United States Patent and Trademark Office OG Notices: 07 October 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 5
[Docket No.: 2003-P-020]
RIN 0651-AB64
Changes To Support Implementation of the
United States Patent and Trademark Office
21st Century Strategic Plan
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) has
established a 21st Century Strategic Plan to transform the Office into
a quality-focused, highly productive, responsive organization
supporting a market-driven intellectual property system. The Office is
proposing to revise the rules of practice to support the implementation
of the 21st Century Strategic Plan, which involves improving the patent
application and examination process by promoting quality enhancement,
reducing patent pendency, and using information technology to simplify
the patent application process. The more notable changes being proposed
in this document involve permitting electronic signatures on a number
of submissions, streamlining the requirements for incorporation by
reference of prior-filed applications, and clarifying the
qualifications for claiming small entity status for purposes of paying
reduced patent fees. These changes to the patent application and
examination process are necessary for the Office to be able to process
the long-term trend of increasing numbers of applications within a
reasonable time frame.
COMMENT DEADLINE DATE: To be ensured of consideration, written comments
must be received on or before November 12, 2003. No public hearing will
be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to ab64.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450 or by facsimile to (703) 305-1013, marked to the attention of
Hiram Bernstein. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet.
The comments will be available for public inspection at the Office
of Patent Legal Administration, located at Room 3-C23 of Crystal Plaza
4, 2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leaving
FR.html&log=linklog&to=http://www.uspto.gov). Since comments will be
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, Senior Legal
Advisor, by telephone at (703) 305-8713 or Robert J. Spar, Director,
Office of Patent Legal Administration (OPLA), at (703) 308-5107, or by
facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein,
or by mail addressed to: Mail Stop Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office has conducted a "top to bottom"
review of the patent application and examination process (among other
processes) as part of the 21st Century Strategic Plan. The 21st Century
Strategic Plan is available on the Office's Internet Web site
(http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=www.uspto.gov). While many of the changes to the patent
and examination process necessary to support the 21st Century Strategic
Plan require enabling legislation (and implementing rule changes), the
Office has determined that a number of initiatives can be implemented
under the Office's current rule making and patent examination authority
set forth in 35 U.S.C. 2(b)(2), 131, and 132. This document proposes
changes to the rules of practice in title 37 of the Code of Federal
Regulations (CFR) to improve the patent application and examination
process by promoting quality enhancement, reducing patent pendency, and
using information technology to simplify the patent application
process.
This document specifically proposes changes to the following
sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.14, 1.17, 1.19, 1.27,
1.47, 1.52, 1.53, 1.55, 1.58, 1.59, 1.69, 1.76, 1.78, 1.83, 1.84, 1.91,
1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.116, 1.131, 1.136,
1.137, 1.165, 1.173, 1.175, 1.178, 1.182, 1.183, 1.213, 1.215, 1.291,
1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.502, 1.530, 1.550, 1.570,
1.644, 1.666, 1.704, 1.705, 1.741, 1.902, 1.953, 1.956, 1.957, 1.958,
1.979, 1.997, 5.12, 5.15, and 5.25. Additionally, this document
proposes to amend title 37 CFR by adding new Sec. 1.57 and removing
Sec. 1.179.
The following members of the Office of Patent Legal Administration
may be contacted directly for the matters indicated:
Joni Chang ((703) 308-3858): Secs. 1.8, 1.10, 1.98, 1.111, and
1.311
Jeanne Clark ((703) 306-5603): Sec. 1.98
James Engel ((703) 308-5106): Secs. 1.14, 1.17, 1.53, 1.59, 1.103,
1.131, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741,
5.12, 5.15, and 5.25
Karin Ferriter ((703) 306-3159): Secs. 1.6, 1.47, 1.52 (other than
(e)(1)(iii) and (e)(3)), 1.58, 1.83, 1.84, and 1.165
Anton Fetting ((703) 305-8449): Secs. 1.17, 1.53, 1.59, 1.103,
1.105, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741,
5.12, 5.15, and 5.25
Kery Fries ((703) 308-0687): Secs. 1.76, 1.704, and 1.705
Hiram Bernstein ((703) 305-8713): Secs. 1.91 and 1.94
Eugenia Jones ((703) 306-5586): Secs. 1.8, 1.10, 1.27, 1.55,
1.57(a), and 1.78
Michael Lewis ((703)306-5585): Secs. 1.4, 1.19, 1.52(e)(1)(iii)
and (e)(3), 1.57, and 1.58(b)
Joe Narcavage ((703) 305-1795): Secs. 1.173, 1.175, 1.178, 1.179,
1.291, and 1.324
Mark Polutta ((703) 308-8122): Secs. 1.213, and 1.215
Kenneth Schor ((703) 308-6710): Secs. 1.98, 1.116, 1.136, 1.137,
1.291, 1.502, 1.550, 1.570, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979,
and 1.997
Fred Silverberg ((703) 305-8986): Sec. 1.115
The Office will post a copy of this notice on its Internet Web site
(http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=www.uspto.gov). Additionally, individuals or
organizations that need a copy for the purpose of providing comments,
may send a request by phone or e-mail to Elizabeth Polley at
((703) 308-6202, or elizabeth.polley@uspto.gov) or Terry Dey at
((703) 308-1201 or terry.dey@uspto.gov) to receive an e-mail copy of
the notice. When making a request for an e-mail copy, it is requested
that persons please specify whether they wish to receive the document
in MS-Word, WordPerfect, or HTML format.
Discussion of Specific Rules
Section 1.4: Section 1.4(d) is proposed to be amended to provide
for filing correspondence with electronic signatures on electronically
created correspondence documents that are filed by facsimile
transmission, or hand-carried or mailed to the Office, for entry in a
patent application, patent file, or
reexamination proceeding. The electronic signature must be the signer's
actual name or have the actual name additionally presented in printed
or typed form. The electronic signature may be any combination of
numbers and/or letters and may include a title. Appropriate punctuation
and spaces may be used with the letters and numbers. The signer must
present his or her family name entirely in capital letters in the
signature if the actual name is used. Where the actual name is not used
in the signature, the family name must be presented entirely in capital
letters in the printed or typed form of the name. When the actual name
of the signer is being provided as a printed or typed name, it must be
clearly identified as the actual name of the signer. A practitioner
signing pursuant to Secs. 1.33(b)(1) or 1.33(b)(2) must place the
signer's registration number, either within or after the electronic
signature. A number character () may only be used in a
signature if it is prior to a practitioner's registration number that
is part of the electronic signature. New paragraph (h) sets forth the
procedure for resolving questions as to the veracity of the
(electronic) signature, such as when there are variations in
signatures, or where the signature and the printed or typed name does
not clearly identify the person signing the document, or where more
than one person has used the same signature.
The Office considered proposing a requirement that the order of the
name in a signature be identified with the language such as follows:
given name, middle name or initial, family name if the name is supplied
in that order. Capitalizing only the family name without identifying
the order is considered a simpler and less burdensome procedure for
signing a document. Comments in favor of or opposed to this alternative
are invited.
Section 1.4(d)(1)(iv)(A) sets forth the specific requirements of an
electronic signature (e-signature), and when the Office will accept an
electronic signature in patent-related documents. The phrase
"electronically signed" documents includes documents that are created
and signed in a word processor program and electronically fillable
forms, such as declarations generated using the program Adobe Acrobat
that have pre-printed standard language with an ability to add specific
information such as a signature (e.g., similar to those provided on the
Office's Internet Web site that can be completed and signed
electronically). The proposed rule change is intended to facilitate
movement of documents between practitioners, applicants, and the
Office. The proposed rule change does not permit the filing of Official
correspondence by electronic mail (e.g., e-mail) messages over the
Internet to the Office, but does permit submissions transmitted by
facsimile. Pilot programs, such as the program at the Board of Patent
Appeals and Interferences (BPAI) are not affected by this rule change
(see standing orders at the URL: http://frwebgate.access.gpo.gov/cgi-
bin/leaving.cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.
gov/web/offices/dcom/bpai/standing2003May.pdf). Electronically created
documents that contain an electronic signature e-mailed from applicants
to a practitioner, however, may be transmitted to the Office from a
practitioner by facsimile transfer, or as a paper document. While it is
not now permitted, the Office is considering expanding the means by
which electronically created documents can be transmitted to the
Office, such as by an e-mail attachment using the proposed signature
requirements.
Paragraph 1.4(d)(1)(iv)(A) recites that electronic signatures may
be utilized when the electronically signed document is: (1) Facsimile
transmitted from a computer in its electronic form; (2) printed and
then facsimile transmitted; or (3) printed on paper and hand or mail
delivered to the Office. This paragraph also permits electronic
signatures for documents submitted via the Office's Electronic Filing
System (EFS). The EFS is not an e-mail system. This paragraph does not
authorize delivery of documents to the Office by e-mail over the
Internet.
Practitioners must take care when submitting a document intended to
be unsigned by ensuring that there are no markings in a signature space
or this could be determined to be indicia of a signature (either as a
permanent ink signature or electronic signature).
The documents submitted under this provision may become records
submitted in interference and other legal proceedings where
authentication is required. Applicants and practitioners must recognize
the differences in electronically created documents and paper documents
for authentication purposes and take appropriate steps to be able to
authenticate documents, if required. An issue with electronically
created documents is that they may have embedded comments and track
changes in the electronic document that are not always visible when a
document is rendered using a different computer system or a different
software version, or when printed to paper. Variations in how much of
the embedded comments and track changes are rendered on a given
computer may cause the document signer to see different document
content than the contents of the document that is submitted to the
Office. Additionally, establishing a chain of custody may involve
proving that a document viewed by the Office is, in fact, the same
document executed by the signer.
The Office can only authenticate a document to the extent of what
is contained in Office records. Office records will not contain any of
the electronic communications between the applicant or practitioner
filing a document and a third party. For example, the Office cannot
authenticate from its records a document (e.g., a Sec. 1.132
affidavit) prepared by a third party and including a third party
signature that was submitted to an applicant or practitioner
electronically for resubmission to the Office. Under these
circumstances, the applicant or practitioner would need to be concerned
about both establishing a chain of custody to address alteration and
any attempted repudiation by a third party of his or her electronic
signature. In establishing the authenticity of a document, the
applicant or practitioner would be attempting to show that the date of
execution of the document is earlier than the date of submission to the
Office, and the document was unaltered from that earlier date until its
submission to the Office. A chain of custody would need to be shown and
proven. Therefore, electronically created documents may require
additional procedures over what may be required for a document signed
with an ink signature to address chain of custody and alteration
issues. In addition, there must be procedures in place to address the
issue that the particular document preparation software may have
undergone frequent changes. Different versions of the same software
program may store and display the document, as well as comments and
changes to the document, differently, which gives rise to issues
concerning alteration of the document. Accordingly, applicants and
practitioners must be cognizant of these issues of changed document
appearance and content and take appropriate steps to ensure that their
records, if in electronic form, can be rendered and authenticated at
some later time as being the unaltered electronically signed original
document.
Paragraph 1.4(d)(1)(iv)(A) defines who can insert an electronic
signature into an electronically created document. The proposed rule
change requires that the signer "personally insert" his or her
electronic signature by use of numbers and/or letters, with punctuation
and spaces. To make the identity of the signer self-evident, the same
electronic signature should be utilized each time, with variations of the
signature being avoided. The signer should review any indicia of
identity of the signer in the body of the document including any
printed or typed name and registration number, to ensure that the
indicia of identity is consistent with how the document is signed.
Knowingly adopting an electronic signature of another is not permitted.
The "personally insert" requirement is met by the signer directly
typing his or her electronic signature on a keyboard. This requirement
is not met when a first person types the electronic signature of a
second person, upon receiving only a general instruction from the
second person to insert the second person's signature. A person
physically unable to use a keyboard, however, may, while simultaneously
reviewing the document for signature, direct another person to press
the appropriate keys to form the signature.
Paragraph 1.4(d)(1)(iv)(A) defines the content of an electronic
signature. The Office proposes to adopt a standard of numbers and/or
letters, with punctuation and spaces as the electronic signature, which
must be placed between two forward slashes to be consistent with the
international standard and to build upon the experience gained with
this standard in the Trademarks section of the office. See PCT Annex F,
section 3.3.2. The electronic signature between two forward slashes
cannot contain any additional forward slashes. This standard can be met
with any standard personal computer (PC) and keyboard. The Office also
recognizes that many practitioners sign their name with the number
character ( ) as part of his or her registration number. The
use of the number character ( ) as part of the registration
number would be permitted but not otherwise, such as utilization of a
customer number as the signature. Other non-text characters would not
be permitted, as a typed symbol in one font may vary when viewed in a
different font (e.g., the code for the euro currency symbol in one font
produces a different currency symbol when viewed in another font).
The Office recognizes that periods, commas, and hyphens are often
found in names and will therefore be found in many signatures.
Appropriate punctuation and spaces may be used with numbers and
letters, not in place of numbers and letters in a signature. Hence, the
use of appropriate punctuation and spaces with letters and numbers
would be permitted (e.g., periods, commas and hyphens). A signature of
only punctuation marks ordinarily does not identify any person, and
would be improper. Also, punctuation marks, such as question marks
(e.g., /???/), are often utilized to represent the intent not to sign a
document and would be improper.
To avoid processing delays, the Office needs to readily determine
whether a document has been signed. The filing of a document does not
imply that the document has been signed. The Office does not want to
investigate as to whether a mark (e.g., extraneous marks or a non-
permanent ink presentation of a name) comprises a signature. Therefore,
the Office will only interpret the data presented between forward
slashes as an electronic signature. Hence, documents intended to be
unsigned should be very clear that any data presented between forward
slashes is not intended to be a signature.
Similarly, presentation of just numbers and letters in an
electronically produced document without forward slashes will be
treated under this part as an unsigned document. Script fonts are not
permitted for any portion of a document, which would include a name
typed in a signature area. See Sec. 1.52(b)(2)(ii). Accordingly,
presentation of a typed name without the required slashes even in a
script font does not present the proper indicia manifesting an intent
to sign and will not be accepted as an electronic signature.
Paragraph (d)(1)(iv)(A) requires the signer's actual name be used
except as provided in paragraph (d)(1)(iv)(B), where an electronic
signature is used that differs from the actual name of the signer.
Where an electronic signature is not the signer's actual name, the
actual name must be printed or typed and clearly indicated as the
signer's actual name. The use of lower case and capital letters is
permitted except that the family name must be entirely capitalized with
no other names entirely capitalized. A middle initial if capitalized
and presented with a period to identify it as an abbreviation is
permitted. A person with an electronic signature that includes both a
single character family name and at least one other single character
name must provide an electronic signature with all single character
names other than the family name in non-capital letters. Titles may be
used with the signer's name and can be placed within or after the slash
marks. When the last name is given first it will be presumed to be
followed by a first name before any middle name. Similarly, when a last
name is given last it will be presumed that the first name will precede
a middle name. Where two or more multiple character names are
capitalized, the Office will need to inquire as to which is the last
name.
To accommodate as many varieties of names as possible a signer may
select any combination of letters and/or numbers for his or her
signature under Sec. 1.4(d)(1)(iv)(A). A signature that is the actual
name of the signer need not be accompanied by a typed or printed name.
Accordingly, the absence of a printed or typed name clearly identified
as the actual name of the signer is a representation that the signature
is the signer's actual name.
The Office considered accepting an actual name as a signature
without requiring that the order of names be identified. A signature of
an actual name has been found by the Office insufficient to identify
the signer. For example, some people routinely sign with his or her
last (or family) name first. Similarly, for people with first and last
names that are commonly interchanged as first and last names, it may
not be self-evident which is the given name and which is the family
name. A printed or typed copy of the signer's name immediately below
the signature often will have the same problem of which is the family
name and which is the given name.
The Office considered proposing a standard signature format such as
family name first, followed by given name. A standard signature format
was rejected because it would not aid the Office in identifying the
signer of a document, particularly where the format is not adhered to
by the signer. The Office is receiving applications and correspondence
for other patent-related matters in which it cannot be determined who
signed the document and/or what the actual name of the signer is
because either the order of the family name and given name are unclear,
or more than one signer has the same name. Adopting a standard
signature format would not make it any easier for the Office to detect
in many cases when the order of family name, given name, and middle
name are in a non-standard order.
In the following discussion, family name is intended to be
synonymous with the terms "surname" or "last name" in the customary
format for European-American names. Similarly, given name is intended
to be synonymous with the term "first name" in the customary format
for European-American names. Format and content of a signature are both
critical because people from different countries throughout the world
have different customs for signing a name, e.g., reversing the order of
family (i.e., last) name and given (i.e., first) name. Current rules and
procedures for most communications do not require applicants and
practitioners to utilize any format for the signature. A person may
currently use a signature with his or her family name as the first name
or the last name of the signature. Further, it is common for a person to
abbreviate his or her given name (e.g., William Jefferson Louis, as
W. Jefferson Louis), which, if signed with the last name first, would
appear as a middle initial (i.e., Louis W. Jefferson). The Office is
receiving communications from people all over the world with different
signature formats and the Office cannot readily identify the family name
and given name of the signer.
This lack of consistency in signing order is exacerbated in many
patent applications because a person's name may appear in several
places in the record of an application in a different format (e.g.,
first name and last name reversed) in each occurrence. In addition, the
Office has found at least two applicants and/or practitioners in the
same firm with the given and family names in reverse order (e.g., first
practitioner is Mitchell Louis, and the second practitioner is Louis
Mitchell). Signatures have been found with the printed or typed name
under the signature appearing as the reverse of the signature (e.g.,
/Louis Mitchell/ with Mitchell Louis typed immediately underneath). In
view of the differing customs for the order of signing names, the
Office is frequently unable to ascertain the identity of the signer
(e.g., in the example given, is Louis Mitchell or Mitchell Louis the
signer). The identity of the signer is not self-evident in applications
with applicants and/or practitioners that have reversed versions of the
same names, and when the order of names in a signature is the reverse
order in the adjacent printed/typed version of the signer's name. This
often results in confusion in the Office, and later in the public when
reviewing Office records, as to the actual name and identity of the
signer of a document or a patentee when an application is issued.
To avoid confusion as to whether a registered practitioner is
relying on his or her registration for signing a document, Sec.
1.4(d)(1)(iv)(A) recites that a practitioner signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2) of this part must place his or her
complete name, as registered, and his or her registration number, with
or immediately adjacent his or her electronic signature. A number
character () may only be used in a signature if it is prior to
a practitioner's registration number that is part of the electronic
signature. When a practitioner is signing as an assignee, or as an
applicant (inventor) pursuant to Secs. 1.33(b)(3) or 1.33(b)(4), a
registration number is not required but may be supplied.
The requirement that an electronic signature for practitioners be
accompanied by an identification of the family name, and registration
number, is consistent with Article 9(1) of the Patent Law Treaty (June
1, 2000) (PLT).
Paragraph 1.4(d)(1)(iv)(B) recites the requirements for when a
signer uses an electronic signature that is not the person's actual
name. The Office expects that where persons do not sign with their
actual name it is because they are using an e-signature that is the
normal e-signature for that person and not something that is employed
to obfuscate or misidentify the signer. Where the e-signature is not
the actual name because the signer is using the signer's normal
e-signature, the actual name must be presented in printed or typed form
with the last name in capitals. The printed or typed name must be
clearly identified as the actual name. To accommodate as many
signatures as possible, a signer may select any combination of letters
and/or numbers for his or her signature. The flexibility in selecting
combinations of letters and/or numbers for signatures means that the
identity of the signer may not be clear from the signature if it is not
an actual name. For example, a collection of letters/numbers when
presented for the first time without a full printed or typed name that
does not appear to be a person's name (e.g., /123456XYZ/) does not
identify any person as the signer. This is so even where the signer has
submitted a previous document with such signature and an additional
identification of the actual name of the signer. Similarly, where the
signature, because it is not the signer's actual name, appears to
represent an identifiable person with a name different in some respects
from those persons authorized to sign and who are of record in an
application, the name of the signer in the signature alone would not be
sufficient to identify the signer.
Paragraph 1.4(d)(1)(iv)(B) requires that where the signer's usual
electronic signature is not the signer's actual name, the signer must
provide his or her actual name by printing or typing the actual name
and clearly identifying it as such. The signer must further identify in
the printed or typed actual name the signer's family name by entirely
capitalizing only the family name. These requirements are consistent
with PLT Rule 9. Registered practitioners signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2) of this part, or where the signer
otherwise (e.g., to distinguish two practitioners with the same name)
includes a registration number when it is not required by rule, should
provide the registration number after the signature, or the printed or
typed name immediately below the signature.
A typed or printed name in the body of the text is not usually
self-identifying as to whether it is the signer's actual name, or even
the name of some other person. A clear indication that it is the
signer's actual name is necessary to distinguish it from the other
possibilities where the signature is not the actual name and a printed
or typed name has not been supplied with the signature. Similarly, the
order of the names, family name, given name, middle name or initial,
unless supplied is not self-evident from the printed or typed name
alone so the order must be indicated by entirely capitalizing only the
family name.
The Office strongly suggests that each signer use a signature
(electronic or otherwise) that has his or her full name including full
middle name. The Office recommends that registered practitioners use
their full name under which they are registered and always include
their registration number with the signature or with the hand-written
or typed name that accompanies a signature. Examples of proper and
improper signatures will be posted on the Office's Internet Web site.
Paragraph 1.4(h) proposes requiring a ratification or confirmation
of a signature, such as where the Office has reasonable doubt as to the
authenticity (veracity) of the signature. The Office may additionally
inquire in regard to a signature simply to identify the signer and
clarify the record where the identity of the signer is unclear. The
inquiries concerning the authenticity (veracity) of a signature are
consistent with PLT Article 8(4)(c) and Rules 7(4), 15(4), 16(6),
17(6), and 18(4). An example of when ratification or confirmation of a
signature may be required is when there are variations in a signature
or whenever a name in an e-signature is not exactly the same as the
name indicated as an inventor, or a practitioner of record. Hence,
whatever signature is adopted by a signer, that signature should be
consistently used on all documents. Also addressed is the treatment of
variations in a signature when a printed or typed name accompanies the
e-signature but the identity of the signer is unclear. In such cases,
the Office may require ratification or confirmation of a signature.
Ratification or confirmation alone does
not provide a means for changing the name of a signer. For example,
when an inventor changes her/his name and the inventor desires to
change her/his name in the application, such change must be accompanied
by a petition under Sec. 1.182. See Manual of Patent Examining
Procedure Sec. 605.04(c) (8th. ed. 2001) (Rev. 1, Feb. 2003) (MPEP).
The Office is proposing to treat failure to follow the format and
content of a standard signature as an unsigned document. Treating the
documents as being unsigned could have varying results dependent on the
nature of the document. For example, in new applications, treating an
oath or declaration as an unsigned oath or declaration could result in
the imposition of a surcharge. See Sec. 1.53(f)(1). Other
correspondence could be treated under the procedures for unsigned
amendment documents set forth in MPEP Secs. 714.01 and 714.01(a).
As previously indicated, the Office is requesting comments on the
alternative of requiring labeling the order of names in a signature in
place of the proposed rule requiring capitalization of the entire
family name.
Section 1.6: Section 1.6(d)(4) is proposed to be amended to provide
that black and white drawings in patent applications may be transmitted
to the Office by facsimile in order to provide more flexibility to
applicants for filing individual papers in applications that contain
drawings. Drawings are now permitted to be transmitted to the Office by
facsimile when accompanied by payment of the issue fee, and drawings
received by facsimile have been of an acceptable quality. See Payment
of the Issue Fee and Filing Related Correspondence by Facsimile, 1254
Off. Gaz. Pat. Office 91 (Jan. 15, 2002). Although the rules of
practice will now permit the submission of black and white drawings by
facsimile, photographs or drawings with detail should not be
transmitted by facsimile. Furthermore, color drawings must continue to
be hand-carried or mailed to the Office instead of being transmitted by
facsimile. In addition, the Office will publish drawings that are
received as long as they can be scanned, and will not, in general
require replacement drawings to replace drawings transmitted by
facsimile, even if the facsimile transmission process results in the
drawings being less sharp than the original drawings.
Section 1.6(e) is proposed to be removed and reserved because the
provisions of Sec. 1.6(e) are deemed more appropriately placed in
Sec. 1.10. This is because the "Express Mail" provisions of Sec.
1.10 are the only means by which correspondence can be accorded a
filing date other than the actual date of receipt in the Office. Thus,
the provisions of Sec. 1.6(e) are proposed to be transferred to Sec.
1.10 along with some changes. Proposed Sec. 1.10(g) and (h)
specifically address situations in which "Express Mail" is returned
or refused by the United States Postal Service (USPS). Proposed Sec.
1.10(i) is similar to Sec. 1.6(e) and addresses situations where there
is a designated interruption or emergency in "Express Mail" service.
Section 1.8: Section 1.8(a) is proposed to be amended to clarify
that the provisions of this section do not apply to time periods or
situations set forth in sections that have been expressly excluded from
Sec. 1.8 as well as situations enumerated in Sec. 1.8(a)(2).
Section 1.8(b) is also proposed to be amended to permit notifying
the Office of a previous mailing, or transmitting, of correspondence,
when "a reasonable amount of time has elapsed from the time of mailing
or transmitting of the correspondence."
Section 1.8(b) is also proposed to be amended to make it clear that
it is not the reexamination proceeding which is concluded under
Secs. 1.550(d) or 1.957(b), but rather the prosecution of the
reexamination. See the discussion as to the amendment of Sec. 1.550
for the rationale for this change.
It is further proposed that Sec. 1.8(b) be revised to more
appropriately set forth the Sec. 1.957(c) consequences of a failure to
respond in an inter partes reexamination.
The proposed amendment to Sec. 1.8(a) is to clarify that the list
enumerated in Sec. 1.8(a)(2) is not exhaustive. Provisions of Sec.
1.8 also do not apply to the time periods or situations set forth in
sections that have been explicitly excluded from Sec. 1.8. For
example, provisions of Sec. 1.8(a) do not apply to time periods and
situations set forth in Secs. 1.217(e) and 1.703(f) because the
exceptions are provided explicitly in Sec. 1.217(e), "[t]he
provisions of Sec. 1.8 do not apply to the time periods set forth in
this section" and Sec. 1.703(f), "[t]he date indicated on any
certificate of mailing or transmission under Sec. 1.8 shall not be
taken into account in a patent term adjustment] calculation."
Recently, many applicants had experienced substantial delays in
delivery of their correspondence by the USPS to the Office. These
applicants did not wish to wait until the application is held to be
abandoned before notifying the Office of the previous mailing, or
transmitting, of the correspondence and supplying a duplicate copy of
the correspondence and requisite statement in accordance with Sec.
1.8(b)(3).
Under the proposed amendment to Sec. 1.8(b), in the event that
correspondence is considered timely filed by being mailed or
transmitted in accordance with Sec. 1.8(a), but not received in the
Office after a reasonable amount of time has elapsed (e.g., more than
one month from the time the correspondence was mailed), the applicants
would not be required to wait until the end of the maximum extendable
period for reply set in a prior Office action (for the Office to hold
the application to be abandoned) before informing the Office of the
previous submitted correspondence and supplying a duplicate copy and
requisite statement. Thus, filing a petition to withdraw the holding of
abandonment would not be necessary in such circumstance. The proposed
amendment to Sec. 1.8(b) would provide applicants an expedited
procedure in resolving substantial delayed mail problems.
Before notifying the Office of a previously submitted
correspondence that is not received by the Office, applicants are
encouraged to check the Patent Application Information Retrieval (PAIR)
System (which can be accessed over the Office's Internet Web site at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://pair.uspto.gov) to see if the correspondence has
been entered into the application file. The PAIR system is a system which
enables applicants to access the Office's electronic records for a patent
application or patent. Private PAIR is available to applicants who have
a customer number associated with the correspondence address for an
application and who have acquired the access software (Entrust Direct
Software and a PKI certificate). Applicants may contact the Electronic
Business Center (EBC) at (703) 305-3028 for more information on PAIR.
The proposal that Sec. 1.8(b) be revised to more appropriately set
forth the Sec. 1.957(c) consequences of a failure to respond in an
inter partes reexamination is necessary to clarify that the inter
partes reexamination prosecution is neither terminated nor concluded
where the patent owner fails to timely respond to an Office action, and
claims in the proceeding remain patentable. Rather, an Office action is
issued to thereby permit the third party requester to challenge the
claims found patentable. As set forth in Sec. 1.957(c), "[i]f claims
are found patentable and the patent owner fails to file a timely and
appropriate response to any Office action in an inter partes
reexamination proceeding, further prosecution will be limited to the
claims found patentable at the time of the failure to respond, and to any
claims added thereafter which do not expand the scope of the claims which
were found patentable at that time" (emphasis added). The proposed revision
accordingly would apply the Sec. 1.8(b) remedy to an inter partes
reexamination prosecution which has been limited as to further prosecution
under Sec. 1.957(c). In addition, the amendment is intended to apply to the
Sec. 1.957(a) situation where the third party requester files an
untimely comment, notice of appeal or brief in an inter partes
reexamination, and the paper would thus be refused consideration (to
thereby limit the requester's prosecution) if not for the operation of
the Sec. 1.8(b) remedy.
Section 1.10: Section 1.10 is proposed to be amended to add
paragraphs (g), (h), and (i) to address the effects of interruptions or
emergencies in USPS "Express Mail" service. For example, Friday,
November 16, 2001, the USPS issued a memorandum temporarily and
immediately suspending "Express Mail" service to Washington DC zip
codes 202xx through 205xx. The suspension included service to the zip
code for certain correspondence mailed to the Office (20231).
Applicants frequently rely on the benefits under Sec. 1.10 to
obtain a particular filing date for a new application. The filing date
accorded to an application is often critical. For example, applicants
who do not file their applications in the United States within one year
from when their invention was first described in a printed publication
or in public use or on sale in this country are not entitled to a
patent. (See 35 U.S.C. 102(b)). Furthermore, to be able to claim the
benefit of a provisional application or to claim priority to a foreign
application, the nonprovisional application claiming benefit or
priority must be filed within one year from the filing of the
provisional application or foreign application, respectively.
Therefore, the means by which applicants may remedy the effects of an
interruption or emergency in USPS Express Mail service which has been
so designated by the Director should be specifically addressed in the
rules of practice.
The Office published a notice on October 9, 2001, that provides
guidance in the situations in which a post office refuses to accept the
deposit of mail for delivery by "Express Mail" Service and situations
in which "Express Mail" is deposited into an "Express Mail" drop
box and given an incorrect "date-in." See United States Postal
Service Interruption and Emergency, 1251 Off. Gaz. Pat. Office 55 (Oct.
9, 2001). The procedure for where the USPS refuses to accept the
deposit of mail for delivery by "Express Mail" as contained in the
notice, however, has not been incorporated into the rules of practice.
The Offices's existing framework to address postal emergencies is
detailed in Sec. 1.6(e), "Interruptions in U.S. Postal Service."
Section 1.6(e) provides that if interruptions or emergencies in the
USPS which have been so designated by the Director occur, the Office
will consider as filed on a particular date in the Office any
correspondence which is: (1) Promptly filed after the ending of the
interruption or emergency; and (2) accompanied by a statement
indicating that the correspondence would have been filed on that
particular date if it were not for the designated interruption or
emergency in the USPS.
The provisions of Sec. 1.6(e) are more appropriate in Sec. 1.10
since "Express Mail" is the only means by which correspondence can be
accorded a filing date other than the actual date of receipt in the
Office. Thus, the provisions of Sec. 1.6(e) are proposed to be
transferred to Sec. 1.10 along with some changes. Proposed Sec.
1.10(g) and (h) specifically address situations in which "Express
Mail" is returned or refused by the USPS. Proposed Sec. 1.10(i) is
similar to Sec. 1.6(e) and addresses situations where there is a
designated interruption or emergency in "Express Mail" service.
Section Sec. 1.10(g) is proposed to be added to provide that any
person who attempts to file correspondence by "Express Mail" that was
returned by the USPS may petition the Director to consider the
correspondence as filed on a particular date in the Office. The
petition must be filed promptly after the person becomes aware of the
return of the correspondence and the number of the "Express Mail"
mailing label must have been placed on the paper(s) or fee(s) that
constitute the correspondence prior to the original mailing by
"Express Mail." The petition must also include the original
correspondence or a copy of the original correspondence showing the
number of the "Express Mail" mailing label thereon and a copy of the
"Express Mail" mailing label showing the "date-in." Furthermore,
the petition must include a statement, which establishes to the
satisfaction of the Director, the original deposit of the
correspondence and that the correspondence or the copy is the original
correspondence or a true copy of the correspondence originally
deposited with the USPS on the requested filing date.
Section 1.10(h) is proposed to be added to provide that any person
who attempts to file correspondence by "Express Mail" that was not
accepted by the USPS may petition the Director to consider the
correspondence as filed on a particular date in the Office. The
petition must be filed promptly after the person becomes aware of the
refusal of the correspondence and the number of the "Express Mail"
mailing label must have been placed on the paper(s) or fee(s) that
constitute the correspondence prior to the attempted mailing by
"Express Mail." The petition must also include the original
correspondence or a copy of the original correspondence showing the
number of the "Express Mail" mailing label thereon. In addition, the
petition must include a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or the copy
is the original correspondence or a true copy of the correspondence
originally attempted to be deposited with the USPS on the requested
filing date.
Section 1.10(i) is proposed to be added to provide that any person
attempting to file correspondence by "Express Mail" who was unable to
deposit the correspondence with the USPS due to an interruption or
emergency in "Express Mail" service which has been so designated by
the Director, may petition the Director to consider such correspondence
as filed on a particular date in the Office. This material is proposed
to be transferred from Sec. 1.6. The petition must be filed in a
manner designated by the Director promptly after the person becomes
aware of the designated interruption or emergency in "Express Mail"
service. The petition must also include the original correspondence or
a copy of the original correspondence, and a statement which
establishes, to the satisfaction of the Director, that the
correspondence would have been deposited with the USPS but for the
designated interruption or emergency in "Express Mail" service, and
that the correspondence or copy of the correspondence is the original
correspondence or a true copy of the correspondence originally
attempted to be deposited with the USPS on the requested filing date.
Proposed Sec. 1.10(i) requires the Director to designate an
interruption or emergency in "Express Mail" service. It is envisioned
that in the notice designating the interruption or emergency the
Director would provide guidance on the manner in which petitions under
proposed Sec. 1.10(i) should be filed. This is similar to what
occurred when "Express Mail" was suspended in November of 2001, when
applicants were advised that if the USPS refused to accept correspondence
for delivery to the Office by "Express Mail" they should mail the
correspondence by registered or first class mail with a statement by the
person who originally attempted to deposit the correspondence with the USPS
by "Express Mail."
Section 1.14: Section 1.14(h)(1) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.17: Section 1.17 is proposed to be amended to adjust
petition fees to more accurately reflect the Office's cost of treating
petitions. The petitions whose fees are currently provided for in Sec.
1.17(h) are outside the scope of the usual processing of patent
applications provided for in 35 U.S.C. 41(a) and (b). The Office is
directed by 35 U.S.C. 41(d) to set fees for services not set under 35
U.S.C. 41(a) or (b) so as to recover the average costs of performing
the processing or service.
The Office has conducted an activity-based-accounting cost (ABC)
analysis of the Office's cost of treating the various petitions
enumerated under Sec. 1.17(h) based on current practices and staffing
costs. The Office has determined that the petition fee set forth in
Sec. 1.17(h) does not recover the Office's costs of treating petitions
for a number of the types of petitions enumerated under Sec. 1.17(h).
The Office has also determined that there is a significant difference
in the Office's costs for treating the various types of petitions
enumerated under Sec. 1.17(h). Therefore, the Office is proposing to
separate the petitions enumerated under Sec. 1.17(h) into three
groups, and to charge separate petition fees for each of these three
groups of petitions, which petition fees will more accurately reflect
the cost of treating petitions in these three groups.
The first group of petitions will be covered by a new Sec.
1.17(f), which will specify a petition fee of $400. The petitions in
this group are: (1) Petitions under Sec. 1.53(e) to accord a filing
date; (2) petitions under Sec. 1.57(a) to accord a filing date; (3)
petitions under Sec. 1.182 for decision on a question not specifically
provided for; (4) petitions under Sec. 1.183 to suspend the rules; (5)
petitions under Sec. 1.378(e) for reconsideration of decision on
petition refusing to accept delayed payment of maintenance fee in an
expired patent; (6) petitions under Sec. 1.644(e) in an interference;
(7) petitions under Sec. 1.644(f) for requesting reconsideration of a
decision on petition in an interference; (8) petitions under Sec.
1.666(b) for access to an interference settlement agreement; (9)
petitions under Sec. 1.666(c) for late filing of an interference
settlement agreement; and (10) petitions under Sec. 1.741(b) to accord
a filing date to an application under Sec. 1.740 for extension of a
patent term. Petitions in this first group require analysis of complex
and unique factual situations and evidentiary showings. Often a
petition in this group will involve an issue of first impression
requiring review and approval of a course of action by senior Office
officials.
The second group of petitions will be covered by a new Sec.
1.17(g), which will specify a petition fee of $200. The petitions in
this group are: (1) Petitions under Sec. 1.12 for access to an
assignment record; (2) petitions under Sec. 1.14 for access to an
application; (3) petitions under Sec. 1.47 for filing by other than
all the inventors or a person not the inventor; (4) petitions under
Sec. 1.59 for expungement of information; (5) petitions under Sec.
1.103(a) to suspend action in an application; (6) petitions under Sec.
1.136(b) to review requests for extension of time when the provisions
of section 1.136(a) are not available; (7) petitions under Sec.
1.138(c) to expressly abandon an application to avoid publication; (8)
petitions under Sec. 1.295 for review of refusal to publish a
statutory invention registration; (9) petitions under Sec. 1.296 to
withdraw a request for publication of a statutory invention
registration filed on or after the date the notice of intent to publish
issued; (10) petitions under Sec. 1.377 for review of decision
refusing to accept and record payment of a maintenance fee filed prior
to expiration of a patent; (11) petitions under Sec. 1.550(c) for
patent owner requests for extension of time in ex parte reexamination
proceedings; (12) petitions under Sec. 1.956 for patent owner requests
for extension of time in inter partes reexamination proceedings; (13)
petitions under Sec. 5.12 for expedited handling of a foreign filing
license; (14) petitions under Sec. 5.15 for changing the scope of a
license; and (15) petitions under Sec. 5.25 for a retroactive license.
Petitions in this second group also require analysis of factual
situations and evidentiary showings; however, the factual situations
and evidentiary showings for this second group of petitions often fall
into recognizable patterns. On occasion, however, a petition in this
second group will involve an issue of first impression requiring review
and approval of a course of action by senior Office officials.
The third group of petitions will be covered by Sec. 1.17(h),
which will continue to specify a petition fee of $130. The petitions in
this group are: (1) Petitions under Sec. 1.19(h) to request documents
in a form other than that provided in this part; (2) petitions under
Sec. 1.84 for accepting color drawings or photographs; (3) petitions
under Sec. 1.91 for entry of a model or exhibit; (4) petitions under
Sec. 1.102(d) to make an application special; (5) Sec. 1.313 to
withdraw an application from issue; and (6) petitions under Sec. 1.314
to defer issuance of a patent. Petitions in this third group require
review for compliance with the applicable procedural requirements, but
do not often require analysis of varied factual situations or
evidentiary showings.
Section 1.17(i) is proposed to be amended to provide a processing
fee so that replacement drawings submitted within the period set forth
in Sec. 1.215(a) can be included in any patent application
publication. This will replace the current requirement for a petition
fee under Sec. 1.17(h) for the petition under Sec. 1.182 which is
required for such replacement drawings to be accepted for inclusion in
any patent application publication. See Drawings in Patent Application
Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (Jan. 16,
2001). See also a conforming amendment to Sec. 1.215(a).
Sections 1.17(l) and (m) are proposed to be revised to make it
clear that the reexamination proceeding is not terminated under
Secs. 1.550(d) or 1.957(b), but rather the prosecution of the
reexamination is concluded under Secs. 1.550(d) or 1.957(b). See
the discussion below as to the amendment of Sec. 1.550 for the
rationale for this change.
Section 1.19: Section 1.19 is proposed to be amended to clarify
that copies of documents may be provided in whole, or in part, in
electronic image form at the Office's option. Additionally, Sec.
1.19(b) is proposed to be amended to provide how copies of Image File
Wrapper (IFW) contents are to be charged. Further, it is proposed to
eliminate the seven-day requirement of Sec. 1.19(b)(1) for processing
copy requests, and to eliminate the phrase "that were submitted in
electronic form on a physical media" from Sec. 1.19(b)(3). Paragraphs
(g) and (h) would be added to provide for supplying copies of unscanned
documents and to provide for a petition to obtain copies of documents
in a form other than provided for in the rules of practice.
In view of the ever-increasing (paper) submissions, many of the
Office official records need to be, and are going to be, stored and
maintained in electronic form. As a result of the Office's
migration to electronic storage of documents, especially for voluminous
documents, the Office proposes amending Sec. 1.19 to reflect that the
Office may, at its option, provide copies of documents where the copy
is in electronic form on compact disc. Requests for voluminous
documents can be economically provided in an expedited time frame
without degrading service to other users if copies are furnished on
compact disc. Requests for documents in other forms that would impair
service to other users would be decided on a case-by-case basis as
provided in new Sec. 1.19(h).
Section 1.19(b) is proposed to be amended in view of the current
migration of Office records from paper file wrappers to their
electronic image equivalent with the image file wrapper (IFW) system as
the repository of official Office records. See USPTO Announces
Prototype of Image Processing, 1265 Off. Gaz. Pat. Office 87 (Dec. 17,
2002), and See Changes To Implement Electronic Maintenance of Official
Patent Application Records, 68 FR 38611 (June 30, 2003). The instant
proposed rule change clarifies how copies of IFW contents are to be
charged, as the current rule would otherwise not provide a way for the
public to obtain copies given the absence of a paper file wrapper for
the Office to copy when IFW replaces the paper file wrapper as the
source of copies.
Sections 1.19(b)(1) and (2) are proposed to be amended to reflect
the change to IFW from paper file wrappers. Currently when documents
are submitted to the Office in paper or on compact disc, copies of a
file wrapper and documents contained therein may be made from the
original paper or compact disc submission. If a scanned image is used
to make copies of an application as originally filed, the scanned image
corresponds to a paper file wrapper. In the future, there will be no
paper file wrapper corresponding to scanned image files in the IFW
System. As the Office uploads its records to the IFW system, the
instant proposed change will permit the Office to supply to the public
copies of Office documents directly from the IFW system regardless of
format and media of the initial submission (e.g., paper, electronic, or
compact disc). After uploading into IFW, the original submission may
not be retained or be in an easily retrievable form for copying.
The existing Secs. 1.19(b)(1) and (2) do not provide for
supplying copies of the non-paper portion of a file wrapper (e.g.,
compact discs). Under the current practice, for example, copies of
compact discs associated with a file wrapper must be ordered under
existing Sec. 1.19(b)(3) and are not provided with an order under
existing Secs. 1.19(b)(1) or 1.19(b)(2). Nothing in these proposed
rule changes will change this practice. Similarly, any materials not in
the IFW portion of a file wrapper (e.g., blueprints, microfiche, and
video cassettes) are not included in these current sections or as
proposed to be amended. To the extent, however, that documents may be
uploaded from compact discs to be part of an IFW, those documents will
be included with the IFW copy. In the event the Office cannot fill an
order solely from the IFW, and must complete an order in part by
copying paper files or compact discs, the fees of Sec. 1.19(b)(2)(i)
for pages over 400 will apply to any copies made from paper files,
except those provided for under Sec. 1.19(g) (e.g., blueprints), in
which case the fee of Sec. 1.19(g) will apply, and the fee for compact
disc copies under Sec. 1.19(b)(3) will apply to the copies of compact
discs.
Patent applications and patents will normally reference any compact
discs that are a part of the application specification. The public
should therefore review the specification to determine if an order for
compact discs should be included with an order to obtain the contents
of an application or file wrapper. Other materials associated with a
file wrapper (e.g., blueprints, video cassettes, compact discs exhibits
not part of the specification) are not referenced in the specification
of an application or patent. The Office does not maintain an index of
other materials associated with any specific file wrapper.
Accordingly, the public should carefully review the contents of a
file wrapper to determine if other materials associated with a file
wrapper need to be separately ordered.
Customers will not be able to select the source for documents under
Secs. 1.19(b)(1) and (2) for filling an order.
The Office's experience with providing copies from an image system
is that it is faster than providing copies from paper and it allows the
Office to provide copies for regular orders with the same speed as
expedited service. The service is also cheaper for the public so that
excess page fees can be eliminated in most cases. The Office is
considering charging a single fee for copies made from the IFW to
recover an average cost and limiting the additional fee of Sec.
1.19(b)(2)(ii) to paper copy non-IFW documents rather than actual cost
depending on size, if public comment is favorable. The Office believes
public comment should be favorable because it will result in lower
overall costs to the public and faster service. Lowered costs to the
public and the Office occur because there will not need to be separate
analysis and billing of the number of pages and excess pages copied.
Faster service will occur because the Office will not have to delay
orders while additional charges for excess pages are processed. Also,
since the Office can provide the copies within a short period of time
which would be faster than a seven-day service, at the same fee, it is
proposed to remove the references to the slower non-expedited service,
i.e., "seven-day."
Section 1.19(b)(3) is proposed to be amended by revising "on
compact disc" to "in electronic form on a physical media" so that
documents submitted on electronic forms other than compact discs may be
made available on compact disc for the same fee as documents submitted
on compact disc.
Section 1.19(g) is proposed to be added to provide for copying
material that is not image scanned. Materials such as large blueprints,
microfiche, and video cassettes cannot be scanned as electronic image
equivalents, and an average cost for pricing cannot be computed in
advance, because the demand for such copies is so infrequent. The
Office proposes to charge the actual cost of copying of these
materials.
Section 1.19(h) is proposed to provide for a mechanism for
requesting copies of documents in a form other than that normally
provided by the Office. The copies would be provided at cost. For
example, a copy of an application so voluminous that it required many
boxes of compact discs might be requested under this part on some other
media such as DVD media instead of compact discs. Petitions would be
decided under this section based upon the ability of the Office to
provide the requested service and the adverse impact to the Office and
the public from diverting resources to fulfilling the order.
Section 1.27: Section 1.27 is proposed to be amended to make
certain clarifying changes. The proposed changes would clarify that:
(1) A security interest held by a large entity would not be a
sufficient interest to bar entitlement to small entity status; (2) the
requirements for small business concerns regarding transfer of rights
and the size standards of the Small Business Administration are
additive; and (3) business concerns are not precluded from claiming
small entity status merely because they are located in or operate
primarily in a foreign country.
Section 1.27 is proposed to be amended to revise paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) to change "obligation" to "currently enforceable
obligation." Questions have arisen as to whether a security interest
in an application or patent held by a large entity is a sufficient
interest to prohibit claiming small entity status. For example, an
applicant or patentee may take out a loan from a banking institution
and the loan may be secured with rights in a patent application or
patent of the applicant or patentee, respectively. The granting of such
a security interest to the banking institution is not a currently
enforceable obligation to assign, grant, convey, or license any rights
in the invention to the banking institution. Only if the loan is
defaulted upon will the security interest cause a transfer of rights in
the application or patent to the banking institution. Thus, where the
banking institution is a large entity, the applicant or patentee would
not be prohibited from claiming small entity status merely because the
banking institution has been granted a security interest, but if the
loan is defaulted upon, there would be a loss of entitlement to small
entity status. Pursuant to Sec. 1.27(g), notification of the loss of
entitlement would need to be filed in the application or patent prior
to paying, or at the time of paying, the earliest of the issue fee or
any maintenance fee due after the date on which small entity status is
no longer appropriate. The proposed change to paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) is intended to clarify that the obligation to
assign, grant, convey, or license any rights in the invention must be a
currently enforceable obligation and thus a security interest in an
application or patent held by a large entity would not be a sufficient
interest to bar entitlement to small entity status. The proposed change
would not result in any change to the standards for determining
entitlement to small entity status.
A few additional examples will further clarify when small entity
status is or is not appropriate.
Example 1: On January 2, 2002, an application is filed with a
written assertion of small entity status and the small entity filing
fee is paid. Applicant is entitled to claim small entity status when
the application is filed. Thereafter, the application is allowed and
the small entity issue fee is timely paid on October 1, 2002. On
October 2, 2002, applicant signs a license agreement licensing
rights in the invention to a large entity. On October 1, 2002,
applicant had not transferred any rights in the invention, and was
under no obligation to transfer any rights in the invention, to any
other party who would not qualify for small entity status. The
payment of the small entity issue fee would be proper as long as the
applicant was under no obligation on October 1, 2002, to sign the
license agreement with the large entity.
Example 2: An applicant, who would otherwise qualify for small
entity status, executes an agreement with a large entity. The
agreement requires the applicant to assign a patent application to
the large entity sixty days after the application is filed.
Thereafter, the application is filed. Since the applicant is under
an existing obligation to assign the application to a large entity,
applicant would not be entitled to claim small entity status.
Applicant would need to pay the large entity filing fee even though
the actual assignment of the application to the large entity may not
occur until after the date of payment of the filing fee.
Furthermore, Sec. 1.27 is proposed to be amended to change the
period at the end of paragraph (a)(2)(i) to "; and" to clarify that
paragraphs (a)(2)(i) and (a)(2)(ii) are additive requirements and a
party seeking to qualify as a small business must meet both
requirements as to transfer of rights and Small Business Administration
requirements.
Section 1.27(a)(2)(ii) is proposed to be amended to change
"[m]eets the standards set forth in 13 CFR part 121" to "[m]eets the
size standards set forth in 13 CFR 121.801 through 121.805 to be
eligible for reduced patent fees."
Questions have also arisen as to whether a small business concern
must have a place of business located in the United States, and operate
primarily within the United States or make a significant contribution
to the United States economy through the payment of taxes or use of
American products, materials or labor (13 CFR 121.105) to be eligible
to pay reduced patent fees under 35 U.S.C. 41(h). When the provisions
of 35 U.S.C. 41(h) (Public Law 97-247, 96 Stat. 317 (1982)) were
implemented in 1982, a suggestion that foreign concerns not be eligible
to pay reduced patent fees under 35 U.S.C. 41(h) was considered and
rejected because excluding foreign concerns would violate United States
treaties in the patent area. See Definition of Small Business for
Paying Reduced Patent Fees Under Title 35, United States Code, 47 FR
43272 (Sept. 30, 1982), 1023 Off. Gaz. Pat. Office 27 (Oct. 19, 1982)
(final rule). Specifically, a provision that foreign concerns are not
eligible to pay reduced patent fees under 35 U.S.C. 41(h) would violate
Article 2 of the Paris Convention for the Protection of Industrial
Property, which provides that nationals of any Paris Convention country
shall, as regards the protection of industrial property, enjoy in all
the other Paris Convention countries the advantages that their
respective laws grant to nationals of that country. Therefore, a
business concern which meets the small business requirements set forth
in 13 CFR 121.801 through 121.805 and complies with applicable Office
procedures is and continues to be eligible to pay reduced patent fees
under 35 U.S.C. 41(h), even if the business concern is located in or
operates primarily in a foreign country.
Section 1.47: Section 1.47(a) and (b) are proposed to be amended to
refer to the petition fee set forth in Sec. 1.17(g) for consistency
with the change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.52: Section 1.52, paragraphs (b)(1)(ii), (b)(2)(ii),
(d)(1) and (e), are proposed to be amended.
Section 1.52, paragraphs (b)(1)(ii) and (d)(1) are proposed to be
amended to require that the statement that the translation is accurate
be signed by the individual who made the translation. The Office has
received a number of inquiries as to who may sign the statement, and
has decided that it is appropriate to include the requirement that the
signature required is that of the translator into the rules of
practice. See also the proposed amendments to Secs. 1.55(a)(4),
1.69(b) and 1.78(a)(5)(iv). The requirement that the person who made
the translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26. Currently, anyone, including
practitioners, who would have sufficient knowledge concerning the
accuracy of the translation to comply with the averments of Secs.
1.4(d)(2) and 10.18 may sign the accuracy statement regarding the
translation. As a result, translations are being received by the Office
accompanied by statements signed by practitioners stating that the
translations are believed to be accurate "based on information and
belief." Such type of qualification by a party unrelated and several
parties removed from the one doing the translation does not lend itself
to confidence by the Office that care has been taken with the
translation. Accordingly, the Office believes it to be appropriate to
require the party doing the actual translation to make the statement of
accuracy, particularly to ensure that the translator is covered by
Secs. 1.4(d)(2) and 10.18.
Section 1.52(b)(2)(ii) is proposed to be revised to recommend that
the font size of text be at least a font size of 12, which is
approximately 0.166 inches or 0.422 cm. high. Section 1.52(b)(2)(ii)
currently requires that the text be in a lettering style that is at
least 0.08 inches high, which is the font size set forth in Patent
Cooperation Treaty (PCT) Rule 11.9. A font size of only 0.08 inches
leads to difficulty in capturing text with optical character
recognition technology and may not be reproducible as required by Sec.
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A
font size of 12 (0.422 cm. or 0.166 inch high) is significantly more
reproducible. Accordingly, Sec. 1.52(b)(2)(ii) is proposed to be
amended to indicate a preference for a larger font size. See Sec.
1.58(c) for a similar change.
Further, Sec. 1.52 is proposed to be amended to allow greater
flexibility in filing tables on compact disc, so that compact disc
files may be used instead of paper where the total number of pages
collectively occupied by all the tables in an application exceeds 100.
Also, Sec. 1.52 is proposed to be clarified to be consistent with
tables submitted on paper as to what constitutes a page. Section 1.52
is proposed to be amended to recite that CD-R discs should be finalized
so that they are closed to further writing.
Section 1.52(e)(1)(iii) is proposed to be amended to allow tables
of any size on compact disc if the total number of pages of tables
exceeds 100 pages. Since permitting the filing of tables on compact
disc, the Office has received voluminous applications having large
numbers of tables that were under 50 pages in length. Applicants have
indicated that it would be less burdensome filing these small tables on
compact disc. Accordingly, the rule is being liberalized while
balancing the convenience of the Office and the public to view the
document with the least burden imposed by dual media.
Section 1.52(e)(1)(iii) is also proposed to be amended to clarify
what constitutes an electronic page so as to determine compliance with
the 50- and 100-page requirement for submission of tables on compact
disc.
Further clarification is proposed to be provided in Sec.
1.52(e)(3)(i) as to what is a permanent compact disc. Recordable
compact discs can be made for recording in a single recording session
or in multiple recording sessions. To further assure the archival
nature of the discs, the requirement that recordable discs be finalized
so that they are closed to further recording is proposed to be added to
Sec. 1.52. Further, many older CD-ROM drives and audio CD players have
compatibility problems with un-finalized CDs. This proposed change will
ensure that the public and the Office will be able to use identical
copies of any CDs filed with older CD-ROM drives.
The Office is actively investigating allowing the submission of
other file formats, such as the Continuous Acquisition and Life Cycle
Support (CALS) XML format, in addition to the current ASCII format.
Before allowing the use of a file format, the Office must verify that
applicants will have the tools to create files easily that are
archivable and can be rendered to be viewable both by the Office users
and later by the public when the application is published. Problems
involving file size limitations, software display, and availability of
adequate table creation software are delaying implementation at this
time. The Office intends to broaden Sec. 1.52 to allow at least CALS
format tables when these problems are resolved. Technical
specifications and a discussion of operability issues for the CALS
table format may be found at the OASIS, i.e., Organization for the
Advancement of Structured Information Standards, Web site pages
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://ww-w.oasis-open.org/cover/tr9502.html and
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.oasis-open.org/specs/a501.htm.
The Office is also reviewing the acceptability of DVD media. At
present, there are several different types of recordable DVD media and
it is unclear which if any will become a standard archivable format.
Also, the Office is upgrading its capabilities to include the ability
to read at least some types of DVD media. However, it does not appear
that any DVD readers can be procured that will be able to read all of
the different types of DVD media that are now in the marketplace. The
Office is considering allowing submissions on at least some types of
DVD media when it becomes clear which types of DVD media are recognized
as of archivable quality and are compatible with Office hardware and
software.
Section 1.53: Section 1.53(e)(2) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(f) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.55: Section 1.55(a)(1)(ii) is proposed to be amended to
replace "an application that entered the national stage from an
international application after compliance with 35 U.S.C. 371" with
"an international application designating the United States" (any
application that enters the national stage from an international
application after compliance with 35 U.S.C. 371 is also an
"international application designating the United States"). While
section 4508 of the American Inventors Protection Act of 1999 (AIPA) as
originally enacted did not make the eighteen-month publication
amendments to 35 U.S.C. 119 and 120 applicable to an international
application unless and until it enters the national stage under 35
U.S.C. 371 (see Public Law 106-113, 113 Stat. 1501, 1501A-566 through
1501A-567 (1999)), section 13205 of Public Law 107-273 amended section
4508 of the AIPA to make the eighteen-month publication amendments to
35 U.S.C. 119 and 120 in the AIPA also applicable during the
international stage of an international application. See 116 Stat.
1758, 1903 (2002).
Section 1.55(a)(1) is also proposed to be amended to add a
paragraph (a)(1)(iii) to provide that if an application claiming the
benefit of a prior foreign application meets the twelve-month filing
period requirement in 35 U.S.C. 119(a) only through one or more prior-
filed nonprovisional applications or international applications
designating the United States for which a benefit is claimed under 35
U.S.C. 120, 121, or 365(c) and Sec. 1.78(a), each such prior-filed
application must also contain a claim for priority in compliance with
Sec. 1.55 to the prior foreign application. 35 U.S.C. 119(b)(1)
provides that an application for patent is not entitled to priority
under 35 U.S.C. 119(a)-(d) unless a claim is filed in the Office at
such time during the pendency of the application as required by the
Director. 35 U.S.C. 119(b)(2) also provides that the Director may
consider the failure of the applicant to file a timely claim for
priority as a waiver of any such claim, and that the Director may
establish procedures, including the payment of a surcharge, to accept
an unintentionally delayed claim under 35 U.S.C. 119(a)-(d). This time
period requirement is to ensure that priority claims under 35 U.S.C.
119(a)-(d) are presented in sufficient time to permit publication of
the application at eighteen months from the earliest claimed priority
date under 35 U.S.C. 119(a)-(d). See 145 Cong. Rec. S14,708, S14,719
(1999) (daily ed. Nov. 17, 1999) (the Conference Report for H.R. 3194,
106th Cong., 1st. Sess. (1999), which resulted in Public Law 106-113,
does not contain any discussion (other than the incorporated language)
of S. 1948; however, a section-by-section analysis of S. 1948 was
printed in the Congressional Record at the request of Senator Lott). In
addition, priority claims must be presented in a timely manner in a PCT
international application filed under 35 U.S.C. 363 to determine (among
other things) the time limit for national stage entry. Therefore, the
Office is proposing to amend Sec. 1.55(a) to add a paragraph
(a)(1)(iii) to make clear that the first-filed application in a chain
of applications (as well as all intermediate applications) must contain
a claim for priority in compliance with Sec. 1.55 to a prior foreign
application for a subsequent application to claim the benefit of the
prior foreign application through the first-filed application (and all
intermediate applications).
In In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 1973), the Office held
that a certified copy of a foreign priority document may be filed in a
continuation application under Sec. 1.60, rather than in its abandoned
parent application, to meet the requirements in 35 U.S.C. 119 for the
continuation application to claim the benefit of the foreign priority
application (through its abandoned parent application). The language of
Tangsrud, however, is broad enough to imply that neither the claim for
priority nor the certified copy of the foreign priority document must
be filed in the first-filed application for a subsequent application to
claim the benefit of the foreign priority application through the
first-filed application. This proposed change to Sec. 1.55(a) would
not affect the holding in Tangsrud that the certified copy of the
foreign priority document may be filed in a continuing application,
rather than in an abandoned first-filed application, provided that a
claim for priority in compliance with Sec. 1.55 to a prior foreign
application is presented in the first-filed application.
Section 1.55(a)(4) is proposed to be amended to require that the
statement that the translation is accurate be signed by the individual
who made the translation. The Office has received a number of inquiries
as to who may sign the statement, and has decided that it is
appropriate to include the requirement that the signature required is
that of the translator into the rules of practice. See also the
proposed amendments to Secs. 1.52(b)(1)(ii), 1.52(d)(1), 1.69(b)
and 1.78(a)(5)(iv). The requirement that the person who made the
translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26.
Section 1.55(c) is proposed to be amended to change "365(a)" to
"365(a)-(b)" such that the procedures for acceptance of delayed
priority claims under Sec. 1.55(c) also apply to delayed priority
claims under 35 U.S.C. 365(b) in international applications.
Section 1.57: Section 1.57 is proposed to be added to provide for
incorporation by reference. Section 1.57(a) as proposed provides that,
if all or a portion of the specification or drawings is inadvertently
omitted from an application, but the application contains a claim under
Sec. 1.55 for priority of a prior-filed foreign application, or Sec.
1.78 for the benefit of a prior-filed provisional, nonprovisional, or
international application, that was present on the date of receipt of
the application, and the omitted portion of the specification or
drawings is completely contained in the prior-filed application, the
claim would be considered an incorporation by reference of the prior-
filed application. Sections 1.57(b) through (f) as proposed treat
incorporation by reference into an application of essential and
nonessential material by: (1) Providing a definition of essential and
nonessential material; (2) defining specific language that must be used
to trigger an incorporation by reference; (3) codifying current
practice as set forth in MPEP Sec. 608.01(p) (Incorporation by
Reference), updated to reflect the publication of applications; and (4)
codifying treatment of improper incorporation by reference.
Currently, the mere reference to another application is not an
incorporation of anything therein into the application containing such
reference for the purpose of the disclosure under 35 U.S.C. 112, para. 1.
See MPEP Secs. 201.06(c) and 608.01(p), and In re de Seversky, 474
F.2d 671, 177 USPQ 144 (CCPA 1973). The proposed rule would allow all
or a portion of the specification or drawings that is inadvertently
omitted from an application containing a priority claim for a prior-
filed foreign application, or a benefit claim for a prior-filed
provisional, nonprovisional, or international application, to be added
to the application by way of an amendment if the omitted portion of the
specification or drawings is completely contained in the prior-filed
application even though there is no explicit incorporation by reference
of the prior-filed application. The phrase "completely contained" in
Sec. 1.57(a) requires that the material to be added to the application
under Sec. 1.57(a) must be expressly (as opposed to implicitly)
disclosed in the prior application. Cf. PLT Rule 2(4)(iv). The claim
for priority or benefit would have to be present on the date of receipt
of the application in order for it to be considered an incorporation by
reference of the prior-filed application. The nonprovisional
application claiming benefit could be a continuation, divisional, or
continuation-in-part of the prior application for which benefit is
claimed. The purpose of the proposed rule is to provide a safeguard for
applicants when a page(s) of the specification, or a portion thereof,
or a sheet(s) of the drawings, or a portion thereof, is inadvertently
omitted from an application.
If all or a portion of the specification or drawings is
inadvertently omitted from an application and applicant wants to rely
on the incorporation by reference provided by the proposed rule, the
application would need to be amended to include the omitted portion of
the specification or drawings within the time period set by the Office,
but in no case later than the close of prosecution as defined by Sec.
1.114. In order for the omitted material to be included in the
application, the application must be amended to include it. The
incorporation by reference provided by the proposed rule requires an
applicant to timely amend the application to include the omitted
material in order for this material to be considered part of the
disclosure. The proposed rule gives the examiner the authority to
require the applicant to supply a copy of the prior-filed application,
to supply an English-language translation of any prior-filed
application that is in a language other than English, and to identify
where the omitted portion of the specification or drawings can be found
in the prior-filed application.
Any amendment to an international application pursuant to the
proposed rule would be effective only as to the United States. See
proposed Sec. 1.57(a)(2). In addition, no request to add the missing
part of the description or the missing drawing in an international
application designating the United States will be acted upon by the
Office prior to the expiration of the applicable time limit under PCT
Article 22(1) or (2), or Article 39(a).
If an application is not entitled to a filing date under Sec.
1.53(b) or under PCT Article 11, the amendment must be by way of a
petition accompanied by the fee set forth in Sec. 1.17(f). See
proposed Sec. 1.57(a)(3).
The proposed rule is similar to the current practice under MPEP
Sec. 201.06(c) where there is an explicit incorporation by reference
of the prior U.S. application contained in the specification or in the
application transmittal letter of a continuation or divisional
application filed under Sec. 1.53(b). See MPEP Sec. 201.06(c)
(Incorporation by Reference). The proposed rule is also consistent with
the PLT Article 5(6)(b) and Rule 2(3) and (4).
Of course, whether the proposed rule is adopted or not, applicants
may continue to explicitly incorporate by reference a prior application
or applications by including, in the body of the specification as
filed, a statement that the prior application or applications is
"hereby incorporated by reference." Such an explicit incorporation by
reference would not be limited to inadvertent omissions as in the
proposed rule. Accordingly, applicants are encouraged to explicitly
incorporate by reference a prior application or applications by
including such a statement in the body of the specification, if
appropriate.
Sometimes applicants intentionally omit material from a prior-filed
application when filing an application claiming priority to, or benefit
of, a prior-filed application. As discussed, the incorporation by
reference would only permit material that was inadvertently omitted
from the application to be added to the application if the omitted
material is completely contained in the prior-filed application.
Therefore, if the proposed rule were adopted, applicants would still be
able to intentionally omit material contained in the prior-filed
application from the application containing the priority or benefit
claim without the material coming back in by virtue of the
incorporation by reference. Applicants would be able to maintain their
intent by simply not amending the application to include the
intentionally omitted material. Thus, there should be no impact from
the proposed rule in continuing applications where material from the
prior application has been intentionally omitted. Therefore, the
proposed rule has been drafted such that the application claiming
benefit of a prior U.S. application could be a continuation-in-part
application (as well as a continuation or divisional).
The proposed rule would not apply to any applications filed before
the effective date of the rule. The proposed rule would be prospective
only since to apply the rule retroactively would result in changing the
expectations regarding incorporation by reference by applicants when
the applications were filed.
The Office is interested in comments from the public regarding
proposed Sec. 1.57(a), whether there is support or opposition for the
proposed rule, and whether there is any desire to limit the proposed
rule to continuation or divisional applications and not have it apply
to continuation-in-part applications.
Section 1.57(b) clarifies what is acceptable language that
identifies an incorporation by reference for essential and non-
essential matter as opposed to incorporation by reference of material
in a prior application as is proposed in Sec. 1.57(a). Applicants
sometimes refer to other applications, patents, and publications,
including patent application publications using language which does not
clearly indicate whether what is being referred to is incorporated by
reference or is just an informational reference. The Office is
proposing to limit incorporation by reference (except as provided in
Sec. 1.57(a)) to instances only where the words "incorporated by
reference" appear. The Office is attempting to bring greater clarity
to the record and provide a bright line test as to where something
being referred to is an incorporation by reference. The Office
considered the alternative of making any mention of a document an
automatic incorporation by reference of the document. Patent
applications frequently contain a discussion of prior art documents
when discussing the background of the invention, which prior art
documents are not intended to be incorporated by reference. The
necessity for Sec. 1.57(b) is that applicants who fail to clearly link
certain disclosures to means-plus-function language risk having their
claims interpreted too narrowly or held unenforceable. Clarifying when
material is incorporated by reference during examination by use of
specific trigger language is considered an aid to applicants when they
invoke 35 U.S.C. 112, para. 6. Applicants would be aided by avoiding
narrowed claim construction as a result of a number of court decisions
which would not look for equivalents outside of the application. See
Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d
1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124
F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as
automatically incorporated might result in unintended consequences such
as when a means-plus-function claim is presented under 35 U.S.C. 112,
para. 6.
Similarly, applicants would be aided by not having their claims
found unpatentable by a mere reference to outside material
unintentionally incorporating material that contained equivalents that
would broaden their claims to encompass the prior art. Automatic
incorporation by reference would create a trap for applicants and
practitioners by creating unintentional equivalents for 35 U.S.C. 112,
p. 6, language broadening claims to be unpatentable. Additionally, as
claims are generally read in light of the specification, what is
actually incorporated into the specification can affect the scope of
the claims independent of 35 U.S.C. 112, para. 6.
Accordingly, comments are desired identifying alternative language
to that proposed in paragraph (b) or why requiring this specific
language would be a problem.
A patent application incorporating by reference other material
must, as described in paragraph (b), include an identification of the
referenced patent, application, or publication pursuant to Sec.
1.98(b)(1) through (b)(5). The Office recommends that particular
attention be directed to specific portions of referenced documents
where the subject matter incorporated may be found if large amounts of
material are incorporated. Guidelines for situations where applicant is
permitted to fill in a number for Application No. ____ left blank in
the application as filed can be found in In re Fouche, 439 F.2d 1237,
169 USPQ 429 (CCPA 1971). Commonly assigned abandoned applications less
than 20 years old can be incorporated by reference to the same extent
as copending applications; both types are open to the public upon the
referencing application issuing as a patent. See MPEP Sec. 103.
Section 1.57(c) codifies current practice in MPEP Sec. 608.01(p)
(Incorporation by Reference), except that Sec. 1.57(c) as proposed is
limited to U.S. patent or U.S. patent application publications (i.e.,
the Office proposes to eliminate the practice of incorporating by
reference essential material in unpublished patents in which the issue
fee for an application has been paid but the application has not yet
issued as a patent). Delays in issuance or the withdrawal from issue of
an allowed application put in doubt that an application incorporated by
reference will be available to the public when a patent incorporating
the other application issues. Similarly, this provision permitting only
the incorporation of the publication document of an application is
intended to preclude incorporation by reference of material found only
in the redacted portion of a published patent application.
Section 1.57(c) updates current practice to reflect publication of
applications in two areas. Current practice permits holding in abeyance
correction of material incorporated by reference from unpublished U.S.
applications that have not issued as patents until allowance of the
application making the incorporation by reference. Publication of the
applications which contain an incorporation by reference means that the
public will need access to the material incorporated by reference prior
to an application being issued as a patent. Where the incorporation is
to an unpublished application that has not issued as a patent, such
application is not readily available. Therefore, holding the correction
of an incorporation by reference in abeyance in this situation will
materially impair the public's access to the invention that is
disclosed by the published application that incorporates an unpublished
application.
The Office considered but rejected including unpublished abandoned
applications (which are otherwise open to the public under Sec.
1.14(a)(iv)) as acceptable documents for incorporation by reference
since the text of abandoned applications is not published after
abandonment on the Internet at this time. The Office is considering how
to make previously unpublished material to which the public is
currently permitted access pursuant to Sec. 1.14(a)(iv) (e.g.,
unpublished incorporated by reference applications) available on the
Internet. The Office may reconsider this position when its electronic
file wrapper permits access to the text of unpublished abandoned
applications on the Internet.
Section 1.57(c)(1) through (c)(3) defines essential material as
those items required by 35 U.S.C. 112, para. 1, 2, and 6.
Section 1.57(d) defines the scope of incorporation by reference
practice for nonessential subject matter. As discussed with respect to
Sec. 1.57(c), the Director has considerable discretion in determining
what may or may not be incorporated by reference in a patent
application. Through the Office's incorporation by reference policy,
the Office ensures that reasonably complete disclosures are published
as U.S. patents and U.S. application publications.
Section 1.57(e) is added so that it is clear that a copy of the
incorporated by reference material may be required to be submitted to
the Office even if the material is properly incorporated by reference.
The examiner may require a copy of the incorporated material simply to
review it and understand what is being incorporated or to put the
description of the material in its proper context. Another instance
where a copy of the reference may be required is where the material is
being inserted by amendment into the body of the application to replace
the incorporation by reference statement.
Section 1.57(f) addresses corrections of incorporation by
reference. Section 1.57(f) provides that improper incorporation by
reference statements may be corrected with a timely filed amendment.
Nothing in Sec. 1.57(f) authorizes the insertion of new matter into an
application. The Office is concerned that improper incorporation by
reference statements and late corrections thereof require the
expenditure of unnecessary examination resources and slow the
prosecution process. By treating improper incorporation by reference
statements as not incorporating any material (until the incorporation
by reference is corrected), the Office and applicants will avoid
expending unnecessary resources and delays in prosecution occasioned by
the many references to extraneous material that are often found in
patent applications. Applicants know whether they want material
incorporated by reference, and must timely correct any incorporation by
reference errors.
Section 1.58: Section 1.58(a) is proposed to be amended to provide
that a table not be included in both the drawings and in the body of
the specification of an application. Section 1.58(b) is also proposed
to be amended to clarify that correct visual alignment of rows and
columns of chemical and mathematical formulae and tables is retained
when the electronic file is rendered by opening and displaying the
electronic file at the Office using a text viewer program. Section
1.58(c) is additionally proposed to be amended to recommend that the
font size of text be at least 0.166 inches or 0.422 cm. and to
eliminate a reference to elite type font.
Section 1.58(a) is proposed to be amended because applicants have
been making voluminous applications even larger by including the same
table as both a drawing figure and as text in the body of an
application. Filing duplicate tables requires additional review by the
Office to determine if the drawing table and the text table are
duplicates and to identify differences if any differences exist.
Moreover, the number of pages is effectively increased, causing
increased scanning, storage and reproduction costs. In addition, the
burden on the public to copy and review a published application or
patent is also increased. See Sec. 1.83 for a similar proposed change
involving tables and sequence listings.
Section 1.58(b) is proposed to be amended adding "visually" so
that it is clear that the data in the electronic file are appropriately
formatted so that the alignment of rows and columns is maintained in
the table when the file is opened to view at the Office. The Office has
found that some filers have only been providing markers to identify
rows and columns in table data. When the table is viewed at the Office
the markers do not cause the rows and columns of data to be visually
aligned. Unless each entry in a table is surrounded with an appropriate
number of spaces the visual spatial alignment of the table is not
maintained: i.e., the rows and cells are mis-aligned. A way to provide
the proper alignment is to insert space characters in each cell so that
the overall number of characters in each cell is the same, and to
maintain a constant font width for all characters.
Many programs that are used to generate tables allow the user to
provide additional spaces manually when typing data. Many of these
programs also provide an automated way to pad the cells with space
characters, and create an ASCII file with spatially aligned data. This
feature is generally invoked by a command that is often called printing
to a "formatted text" format or "prn" file. The program formats the
table as it would appear on paper padding the cells with spaces to
provide proper alignment of the cell entries.
A review of different versions of the same software product and of
different software products showed no consistency in the menu language
used for the formatting command noted above. With the constant change
in software versions, the Office is not able to provide a list of all
the menu variations. However, a person knowledgeable with the software
used to create tabular data should be able to find the commands to
invoke this feature in the software.
Section 1.58(c) is proposed to be amended for the same reason that
Sec. 1.52(b)(2)(ii) is proposed to be amended. Section 1.58(c)
currently requires that the text be in a lettering style that is at
least 0.08 inches high, which is the minimum font size set forth in
Patent Cooperation Treaty (PCT) Rule 11.9. Text having a font size only
0.08 inches high is difficult to capture with optical character
recognition technology and may not be reproducible as required by Sec.
1.52(a)(1)(v) (and PCT Rule 11.2(a)). A font size of 12 (12/72 inch or
0.166 inch (0.422 cm.) high) is significantly more reproducible than a
font size of 6 (6/72 inch or 0.08 inch (0.211 cm.) high). Accordingly,
Sec. 1.58(c) is proposed to be amended to indicate a preference for a
larger font size. In addition, the reference to elite type is proposed
to be deleted as it was inconsistent with the size given. Elite type is
a typewriter type that runs 12 characters to the inch. Instead of
referencing elite type, the rule is proposed to reference a font size
of 6 which should be more meaningful to most patent applicants (most
word processing software programs have an option to choose a font and a
font size).
Section 1.59: Section 1.59 is proposed to be amended to refer to
the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.69: Section 1.69(b) is proposed to be amended by deleting
the words "or approved" as unnecessary, and possibly leading to
confusion and the mistaken assumption that the Office has a procedure
for the approval of applicant generated forms, where no such procedure
exists. See Changes to Implement the Patent Business Goals,
64 FR 53771, 53777 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15, 20
(Nov. 2, 1999) (proposed rule) (declining to adopt a review service for
applicant-created forms). In addition, paragraph (b) of Sec. 1.69 is
proposed to be amended to require that the statement that the
translation is accurate be signed by the individual who made the
translation. The Office has received a number of inquiries as to who
may sign the statement required by the current rule and how the
statement must be signed. The Office has decided to clarify that the
signature required is that of the translator. See also the proposed
amendments to Secs. 1.52(b)(1)(ii), 1.52(d)(1), 1.55(a)(4) and
1.78(a)(5)(iv). The requirement that the person who made the
translation sign the statement that the translation is accurate is
consistent with current Sec. 3.26.
Section 1.76: Section 1.76(a) is proposed to be amended to require
that any application data sheet (ADS) contain the seven headings listed
in Sec. 1.76(b) and all of the appropriate data for each section
heading. The proposed amendment would also require that the ADS be
titled "Application Data Sheet." Any label (e.g., the label "Given
Name" in the "Applicant Information" heading) that does not contain
any corresponding data will be interpreted by the Office to mean that
there is no corresponding data for that label anywhere in the
application. By requiring an ADS to contain all seven section headings,
and any appropriate data for the sections, the accuracy of
bibliographic data in patent applications will be enhanced and the need
for corrected filing receipts related to Office errors will be reduced.
Section 1.76(c)(2) is proposed to be amended to require a
supplemental application data sheet to be labeled "Supplemental
Application Data Sheet" and to also contain all of the headings listed
in Sec. 1.76(b) with any appropriate data for each heading, rather
than only identifying the information that is being changed (added,
deleted, or modified) in the supplemental ADS. Requiring a supplemental
ADS to contain all of the information from the ADS with the changes
indicated is consistent with the ADS guide posted on the Office's
Internet Web site at: http://frwebgate.access.gpo.gov/cgi-bin/leaving.
cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov/web/offices/
pac/dapp/sir/doc/payappde.html.
A supplemental ADS containing only new or changed
information is likely to confuse the record, create unnecessary work
for the Office, and would not comply with Sec. 1.76 if amended as
proposed. When submitting an ADS after the initial filing of the
application to correct, modify, or augment the original application
data included in an ADS, the following applies: (1) The supplemental
application data sheet must be labeled "Supplemental Application Data
Sheet"; (2) the "Supplemental Application Data Sheet" is a full
replacement copy of the original application data sheet, with each of
the seven section headings, and with any appropriate data for the
section headings; and (3) the "Supplemental Application Data Sheet"
must be submitted with any changes or additions underlined (for
deletions without replacement data, use strike-through or brackets).
When submitting an ADS to correct, modify, or augment application
data (see Sec. 1.76(d)), when an ADS has not been previously filed,
the first-filed ADS is not considered a supplemental ADS even if such
is filed subsequent to the initial filing of the oath or declaration.
When submitting such an ADS: (1) The application data sheet must be
labeled "Application Data Sheet"; and (2) a complete application data
sheet including all appropriate information for each heading must be
submitted.
Section 1.78: Section 1.78(a)(1) is proposed to be amended to
delete an unnecessary alternate condition to permit a claim for the
benefit of a prior-filed application. Sections 1.78(a)(2) and (a)(5)
are proposed to be amended to permit the required reference to the
prior application(s) to be in multiple sentences at the beginning of
the specification, rather than being limited to the first sentence of
the specification.
Section 1.78(a)(1) sets forth the conditions under which a
nonprovisional application may claim the benefit of one or more prior-
filed copending U.S. nonprovisional applications or international
applications designating the United States of America. Where the prior-
filed application is a nonprovisional application (filed under 35
U.S.C. 111(a)), one of the conditions under Sec. 1.78(a)(1) is met
when the prior-filed application satisfied any one of paragraphs (ii),
(iii) or (iv) of Sec. 1.78(a)(1). To satisfy paragraph (ii), the
prior-filed application must be "[c]omplete as set forth in Sec.
1.51(b)." To satisfy paragraph (iii), the prior-filed application must
be "[e]ntitled to a filing date as set forth in Sec. 1.53(b) or Sec.
1.53(d) and include the basic filing fee set forth in Sec. 1.16."
Considering that paragraph (iii) is less restrictive than paragraph
(ii), it is proposed to delete paragraph (ii) (and redesignate
paragraphs (iii) and (iv) as paragraphs (ii) and (iii), respectively)
as it is unnecessary because any prior-filed application that would
satisfy paragraph (ii) would also satisfy paragraph (iii).
Sections 1.78(a)(2)(iii) and (a)(5)(iii) are proposed to be amended
to change the word "sentence" to "sentence(s)". The proposed change
would permit the required reference to the prior application(s) to be
in more than one sentence at the beginning of the specification. In
some situations, it would be easier and clearer to set forth the
relationship between prior applications if more than one sentence were
permitted. For example, where there is a provisional application and
multiple intermediate nonprovisional applications, the required
identification in the latest nonprovisional application as to which
intermediate nonprovisional application(s) claims benefit to the
provisional application (i.e., is within one year of the provisional
application's filing date), could be set forth in a clearer manner
using multiple sentences.
Section 1.78(a)(5)(iv) is proposed to be amended to require that
the statement that the translation is accurate be signed by the
individual who made the translation. The Office has received a number
of inquiries as to who may sign the statement, and has decided that it
is appropriate to include the requirement that the signature required
is that of the translator into the rules of practice. See also the
proposed amendments to Secs. 1.52(b)(1)(ii) and (d)(1), 1.55(a)(4)
and 1.69(b). The requirement that the person who made the translation
sign the statement that the translation is accurate is consistent with
current Sec. 3.26.
Section 1.78(c) is proposed to be amended to clarify that the prior
art exception under 35 U.S.C. 103(c) does not apply to double patenting
rejections by the addition of the last sentence, which states "Even if
the claimed inventions were commonly owned, or subject to an obligation
of assignment to the same person, at the time the later invention was
made, the conflicting claims may be rejected under the doctrine of
double patenting in view of such commonly owned or assigned
applications or patents under reexamination." Therefore, Sec. 1.78(c)
emphasizes that double patenting rejections should still be made, when
appropriate, even if a reference is disqualified from being used in a
rejection under 35 U.S.C. 103(a) via the prior art exclusion under 35
U.S.C. 103(c). This clarification codifies patent policy regarding
double patenting rejections and the prior art exclusion under 35 U.S.C.
103(c) as set forth in the notice Guidelines Concerning the
Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the
Interpretation of the Term "Original Application" in
the American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat.
Office 54 (Apr. 11, 2000)) and MPEP Sec. 706.02(l)(1). Additionally,
the first sentence of Sec. 1.78(c) is proposed to be amended by
changing the word "party" to "person" in order to use terminology
consistent with 35 U.S.C. 103(c).
Section 1.83: Section 1.83(a) is proposed to be amended to provide
that tables and sequence listings that are in the specification are not
permitted to also be included in the drawings. Applicants should not be
obliged to include tables or the sequence listing in the drawings due
to the current requirement of Sec. 1.83(a) that all claimed features
must be shown in the drawings. Under the proposed amendment, if the
specification includes a sequence listing or a table, such a sequence
listing or table would not be permitted to be repeated in the drawings.
See Sec. 1.58(a) for a similar proposed change to require that
tables be included in only one of the drawings and the specification.
Section 1.84: Section 1.84 is proposed to be amended by revising
Sec. 1.84(a)(2)(iii) to remove the requirement for submission of a
black and white copy of any color drawings or photographs. Section
1.84(a)(2)(iv) is proposed to be amended to become (a)(2)(iii). Section
1.84(c) is proposed to be amended to clarify that identification
(labeling) of the drawings is recommended, but not required, and to
change the recommended location of any identification of the drawings.
Section 1.84(a)(2) is proposed to be amended to remove the
requirement for a black and white copy of a color drawing or
photograph. This requirement has already been waived. See 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, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).
Section 1.84(c) is proposed to be amended to remove the requirement
that the identification of drawings must be placed on the front of each
sheet of drawing, if the information is provided. The Office prefers
that the identification of drawings be placed on the front of each
sheet of drawing so that photocopies and scanned images of the drawings
will be properly identified with the application. The Office has new
scanners that will endorse in the top margin starting 3.5 inch from the
right edge and ending 1 inch from the right edge of the paper.
Therefore, applicants are strongly encouraged to place the information
on the front of each sheet, to the left of the center on the top margin
so that the identification does not overlap the endorsement, and so
that the identification will be included in any photocopies of the
drawings. The Office, however, recognizes that some applications have
long titles or identification that could not be placed completely on
the front within the top margin. In such a situation, the
identification of drawings may be placed on the back of each sheet
(understanding that the backs of drawing sheets will not be scanned),
but placing part of the identification (e.g., the application number
and the first inventor's name) on the front is recommended. If the
identification of drawings is placed on the front of each sheet, the
identification must be placed to the left of center within the top
margin.
Section 1.91: Section 1.91 is proposed to be amended to add a
paragraph (c), which provides that a model or exhibit must be
accompanied by photographs that show multiple views of the material
features of the model or exhibit and that substantially conform to the
requirements of Sec. 1.84. Material features are considered to be
those features which represent that portion(s) of the model or exhibit
forming the basis for which the model or exhibit has been submitted.
Since the Office generally returns or otherwise disposes of models or
exhibits when they are no longer necessary for the conduct of business
before the Office (Sec. 1.94), such photographs are necessary for the
file of the application or proceeding to contain an adequate record of
the model or exhibit submitted to the Office. Section 1.91(c) would
also provide that this requirement does not apply if the model or
exhibit substantially conforms to the requirements of Sec. 1.52 or
Sec. 1.84, since a model or exhibit that substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 can itself be retained in the
file wrapper of the application or proceeding.
In applications where the exhibit is not intended to display the
medium of submission (e.g., video tapes, DVDs, and compact discs) but
the content of the submission, the requirement that the photographs be
of the substantive content is included in this paragraph. Video tapes,
DVDs, and compact discs are usually submitted with movies or multimedia
images. The requirement that the photographs submitted should show the
material features that were being exhibited is intended to require that
the photograph be that of the content of the material, not a photograph
of the medium of submission. Hence, if video or multimedia submission
is contained on a tape or disc, the corresponding photograph should be
a still image single frame of a movie, and not a submission of a
photograph of a video cassette, DVD disc or compact disc.
A video or DVD is not the type of model or exhibit that would
substantially conform to the requirements of Secs. 1.52 or 1.84.
The Office does not intend to store bulky items, such as videos,
particularly as the Office is moving toward an Image File Wrapper. See
Changes To Implement Electronic Maintenance of Official Patent
Application Records, 68 FR 38611 (June 30, 2003). Accordingly, where a
video or DVD or similar item is submitted as a model or exhibit, the
requirement of Sec. 1.91(c) for supplying photographs of what is
depicted in the video or DVD, pursuant to Sec. 1.84, would need to be
met.
The Office is interested in comments as to whether the requirement
for supplying photographs, particularly for a video or DVD, is overly
broad and an adequate description could be presented by some other type
of description, such as a written statement.
Section 1.94: Section 1.94 is proposed to be amended to be divided
into paragraphs (a) through (c). Paragraph (a) provides that once
notification is sent to applicant, arrangements must be made by
applicant for the return of the model, exhibit, or specimen at
applicant's expense, in response to such notification. Where the model,
exhibit or specimen is a perishable, it will be presumed that the
Office has permission to dispose of the item without notice to
applicant, unless applicant notifies the Office upon submission of the
item that a return is desired and arrangements are promptly made for
its return upon notification by the Office.
Paragraph (b) provides that applicant is responsible for retaining
the actual model, exhibit, or specimen for the enforceable life of any
patent resulting from the application. Section 1.94 would also provide
that its provisions do not apply: (1) If the model or exhibit
substantially conforms to the requirements of Sec. 1.52 or Sec. 1.84,
since a model or exhibit that substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 can itself be retained in the
file wrapper of the application or proceeding; (2) where a model,
exhibit, or specimen has been described by photographs that conform to
Sec. 1.84, or (3) where the model, exhibit, or specimen is a
perishable.
Paragraph (c) provides that the notification to applicant will set
a period of time within which applicant must make arrangements for a
return of a model, exhibit, or specimen, with
extensions of time available under Sec. 1.136, except in the case of
perishables. The Office intends to set a one-month period of time from
the mailing date of the notification for applicant to make arrangements
for a return, unless the item is a perishable, in which case the time
period will be shorter. Failure by applicant to establish that
arrangements for the return of a model, exhibit or specimen have been
made within the time period set in the notice, will result in the item
being discarded by the Office.
Section 1.98: Section 1.98(a) is proposed to be amended by revising
paragraph (a)(1) to require a specified format/identification for each
page of an IDS, and that U.S. patents and U.S. patent application
publications be listed in a section separately from citations of other
documents. Section 1.98(a)(1) is specifically proposed to be amended to
require that U.S. patents and U.S. patent application publications must
be listed separately from the citations of other documents. This will
permit the Office to optical character recognition (OCR) scan the U.S.
patent numbers and the U.S. patent application publication numbers such
that the document could be made available electronically to the
examiner to facilitate searching and retrieval of U.S. patents and U.S.
patent application publications on the Office's search databases.
Applicants will comply with this proposed requirement if they use forms
PTO/SB/08A and 08B (or the more commonly used PTO-1449), which provide
a separate section for listing U.S. patents and U.S. patent application
publications. Applicants who do not use these forms for submitting an
IDS must make sure that the U.S. patents and U.S. patent application
publications are listed in a separate section from citations of other
documents.
Current Sec. 1.98(a)(1) does not require the use of a form such as
the PTO/SB/08A and 08B because the Office wishes to provide applicants
the flexibility to use other types of lists. The Office, however,
experiences problems associated with lists that do not properly
identify the application in which the IDS is being submitted: e.g.,
when applicants submit a list that includes copies of PTO-1449 or PTO-
892 forms from other applications. Even though the IDS transmittal
letter has the proper application number, each page of the list does
not include the proper application number, but instead has the
application numbers of the other applications. Should the pages of the
list become separated, the Office cannot associate the pages with the
proper application. Therefore, the rule is proposed to be amended to
require that each page of the list must clearly identify the
application number of the application in which the IDS is being
submitted.
Section 1.98(a)(1) is also proposed to be amended to require that a
list must include a column that provides a space next to each document
listed in order to permit the examiner to enter his or her initials
next to the citations of the documents that have been considered by the
examiner. This provides a notification to the applicant and a clear
record in the application to indicate which documents have been
considered by the examiner for the application. Applicants are strongly
discouraged from submitting a list that includes copies of PTO/SB/08
(PTO-1449) or PTO-892 forms from other applications. A completed PTO/
SB/08 or PTO-1449 form from another application may already have
initials of another examiner and the application number of another
application. The burden is then on the Office to correct the incorrect
information. Furthermore, when the spaces provided on the form have
initials of another examiner, there are no spaces available next to the
documents listed for the examiner of the subsequent application to
provide his or her initials.
Section 1.98(a)(1) is also proposed to be amended to require that
each page of the list includes a heading that clearly indicates that
the list is an information disclosure statement. Since the Office
treats an IDS submitted by the applicant differently than information
submitted by a third-party (e.g., the Office may discard any non-
compliant third-party submission under Sec. 1.99), a heading on each
page of the list to indicate that the list is an IDS would promote
proper treatment of the IDS submitted by the applicant and reduce
handling errors.
Section 1.98(e) is proposed to be amended to provide that the
requirement in Sec. 1.98(a)(2) for a copy of the U.S. patents or U.S.
patent application publications listed in an information disclosure
statement does not apply: (1) In any national patent application filed
after June 30, 2003; (2) in any international application that has
entered the national stage under 35 U.S.C. 371 and Sec. 1.495 after
June 30, 2003; or (3) in any information disclosure statement submitted
in compliance with the Office's electronic filing system. See
Information Disclosure Statements May Be Filed Without Copies of U.S.
Patents and Published Applications in Patent Applications filed after
June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).
Section 1.102: Section 1.102(c) would be amended to provide by rule
for a petition to make an application special without a fee when the
application relates to a counter-terrorism invention. The Office
currently accords "special" status to patent applications relating to
counter-terrorism technology so long as the fee under Sec. 1.17(h) is
included with the petition. Amending Sec. 1.102(c) to cover
applications relating to counter-terrorism inventions will eliminate
the requirement for a fee.
Under current Sec. 1.102(c), there are two types of inventions
that qualify as a basis for making an application special without a fee
(other than on the basis of an applicant's age or health), namely: (1)
Inventions that will materially enhance the quality of the environment;
and (2) inventions that will materially contribute to the development
or conservation of energy resources. It is proposed that inventions
that will materially contribute to countering terrorism be added as a
third type of invention for making an application special without a fee
under Sec. 1.102(c). As set forth in MPEP Sec. 708.02, XI (Inventions
For Countering Terrorism), the types of technology for countering
terrorism include, but are not limited to, systems for detecting/
identifying explosives, aircraft sensors/security systems, and
vehicular barricades/disabling systems. This is appropriate considering
that such inventions may help maintain homeland security. In view of
this proposed amendment, the basis for making applications relating to
counter-terrorism technology special would be transferred from Sec.
1.102(d) to Sec. 1.102(c).
Pursuant to the proposed amendment, Sec. 1.102(c) sets forth two
bases for making an application special: (1) Applicant's age or health;
or (2) that the invention is one of the three qualifying types of
inventions (i.e., the invention is one that will materially enhance the
quality of the environment, materially contribute to the development or
conservation of energy resources, or materially contribute to
countering terrorism). In view of the divergent subject matter covered
by Sec. 1.102(c)(1) and (c)(2), a petition under Sec. 1.102(c)(1) or
(c)(2) must identify the particular basis under which applicant is
petitioning for special status so that the Office can determine how to
evaluate an application's entitlement to special status. In addition,
MPEP Sec. 708.02 indicates that a "petition for special status should
be accompanied by a statement explaining how the invention contributes
to countering terrorism" as defined in MPEP Sec. 708.02, XI,
Inventions For Countering Terrorism. Applicants are reminded that any
identification of a basis for requesting special status and a statement of
compliance with the technology specific requirement for special status must
be based upon a good faith belief that the invention in fact qualifies for
special status. See Secs. 1.56 and 10.18.
Section 1.103: Section 1.103(a) is proposed to be amended to refer
to the petition fee set forth in Sec. 1.17(g) for consistency with the
change to Sec. 1.17. See discussion of Sec. 1.17.
Section 1.105: Section 1.105(a) is proposed to be amended to
redesignate paragraph (a)(3) as paragraph (a)(4) and add new paragraphs
(a)(1)(viii) and (a)(3). Sections 1.105(a)(1)(viii) and (a)(3) contain
additional examples of information requirements and set forth exemplary
formats to portray the use of Sec. 1.105 to seek stipulations, for
example, as to the knowledge of those of ordinary skill in the art, and
to require responses to interrogatories, for example, as to applicant's
understanding of the knowledge of persons of ordinary skill in the
relevant art.
This proposal sets forth a practice for soliciting applicant's
knowledge, such as stipulations to clarify the record by removing
uncontroverted assertions from further consideration, or for soliciting
the applicant's response to specific questions based on the applicant's
knowledge to resolve outstanding issues. The requirement for
information provisions of Sec. 1.105(a)(1) contain several examples,
not by any means exhaustive, of the types of information that may be
required from applicants under Sec. 1.105. The Office is proposing to
add the following examples to Sec. 1.105(a)(1): Technical information
known to applicant concerning the interpretation of the related art,
the disclosure, the claimed subject matter, other information pertinent
to patentability, or the accuracy of the examiner's stated
interpretation of such items. The format of such a requirement would
differ markedly from the format of the existing examples, which
generally require specific documents. New paragraph (a)(3) provides
examples of formats for requirements for information: (1) a requirement
for documents; (2) interrogatories in the form of specific questions
seeking applicant's knowledge; or (3) stipulations in the form of
statements with which the applicant may agree or disagree. The existing
provisions of paragraph (a)(3) would be included in paragraph (a)(4),
which would also recognize that information in the form of opinion
might not be held, and permit a reply to a requirement for opinion to
be considered complete where it is stated that an opinion is not held.
35 U.S.C. 101, 102, 103 and 112 require that claimed subject matter
be among those eligible for patentability, provide utility that is
substantial, credible and specific, be supported by a written
disclosure that teaches how to make and use the invention and be
definite in characterization, and be novel and non-obvious to a person
of ordinary skill in the art. Evidentiary issues surrounding these
patentability conditions frequently arise that require applicant reply
for resolution.
In particular, the knowledge and skill of a person of ordinary
skill in the art is highly pertinent to the resultant utility, to the
degree of disclosure required, and to the degree to which prior art
reads on claimed subject matter in view of inherent aspects and
standard practices and knowledge in the art. However, evidence of what
the indicia would be for that knowledge and skill may be highly
burdensome to collect, and may be particularly wasteful of examiner
resources for certain elementary issues, such as in common matters of
scientific and engineering practice.
The Office is considering the use of stipulations and
interrogatories relating to elements of the prior art, recognitions of
problems to be solved, and rationales for combinations.
Applicant and the examiner may agree on the knowledge exhibited by
persons of ordinary skill in the art, and this may be documented by
formal stipulation. Alternatively, the examiner may articulate specific
questions for applicant response in the form of an interrogatory
designed to elicit the aspects of the knowledge of persons of ordinary
skill in the art pertinent to analyzing patentability arising from the
art of record.
Additional instances where stipulations and interrogatories may be
used to elicit information reasonably necessary to examination include
eliciting: (1) Applicant's interpretation of the distinctions among
claims; (2) applicant's interpretation of the common technical features
shared among all claims, or admission that certain groups of claims do
not share any common technical features; (3) applicant's intention for
the scope of structural and procedural support found in the disclosure
for means or step plus function claims; (4) applicant's interpretation
for precisely which portions of the disclosure provide the written
description and enablement support for each claim element; (5)
applicant's interpretation for the intended breadth of claim terms,
particularly where those terms are not used per se in the
specification; (6) applicant's interpretation of which portions of each
claim correspond to the admitted prior art in the specification; (7)
applicant's interpretation of the specific utility provided by the
claimed subject matter; and (8) applicant's identification of new
subject matter in a continuation-in-part.
All requirements for information under Sec. 1.105 must be
reasonably necessary to treating a matter in an application. As such,
requirements for information must be specific in the articulation of
what is required and must exhibit a reasonable likelihood of being
readily fulfilled by the applicant. The Office's policy of compact
prosecution requires that both examiners and applicants provide the
information necessary to raise and resolve the issues related to
patentability expeditiously. Where information highly pertinent to
patentability determination may be required in a form that is readily
responded to, such as with solicitations of stipulations or
interrogatories directly related to the issues on the record, such a
requirement is consistent with the policies of compact prosecution and
reasonable necessity for making requirements.
Section 1.111: Section 1.111(a)(2) is proposed to be amended to
provide that a sup