication or translation of the international
application identified as provided in    1.417 from the documents that
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371 to avoid being considered a submission under 35
U.S.C. 111(a).

Part 5:

Section 5.1: Section 5.1(e) is amended to implement the provisions of 35
U.S.C. 122(d), which specify that the application will not be published
under 35 U.S.C. 122(b)(1) if publication or disclosure of the
application would be detrimental to national security. Section 5.1(e)
provides that an application under national security review will not be
published at least until six months from its filing date or three months
from the date the application was referred to a defense agency,
whichever is later. These are the current national security review
screening time frames for foreign filing license purposes. Section
5.1(e) also provides that a national security classified patent
application will not be published under    1.211 of this chapter or
allowed under    1.311 of this chapter until the application is
declassified and any secrecy order under    5.2(a) has been rescinded.

Response to comments: The Office received twenty-one written comments
(from Intellectual Property Organizations, Businesses, Law Firms, Patent
Practitioners, and others) in response to the notice of proposed
rulemaking. Comments generally in support of a change are not discussed.
The comments and the Office's responses to the remaining comments follow:

Comment 1: One comment questioned whether the Office will withdraw its
reservation under PCT Article 64(3), which provides for no publication
of an international application at eighteen months if only the United
States is designated. The comment also questioned whether the Office
will revise its declaration under PCT Article 64(4)(c) in view of the
amendment to 35 U.S.C. 102(e).

Response: The Office's reservation under PCT Article 64(3) and
declaration under PCT Article 64(4)(c) are not germane to the proposed
changes to the rules of practice to implement the eighteen-month
publication provisions of the American Inventors Protection Act of 1999.
The Office will make the appropriate revisions to its reservation under
PCT Article 64(3) and declaration under PCT Article 64(4)(c) in due
course.

Comment 2: One comment questioned whether a published English language
international application designating the United States is considered a
published application under    1.9(b).

Response: An English language international application designating the
United States and published under PCT Article 21(2) is not an
application for patent which has been published under 35 U.S.C. 122(b).
Thus, a published English language international application designating
the United States is not considered a published application for purposes
of    1.9(b).

Comment 3: One comment suggested that the Office should not provide
copies of the file wrapper and contents of published applications
because 35 U.S.C. 122(b) allows for publishing an application, but not
disclosing the entire content of an application file.

Response: 35 U.S.C. 122(b) provides that "[n]o information concerning
published patent applications shall be made available to the public
except as the Director determines," and that "[n]otwithstanding any
other provision of law, a determination by the Director to release or
not to release information concerning a published patent application
shall be final and nonreviewable." See 35 U.S.C. 122(b)(1)(B) and (C).
Therefore, the Office has the authority to disclose, or refuse to
disclose, information contained in the file wrapper contents of a
published application as the Office deems appropriate.

Comment 4: Several comments suggested that the Office should not provide
copies of the file wrapper and contents of pending applications at all
or until such time as the Office can produce such a copy from an
electronic copy (rather than the physical application file). The
comments argue that removing the application file wrapper for copying
will result in disruption of the examination process and the loss or
corruption of a number of application files.

Response: The Office is cognizant of the fact that providing copies of
the file wrapper and contents of a pending published application to any
member of the public on request (and payment of a fee) has the potential
to disrupt the examination process or result in corruption of the
application file. If fulfilling copy orders for the file wrapper and
contents of pending published applications proves to be unmanageable,
the Office will revise    1.14 to require a member of the public
requesting a copy of the file wrapper and contents of a pending
published application to show cause to obtain such a copy.

Comment 5: One comment suggested that    1.14(b)(2) should be limited to
those international applications that designate the United States.

Response: The suggested revision has not been adopted. For some time,
the Office has revealed status information for any U.S. application
identified in any published patent document, regardless of whether the
document is a foreign patent (e.g., a Japanese patent or a German
patent) or an international application. The only change intended by
1.14(b)(2) is to make the meaning of "published patent document" more
clear by adding the parenthetical expression "e.g., a U.S. patent, a
U.S. patent application publication, or an international application
publication."

Comment 6: One comment contained a number of suggestions and questions
on    1.14(i): (1) PCT Article 38 does not give the Office the authority
to provide access to the examination and search files of a PCT
application as provided in    1.14(i)(1); (2) how the public would know
that an English translation has been filed (   1.14(i)(2)); (3) whether
  1.14(i)(3) requires that the applicant have entered the national stage
under 35 U.S.C. 371 (and what file would be available if no United
States file wrapper has been prepared); and (4)    1.14(i)(5) appears to
be in conflict with    1.14(i)(1)(iii).

Response: Article 38 prohibits direct access to the examination file of
an international application by a third party. Section 1.14(i)(1)
concerns the situation in which the United States acted as the
International Preliminary Examining Authority (IPEA), the United States
was elected, and the International Preliminary Examination Report (IPER)
has issued. PCT Rule 94 provides authority for the Office to provide
copies in these situations. PCT Rule 94.2 provides that after issuance
of the IPER, the IPEA shall provide copies of the examination file (or
any part thereof) to the elected offices upon request, and Rule 94.3
allows the elected offices to provide access to any document in its
files. Therefore, upon receipt of a request under    1.14(i)(1) by a
third party for a copy of an examination file in an international
application that satisfies the requirements of    1.14(i)(1)(iii), the
United States Elected Office will request that the United States IPEA
make a copy of its examination file, and the United States Elected
Office will then provide a copy of such file to the requesting party.

The Office will not provide general notification to the public of the
filing of translations under 35 U.S.C. 154. Under 35 U.S.C. 154, it is
the responsibility of the applicant to notify any possible infringers
for the purpose of obtaining provisional rights.

Section 1.14(i)(3) does not require that the applicant have entered the
national stage under 35 U.S.C. 371. Section 1.14(i)(3) concerns access
to international application home and search files (access to the
examination files being prohibited by    1.14(i)(5)).

Sections 1.14(i)(1)(iii) and 1.14(i)(5) are not in conflict. Section
1.14(i)(1)(iii) concerns the situations in which the United States acted
as the International Preliminary Examining Authority (IPEA), the United
States was elected, and the International Preliminary Examination Report
(IPER) has issued (as discussed above). Section    1.14(i)(5) concerns
direct access to the examination files which is prohibited by PCT
Article 38.

Comment 7: One comment suggested that the phrase "may be provided" in
1.14(c)(1), (c)(2), and (e) should be changed to "will be provided" for
consistency with    1.13.Another comment suggested that    1.14(c)(1)
and (c)(2) be clarified as to what (the application-as-filed or the
entire contents of the file wrapper) may be supplied, and whether the
phrase "may be provided" is intended to mean that supplying such is
optional or discretionary on the part of the Office.

Response: The suggestion has not been adopted. The phrase "may be" is
used throughout      1.11, 1.12, and 1.14 and is retained in    1.14 for
consistency and because "may be" is the appropriate terminology. For
example,    1.14(c)(2) provides that a copy of the specification,
drawings, and all papers related to a published patent application may
be provided if a written request with the appropriate fee are filed. The
requested copy will normally be provided, but if the file is not
available because it is being reviewed by a patent examiner or is at the
publishing contractor for printing a patent, the requested copy may be
only provided at a delayed date. Furthermore, in the rare event that the
file is lost (and a replacement copy cannot be obtained), the requested
copy cannot be made and will not be provided.

Comment 8: Several comments suggested that the surcharge for the
unintentionally delayed submission of a priority claim was excessive.
One comment suggested that this surcharge be a nominal ($5) charge or in
line with the publication fee ($300).

Response: If a significant number of unintentionally delayed claims
under 35 U.S.C. 119, 120, 121, or 365(a) or (c) are presented, the
Office will have difficulty scheduling applications for publication.
Thus, the surcharge amount must be sufficient to provide an incentive
for applicant to exercise care to ensure that any desired claim under 35
U.S.C. 119, 120, 121, or 365(a) or (c) is timely presented. The proposed
surcharge amount tracks the fee amount for a petition to revive an
unintentionally abandoned application (35 U.S.C. 41(a)(7)), and this fee
amount is considered an appropriate surcharge for a petition to accept
an unintentionally delayed claim under 35 U.S.C. 119, 120, 121, or
365(a) or (c). Since the fiscal year 2001 fee amount for a petition to
revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)) is
$1,240 (   1.17(m)), this fee amount ($1,240) is considered an
appropriate surcharge for a petition to accept an unintentionally
delayed claim under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (
1.17(t)).

Comment 9: Several comments suggested that the $300 publication fee was
excessive.One comment argued that a publication fee should not be
imposed on applicants who do not want publication but do not meet the
requirements to request nonpublication under    1.213. Several comments
suggested that the publication fee (cost) be included in the other
application (filing or issue) fees. One comment suggested that the
publication fee be reduced by fifty percent for small entities. Another
comment suggested that    4506 of the American Inventors Protection Act
of 1999 did not authorize the Office to charge a publication fee in
those situations in which an application is issued as a patent and
subsequently published as a patent application publication.

Response: Section 4506 of the American Inventors Protection Act of 1999
requires the Office to "recover the cost of early publication required
by the amendment [to 35 U.S.C. 122] by charging a separate publication
fee." Section    4506 of the American Inventors Protection Act of 1999
does not provide for the Office to: (1) not charge the publication fee
to those applicants who would prefer not to have their applications
published under 35 U.S.C. 122(b); (2) build the cost of publication into
other application (filing or issue) fees; or (3) apply the small entity
discount (which otherwise applies only to fees under 35 U.S.C. 41(a) or
(b)) to the publication fee (cf. 35 U.S.C. 132(b)). Finally, even when
an application is issued as a patent and subsequently published as a
patent application publication (because it issues too late in the
publication process to stop publication), the cost of such a publication
is part of the cost of early publication required by 35 U.S.C. 122(b),
and    4506 of the American Inventors Protection Act of 1999 directs the
Office to also recover that cost by charging a separate publication fee.

Comment 10: A comment supporting the changes to      1.52(d) and
1.78(a)(5) concerning the translation requirement for a non-English
language provisional application suggested that the šxnOffice clarify
whether the translation of the provisional application is to be filed in
the provisional application or in any nonprovisional application
claiming the benefit of the provisional application.

Response: Section 1.78(a)(5) provides that if a provisional application
is filed in a language other than English, any nonprovisional
application claiming the benefit of the provisional application "must
contain . . . an English language translation of the non- English
language provisional application and a statement that the translation is
accurate."Thus,    1.78(a)(5) is clear that the English-language
translation of the provisional application must be filed in any
nonprovisional application claiming the benefit of the provisional
application.

Comment 11: One comment questioned whether an applicant can withdraw a
priority claim to change the date on which the application will be
published, noting that withdrawal of priority claims is provided for in
PCT Rule 90bis.3.

Response: The Office will recalculate the publication date in response
to any change (withdrawal or addition) in priority claims. If this
recalculation occurs earlier than nine weeks prior to the previously
calculated publication date, the Office will reschedule the application
for publication based upon the recalculated publication date. If this
recalculation occurs later than nine weeks prior to the previously
calculated publication date, the Office will not reschedule the
application for publication based upon the recalculated publication date.

Comment 12: One comment requested clarification of the meaning of the
term "original" in    1.55.

Response: An "original" application is any application other than a
reissue application, which includes continuing applications and
applications claiming the benefit of a foreign- filed application. See
Guidelines Concerning the Implementation of Changes to 35 U.S.C. 102(g)
and 103 and the Interpretation of the Term "Original Application" in the
American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. Office
54, 56 (Apr. 11, 2000).

Comment 13: One comment suggested that the time periods set forth in
 1.55 and 1.78 should not apply to an application in which a
nonpublication request under    1.213 is filed.

Response: A nonpublication request may be rescinded at any time. See 35
U.S.C. 122(b)(2)(B)(ii) and    1.213(b). Thus, the Office must treat an
application in which a nonpublication request under    1.213 is filed
the same as other applications for purposes of priority claims as well
as review of the patent application drawing and paper (specification)
during pre-examination processing of the application.

Comment 14: One comment suggested that the time periods set forth in
 1.55 and 1.78 unfairly limit an applicant's ability to delay presenting
priority claims until the claim is necessary to avoid the prior art.

Response: An applicant's desire to delay presenting priority claims
until the claim is necessary to avoid the prior art is subordinate to
the need for the timely presentation of priority claims for publication
promptly after eighteen months from the earliest filing date for which a
benefit is claimed. The Office previously indicated that eighteen-month
publication (if adopted) would require a drastic change in the practice
of the presentation of priority claims filed. See General Agreement on
Tariffs & Trade/North American Free Trade Agreement Student's Handbook
at 6 (question 3), U.S. Patent and Trademark Office (1995).

Comment 15: One comment suggested that the time periods set forth in
 1.55 and 1.78 should not apply to the addition of priority claims in
the situation in which the application is published within six months of
its actual filing date, since the public has not been harmed by the
untimely priority claim.

Response: The Office will not be able to include such untimely priority
claims on the patent application publication (and the absence of a
priority claim is not considered a "material mistake" warranting
republication of the patent application publication under    1.221(b)).
Thus, the public will be harmed by such an untimely presentation of a
priority claim because the patent application publication will not
contain the priority claim.

Comment 16: One comment suggested that if priority claims are not
required until the later of four months from the actual filing date or
sixteen months from the earliest claimed priority date, a fourteen-week
publication cycle would be too long since the public could not rely upon
an application being published until twenty months from its earliest
claimed priority date.

Response: The Office plans to publish applications on the first Thursday
after the date that is eighteen months after the filing date of the
application (or if the application claims the benefit of an earlier
filing date, the first Thursday after the date that is eighteen months
after the earliest filing d