Department of Commerce
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 941120-4320]
RIN: 0651-AA76
Changes to Implement 20-Year Patent Term and
Provisional Applications
Agency: Patent and Trademark Office, Commerce.
Action: Notice of proposed rulemaking.
Summary: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent cases to implement the changes related to
patent term in title 35, United State Code, contained in the Uruguay Round
Agreements Act (S. 2467 and H.R. 5110), which was recently passed by
Congress, and to simplify the rules. Among the changes that are contained
in S. 2467 and H.R. 5110 are the conversion to a 20-year patent term
measured from the date of filing an application in the U.S., and the
introduction of provisional applications. The changes apply to utility and
plant patents. They do not apply to design patents. S. 2467 was passed by
the Senate on December 1, 1994, and the House passed H.R. 5110 on November
29, 1994. The President has indicated that he will sign the bills. Since a
Public Law number is not available, the rule package refers to the Senate
and House bill numbers for convenience. The amendments to title 35
relating to 20-year patent term and provisional applications will be
effective on the date which is 6 months after the date of enactment.
Dates: Written comments must be submitted on or before February 17, 1995.
A public hearing will be held Thursday, February 16, 1995, at 9:30 a.m.,
in the Commissioner's Conference Room 912, Crystal Park 2, 2121 Crystal
Drive, Arlington, Virginia. Requests to present oral testimony should be
received on or before February 14, 1995.
Addresses: Address written comments and requests to present oral testimony
to the Commissioner of Patents and Trademarks, Washington, D.C. 20231,
Attention: Stephen G. Kunin, Deputy Assistant Commissioner for Patent
Policy and Projects, Crystal Park 2, Suite 919, or by fax to (703)305-8825.
For Further Information Contact: Magdalen Y. Greenlief or John F.
Gonzales, Special Program Examiners, Office of the Deputy Assistant
Commissioner for Patent Policy and Projects, at (703)305-9285 or by mail
marked to their attention and addressed to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231.
Supplementary Information: This proposed rule change is designed primarily
to implement the changes in practice related to patent term provided for
in S. 2467 and H.R. 5110. In addition, it is proposed to simplify the
procedures for filing continuation and divisional applications which will
benefit both the Office and the public.
Section 154 of title 35, United State Code, currently provides that
every patent (other than a design patent) shall be granted for a term of
seventeen years from the patent issue date, subject to the payment of
maintenance fees as provided for in title 35. S. 2467 and H.R. 5110 amend
35 U.S.C. 154 by establishing a 20-year patent term from the date of
filing of the application. Specifically, the legislation provides that the
patent term will begin on the date on which the patent issues and will end
twenty years from the date on which the application was filed in the
United States. If the application contains a specific reference to an
earlier application under 35 U.S.C. 120, 121 or 365(c), the patent term
will end twenty years from the date on which the earliest application
relied on was filed. As amended by S. 2467 and H.R. 5110, 35 U.S.C. 154
excludes from determination of the patent term any application on which
priority is claimed under 35 U.S.C. 119, 365(a) or 365(b).
S. 2467 and H.R. 5110 further provide that the term of a patent may be
extended, for a maximum of five years, where the issuance of a patent is
delayed because of (1) proceedings under 35 U.S.C. 135(a), (2) placement
of the application under a secrecy order pursuant to 35 U.S.C. 181,
and/or, under certain circumstances, (3) appellate review by the Board of
Patent Appeals and Interferences or by a federal court. The total
extension available is limited to five years regardless of whether there
were delays due to more than one of the reasons covered by the
legislation. This extension is separate from and in addition to the patent
term extension available under 35 U.S.C. 156.
In addition, S. 2467 and H.R. 5110 establish a domestic priority
system. In accordance with the provisions of the Paris Convention for the
Protection of Industrial Property, the term of a patent cannot include the
Paris Convention priority period. The legislation provides a mechanism to
enable domestic applicants to quickly and inexpensively file provisional
applications. Applicants will be entitled to claim the benefit of priority
in a given application based upon the previously filed provisional
application in the United States. The domestic priority period will not
count in the measurement of the term. Thus, under the legislation,
domestic applicants will be placed on an equal footing with foreign
applicants with respect to the patent term.
35 U.S.C. 111 is amended by S. 2467 and H.R. 5110 to provide for the
filing of a provisional application. 35 U.S.C. 41(a)(1) is amended to
provide a $150.00 filing fee for each provisional application, subject to
a 50 percent reduction for a small entity. The requirements for obtaining
a filing date for a provisional application are the same as those which
previously existed for an application filed under 35 U.S.C. 111, except
that no claim or claims as set forth in 35 U.S.C. 112, second paragraph,
is required. Moreover, no oath/declaration as set forth in 35 U.S.C. 115
is required. The provisional application is also not subject to the
provisions of 35 U.S.C. 131, 135 and 157, i.e., a provisional application
will not be examined for patentability, placed in interference or made the
subject of a statutory invention registration. Further, the provisional
application will automatically be abandoned twelve (12) months after its
filing date and will not be subject to revival to restore it to pending
status thereafter. Benefit of the filing date of the copending provisional
application may be claimed pursuant to 35 U.S.C. 119(e), as contained in
S. 2467 and H.R. 5110, in a continuing application during these 12 months.
A provisional application will not be entitled to claim priority benefits
based on any other application under 35 U.S.C. 119, 120, 121 or 365.
Also, S. 2467 and H.R. 5110 amend 35 U.S.C. 119 to allow an applicant
to claim benefits of the filing date of the provisional application in a
later filed U.S. application. However, since 35 U.S.C. 154 excludes from
the determination of the patent term any application on which priority is
claimed under 35 U.S.C. 119, 365(a) or 365(b), the filing date of a
provisional application will not be considered in determining the term of
any patent.
S. 2467 and H.R. 5110 further include transitional provisions for
limited reexamination in certain applications pending for 2 years or
longer as of the effective date of 35 U.S.C. 154(a)(2), taking into
account any reference to any earlier application under 35 U.S.C. 120, 121
or 365(c). The transitional provisions also permit examination of more
than one independent and distinct invention in certain applications
pending for 3 years or longer as of the effective date of 35 U.S.C.
154(a)(2), taking into account any reference to any earlier application
under 35 U.S.C. 120, 121 or 365(c). These transitional provisions are not
applicable to any application which is filed on or after the effective
date of 35 U.S.C. 154(a)(2), regardless of whether the application is a
continuing application.
In addition, this proposed rule change will simplify the procedures by
eliminating the processing and retention fee practice set forth in
existing sections 1.53(d) and 1.78(a)(1). The processing and retention fee
practice allows applicants to file an application without the filing fee
and to pay the processing and retention fee of $130.00 in order for the
application to be used as a basis for foreign filing and for priority
under 35 U.S.C. 120. The processing and retention fee practice is seldom
used and will be unnecessary in view of the legislation which provides for
the filing of a provisional application with a filing fee of
$150.00/$75.00. The result achieved by the use of the processing and
retention fee practice can be achieved by the use of the provisional
application practice at about the same fee level.
In order to simplify the procedures for filing continuation and
divisional applications, it is proposed that section 1.60 be deleted. The
procedures set forth in section 1.60 are unnecessary in view of the recent
rule change to section 1.6(d) which permits the filing of a copy of an
oath or declaration. Applicants may use the procedures set forth in
section 1.53 to file a continuation or divisional application under 35
U.S.C. 111(a), as contained in S. 2467 and H.R. 5110, by providing the
Office with a copy of the prior application as filed. The issue of a stale
oath or declaration would be eliminated by amending Office practice since
neither the statute nor the rules require a recent date of execution to
appear on the oath or declaration. The subject matter of the application
would have been executed by the inventor(s) and the duty of candor and
good faith including the duty of disclosure requirements of section 1.56
would be continuous and would apply to the continuing application.
Clarifying amendments are proposed to be made to sections 1.16,
paragraphs (a) and (f); and 1.17, paragraphs(h) and (i). These proposed
amendments do not affect the substance of the rules.
The fees set forth in current section 1.17, paragraphs (i)(1) and
(i)(2), are proposed to be consolidated into a new paragraph (i).
Discussion of Specific Rules
If Title 37 of the Code of Federal Regulations, Parts 1 and 3, are
amended as proposed:
Section 1.1 would provide a special "Box Provisional Patent
Application" address to assist the Mail Room in separating and processing
provisional applications and mail relating thereto.
Section 1.9 would have current paragraph (a) redesignated as
subparagraph (a)(1). A new subparagraph (a)(2) would be added to define
the term "provisional application" as a U.S. national application filed
under 35 U.S.C. 111(b).
Sections 1.12 and 1.14 would have the reference to 37 CFR 1.17(i)(1)
replaced with a reference to 37 CFR 1.17(i) because it is proposed that 37
CFR 1.17(i)(1) and (i)(2) be consolidated into a new paragraph (i) since
the petition fees provided in existing paragraphs (i)(1) and (i)(2) are
the same.
Section 1.16 would list the basic filing fee for a provisional
application as $75.00 for a small entity (see section 1.9(c)-(f)) or
$150.00 for other than a small entity as contained in S. 2467 and H.R.
5110. Since the filing fee for a provisional application is established by
S. 2467 and H.R. 5110 as a 35 U.S.C. 41(a) fee, the filing fee for a
provisional application will be subject to the 50 percent reduction
provided for in 35 U.S.C. 41(h). A complete provisional application does
not require claims since no examination on the merits will be given to a
provisional application. However, provisional applications may be filed
with one or more claims as part of the application. Nevertheless, no
additional claim fee or multiple dependent claim fee will be required in a
provisional application.
Also, proposed section 1.16 paragraph (l), would establish the
surcharge required by proposed section 1.53(d)(2) for filing the basic
filing fee or the cover sheet required by proposed section 1.51(a)(2) for
a provisional application at a time later than the provisional application
filing date as $25.00 for a small entity or $50.00 for other than a small
entity. The $50.00/$25.00 surcharge set forth in proposed paragraph (l)
for a provisional application is less than the $130.00/$65.00 surcharge
set forth in paragraph (e) for all other types of patent applications. A
reduced surcharge for a provisional application is proposed in view of the
lower filing fee required for a provisional application and in an attempt
to minimize applicant's overall cost of filing a provisional application.
Clarifying changes would be made to section 1.16. These changes do not
affect the substance of the rule. It is proposed to insert the words
"basic fee" in paragraph (f) of section 1.16. Paragraph (e) currently
refers to "the basic filing fee". Current Office practice allows a design
application to be filed without the design filing fee or the
oath/declaration as set forth in current section 1.53(d). The change to
section 1.16(f) is merely for clarification. In addition, it is proposed
to replace the word "cases" found in paragraph (a) with the word
"applications", since the word "applications" is used elsewhere in the
rule.
Section 1.17 would amend paragraph (h) to provide that the $130.00
petition fee for filing a petition for correction of inventorship under 37
CFR 1.48 applies to all patentapplications, except provisional
applications which would be covered by new paragraph (q).
The reference to section 1.60 in section 1.17(i)(1) would be deleted,
since it is proposed that section 1.60 be removed.
The words "of this part", in section 1.17, paragraphs (h) and (i),
would be deleted, since the paragraphs currently refer to sections in
parts other than Part 1. No substantive change is intended by this
proposal.
Section 1.17(i) would be amended to clarify that petitions relating to
the grant of a filing date under section 1.53 are for applications other
than provisional applications. Proposed paragraph (q) would address
petitions relating to provisional applications.
In addition, the rules would be simplified by combining current section
1.17(i)(1) and (i)(2) into new paragraph (i), since the petition fees
provided in current paragraphs (i)(1) and (i)(2) are the same. No
substantive change is intended by this proposal.
A new section 1.17(q) would be added to establish the fee for filing a
petition for correction of inventorship under section 1.48 in a
provisional application as $25.00 for a small entity or $50.00 for other
than a small entity. The $50.00/$25.00 petition fee would also be required
by proposed section 1.53 for filing a petition to accord a provisional
application a filing date or to convert an application filed under
proposed section 1.53(b)(1) to a provisional application.
New sections 1.17(r) and (s) would be added to establish the fee for
filing a submission after final rejection under section 1.129(a) and for
each additional invention requested to be examined under section 1.129(b),
respectively. These fees have been set at $730.00 to cover the costs of
processing the submission after final rejection and each additional
invention requested to be examined.
Paragraph (l) would be deleted from section 1.21 since the processing
and retention fee required in existing section 1.53(d) would be eliminated
and the reference to section 1.60 in paragraph (n) would be deleted since
section 1.60 would be removed.
Section 1.28(a) would have the references to section 1.60 deleted since
section 1.60 would be removed. Section 1.28(a) would be amended to delete
the references to section 1.62 and to specify the procedure for
establishing small entity status in continuation, divisional and
continuation-in-part applications where small entity status has been
established in a parent application. Where the status as a small entity
has been established in a parent application and is still proper,
applicant could include, in a continuation, divisional or
continuation-in-part application, either a reference to a verified
statement claiming small entity status in the parent application or a copy
of the verified statement filed in the parent application.
Section 1.45(c) would state that each inventor named in a joint
provisional application must have made a contribution to the subject
matter disclosed in the application. The existing language of paragraph
(c) refers to "the subject matter of at least one claim" which would be
inappropriate for provisional applications, since provisional applications
may be filed without claims.
Section 1.48, paragraphs (a)-(c), would specify that the procedures for
correcting an error in inventorship set forth in those paragraphs relate
to applications other than provisional applications. A new paragraph (d)
would establish a simplified procedure for adding the name of an inventor
in a provisional application, where the name was originally omitted
without deceptive intent. Proposed paragraph (d) would not require the
verified statement of facts by the original inventor or inventors, the
oath or declaration by each actual inventor in compliance with section
1.63 or the consent of any assignee as currently required in paragraph
(a). The procedure would require the filing of a petition identifying the
name or names of the inventors to be added and including a statement that
the name or names of the inventors were omitted through error without
deceptive intention on the part of the actual inventor(s). The statement
would be required to be verified if made by a person not registered to
practice before the Office. The statement could be signed by a registered
practitioner acting in a representative capacity under section 1.34(a).
The $50.00/$25.00 petition fee set forth in proposed section 1.17(q) would
also be required.
Under 35 U.S.C. 119(e), as contained in S. 2467 and H.R. 5110, a later
filed complete application may claim priority benefits based on a
copending provisional application so long as the applications have at
least one inventor in common. An error in naming a person as an inventor
in a provisional application would not require correction by deleting the
erroneously named inventor from the provisional application since this
would have no effect upon the ability of the provisional application to
serve as a basis for a priority claim. Therefore, proposed section 1.48(d)
would not provide a procedure for deleting a named inventor. Any request
to delete a named inventor filed in a provisional application would be
properly treated as a petition under section 1.182. As a condition to
granting any petition to delete a named inventor in a provisional
application and in order to protect the rights of the inventors/assignees
involved, the Office may require a statement from all of the named
inventors and/or the written consent of any assignee.
Section 1.51 would include a new subparagraph (a)(2) identifying the
required parts of a complete provisional application. The complete
provisional application would include a cover sheet, a specification as
prescribed in 35 U.S.C. 112, first paragraph, any necessary drawings and
the provisional application filing fee. A suggested cover sheet format for
a provisional application will be available from the Office free of charge
to the public. The cover sheet as set forth by proposed subparagraph
(a)(2)(i) would identify (1) the application as a provisional application,
(2) the name or names of the inventor or inventors, (3) the title of the
invention, (4) the name and registration number of the attorney or agent
(if applicable), (5) the docket number used by the person filing the
application to identify the application (if applicable), and (6) the
correspondence address, all of which is information required in order to
properly prepare the provisional application filing receipt.
The Office currently receives thousands of papers and fees every work
day. Most papers filed in the Office are received in the Correspondence
and Mail Division which must identify and route each paper to the
appropriate area for consideration. Among the papers which may currently
be filed in the Office are disclosure documents, which may comprise a
written description and drawings, and applications for patent, some of
which may be incomplete because claims are omitted. Further, applications
for patent are frequently received in the Office without the filing fee or
the oath/declaration required by section 1.63. With the inception of
provisional application practice, the Office will begin receiving another
type of document resembling either a disclosure document or an incomplete
application for patent and which may comprise nothing more than a written
description and drawings. The potential for Office error, e.g.,
misinterpreting a paper intended as a provisional application as some
other type of document, will obviously increase. Further, with the
inception of a twenty-year patent term, it will be highly desirable for
the Office to process applications, as well as all other papers which the
Office receives, quickly and correctly.
While the name or names of the inventors are required in order to
accord a provisional application a filing date, a provisional application
is not required to be signed by the inventor or the assignee. No oath or
declaration is required. Presumably, most provisional applications will be
filed by a registered practitioner without a power of attorney being
filed. If an essential part, e.g., the drawings, of the provisional
application is omitted or if the filing fee did not accompany the
application, the Office will need a correspondence address to notify the
applicant of the omission.
The cover sheet required in section 1.51 would provide the
Correspondence and Mail Division with a paper specifically identifying the
document as a provisional application and would provide the Application
Processing Division with most of the information it will need to promptly
and properly process the provisional application and to prepare the
official filing receipt. The cover sheet would also provide applicants and
practitioners with a checklist prior to the filing of the provisional
application.
Since no substantive examination would be given to any provisional
application, the filing of an information disclosure statement in a
provisional application is unnecessary and will not be permitted.
Therefore, paragraph (b) of section 1.51 would make it clear that the
Office will not accept an information disclosure statement in a
provisional application. Any information disclosure statements filed in a
provisional application would either be returned or disposed of at the
convenience of the Office.
Section 1.53 would have the title and paragraph (a) revised to refer to
application number, rather than application serial number. The term
"application number" is found in current section 1.5(a).
A new paragraph (b)(2) would be added to section 1.53 setting forth the
requirements for obtaining a filing date for a provisional application.
Existing paragraph (b) would be redesignated as paragraph (b)(1) and would
be amended to: (1) refer to section 1.17(i) rather than 1.17(i)(1) to
conform to the proposed change therein; (2) delete the reference to
section 1.60 which is proposed to be removed; and (3) clarify that
continuations, divisions and continuations-in-part may be filed under
either section 1.53 or 1.62. Paragraph (b)(2) would state that a filing
date would be accorded to a provisional application as of the date the
written description, any necessary drawings and the names of all inventors
are filed in the Office. The filing date requirements for a provisional
application set forth in new paragraph (b)(2) parallel the existing
requirements set forth in current paragraph (b), except that no claim
would be required. In order to keep the cost of processing provisional
applications down and to reduce the handling of the provisional
applications, amendments, other than those required to make the
provisional application comply with applicable regulations, would not be
permitted after the filing date of the provisional application.
New section 1.53(b)(2)(i) would require all provisional applications to
be filed with a cover sheet identifying the application as a provisional
application. The paragraph would also indicate that the Office will treat
an application as having been filed under paragraph (b)(1), unless the
application is identified as a provisional application. This proposal is
similar to the current requirement in section 1.62 that the application
include a specific request for an application under section 1.62. The
cover sheet with identification that a provisional application is intended
should greatly assist the Correspondence and Mail Division in
distinguishing provisional applications from other types of applications.
A provisional application, which is identified as such, but which does not
have a complete cover sheet as required by section 1.51(a)(2)(i) would be
treated as a provisional application. The complete cover sheet and a
surcharge would be required to be submitted at a later date.
Section 1.53(b)(2)(ii) would establish a procedure for converting an
application filed under section 1.53(b)(1) to a provisional application.
The procedure would require the filing of a petition requesting the
conversion and the $50.00/$25.00 petition fee set forth in section
1.17(q). Filing of the petition in the application would be required prior
to the payment of the issue fee or prior to 12 months after its filing
date, whichever event is earlier. The grant of any such petition would not
entitle applicant to a refund of the fees properly paid in the application
filed under section 1.53(b)(1).
Section 1.53(b)(2)(iii) is intended to call attention to the provisions
of S. 2467 and H.R. 5110 which prohibit any provisional application from
claiming a right of priority under 35 U.S.C. 119 or 365(a) or the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) of any other
application. Attention would be called to the provisions of the
legislation which provide that no claim for benefit of an earlier filing
date may be made in a design application based on a provisional
application and that no request for a statutory invention registration may
be filed in a provisional application. Section 1.53(b)(2)(iii) would
specify that the requirements of section 1.821(e), relating to the filing
of a copy of the "Sequence Listing" in computer readable form, are not
applicable to a provisional application. It is noted that all other
sequence requirements as set forth in sections 1.821 through 1.823 and
1.825 are applicable to a provisional application.
Section 1.53(c) would require that any request for review of a refusal
to accord an application a filing date be made by way of a petition
accompanied by the fee set forth in section 1.17(i), i.e., $130.00, if the
application was filed under section 1.53(b)(1), or by the fee set forth in
section 1.17(q), i.e., $50.00/$25.00, if the application was filed under
section 1.53(b)(2). This reflects the current practice set forth in
section 506.02 of the Manual of Patent Examining Procedure (MPEP) with
regard to any request for review of a refusal to accord a filing date for
an application. The Office would continue its current practice of
refunding the petition fee, if the refusal to accord the requested filing
date is found to have been an Office error.
Current paragraph (d) of section 1.53 would be redesignated as
paragraph (d)(1) and would be amended to delete the references to the
processing and retention fee practice which would be eliminated by this
proposal in view of the proposed provisional application practice. Under
proposed paragraph (d)(2), the provisional application could be filed
without the basic filing fee (set by S. 2467 and H.R. 5110 as $150.00 for
other than a small entity, subject to a 50 percent reduction for small
entity) and without the complete cover sheet required by proposed section
1.51(a)(2). In such a case, the proposed rule provides that the applicant
will be notified and be given a period of time in which to file the
missing fee, and/or cover sheet and to pay the surcharge set forth in
proposed section 1.16(l).
Section 1.53(e)(2) would be added to indicate that a provisional
application would not be given a substantive examination and would be
abandoned no later than twelve (12) months after its filing date as set
forth in S. 2467 and H.R. 5110.
Section 1.55 would have the reference to 35 U.S.C. 119 replaced with a
reference to 35 U.S.C. 119(a)-(d) and would specify that a provisional
application is not entitled to the right of foreign priority under
proposed 35 U.S.C. 119(a)-(d). S. 2467 and H.R. 5110 amend 35 U.S.C. 119
by assigning letters (a), (b), (c) and (d) to the existing paragraphs of
35 U.S.C. 119. These paragraphs are directed to claims for foreign
priority. In addition, 35 U.S.C. 111 is amended to provide that a
provisional application may not claim or be entitled to the right of
foreign priority of any other application under 35 U.S.C. 119. Therefore,
provisional applications are not included in section 1.55. In addition,
the reference to 37 CFR 1.17(i)(1) would be replaced by 37 CFR 1.17(i) to
be consistent with the proposed change to section 1.17. No substantive
change is intended by this proposal.
Section 1.59 would delete the reference to the processing and retention
fee which is proposed to be eliminated from section 1.53(d).
Section 1.60 would be removed and reserved. The procedures set forth in
section 1.60 for filing a continuation or divisional application are
unnecessary in view of the recent rule change to section 1.6(d) which
permits the filing of a copy of the signed oath or declaration. This is
appropriate since neither the statute nor the rules require a recent date
of execution to appear on the oath or declaration and the duty of
disclosure requirements under section 1.56 would apply to the continuing
application. The issue of a stale oath or declaration would be eliminated
by appropriately amending the procedures set forth in the Manual of Patent
Examining Procedure.
The Office currently receives a number of petitions requesting that an
application filed under section 1.60 be accepted even though at the time
of filing of the application, applicant failed to comply with all the
requirements of section 1.60 due to inadvertent error on the part of the
applicant. The deletion of section 1.60 will help reduce the number of
petitions and will simplify the procedures for filing an application for
both the Office and patent practitioners. Applicants may use the
procedures set forth in section 1.53 to file a continuation or divisional
application under 35 U.S.C. 111(a) by providing the Office with a copy of
the prior application. Failure to submit a complete copy of the prior
application may be corrected by way of a petition under section 1.182.
Section 1.62 would state that the procedure could be used for filing a
continuation, division or continuation-in-part of a complete application
filed under section 1.53(b)(1) but not a provisional application under
section 1.53(b)(2). The section would specifically preclude the use of the
file wrapper continuing procedures set forth in section 1.62 for filing
the first complete application under 35 U.S.C. 111(a) which claims the
benefit of an earlier filing date of a provisional application. In view of
the relatively small filing fee for a provisional application and the fact
that the provisional application will not be examined, Office handling
must be kept to a minimum and these provisional applications, once
complete, will be sent to the Files Repository for storage rather than
being kept in the examination area of the Office. It would be burdensome
for the Office to retrieve these provisional applications so that an
applicant could use the procedures set forth in section 1.62. Furthermore,
since claims and an oath or declaration are not required in a provisional
application and the first complete application would most likely contain
additional subject matter not disclosed in the provisional application,
the procedures set forth in section 1.53 for filing an application will
meet applicants' needs.
Reference to 37 CFR 1.17(i)(1) in section 1.62(e) would be replaced by
37 CFR 1.17(i) to be consistent with the proposed change to section 1.17.
Furthermore, the phrase "Serial number, filing date" in section 1.62(a)
and the term "application serial number" in section 1.62(e) would
bechanged to "application number." The term "application number" is found
in current section 1.5(a).
Section 1.63(a) would have the reference to section 1.51(a)(2) replaced
with a reference to section 1.51(a)(1)(ii) in order to conform with the
proposed changes in section 1.51.
Section 1.67(b) would have the reference to section 1.53(d) replaced
with a reference to section 1.53(d)(1) in order to conform with the
proposed changes in section 1.53. Furthermore, the references to sections
1.53(b) and 1.118 would be deleted to make clear that the new matter
exclusion applies to all applications including those filed under section
1.62.
Section 1.78(a)(1) and (a)(2) would specifically preclude a provisional
application from claiming the benefit of an earlier filing date of a prior
copending application filed in the United States under section 1.53(b)(1)
or 1.62. S. 2467 and H.R. 5110 amend 35 U.S.C. 111 to provide that a
provisional application is not entitled to the benefit of an earlier
filing date in the United States under 35 U.S.C. 120, 121 or 365(c).
Furthermore, the reference in section 1.78(a)(1) to the processing and
retention fee required in existing section 1.53(d) would be deleted. The
use of serial number and filing date in section 1.78(a)(2) as an
identifier for a prior application would be eliminated to avoid any
confusion as to whether an application identified by its serial number and
filing date is an application filed under proposed section 1.53(b)(1) or
1.62 or a design application since there is a different series code
assigned to each of these types of applications.
In addition, new subparagraphs (a)(3) and (a)(4) would be added to
section 1.78 to set forth the procedures for claiming the benefit of an
earlier filing date based on a prior filed copending provisional
application. The later filed application must be an application other than
for a design patent and must be copending with the provisional
application, which will be abandoned by operation of law no later than 12
months after filing. There must be a common inventor named in both the
prior provisional application and the later filed application. The prior
provisional application must be complete as set forth in proposed section
1.51(a)(2), or entitled to a filing date as set forth in proposed section
1.53(b)(2) and include the basic filing fee. Newly added subparagraphs
(a)(3) and (a)(4) parallel the existing requirements set forth
insubparagraphs (a)(1) and (a)(2) for other than a provisional application.
Section 1.83 would have current paragraph (a) redesignated as
subparagraph (a)(1) and would clarify that this paragraph relates to the
content of the drawings in applications other than provisional
applications. A new subparagraph (a)(2) would set forth the required
content of the drawings filed in a provisional application. Since claims
would not be required in a provisional application, the drawings filed in
a provisional application would be required to show every feature of the
invention disclosed in the description, rather than specified in the
claims as in subparagraph (a)(1), where necessary to understand the
subject matter of the invention. In addition, the reference to paragraph
(a) in section 1.83(c) would be replaced by a reference to paragraph
(a)(1).
Section 1.97(d) would have the reference to section 1.17(i)(1) replaced
with a reference to section 1.17(i) to be consistent with the proposed
change to section 1.17. No substantive change is intended by this proposal.
Section 1.101(a) would indicate that provisional applications filed
under section 1.53(b)(2) would not be examined.
Section 1.102(d) would have the reference to section 1.17(i)(2)
replaced with a reference to section 1.17(i) to be consistent with the
proposed change to section 1.17. No substantive change is intended by this
proposal.
Section 1.103(a) would have the reference to section 1.17(i)(1)
replaced with a reference to section 1.17(i) to be consistent with the
proposed change to section 1.17. No substantive change is intended by this
proposal.
Section 1.129 would be added to set forth the procedure for
implementing certain transitional provisions contained in S. 2467 and H.R.
5110. These transitional provisions are not applicable to any application
which is filed on or after the effective date of 35 U.S.C. 154(a)(2) or to
any design or reissue application. Paragraph (a) of proposed section 1.129
would provide for limited reexamination in certain applications pending
for 2 years or longer as of the effective date of 35 U.S.C. 154(a)(2),
taking into account any reference to any earlier application under 35
U.S.C. 120, 121 or 365(c). Under the proposed procedure, an applicant
would be entitled to have a first submission entered and considered on the
merits after final rejection if (1) the submission is filed prior to or
simultaneously with the filing of a notice of appeal and prior to
abandonment of the application and (2) the $730.00 fee set forth in
proposed section 1.17(r) is paid within one month of any written
notification from the Office refusing entry of the first submission and
prior to abandonment of the application. If applicant complies with the
requirements of the proposed rule, the finality of the previous rejection
would be withdrawn and the submission would be entered and considered on
the merits to the extent that the submission would have been considered if
made prior to final rejection. The subsequent Office action could be made
final under existing Office practice. If a subsequent final rejection is
made in the application, applicant would be entitled to have a second
submission entered and considered on the merits under the same conditions
set forth for consideration of the first submission. Paragraph (a) would
also define the term "submission" as including, but not limited to, an
information disclosure statement, an amendment to the written description,
claims or drawings and a new substantive argument or new evidence in
support of patentability. For example, the submission may include an
amendment, a new substantive argument and an information disclosure
statement. In view of the $730.00 fee required in proposed section
1.17(r), any information disclosure statement previously refused
consideration in the application because of applicant's failure to provide
the certification under section 1.97(e) or to pay the fee set forth in
section 1.17(p) or which is filed as part of either the first or second
submission would be treated as though it had been filed within one of the
time periods set forth in section 1.97(b) and would be considered without
the petition and petition fee required in section 1.97(d), if it complies
with the requirements of section 1.98.
Paragraph (b) of proposed section 1.129 would provide for examination
of more than one independent and distinct invention in certain
applications pending for 3 years or longer as of the effective date of 35
U.S.C. 154(a)(2), taking into account any reference to any earlier
application under 35 U.S.C. 120, 121 or 365(c). Under the proposed
procedure, a requirement for restriction or for the filing of divisional
applications would only be made or maintained in the application after the
effective date of 35 U.S.C. 154(a)(2) if: (1) the requirement was made in
the application or in an earlier application relied on under 35 U.S.C.
120, 121 or 365(c) more than two months prior to the effective date; (2)
the examiner has not issued any Office action in the application due to
actions by the applicant; or (3) the required fee for examination of each
additional invention was not paid. If the application contains claims to
more than one independent and distinct invention, and no requirement for
restriction or for the filing of divisional applications can be made or
maintained as a result of proposed section 1.129(b), applicant will be
notified and given a one month time period to pay the $730.00 fee set
forth in proposed section 1.17(s) for each independent and distinct
invention claimed in the application in excess of one. The fee set forth
in proposed section 1.17(s) would not be subject to the 50 percent
reduction for a small entity. The additional inventions for which the
required fee under section 1.17(s) has not been paid would be withdrawn
from consideration under section 1.142(b). An applicant who desires
examination of an invention so withdrawn from consideration can file a
divisional application under 35 U.S.C. 121.
Section 1.139 would be added to set forth the procedures for reviving a
provisional application where the delay was unavoidable or unintentional.
Paragraph (a) would address the revival of a provisional application where
the delay was unavoidable and paragraph (b) would address the revival of a
provisional application where the delay was unintentional.
Applicant may petition to have an abandoned provisional application
revived as a pending provisional application for a period of no longer
than twelve months from the filing date of the provisional application
where the delay was unavoidable or unintentional. It would be permissible
to file a petition for revival later than twelve months from the filing
date of the provisional application but only to revive the application for
the twelve-month period following filing. Thus, even if the petition were
granted to reestablish the pendency up to the end of the twelve-month
period, the provisional application would not be considered pending after
twelve months from its filing date. The requirements for reviving an
abandoned provisional application set forth in this new rule parallel the
existing requirements set forth in section 1.137.
Sections 1.177, 1.312(b), 1.313(a), 1.314 and 1.666 would have the
reference to section 1.17(i)(1) replaced with a reference to section
1.17(i) to be consistent with the proposed change to section 1.17. No
substantive change is intended by these proposals.
Section 1.701 would be added to provide for the extension of patent
term where the issuance of a patent on an application filed after the
implementation date of the 20-year patent term provisions of S. 2467 and
H.R. 5110, other than for designs, was delayed due to certain causes of
prosecution delay. By virtue of 35 U.S.C. 173, the term of a patent and
patent term extension under proposed 35 U.S.C. 154 do not apply to patents
for designs.
The provisions for patent term extension under proposed section 1.701
are separate from and in addition to the patent term extension provisions
of 35 U.S.C. 156. The patent term extension provisions of S. 2467 and H.R.
5110 are designed to compensate the patent owner for delays in issuing a
patent, whereas the patent term extension provisions of 35 U.S.C. 156 are
designed to restore term lost to premarket regulatory review after the
grant of a patent. In order to prevent a term extension under proposed
section 1.701 from precluding a term extension under 35 U.S.C. 156, S.
2467 and H.R. 5110 amend 35 U.S.C. 156(a)(2) to provide that the term has
never been extended under 35 U.S.C. 156(e)(1).
Under proposed 35 U.S.C. 154(b)(1), if the issuance of a patent is
delayed due to proceedings under 35 U.S.C. 135(a) and/or the application
is placed under a secrecy order under 35 U.S.C. 181, the term of a patent
could be extended for the period of delay up to five years. Proceedings
under 35 U.S.C. 135(a) include any appeal to federal court. Under proposed
35 U.S.C. 154(b)(2), if the issuance of a patent is delayed due to
appellate review by the Board of Patent Appeals and Interferences or by a
federal court and the patent was issued pursuant to a decision reversing
an adverse determination of patentability and if the patent is not subject
to a terminal disclaimer due to the issuance of another patent claiming
subject matter that is not patentably distinct from that under appellate
review, the term of the patent could be extended for the period of delay
up to five years. Pursuant to 35 U.S.C. 154(b)(4), as contained in S. 2467
and H.R. 5110, the term of a patent could only be extended under 35 U.S.C.
154(b)(1) and (b)(2) for a maximum of five years regardless of whether
there were delays due to more than one of the reasons covered under 35
U.S.C. 154(b)(1) and (2). Proposed subparagraph (c)(1) of section 1.701 sets
forth the method for calculating the period of delay where the delay was
a result of proceedings under 35 U.S.C. 135(a). Proposed subparagraph (c)
(2) sets forth the method for calculating the period of delay where the delay
was a result of the application being placed under a secrecy order. Proposed
subparagraph (c)(3) sets forth the method for calculating the period of
delay where the delay was a result of appellate review. Pursuant to
proposed section 1.701(d)(1), the period of delay set forth in
subparagraph (c)(3) shall be reduced by any time calculated under
subparagraph (c)(3) before the expiration of three years from the filing
date of the first national patent application presented for examination.
The filing date for the purpose of section 1.701(d)(1) would be the
earliest effective U.S. filing date but not including the filing date of a
provisional application or the international filing date of a PCT
application. For PCT applications entering the national stage, the filing
date for the purpose of section 1.701(d)(1) would be the date on which
applicant has complied with the requirements of section 1.494(b), or
section 1.495(b) if applicable. Pursuant to proposed section 1.701(d)(2),
the period of delay set forth in subparagraph (c)(3) shall also be reduced
by any time, as determined by the Commissioner, during which the applicant
did not act with due diligence. The standard for determining due diligence
is whether the applicant exhibited that degree of timeliness as may
reasonably be expected from, and which is ordinarily exercised by, a
person during the pendency period of the application. Examples of what may
constitute lack of due diligence for this purpose include requests for
extensions of time to respond to Office communications, submission of a
response which is not fully responsive to an Office communication, and
filing of informal applications. Applicants need not file a request for
the extension of patent term under proposed section 1.701. The extension
of patent term is automatic by operation of law. It is currently
anticipated that applicant would be advised as to the length of any patent
term extension at the time of receiving the Notice of Allowance and Issue
Fee Due. Review of any determination as to the length of patent term
extension would be by way of petition under section 1.181.
Section 3.21 would eliminate the use of serial number and filing date
as an identifier for national patent applications in assignment documents.
This proposal would eliminate any confusion as to whether an application
identified by its serial number and filing date in an assignment document
is an application filed under proposed section 1.53(b)(1) or 1.62 or a
design application or a provisional application since there is a different
series code assigned to each of these types of applications. If an
assignment was executed after the filing of the national application, the
assignment would be required to identify the application by the
application number, consisting of the series code and serial number, e.g.,
07/123,456 (for applications filed under proposed section 1.53(b)(1) or
1.62), 29/123,456 (for design applications) or 59/123,456 (for provisional
applications filed under proposed section 1.53(b)(2)). The series code
would be required since it would clearly identify the application to which
the assignment document is directed.
Section 3.21 would be further clarified to indicate that existing
requirements relating to assignments executed before the filing of the
application refer to applications other than provisional applications.
Section 3.21 would be further amended to specify the requirements for
identifying a provisional application in an assignment executed before the
filing of the provisional application. The assignment would be required to
identify the provisional application by name of each inventor and the
title of the invention. The date of execution of the provisional
application would not be required since a provisional application need not
be executed by the inventors.
Section 3.81 would have the reference to section 1.17(i)(1) replaced
with a reference to section 1.17(i) to be consistent with the proposed
change to section 1.17. No substantive change is intended by this proposal.
Other Considerations
The proposed rule changes are in conformity with the requirements of
the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
This proposed rule has been determined to be not significant for the
purposes of E.O. 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule changes will not
have a significant economic impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal
impact of these changes is to provide a procedure for domestic applicants
to quickly and inexpensively file a provisional application. The filing
date of the provisional application will not be used to measure the term
of a patent granted on an application which claims the earlier filing date
of the provisional application.
The Patent and Trademark Office has also determined that this notice
has no Federalism implications affecting the relationship between the
National Government and the States as outlined in E.O. 12612.
These proposed rules contain collections of information subject to the
requirements of the Paperwork Reduction Act (Act). The provisional
application has been approved by the Office of Management and Budget under
control numbers 0651-0031 and 0651-0032. The cover sheet is necessary to
expedite the processing of a provisional application and improve quality.
Public reporting burden for the collection of information on the cover
sheet is estimated to average 12 minutes per response, including the time
for reviewing instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing the collection
of information. Send comments regarding this burden estimate or any other
aspect of this collection of information, including suggestions for
reducing the burden to the Office of Assistance Quality and Enhancement
Division, Patent and Trademark Office, Washington, D.C. 20231, and to the
Office of Information and Regulatory Affairs, Office of Management and
Budget, Washington, D.C. 20503.
Notice is hereby given that pursuant to the authority granted to the
Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent and
Trademark Office proposes to amend Title 37 of the Code of Federal
Regulations as set forth below.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and record keeping requirements, Small
businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR Parts 1 and 3 are
proposed to be amended as follows, with removals (other than section 1.60
which is proposed to be removed and reserved) indicated by brackets ([])
and additions by arrows (><):
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6 unless otherwise noted.
2. Section 1.1 is proposed to be amended by adding new paragraph (i) to
read as follows:
1.1 All communications to be addressed to Commissioner of Patents and
Trademarks.
* * * * *
>(i) The filing of all provisional applications and any communications
relating thereto should be additionally marked "Box Provisional Patent
Application."<
* * * * *
3. Section 1.9 is proposed to be amended by revising paragraph (a) to read
as follows:
1.9 Definitions.
(a)>(1)< a national 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 or which resulted from an international application after
compliance with 35 U.S.C. 371.
>(a)(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).<
* * * * *
4. Section 1.12 is proposed to be amended by revising paragraph (c) to
read as follows:
1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in secrecy under 1.14, or any information with respect
thereto, must
(1) Be in the form of a petition accompanied by the petition fee set
forth in 1.17(i)[(1)], 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.
* * * * *
5. Section 1.14 is proposed to be amended by revising paragraph (e) to
read as follows:
1.14 Patent applications preserved in secrecy.
* * * * *
(e) Any request by a member of the public seeking access to, or copies
of, any pending or abandoned application preserved in secrecy pursuant to
paragraphs (a) and (b) of this section, or any papers relating thereto,
must
(1) Be in the form of a petition and be accompanied by the petition fee
set forth in 1.17(i)[(1)], or
(2) Include written authority granting access to the member of the
public in that particular application from the applicant or the
applicant's assignee or attorney or agent of record.
* * * * *
6. Section 1.16 is proposed to be amended by revising paragraphs (a)-(g)
and by adding new paragraphs (k) and (l) to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original patent, except
>provisional,< design or plant >applications< [cases]:
By a small entity ( 1.9(f)) $365.00
By other than a small entity 730.00
(b) In addition to the basic filing fee in an original application,
>except provisional applications,< for filing or later presentation of
each independent claim in excess of 3:
By a small entity ( 1.9(f)) 38.00
By other than a small entity 76.00
(c) In addition to the basic filing fee in an original application,
>except provisional applications,< for filing or later presentation of
each claim (whether independent or dependent) in excess of 20 (Note that
1.75(c) indicates how multiple dependent claims are considered for fee
calculation purposes.):
By a small entity ( 1.9(f)) 11.00
By other than a small entity 22.00
(d) In addition to the basic filing fee in an original application,
>except provisional applications,< if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:
By a small entity ( 1.9(f)) 120.00
By other than a small entity 240.00
(If the additional fees required by paragraphs (b), (c), and (d) of
this section are not paid on filing or on later presentation of the claims
for which the additional fees are due, they must be paid or the claims
canceled by amendment, prior to the expiration of the time period set for
response by the Office in any notice of fee deficiency.)
(e) Surcharge for filing the basic filing fee or oath or declaration on a
date later than the filing date of the application>, except provisional
applications<:
By a small entity ( 1.9(f)) 65.00
By other than a small entity 130.00
(f) >Basic fee< for filing each design application:
By a small entity ( 1.9(f)) 150.00
By other than a small entity 300.00
(g) Basic fee for filing each plant application>, except provisional
applications,<:
By a small entity ( 1.9(f)) 245.00
By other than a small entity 490.00
* * * * *
>(k) Basic fee for filing each provisional application:
By a small entity ( 1.9(f)) 75.00
By other than a small entity 150.00
(l) Surcharge for filing the basic filing fee or cover sheet (
1.51(a)(2)(i)) on a date later than the filing date of the provisional
application:
By a small entity ( 1.9(f)) 25.00
By other than a small entity 50.00<
* * * * *
7. Section 1.17 is proposed to be amended by revising paragraphs (h) and
(i)(1), by removing paragraph (i)(2), and by adding new paragraphs (q),
(r) and (s) to read as follows:
1.17 Patent application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under a section [of this
part] listed below which refers to this
paragraph 130.00
1.47 - for filing by other than all the inventors or a person not
the inventor.
1.48 - for correction of inventorship>, except in provisional
applications<.
1.182 - for decision on questions not specifically provided for.
1.183 - to suspend the rules.
1.295 - for review of refusal to publish a statutory invention
registration.
1.377 - for review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent.
1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in expired patent.
1.644(e) - for petition in an interference.
1.644(f) - for request for reconsideration of a decision on petition
in an interference.
1.666(c) - for late filing of interference settlement agreement.
5.12, 5.13 & 5.14 - for expedited handling of a foreignfiling
license.
5.15 - for changing the scope of a license.
5.25 - for retroactive license.
(i)[(1)] For filing a petition to the Commissioner under a section [of
this part] listed below which refers to this
paragraph 130.00
1.12 - for access to an assignment record.
1.14 - for access to an application.
1.53 - to accord a filing date<, except in provisional applications<.
1.55 - for entry of late priority papers.
[ 1.60 - to accord a filing date.]
1.62 - to accord a filing date.
1.97(d)- to consider an information disclosure statement.
> 1.102 - to make application special.<
1.103 - to suspend action in application.
1.177 - for divisional reissues to issue separately.
1.312 - for amendment after payment of issue fee.
1.313 - to withdraw an application from issue.
1.314 - to defer issuance of a patent.
1.666(b) - for access to interference settlement agreement.
3.81 - for patent to issue to assignee, assignment submitted after
payment of the issue fee.
[(2) For filing a petition to the Commissioner under 1.102 of this part
to make application special 130.00]
* * * * *
>(q) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph:
By a small entity ( 1.9(f)) 25.00
By other than a small entity 50.00
1.48 - for correction of inventorship in a provisional application.
1.53 - to accord a provisional application a filing date or to
convert an application filed under 1.53(b)(1) to a provisional
application.
(r) For filing a submission after final rejection under 1.129(a)
730.00
(s) For each additional invention requested to be examined under
1.129(b) 730.00<
8. Section 1.21 is proposed to be amended by removing paragraph (l), by
revising paragraph (n), and republishing the introductory text to read as
follows:
1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the following fees for
the services indicated:
* * * * *
(l) >[Reserved]< [For processing and retaining any application
abandoned pursuant to 1.53(d) unless the required basic filing fee has
been paid $130.00]
* * * * *
(n) For handling an incomplete or improper application under 1.53(c)[,
1.60] or 1.62 $130.00
* * * * *
9. Section 1.28 is proposed to be amended by revising paragraph (a) to
read as follows:
1.28 Effect on fees of failure to establish status, or change status,
as a small entity.
(a) The failure to establish status as a small entity ( 1.9(f) and
1.27 of this part) in any application or patent prior to paying, or at the
time of paying, any fee precludes payment of the fee in the amount
established for small entities. A refund pursuant to 1.26 of this part,
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 a verified statement under 1.27 and a request for a refund
of the excess amount are filed within two months of the date of the timely
payment of the full fee. The two-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 two
months of the date of payment of, the fee. Status as a small entity must
be specifically established [by a verified statement filed] in each
application or patent in which the status is available and desired[,
except those applications filed under 1.60 or 1.62 of this part
where the status as a small entity has been established in a parent
application and is still proper]. >Status as a small entity in one
application or patent does not affect any other application or patent,
including applications or patents which are directly or indirectly
dependent upon the application or patent in which the status has been
established. Applications filed as continuations, divisions or
continuations-in-part of a parent application must include a reference to
a verified statement in the parent application or include a copy of the
verified statement filed in the parent application if status as a small
entity is still proper and desired.< Once status as a small entity has
been established in an application or patent, the status remains in that
application or patent without the filing of a further verified statement
pursuant to 1.27 of this part unless the Office is notified of a change
in status. [Status as a small entity in one application or patent does not
affect any other application or patent, including applications or patents
which are directly or indirectly dependent upon the application or patent
in which the status has been established, except those filed under 1.60
or 1.62 of this part. Applications filed under 1.60 or 1.62 of
this part must include a reference to a verified statement in a parent
application if status as a small entity is still proper and desired.]
* * * * *
10. Section 1.45 paragraph (c) is proposed to be revised to read as
follows:
1.45 Joint inventors.
* * * * *
(c) If multiple inventors are named in an application, >other than a
provisional application under 1.53(b)(2),< 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.<
11. Section 1.48 is proposed to be revised to read as follows:
1.48 Correction of inventorship.
(a) If the correct inventor or inventors are not named in an
application for patent >,other than a provisional application,< through
error without any deceptive intention on the part of the actual inventor
or inventors, the application may be amended to name only the actual
inventor or inventors. Such amendment must be diligently made and must be
accompanied by:
(1) a petition including a statement of facts verified by the original
named inventor or inventors establishing when the error without deceptive
intention was discovered and how it occurred;
(2) an oath or declaration by each actual inventor or inventors as
required by 1.63;
(3) the fee set forth in 1.17(h); and
(4) the written consent of any assignee. When the application is
involved in an interference, the petition shall comply with the
requirements of this section and shall be accompanied by a motion under
1.634.
(b) If the correct inventors are named in the application >,other than
a provisional application,< when filed and the prosecution of the
application results in the amendment or cancellation of claims so that
less than all of the originally named inventors are the actual inventors
of the invention being claimed in the application, an amendment shall be
filed deleting the names of the person or persons who are not inventors of
the invention being claimed. The amendment must be diligently made and
shall be accompanied by:
(1) A petition including a statement identifying each named inventor
who is being deleted and acknowledging that the inventor's invention is no
longer being claimed in the application, and
(2) The fee set forth in 1.17(h).
(c) If an application >other than a provisional application< discloses
unclaimed subject matter by an inventor or inventors not named in the
application, the application may be amended pursuant to paragraph (a) of
this section to add claims to the subject matter and name the correct
inventors for the application.
>(d) If the name or names of an inventor or inventors were omitted in a
provisional application for patent filed under 1.53(b)(2) through error
without any deceptive intentionon the part of the actual inventor or
inventors, the provisional application may be amended to add the name or
names of the actual inventor or inventors. Such amendment must be
accompanied by:
(1) a petition including a statement that the error occurred without
deceptive intention on the part of the actual inventor or inventors, which
statement must be a verified statement if made by a person not registered
to practice before the Patent and Trademark Office; and
(2) the fee set forth in 1.17(q).<
12. Section 1.51 is proposed to be amended by revising paragraphs (a) and
(b) to read as follows:
1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of
Patents and Trademarks.
>(1)< A complete application >filed under 1.53(b)(1)< comprises:
>(i)<[(1)] A specification, including a claim or claims, see 1.71 to
1.77.;<
>(ii)<[(2)] An oath or declaration, see 1.63 and 1.68.>;<
>(iii)<[(3)] Drawings, when necessary, see 1.81 to >1.85<[1.88.]>;
and<
>(iv)<[(4)] The prescribed filing fee, see 1.16.
>(2) A complete provisional application filed under 1.53(b)(2)
comprises:
(i) A cover sheet identifying:
(A) The application as a provisional application,
(B) The name or names of the inventor or inventors, (see 1.41),
(C) The title of the invention,
(D) The name and registration number of the attorney or agent (if
applicable),
(E) The docket number used by the person filing the application to
identify the application (if applicable), and
(F) The correspondence address;
(ii) A specification as prescribed by 35 U.S.C. 112, first paragraph,
see 1.71;
(iii) Drawings, when necessary, see 1.81 to 1.85; and
(iv) The prescribed filing fee, see 1.16.<
(b) Applicants are encouraged to file an information disclosure
statement >in national applications other than provisional applications.<
See 1.97 and 1.98. >No information disclosure statement may be filed
in a provisional application filed under 1.53(b)(2).<
* * * * *
13. Section 1.53 paragraphs (a) - (e) are proposed to be revised to read
as follows:
1.53 [Serial] >Application< number, filing date, and completion of
application.
(a) Any application for a patent received in the Patent and Trademark
Office will be assigned >an application< [a serial] number for
identification purposes.
(b)>(1)< The filing date of an application for patent filed under this
section>, except for a provisional application,< is the date on which:
[(1)] a specification containing a description pursuant to 1.71 and at
least one claim pursuant to 1.75; and [(2)] any drawing required by
1.81(a), are filed in the Patent and Trademark Office in the name of the
actual inventor or inventors as required by 1.41. No new matter may be
introduced into an application after its filing date ( 1.118). If all
the names of the actual inventor or inventors are not supplied when the
specification and any required drawing are filed, the application will not
be given a filing date earlier than the date upon which the names are
supplied unless a petition with the fee set forth in 1.17(i)[(1)] is
filed which sets forth the reasons the delay in supplying the names should
be excused. A continuation>,<ordivisional >or continuation-in-part<
application (filed under the conditions specified in 35 U.S.C. 120 or 121
and 1.78(a)) may be filed >under< [pursuant to] this section[, 1.60]
or 1.62. [A continuation-in-part application may be filed pursuant to
this section or 1.62.]
>(2) The filing date of a provisional application is the date on which: a
specification as prescribed by 35 U.S.C. 112, first paragraph; and any
drawing required by 1.81(a), are filed in the Patent and Trademark
Office in the name of the actual inventor or inventors as required by
1.41. No amendment, other than to make the provisional application comply
with all applicable regulations, may be made to the provisional
application after the filing date of the provisional application. If all
the names of the actual inventor or inventors are not supplied when the
specification and any required drawing are filed, the provisional
application will not be given a filing date earlier than the date upon
which the names are supplied unless a petition with the fee set forth in
1.17(q) is filed which sets forth the reasons the delay in supplying the
names should be excused.
(i) A provisional application must also include a cover sheet identifying
the application as a provisional application. Otherwise, the application
will be treated as an application filed under 1.53(b)(1).
(ii) An application for patent filed under 1.53(b)(1) may be treated as
a provisional application and be accorded the original filing date
provided that a petition requesting the conversion, with the fee set forth
in 1.17(q), is filed prior to the earlier of either the payment of the
issue fee or the expiration of 12 months after the filing date of the
provisional application. The grant of any such petition will not entitle
applicant to a refund of the fees which were properly paid in the
application filed under 1.53(b)(1).
(iii) A provisional application shall not be entitled to the right of
priority under 1.55 or 35 U.S.C. 119 or 365(a) or to the benefit of an
earlier filing date under 1.78 or 35 U.S.C. 120, 121 or 365(c) of any
other application. No claim for priority under 1.78(a)(3) may be made
in a design application based on a provisional application. No request
under 1.293 for a statutory invention registration may be filed in a
provisional application. The requirements of 1.821(e) regarding
sequence listings in computer readable form are not applicable to a
provisional application.<
(c) If any application is filed without the specification, drawing or
name, or names, of the actual inventor or inventors required by paragraph
(b)>(1) or (b)(2)< of this section, applicant will be so notified and
given a time period within which to submit the omitted specification,
drawing, name, or names, of the actual inventor, or inventors, in order to
obtain a filing date as of the date of filing of such submission. A copy
of the "Notice of Incomplete Application" form notifying the applicant
should accompany any response thereto submitted to the Office. If the
omission is not corrected within the time period set, the application will
be returned or otherwise disposed of; the fee, if submitted, will be
refunded less the handling fee set forth in 1.21(n). >Any request for
review of a refusal to accord an application a filing date must be by way
of a petition accompanied by the fee set forth in 1.17(i), if the
application was filed under 1.53(b)(1), or by the fee set forth in
1.17(q), if the application was filed under 1.53(b)(2).<
(d)>(1)< If an application which has been accorded a filing date
pursuant to paragraph (b)>(1)< of this section does not include the
appropriate filing fee or an oath or declaration by the applicant,
applicant will be so notified, if a correspondence address has been
provided and given a period of time within which to file the fee, oath, or
declaration and to pay the surcharge as set forth in 1.16(e) in order
to prevent abandonment of the application. A copy of the "Notice to File
Missing Parts" form mailed to applicant should accompany any response
thereto submitted to the Office. If the required filing fee is not timely
paid, [or if the processing and retention fee set forth in 1.21(l) is
not paid within one year of the date of mailing of the notification
required by this paragraph,] the application will be disposed of. No
copies will be provided or certified by the Office of an application which
has been disposed of or in which [neither] the required basic filing fee
[nor the processing and retention fee] has >not< been paid. The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (c) of this section. If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, oath or
declaration and to pay the surcharge as set forth in 1.16(e) in order
to prevent abandonment of the application[; or, if no basic filing fee has
been paid, one year from the filing date to pay the processing and
retention fee set forth in 1.21(l) to prevent disposal of the
application].
<(2) If a provisional application which has been accorded a filing date
pursuant to paragraph (b)(2) of this section does not include the
appropriate filing fee or the cover sheet required by 1.51(a)(2),
applicant will be so notified if a correspondence address has been
provided and given a period of time within which to file the fee, cover
sheet and to pay the surcharge as set forth in 1.16(l) in order to
prevent abandonment of the application. A copy of the "Notice to File
Missing Parts" form mailed to applicant should accompany any response
thereto submitted to the Office. If the required filing fee is not timely
paid, the application will be disposed of. No copies will be provided or
certified by the Office of an application which has been disposed of or in
which the required basic filing fee has not been paid. The notification
pursuant to this paragraph may be made simultaneously with any
notification pursuant to paragraph (c) of this section. If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, cover sheet and
to pay the surcharge as set forth in 1.16(l) in order to prevent
abandonment of the application.<
(e)>(1)< An application for a patent >filed under paragraph (b)(1) of
this section< will not be placed upon the files for examination until all
its required parts, complying with the rules relating thereto, are
received, except that certain minor informalities may be waived subject to
subsequent correction whenever required.
>(2) A provisional application for a patent filed under paragraph (b)(2)
of this section will not be placed upon the files for examination and will
become abandoned no later than twelve months after its filing date
pursuant to 35 U.S.C. 111(b)(1).<
* * * * *
14. Section 1.55 is proposed to be revised to read as follows:
1.55 Claim for foreign priority.
(a) An applicant >in an application other than a provisional
application< may claim the benefit of the filing date of a prior foreign
application under the conditions specified in 35 U.S.C. 119>(a) - (d)< and
172. The claim to priority need be in no special form and may be made by
the attorney or agent if the foreign application is referred to in the
oath or declaration as required by 1.63. The claim for priority and the
certified copy of the foreign application specified in [the second
paragraph of] 35 U.S.C. 119>(b)< must be filed:
(1) in the case of an interference ( 1.630);
(2) when necessary to overcome the date of a reference relied upon by the
examiner;
(3) when specifically required by the examiner; and
(4) in all other cases, before the patent is granted. If the claim for
priority or the certified copy of the foreign application is filed after
the date the issue fee is paid, it must be accompanied by a petition
requesting entry and by the fee set forth in 1.17(i)[(1)]. If the
certified copy filed is not in the English language, a translation need
not be filed except in the case of interference; or when necessary to
overcome the date of a reference relied upon by the examiner; or when
specifically required by the examiner, in which event an English language
translation must be filed together with a statement that the translation
of the certified copy is accurate. The statement must be a verified
statement if made by a person not registered to practice before the Patent
and Trademark Office.
(b) An applicant may under certain circumstances claim priority on the
basis of an application for an inventor's certificate in a country
granting both inventor's certificates and patents. When an applicant
wishes to claim the right of priority as to a claim or claims of the
application on the basis of an application for an inventor's certificate
in such a country under 35 U.S.C. 119>(d)<, [last paragraph (as amended
July 28, 1972),] the applicant or his or her attorney or agent, when
submitting a claim for such right as specified in paragraph (a) of this
section, shall include an affidavit or declaration including aspecific
statement that, upon an investigation, he or she has satisfied himself or
herself that to the best of his or her knowledge the applicant, when
filing his or her application for the inventor's certificate, had the
option to file an application either for a patent or an inventor's
certificate as to the subject matter of the identified claim or claims
forming the basis for the claim of priority.
15. Section 1.59 is proposed to be revised to read as follows:
1.59 Papers of application with filing date not to be returned.
Papers in an application which has received a filing date pursuant to
1.53 will not be returned for any purpose whatever. If applicants have
not preserved copies of the papers, the Office will furnish copies at the
usual cost of any application in which [either] the required basic filing
fee ( 1.16) [or the processing and retention fee 1.21(l))] has been
paid. See 1.618 for return of unauthorized and improper papers in
interferences.
16. Section 1.60 is proposed to be removed and reserved.
1.60 >[Reserved]< [Continuation or divisional application for invention
disclosed in a prior application.]
17. Section 1.62 is proposed to be amended by revising paragraphs (a) and
(e) to read as follows:
1.62 File wrapper continuing procedure.
(a) A continuation, continuation-in-part, or divisional application, which
uses the specification, drawings and oath or declaration from a prior
complete application [( 1.51(a))]>as defined by 1.51(a)(1) (not a
prior complete provisional application as defined by 1.51(a)(2)), and<
which is to be abandoned, may be filed >under this section< before the
payment of the issue fee, abandonment of, or termination of proceedings on
the prior application. The filing date of an application filed under this
section is the date on which a request is filed for an application under
this section including identification of the [Serial Number, filing
date,]>application number< and applicant's name of the prior complete
application. If the continuation, continuation-in-part, or divisional
application is filed by less than all the inventors named in the prior
application a statement must accompany the application when filed
requesting deletion of the names of the person or persons who are not
inventors of the invention being claimed in the continuation,
continuation-in-part, or divisional application.
* * * * *
(e) An application filed under this section will utilize the file wrapper
and contents of the prior application to constitute the new continuation,
continuation-in-part, or divisional application but will be assigned a new
application [serial] number. Changes to the prior application must be made
in the form of an amendment to the prior application as it exists at the
time of filing the application under this section. No copy of the prior
application or new specification is required. The filing of such a copy or
specification will be considered improper, and a filing date as of the
date of deposit of the request for an application under this section will
not be granted to the application unless a petition with the fee set forth
in 1.17(i)[(1)] is filed with instructions to cancel the copy or
specification.
* * * * *
18. Section 1.63 is proposed to be amended by revising paragraph (a) to
read as follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under 1.51(a)[(2)]>(1)(ii)< as a part
of an application must:
(1) Be executed in accordance with either 1.66 or 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor and the residence and country of citizenship of
each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
* * * * *
19. Section 1.67 is proposed to be amended by revising paragraph (b) to
read as follows:
1.67 Supplemental oath or declaration. * * * * *
(b) A supplemental oath or declaration meeting the requirements of 1.63
must be filed: (1) When a claim is presented for matter originally shown
or described but not substantially embraced in the statement of invention
or claims originally presented; and (2) When an oath or declaration
submitted in accordance with 1.53(d)>(1)< after the filing of the
specification and any required drawings specifically and improperly refers
to an amendment which includes new matter. No new matter may be introduced
into an application after its filing date even if a supplemental oath or
declaration is filed[( 1.53(b); 1.118)]. In proper cases the oath or
declaration here required may be made on information and belief by an
applicant other than inventor.
* * * * *
20. Section 1.78 is proposed to be amended by revising paragraphs (a)(1)
and (a)(2) and by adding new paragraphs (a)(3) and (a)(4) to read as
follows:
1.78 Claiming benefit of earlier filing date and cross- references to
other applications.
(a)(1) An application >other than a provisional application< may claim an
invention disclosed in a prior filed copending national application >filed
under 1.53(b)(1) or 1.62 (not a provisional application (see
paragraph (a)(3) of this section))< or international application
designating the United States of America. In order for an application to
claim the benefit of a prior filed copending national application, the
prior application must name as an inventor at least one inventor named in
the later filed application and disclose the named inventor's invention
claimed in at least one claim of the later filed application in the manner
provided by the first paragraph of 35 U.S.C. 112. In addition, the prior
application must be
(i) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in 1.53(b)>(1) or 1.62<
and include the basic filing fee set forth in 1.16[; or]
[(iii) entitled to a filing date as set forth in 1.53(b) and have paid
therein the processing and retention fee set forth in 1.21(l) within
the time period set forth in 1.53(d)].
(2) Any application claiming the benefit of a prior filed copending
national or international application >other than a provisional
application< must contain or be amended to contain in the first sentence
of the specification following the title a reference to such prior
application, identifying it by application number (consisting of the
series code and serial number)[, or serial number and filing date] or
international application number and international filing date and
indicating the relationship of the applications. Cross-references to other
related applications may be made when appropriate. (See 1.14(b).)
>(3) An application other than for a design patent may claim an invention
disclosed in a prior filed copending provisional application filed under
1.53(b)(2). A provisional application can be pending for no more than
twelve months. In order for an application to claim the benefit of a prior
filed copending provisional application, the prior provisional application
must name as an inventor at least one inventor named in the later filed
application and disclose the named inventor's invention claimed in at
least one claim of the later filed application in the manner provided by
the first paragraph of 35 U.S.C. 112. In addition, the prior provisional
application must be
(i) complete as set forth in 1.51(a)(2); or
(ii) entitled to a filing date as set forth in 1.53(b)(2) and include
the basic filing fee set forth in 1.16(k).
(4) Any application claiming the benefit of a prior filed copending
provisional application must contain or be amended to contain in the first
sentence of the specification following the title a reference to such
prior provisional application, identifying it as a provisional
application, and including the provisional application number (consisting
of series code and serial number) and indicating the relationship of the
applications.<
* * * * *
21. Section 1.83 is proposed to be amended by revising paragraphs (a) and
(c) to read as follows:
1.83 Content of drawing.
(a)>(1)< The drawing >in an application other than a provisional
application< must show every feature of the invention specified in the
claims. However, conventional features disclosed in the description and
claims, where their detailed illustration is not essential for a proper
understanding of the invention, should be illustrated in the drawing in
the form of a graphical drawing symbol or a labeled representation (e.g. a
labeled rectangular box).
>(2) The drawing in a provisional application filed under 1.53(b)(2)
must show every feature of the invention disclosed in the description
where necessary to understand the subject matter of that invention.
However, conventional features disclosed in the description, where their
detailed illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a graphical
drawing symbol or a labeled representation (e.g. a labeled rectangular
box).<
* * * * *
(c) Where the drawings do not comply with the requirements of paragraphs
(a)>(1)< and (b) of this section, the examiner shall require such
additional illustration within a time period of not less than two months
from the date of the sending of a notice thereof. Such corrections are
subject to the requirements of 1.81(d).
22. Section 1.97 is proposed to be amended by revising paragraph (d) to
read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(d) An information disclosure statement shall be considered by the
Office if filed after the mailing date of either:
(1) A final action under 1.113 or
(2) A notice of allowance under 1.311, whichever occurs first, but
before payment of the issue fee, provided the statement is accompanied by:
(i) A certification as specified in paragraph (e) of this section,
(ii) A petition requesting consideration of the information disclosure
statement, and
(iii) The petition fee set forth in 1.17(i)[(1)].
* * * * *
23. Section 1.101 is proposed to be amended by revising paragraph (a) to
read as follows:
1.101 Order of examination.
(a) Applications filed in the Patent and Trademark Office and accepted as
complete applications>, except for provisional applications filed under
1.53(b)(2) which are not examined,< are assigned for examination to the
respective examining groups having the classes of inventions to which the
applications relate. Applications shall be taken up for examination by the
examiner to whom they have been assigned in the order in which they have
been filed except for those applications in which examination has been
advanced pursuant to 1.102. See 1.496 for order of examination of
International applications in the national stage.
* * * * *
24. Section 1.102 is proposed to be amended by revising paragraph (d) to
read as follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on grounds other than those
referred to in paragraph (c) of this section must be accompanied by the
petition fee set forth in 1.17(i)[(2)].
25. Section 1.103 is proposed to be amended by revising paragraph (a) to
read as follows:
1.103 Suspension of action.
(a) Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by the
applicant and, if such cause is not the fault of the Office, the payment
of the fee set forth in 1.17(i)[(1)]. Action will not be suspended when
a response by the applicant to an Office action is required.
* * * * *
26. A new, undesignated center heading and new section 1.129 are proposed
to be added to Subpart B-National Processing Provisions to read as follows:
>TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination after final
rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a design
patent, that has been pending for at least two years as of the effective
date of 35 U.S.C. 154(a)(2), taking into account any reference made in
such application to any earlier filed application under 35 U.S.C. 120, 121
and 365(c), is entitled to have a first submission entered and considered
on the merits after final rejection under the following circumstances: The
Office will consider such a submission, to the extent that it would have
been entered and considered if made prior to final rejection, if the first
submission is filed prior to or simultaneously with the filing of a notice
of appeal and prior to abandonment of the application and the fee set
forth in 1.17(r) is paid within one month of any written notification
from the Office refusing entry of the first submission and prior to
abandonment of the application. If a subsequent final rejection is made in
the application, applicant is entitled to have a second submission entered
and considered on the merits after the subsequent final rejection under
the following circumstances: The Office will consider such a submission,
to the extent that it would have been entered and considered if made prior
to final rejection, if the second submission is filed prior to or
simultaneously with the filing of a notice of appeal of the subsequent
final rejection and prior to abandonment of the application and a second
fee set forth in 1.17(r) is paid within one month of any written
notification from the Office refusing entry of the second submission and
prior to abandonment of the application. Any submission filed after a
final rejection made in an application subsequent to the fee set forth in
1.17(r) having been twice paid will be treated as set forth in 1.116.
A submission as used in this paragraph includes, but is not limited to, an
information disclosure statement, an amendment to the written description,
claims or drawings and a new substantive argument or new evidence in
support of patentability.
(b)(1) In an application, other than for reissue or a design patent, that
has been pending for at least three years as of the effective date of 35
U.S.C. 154(a)(2), taking into account any reference made in the
application to any earlier filed application under 35 U.S.C. 120, 121 and
365(c), no requirement for restriction or for the filing of divisional
applications shall be made or maintained in the application after the
effective date, except where:
(i) the requirement was first made in the application or any earlier filed
application under 35 U.S.C. 120, 121 and 365(c) more than two months prior
to the effective date;
(ii) the examiner has not issued any Office action in the application due
to actions by the applicant; or
(iii) the required fee for examination of each additional invention was
not paid.
(2)If the application contains more than one independent and distinct
invention and a requirement for restriction or for the filing of
divisional applications cannot be made or is withdrawn pursuant to this
paragraph, applicant will be so notified and given a time period of one
month from the notice to pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the application in excess of
one. If applicant does not pay the required fee for each additional
invention in a timely manner, only the first claimed invention and those
additional inventions for which the fee has been paid will be searched and
examined. The additional inventions for which the required fee has not
been paid will be withdrawn from consideration under 1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under 35 U.S.C. 121.
The provisions of this section shall not be applicable to any
application filed on or after the effective date of 35 U.S.C. 154(a)(2).<
27. Section 1.139 is proposed to be added to read as follows:
> 1.139 Revival of provisional application.
(a) A provisional application which has been accorded a filing date and
abandoned for failure to timely respond to an Office requirement may be
revived so as to be pending for a period of no longer than twelve months
from its filing date if it is shown to the satisfaction of the
Commissioner that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months from its filing
date. A petition to revive an abandoned provisional application must be
promptly filed after the applicant is notified of, or otherwise becomes
aware of, the abandonment, and must be accompanied by:
(1) the required response unless it has been previously filed;
(2) the petition fee as set forth in 1.17(l); and
(3) a showing that the delay was unavoidable. The showing must be a
verified showing if made by a person not registered to practice before the
Patent and Trademark Office.
(b) A provisional application which has been accorded a filing date and
abandoned for failure to timely respond to an Office requirement may be
revived so as to be pending for a period of no longer than twelve months
from its filing date if the delay was unintentional. Under no
circumstances will the provisional application be pending after twelve
months from its filing date. A petition to revive an abandoned provisional
application must be:
(1) accompanied by the required response unless it has been previously
filed;
(2) accompanied by the petition fee as set forth in 1.17(m);
(3) accompanied by a statement that the delay was unintentional. The
statement must be a verified statement if made by a person not registered
to practice before the Patent and Trademark Office. The Commissioner may
require additional information where there is a question whether the delay
was unintentional; and
(4) filed either:
(i) within one year of the date on which the provisional application
became abandoned; or
(ii) within three months of the date of the first decision on a petition
to revive under paragraph (a) of this section which was filed within one
year of the date on which the provisional application became abandoned.
(c) Any request for reconsideration or review of a decision refusing to
revive a provisional application upon petition filed pursuant to
paragraphs (a) or (b) of this section, to be considered timely, must be
filed within two months of the decision refusing to revive or within such
time as set in the decision.
(d) The time periods set forth in this section cannot be extended,
except that the three-month period set forth in paragraph (b)(4)(ii) of
this section and the time period set forth in paragraph (c) of this
section may be extended under the provisions of 1.136.<
28. Section 1.177 is proposed to be revised to read as follows:
1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause several patents
to be issued for distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the required fee for each
division. Each division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the invention claimed in
such division; and the drawing may represent only such part or parts,
subject to the provisions of 1.83 and 1.84. On filing divisional
reissue applications, they shall be referred to the Commissioner. Unless
otherwise ordered by the Commissioner upon petition and payment of the fee
set forth in 1.17(i)[(1)], all the divisions of a reissue will issue
simultaneously; if there be any controversy as to one division, the others
will be withheld from issue until the controversy is ended, unless the
Commissioner shall otherwise order.
29. Section 1.312 is proposed to be amended by revising paragraph (b) to
read as follows:
1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph (a) of this section filed after
the date the issue fee is paid must be accompanied by a petition including
the fee set forth in 1.17(i)[(1)] and a showing of good and sufficient
reasons why the amendment is necessary and was not earlier presented.
30. Section 1.313 is proposed to be amended by revising paragraph (a) to
read as follows:
1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at the
initiative of the Office or upon petition by the applicant. Any such
petition by the applicant must include a showing of good and sufficient
reasons why withdrawal of the application is necessary and, if the reason
for the withdrawal is not the fault of the Office, must be accompanied by
the fee set forth in 1.17(i)[(1)]. If the application is withdrawn from
issue, a new notice of allowance will be sent if the application is again
allowed. Any amendment accompanying a petition to withdraw an application
from issue must comply with the requirements of 1.312.
* * * * *
31. Section 1.314 is proposed to be revised to read as follows:
1.314 Issuance of patent.
If payment of the issue fee is timely made, the patent will issue in
regular course unless[-(a) The] >the< application is withdrawn from issue
( 1.313), or [(b) Issuance] >issuance< of the patent is deferred.
Any petition by the applicant requesting a deferral of the issuance of
a patent must be accompanied by the fee set forth in 1.17(i)[(1)] and
must include a showing of good and sufficient reasons why it is necessary
to defer issuance of the patent.
32. Section 1.666 is proposed to be amended by revising paragraph (b) to
read as follows:
1.666 Filing of interference settlement agreements.
* * * * *
(b) If any party filing the agreement or understanding under paragraph
(a) of this section so requests, the copy will be kept separate from the
file of the interference, and made available only to Government agencies
on written request, or to any person upon petition accompanied by the fee
set forth in 1.17(i)[(1)] and on a showing of good cause.
* * * * *
33. Section 1.701 is proposed to be added to Subpart F to read as follows:
> 1.701 Extension of patent term due to prosecution delay.
(a) A patent, other than for designs, issued on an application filed on
or after [the implementation date] is entitled to extension of the patent
term if the issuance of the patent was delayed due to:
(1) proceedings under 35 U.S.C. 135(a), and/or
(2) the application being placed under a secrecy order under 35 U.S.C.
181, and/or
(3) appellate review by the Board of Patent Appeals and Interferences or
by a federal court under 35 U.S.C. 141 or 145, if the patent was issued
pursuant to a decision reversing an adverse determination of patentability
and if the patent is not subject to a terminal disclaimer due to the
issuance of another patent claiming subject matter that is not patentably
distinct from that under appellate review.
(b) The term of a patent entitled to extension under paragraph (a) of
this section shall be extended for the sum of the periods of delay
calculated under paragraphs (c)(1), (c)(2) and (c)(3) of this section, to
the extent that these periods are not overlapping, up to a maximum of five
years. The extension will run from the original expiration date of the
patent unless an earlier expiration date is set by terminal disclaimer (
1.321).
(c)(1) The period of delay under paragraph (a)(1) of this section for
an application is the sum of the following periods, to the extent that the
periods are not overlapping:
(i) with respect to each interference, if any, in which the application
was involved, the number of days in the period beginning on the date the
interference was declared or redeclared to involve the application in the
interference and ending on the date that the interference was terminated
with respect to the application; and
(ii) the number of days, if any, in the period beginning on the date
prosecution in the application is suspended by the Patent and Trademark
Office due to interference proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the next Office
communication reopening prosecution.
(2) The period of delay under paragraph (a)(2) of this section for an
application is the sum of the following periods, to the extent that the
periods are not overlapping:
(i) the number of days, if any, the application is maintained in a sealed
condition under 35 U.S.C. 181;
(ii) the number of days, if any, in the period beginning on the date of
mailing of an examiner's answer under 1.193 in the application under
secrecy order and ending on the date the secrecy order and any renewal
thereof is removed;
(iii) the number of days, if any, in the period beginning on the date
applicant is notified that an interference would be declared but for the
secrecy order and ending on the date the secrecy order and any renewal
thereof is removed; and
(iv) the number of days, if any, in the period beginning on the date of
notification under 5.3(c) and ending on the date of mailing of the
notice of allowance under 1.311.
(3) The period of delay under paragraph (a)(3) of this section is the
sum of the number of days, if any, in the period beginning on the date on
which an appeal to the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and ending on the date of a final decision in favor of
the applicant by the Board of Patent Appeals and Interferences or by a
federal court in an appeal under 35 U.S.C. 141 or a civil action under 35
U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3) shall be reduced
by:
(1) any time calculated pursuant to paragraph (c)(3) of this section
before the expiration of three years from the filing date of the first
national application for patent presented for examination, and
(2) any time, as determined by the Commissioner, during which the
applicant for patent did not act with due diligence. In determining the
due diligence of an applicant, the Commissioner will examine the facts and
circumstances of the applicant's actions during the pendency period of the
application to determine whether the applicant exhibited that degree of
timeliness as may reasonably be expected from, and which is ordinarily
exercised by, a person during the pendency period of an application.<
PART 3--ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE
34. The authority citation for 37 CFR Part 3 would continue to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
35. Section 3.21 is proposed to be revised to read as follows:
3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/123,456)[or
the serial number and filing date]. An assignment relating to an
international patent application which designates the United States of
America must identify the international application by the international
application number (e.g., PCT/US90/01234). If an assignment >of a patent
application filed under 1.53(b)(1) or 1.62< is executed concurrently
with, or subsequent to, the execution of the patent application, but
before the patent application is filed, it must identify the patent
application by its date of execution, name of each inventor, and title of
the invention so that there can be no mistake as to the patent application
intended.>If an assignment of a provisional application is executed before
the provisional application is filed, it must identify the provisional
application by name of each inventor and title of the invention so that
there can be no mistake as to the provisional application intended.<
36. Section 3.81 is proposed to be amended by revising paragraph (b) to
read as follows:
3.81 Issue of patent to assignee.
* * * * *
(b) If the assignment is submitted for recording after the date of
payment of the issue fee, but prior to issuance of the patent, the
assignee may petition that the patent issue to the assignee. Any such
petition must be accompanied by the fee set forth in 1.17(i)[(1)] of
this Chapter.
Dec. 5, 1994 MICHAEL K. KIRK
Deputy Assistant Secretary
of Commerce and Deputy
Commissioner of Patents
and Trademarks