United States Patent and Trademark Office OG Notices: 12 October 2004
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, 10, 41, and 104
[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: Final rule.
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 noteworthy
changes in this final rule are: Providing for an alternative signature
on a number of submissions; adjusting the fees for a number of patent-
related petitions to reflect the actual cost of processing these
petitions; codifying the current incorporation by reference practice
and also providing the conditions under which a claim for priority or
benefit of a prior-filed application would be considered an
incorporation by reference of the prior-filed application; expanding
the submissions that can be filed on a compact disc; eliminating the
requirement for copies of U.S. patents or U.S. patent application
publications cited in an information disclosure statement for all
applications; providing that a request for information may contain
interrogatories or requests for stipulations seeking technical factual
information actually known by the applicant; providing that
supplemental replies will no longer be entered as a matter of right;
providing for the treatment of preliminary amendments present as of the
filing date of an application as part of the original disclosure; and
eliminating the requirement in a reissue application for the actual
physical surrender by applicant of the original Letters Patent.
DATES: Effective October 21, 2004, except that: The changes to 37 CFR
1.4, 1.6, 1.10, 1.27, 1.57(a), 1.78, 1.84, 1.115, 1.137, 1.178, and
1.311, and new 37 CFR 1.57(a)(1) and (a)(2) are effective September 21,
2004; and the changes to 37 CFR 1.12, 1.14, 1.17, 1.19, 1.47, 1.53,
1.57(a)(3), 1.59, 1.84(a)(2), 1.103, 1.136, 1.182, 1.183, 1.291, 1.295,
1.296, 1.377, 1.378, 1.550, 1.741, 1.956, 5.12, 5.15, 5.25, and 41.20
are effective November 22, 2004.
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
(www.uspto.gov>). While many of the changes to the patent application 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 rulemaking and patent examination authority set forth in
35 U.S.C. 2(b)(2), 131, and 132. This final rule revises 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 final rule specifically makes changes to the following
sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.12, 1.14, 1.17, 1.19,
1.27, 1.47, 1.52, 1.53, 1.57, 1.58, 1.59, 1.63, 1.69, 1.76, 1.78, 1.83,
1.84, 1.85, 1.91, 1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.121,
1.131, 1.136, 1.137, 1.165, 1.173, 1.175, 1.178, 1.179, 1.182, 1.183,
1.215, 1.291, 1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.550, 1.741,
1.956, 5.12, 5.15, 5.25, 10.18, 41.20, and 104.3. This final rule also
amends title 37 CFR by adding new Sec. 1.57 and removing Sec. 1.179.
The Office is not proceeding with the proposed changes to Secs.
1.55, 1.116, 1.138, 1.502, 1.530, 1.570, 1.902, 1.953, 1.957, 1.958,
1.979, and 1.997 in this final rule. In addition, the Office adopted
proposed changes Secs. 1.704 and 1.705 in a separate rule making.
See Revision of Patent Term Extension and Patent Term Adjustment
Provisions, 69 FR 21704 (Apr. 22, 2004), 1282 Off. Gaz. Pat. Office 100
(May 19, 2004) (final rule).
The following legal advisors and staff of the Office of Patent
Legal Administration may be contacted directly for the matters
indicated:
Hiram Bernstein (703) 305-8713: Secs. 1.136 and 1.324.
Joni Chang (703) 308-3858: Secs. 1.8, 1.10, 1.91, 1.94, 1.98
and 1.111.
Jeanne Clark (703) 306-5603: Secs. 1.55 and 1.98.
Terry Dey (703) 308-1201: Sec. 1.178.
Elizabeth Dougherty (703) 306-3156: Sec. 1.121.
James Engel (703) 308-5106: Secs. 1.12, 1.14, 1.17, 1.53,
1.59, 1.102, 1.103, 1.131, 1.182, 1.183, 1.291, 1.295, 1.296, 1.377,
1.378, 1.741, 5.12, 5.15, 5.25, 41.20, 104.3.
Karin Ferriter (703) 306-3159: Secs. 1.6, 1.19, 1.47, 1.52
(other than (e)(1)(iii) and (e)(3)), 1.58(a) and (c) (other than
landscape), 1.63, 1.69, 1.83, 1.84, 1.85, 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, 1.741, 5.12, 5.15,
5.25, 41.20, 104.3.
Kery Fries (703) 308-0687: Secs. 1.76, 1.704, and 1.705.
Eugenia Jones (703) 306-5586: Secs. 1.8, 1.10, 1.27, 1.55,
1.57(a), 1.78, 1.91, and 1.94.
Michael Lewis (703) 306-5585: Secs. 1.4, 1.19, 1.52(e)(1)(iii)
and (e)(3), 1.57(b)-(f), 1.58(b) and (c) (landscape), and 10.18.
Cynthia Nessler (703) 305-0271: Sec. 1.311.
Mark Polutta (703) 308-8122: Secs. 1.213, and 1.215.
Kenneth Schor (703) 308-6710: Secs. 1.137, 1.173, 1.175,
1.179, 1.550, and 1.956.
Fred Silverberg (703) 305-8986: Sec. 1.115.
The Office published a proposed rule proposing changes to the rules
of practice 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. See
Changes to Support Implementation of the United States Patent and
Trademark Office 21st Century Strategic Plan, 68 FR 53816 (Sept. 12,
2003), 1275 Off. Gaz. Pat. Office 23 (Oct. 7, 2003) (proposed rule).
The Office received thirty written comments (from intellectual property
organizations, law firms, businesses, and patent practitioners) in
response to this notice of proposed rule making. The comments and the
Office's responses to those comments are included in the discussion of
the specific rule to which the comment relates. Comments generally in
support of a change are not discussed.
Discussion of Specific Rules
Section 1.4: Existing Sec. 1.4(d)(1) sets forth the requirements
for personal signatures (meaning handwritten signatures) for most
correspondence with the Office and indicates that original signatures,
or direct or indirect copies of such signatures, are permitted.
Section 1.4(d)(1) is amended to specifically indicate that the
signatures covered under Sec. 1.4(d)(1) are all handwritten signatures
(except for the type of correspondence submitted pursuant to paragraph
(e) of Sec. 1.4) and that dark ink or its equivalent must be used.
Section 1.4(d)(2) is rewritten to provide for the signing of
correspondence by use of an S-signature, which is defined as a
signature between forward slash marks, but not a handwritten signature
as defined in Secs. 1.4(d)(1) or (e) depending on the type of
correspondence the signature is applied to. An S-signature includes any
signature made by electronic or mechanical means, and any mode of
making or applying a signature not covered by either a personally
signed handwritten signature permitted under Secs. 1.4(d)(1) or
(e), or an Electronic Filing System (EFS) character coded signature
permitted under Sec. 1.4(d)(3). The S-signature of Sec. 1.4(d)(2) can
be utilized with correspondence filed in the Office in paper, by
facsimile transmission as provided in Sec. 1.6(d), or via the Office
Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF)
attachment, for a patent application, patent, or a reexamination
proceeding. Paragraphs (d)(2)(i) through (d)(2)(iii) of Sec. 1.4 set
forth the specific requirements for S-signatures. Paragraph (d)(3) of
Sec. 1.4 sets forth the requirements for electronic signatures on
correspondence filed via the Office Electronic Filing System in
character coded form. Thus, any signature other than a personally
applied handwritten signature (which is covered by paragraphs (d)(1) or
(e) of this section) is covered by the provisions of (d)(2) and (d)(3)
of Sec. 1.4. Former paragraph (d)(2) has been redesignated as new
paragraph (d)(4)(i) of Sec. 1.4 in view of the provision of new
paragraphs (d)(2) and (d)(3) of Sec. 1.4 for S-signature and EFS
character coded signature signed documents. Paragraph (d)(4)(ii),
certifications as to the signature, has been added to include
paragraphs (d)(4)(ii)(A) (Of another), (d)(4)(ii)(B) (Self
certification), and (d)(4)(ii)(C) (Sanctions). Paragraph (d)(4)(ii)(A)
requires that a person submitting a document signed by another under
paragraphs (d)(2) or (d)(3) of this section is obligated to have a
reasonable basis to believe that the signature of the person present on
the document was actually inserted by that person, and should retain
evidence of authenticity of the signature. Paragraph (d)(4)(ii)(B)
requires that a person inserting a signature under paragraphs (d)(2) or
(d)(3) of this section in a document submitted to the Office certifies
that the inserted signature appearing in the document is his or her own
signature. Paragraph (d)(4)(ii)(C) provides that violations of the
certifications as to the signature of another or a person's own
signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this
section, may result in the imposition of sanctions under Secs.
10.18(c) and (d). Section 1.4(e) has a conforming amendment based on
the changes made for Sec. 1.4(d)(1) regarding a signature that is
handwritten and the use of permanent ink that is dark or its
equivalent. Provision is also made, Sec. 1.4(h), for the requirement
of ratification or confirmation (which includes submission of a
duplicate document) or evidence of authenticity of a signature where
the Office has reasonable doubt as to its authenticity or where it does
not clearly identify the person signing.
Requirements of Signatures: Section 1.4(d)(1) has always been
defined to cover all handwritten signatures, except for the signatures
on the type of correspondence submitted under paragraph (e) of Sec.
1.4. See Changes in Signature and Filing Requirements for
Correspondence Filed in the Patent and Trademark Office, 57 FR 36034,
36035 (Aug. 12, 1992), 1142 Off. Gaz. Pat. Office 8, 9 (Sept. 1, 1992).
Section 1.4(d)(1) has been amended to confirm this definition and to
make it clear that handwritten signatures are not covered by Secs.
1.4(d)(2) or (d)(3). The term "handwritten" has been added both as a
title for, and in the text of, Sec. 1.4(d)(1) to specifically indicate
the type of signature covered by the paragraph. Additionally, the
permanent ink requirement of the paragraph has been clarified by
reference to "dark ink or its equivalent" in accord with Sec.
1.52(a)(1)(iv). Section 1.4(d)(1) has additionally been amended to
indicate (by specifically excluding Secs. 1.4(d)(2) and (d)(3))
that a handwritten signature may not be provided under the S-signature
provisions of new paragraph (d)(2) of Sec. 1.4 and the EFS character
coded signature provisions of new paragraph (d)(3) of Sec. 1.4.
Section 1.4(d)(2) creates an S-signature, which is defined as a
signature inserted between forward slash marks, but not a handwritten
signature as defined by Secs. 1.4(d)(1) or (e). An S-signature
includes any signature made by electronic or mechanical means, and any
other mode of making or applying a signature not covered by either a
personally signed handwritten signature permitted under Secs.
1.4(d)(1) or (e), or an Electronic Filing System (EFS) character coded
signature permitted under Sec. 1.4(d)(3). The S-signature of Sec.
1.4(d)(2) can be utilized with correspondence filed in the Office in
paper, by facsimile transmission as provided in Sec. 1.6(d), or via
the Office Electronic Filing System as an EFS Tag(ged) Image File
Format (TIFF) attachment, for a patent application, patent, or a
reexamination proceeding. The S-signature must be in permanent dark ink
or its equivalent.
Section 1.4(d)(2)(i) requires that an S-signature must be in
letters, or Arabic numerals, or both. Appropriate spaces and
punctuation (i.e., commas, periods, apostrophes, or hyphens) may be
used with the letters and numbers. The person signing must personally
insert the S-signature between two forward slashes (/* * */).
Section 1.4(d)(2)(ii) requires that if the S-signature is that of a
registered practitioner of record signing pursuant to Sec. 1.33(b)(1),
or a registered practitioner not of record signing pursuant to Sec.
1.33(b)(2), the practitioner must provide his or her registration
number as part of, or adjacent to, the S-signature. A number character
() may only be used as part of the S-signature when appearing
before a practitioner's registration number; otherwise, the number
character may not be used in an S-signature.
Section 1.4(d)(2)(iii)(A) requires that in addition to the S-
signature, a printed or typed name of a signer must be provided
preferably immediately below or adjacent to the person's S-signature.
Section 1.4(d)(2)(iii)(B) requires that the printed or typed name
must be reasonably specific enough so it can readily be ascertained who
has made the S-signature.
Section 1.4(d)(3) establishes the use of an EFS character coded
signature, which is an electronic signature, for correspondence
submitted via EFS in character coded form for a patent application, or
an assignment cover sheet signed consistent with Sec. 3.31. The
electronic signature must consist only of letters of the English
alphabet, or Arabic numerals, or both, with appropriate spaces and
commas, periods, apostrophes, and hyphens as punctuation. Letters of
the English alphabet are the upper and lower case letters A through Z.
Section 1.4(d)(4)(i) establishes that the presentation to the
Office (whether by signing, filing, submitting, or later
advocating) of any paper by a party, whether a practitioner or non-
practitioner, constitutes a certification under Sec. 10.18(b) of this
chapter.
Section 1.4(d)(4)(ii)(A) establishes certifications as to the
signature of another for a person submitting a document signed by
another under paragraphs (d)(2) or (d)(3) of this section. Thus, the
submitting person is obligated to have a reasonable basis to believe
that the person whose signature is present on the document actually
inserted the signature on the document, and the submitting person
should retain evidence of authenticity of the signature.
Section 1.4(d)(4)(ii)(B) establishes that a person inserting a
signature under paragraphs (d)(2) or (d)(3) of this section in a
document submitted to the Office certifies that the inserted signature
appearing in the document is his or her own signature.
Section 1.4(d)(4)(ii)(C) establishes that violations of the
certifications as to the signature of another or a person's own
signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this
section, may result in the imposition of sanctions under Secs.
10.18(c) and (d).
Section 1.4(e) has been amended to clarify that "personally
signed" refers to a handwritten signature and that permanent dark ink
or its equivalent is required.
Paragraph 1.4(h) provides for a ratification, confirmation, or
evidence of authenticity of a signature handwritten pursuant to
Secs. 1.4(d)(1) and (e), and S-signature pursuant to Sec.
1.4(d)(2) and an EFS character coded signature pursuant to Sec.
1.4(d)(3)), such as where the Office has reasonable doubt as to the
authenticity (veracity) of the signature.
Correspondence which is filed using the EFS TIFF image form is
defined to be a black and white image at 300 dots per inch (dpi),
either uncompressed or with CCITT Group 4 compression.
Discussion of signature requirements: The rule change is intended
to facilitate movement of documents between practitioners, applicants,
and the Office. The rule change does not create the ability to file
Official correspondence by electronic mail messages (e.g., e-mail) over
the Internet to the Office. 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://www.uspto.gov/web/offices/dcom/bpai/standing2003May.pdf).
Although the Office will now accept correspondence with S-
signatures or EFS character coded signatures, the Office can only
authenticate what is in the Office records. Applicants and
practitioners must be cognizant of the 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 S-signature or EFS character
coded signed original document.
Section 1.4(d)(1) covers all handwritten signatures, except for the
handwritten signatures on the types of correspondence covered by Sec.
1.4(e). The requirement in Sec. 1.4(d)(1) of permanent dark ink or its
equivalent relates to whether a handwritten signature is compliant and
is not limiting on the type of handwritten signature that is covered by
Sec. 1.4(d)(1). Thus, Sec. 1.4(d)(1) would cover handwritten
signatures in red ink or in pencil; although, under Sec. 1.4(d)(1)
neither would be acceptable since red ink is not dark, and pencil is
not permanent. A scanned image of a handwritten signature filed via the
Office's EFS is permitted as a copy under Sec. 1.4(d)(1)(ii).
A signature applied by an electric or mechanical typewriter
directly to paper is not a handwritten signature, which is applied by
hand. Accordingly, if a typewriter applied signature is used, it must
meet the requirements of Sec. 1.4(d)(2). Adding forward slashes to a
handwritten (or hand-printed) ink signature that is personally applied
will not cause the signature to be treated under Sec. 1.4(d)(2). Thus,
such a signature will be treated under Secs. 1.4(d)(1) or (e) with
the slashes ignored. The end product from a manually applied hand stamp
or from a signature replication or transfer means (such as by pen or by
screen) appears to be a handwritten signature, but is not actually
handwritten, and would therefore be treated under Sec. 1.4(d)(2).
Paragraph 1.4(d)(2)(i) defines the content of an S-signature for
correspondence submitted to the Office in paper or by facsimile
transmission or via the Office EFS as a TIFF attachment. The Office is
adopting a standard of only letters, Arabic numerals, or both, with
appropriate spaces and punctuation (i.e., commas, periods, apostrophes,
or hyphens) as the S-signature. "Letters" include English and non-
English alphabet letters, and text characters (e.g., Kanji). Non-text,
graphic characters (e.g., a smiley face created in the True Type Wing
Dings font) are not permitted. "Arabic numerals" are the numerals 0,
1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in
the United States.
The Office recognizes that commas, periods, apostrophes, and
hyphens are often found in names and will therefore be found in many S-
signatures. These punctuation marks and appropriate spaces may be used
with letters and Arabic numerals in an S-signature. A sample S-
signature including punctuation marks and spaces, between two forward
slashes, is: /John P. Doe/. Punctuation marks, per se, are not
punctuation and are not permitted without proper association with
letters and Arabic numerals. An S-signature of only punctuation marks
would be improper (e.g., / - - -/). In addition, punctuation marks, such
as question marks (e.g., /???/), are often utilized to represent an
intent not to sign a document and may be interpreted to be a non-bona
fide attempt at a signature, in addition to being improper.
The S-signature must be placed between two forward slashes. This is
consistent with the rule adopted in the Trademark Office, and the
international standard. See PCT Annex F, section 3.3.2. The S-signature
between two forward slashes cannot contain any additional forward
slashes. The presentation of just letters and Arabic numerals as an S-
signature without the S-signature being placed between two forward
slashes will be treated as an unsigned document. Script fonts are not
permitted for any portion of a document except the S-signature. See
Sec. 1.52(b)(2)(ii). Presentation of a typed name in a script font
without the typed name being placed between the required slashes does
not present the proper indicia manifesting an intent to sign and will
be treated as an unsigned document.
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 two forward
slashes as an S-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 and must avoid placement of any letters
or Arabic numerals between two forward slashes in a signature area.
To accommodate as many varieties of names as possible, a signer may
select any combination of letters, Arabic numerals, or both, for his or
her S-signature under Sec. 1.4(d)(2)(i).
Paragraph 1.4(d)(2)(i) also defines who can insert an S-signature
into a document. Section 1.4(d)(2)(i) requires that a person, which
includes a practitioner, must insert his or her own signature using
letters and/or Arabic numerals, with appropriate commas, periods,
apostrophes, or hyphens as punctuation and spaces. The "must insert
his or her own signature" requirement is met by the signer directly
typing his or her own signature on a keyboard. The requirement does not
permit one person (e.g., a secretary) to type in the signature of a
second person (e.g., a practitioner) even if the second person directs
the first person to do so. 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 S-signature.
The person signing the correspondence must insert his or her own S-
signature with a first single forward slash mark before, and a second
single forward slash mark after, the S-signature (e.g., /Dr. John P.
Doe, Jr./). Additional forward slashes are not permitted as part of the
S-signature.
For consistency purposes, and to avoid raising a doubt as to who
has signed, the same S-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 in the body of the document is consistent
with how the document is S-signed. Knowingly adopting an S-signature of
another is not permitted.
While an S-signature need not be the name of the signer of the
document, the Office strongly suggests that each signer use an S-
signature that has his or her full name. The Office expects that where
persons do not sign with their name it will be because they are using
an S-signature that is the usual S-signature for that person, which is
his or her own signature, and not something that is employed to
obfuscate or misidentify the signer. Titles may be used with the
signer's S-signature and must be placed between the slash marks (e.g.,
/Dr. John Doe/), or with the printed or typed version of the name.
Paragraph 1.4(d)(2)(ii) requires that a practitioner signing
pursuant to Secs. 1.33(b)(1) or 1.33(b)(2) of this part must place
his or her registration number, either as part of, or adjacent, his or
her S-signature. A number character () may only be used in an
S-signature if it is prior to a practitioner's registration number that
is part of the S-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 and
should not be supplied to avoid confusion as to which basis the
practitioner is signing, e.g., as a practitioner or as the assignee.
The requirement that an S-signature for practitioners be
accompanied by a registration number is consistent with Article 9(1) of
the Patent Law Treaty (June 1, 2000) (PLT) and Sec. 1.34.
The space provided for a registration number and a printed/typed
signer's name on some Office (fillable) forms is above the space
provided for a signature. The space provided for the registration
number and printed/typed signer's name is compliant with the
"adjacent" requirements of Sec. 1.4(d)(2)(ii) discussed above, and
Sec. 1.4(d)(2)(iii) discussed below.
To ensure that it will always be clear who has made the S-
signature, Sec. 1.4(d)(2)(iii) requires that the signer's printed or
typed name (i.e., William Jones) always must be presented adjacent or
below (preferred) the S-signature (Sec. 1.4(d)(2)(iii)(A)), and that
it be reasonably specific enough so that the identity of the signer can
be readily recognized (Sec. 1.4(d)(2)(iii)(B)).
Paragraph 1.4(d)(2)(iii)(A) sets forth the requirement that the
signer's name must be presented in printed or typed form either
immediately below (preferred) or adjacent to the S-signature. The
printed or typed name requirement is intended to describe any manner of
applying the signer's name to the document, including by a typewriter
or machine printer. It could include a printer (mechanical, electrical,
optical, etc.) associated with a computer or a facsimile machine but
would not include manual or hand printing. See Sec. 1.52(a)(1)(iv).
The printed or typed name may be inserted before or after the S-
signature is applied, and it does not have to be inserted by the S-
signer.
A printed or typed name appearing in the letterhead or body of a
document is not acceptable as the presentation of the name of the S-
signer. To accommodate as many S-signatures as possible, a signer may
select any combination of letters, Arabic numerals, or both for his or
her signature. The flexibility in selecting combinations of letters
and/or Arabic numerals for S-signatures means that the identity of the
signer may not be clear from the S-signature if it is not a 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 S-signature and an identification of the name of the
signer. Similarly, where the S-signature, if it is not the signer's
name, appears to represent an identifiable person with a name different
in some respect from the signer, the identity of the signer would not
be known. For example, a practitioner named "William Jones" S-signs
an amendment "/B. Jones/" which also has a certificate of
transmission signed by a paralegal with the name and signature "Bob
Jones." In this situation, the S-signature on the amendment would not
clearly identify "William Jones" as the S-signer.
In view of the flexibility allowed by the S-signature, the
requirement of Sec. 1.4(d)(2)(iii)(B), that the printed or typed name
of Sec. 1.4(d)(iii)(A) must be reasonably specific enough so that the
identity of the signer can be readily recognized, becomes very
significant. While the Sec. 1.4(d)(2)(iii)(B) requirement is also
intended to provide some flexibility (e.g., Bob may possibly be used
instead of Robert), the ultimate issue is whether the Office can
clearly identify who S-signed the document and, if not, Sec. 1.4(h)
may be triggered.
The proposed requirements relating to the usage of a signer's
actual name, or complete name, or the capitalization of only the family
name have not been included in the final rule because the underlying
requirement relating to the presentation of a name is already addressed
in the existing rules dealing with the document that is being signed,
and therefore, such requirements are not necessary in Sec. 1.4. For
example, the requirements for a declaration under Sec. 1.63 have not
been changed, nor are any changes in Sec. 1.4 intended to supersede
the requirements of Sec. 1.63. An S-signature may be used to sign a
declaration under Sec. 1.63 if all of the requirements of Sec. 1.63
are met.
As with signatures to be treated under Sec. 1.4(d)(2), signatures
to be treated under Sec. 1.4(d)(3) must be placed within forward slash
marks.
In Sec. 1.4(d)(3), the "Character coded" form is the terminology
of PCT Annex F used to describe an EXtensible Markup Language (XML)
document created by filling in an EFS menu. The reason that the Office
is limiting the electronic signature for correspondence in character
coded text form submitted via the EFS to only letters of the English
alphabet, or Arabic numerals, or both (with appropriate spaces and
commas, periods, apostrophes, and hyphens as punctuation) is that if
the correspondence containing non-English letters or characters is
opened by the Office, these non-English letters or characters when
rendered may appear as a "box" or translated to a character in a
different font and language if the character setting used by the author
of the correspondence is not compatible with the character setting used
by the Office.
Thus, the content requirements that letters in an electronic
signature for correspondence submitted via the EFS in character coded
text form under Sec. 1.4(d)(3) (must be in the English language) is
more stringent than the letter requirements (letters in any language
are permitted) under Sec. 1.4(d)(2). Note that S-signatures on
attachments in TIFF images submitted via the EFS are governed by Sec.
1.4(d)(2) rather than Sec. 1.4(d)(3).
The electronic signature permitted for EFS in Sec. 1.4(d)(3),
however, does not have a requirement for the presentment of the
signer's name in printed or typed form as set forth in Sec.
1.4(d)(2)(iii)(A) and is therefore less stringent in that respect. This
is because the EFS preparation protocol for creating a document in EFS
requires one to insert information (an electronic signature) into a
data field on a screen but there may be no accompanying data field for
inserting a name either "adjacent or immediately below" the
electronic signature, and therefore such a requirement has not been
made. There is a field in a screen in EFS, however, for typing in the
name of the electronic signature signer so it is not necessary to
include a separate requirement for it in the rule.
Documentation about the EFS and a description of electronically
signing an EFS document is in the EFS Submission User Manual - ePAVE for
New Utility which is available at: http://www.uspto.gov/ebc/efs/
downloads/document.htm.
Section 1.4(d)(4)(i) contains the previous reference to Sec. 10.18
certifications regarding certifications made on presenting a paper to
the Office.
For paper documents utilizing an S-signature, the previous mode of
authenticating handwritten signatures, such as by comparing handwritten
signatures, is not available.
The question may be raised as to whether a person's S-signature was
in fact inserted in a document by that person or some other person. To
address this authentication concern, the rule has been revised to
include Secs. 1.4(d)(4)(ii)(A) and (B) which set out
certifications that apply to persons inserting an S-signature, or an
EFS character coded signature, as well as to persons who submit
documents with such signatures inserted by another person. Section
1.4(d)(4)(ii)(A) also includes a provision for retention of evidence of
authenticity.
Section 1.4(d)(4)(ii)(A) adds the requirement that a person
submitting a document signed by another under Secs. 1.4(d)(2) and
(3) is obligated to have a reasonable basis to believe that the person
whose signature is present on the document was actually inserted by
that person. Such reasonable basis does not require an actual knowledge
but does require some reason to believe the signature is appropriate.
For example, where a practitioner e-mails a Sec. 1.63 declaration to
an inventor for signature by the inventor and receives an executed
declaration by the inventor in return from the inventor, reasonable
basis would exist. Where an assignee was involved in the transmission
of the declaration form and/or the executed declaration, an additional
showing of chain of custody (e.g., e-mail chain with attached documents
from the inventor to the assignee to the practitioner filing the
declaration) involving the assignee would be required. Additionally,
evidence of authenticity should be retained. This may involve retaining
the e-mails sent to the inventor and any cover letter or e-mail (with
the signed document as an attachment) back to the practitioner from the
inventor in the example relating to execution of a Sec. 1.63
declaration.
Section 1.4(d)(4)(ii)(B) adds the requirement that the person
inserting a signature under paragraphs (d)(2) or (d)(3) certifies that
the inserted signature appearing in the document is his or her own
signature. This is meant to prohibit a first person from requesting a
second person to insert the first person's signature in a document.
While the certification is directed at the person inserting another's
signature, the person requesting the inappropriate insertion may also
be subject to sanctions.
Section 1.4(d)(4)(ii)(C) provides that violations of the
certification as to the signature set forth in paragraphs (d)(4)(ii)(A)
and (B) of this section, may result in the imposition of sanctions
under Secs. 10.18(c) and (d).
Section 1.4(e) has been amended to conform to the changes made to
Sec. 1.4(d)(1) in regard to the signature being handwritten and the
permanent ink being a dark ink or its equivalent.
Pursuant to Sec. 1.4(h), the Office may additionally inquire in
regard to a signature so as to identify the signer and clarify the
record where the identity of the signer is unclear. The inquiries
concerning evidence of 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 S-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 or where a printed or typed name accompanies
the S-signature or the EFS character coded signature but the identity
of the signer is unclear. In such cases, the Office may require
ratification or confirmation of a signature. Ratification requires the
person ratifying to state he/she personally signed the previously
submitted document as well as, if needed, the submission of a compliant
format of the signature. Confirmation includes submitting a duplicate
document, which is compliantly signed if the previous signature was
noncompliant (as opposed to unclear).
In lieu of ratification, the Office may require a resubmission of a
properly signed duplicate document. Resubmission of a document may be
required, for example, where ratification alone is inappropriate, such
as where the image of the signature is of such poor quality (e.g.,
illegible font) that the Office is unable to store or reproduce the
document with the signature image.
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 and, preferably, an Application Data Sheet (ADS). See Manual of
Patent Examining Procedure Sec. 605.04(c)(8th. ed. 2001) (Rev. 2, May
2004) (MPEP) and Advance Notice of Change to MPEP 605.04(b), (c) and
(f) - Application Data Sheets Are Strongly Recommended When Inventor
Information is Changed, 1281 Off. Gaz. Pat. Office 54 (Apr. 13, 2004).
In addition, the Office may require evidence of authenticity where
the Office has reasonable doubt as to the authenticity (veracity) of
the signature. Evidence of authenticity may include evidence
establishing a chain of custody of a document from the person signing
the document to the person filing the document. Proper evidence of a
chain of custody will aid in avoiding the impact of repudiation of a
signature.
Where there has been a bona fide attempt to follow the rule, but
where there is some doubt as to the identity of
the signer of a signed document, the Office may require ratification of
the signature. Note, ratification would only be an effective remedy if
the signer was a proper party to have executed the document to be
ratified. For example, a practitioner of record may ratify his or her
signature on an amendment, but not the signature of a secretary who is
not a practitioner or inventor in the application. A registered
practitioner may, however, ratify the amendment made by another
registered practitioner but may not ratify a document required to be
signed by an inventor, such as a Sec. 1.63 declaration. Similarly, an
inadvertent typographical error or simple misspelling of a name will be
treated as a bona fide attempt to follow the rule, which would require
ratification only where there is some doubt as to the identity of the
signer rather than be treated as an unsigned paper requiring
resubmission. Where there is an obvious typographical error so that the
Office does not have some doubt as to the identity of the signer (and
therefore notification to applicant is not needed), further action by
applicant would not be required and, where appropriate, the obvious
error will be noted in the record.
The inadvertent failure to follow the format and content of an S-
signature will be treated as a bona fide attempt at a signature but the
paper will be considered as being unsigned correspondence. Examples of
correspondence that will be treated as unsigned are: (1) the S-
signature is not enclosed in forward slashes; (2) the S-signature is
composed of non-text graphic characters (e.g., a smiley face) and not
letters and numerals; and (3) the S-signature is not a name and there
is no other accompanying name adjacent or below the S-signature so that
the identity of the signer cannot be readily recognized.
Treating the document as being unsigned could have varying results
dependent on the nature of the document. For example, in new
applications, treating an improperly signed Sec. 1.63 oath or
declaration as a missing part could result in the imposition of a
surcharge and a two-month period for reply (with extensions of time
possible) to supply a properly signed new oath or declaration.
Ratification, in this instance, would not be appropriate. See Sec.
1.53(f)(1). Other correspondence, such as amendments, could be treated
under the procedures for unsigned amendment documents set forth in MPEP
Secs. 714.01 and 714.01(a) and a one-month time period for reply
be given for either ratification or submission of a duplicate amendment
which is properly signed.
If the signer, after being required to ratify or resubmit a
document with a compliant signature, repeats the same S-signature in
reply without appropriate correction, the reply will not be considered
to be a bona fide attempt to reply, and no additional time period will
be given to submit a properly signed document.
Existing Sec. 10.18(a) directed towards certifications made upon
the signing of a document submitted to the Office is focused narrowly
on the "personally signed" documents containing the handwritten
signature defined in Sec. 1.4(d)(1). As the intent of the Office is to
provide an equivalent alternative means for signing a document by the
use of S-signatures and EFS character coded signatures, the Office is
herein promulgating a conforming change to Sec. 10.18(a) to cover S-
signatures.
Comment 1: One comment suggested broadening the rule to permit
additional documents to be electronically signed.
Response: The comment is not adopted. The comment is interpreted to
mean that electronic mail messages should be permitted as a mode of
correspondence with the Office, which is not a signature issue.
Electronic mail messages are not generally permitted, but this is for a
number of reasons, with the requirement for signature not being a
significant factor. Among the issues which remain unresolved with
respect to accepting electronic mail messages are secure transmission,
compatible character/font sets and file formats for proper rendering of
the message and receipt of documents infected with a virus. Documents
that are required by statute to be in a particular form, such as an
oath, cannot be authorized by a rule change to be in a different form,
e.g., a notarized oath changed to an electronic signature. Because
Sec. 1.4 makes no provision for an electronic notarization, an oath
will not be able to be executed as a result of these changes to Sec.
1.4. A declaration that does not require notarization, however, can be
electronically signed.
Comment 2: One comment suggests that the Office allow for
electronic mail message submissions with simultaneous verification by
postal mail.
Response: The comment is not adopted. The manner of submitting
correspondence such as by electronic mail message, is not addressed by
this rule. Electronic submission of documents is being addressed in
guidelines related to the electronic filing system. In any event,
having to match and compare duplicate submissions (paper and electronic
mail) would create a significant processing and analysis burden on the
Office.
Comment 3: One comment suggests clear demarcation of electronic
signature (now referred to as an S-signature) by statement rather than
use of back-slashes, etc.
Response: The comment is not adopted. The comment proposal requires
analysis of text beyond simple inspection of a document for the
presence or absence of a signature. It is not clear from the comment
what is a "clear" statement of signature or how typing a statement
that a typed name is a signature can be less burdensome than typing
slashes. Further, the signature format employing slash characters is
the standard adopted by the PCT and the Office intends to be consistent
with international standards.
Comment 4: One comment suggests the Office should afford the public
more flexibility with respect to the format and content of an
electronic signature (now referred to as an S-signature).
Response: The comment is adopted in-part. The comments requested
more flexibility in the format (e.g., not being limited to slashes,
capitalization), and less onerous consequences for deviations from the
specified format. The Office will not adopt any changes with respect to
permitting a format that does not include slashes so as to be
consistent with the PCT standard for electronic signatures and which
can be readily identified as an S-signature. The final rule, however,
does not contain a requirement for the identification of first and
family names, and capitalization will not be required to indicate the
family name, even though what is a family name may vary in different
cultures. Also, the format of providing the signer's name is made less
restrictive (e.g., there will not be a requirement to separately
indicate the actual name when typed or printed) to also reduce the
possibility for format errors.
The final rule also adopts a more flexible approach that allows
both practitioners and non-practitioners to sign any combination of
letters and Arabic numerals. The flexibility for practitioners to
deviate from their registered name will be permitted. Similarly, the
requirement for the signature to contain an actual complete name has
not been adopted, just like there will not be a requirement to identify
the first and family names by capitalization as discussed for format in
the previous comment. The less restrictive content requirements reduce
the possibility for content errors.
Comment 5: One comment suggests the Office should allow a time
period to correct an in correct electronic signature (now referred to as
a S-signature) without penalty. There is a concern that failure to adhere
to an electronic signature format will result in treatment as an
unsigned paper.
Response: The comment is adopted in-part. The comments expressed
the concern that an S-signature that was made with a good faith effort
but fails to conform to an actual or complete name may be treated as
unsigned with significant adverse consequences. The final rule has been
modified to permit deviations from an actual or complete name where the
identity of the signer can still be readily determined. Examples of
such deviations are where a first name of "Bob" is substituted for an
actual name of "Robert," "Peggy" for an actual name of
"Margaret," "Mike" for an actual name of "Michael." In the
absence of some other source of confusion, the mere transposition of
letters, or the presence or absence of a letter in a name will not be
treated as a nonconforming signature. Similarly, where a practitioner's
registration number contains a transposition of numerals or a single
erroneous digit, and the identity of the practitioner can be determined
from the name and the balance of the registration number, the S-
signature will not be treated as an improper S-signature.
Where a document is treated as being unsigned, the granting of any
period for curing the defect will be handled under existing Office
practices for unsigned documents.
Comment 6: One comment suggests that "actual name" versus
"complete name" in proposed Sec. 1.4(d)(1)(iv)(A) is confusing.
Response: The comment is adopted. The rule is clarified by removing
"actual" and "complete" from the name requirement. Any special
requirements for the presentation of a name are already addressed by
the underlying document and rules pertaining thereto, e.g., oath or
declaration, see Sec. 1.63(a)(2).
Comment 7: One comment suggests the requirement to "personally
insert" electronic signature (now referred to as an S-signature)
should permit insertion under practitioner's direction/control.
Response: The comment is not adopted. The requirement that the
person signing must insert his or her own S-signature is essentially
the same as the "personally insert" requirement of Rule 10.18 (which
is not being amended by this rule making) and Sec. 1.4(d)(1) for
handwritten signatures.
Comment 8: One comment suggests that the USPTO should dictate order
of names not capitalization. Another comment suggests that the USPTO
should set a standard for the presentation of a name as a preference
not a requirement.
Response: The comment is adopted in part. The capitalization
requirement is not included in the final rule and any requirement for
the order of names is addressed by the rules pertaining to the
underlying document, e.g., oath or declaration under Sec. 1.63.
Comment 9: One comment suggests that the proposed rule is detailed,
burdensome, and easily inadvertently violated, having draconian
penalties. The rule should merely require applicant to make certain
that the document has been signed.
Response: The comment is adopted in part. As explained in the
response to the comments above, the detailed requirements for family
name and capitalization have not been included in the final rule to
reduce the possibility of inadvertent violation. The signature is not
required to be the signer's name and the printed or typed name need
only be reasonably specific enough to identify the signer. The comment
that "applicant make certain that the document has been signed" is
more burdensome on an applicant than the proposed rule and final rule.
The final rule includes certification requirements as to the signature
but does not require an investigation as to the actual signing where
there is reasonable basis to believe the document has been signed
appropriately by the person whose signature is on the document. For
example, a practitioner receiving an electronic mail message from an
inventor with a declaration S-signed by the inventor attached to the e-
mail may satisfy the certification requirements in the final rule,
whereas if the comment were adopted (in whole), the attorney would have
needed to investigate further before it could be submitted.
Comment 10: One comment suggests that in some countries individuals
do not have both a family and a given name, e.g., India.
Response: The comment is adopted. The requirements with respect to
specifying the first and family names is not included in the final
rule. Any special requirements for the presentation of a name are
already addressed by the underlying document and rules pertaining
thereto, e.g., oath or declaration, see Sec. 1.63(a)(2).
Comment 11: One comment suggests a more detailed procedure is
necessary for the inventor to change his/her name on the record.
Response: The comment is not adopted. The rule change does not
affect current practice with respect to name changes, which are
addressed in MPEP Secs. 605.04(c), 719.02(b).
Comment 12: One comment suggests opposition to all e-initiatives.
Response: The comment is not adopted. The change is in support of
the Administration's e-government initiatives and principles espoused
in the Government Paperwork Elimination Act (GPEA) to promulgate
procedures for electronic signatures. See Pub. L. 105-277, Secs.
1701 through 1710, 112 Stat. 2681, 2681-749 through 2681-751 (1998).
Section 1.6: Section 1.6(d)(4) is 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.
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 submitted 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.
Applicants should note that the use of facsimile submission of drawings
will not cause the submission to be processed faster than the Office
would process a paper drawing received on the same day as the facsimile
submission. The facsimile submission must first be rendered into paper
form and then processed as would a submission initially made in paper.
Section 1.6(e) is 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) have been transferred to Sec. 1.10 along with some changes.
Situations in which "Express Mail" is returned or refused by the
United States Postal Service (USPS) have been specifically addressed in
Sec. 1.10(g) and (h). Section 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.
Comment 13: Several comments asked the Office to identify what
drawings would be acceptable when transmitted
by facsimile, whether applicants would be informed when a facsimile
transmission of a drawing was unacceptable, and whether there would be
any adverse term adjustment consequences of transmitting a drawing with
too much detail to the Office.
Response: The Office cannot predict what drawings will be
acceptable when transmitted by facsimile, but can provide applicants
with a simple self test. If an applicant is not certain that a drawing
submitted by facsimile will be of an acceptable quality, the applicant
can test the quality of the drawing either by transmitting by facsimile
the drawing to themselves, or by photocopying the drawing. If the
facsimile-transmitted or copier drawing looks the same as the original,
and the original was legible, then the drawing is extremely likely to
be acceptable when transmitted by facsimile to the Office. Facsimile-
transmitted and photocopied photographs generally bear little
resemblance to the document intended to be submitted, and transmitting
photographs by facsimile should be avoided. Drawings such as flow
charts, on the other hand, generally do reproduce well, and may be
accurately transmitted by facsimile.
If the Office receives drawings that do not have satisfactory
reproduction characteristics (Sec. 1.84(l)), or that are illegible
once scanned, the Office will inform the applicant that the drawings do
not comply with Sec. 1.84. If the Office action in which applicant is
required to supply corrected drawings is a Notice of Allowability, and
drawings are filed after the mailing date of the Notice of Allowance
(which is generally mailed with the Notice of Allowability), any patent
term adjustment will be reduced pursuant to Sec. 1.704(c)(10).
Comment 14: One comment noted that the proposed rule contained text
that had been previously removed from Sec. 1.6(d)(4) (Reorganization
of Correspondence and Other Provisions, 68 FR 48286 (Aug. 13, 2003),
1274 Off. Gaz. Pat. Office 59 (Sept. 9, 2003) (final rule)), and
suggested that "Drawings submitted under Secs. 2.51, 2.52, or
2.72 and" be deleted.
Response: The suggestion has been adopted.
Section 1.8: Section 1.8(a) is 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). The amendment to
Sec. 1.8(a) clarifies that the list enumerated in Sec. 1.8(a)(2) is
not exhaustive, and the provisions of Sec. 1.8 do not apply to the
time periods or situations 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 [patent term adjustment] calculation."
Section 1.8(b) is also 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." Recently, many applicants
experienced substantial delays in delivery of their correspondence by
the USPS to the Office. These applicants did not wish to wait until the
application was held to be abandoned before notifying the Office of the
previous mailing of the correspondence and supplying a duplicate copy
of the correspondence and requisite statement in accordance with Sec.
1.8(b)(3).
With the amendment to Sec. 1.8(b), in the event that
correspondence may be considered timely filed because it was mailed or
transmitted in accordance with Sec. 1.8(a), but was not received in
the Office after a reasonable amount of time had elapsed (e.g., more
than one month from the time the correspondence was mailed), 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
previously submitted correspondence, and supplying a duplicate copy and
requisite statement attesting on a personal knowledge basis or to the
satisfaction of the Director to the previous timely mailing or
transmission. If the person signing the statement did not sign the
certificate of mailing, then the person signing the statement should
explain how they have firsthand knowledge of the previous timely
mailing or transmission. Such a statement should be filed promptly
after the person becomes aware that the Office has not received the
correspondence. Thus, although a statement attesting to the previous
timely mailing or transmission of the correspondence is required,
filing a petition to withdraw the holding of abandonment would not be
necessary in such circumstance. The amendment to Sec. 1.8(b) provides
applicants an expedited procedure to resolve delayed mail problems.
Before notifying the Office of a previously submitted
correspondence that appears not to have been received by the Office,
applicants are encouraged to check the private Patent Application
Information Retrieval (PAIR) System (which can be accessed over the
Office's Internet Web site) to see if the correspondence has been
entered into the application file. The private PAIR system is a system
which enables applicants to read the Office's electronic records,
including the Image File Wrapper (IFW), 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 private PAIR.
The Office proposed to amend Secs. 1.8(b), 1.17, 1.116, 1.137,
1.502, 1.570, 1.902, 1.953, 1.957, 1.958, 1.979, and 1.997 (and
relevant subheadings) to make clear the distinction between termination
of a reexamination proceeding and the conclusion or limiting of
prosecution in a reexamination proceeding and to make other technical
changes to the reexamination rules. The Office is not proceeding with
these changes in this final rule; however, these changes continue to be
considered as to a future final rule making directed to miscellaneous
technical reexamination rule changes.
Comment 15: One comment asked what date would be used as the date
of receipt, when a duplicate copy of the paper was filed with a showing
under Sec. 1.8. The comment continued to ask what date would be used
if the original paper was subsequently found. In addition, the Office
was asked how the applicant would know whether the paper was received.
Response: The date of receipt that would be entered into Office
records would be the actual date of receipt of the duplicate paper,
unless applicant established that the papers were actually received on
an earlier date with a post card receipt or other evidence. If the
Office accepts a paper pursuant to Sec. 1.8, and the original paper
later is located (as where the original paper was originally placed in
the wrong application file), then the original paper will be treated as
a duplicate paper and will not control the timing of subsequent actions
such as the timing of the filing of an appeal brief. Any applicant
having a doubt about the due date of an appeal brief should either
assume that the brief is due on the earlier date, or confirm with the
examiner that a later date is appropriate. When applicants use private
PAIR to view the image file wrapper, applicants will have generally the
same information about the patent application that the examiner has.
Accordingly, an applicant can know about the same time as an examiner
when a paper has been received. Applicants can also include post card
receipts or use facsimile transmissions in order to obtain additional
information about when a paper is received by the Office. The procedure
of Sec. 1.8 is available not just when the Office did not receive a paper,
but when the paper has not been received in the appropriate location (e.g.,
where applicant transposes digits in the application number on the
application papers, and the Office does not recognize the error).
Section 1.10: Section 1.10 is 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. Therefore, the
procedures 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
procedures for the situation in which a post office refuses to accept
the deposit of mail for delivery by "Express Mail" Service and the
situation 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 remedying the situation where the
United States Postal Service (USPS) refuses to accept the deposit of
mail for delivery by "Express Mail" as contained in the notice has
now been incorporated into Sec. 1.10(h).
The Office's prior framework to address postal emergencies was
detailed in Sec. 1.6(e), "Interruptions in U.S. Postal Service."
Section 1.6(e) provided 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 filed
in accordance with Sec. 1.1(a) 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 transferred to Sec. 1.10 along with some changes.
Sections 1.10(g) and (h) specifically address situations in which
"Express Mail" is returned or refused by the USPS due to an
interruption or emergency in "Express Mail." Section 1.10(i), as
revised, is similar to Sec. 1.6(e) and addresses situations where
there is a Director designated interruption or emergency in "Express
Mail" service.
Section 1.10(g) is added to provide that any person who mails
correspondence addressed as set out in Sec. 1.1(a) to the Office with
sufficient postage utilizing the "Express Mail Post Office to
Addressee" service of the USPS, but has the correspondence returned by
the USPS due to an interruption or emergency in "Express Mail"
service, may petition the Director to consider the correspondence as
filed on a particular date in the Office. This procedure does not apply
where the USPS returned the "Express Mail" for a reason other than an
interruption or emergency in "Express Mail" service such as the
address was incomplete or the correspondence included insufficient
payment for the "Express Mail" service. 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. The Office may require additional evidence to determine if
the correspondence was returned by the USPS due to an interruption or
emergency in "Express Mail" service. For example, the Office may
require a letter from the USPS confirming that the return was due to an
interruption or emergency in the "Express Mail" service.
Section 1.10(h) is added to provide that any person who attempts to
mail correspondence addressed as set out in Sec. 1.1(a) to the Office
with sufficient postage utilizing the "Express Mail Post Office to
Addressee" service of the USPS, but has the correspondence refused by
an employee of the USPS due to an interruption or emergency in
"Express Mail" service, may petition the Director to consider the
correspondence as filed on a particular date in the Office. This
procedure does not apply where the USPS refused the "Express Mail"
for a reason other than an interruption or emergency in "Express
Mail" service such as the address was incomplete or the correspondence
included insufficient payment for the "Express Mail" service. In
addition, this procedure does not apply because an "Express Mail"
drop box is unavailable or a Post Office facility is closed. 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 document(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. The
Office may require additional evidence to determine if the correspondence
was refused by an employee of the USPS due to an interruption or emergency
in "Express Mail" service. For example, the Office may require a letter
from the USPS confirming that the refusal was due to an interruption or
emergency in the "Express Mail" service.
Section 1.10(i) is added to provide that any person attempting to
file correspondence by "Express Mail" that was unable to be deposited
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 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.
In addition, the petition must indicate 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.
Section 1.10(i) applies only when the Director designates 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
Sec. 1.10(i) should be filed. When "Express Mail" was suspended in
November of 2001, 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" and any future postal
emergencies will be handled similarly, with the Office providing
procedures for applicants to follow.
Comment 16: One comment suggested that the Office amend Sec.
1.10(i) to read "Any person attempting to file correspondence by
Express Mail who was unable to deposit the correspondence due to any
emergency or interruption of "Express Mail" service may petition the
Director to consider such correspondence as filed on the date applicant
attempted to file."
Response: The suggestion has not been adopted. 35 U.S.C. 21(a)
provides that the "Director may by rule prescribe that any paper or
fee required to be filed in the Patent and Trademark Office will be
considered filed in the Office on the date on which it would have been
deposited with the United States Postal Service but for postal service
interruptions or emergencies designated by the Director." The Director
previously designated an emergency or interruption in the "Express
Mail" service by publishing a notice in the Official Gazette Notices,
and by posting the announcement on the Office's Internet Web site
(www.uspto.gov). See, e.g., United States Postal
Service Interruption and Emergency Terminated, 1274 Off. Gaz. Pat. Office
105 (Sept. 16, 2003), United States Postal Service Interruptions, 1251 Off.
Gaz. Pat. Office 55 (Oct. 9, 2001), United States Postal Service
Interruption and Emergency in Connecticut, 1245 Off. Gaz. Pat. Office 16
(Apr. 13, 2001), United States Postal Service Interruption and Emergency
in the State of California, 1176 Off. Gaz. Pat. Office 74 (July 18, 1995),
and United States Postal Service Interruption and Emergency in Los Angeles,
1160 Off. Gaz. Pat. Office 39 (Mar. 8, 1994). The Office is amending
Sec. 1.10 to provide that the Director is designating certain events
as a postal service interruption or emergency by rule (Sec. 1.10(g) or
(h)). The Director will also continue to designate any other emergency
or interruption in the "Express Mail" service on a case-by-case basis
by publishing a notice in the Official Gazette Notices (Sec. 1.10(i)),
and by posting the announcement on the Office's Internet Web site
(www.uspto.gov). The Office does not consider amending the rule as
suggested to be appropriate because 35 U.S.C. 21(a) requires that the
postal service interruption or emergency be designated by the Director.
Section 1.12: Section 1.12(c)(1) is 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. This amendment to Sec.
1.12 was omitted from the notice of proposed rule making; however, the
Office proposed to amend Sec. 1.17 to make the petition fee specified
in Sec. 1.17(g) applicable to petitions under Sec. 1.12 for access to
an assignment record in the notice of proposed rule making. See Changes
to Support Implementation of the United States Patent and Trademark
Office 21st Century Strategic Plan, 68 FR at 53822, 53847, 1275 Off.
Gaz. Pat. Office at 28, 50.
Section 1.14: Section 1.14(h)(1) is 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 for comments related to the
increase of the petition fees.
Comment 17: One comment did not respond to the change proposed for
Sec. 1.14, but instead proposed that the rule be amended to provide
that an application that is incorporated by reference be available to
the public rather than become available to the public only once
abandoned.
Response: A copy of the originally filed application papers of a
pending application that has been incorporated by reference is
available to the public pursuant to Sec. 1.14(a)(1)(vi), although the
file contents of such an application are not available to the public.
The Office currently has systems that permit a copy of the application
as originally filed to be made available to the Office of Public
Records for sale to the public without interference with the
examination of the patent application. Copying of the entire
application file contents will, unless the application has an image
file, interfere with examination or printing of the application as a
patent, unless the application has become abandoned. As a result, the
Office does not permit the file of an application that has been
incorporated by reference to be made available to the public. Once the
Office's computer systems provide for access to the public at the same
time that the patent application is being examined, the Office may
provide access to the entire application file, however, the Office does
not currently have a mechanism to provide the public with access to the
image file wrapper of an application that has been incorporated by
reference.
Section 1.17: Section 1.17 is amended to adjust petition fees
required to be established under 35 U.S.C. 41(d) to more accurately
reflect the Office's cost of treating petitions. 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. Under amended Sec. 1.17, petition fees
established pursuant to 35 U.S.C. 41(d) are provided for in new Sec.
1.17(f) ($400) and (g) ($200) and amended Sec. 1.17(h) ($130).
Paragraphs (f), (g) and (h) of amended Sec. 1.17 replace former Sec.
1.17(h).
The Office conducted an activity-based-accounting cost (ABC)
analysis of the Office's cost of treating the various petitions previously
enumerated in former Sec. 1.17(h), which petitions are now enumerated
in Sec. 1.17(f) through (h). The Office determined that a single
$130.00 petition fee does not recover the Office's costs of treating
many of these types of petitions. The Office also determined that there
is a significant difference in the Office's costs for treating these
types of petitions. Therefore, Sec. 1.17(f) through (h) separate
petition types into three groups, and provide separate petition fees
for each of the three groups to more accurately reflect the cost of
treating petitions within these three groups. In those instances in
which a petition seeks action under more than one rule, the petition
fee will be that of the rule with the highest fee under which the
petition seeks action.
The highest cost group of petitions is covered by new Sec.
1.17(f), which specifies 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 former Sec. 1.644(e) in an
interference; (7) petitions under former Sec. 1.644(f) for requesting
reconsideration of a decision on petition in an interference; (8)
petitions under former Sec. 1.666(b) for access to an interference
settlement agreement; (9) petitions under former 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 incur the highest costs because they 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 intermediate cost group of petitions is covered by new Sec.
1.17(g), which specifies 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 persons 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 Sec.
1.136(a) are not available; (7) petitions under Sec. 1.295 for review
of a refusal to publish a statutory invention registration; (8)
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; (9) petitions under Sec. 1.377 for review
of a decision refusing to accept and record payment of a maintenance
fee filed prior to expiration of a patent; (10) petitions under Sec.
1.550(c) for patent owner requests for extension of time in ex parte
reexamination proceedings; (11) petitions under Sec. 1.956 for patent
owner requests for extension of time in inter partes reexamination
proceedings; (12) petitions under Sec. 5.12 for expedited handling of
a foreign filing license; (13) petitions under Sec. 5.15 for changing
the scope of a license; and (14) petitions under Sec. 5.25 for a
retroactive license. Petitions in this second group incur intermediate
costs because, although they also require analysis of factual
situations and evidentiary showings, 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 remaining group of petitions is covered by Sec. 1.17(h), which
continues to specify the current petition fee of $130. The petitions in
this group are: (1) Petitions under Sec. 1.19(g) 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) petitions under
Sec. 1.138(c) to expressly abandon an application to avoid publication
(6) petitions under Sec. 1.313 to withdraw an application from issue;
and (7) petitions under Sec. 1.314 to defer issuance of a patent.
Petitions in this third group incur the least costs, as they 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 also amended to reflect the required processing
fee of Sec. 1.291(c)(5) for a second or subsequent protest by the same
real party in interest.
Comment 18: One comment objected to the proposed change in that
switching from one petition fee to three petition fees under Sec.
1.17(f), (g) and (h) will cause applicants unfamiliar with the three
new petition fees to make petition fee payment errors that will lead to
additional work.
Response: The Office has determined that the benefits of recovering
the costs of responding to petitions, in a stratified scheme, outweigh
the costs of potential errors in administration of the fees. The fees
for the petitions grouped under Sec. 1.17(f) through (h) are not set
by 35 U.S.C. 41(a) and (b). Rather, the fees for these petitions are
among the fees required to be established under 35 U.S.C. 41(d) in
order to recover the estimated average cost to the Office. The Office
conducted an activity-based-accounting cost (ABC) analysis of the
Office's cost of treating the petitions grouped under Sec. 1.17(f)
through (h) and determined that there is a significant difference in
the Office's costs for treating these petitions. A less
administratively burdensome approach would have been for the Office to
have simply raised the fee under former Sec. 1.17(h) based on a lump
sum average cost of treating all the petition fees which must be
established pursuant to 35 U.S.C. 41(d). The Office decided against
lumping all these petitions together due to the significant cost
difference for treating these petitions. The Office determined that
actual costs could be fairly recovered based on three groups of
petition fees without overly complicating petition fee payment and
processing, particularly because each rule section for which a petition
fee is associated has a single fee assigned. It is noted that 35 U.S.C.
41(a) and (b) set different fees for various other types of petitions
including three groups of petition fees for extensions of time.
Furthermore, the various patent fees specified in 35 U.S.C. 41(a) and
(b) are generally changed each fiscal year. The Office minimizes any
confusion resulting from fee changes and fee groupings by publishing
fee changes under 35 U.S.C. 41(a) and (b) in the Official Gazette for
Patents, on the Office's Internet Web site, and in various
communications sent to practitioners and applicants. In keeping with
this practice, the Office will similarly publish the petition fees
under Sec. 1.17(f) through (h) which have been established pursuant to
35 U.S.C. 41(d).
Comment 19: Some comments argued that the $400 fee for petitions
under Sec. 1.17(f) is excessive, noting that this amount is comparable
to the basic small entity patent application filing fee.
Response: The $400 fee is based on an activity-based-accounting
cost analysis of the Office's cost of treating the petitions grouped
under new Sec. 1.17(f). The argument that comparing the basic small
entity filing fee to the Sec. 1.17(f) petition fee suggests the Sec.
1.17(f) petition fee to be excessive fails to recognize that filing
fees set under 35 U.S.C. 41(a) do not recover the cost of patent
application processing and examination. A larger portion of this cost
recovery is attributable to patent maintenance fees, as well as the
other fees provided under 35 U.S.C. 41, rather than the filing fee
alone.
Comment 20: One comment stated that the fee under new Sec. 1.17(f)
is satisfactory for petitions to accord a filing date provided the
Office will refund the fee when the failure to originally accord the
requested filing date was the result of Office error (e.g., lost papers
in the Office). Another comment which argued that the fee under new
Sec. 1.17(f) is excessive, also stated that the petition fee should be
refunded when a granted petition was required to correct an Office
error.
Response: In keeping with Office practice when former Sec. 1.17(h)
applied to filing date petitions, the petition fee under new Sec.
1.17(f) will be refunded where a petition to accord an application
filing date was required to correct solely an Office error. In
addition, for an application filed in accordance with Sec. 1.10, there
is no fee required to accord the application a filing date under Sec.
1.10(c), (d) or (e).
Comment 21: One comment suggested that the petition fees under
Sec. 1.17(f) through (h) apply only to large entities and that no
petition fee be charged to any small entity.
Response: This suggestion cannot be adopted. As set forth in 35
U.S.C. 41(h), small entity fee reduction only applies to fees charged
under 35 U.S.C. 41(a) or (b). As the petition fees under Sec. 1.17(f)
through (h) are required to be established under 35 U.S.C. 41(d), small
entity fee reduction does not apply. Further, where small entity fee
reduction is available, it is only available for a fifty percent
reduction of fees.
Comment 22: One comment suggested that petitions for express
abandonment to avoid patent application publication under Sec.
1.138(c) should fall under Sec. 1.17(h) where the petition fee is
$130.00, rather than under Sec. 1.17(g) where the petition fee is
$200.00.
Response: The suggested change has been adopted.
Section 1.19: Section 1.19 is amended to rewrite former paragraph
(b) in order to provide for different fees for copies of patent
application documents, according to the medium or means by which the
copy is provided. In paragraph (b) of Sec. 1.19, "certified and
uncertified" has been removed as unnecessary since all copies provided
under this paragraph will be certified. Lastly, paragraph (g) is added
to require a petition to obtain copies of documents in a form other
than provided for in the patent rules. Such a petition was originally
proposed as paragraph (h), and paragraph (g) was proposed to provide
for at cost copies of documents. The previously proposed paragraph (g)
has been determined to be unnecessary in view of Sec. 1.21(k).
Accordingly, the paragraph proposed as (h) will be designated as
paragraph (g).
Section 1.19 is amended to clarify that copies of documents may be
provided to the public in whole, or in part, in electronic image form
at the Office's option. In view of the ever-increasing size of
submissions, many of the Office official records need to, and will, be
received, stored and maintained in electronic form. As a result of the
Office's migration to electronic storage of documents and the IFW
system, Sec. 1.19 has been amended to reflect that the Office may, at
its option, provide copies of documents in an electronic form (e.g., on
compact disc, or other physical electronic medium, or by electronic
mail, if an electronic mail address is given). A request for a document
in another form (e.g., a voluminous document on paper) that would
impair service to other users would be complied with on a case-by-case
basis as provided in new Sec. 1.19(g). Hence, although the rule
provides a fee for ordering copies of Office documents in various
forms, the Office, at its option, may elect to supply the requested
copies on paper, or in an electronic form, as determined to be
appropriate by the Director, depending upon which is most expedient and
cost-effective from an Office perspective.
In amending Sec. 1.19(b), former paragraphs (b)(1) through (b)(3)
have been rewritten as paragraphs (b)(1) and (b)(2), while removing the
seven-day requirement of former Sec. 1.19(b)(1) for processing copy
requests.
Paragraph (b)(1) of Sec. 1.19 sets forth the fees for a copy of a
patent application as filed, or a patent-related file wrapper and
contents, that is stored in paper in a paper file wrapper, or in an
image format in an image file wrapper. In paragraph (b)(1) of Sec.
1.19, three sets of fees are set forth. Paragraph Sec. 1.19(b)(1)(i)
sets forth the fees for documents supplied on paper, with different
fees for an application as filed, a file wrapper and contents of a
patent application up to 400 pages, an additional fee for each set of
additional pages of a file wrapper and contents, and an individual
document. Paragraph 1.19(b)(1)(ii) sets forth the fees for documents
supplied on compact disc, or on another physical electronic medium,
with different fees for an application as filed, and for a file wrapper
and contents of a patent application. Pursuant to Sec.
1.19(b)(1)(ii)(C), if the file wrapper and contents or the individual
document requires more than a single electronic medium (e.g., a compact
disc) to hold all the pages in a single order, then a fee of $15.00
will be required for each continuing electronic medium. Paragraph
1.19(b)(1)(iii) sets forth the fees for documents supplied
electronically other than on compact disc or other physical electronic
medium. Paragraph 1.19(b)(1)(iii) fees would apply to copies supplied
by electronic mail, or otherwise over the Internet. Lengthy documents,
however, will not be transmitted electronically. For example, a
document over one hundred megabytes, or a document that will take
longer than twenty minutes to transmit over a slow speed transfer, will
not be transmitted, but will, instead, be provided on physical
electronic media, by mail.
The addition of Sec. 1.19(b)(1)(ii)(B) permits the Office to
supply the file wrapper and contents including the prosecution history
of an application on a compact disc for $55 rather than on paper for
the paper rate of $200 for the first 400 pages and additional amounts
for extra pages.
A "document" according to paragraph 1.19(b)(1)(i)(D) would
include the transmittal paper for an Information Disclosure Statement
(IDS) and the list of references cited (e.g., PTO-SB08 or 1449 form),
but the individual references included with the IDS would be separate
documents. Also, each individual volume of a multi-volume reference
would be a separate document. U.S. patent and U.S. patent application
publication references are not stored in the IFW as part of the
application file and would not be included with an order for a copy of
the file contents, but can be purchased separately, with the fee set
forth in Sec. 1.19(a). Individual documents maintained in the
electronic file, other than the patent application as filed, are not
available to be purchased electronically because individual documents
in the electronic file may be different, and much smaller, documents
than in the paper file (an amendment would be one document in paper,
but separated into different documents, "Remarks", "spec" and "claims",
e.g., in the electronic file), and the different definition of the
documents would lead to confusion. In addition, since the fees charged
for electronic documents are much smaller than for paper documents,
requiring the entire file wrapper to be purchased for $55.00 is more
efficient than allowing one or two documents to be purchased from a
large file.
Paragraph 1.19(b)(2) sets forth the fees for patent-related file
wrapper contents that were submitted on compact disc, or in electronic
form, and not stored in paper in a paper file wrapper, or in an image
format in an IFW. Such patent-related file wrapper contents that are
not stored in paper, or in an image format, include a Computer Readable
Form (CRF) of a Sequence Listing, a table, or a computer program
listing submitted on a compact disc pursuant to Sec. 1.52(e)(1). Such
items are stored in an Artifact Folder which is associated with a
patent application. In paragraph 1.19(b)(2)(i) a fee is set forth for a
copy of such an item if provided on a compact disc, and in paragraph
1.19(b)(2)(ii) a fee is set forth for a copy of such an item is
provided electronically (e.g., by electronic mail) other than on a
physical electronic medium. Paragraph 1.19(b)(2) does not apply to
other documents that are stored in an Artifact Folder, and not stored
in an IFW in image form, such as documents (blueprints and other
oversized documents, or documents that are illegible) that could not be
scanned. The fee for such documents is set forth in Sec. 1.21(k).
Prior Secs. 1.19(b)(1) and (2) did not provide for supplying
copies of the non-paper (or image) portion of a file wrapper (e.g.,
compact discs or electronically filed applications). Under prior
practice, for example, copies of compact discs associated with a file
wrapper would have been ordered under prior Sec. 1.19(b)(3) and were
not provided with an order for the paper portion of a file wrapper
under prior Secs. 1.19(b)(1) or 1.19(b)(2). Nothing in these rule
changes will change the practice of a separate order being required for
documents or materials not maintained in the paper file wrapper or IFW,
except that the fee is now set forth in Sec. 1.19(b)(2). Paragraph (D)
is added to Sec. 1.19(b)(1)(i) to provide for copies of an individual
document instead of an entire file wrapper. The fee for copies of other
items not in the IFW portion of a file wrapper (e.g., blueprints or
documents that cannot be scanned, microfiche, and video cassettes) is
an at-cost fee as set forth in Sec. 1.21(k). In the event the Office
cannot fill an order solely from the IFW, and must complete an order in
part by copying a document in an Artifact Folder or paper file, the fee
under Sec. 1.21(k) (e.g., at cost for blueprints) will apply, except
that the fee for compact disc copies under Sec. 1.19(b)(2) will apply
to any copies of compact discs maintained in the Artifact Folder
corresponding to the IFW, or paper application file.
Patent applications and patents should 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 items or materials associated with a
file wrapper (e.g., blueprints, video cassettes, compact discs, or
exhibits which are not part of the specification) may not be referenced
in the specification of an application or patent. Apart from an
Artifact Sheet, the Office does not maintain an index of other items or
materials associated with any specific file wrapper. Accordingly, the
public should carefully review the contents of a file wrapper to
determine if other items or materials associated with a file wrapper
need to be separately ordered. If the application is maintained in the
IFW system, then documents that cannot be scanned will be maintained in
an Artifact Folder, and the fee for obtaining copies of such documents
is set forth in either Sec. 1.19(b)(2) (copies of compact discs) or
Sec. 1.21(k). For example, an application that is not filed on the
appropriate size paper, or that cannot be scanned, will not be added to
the IFW and will be treated as an artifact, and maintained in a
separate "Artifact Folder." The fee for obtaining a copy of such a
document that could not be scanned is set forth in Sec. 1.21(k) (at
cost). In order to avoid significant delays and expense in obtaining a
certified copy of an application as originally filed, applicants should
ensure that application papers are legible and may be accurately
reproduced.
Although neither paragraph (b)(1)(iii) nor paragraph (b)(2)(ii) of
Sec. 1.19 expressly contains a size limitation for high speed
transmission, e.g., DSL or cable connectivity, or a time limitation for
slower connectivity, the Office is concerned about the ability to
maintain a connection for a larger file size or longer transmission
period. Currently, 100 MB is the limit adopted for the Office's EFS
software. Accordingly, if the document has a file size of, for example,
100 MB or greater, the document will not be transmitted electronically,
and instead will be copied onto a compact disc or other physical
electronic media and mailed to the requester. The Office does not want
to tie up Office resources for long unreliable file transfer
transmissions.
The subject matter of former paragraph 1.19(b)(3) has been moved to
paragraph (b)(2)(i), except that a copy provided on a physical medium
such as a compact disc is no longer limited to information that was
originally submitted on a compact disc. Former paragraph 1.19(b)(4) has
been reworded as "Copy of Office records, except copies available
under (1) or (2) of this paragraph" to clarify that records such as a
part of an application's image file wrapper that can be purchased
pursuant to paragraph 1.19(b)(1) or (2) must be ordered pursuant to
those paragraphs, and renumbered as paragraph 1.19(b)(3). Paragraph
1.19(b)(5) has been renumbered as paragraph 1.19(b)(4).
Section 1.19(g) had been proposed to be added to provide for
copying items or material that is not image scanned, but the new
paragraph has not been added because the fee has been determined to
already be set forth in Sec. 1.21(k). Items 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.
Furthermore, documents that were too light to be scanned or that
provide insufficient contrast to be scanned will not be added to the
IFW system because they would not be useful in the IFW system. In
addition, the Office will not conduct special processing of documents
to put the documents into IFW, but will instead require applicants to
resubmit the documents in compliance with Office rules. The Office will
charge the actual cost of the special processing required to copy these
items or materials pursuant to Sec. 1.21(k).
Section 1.19(g) provides for a mechanism for requesting copies of
documents in a form other than that normally provided by the Office.
The copies are provided at cost. For example, the Office will normally
provide copies of documents that are over 20 pages, if the application
has an IFW, on an electronic medium such as a compact disc, even if
paper was requested. If the Office-stored documents are in paper,
rather than image form, paper will generally be provided unless the
document is voluminous. A petition would be required for the order to
be filled in paper, and in such an instance either an at cost fee, or
the fee set forth in 35 U.S.C. 41(d)(2), would be required, as
appropriate. Another example is the instance where a copy of an application
is so voluminous that many boxes of compact discs are required to fill
the order. If compact discs are the normal electronic medium in which
such an order would be filled, a requester could petition that the
order be filled on another media such as a DVD media. Such petitions
would be decided under Sec. 1.19(g) 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.
Comment 23: A comment noted that the rule change preamble indicates
that this is a clarification that the Office will provide copies of
documents in electronic image form at the Office's option but that the
rule itself fails to reflect this.
Response: The comment has been adopted and Sec. 1.19(b) now
explicitly provides that documents are to be provided in paper or in
electronic form as determined by the Director.
Comment 24: A comment noted that the Office was considering
eliminating additional page fees and adopting a single fee concept for
copies but the comment refused to endorse the idea without a numerical
analysis of the costs and fees.
Response: Since the Office did not receive support for eliminating
the additional page fees for copies of application files provided on
paper that exceed 400 pages, the additional fee was retained.
Comment 25: One comment requests that the contents of applications
be available on the Office's Internet Web site at no cost.
Response: The Office now provides free electronic access to many
electronic records for published applications, and applications that
have issued as patents through the public PAIR system. In the summer of
2004, this access will be expanded to include access to the IFW
(excluding non-patent literature) of any application that is available
through public PAIR. A private version of this tool already provides
access to IFW applications.
Comment 26: One comment observes that the rule making does not
provide the cost basis for the fees and contends that fees should be
lower for making copies from IFW.
Response: The fee provisions have been revised to base the fee on
how the copy is supplied instead of how the copy is obtained from
Office records. Thus, the provisions of Sec. 1.19(b) are linked to
supplying copies on paper (Sec. 1.19(b)(1)(i)), or electronically
(Secs. 1.19(b)(1)(ii) or 1.19(b)(1)(iii)). This is because the
Office expects to have converted most of its pending paper application
files to IFW by September 2004. As indicated, the Office intends to
supply a copy in electronic or paper form based upon the factors of
expediency and cost-effectiveness, and applicants are expected to, on
the whole, be paying lower fees for copies as copies will generally be
supplied in electronic form, which have lower fees than paper copies.
In addition, since the fee for certification of a document has been
eliminated, customers will be spared that fee as well. All documents
provided pursuant to Sec. 1.19(b) will be certified.
Comment 27: One comment urged a trial period for the electronic
form of documents and methods of reducing costs by changing the way
documents are stored.
Response: The comment was not adopted. As the Office becomes more
experienced with the IFW system, and accustomed to providing documents
electronically, the Office does not object to revising the rules and
practices to reflect any reduced costs.
Comment 28: One comment stated that electronic files are unusable.
Response: The Office experience is that electronic image files are
usable provided that the user employs appropriate hardware and software
which is readily available in the marketplace. Users who attempt to use
electronic files with hardware and software not adapted to the task of
viewing electronic image files will of course have difficulty.
Section 1.27: Section 1.27 is amended to make certain clarifying
changes. The changes clarify that: (1) a security interest held by a
large entity is not a sufficient interest to bar entitlement to small
entity status unless the security interest is defaulted upon; (2) the
requirements for small business concerns regarding non-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(a) is amended to add a new paragraph (a)(5) which
states that a security interest does not involve an obligation to
transfer rights in the invention unless the security interest is
defaulted upon. Questions have arisen as to whether a security interest
held by a large entity in a small entity's application or patent is a
sufficient interest to prohibit claiming small entity status. For
example, an applicant or patentee may take out a loan from a large
entity 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 permit 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 due to default
on the terms of the security interest 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.
Section 1.27 was proposed to be amended to revise paragraphs
(a)(1), (a)(2)(i), and (a)(3)(i) to change "obligation" to
"currently enforceable obligation." In view of a comment that was
received, Sec. 1.27 is not being amended to revise paragraphs (a)(1),
(a)(2)(i), and (a)(3)(i) to change "obligation" to "currently
enforceable obligation." Instead, Sec. 1.27(a) is amended to add new
paragraph (a)(5) which states that a security interest does not involve
an obligation to transfer rights in the invention unless the security
interest is defaulted upon. The addition of paragraph (a)(5) is
intended to clarify that 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 unless the security interest is
defaulted upon. The change does 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.
Analysis: 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.
Analysis: Since the applicant is under an existing obligation to
assign the application to a large entity, the applicant would not be
entitled to claim small entity status. The 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.
Section 1.27(a)(1) is amended to omit the comma after
"invention)" in the first sentence. The second sentence of Sec.
1.27(a)(1) has been amended to add the phrase "in the invention to one
or more parties" after the first occurrence of "rights."
Furthermore, Sec. 1.27 is 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 the requirement as to transfer
of rights as well as the Small Business Administration size standards.
Section 1.27(a)(2)(ii) is 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 size standards 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.
Comment 29: One comment stated that the Office should draft its own
rules for small business concerns so that they would be easier to find
and follow and thus allow for a clearer understanding of the
qualifications and standards that are required.
Response: Public Law 97-247 gave the Small Business Administration
(SBA) the authority to establish the definition of a small business
concern. 35 U.S.C. 41(h)(1) states that "[f]ees charged under
subsection (a) or (b) shall be reduced by 50 percent with respect to
their application to any small business concern as defined under
section 3 of the Small Business Act, and to any independent inventor or
nonprofit organization as defined in regulations issued by the
Director." Thus, the Office does not have the statutory authority to
draft its own rules for small business concerns. Reproducing the
pertinent SBA regulations in patent materials would be unduly
burdensome upon the Office, particularly as it would need to constantly
monitor SBA rule changes.
Comment 30: One comment stated that the change from "standards"
to "size standards" should be made retroactive to the effective date
of the first small entity regulations. The comment stated that if the
amendment is not made retroactive, "it would imply that the amendment
is a change of law, not a clarification of the existing law."
Response: This rule change is a clarification of existing practice
regarding the requirements to claim small entity status, and is not a
change in practice.
Comment 31: One comment requested that the Office explicitly
confirm that it is not necessary for a business entity that does not
operate primarily within the United States to make a significant
contribution to the U.S. economy through payment of taxes or use of
American products, materials or labor as set forth in 13 CFR 121.105(a)
in order to be considered a small business concern.
Response: As indicated above, a business concern only has to meet
the small business requirements set forth in 13 CFR 121.801 through
121.805 and comply with applicable Office procedures. Therefore, it is
not necessary for a business entity that does not operate primarily
within the United States to make a significant contribution to the U.S.
economy through payment of taxes or use of American products, materials
or labor as set forth in 13 CFR 121.105(a) in order to be considered a
small business concern.
Comment 32: One comment stated that the Office should waive for a
limited time the three-month time limit in Sec. 1.28(a) for refund
requests made by an applicant who transferred U.S. rights to a foreign
business entity that met the size standards in 13 CFR 121.801 through
121.805, but who did not claim small entity status because the foreign
business entity was not a business concern as defined in 13 CFR
121.105(a). The waiver is deemed justified since whether a foreign
business concern made a significant contribution to the U.S. economy
never did affect eligibility to pay reduced patent fees and applicants
may have been misled by previous statements by the Office to the
contrary. See Changes to Implement the Patent Business Goals, 65 FR
54603, 54612 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77, 85 (Sept.
19, 2000) (final rule).
Response: The suggestion is not adopted. If an applicant disagreed
with the Office's interpretation of the small business provisions, the
applicant should have challenged it at the time of fee payment. By
paying the fees in the large entity amount, applicant acquiesced in the
position that was held by the Office at that time.
Comment 33: One comment stated that adding the phrase "currently
enforceable obligation" appears to have consequences beyond removing a
security interest from being an obligation to transfer rights. As an
example, the comment stated that an agreement that provided that an
employee was obligated to assign the entire right, title and interest
in the invention to an employer on or after the date of issue of the
patent would not be enforceable before the patent was issued, and thus
the inventor would be
able to claim small entity status regardless of whether the employer
was a small business concern.
Response: The comment has been adopted. The Office only intends to
address the issue of security interests and does not want to
unintentionally cover other situations. Therefore, as indicated above,
Sec. 1.27(a) has not been amended to include the phrase "currently
enforceable obligation" as was originally proposed. Instead, a new
paragraph (a)(5) has been added which states that a security interest
does not involve an obligation to transfer rights in the invention for
the purposes of paragraphs (a)(1) through (a)(3) unless the security
interest is defaulted upon. In the example provided in the comment, the
inventor would not be able to claim small entity status if the employer
was a large business concern. This is because the employee would be
under an existing obligation to assign the entire right, title and
interest in the invention to the employer, even though the employee
would not have to do so until after the patent has issued.
Comment 34: One comment suggested that the comma after
"invention)" in the first sentence of Sec. 1.27(a)(1) should be
omitted since the comma appears out of place.
Response: The suggestion has been adopted.
Comment 35: One comment stated that the punctuation of the second
sentence of proposed Sec. 1.27(a)(1) seems awkward. Alternative
suggestions to reword the sentence were made. One suggestion was to
place the second comma after the second occurrence of "rights." The
other suggestion was to add the phrase "in the invention to one or
more parties" after the first occurrence of "rights."
Response: The suggestion to reword the second sentence has been
adopted. The phrase "in the invention to one or more parties" has
been added after the first occurrence of "rights" in the second
sentence.
Comment 36: Two comments requested that the Office clarify whether
or not an applicant is entitled to small entity status where the
invention is software and applicant licenses the software to a large
entity through shrink-wrap licenses or otherwise. One of these comments
also asked whether "rights in the invention" only constitute the
exclusionary rights that a patent provides or whether it also includes
a right to use the embodiments of the invention.
Response: As stated in MPEP Sec. 509.02, "[r]ights in the
invention include the right to exclude others from making, using,
offering for sale, or selling the invention throughout the United
States or importing the invention into the United States." MPEP Sec.
509.02 also states that "[i]mplied licenses to use and resell patented
articles purchased from a small entity * * * will not preclude the
proper claiming of small entity status." Thus, a distinction exists
between rights in the application or patent and the use of the patented
product. The use of a patented product by a large entity does not
affect small entity status. On the other hand, rights in an application
or patent by a large entity would preclude the claiming of small entity
status. If the shrink-wrap license only licenses the use of a patented
product by a large entity and does not grant any ownership rights in
the patent to the large entity, then it would not preclude the claiming
of small entity status.
Section 1.47: Section 1.47(a) and (b) are 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 for comments related to the
changes in the petition fees.
Section 1.52: Section 1.52, paragraphs (b)(2)(ii) and (e), are
amended.
Section 1.52, paragraphs (b)(1)(ii) and (d)(1) were proposed to be
amended to require that the statement that the translation is accurate
be signed by the individual who made the translation, but these
proposed changes have not been included in the final rule as the
changes are not deemed to be necessary in view of the requirements of
Sec. 10.18, as explained below. See also Secs. 1.55(a)(4),
1.69(b) and 1.78(a)(5)(iv).
Section 1.52(e)(1)(iii) is 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 one hundred. Also, Sec.
1.52(e)(1)(iii) is clarified to be consistent with tables submitted on
paper as to what constitutes a page. Section Sec. 1.52(e)(3)(i) is
amended to recite that CD-R discs should be finalized so that they are
closed to further writing. Finally, Sec. 1.52(e)(3)(ii) is clarified
to indicate that landscape orientation of a table is an example of
special information needed to interpret a table that is to be provided
on a transmittal letter.
Section 1.52(b)(2)(ii) is 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) 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 11.09. A
font size of only 0.08 inches, however, 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
amended to indicate a preference for a larger font size. See Sec.
1.58(c) for a similar change.
Section 1.52(e)(1)(iii) is amended to allow tables of any size when
there are multiple tables on compact disc if the total number of pages
of tables exceeds one hundred pages. Since permitting the filing of
tables on compact disc, the Office has received voluminous applications
having large numbers of tables, each of which are under 50 pages in
length. Applicants have indicated that it would be less burdensome
filing these small tables on compact disc (CD). 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 (i.e., paper specification and tables on compact disc). The extra
bulk of a few extra pages of paper specification is usually less burden
than having to go to a CD for the additional pages.
Section 1.52(e)(1)(iii) is also amended to clarify what constitutes
an electronic page so as to determine compliance with the fifty- and
one hundred-page requirement for submission of tables on compact disc.
Further clarification is provided in Sec. 1.52(e)(3)(i) as to what
is a permanent CD. Recordable CDS 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 CDS
be finalized so that they are closed to further recording is added to
Sec. 1.52(e)(3)(i). Further, many older CD-ROM drives and audio CD
players have compatibility problems with un-finalized CDS. This 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 particular file format, the Office must
verify that applicants will have the tools to create files easily that
are of archival format and quality, 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://www.oasis-open.org/cover/tr9502.html and
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 archival format.
Also, the Office is upgrading its capabilities to include the ability
to read at least some types of DVD media. It does not appear, however,
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 to be
recognized as being an archival quality and are compatible with Office
hardware and software.
Section Sec. 1.52(e)(3)(ii) is clarified to indicate that
landscape orientation of a table is an example of special information
needed to interpret a table that should be provided on a transmittal
letter. The Office has received several patent applications which had
tens of thousands of pages of a landscape table that was inaccurately
rendered in portrait mode because the page orientation was not
identified. Most tables filed with patent applications are intended to
be rendered in portrait mode. Accordingly, filings without an
identification of landscape mode will continue to be rendered as
portrait mode tables.
Comment 37: Many comments indicated the proposed requirement was
unnecessary and impractical, particularly where the translation is of
an oath or declaration form, and the person who made the original
translation is no longer available.
Response: The suggestion to not include the proposed revision to
Sec. 1.52(b)(1)(ii) and (d)(1) has been adopted. On reconsideration,
the Office determined that the existing requirement that the statement
that the translation is accurate is subject to the provisions of Sec.
10.18, and as a result, such a statement would only be made if the
statement was known to be true, or believed to be true, and such a
conclusion would only be made after an inquiry, reasonable under the
circumstances, was made.
Comment 38: One comment stated that there is much confusion between
correlating font size in points to size of capital letters in inches.
When a font is referred to in points, the points measure the height
from the top of the ascenders to the bottom of the descenders. Often,
this can be measured by printing "fg" and measuring the height in
inches from the top of the "f" to the bottom of the "g". Thus, a
capital A in Times New Roman in 12 point font has a height of about
0.125, not 0.166 in.
Response: The suggestion has been adopted and 0.166 has been
changed to 0.125, and 0.422 changed to 0.3175. The Office agrees that
there is much confusion about how to measure font sizes and notes that
the ascenders and descenders rule is not always followed. A point in
font size corresponds to 1/72 of an inch (Webster's Ninth New
Collegiate Dictionary defines point as "a unit of measurement of about
1/72 inch used especially to measure the size of the type"). The
comment is correct in that the measurement is generally taken from the
top of an "f" to the bottom of a "g," and that for a 12-point font
this measurement should be 12/72 of an inch or 0.166 inch. A 12-point
font is a font size that can be chosen on most word processing
software, and will result in a reproducible specification, whereas 5-
and 6-point fonts are generally not legible.
Comment 39: It was requested that the Office encourage the
submission of tables in electronic form by eliminating the page length
requirement of Sec. 1.52(e)(1)(iii) since they cannot be accurately
scanned.
Response: The comment was not adopted. The final rule page limits
apply to tables submitted on compact disc as part of a paper
application. Tables submitted electronically via the Office's EFS are
not subject to the page limits of the final rule.
The proposed lower page limit was carried forward in the final rule
for compact disc filings to encourage filing of tables in electronic
form when the overall size of the filing is large. A complete
elimination of a lower page limit was not adopted for several reasons.
First, certain small tables in paper, such as an index to the tables on
a compact disc, make patent documents and the electronic files more
usable than if all tables are on the compact disc. Second, it is
difficult to quantify a benefit that justifies forcing the public to
incur the additional cost and effort to review an application with a
small number of tables stored as electronic tables on compact disc.
Similarly, there is an additional cost with no apparent savings for the
Office to process and store the compact discs when an application
contains only a few small tables.
Comment 40: One comment indicated that the proposed clarification
of page size does not give guidance as to whether the table is intended
for landscape or portrait rendering. It was suggested that the few
landscape tables that are filed be identified in the transmittal
letter.
Response: The comment was adopted. The existing rule in Sec.
1.52(e)(3)(ii) requires the transmittal letter to contain any special
information necessary to interpret the tables. This section has been
clarified to give landscape orientation as an example of special
information needed to interpret the tables, that may be required by the
Office if not initially supplied.
Section 1.53: Section 1.53(e)(2) is 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 for comments related to the
increase of the petition fees.
Section 1.57: Section 1.57 is added to provide for incorporation by
reference. Section 1.57(a) provides that, if all or a portion of the
specification or drawing(s) 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 filing date of the application,
and the inadvertently omitted portion of the specification or
drawing(s) is completely contained in the prior-filed application, the
claim for priority or benefit would be considered an incorporation by
reference of the prior-filed application as to the inadvertently
omitted portion of the specification or drawings. Sections 1.57(b)
through (e) 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 the incorporation by reference practice as set forth in MPEP
Sec. 608.01(p), with a few changes to reflect the eighteen-month
publication of applications. Section 1.57(f) treats how any insertion
of previously incorporated by reference material must be added to the
specification or drawings of an application. Section 1.57(g) codifies
the treatment of a noncompliant incorporation by reference.
It has been held that the mere reference to another applicat