PBG - Final Rule Notebook

Archival material:  Information contained in archival materials was correct at the time of original publication. Some information may no longer be applicable or available. For example, amendments may have been made to the rules of practice since the original date of a publication, there may have been a change in any fees indicated, and certain references to publications may no longer be valid. Wherever there is a reference to a statute or rule, please check carefully whether the statute or rule in force at the date of publication of the advice has since been amended.

Introduction & Contacts


This notebook contains a compilation of recent rulemaking materials and published guidelines concerning patent examination policy and procedure. The rulemaking materials include both the Patent Business Goals (PBG) - Final Rule and the rules codifying the American Inventors Protection Act of 1999, (AIPA).

The rulemaking process resulting in the Patent Business Goals (PBG) - Final Rule was part of the Agency's continuing efforts to streamline and simplify the process of applying for and obtaining patent protection for new inventions. In 1999, the USPTO established business goals for the organizations reporting to the Commissioner for Patents. These "Patent Business Goals" subsequently were adopted as part of the Fiscal Year 1999 Corporate Plan Submission to the President. A major focus of the Patent Business Goals was to increase the level of service to the public by raising the efficiency and effectiveness of the Office's business processes. In furtherance of these Goals, the PBG-Final Rule made changes to selected regulations to take a fresh view of the business end of issuing patents, to continue a process of simplification, and to achieve the following four objectives: (1) to reduce the time required to review applications and eliminate unnecessary conditions of applying for and obtaining a patent, (2) to remove impediments to electronic filing, processing and publishing of patent applications, (3) to reduce costs to the public and to the Office, and (4) to clarify several very technical rules to better inform the public how to proceed and to make it easier for Office personnel to determine compliance with the rules.

The American Inventors Protection Act of 1999 was enacted on November 29, 1999, as part of Public Law 106-113 (Consolidated Appropriations Act for Fiscal Year 2000). The AIPA includes eight subtitles, (A-H), which make fundamental changes to the patent law and the United States Patent and Trademark Office. The changes of Subtitle D, "Patent Term Guarantee Act of 1999," Subtitle E, "Domestic Publication of Patent Applications Published Abroad Act of 1999," and Subtitle F, "Optional Inter Partes Reexamination Procedure Act of 1999," have been implemented via one Interim and four Final Rule packages, the Federal Register notices for each being included herein.

The changes made in the PBG - Final Rule and the AIPA Interim and Final Rules will be incorporated into the eighth revision of the Manual of Patent Examining Procedure, (MPEP). While this Training and Implementation Guide is designed to bridge the gap until publication and dissemination of the eighth revision of the MPEP, it is also designed to be a single source of information for USPTO employees and the public concerning these rules that can be used subsequent to or in combination with the eighth revision of the MPEP.

The rulemaking materials and the AIPA examination guidelines were prepared and implemented under the direction of Stephen G. Kunin, Deputy Commissioner for Patent Examination Policy, Robert J. Spar, Director of the Office of Patent Legal Administration, and the Legal Advisors of the Office of Patent Legal Administration. The patent examination guidelines were prepared and implemented under the direction of Stephen G. Kunin, Deputy Commissioner for Patent Examination Policy, Magdalen Greenlief, Editor of the MPEP, and Linda Therkorn, Assistant Editor of the MPEP.

The latest information concerning the PBG and the AIPA can be obtained from the separate home pages that have been established on the Office's website.

This Notebook includes Portable Document Format (PDF) files which requires a PDF file reader program. Please see our Document Formats and Viewers page.


Robert J. Spar, Director
Office of Patent Legal Administration
Office of the Deputy Commissioner for Patent Examination Policy

Information Contacts


Patent Business Goals (PBG) - Final Rule

In general: Hiram Bernstein (571)272-7707 or Robert Clarke (571)272 -7735.

§§ 1.9, 1.22, 1.26 through 1.28, 1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.131,1,132, 1.133, 1.136, 1.322 through 1.324, Part 3, and Part 10.Hiram Bernstein
§§ 1.9, 1.27, 1.28, 1.53, 1,55, 1,76, and 1.78Eugenia Jones (571)272-7727
§§ 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 (except (b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 (except (c)), 1.138, 1.163, and 1.720 et seq.Karin Ferriter
§§ 1.22, 1.25, 1.26, 1.52(b)(2), 1.112, 1.193, 1.311-1.313, 1.366, and processing and petition feesRobert Clarke
§§ 1.52(b)(6), 1.72, 1.121, 1.125, and 1.173 et seq.Eugenia Jones
(571)272-7727 Michael Lewis
§§ 1.53, 1.55, 1.63 (oath or declaration) form, and 1.78Fred Silverberg
§ 1.76Michael Lewis
§§ 1.96, and 1.821 et seq.Jay Lucas
(571)272-3287 Anton Fetting
(571)272-7717 Michael Lewis
§§ 1.97, 1.98, 1.137, 1.173 et seq., 1.510 et seq., and Part 3Kenneth Schor
§§ 1.152 et seq. and Part 5James Engel

American Inventors Protection Act of 1999 (AIPA)

In general: Hiram Bernstein (571)272-7707, Robert Clarke (571)272-7735.

Subject matterContact
Electronic Filing System (EFS)Jay Lucas
FeesOff. of Finance
Inter Partes ReexaminationJerry Dost
Ken Schor
Invention Promotion Companies/ComplaintsInventors Assistance Center (IAC)
(1-800)786-9919 or (703) 308-4357
PAIR (Patent Application Information Retrieval)EBC Helpdesk
Patent Term Adjustment (PTA) and Pre-grant Publication of Applications (PG Pub)Karin Ferriter
Robert Clarke
Provisional ApplicationsFred Silverberg
James Engel
ReissueMichael Lewis
Requests for Continued Examination (RCE)Eugenia Jones
Fred Silverberg
35 U.S.C. 102(e), 102(g) and/or 103(c)Robert Clarke
(571)272-7735 Jeanne Clark
(571) 272-7714

Patent Examination Guidelines

Subject MatterContact
35 U.S.C. 112, Paragraph 6Magdalen Greenlief
Utility Examination GuidelinesLinda Therkorn
35 U.S.C. 112, Paragraph 1, "Written Description" RequirementLinda Therkorn
35 U.S.C. 103 Rejections for Business Method InventionsJames Trammell