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Appendix R - Patent Rules

Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights

CHAPTER I - UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

SUBCHAPTER A - GENERAL

SUBCHAPTER PATENTS

PART 1 - RULES OF PRACTICE IN PATENT CASES

1

Subpart A - General Provisions

GENERAL INFORMATION AND CORRESPONDENCE

1.1    Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

  • (a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
    • (1) Patent correspondence .
      • (i) In general . All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
      • (ii) Patent Trial and Appeal Board . See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
    • (2) [Reserved]
    • (3) Office of General Counsel correspondence .—
      • (i) Litigation and service . Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in §  104.2 .
      • (ii) Disciplinary proceedings . Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (iv) General Counsel . Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
      • (v) Improper correspondence . Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
    • (4) Office of Public Records correspondence .
      • (i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27 .
      • (ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    • (5) Office of Enrollment and Discipline correspondence . All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
  • (b) Patent Cooperation Treaty . Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
  • (c) For reexamination proceedings .
    • (1) Requests for ex parte reexamination (original request papers) and all subsequent ex parte reexamination correspondence filed in the Office, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 1.302(c) , should be additionally marked “Mail Stop Ex Parte Reexam.”
    • (2) Requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination correspondence filed in the Office, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 1.302(c) , should be additionally marked “Mail Stop Inter partes Reexam.”
  • (d) Payments of maintenance fees in patents not submitted electronically over the Internet, and correspondence related to maintenance fees may be addressed to: Director of the United States Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
  • (e) Patent term extension . All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked "Mail Stop Hatch-Waxman PTE." When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
  • (f) [Reserved]

[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR 16413, May 9,1988; para. (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised and para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(2) corrected, 68 FR 19371, Apr. 21, 2003, effective May 1, 2003; section heading, para. (a) introductory text and para. (a)(4) revised, para. (a)(2) removed and reserved, and note following para. (f) removed, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) removed and reserved, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (a) introductory text revised and para. (a)(5) added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (a)(1)(ii) revised and para. (a)(1)(iii) removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (d) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)(3)(ii) and (a)(3)(iii) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010; para. (a)(1)(ii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

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1.2    Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

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1.3    Business to be conducted with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.

[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]

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1.4    Nature of correspondence and signature requirements.

  • (a) Correspondence with the Patent and Trademark Office comprises:
    • (1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
    • (2) Correspondence in and relating to a particular application or other proceeding in the Office . See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B, §§ 1.31 to 1.378 ; of international applications in subpart C, §§ 1.401 to 1.499 ; of ex parte reexaminations of patents in subpart D, §§ 1.501 to 1.570 ; of extension of patent term in subpart F, §§ 1.710 to 1.785 ; of inter partes reexaminations of patents in subpart H, §§ 1.902 to 1.997 ; and of the Patent Trial and Appeal Board in parts 41 and 42 of this title.
  • (b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
  • (c) Since different matters may be considered by different branches or sections of the United States Patent and Trademark Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
  • (d)
    • (1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:
      • (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
      • (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d) ), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
    • (2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1) . 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 a handwritten signature of § 1.4(d)(1) . Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d) , or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4) , for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed ( i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
      • (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and 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. James T. Jones, Jr./); and
      • (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only 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.
      • (iii) The signer’s name must be:
        • (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
        • (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
    • (3) Forms. The Office provides forms to the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
    • (4) Certifications.
      • (i) Section 11.18 certifications : 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 § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
      • (ii) Certifications as to the signature :
        • (A) Of another: A person submitting a document signed by another under paragraph (d)(2) of this section 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, and should retain evidence of authenticity of the signature.
        • (B) Self certification : The person inserting a signature under paragraph (d)(2) 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.
        • (C) Sanctions: 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 § 11.18(c) and (d) of this chapter.
  • (e) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
    • (1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
    • (2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
  • (f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
  • (g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.
  • (h) Ratification/confirmation/evidence of authenticity : The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.

[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised & para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)(2) and (d)(1) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (d)(1)(iii)(A) amended, 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002; para. (d)(1)(iii)(B) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (d)(1)(iii) removed and reserved, paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and (d)(1)(ii) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (d) and (e) revised and para. (h) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (d)(2) introductory text and paragraph (d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (d)(2) introductory text, (d)(3), and (d)(4)(ii) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; paras. (d)(3) and (d)(4)(i) revised, para. (d)(4)(ii)(C) added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (a)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (d)(4)(i) revised, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]

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1.5    Identification of patent, patent application, or patent-related proceeding.

  • (a) No correspondence relating to an application should be filed prior to receipt of the application number from the Patent and Trademark Office. When a letter directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under § 1.8 or the Express Mail procedure under § 1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all letters directed to the Patent and Trademark Office concerning applications for patent should also state the name of the first listed inventor, the title of the invention, the date of filing the same, and, if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the letter and the name of the examiner or other person to which it has been assigned.
  • (b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c) .
  • (c) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
  • (d) A letter relating to a reexamination proceeding should identify it as such by the number of the patent undergoing reexamination, the reexamination request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
  • (e) [Reserved]
  • (f) When a paper concerns a provisional application, it should identify the application as such and include the application number.

[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May 29, 1981; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (c) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; section heading revised, para. (c) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (e) removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

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1.6    Receipt of correspondence.

  • (a) Date of receipt and Express Mail date of deposit . Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
    • (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
    • (2) Correspondence filed in accordance with §  1.10 will be stamped with the date of deposit as “Express Mail” with the United States Postal Service.
    • (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
    • (4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
  • (b) [Reserved]
  • (c) Correspondence delivered by hand . In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
  • (d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
    • (1) Correspondence as specified in § 1.4(e) , requiring an original signature;
    • (2) Certified documents as specified in §  1.4(f) ;
    • (3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D), (F), and (I), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
    • (4) Color drawings submitted under §§ 1.81 , 1.83 through 1.85 , 1.152 , 1.165 , 1.173 , or 1.437 ;
    • (5) A request for reexamination under §  1.510 or § 1.913 ;
    • (6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
    • (7) [Reserved]
    • (8) [Reserved]
    • (9) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
  • (e) [Reserved]
  • (f) Facsimile transmission of a patent application under § 1.53(d) . In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
    • (1) Provided that the party who transmitted such application under § 1.53(d) :
      • (i) Informs the Office of the previous transmission of the application under §  1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under §  1.53(d) ;
      • (ii) Supplies an additional copy of the previously transmitted application under § 1.53(d) ; and
      • (iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d) .
    • (2) The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.
  • (g) Submission of the national stage correspondence required by § 1.495 via the Office electronic filing system . In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495 , which was submitted to the Office by the Office electronic filing system, the party who submitted the correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
    • (1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
      • (i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495 ;
      • (ii) Supplies an additional copy of the previously submitted correspondence;
      • (iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
      • (iv) Supplies a copy of an acknowledgment receipt generated by the Office electronic filing system, or equivalent evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
    • (2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para (a)(1) revised and para. (a)(4) added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; para.(d)(9) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(5) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) removed and reserved and paras. (e), (f) & (f)(1)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(4), (d)(7) and (d)(8) removed and reserved, and paras. (d), introductory text, (d)(3), and (d)(4) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (d)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d)(4) revised and para. (e) removed and reserved, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (a)(4) & (g) added, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (d)(3) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; ; paras. (d) introductory text and (d)(9) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

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1.7    Times for taking action; Expiration on Saturday, Sunday or Federal holiday.

  • (a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See §  1.304 for time for appeal or for commencing civil action.
  • (b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and § 1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 FR 4285, Jan. 31, 1983; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000)]

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1.8    Certificate of mailing or transmission.

  • (a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
    • (1) Correspondence will be considered as being timely filed if:
      • (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
        • (A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail;
        • (B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d) ; or
        • (C) Transmitted via the Office electronic filing system in accordance with § 1.6(a)(4) ; and
      • (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
    • (2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
      • (i) Relative to Patents and Patent Applications—
        • (A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under §  1.53(d) ;
        • (B) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
        • (C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106(f) of this title;
        • (D) The filing of an international application for patent;
        • (E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
        • (F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b) .
        • (G) The filing of a written declaration of abandonment under § 1.138 ;
        • (H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
        • (I) The filing of a third-party submission under § 1.290 ; and
        • (J) The calculation of any period of adjustment, as specified in § 1.703(f) .
      • (ii) [Reserved]
      • (iii) Relative to Disciplinary Proceedings—
        • (A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
        • (B) [Reserved]
  • (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or §  1.957(b) or limited pursuant to § 1.957(c) , or a requester paper is refused consideration pursuant to §  1.957(a) , the correspondence will be considered timely if the party who forwarded such correspondence:
    • (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
    • (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
    • (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement. If the correspondence was transmitted via the Office electronic filing system, a copy of an acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
  • (c) The Office may require additional evidence to determine if the correspondence was timely filed.

[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48 FR 2708, Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised; 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(2)(i)(F) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2)(ii) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (a)(2)(i)(B) removed and reserved and para. (a)(2)(i)(C) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; paras. (a)(1)(i) & (b)(3) revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (b) introductory text revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (a)(2)(iii)(A) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras. (a)(2)(i)(C) revised and paras. (a)(2)(i)(B) and (a)(2)(i)(G)-(J) added, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012]

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1.9    Definitions.

[Editor Note: Applicable to patent applications filed on or after Sept. 16, 2012 *]

  • (a)
    • (1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111 , or an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid.
    • (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b) .
    • (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a) , or an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid.
  • (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
  • (c) A published application as used in this chapter means an application for patent which has been published under 35 U.S.C. 122(b) .
  • (d)
    • (1) The term inventor or inventorship as used in this chapter means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
    • (2) The term joint inventor or coinventor as used in this chapter means any one of the individuals who invented or discovered the subject matter of a joint invention.
  • (e) The term joint research agreement as used in this chapter means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
  • (f) The term claimed invention as used in this chapter means the subject matter defined by a claim in a patent or an application for a patent.
  • (g) For definitions in Patent Trial and Appeal Board proceedings, see parts 41 and 42 of this title.
  • (h) A Federal holiday within the District of Columbia as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.
  • (i) National security classified as used in this chapter means specifically authorized under criteria established by an Act of Congress or Executive Order to be kept secret in the interest of national defense or foreign policy and, in fact, properly classified pursuant to such Act of Congress or Executive Order.
  • (j) Director as used in this chapter, except for part 11 of this chapter, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
  • (k) Paper as used in this chapter means a document that may exist in electronic form, or in physical form, and therefore does not necessarily imply physical sheets of paper.

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (h) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (c)-(f) removed and reserved and para. (i) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (j) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (k) added, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (j) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; para. (g) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a) and (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (d)-(f) added, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[*The changes to paras. (a) and (b) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.9 (pre-AIA) for paras. (a) and (b) otherwise in effect.]

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1.9 (pre-AIA)    Definitions.

[Editor Note: Applicable to patent applications filed before Sept. 16, 2012 *]

  • (a)
    • (1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111 , or which entered the national stage from an international application after compliance with 35 U.S.C. 371 .
    • (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b) .
    • (3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111 (a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371 .
  • (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.

* * * * *

[*See § 1.9 for the current rule and for paras. (c)-(k) in effect for applications filed under 35 U.S.C. 111(a) or 363 prior to Sept. 16, 2012.]

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1.10    Filing of correspondence by “Express Mail.”

  • (a)
    • (1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
    • (2) The date of deposit with USPS is shown by the “date in” on the “Express Mail” label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a) .
  • (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
  • (c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;” and
    • (3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
  • (d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”; and
    • (3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.
  • (e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;
    • (3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day; and
    • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.
  • (f) The Office may require additional evidence to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in question.
  • (g) Any person who mails correspondence addressed as set out in § 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 such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;
    • (3) The petition includes 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”; and
    • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence 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.
  • (h) Any person who attempts to mail correspondence addressed as set out in § 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 such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail”;
    • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and
    • (4) The petition includes 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 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. 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.
  • (i) Any person attempting to file correspondence under this section 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, provided that:
    • (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in “Express Mail” service;
    • (2) The petition includes the original correspondence or a copy of the original correspondence; and
    • (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a)-(c) revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 67 FR 36099, May 23, 2002, effective June 24, 2002; paras. (c), (d), (d)(3), (e) & (e)(4) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(1) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (g) through (i) added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]

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RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

1.11    Files open to the public.

  • (a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2) . If an application was published in redacted form pursuant to § 1.217 , the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
  • (b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
  • (c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette . The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
  • (d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
  • (e) Except as prohibited in § 41.6(b) , § 42.14 or § 42.410(b) , the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006; para. (e) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

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1.12    Assignment records open to public inspection.

[Editor Note: Paras. (b) and (c)(2) below include changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a)
    • (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
    • (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
  • (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
  • (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under §  1.14 , or any information with respect thereto, must:
    • (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
    • (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
  • (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (b) and (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes to paras. (b) and (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.12 (pre-AIA) for paras. (b) and (c)(2) otherwise in effect.]

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1.12 (pre-AIA)    Assignment records open to public inspection.

[Editor Note: Applicable to patent applications filed before September 16, 2012 *]

  • (a)
    • (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
    • (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
  • (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
  • (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under §  1.14 , or any information with respect thereto, must:
    • (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
    • (2) Include written authority granting access to the member of the public to the particular assignment records from the applicant or applicant’s assignee or attorney or agent of record.
  • (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

[*See § 1.12 for more information and the current rule, including paras. (b) and (c)(2) applicable to applications filed on or after Sept. 16, 2012]

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1.13    Copies and certified copies.

  • (a) Non-certified copies of patents, patent application publications, and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public, will be furnished by the United States Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the appropriate fee. See § 2.201 of this chapter regarding copies of trademark records.
  • (b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy.

[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]

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1.14    Patent applications preserved in confidence.

[Editor Note: Applicable to patent applications filed on or after September 16, 2012 *]

  • (a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a) . Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
    • (1) Records associated with patent applications (see paragraph (g) for international applications) may be available in the following situations:
      • (i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11(a) . A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b) .
      • (ii) Published abandoned applications. The file of an abandoned application that has been published as a patent application publication is available to the public as set forth in § 1.11(a) . A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b) .
      • (iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b) . If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
      • (iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2) . An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e) , 120 , 121 , or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2) . A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b) ).
      • (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b) ), if the benefit of the application is claimed under 35 U.S.C. 119(e) , 120 , 121 , or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2) . A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b) ). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
      • (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified . A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b) ), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2) . The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
      • (vii) When a petition for access or a power to inspect is required . Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e) , 120 , 121 , or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2) , or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2) , are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.
    • (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) includes:
      • (i) Whether the application is pending, abandoned, or patented;
      • (ii) Whether the application has been published under 35 U.S.C. 122(b) ;
      • (iii) The application “numerical identifier” which may be:
        • (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
        • (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
      • (iv) Whether another application claims the benefit of the application ( i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e) , 120 , 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications ( e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b) .
  • (b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
  • (c) Power to inspect a pending or abandoned application . Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
    • (1) The applicant;
    • (2) A patent practitioner of record;
    • (3) The assignee or an assignee of an undivided part interest;
    • (4) The inventor or a joint inventor; or
    • (5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495 , if a power of attorney has not been appointed under § 1.32 .
  • (d) Applications reported to Department of Energy . Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
  • (e) Decisions by the Director . Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
    • (1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
    • (2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection.
  • (f) Notice to inventor of the filing of an application . The Office may publish notice in the Official Gazette as to the filing of an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.
  • (g) International applications.
    • (1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2) , or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3 , upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b) ), if:
      • (i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1) ), the international application was filed with the U.S. Receiving Office;
      • (ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1) ), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
      • (iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
    • (2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4) ).
    • (3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2) , or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44ter.1 , 94.2 and 94.3 , upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
    • (4) In accordance with PCT Article 30 , copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2) .
    • (5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38 .
  • (h) Access by a Foreign Intellectual Property Office.
    • (1) Access to the application-as-filed may be provided to any foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), if the application contains written authority granting such access. Written authority under this paragraph should be submitted prior to filing a subsequent foreign application with a participating intellectual property office in which priority is claimed to the patent application.
    • (2) Written authority provided under paragraph (h)(1) of this section must include the title of the invention (§ 1.71(a) ), comply with the requirements of paragraph (c) of this section, and be submitted on a separate document (§ 1.4(c) ).
    • (3) Written authority provided under paragraph (h)(1) of this section will be treated as authorizing the Office to provide to all participating foreign intellectual property offices indicated in the written authority in accordance with their respective agreements with the Office:
      • (i) A copy of the application-as-filed; and
      • (ii) A copy of the application-as-filed with respect to any application the filing date of which is claimed by the application in which written authority under paragraph (h)(1) of this section is filed.
  • (i) Access or copies in other circumstances . The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
    • (1) The fee set forth in § 1.17(g) ; and
    • (2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.

[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; para. (e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b) and (e) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised & para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (g) added, 63 FR 29614, June 1, 1998, effective July 1, 1998, (adopted as final, 63 FR 66040, Dec. 1, 1998); revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (b), (c), (e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 18, 2000; para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (d)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (g) & (g)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (g)(1)(ii) & (g)(3) revised, 68 FR 59881, Oct. 20, 2003, effective Jan. 1, 2004; para. (g)(1)(ii) corrected, 68 FR 67805, Dec., 4, 2003; para. (g)(5) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004; para. (g)(2) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (h)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii), (a)(2) introductory text, & (b) revised, para. (h) redesignated as para. (i) and para. (h) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; paras. (c) and (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.(f) revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[*The changes to paras. (c) and (f) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.14 (pre-AIA) for paras. (c) and (f) otherwise in effect.]

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1.14 (pre-AIA)    Patent applications preserved in confidence.

[Editor Note: Applicable to patent applications filed before September 16, 2012 *]

* * * * *

  • (c) Power to inspect a pending or abandoned application . Access to an application may be provided to any person if the application file is available, and the application contains written authority ( e.g., a power to inspect) granting access to such person. The written authority must be signed by:
    • (1) An applicant;
    • (2) An attorney or agent of record;
    • (3) An authorized official of an assignee of record (made of record pursuant to § 3.71 of this chapter); or
    • (4) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495 , if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.
  • * * * * *
  • (f) Publication pursuant to § 1.47 . Information as to the filing of an application will be published in the Official Gazette in accordance with § 1.47(c) .

* * * * *

[*See § 1.14 for the current rule, including the portions of the rule not reproduced above and applicable irrespective of the filing date of the application]

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1.15    [Reserved]

(Editor’s note: substance supplanted by Part 102)

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988; removed and reserved, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

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FEES AND PAYMENT OF MONEY

1.16    National application filing, search, and examination fees.

  • (a) Basic fee for filing each application under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
    • By a micro entity (§ 1.29)......$70.00
    • By a small entity (§ 1.27(a))......140.00
    • By a small entity (§ 1.27(a)) if the application is submitted in compliance with the Office electronic filing system (§ 1.27(b)(2))......70.00
    • By other than a small or micro entity......280.00
  • (b) Basic fee for filing each application for an original design patent:
    • By a micro entity (§ 1.29)......$45.00
    • By a small entity (§ 1.27(a))......90.00
    • By other than a small or micro entity......180.00
  • (c) Basic fee for filing each application for an original plant patent:
    • By a micro entity (§ 1.29)......$45.00
    • By a small entity (§ 1.27(a))......90.00
    • By other than a small or micro entity......180.00
  • (d) Basic fee for filing each provisional application:
    • By a micro entity (§ 1.29)......$65.00
    • By a small entity (§ 1.27(a))......130.00
    • By other than a small or micro entity......260.00
  • (e) Basic fee for filing each application for the reissue of a patent:
    • By a micro entity (§ 1.29)......$70.00
    • By a small entity (§ 1.27(a))......140.00
    • By other than a small or micro entity......280.00
  • (f) Surcharge for filing any of the basic filing fee, the search fee, the examination fee, or the oath or declaration on a date later than the filing date of the application, except provisional applications:
    • By a micro entity (§ 1.29)......$35.00
    • By a small entity (§ 1.27(a))......70.00
    • By other than a small or micro entity......140.00
  • (g) Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1) ) on a date later than the filing date of the provisional application:
    • By a micro entity (§ 1.29)......$15.00
    • By a small entity (§ 1.27(a))......30.00
    • By other than a small or micro entity......60.00
  • (h) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim in independent form in excess of 3:
    • By a micro entity (§ 1.29)......$105.00
    • By a small entity (§ 1.27(a))......210.00
    • By other than a small or micro entity......420.00
  • (i) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
    • By a micro entity (§ 1.29)......$20.00
    • By a small entity (§ 1.27(a))......40.00
    • By other than a small or micro entity......80.00
  • (j) In addition to the basic filing fee in an application, other than a provisional application, that contains, or is amended to contain, a multiple dependent claim, per application:
    • By a micro entity (§ 1.29)......$195.00
    • By a small entity (§ 1.27(a))......390.00
    • By other than a small or micro entity......780.00
  • (k) Search fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
    • By a micro entity (§ 1.29)......$150.00
    • By a small entity (§ 1.27(a))......300.00
    • By other than a small or micro entity......600.00
  • (l) Search fee for each application for an original design patent:
    • By a micro entity (§ 1.29)......$30.00
    • By a small entity (§ 1.27(a))......60.00
    • By other than a small or micro entity......120.00
  • (m) Search fee for each application for an original plant patent:
    • By a micro entity (§ 1.29)......$95.00
    • By a small entity (§ 1.27(a))......190.00
    • By other than a small or micro entity......380.00
  • (n) Search fee for each application for the reissue of a patent:
    • By a micro entity (§ 1.29)......$150.00
    • By a small entity (§ 1.27(a))......300.00
    • By other than a small or micro entity......600.00
  • (o) Examination fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:
    • By a micro entity (§ 1.29)......$180.00
    • By a small entity (§ 1.27(a))......360.00
    • By other than a small entity......720.00
  • (p) Examination fee for each application for an original design patent:
    • By a micro entity (§ 1.29)......$115.00
    • By a small entity (§ 1.27(a))......230.00
    • By other than a micro or small entity......460.00
  • (q) Examination fee for each application for an original plant patent:
    • By a micro entity (§ 1.29)......$145.00
    • By a small entity (§ 1.27(a))......290.00
    • By other than a small or micro entity......580.00
  • (r) Examination fee for each application for the reissue of a patent:
    • By a micro entity (§ 1.29)......$540.00
    • By a small entity (§ 1.27(a))......1,080.00
    • By other than a small or micro entity......2,160.00
  • (s) Application size fee for any application under 35 U.S.C.111 for the specification and drawings which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:
    • By a micro entity (§ 1.29)......$100.00
    • By a small entity (§ 1.27(a))......200.00
    • By other than a small or micro entity......400.00
  • (t) Non-electronic filing fee for any application under 35 U.S.C. 111(a) that is filed on or after November 15, 2011, other than by the Office electronic filing system, except for a reissue, design, or plant application:
    • By a small entity (§ 1.27(a))......$200.00
    • By other than a small entity......$400.00

[Added, 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b), (d)-(i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)-(g) amended and paras. (k) and (l) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (b), (d), and (f)-(i) amended and para. (m) added, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d), and (f)-(i) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d) & (l) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(d) and (f)-(j) revised, 63 FR 6758, Dec. 8, 1998, effective Nov. 10, 1998; paras. (a) and (b) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (a)-(l) revised, 65 FR 78958, Dec. 18, 2000; paras. (a), (b), (d), (f)-(i) and (k) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a), (g), and (h) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), (d), and (f)-(i) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (f) and (s) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (a)-(e) and (h)-(s) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(e), (h)-(k), and (m)-(s) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (t) added, 76 FR 70651, Nov. 15, 2011, effective Nov. 15, 2011; para. (f) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a)-(e), (h)-(j), and (o)-(s) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras. (a)-(s) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

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1.17    Patent application and reexamination processing fees.

  • (a) Extension fees pursuant to §  1.136(a) :
    • (1) For reply within first month:
      • By a micro entity (§ 1.29)......$50.00
      • By a small entity (§ 1.27(a))......$100.00
      • By other than a small or micro entity......$200.00
    • (2) For reply within second month:
      • By a micro entity (§ 1.29)......$150.00
      • By a small entity (§ 1.27(a))......$300.00
      • By other than a small or micro entity......$600.00
    • (3) For reply within third month:
      • By a micro entity (§ 1.29)......$350.00
      • By a small entity (§ 1.27(a))......$700.00
        By other than a small or micro entity......$1,400.00
    • (4) For reply within fourth month:
      • By a micro entity (§ 1.29)......$550.00
      • By a small entity (§ 1.27(a))......$1,100.00
      • By other than a small or micro entity......$2,200.00
    • (5) For reply within fifth month:
      • By a micro entity (§ 1.29)......$750.00
      • By a small entity (§ 1.27(a))......$1,500.00
      • By other than a small or micro entity......$3,000.00
  • (b) For fees in proceedings before the Patent Trial and Appeal Board, see § 41.20 and § 42.15 of this title.
  • (c) For filing a request for prioritized examination under §  1.102(e) :
    • By a micro entity (§ 1.29)......$1,000.00
    • By a small entity (§ 1.27(a))......$2,000.00
    • By other than a small or micro entity ......$4,000.00
  • (d) For correction of inventorship in an application after the first action on the merits:
    • By a micro entity (§ 1.29)......$150.00
    • By a small entity (§ 1.27(a))......$300.00
    • By other than a small or micro entity......$600.00
  • (e) To request continued examination pursuant to § 1.114 :
    • (1) For filing a first request for continued examination pursuant to § 1.114 in an application:
      • By a micro entity (§ 1.29)......$300.00
      • By a small entity (§ 1.27(a)) ......$600.00
      • By other than a small entity......$1,200.00
    • (2) For filing a second or subsequent request for continued examination pursuant to § 1.114 in an application:
      • By a micro entity (§ 1.29)......$425.00
      • By a small entity (§ 1.27(a))......$850.00
      • By other than a small or micro entity......$1,700.00
  • (f) For filing a petition under one of the following sections which refers to this paragraph:
    • By a micro entity (§ 1.29)......$100.00
    • By a small entity (§ 1.27(a))......$200.00
    • By other than a small or micro entity......$400.00

    § 1.36(a) —for revocation of a power of attorney by fewer than all of the applicants.

    § 1.53(e) —to accord a filing date.

    § 1.57(a) —to accord a filing date.

    § 1.182 —for decision on a question not specifically provided for.

    § 1.183 —to suspend the rules.

    § 1.378(e) —for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent.

    § 1.741(b) —to accord a filing date to an application under § 1.740 for extension of a patent term.

  • (g) For filing a petition under one of the following sections which refers to this paragraph:
    • By a micro entity (§ 1.29)......$50.00
    • By a small entity (§ 1.27(a))......$100.00
    • By other than a small or micro entity......$200.00

    § 1.12 —for access to an assignment record.

    § 1.14 —for access to an application.

    § 1.46 —for filing an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.

    § 1.55(f) —for filing a belated certified copy of a foreign application.

    § 1.59 —for expungement of information.

    § 1.103(a) —to suspend action in an application.

    § 1.136(b) —for review of a request for extension of time when the provisions of § 1.136(a) are not available.

    § 1.377 —for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent.

    § 1.550(c) —for patent owner requests for extension of time in ex parte reexamination proceedings.

    § 1.956 —for patent owner requests for extension of time in inter partes reexamination proceedings.

    § 5.12 —for expedited handling of a foreign filing license.

    § 5.15 —for changing the scope of a license.

    § 5.25 —for retroactive license.

  • (h) For filing a petition under one of the following sections which refers to this paragraph:
    • By a micro entity (§ 1.29)......$35.00
    • By a small entity (§ 1.27(a))......$70.00
    • By other than a small or micro entity......$140.00

    § 1.19(g) —to request documents in a form other than provided in this part.

    § 1.84 —for accepting color drawings or photographs.

    § 1.91 —for entry of a model or exhibit.

    § 1.102(d) —to make an application special.

    § 1.138(c) —to expressly abandon an application to avoid publication.

    § 1.313 —to withdraw an application from issue.

    § 1.314 —to defer issuance of a patent.

  • (i) Processing fees:
    • (1) for taking action under one of the following sections which refers to this paragraph:
      • By a micro entity (§ 1.29)......$35.00
      • By a small entity (§ 1.27(a))......$70.00
      • By other than a small or micro entity......$140.00

      § 1.28(c)(3) —for processing a non-itemized fee deficiency based on an error in small entity status.

      § 1.29(k)(3) —for processing a nonitemized fee deficiency based on an error in micro entity status.

      § 1.41(b) —for supplying the name or names of the inventor or joint inventors in an application without either an application data sheet or the inventor's oath or declaration, except in provisional applications.

      § 1.48 —for correcting inventorship, except in provisional applications.

      § 1.52(d) —for processing a nonprovisional application filed with a specification in a language other than English.

      § 1.53(c)(3) —to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b) .

      § 1.55 —for entry of a priority claim or certified copy of a foreign application after payment of the issue fee.

      § 1.71(g)(2) —for processing a belated amendment under § 1.71(g) .

      § 1.102(e) —for requesting prioritized examination of an application.

      § 1.103(b) —for requesting limited suspension of action, continued prosecution application for a design patent (§  1.53(d) ).

      § 1.103(c) —for requesting limited suspension of action, request for continued examination (§ 1.114 ).

      § 1.103(d) —for requesting deferred examination of an application.

      § 1.291(c)(5) —for processing a second or subsequent protest by the same real party in interest.

      § 3.81 —for a patent to issue to assignee, assignment submitted after payment of the issue fee.

    • (2)
      For taking action under one of the following sections which refers to this paragraph: ......$130.00
      • § 1.217 —for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.
      • § 1.221 —for requesting voluntary publication or republication of an application.
  • (j) [Reserved]
  • (k) For filing a request for expedited examination under § 1.155(a) :
    • By a micro entity (§ 1.29)......$225.00
    • By a small entity (§ 1.27(a))......$450.00
    • By other than a small or micro entity......$900.00
  • (l) For filing a petition for the revival of an unavoidably abandoned application under 35 U.S.C. 111 , 133 , 364 , or 371 , for the unavoidably delayed payment of the issue fee under 35 U.S.C. 151 , or for the revival of an unavoidably terminated reexamination proceeding under 35 U.S.C. 133 1.137(a) ):
    • By a micro entity (§ 1.29)......$160.00
    • By a small entity (§ 1.27(a))......$320.00
    • By other than a small or micro entity......$640.00
  • (m) For filing a petition for the revival of an unintentionally abandoned application, for the unintentionally delayed payment of the fee for issuing a patent, or for the revival of an unintentionally terminated reexamination proceeding under 35 U.S.C. 41(a)(7) 1.137(b) ):
    • By a micro entity (§ 1.29)......$475.00
    • By a small entity (§ 1.27(a))......$950.00
    • By other than a small or micro entity......$1,900.00
  • (n) [Reserved]
  • (o) [Reserved]
  • (p) For an information disclosure statement under § 1.97(c) or (d) or for the document fee for a submission under § 1.290 :
    • By a micro entity (§ 1.29)......$45.00
    • By a small entity (§ 1.27(a))......$90.00
    • By other than a small or micro entity......$180.00
  • (q)
    Processing fee for taking action under one of the following sections which refers to this paragraph......$50.00
    § 1.41 —to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by § 1.51(c)(1) in a provisional application.

    § 1.48 —for correction of inventorship in a provisional application.

    § 1.53(c)(2) —to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c) .

  • (r) For entry of a submission after final rejection under § 1.129(a) :
    • By a micro entity (§ 1.29)......$210.00
    • By a small entity (§ 1.27(a))......$420.00
    • By other than a small or micro entity......$840.00
  • (s) For each additional invention requested to be examined under § 1.129(b) :
    • By a micro entity (§ 1.29)......$210.00
    • By a small entity (§ 1.27(a))......$420.00
    • By other than a small or micro entity......$840.00
  • (t) For the acceptance of an unintentionally delayed claim for priority under 35 U.S.C. 119 , 120 , 121 , or 365(a) or (c) (§§ 1.55 and 1.78 ) or for filing a request for the restoration of the right of priority under § 1.452 :
    • By a micro entity (§ 1.29)......$355.00
    • By a small entity (§ 1.27(a))......$710.00
    • By other than a small or micro entity......$1,420.00

[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and (c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)-(m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para. (i)(1), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (p) added, 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR 32439, July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and paras. (q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a) - (d), (h), (i) & (q) revised, paras. (e)-(g) reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected, 62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997; paras. (a)-(d), (l) and (m) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; paras. (r) and (s) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; paras. (r) and (s) revised, 64 FR 67774, Dec. 3, 1999, effective Jan. 10, 2000; para. (e) added and para. (i) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)-(e), (m), (r) and (s) revised, 65 FR 49193, August 11, 2000, effective October 1, 2000; paras. (h), (i), (k), (l), (m), (p), and (q) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and paras. (h), (i), (l), (m) and (p) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (t) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(e), (r) and (s) revised, 65 FR 78958, Dec. 18, 2000; heading and para. (h) revised, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)-(e), (m) and (r)-(t) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)(2)-(a)(5), (e), (m), and (r) through (t) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; paras. (a)(2)-(a)(5), (b)-(e), (m), and (r)-(t) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (c) and (d) removed and reserved and paras. (b) and (h) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; paras. (a)(2)-(a)(5), (e), (m), and (r)-(t) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (f) and (g) added and paras. (h) and (i) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a), (l) and (m) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (i) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para. (f) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (l) & (m) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a)(2)-(a)(5), (e), (l), (m), and (r)-(t) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)(4) and (a)(5) corrected, 72 FR 55055, Sept. 28, 2007, effective Sept. 30, 2007; para. (f) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (t) revised, 72 FR 51559, Sept. 10, 2007, and corrected 72 FR 57864, Oct. 11, 2007, effective Nov. 9, 2007; paras. (a), (l), and (m) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (f) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) added and para. (i) revised, 76 FR 18399, Apr. 4, 2011, effective date delayed until further notice, 76 FR 23876, April 29, 2011 and withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para. (c) added and para. (i) revised, 76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (j) removed and reserved and para. (p) revised, 77 FR 42150, July 17, 2012, effective Sept. 16, 2012; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (g) and (i) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras. (a), (l), and (m) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; paras.(g) and (i) revised and paras. (n) and (o) removed and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; paras. (a)-(i), (k)-(m), and (p)-(t) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised, 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]

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1.18    Patent post allowance (including issue) fees.

  • (a) Issue fee for issuing each original patent, except a design or plant patent, or for issuing each reissue patent:
    • (1) For an issue fee paid on or after January 1, 2014:
      • By a micro entity (§ 1.29)......$240.00
      • By a small entity (§ 1.27(a))......480.00
      • By other than a small or micro entity......960.00
    • (2) For an issue fee paid before January 1, 2014:
      • By a micro entity (§ 1.29)......$445.00
      • By a small entity (§ 1.27(a))......890.00
      • By other than a small or micro entity......$1,780.00
  • (b) Issue fee for issuing an original design patent:
    • (1) For an issue fee paid on or after January 1, 2014:
      • By a micro entity (§ 1.29)......$140.00
      • By a small entity (§ 1.27(a))......280.00
      • By other than a small or micro entity......560.00
    • (2) For an issue fee paid before January 1, 2014:
      • By a micro entity (§ 1.29)......$255.00
      • By a small entity (§ 1.27(a))......510.00
      • By other than a small or micro entity......1,020.00
  • (c) Issue fee for issuing an original plant patent:
    • (1) For an issue fee paid on or after January 1, 2014:
      • By a micro entity (§ 1.29)......$190.00
      • By a small entity (§ 1.27(a))......380.00
      • By other than a small or micro entity......760.00
    • (2) For an issue fee paid before January 1, 2014:
      • By a micro entity (§ 1.29)......$350.00
      • By a small entity (§ 1.27(a))......700.00
      • By other than a small entity......1,400.00
  • (d)
    • (1)
      Publication fee on or after January 1, 2014......$0.00
    • (2)
      Publication fee before January 1, 2014......300.00
    • (3)
      Republication fee (§ 1.221(a))......300.00
  • (e)
    For filing an application for patent term adjustment under § 1.705 :......$200.00.
  • (f)
    For filing a request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) in an application for patent term adjustment under §  1.705: ......$400.00.

[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; amended, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; heading revised and paras. (d)-(f) added, 65 FR 56366, Sept. 18, 2000, effective Nov. 17, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(c) revised, 65 FR 78958, Dec. 18, 2000; paras. (a)-(c) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (a)-(c) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a)-(c) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (a)-(c) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (a)-(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (a)-(c) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a)-(c) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)-(c) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

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1.19    Document supply fees.

The United States Patent and Trademark Office will supply copies of the following patent-related documents upon payment of the fees indicated. Paper copies will be in black and white unless the original document is in color, a color copy is requested and the fee for a color copy is paid.

  • (a) Uncertified copies of patent application publications and patents:
    • (1)
      Printed copy of the paper portion of a patent application publication or patent, including a design patent, statutory invention registration, or defensive publication document. Service includes preparation of copies by the Office within two to three business days and delivery by United States Postal Service; and preparation of copies by the Office within one business day of receipt and delivery to an Office Box or by electronic means (e.g., facsimile, electronic mail):......$3.00.
    • (2)
      Printed copy of a plant patent in color:......$15.00.
    • (3)
      Color copy of a patent (other than a plant patent) or statutory invention registration containing a color drawing:...... $25.00.
  • (b) Copies of Office documents to be provided in paper, or in electronic form, as determined by the Director (for other patent-related materials see § 1.21(k) ):
    • (1) Copy of a patent application as filed, or a patent-related file wrapper and contents, stored in paper in a paper file wrapper, in an image format in an image file wrapper, or if color documents, stored in paper in an Artifact Folder:
      • (i) If provided on paper:
        • (A)
          Application as filed: ......$20.00.
        • (B)
          File wrapper and contents of 400 or fewer pages:......$200.00.
        • (C)
          Additional fee for each additional 100 pages or portion thereof of file wrapper and contents:......$40.00.
        • (D)
          Individual application documents, other than application as filed, per document:......$25.00.
      • (ii) If provided on compact disc or other physical electronic medium in single order:
        • (A)
          Application as filed:......$20.00.
        • (B)
          File wrapper and contents, first physical electronic medium:......$55.00.
        • (C)
          Additional fee for each continuing physical electronic medium in the single order of paragraph (b)(1)(ii)(B) of this section:......$15.00.
      • (iii) If provided electronically ( e.g., by electronic transmission) other than on a physical electronic medium as specified in paragraph (b)(1)(ii) of this section:
        • (A)
          Application as filed:......$20.00.
        • (B)
          File wrapper and contents:......$55.00.
      • (iv)
        If provided to a foreign intellectual property office pursuant to a priority document exchange agreement (see § 1.14(h)(1) ):......$0.00.
    • (2) Copy of patent-related file wrapper contents that were submitted and are stored on compact disc or other electronic form ( e.g., compact discs stored in an Artifact Folder), other than as available in paragraph (b)(1) of this section:
      • (i) If provided on compact disc or other physical electronic medium in a single order:
        • (A)
          First physical electronic medium in a single order:......$55.00.
        • (B)
          Additional fee for each continuing physical electronic medium in the single order of paragraph (b)(2)(i):......$15.00.
      • (ii)
        If provided electronically other than on a physical electronic medium per order:......$55.00.
    • (3)
      Copy of Office records, except copies available under paragraph (b)(1) or (2) of this section:......$25.00.
    • (4)
      For assignment records, abstract of title and certification, per patent:......$25.00.
  • (c)
    Library service (35 U.S.C. 13): For providing to libraries copies of all patents issued annually, per annum:...... $50.00.
  • (d)
    For list of all United States patents and statutory invention registrations in a subclass:......$3.00.
  • (e)
    Uncertified statement as to status of the payment of maintenance fees due on a patent or expiration of a patent:......$10.00.
  • (f)
    Uncertified copy of a non-United States patent document, per document:......$25.00.
  • (g) Petitions for documents in a form other than that provided by this part, or in a form other than that generally provided by the Director, will be decided in accordance with the merits of each situation. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17 (h) and, if the petition is granted, the documents will be provided at cost.
  • (h) [Reserved]

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and (g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989, revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992; para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a)(1)(i) through (a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective Dec. 2, 1999; introductory text and paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (g) and (h) removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and (b)(1) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; introductory text and para. (b) revised and para. (g) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b)(1)(iv) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

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1.20    Post issuance fees.

  • (a)
    For providing a certificate of correction for applicant’s mistake (§ 1.323)......$100.00
  • (b)
    Processing fee for correcting inventorship in a patent (§ 1.324)......$130.00
  • (c) In reexamination proceedings:
    • (1) For filing a request for ex parte reexamination (§ 1.510(a) ):
      • By a micro entity (§ 1.29)......$3,000.00
      • By a small entity (§ 1.27(a))......$6,000.00
      • By other than a small or micro entity......$12,000.00
    • (2) [Reserved]
    • (3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of 3 and also in excess of the number of claims in independent form in the patent under reexamination:
      • By a micro entity (§ 1.29)......$105.00
      • By a small entity (§ 1.27(a))......$210.00
      • By other than a small or microentity ......$420.00
    • (4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):
      • By a micro entity (§ 1.29)......$20.00
      • By a small entity (§ 1.27(a))......$40.00
      • By other than a small or micro entity......$80.00
    • (5) If the excess claims fees required by paragraphs (c)(3) and (4) of this section are not paid with the request for reexamination or on later presentation of the claims for which the excess claims fees are due, the fees required by paragraphs (c)(3) and (4) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
    • (6) For filing a petition in a reexamination proceeding, except for those specifically enumerated in §§ 1.550(i) and 1.937(d) :
      • By a micro entity (§ 1.29)......$485.00
      • By a small entity (§ 1.27(a))......$970.00
      • By other than a small or micro entity......$1,940.00
    • (7) For a refused request for ex parte reexamination under § 1.510 (included in the request for ex parte reexamination fee at § 1.20(c)(1) )
      • By a micro entity (§ 1.29)......$900.00
      • By a small entity (§ 1.27(a))......$1,800.00
      • By other than a small or micro entity......$3,600.00
  • (d)
    For filing each statutory disclaimer (§ 1.321):......$160.00
  • (e) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond four years, the fee being due by three years and six months after the original grant:
    • By a micro entity (§ 1.29)......$400.00
    • By a small entity (§ 1.27(a))......$800.00
    • By other than a small or micro entity......$1,600.00
  • (f) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond eight years, the fee being due by seven years and six months after the original grant:
    • By a micro entity (§ 1.29)......$900.00
    • By a small entity (§ 1.27(a))......$1,800.00
    • By other than a small or micro entity......$3,600.00
  • (g) For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond twelve years, the fee being due by eleven years and six months after the original grant:
    • By a micro entity (§ 1.29)......$1,850.00
    • By a small entity (§ 1.27(a))......$3,700.00
    • By other than a small or micro entity......$7,400.00
  • (h) Surcharge for paying a maintenance fee during the six-month grace period following the expiration of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application filed on or after December 12, 1980:
    • By a micro entity (§ 1.29)......$40.00
    • By a small entity (§ 1.27(a))......$80.00
    • By other than a small or micro entity......$160.00
  • (i) Surcharge for accepting a maintenance fee after expiration of a patent for non-timely payment of a maintenance fee where the delay in payment is shown to the satisfaction of the Director to have been—
    • (1) Unavoidable:
      • By a micro entity (§ 1.29)......$175.00
      • By a small entity (§ 1.27(a))......$350.00
      • By other than a small or micro entity......$700.00
    • (2) Unintentional:
      • By a micro entity (§ 1.29)......$410.00
      • By a small entity (§ 1.27(a))......$820.00
      • By other than a small or micro entity......$1,640.00
  • (j) For filing an application for extension of the term of a patent.
    • Application for extension under § 1.740......$1,120.00.
    • Initial application for interim extension under § 1.790......$420.00.
    • Subsequent application for interim extension under § 1.790......$220.00
  • (k) In supplemental examination proceedings:
    • (1) For processing and treating a request for supplemental examination:
      • By a micro entity (§ 1.29)......$1,100.00
      • By a small entity (§ 1.27(a))......$2,200.00
      • By other than a small or micro entity......$4,400.00
    • (2) For ex parte reexamination ordered as a result of a supplemental examination proceeding:
      • By a micro entity (§ 1.29)......$3,025.00
      • By a small entity (§ 1.27(a))......$6,050.00
      • By other than a small or micro entity......$12,100.00
    • (3) For processing and treating, in a supplemental examination proceeding, a non-patent document over 20 sheets in length, per document:
      • (i) Between 21 and 50 sheets:
        • By a micro entity (§ 1.29)......$45.00
        • By a small entity (§ 1.27(a))......$90.00
        • By other than a small or micro entity......$180.00
      • (ii) For each additional 50 sheets or a fraction thereof:
        • By a micro entity (§ 1.29)......$70.00
        • By a small entity (§ 1.27(a))......$140.00
        • By other than a small or micro entity......$280.00

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985, effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (e) -(g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), (i)(1), (i)(2), and (j)(1)-(j)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d)-(g) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. (e) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 1999; paras. (e)-(g) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras. (b) and (d)-(h) revised, 65 FR 78958, Dec. 18, 2000; para. (b) corrected, 65 FR 80755, Dec. 22, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (e)-(g) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (e)-(g) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para. (i) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (e)-(g) revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (e)-(g) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(3), (c)(4), and (e)-(g) revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (c)(3),(c)(4), and (d)-(g) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (c)(1) revised and paras. (c)(6), (c)(7), and (k) added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012; paras. (c)(3), (c)(4), and (d)-(g) revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective Mar. 20, 2013]

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1.21    Miscellaneous fees and charges.

  • (a) Registration of attorneys and agents:
    • (l) For admission to examination for registration to practice:
      • (i)
        Application Fee (non-refundable):......$40.00.
      • (ii) Registration examination fee.
        • (A)
          For test administration by commercial entity:......$200.00.
        • (B)
          For test administration by the USPTO:......$450.00.
    • (2)
      On registration to practice or grant of limited recognition under § 11.9(b) or (c):......$100.00.
    • (3) [Reserved]
    • (4)
      For certificate of good standing as an attorney or agent:......$10.00.
      • (i)
        Suitable for framing......$20.00.
      • (ii) [Reserved]
    • (5) For review of decision:
      • (i)
        By the Director of Enrollment and Discipline under § 11.2(c)......$130.00.
      • (ii)
        Of the Director of Enrollment and Discipline under § 11.2(d)......$130.00.
    • (6) [Reserved]
    • (7) [Reserved]
    • (8) [Reserved]
    • (9)
      • (i)
        Delinquency fee:......$50.00.
      • (ii)
        Administrative reinstatement fee:......$100.00.
    • (10)
      On application by a person for recognition or registration after disbarment or suspension on ethical grounds, or resignation pending disciplinary proceedings in any other jurisdiction; on application by a person for recognition or registration who is asserting rehabilitation from prior conduct that resulted in an adverse decision in the Office regarding the person’s moral character; and on application by a person for recognition or registration after being convicted of a felony or crime involving moral turpitude or breach of fiduciary duty; on petition for reinstatement by a person excluded or suspended on ethical grounds, or excluded on consent from practice before the Office:......$1,600.00.
  • (b) Deposit accounts:
    • (1)
      For establishing a deposit account......$10.00
    • (2)
      Service charge for each month when the balance at the end of the month is below $1,000......$25.00
    • (3)
      Service charge for each month when the balance at the end of the month is below $300 for  restricted subscription deposit accounts used exclusively for subscription order of patent copies as issued......$25.00
  • (c) [Reserved]
  • (d) [Reserved]
  • (e)
    International type search reports: For preparing an international type search report of an international type search made at the time of the first action on the merits in a national patent application:......$40.00.
  • (f) [Reserved]
  • (g)
    Self-service copy charge, per page:......$0.25.
  • (h) For recording each assignment, agreement, or other paper relating to the property in a patent or application, per property:
    • (1)
      If submitted electronically, on or after January 1, 2014:......$0.00.
    • (2)
      If not submitted electronically:......$40.00.
  • (i) Publication in Official Gazette: For publication in the Official Gazette of a notice of the availability of an application or a patent for licensing or sale:
    Each application or patent:......$25.00.
  • (j)
    Labor charges for services, per hour or fraction thereof:......$40.00.
  • (k)
    For items and services that the Director finds may be supplied, for which fees are not specified by statute or by this part, such charges as may be determined by the Director with respect to each such item or service:......Actual cost.
  • (l) [Reserved]
  • (m)
    For processing each payment refused (including a check returned “unpaid”) or charged back by a financial institution ......$50.00
  • (n)
    For handling an application in which proceedings are terminated pursuant to § 1.53(e):......$130.00.
  • (o) [Reserved]

[Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (n) added 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) added, 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) deleted, 59 FR 43736, Aug.25, 1994, effective Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (l) & (n) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(6)(ii) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; para (m) revised, 65 FR 33452, May 24, 2000, effective July 24, 2000; para. (a)(6) revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; para. (o) removed and reserved, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; para. (k) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (l) removed and reserved, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (c) removed and reserved, 71 FR 64636, Nov. 3, 2006, effective Feb. 1, 2007; para. (a)(3) removed and reserved and paras. (a)(7), (a)(8) and (a)(9) added, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008; paras. (a), (e), (g)-(k) and (n) revised and para. (d) removed and reserved, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras. (a)(7) and (a)(8) removed and reserved, 78 FR 20180, Apr. 3, 2013, effective May 3, 2013]

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1.22    Fees payable in advance.

  • (a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
  • (b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.

[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003]

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1.23    Methods of payment.

  • (a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§  1.445 ), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
  • (b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.

[43 FR 20462, May 11, 1978; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised, 65 FR 33452, May 24, 2000, effective June 5, 2000; para. (b) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004]

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1.24    [Reserved]

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2708, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; removed and reserved, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]

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1.25    Deposit accounts.

  • (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1) ). A minimum deposit of $1,000 is required for paying any fee due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§  1.21(b)(2) ) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3) ) will be assessed for each month that the balance at the end of the month is below $300.
  • (b) Filing, issue, appeal, international-type search report, international application processing, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492 . An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b) . An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or § 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
  • (c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
    • (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
      • (i) Name of the Bank, which is Treas NYC (Treasury New York City);
      • (ii) Bank Routing Code, which is 021030004;
      • (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
      • (iv) The deposit account holder’s company name and deposit account number.
    • (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (www.uspto.gov).
    • (3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c) added, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004; para. (c)(4) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4) removed, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]

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1.26    Refunds.

  • (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
  • (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a) . If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)) , any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
  • (c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
    • (1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7) , will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
    • (2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
    • (3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2) , will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,1992; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised and para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (a) & (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; paras. (a) and (b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); paras. (a) and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (c) revised, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]

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1.27    Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

[Editor Note: Para. (c)(2) below include(s) changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

  • (a) Definition of small entities . A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
    • (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
    • (2) Small business concern . A small business concern, as used in paragraph (c) of this section, means any business concern that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
      • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
    • (3) Nonprofit Organization . A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
      • (ii) Is either:
        • (A) A university or other institution of higher education located in any country;
        • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
        • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country ( 35 U.S.C. 201(i) ); or
        • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
    • (4) License to a Federal agency .
      • (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
      • (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202 (c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    • (5) Security Interest . A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
  • (b) Establishment of small entity status permits payment of reduced fees .
    • (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1) .
    • (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3) .
  • (c) Assertion of small entity status . Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
    • (1) Assertion by writing . Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
      • (i) Be clearly identifiable;
      • (ii) Be signed (see paragraph (c)(2) of this section); and
      • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
    • (2) Parties who can sign and file the written assertion . The written assertion can be signed by:
      • (i) The applicant (§ 1.42 or § 1.421 );
      • (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34 ;
      • (iii) The inventor or a joint inventor, if the inventor is the applicant; or
      • (iv) The assignee.
    • (3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, or international search fee . The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a) , 1.16(b) , 1.16(c) , 1.16(d) , 1.16(e) , the small entity transmittal fee set forth in § 1.445(a)(1) , the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16 , or the small entity basic national fee set forth in § 1.492(a) , will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error.
      • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f) , or § 1.16(g).
      • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
    • (4) Assertion required in related, continuing, and reissue applications . Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)) , or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
  • (d) When small entity fees can be paid . Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by §  1.28(a).
  • (e) Only one assertion required .
    • (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
    • (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
  • (f) Assertion requires a determination of entitlement to pay small entity fees . Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
  • (g)
    • (1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due . Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
    • (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due . Notification of a loss of entitlement to small entity status must 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 status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
  • (h) Fraud attempted or practiced on the Office .
    • (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
    • (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3) introductory text revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

[*The changes to para. (c)(2) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.27 (pre-AIA) for para. (c)(2) otherwise in effect.]

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1.27 (pre-AIA)    Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

[Editor Note: Para. (c)(2) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]

  • (a) Definition of small entities . A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
    • (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
    • (2) Small business concern . A small business concern, as used in paragraph (c) of this section, means any business concern that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
      • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
    • (3) Nonprofit Organization . A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
      • (ii) Is either:
        • (A) A university or other institution of higher education located in any country;
        • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
        • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country ( 35 U.S.C. 201(i) ); or
        • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
    • (4) License to a Federal agency .
      • (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
      • (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    • (5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
  • (b) Establishment of small entity status permits payment of reduced fees .
    • (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1) .
    • (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3) .
  • (c) Assertion of small entity status . Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
    • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
      • (i) Be clearly identifiable;
      • (ii) Be signed (see paragraph (c)(2) of this section); and
      • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
    • (2) Parties who can sign and file the written assertion . The written assertion can be signed by:
      • (i) One of the parties identified in §  1.33(b) ( e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
      • (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4) , who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
      • (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
    • (3) Assertion by payment of the small entity basic filing or basic national fee . The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a) , 1.16(b) , 1.16(c) , 1.16(d) , 1.16(e) , or the small entity basic national fee set forth in § 1.492(a) , will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
      • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f) , or § 1.16(g).
      • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
    • (4) Assertion required in related, continuing, and reissue applications . Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)) , or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
  • (d) When small entity fees can be paid . Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by §  1.28(a).
  • (e) Only one assertion required .
    • (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
    • (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
  • (f) Assertion requires a determination of entitlement to pay small entity fees . Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
  • (g)
    • (1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due . Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
    • (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due . Notification of a loss of entitlement to small entity status must 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 status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
  • (h) Fraud attempted or practiced on the Office .
    • (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
    • (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]

[*See § 1.27 for more information and for para. (c)(2) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.28    Refunds when small entity status is later established; how errors in small entity status are excused.

  • (a) Refunds based on later establishment of small entity status . A refund pursuant to § 1.26 , based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136 . Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
  • (b) Date of payment.
    • (1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
    • (2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
  • (c) How errors in small entity status are excused . If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2) , the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:
    • (1) Separate submission required for each application or patent . Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments ( e.g., checks) and itemizations are required for each application or patent. See § 1.4(b) .
    • (2) Payment of deficiency owed . The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
      • (i) Calculation of the deficiency owed . The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
      • (ii) Itemization of the deficiency payment . An itemization of the total deficiency payment is required. The itemization must include the following information:
        • (A) Each particular type of fee that was erroneously paid as a small entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
        • (B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
        • (C) The deficiency owed amount (for each fee erroneously paid); and
        • (D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
    • (3) Failure to comply with requirements . If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i) , or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
  • (d) Payment of deficiency operates as notification of loss of status . Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.

[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

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1.29    Micro entity status.

  • (a) To establish micro entity status under this paragraph, the applicant must certify that:
    • (1) The applicant qualifies as a small entity as defined in § 1.27 ;
    • (2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b) , or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
    • (3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
    • (4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
  • (b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant's, inventor's, or joint inventor's previous employment.
  • (c) If an applicant’s, inventor's, joint inventor's, or entity's gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant's, inventor's, joint inventor's, or entity's gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.
  • (d) To establish micro entity status under this paragraph, the applicant must certify that:
    • (1) The applicant qualifies as a small entity as defined in § 1.27 ; and
    • (2)
      • (i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
      • (ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
  • (e) Micro entity status is established in an application by filing a micro entity certification in writing complying with the requirements of either paragraph (a) or paragraph (d) of this section and signed in compliance with § 1.33(b) . Status as a micro entity must be specifically established in each related, continuing and reissue application in which status is appropriate and desired. Status as a micro entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d) ), or the filing of a reissue application, requires a new certification of entitlement to micro entity status for the continuing or reissue application.
  • (f) A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.
  • (g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
  • (h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under § 1.27 . The Office will generally not question certification of entitlement to micro entity status that is made in accordance with the requirements of this section.
  • (i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b) . Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) . Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
  • (j) Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.
  • (k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
    • (1) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b) ). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:
      • (i) Each particular type of fee that was erroneously paid as a micro entity, ( e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity, as applicable;
      • (ii) The micro entity fee actually paid, and the date on which it was paid;
      • (iii) The deficiency owed amount (for each fee erroneously paid); and
      • (iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.
    • (2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
    • (3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i) , or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
    • (4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section, but payment of a deficiency based upon the difference between the current fee amount for a small entity and the amount of the previous erroneous micro entity fee payment will not be treated as an assertion of small entity status under § 1.27(c) . Once a deficiency payment is submitted under this paragraph, a written assertion of small entity status under § 1.27(c)(1) is required to obtain small entity status.

[Added, 77 FR 11024, Dec. 19, 2012, effective Mar. 19, 2013]

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Subpart B - National Processing Provisions

PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT

1.31    Applicant may be represented by one or more patent practitioners or joint inventors.

An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity ( e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.

[50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised 69 FR 35427, June 24, 2004, effective July 26, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

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1.32    Power of attorney.

[Editor Note: Certain* paragraphs below include changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]

  • (a) Definitions.
    • (1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6 .
    • (2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal's behalf.
    • (3) Principal means the applicant (§ 1.42 ) for an application for patent and the patent owner for a patent, including a patent in a supplemental examination or reexamination proceeding. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on the principal's behalf.
    • (4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on the principal's behalf.
    • (5) Customer Number means a number that may be used to:
      • (i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
      • (ii) Designate the fee address (§ 1.363 ) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
      • (iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
      • (6) Patent practitioner of record means a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section. The phrases practitioner of record and attorney or agent of record also mean a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section.
  • (b) A power of attorney must:
    • (1) Be in writing;
    • (2) Name one or more representatives in compliance with paragraph (c) of this section;
    • (3) Give the representative power to act on behalf of the principal; and
    • (4) Be signed by the applicant for patent (§ 1.42 ) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
  • (c) A power of attorney may only name as representative:
    • (1) One or more joint inventors (§ 1.45 );
    • (2) Those registered patent practitioners associated with a Customer Number;
    • (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
  • (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120 , 121 , or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
    • (1) The power of attorney was granted by the inventor; and
    • (2) The continuing application names an inventor who was not named as an inventor in the prior application.
  • (e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34 , if applicable.

[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

[*The revisions to paras. (a)(2), (a)(3), (a)(4) and (b) and new paragraphs (a)(6), (d) and (e) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.32 (pre-AIA) for the rule otherwise in effect.]

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1.32 (pre-AIA)    Power of attorney.

[Editor Note: Certain* paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

  • (a) Definitions.
    • (1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6 .
    • (2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his or her behalf.
    • (3) Principal means either an applicant for patent (§ 1.41(b) ) or an assignee of entire interest of the applicant for patent or in a reexamination proceeding, the assignee of the entirety of ownership of a patent. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on his or her behalf.
    • (4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on his or her behalf.
    • (5) Customer Number means a number that may be used to:
      • (i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
      • (ii) Designate the fee address (§ 1.363 ) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
      • (iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
  • (b) A power of attorney must:
    • (1) Be in writing;
    • (2) Name one or more representatives in compliance with paragraph (c) of this section;
    • (3) Give the representative power to act on behalf of the principal; and
    • (4) Be signed by the applicant for patent (§ 1.41(b) ) or the assignee of the entire interest of the applicant.
  • (c) A power of attorney may only name as representative:
    • (1) One or more joint inventors (§ 1.45 );
    • (2) Those registered patent practitioners associated with a Customer Number;
    • (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.

[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

[*See § 1.32 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.33    Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

[Editor Note: Certain* paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012]

  • (a) Correspondence address and daytime telephone number . When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b) , the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34 .
  • (b) Amendments and other papers . Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv) , filed in the application must be signed by:
    • (1) A patent practitioner of record;
    • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34 ; or
    • (3) The applicant (§ 1.42 ). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
  • (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34 . Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
  • (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
  • (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
  • (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
  • (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.

[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; (a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a) introductory text revised, paras. (a)(1), (b)(1), and (b)(2) revised, and para. (e) added, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (a) introductory text revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; paras. (a) and (b) revised and paras. (f) and (g) added, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The revisions to paras. (a) and (b) and new paragraphs (f) and (g) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.33 (pre-AIA) for the rule otherwise in effect.]

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1.33 (pre-AIA)    Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

[Editor Note: Certain* paragraphs below are not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

  • (a) Correspondence address and daytime telephone number . When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76 ), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
    • (1) Prior to filing of § 1.63 oath or declaration by any of the inventors . If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
    • (2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
  • (b) Amendments and other papers . Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
    • (1) A patent practitioner of record appointed in compliance with § 1.32(b) ;
    • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34 ;
    • (3) An assignee as provided for under §  3.71(b) of this chapter; or
    • (4) All of the applicants (§ 1.41(b) ) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
  • (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34 . Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
  • (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
  • (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.

[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; (a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (c) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a) introductory text revised, paras. (a)(1), (b)(1), and (b)(2) revised, and para. (e) added, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (a) introductory text revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]

[*See § 1.33 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.34    Acting in a representative capacity.

When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985, effective Mar. 6, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]

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1.36    Revocation of power of attorney; withdrawal of patent attorney or agent.

[Editor Note: Para. (a) below includes changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

  • (a) A power of attorney, pursuant to § 1.32(b) , may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f) . A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b) .
  • (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

[*The changes to para. (a) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.36 (pre-AIA) for the rule otherwise in effect.]

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1.36 (pre-AIA)    Revocation of power of attorney; withdrawal of patent attorney or agent.

[Editor Note: Para. (a) below is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

  • (a) A power of attorney, pursuant to § 1.32(b) , may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b) ) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f) . A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2) ), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33 ) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b) .
  • (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

[*See § 1.36 for more information and for para. (a) applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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WHO MAY APPLY FOR A PATENT

1.41    Inventorship.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
  • (b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d) . Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48 . If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b) , unless the applicant files a paper, including the processing fee set forth in § 1.17(i) , supplying the name or names of the inventor or joint inventors.
  • (c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1) . Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48 . If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c) , unless applicant files a paper including the processing fee set forth in § 1.17(q) , supplying the name or names of the inventor or joint inventors..
  • (d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor’s oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1) , the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
  • (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371 . Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92bis .

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.41 (pre-AIA) for the rule otherwise in effect.]

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1.41 (pre-AIA)    Applicant for patent.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) A patent is applied for in the name or names of the actual inventor or inventors.
    • (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63 , except as provided for in §§ 1.53(d)(4) and 1.63(d) . If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b) , unless applicant files a paper, including the processing fee set forth in § 1.17(i) , supplying or changing the name or names of the inventor or inventors.
    • (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1) . If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c) , unless applicant files a paper including the processing fee set forth in §  1.17(q) , supplying or changing the name or names of the inventor or inventors.
    • (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1) , the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
    • (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371 ).
  • (b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42 , 1.43 or 1.47 who is applying for a patent in place of the inventor.
  • (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application (§   1.63 ) can only be made in accordance with § 1.64 .
  • (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]

[*See § 1.41 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.42    Applicant for patent.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 .
  • (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
  • (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45 , the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
  • (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64 , a correspondence address may be provided only in accordance with § 1.33(a) , and amendments and other papers must be signed in accordance with § 1.33(b) .
  • (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.42 (pre-AIA) for the rule otherwise in effect.]

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1.42 (pre-AIA)    When the inventor is dead.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

[ *See § 1.42 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.43    Application for patent by a legal representative of a deceased or legally incapacitated inventor.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.43 (pre-AIA) for the rule otherwise in effect.]

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1.43 (pre-AIA)    When the inventor is insane or legally incapacitated.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

[ *See § 1.43 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.44    [Reserved]

[Removed and reserved, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000]

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1.45    Application for patent by joint inventors.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63 , except as provided for in § 1.64 . If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
  • (b) Inventors may apply for a patent jointly even though:
    • (1) They did not physically work together or at the same time;
    • (2) Each inventor did not make the same type or amount of contribution; or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.45 (pre-AIA) for the rule otherwise in effect.]

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1.45 (pre-AIA)    Joint inventors.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47 .
  • (b) Inventors may apply for a patent jointly even though
    • (1) They did not physically work together or at the same time,
    • (2) Each inventor did not make the same type or amount of contribution, or
    • (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
  • (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

[ *See § 1.45 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.46    Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
  • (b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7) ) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If the application is the national stage of an international application, the person who is identified in the international stage as an applicant for the United States is the person specified as the original applicant for the national stage.
    • (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
    • (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
      • (i) The fee set forth in § 1.17(g) ;
      • (ii) A showing that such person has sufficient proprietary interest in the matter; and
      • (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
    • (c) Any request to correct or update the name of the applicant after an applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7) ). Any request to change the applicant after an original applicant has been specified under paragraph (b) of this section must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7) ) and comply with §§ 3.71 and 3.73 of this title.
    • (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64 . See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
    • (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81 . Where a real party in interest has filed an application under § 1.46 , the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
    • (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette .

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[ *The changes effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 1.46 (pre-AIA) for the rule otherwise in effect.]

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1.46 (pre-AIA)    Assigned inventions and patents.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made or authorized to be made, and an oath or declaration signed, by the inventor or one of the persons mentioned in §§ 1.42 , 1.43 , or 1.47 . However, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81 .

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]

[ *See § 1.46 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

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1.47    [Removed and Reserved]

[Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012. For § 1.47 otherwise in effect, see § 1.47 (pre-AIA) ]

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1.47 (pre-AIA)    Filing when an inventor refuses to sign or cannot be reached.

[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(g) , and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63 .
  • (b) Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, the fee set forth in § 1.17(g) , and the last known address of all of the inventors. An inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63 .
  • (c) The Office will send notice of the filing of the application to all inventors who have not joined in the application at the address(es) provided in the petition under this section, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this notice provision in a continuation or divisional application, if notice regarding the filing of the prior application was given to the nonsigning inventor(s).

[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

[ *Removed and reserved with respect to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012.]

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1.48    Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

  • (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
    • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(i) .
  • (b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63 , or a substitute statement in compliance with § 1.64 , will be required for any actual inventor who has not yet executed such an oath or declaration.
  • (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d) , unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
  • (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
    • (1) A request, signed by a party set forth in § 1.33(b) , to correct the inventorship that identifies each inventor by his or her legal name; and
    • (2) The processing fee set forth in § 1.17(q) .
  • (e) Additional information may be required . The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
  • (f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
    • (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
    • (2) The processing fee set forth in § 1.17(i) .
  • (g) Reissue applications not covered . The provisions of this section do not apply to reissue applications. See §§ 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.
  • (h) Correction of inventorship in patent . See § 1.324 for correction of inventorship in a patent.
  • (i) Correction of inventorship in an interference or contested case before the Patent Trial and Appeal Board . In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or 42.22 of this title must comply with the requirements of paragraph (a) of this section.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (f)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)-(c) and (i) revised and para. (j) added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

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THE APPLICATION

1.51    General requisites of an application.

  • (a) Applications for patents must be made to the Director of the United States Patent and Trademark Office.
  • (b) A complete application filed under §  1.53(b) or § 1.53(d) comprises:
    • (1) A specification as prescribed by 35 U.S.C. 112 , including a claim or claims, see §§ 1.71 to 1.77 ;
    • (2) The inventor's oath or declaration, see §§ 1.63 and 1.64 ;
    • (3) Drawings, when necessary, see §§ 1.81 to 1.85 ; and
    • (4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16 .
  • (c) A complete provisional application filed under §  1.53(c) comprises:
    • (1) A cover sheet identifying:
      • (i) The application as a provisional application,
      • (ii) The name or names of the inventor or inventors, (see §  1.41(a)(2) ),
      • (iii) The residence of each named inventor,
      • (iv) The title of the invention,
      • (v) The name and registration number of the attorney or agent (if applicable),
      • (vi) The docket number used by the person filing the application to identify the application (if applicable),
      • (vii) The correspondence address, and
      • (viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
    • (2) A specification as prescribed by 35 U.S.C. 112(a) , see § 1.71 ;
    • (3) Drawings, when necessary, see §§  1.81 to 1.85 ; and
    • (4) The prescribed filing fee and application size fee, see § 1.16 .
  • (d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See §  1.97 and §  1.98 . No information disclosure statement may be filed in a provisional application.

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b)(4) and (c)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(2) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

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1.52    Language, paper, writing, margins, compact disc specifications.

  • (a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or a reexamination proceeding .
    • (1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
      • (i) Flexible, strong, smooth, non-shiny, durable, and white;
      • (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
      • (iii) Written on only one side in portrait orientation;
      • (iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
      • (v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
    • (2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
    • (3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
    • (4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
    • (5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
  • (b) The application (specification, including the claims, drawings, and the inventor's oath or declaration) or supplemental examination or reexamination proceeding and any amendments or corrections to the application or reexamination proceeding .
    • (1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
      • (i) Comply with the requirements of paragraph (a) of this section; and
      • (ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
    • (2) The specification (including the abstract and claims) for other than reissue applications and reexamination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825 , must have:
      • (i) Lines that are 1 1/2 or double spaced;
      • (ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
      • (iii) Only a single column of text.
    • (3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h) ).
    • (4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination proceeding (§ 1.72(b) ).
    • (5) Other than in a reissue application or reexamination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text.
    • (6) Other than in a reissue application or reexamination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros ( e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements ( e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
  • (c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125 ) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
  • (d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
    • (1) Nonprovisional application . If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
    • (2) Provisional application. If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
  • (e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination proceeding .
    • (1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
      • (i) A computer program listing (see §  1.96 );
      • (ii) A “Sequence Listing” (submitted under § 1.821(c) ); or
      • (iii) Any individual table (see § 1.58 ) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c) .
    • (2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
    • (3)
      • (i) Each compact disc must conform to the International Standards Organization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII). CD-R discs must be finalized so that they are closed to further writing to the CD-R.
      • (ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format ( e.g., IBM-PC, Macintosh), the operating system compatibility ( e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret ( e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.
    • (4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by §  1.821(e) . The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
    • (5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5) ), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
    • (6) A compact disc must also be labeled with the following information:
      • (i) The name of each inventor (if known);
      • (ii) Title of the invention;
      • (iii) The docket number, or application number if known, used by the person filing the application to identify the application; and
      • (iv) A creation date of the compact disc.
      • (v) If multiple compact discs are submitted, the label shall indicate their order ( e.g. “1 of X”).
      • (vi) An indication that the disk is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.
    • (7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
  • (f)
    • (1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e) , and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96 , will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j) . For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j) , for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e) , and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96 , are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
    • (2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s) . Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96 , submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as part of an associated file.

[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 2000); paras. (a), (b), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (b) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; section heading and paras. (b)(2)(ii), (e)(1)(iii) and (e)(3)(i)-(ii) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; section heading revised and para. (f) added; 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (f) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (e)(5) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras. (a)(5), (a)(7), and (b)(7) removed and para. (a)(6) redesignated as (a)(5), 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d)(2) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); para. (d)(2) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); para. (b) heading and paras. (c) and (d) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

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1.53    Application number, filing date, and completion of application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

  • (a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
  • (b) Application filing requirements - Nonprovisional application . The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75 , and any drawing required by §  1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120 , 121 or 365(c) and §  1.78(c) and (d) .
    • (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
    • (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
  • (c) Application filing requirements—Provisional application . The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a) , and any drawing required by §  1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
    • (1) A provisional application must also include the cover sheet required by § 1.51(c)(1) , which may be an application data sheet (§ 1.76 ), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
    • (2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
      • (i) Abandonment of the application filed under paragraph (b) of this section;
      • (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
      • (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
    • (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b) , unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b) . The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
      • (i) Abandonment of the provisional application filed under paragraph (c) of this section; or
      • (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
    • (4) A provisional application is not entitled to the right of priority under 35  U.S.C. 119 or 365(a) or §  1.55 , or to the benefit of an earlier filing date under 35 U.S.C. 120 , 121 or 365(c) or §  1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or §  1.78(a) may be made in a design application based on a provisional application. The requirements of §§  1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
  • (d) Application filing requirements - Continued prosecution (nonprovisional) application .
    • (1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
      • (i) The application is for a design patent;
      • (ii) The prior nonprovisional application is a design application that is complete as defined by §  1.51(b) ; and
      • (iii) The application under this paragraph is filed before the earliest of:
        • (A) Payment of the issue fee on the prior application, unless a petition under §  1.313(c) is granted in the prior application;
        • (B) Abandonment of the prior application; or
        • (C) Termination of proceedings on the prior application.
    • (2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
      • (i) Must identify the prior application;
      • (ii) Discloses and claims only subject matter disclosed in the prior application;
      • (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
      • (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
      • (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
    • (3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b) , the search fee as set forth in § 1.16(l) , and the examination fee as set forth in § 1.16(p) .
    • (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under §  1.48 .
    • (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with §  1.125 .
    • (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of §  1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the prov