Interim Waiver of Parts of 37 CFR 1.84 and 1.165, and
                  Delay in the Enforcement of the Change in
                      37 CFR 1.84(e) to No Longer Permit
                           Mounting of Photographs

   Photographs may be included in a patent application where
photographs are the only practical medium for illustrating the claimed
invention. Photographs are especially necessary in plant patent

   Effective November 29, 2000, 37 CFR 1.84(a)(2)(iii) and
1.165(b) were amended to require a black and white photocopy of any
color drawing or photograph to permit the Office to make a black and
white duplicate of the drawing or photograph for inclusion in any
patent application publication or patent. Creation of a black and white
copy is no longer considered necessary.

   37 CFR 1.84(e) was also amended to require that photographs be
developed on paper meeting the sheet size and margin requirements of
the rule, thereby precluding mounting of photographs. This change was
made because poorly mounted photographs frequently cause the
photographs to separate from their mounting, and become lost. Many
patent applicants were caught unprepared for this change, however, and
have continued to file patent applications with mounted photographs. In
order to permit these applications to be processed without requiring
these applicants to obtain costly unmounted replacements and to allow
applicants more time to explore alternative options (e.g., use of
digital cameras or development options resulting in a digital image),
the enforcement of this rule change will be delayed until October 1,

   Lastly, 37 CFR 1.84(e) requires that drawings be made on
non-shiny paper. By requiring drawings (including photographs) for
plant patent applications to comply with 37 CFR 1.84, 37 CFR 1.165
suggests that plant patent photographs must not be shiny. Color
photographs, however, generally have better color when produced with a
shiny or gloss finish rather than a matte finish. As a result, the
Office will not object to a standard photograph appearance, including a
glossy or shiny finish.

   In summary, the USPTO has sua sponte waived 37 CFR
1.84(a)(2)(iii) and 1.165(b) and is no longer requiring a black and
white photocopy of any color drawing or photograph. In addition,
mounted photographs will continue to be accepted until October 1, 2001.
Lastly, 37 CFR 1.84(e) is also waived to the extent that no objections
will be made to a photograph with a glossy or shiny finish. Any
applicant who has received a requirement for: (1) a black and white
photocopy of a color drawing or photograph, (2) a non-mounted
photograph, or (3) a photograph without a shiny finish, may file a
reply which indicates that such a requirement has been lifted together
with a reference to this notice, or can supply the requested item(s).

   Any questions or comments about this interim waiver of 37 CFR
1.84 and 1.165 as described above, and the delay in the enforcement of
37 CFR 1.84(e) to October 1, 2001, to no longer permit mounted
photographs should be directed to Karin Tyson, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy. Ms. Tyson can be reached by
telephone at (703) 306-3159, or by e-mail at

April 27, 2001                                           NICHOLAS P. GODICI
                                     Acting Under Secretary of Commerce for
                           Intellectual Property and Acting Director of the
                                  United States Patent and Trademark Office