Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3, 5 and 7
[Docket No.960606163-6163-01]
RIN: 0651-AA80
1996 Changes to Patent Practice and Procedure
Ageny: 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 simplify the requirements of
the rules, rearrange portions of the rules for better context, and
eliminate unnecessary rules or portions thereof as part of a
government-wide effort to reduce the regulatory burden on the American
public. The procedure for filing of continuation and divisional
applications would be simplified. Another type of simplification being
proposed that would affect several rules is the acceptance of a
statement that errors were made without deceptive intent, unaccompanied
by any further showing of facts and circumstances. The naming of
inventors would no longer be required on filing of the application in
order to obtain a filing date, which would eliminate the need for
certain petitions to correct inventorship.
Dates: Written comments must be received on or before November 25, 1996
to ensure consideration.
Comments will be available for public inspection after receipt and
will be available on the Internet (address: regreform@.uspto.gov).
Commentators should note that since their comments will be made publicly
available, information that is not desired to be made public, such as
the address and phone number of the commentator, should not be included
in the comments. A public hearing will not be conducted.
Addresses: Comments should be sent by mail message over the Internet
addressed to regreform@.uspto.gov.
Comments may also be submitted by mail addressed to: Box Comments -
Patents, Assistant Commissioner for Patents, Washington, D.C. 20231,
Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although
comments may be submitted by mail or FAX, the Office prefers to receive
comments via the Internet. Where comments are submitted by mail, the
Office would appreciate the comments to be electronically filed on a DOS
formatted 3 1/4 inch disk along with a paper copy of the comments.
The comments will be available for public inspection in Suite 520, of
One Crystal Park, 2011 Crystal Drive, Arlington, Virginia.
For Further Information Contact: Hiram H. Bernstein, by telephone at
(703) 305-9285 or by mail addressed to: Box Comments - Patents,
Assistant Commissioner for Patents, Washington, D.C. 20231 marked to the
attention of Mr. Bernstein or by FAX to (703) 308-6916.
Supplementary Information: This proposed rule change seeks to implement
President Clinton's program of reducing the regulatory burden on the
American public, which program is supported by the Office as published
in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19,
20 and 22. The proposed changes are directed towards: (1) simplification
of procedures for filing continuation and divisional applications,
establishing lack of deceptive intent in reissues, petition practice,
and in the filing of papers correcting improperly requested small entity
status; (2) elimination of unnecessary requirements, such as certain
types of petitions to correct inventorship under 1.48; (3) removal of
rules and portions thereof that merely represent instructions as to the
internal affairs of the Office more appropriate for inclusion in the
Manual of Patent Examining Procedure (MPEP); (4) rearrangement of
portions of rules to improve their context; and (5) clarification of
rules to aid in understanding of the requirements that they set forth.
The Office is particularly interested in comments as to whether the
proposed rules if adopted should be applied to already pending reissue
oaths or declarations under the new proposed standards of 1.175 as it
is to be amended under the final rule and already pending petitions and
papers under 1.28(c)(2), 1.48 and 1.324 as they are to be amended
under the final rule for such papers submitted prior to the effective
date of any final rule change, i.e., should the advantages proposed by
these suggested rule changes that are incorporated into the final rule
be applied retroactively to papers submitted prior to the effective date
of the final rule.
Discussion of Specific Rules
If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7 are
amended as proposed:
Section 1.4(d) paragraphs (1) and (2) would be amended to place the
current subject matter of both paragraphs into paragraphs (d)(1)(i) and
(ii) with a clarifying reference in paragraph (d)(1)(ii) to the
submission of a copy of a copy.
Paragraph (d)(2) of 1.4 would be amended so that the
certifications set forth in the rule would be automatically made upon
presenting any paper to the Office by the party presenting the paper and
in an added paragraph (d)(3)(ii) identifying by the statute, 18 U.S.C.
1001 that sets forth the required standards of conduct. Sanctions would
be set forth in a 1.4(d)(3)(i) for violation of the certifications in
1.4(d)(2) and for violations of the standards of conduct in
1.4(d)(3)(ii).
The proposed amendments to 1.4(d) would support proposed
amendments to 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69,
1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will
be reviewed at a later date in connection with other matters), 3.26, and
5.4 that would delete the requirement for verification (MPEP 602) of
statements of facts by applicants and other parties who are not
registered to practice before the Office. The absence of a required
verification has been a source of delay in the prosecution of
applications, particularly where such absence is the only defect noted.
The proposed change to 1.4(d) would automatically incorporate
required averments thereby eliminating the necessity for a separate
verification for each statement of facts that is to be presented, except
for those instances where the verification requirement is retained.
Similarly, the proposed amendments to 1.4(d) would support a proposed
amendment to 1.97 ( 1.637 and 1.673 will be reviewed at a later
date in connection with other matters) that would change the
requirements for certifications to requirements for statements. The oath
or declaration under 1.63 and affidavits under 1.131 and 1.132
would not be affected. The requirement in 5.25(a)(3) for a verified
statement would bemaintained, as the required explanation must include a
showing of facts (evidence), not mere allegations, which will be weighed
by the official deciding the petition for retroactive license. The
statements in 1.494(e) and 1.495(f) that verification of
translations of documents filed in a language other than English may be
required would be maintained, as such requirements are made rarely and
only when deemed necessary (when persons persist in translations which
appear on their face to be inaccurate, for example). The requirements
for certification of service on parties in 1.248, 1.510, 1.637 and
10.142 would be maintained.
Section 1.4 would also have a new paragraph (g) related to an
applicant who has not made of record a registered attorney or agent
being required to state whether assistance was received in the
preparation or prosecution of a patent application. This is proposed to
be transferred from 1.33(b) for consistent contextual purposes.
Section 1.6 paragraph (e)(2) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.8 paragraph (b)(3) would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.10 would be amended to remove the requirement for a
statement that is verified. See comments to 1.4(d). It is also
proposed to clarify the section by substitution of "averring to the
fact" with "stating."
Section 1.14 would have the title and paragraphs (a) and (e) amended
to replace the term "secrecy" by "confidence" to conform to the usage in
35 U.S.C. 122. Paragraph (a) of 1.14 would have a reference to serial
number changed to application number. Section 1.14 would also be amended
to have paragraph (f) added to recognize the proposed change to
1.47(a) and (b) that are also exceptions to maintaining pending
applications in confidence by providing public notice of the prospective
issuance of a pending application to nonsigning inventors.
Section 1.17 (and 1.136(a)) would add a recitation to an extension
of time fee payment for a reply filed within a fifth month after a
nonstatutory or shortened statutory period for reply was set. Section
1.17(a) is specifically proposed to be subdivided into paragraphs (a)(1)
through (a)(5), with paragraphs (a)(1) through (a)(4) setting forth the
amounts for one-month through four-month extension fees proposed in
Revision of Patent Fees for Fiscal Year 1997, 1186 Off. Gaz. Pat. Office
14 (May 7, 1996); 61 FR 19224 (May 1, 1996). Paragraph (a)(5) would
provide the small and other than small entity amounts for the newly
proposed fifth-month extension fee. Sections 1.17(b), (c) and (d) are
proposed to be removed as unnecessary in view of proposed 1.17(a)(1)
through (a)(5).
Fee levels, as proposed by the Revision of Patent Fees for Fiscal
Year 1997, were used in establishing the fifth-month extension of time
fees for large and small entities for paragraph (a)(5) of 1.17. A
shortened statutory period for reply of one month may be set, thereby
allowing a fifth month for reply within the six-month statutory period
for response. Section 1.17(a) is being amended to recognize the
availability of a fifth-month extension of time when a one-month or a
thirty-day shortened statutory period is set (e.g., in a written
requirement for restriction). The addition of a fifth-month would then
also become available for replies with nonstatutory periods of time set,
such as for replies to Notices to File Missing Parts of Applications.
Section 1.17(i), as proposed, would: add a petition fee under 1.59
for expungement and return of papers, delete the references to petitions
under 1.60 and 1.62 to accord a filing date in view of the proposed
deletion of 1.60 and 1.62, and to change "divisional reissues" to
"multiple reissue applications." Moreover, 1.17, as well as
1.103, 1.112, 1.113, 1.133, 1.134, 1.135, 1.136, 1.142, 1.144, 1.146,
1.191, 1.192, 1.291, 1.294, 1.484, 1.485, 1.488, 1.494, 1.495, 1.530,
1.550, 1.560, (1.605, 1.617, 1.640, and 1.652 will be reviewed at a
later date in connection with other matters), 1.770, 1.785, (1.821 will
be reviewed at a later date in connection with other matters), and 5.3,
would replace the phrases "response" and "respond" with "reply" for
consistency with 1.111.
Section 1.21(n), as proposed, would delete the reference to an
improper application under 1.60 or 1.62 in view of the proposed
deletion of 1.60 and 1.62.
Section 1.26(a) is proposed to be amended to better track the
statutory language of 35 U.S.C. 42(d) by deleting "[m]oney" and
"actual," adding "fee" and adding back language relating to refunds of
fees paid that were not "required" that was inadvertently dropped in the
July 1, 1993, publication of title 37 CFR, and from subsequent
publications.
Section 1.27(a) through (d) would be amended to remove the
requirement that a statement filed thereunder be "verified." See
comments relating to 1.4(d). Section 1.27(b) is proposed to be
amended for clarification with the movement of a clause relating to "any
verified statement" within a sentence.
Section 1.28(a) would be amended to remove the requirement for a
statement that is "verified." See comments relating to 1.4(d).
Section 1.28(a) would also be amended to provide that a new small
entity statement would not be required for reissue or continued
prosecution ( 1.53(b)(3)) applications where small entity status is
still proper and reliance is had on a reference to a small entity
statement filed in a prior application or patent or a copy thereof is
supplied.
Section 1.28(a) would be further amended to state that the payment of
a small entity basic statutory filing fee in a nonprovisional continuing
application, which claims benefit under 35 U.S.C. 119(e), 120, 121, or
365(c) of a prior application or in a continuing prosecution
application, or in a reissue application, wherein the prior application
or the patent has small entity status, will substitute for the reference
in the continuing or reissue application to the small entity statement
in the prior application or in the patent, thereby establishing small
entity status in such nonprovisional application.
Section 1.28(a) is also amended to require a new determination of
continued entitlement to small entity status for continued prosecution
applications filed under 1.53(b)(3) and to clarify that the refiling
of applications as continuations, divisions and continuation-in-part
applications and the filing of reissue applications also require a new
determination of continued entitlement to small entity status prior to
reliance on small entity status in a prior application or patent.
Section 1.28(c) would have the requirement removed for a statement of
facts explaining how an error in payment of small entity fees occurred
in good faith and how and when the error was discovered. A fee
deficiency payment based on the difference between fees originally paid
as a small entity and the current large entity amount at the time of
full payment of the fee deficiency will be deemed to constitute a belief
by the party submitting the deficiency payment that small entity status
was established in good faith and that the original payment of small
entity fees was made in good faith. Any paper submitted under 1.28(c)
will be placed in the appropriate file without review after the
processing of any check or the charging of any fee deficiency payment
specifically authorized.
Section 1.33 would no longer provide that the required residence and
post office address of the applicant can appear elsewhere than in the
oath or declaration under 1.63. Section 1.63(a)(3) would be amended
to require that the post office address as well as the residence be
identified therein and not elsewhere. Permitting the residence to be
elsewhere in the application other than the oath or declaration, as in
current 1.33(a), is inconsistent with current 1.63(c) that states
the residence must appear in the oath or declaration. The requirement
for placement of the post office address is proposed to be made
equivalent to the requirement for the residence to eliminate confusion
between the two, which often are the same destination and are usually
provided in the oath or declaration. The reference in 1.33(a) to the
assignee providing a correspondence address has been moved within
1.33(a) for clarification. Other clarifying language including a
reference to 1.34(b), use of the terms "provided," "furnished" rather
than "notified," and "application" rather than "case," while "of which
the Office" would be deleted.
Section 1.33(b) would be removed and the subject matter transferred
to new 1.4(g).
Section 1.41(a) (and 1.53) would no longer require that a patent
be applied for in the name of the actual inventors for an application
for patent to receive a filing date. The requirement for use of full
names would be moved to 1.63(a) for better context. The requirement
for naming of the inventor or inventors would be replaced with only a
request that such names or an identifying name be submitted on filing of
the application. The use of very short identifiers should be avoided to
prevent confusion. Without supplying at least an identifying name that
is specific the Office may have no ability or only a delayed ability to
match any papers submitted after filing of the application and before
issuance of an identifying Application number with the application file.
Any identifier used that is not an inventor's name must be specific,
alphanumeric characters of reasonable length, and must be presented in
such a manner that it is clear to application processing personnel what
the identifier is and where it is to be found. It is strongly suggested
that applications filed without an executed oath or declaration under
1.63 or 1.175 continue to use an inventor's name for identification
purposes. Failure to apprise the Office of the application identifier
being used will result in applicants having to resubmit papers that
could not be matched with the application and proof of the earlier
receipt of such papers where submission was time dependent.
Paragraph (a) of 1.41 would also be amended to recite that the
actual inventor or inventors of an application are set forth in an
executed 1.63 oath or declaration to correspond to the proposed
change in 1.53(b)(1)(iii). Hence, the recitation of the inventorship
in an application submitted under 1.53(d) without an executed
oath or declaration for purposes of identification may be changed merely
by the later submission of an oath or declaration executed by a
different inventive entity without recourse to a petition under 1.48.
Section 1.47 would be amended to provide for publication in the
Official Gazette of a notice of filing for all applications submitted
under this section rather than only when notice to the nonsigning
inventor(s) is returned to the Office undelivered or when the address of
the nonsigning inventor(s) is unknown. The information to be published
includes: the Application number, filing date, invention title and
inventors identifying the missing inventor.
Section 1.47 would also be amended for clarification purposes. A
reference to an "omitted inventor" in 1.47(a) would be replaced with
"nonsigning inventor." Statements in 1.47(a) and (b) that a patent
will be granted upon a satisfactory showing to the Commissioner would be
deleted as unnecessary. Section 1.47(b) is proposed to be amended to
clarify that it applies only where none of the inventors are willing or
can be found to sign the Declaration by substitution of "an inventor" by
"all the inventors." The use of "must state" in regard to the last known
address would be deleted as redundant in view of the explicit
requirement for such address in the rule. The sentence in 1.47(b)
referring to the filing of the assignment, written agreement to assign
or other evidence of proprietary interest would be deleted as redundant
in view of the requirement appearing earlier in 1.47(b) calling for
"proof of pertinent facts."
Section 1.48 for inventorship corrections in an application (
1.324, for inventorship corrections in a patent, and 1.175, for
reissue declarations) would no longer require factual showings to
establish a lack of deceptive intent. All that will be needed is a
statement to that effect.
Section 1.48 would be amended in its title to clarify that the
section is related to patent applications as opposed to patents.
Section 1.48(a) would not require correction of the inventorship if
the inventorship or other identification under 1.41 was set forth in
error on filing of the application. Section 1.48(a) is proposed to be
amended to apply only to correction of inventor or inventors from that
named in an originally filed executed oath or declaration and not to the
naming of inventors or others for identification purposes as is
currently proposed under 1.41. The statement to be submitted would be
required only from the person named in error as an inventor or from the
person who through error was not named as an inventor rather than from
all the original named inventors so as to comply with 35 U.S.C. 116. The
present requirement that any amendment of the inventorship under
1.48(a) be "diligently" made would be removed. The applicability of a
rejection under 35 U.S.C. 102(f)/(g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is deemed to provide sufficient motivation for prompt correction
of the inventorship without the need for a separate requirement for
diligence.
A clarifying reference to 1.634 would be added in 1.48(a) for
instances when inventorship correction is necessary during an
interference and has been moved from 1.48(a)(4) for improved
contextual purposes.
The 1.48(a)(1) statement would require a statement only as to the
lack of deceptive intent rather than a statement of facts to establish
how the inventorship error was discovered and how it occurred, since the
latter is proposed to be deleted. Additionally, the persons from whom a
statement is required now includes any person not named in error as an
inventor but limits statements from the original named inventors to only
those persons named in error as inventors rather than all persons
originally named as inventors including those correctly named. The
paragraph would be amended to remove the requirement that the statement
be verified in accordance with the proposed change to 1.4(d)(2).
Section 1.48(a)(2) would be amended for clarification purposes to
indicate the availability of 1.42, 1.43 or 1.47 in meeting the
requirement for an executed oath or declaration under 1.63 from each
actual inventor. Section 1.47 would only be applicable to the person to
be added as an inventor (inventors named in an application transmittal
letter can be deleted without petition). For those persons already
having submitted an executed oath or declaration under 1.63, a
petition under 1.183, requesting waiver of reexecution of an oath or
declaration, may be an appropriate remedy. The requirement for an oath
or declaration is maintained in 1.48(a) notwithstanding its
replacement in 1.324 for issued patents by a statement of agreement
or lack of disagreement with the requested change in view of the need to
satisfy the duty of disclosure requirement in a pending application that
is set forth in a 1.63 oath or declaration.
Section 1.48(a)(4) would be amended to include a citation to
3.73(b) to clarify the requirements for submitting a written consent of
assignee, which is subject to the requirement under 3.73(b), and to
delete the reference to an application involved in an interference,
which is being moved to 1.48(a). Section 1.48(a)(4) would also be
amended to clarify that the assignee required to submit its written
consent is only the existing assignee of the original named inventors at
the time the petition is filed and not any party that would become an
assignee based on the grant of the inventorship correction.
Section 1.48(b) would also be amended to remove the requirement that
a petition thereunder be diligently filed. The applicability of a
rejection under 35 U.S.C. 102(f)/(g) against an application with the
wrong inventorship set forth therein and any patent that would issue
thereon is deemed to provide sufficient motivation for prompt correction
of the inventorship without the need for a separate requirement for
diligence.
Section 1.48(b) would have a clarifying reference to 1.634 added
for instances when inventorship correction is necessary during an
interference.
Section 1.48(c) would be amended so that a petition thereunder no
longer need meet the current requirements of 1.48(a), which are also
proposed to be changed. A statement from each inventor being added that
the inventorship amendment is necessitated by amendment of the claims
and that the error occurred without deceptive intent would be required
under 1.48(c)(1) rather than the previous requirement of a statement
from each original named inventor. The previous requirements under
1.48(a) for an oath or declaration, the written consent of an assignee
and the written consent of any assignee are retained, but are now
separately set forth in 1.48(c)(2) through (c)(4). The particular
circumstances of a petition under this paragraph, adding an inventor due
to an amendment of the claims that incorporates material attributable to
the inventor to be added, is seen to be indicative of a lack of
deceptive intent in the original naming of inventors. Accordingly, all
that must be averred to is that an amendment of the claims has
necessitated correction of the inventorship and that the inventorship
error existing in view of the claim amendment occurred without deceptive
intent. The current requirement for diligence in filing the petition
based on an amendment to the claims would not be retained as applicants
have the right, prior to final rejection or allowance, to determine when
particular subject matter is to be claimed. Applicants should note that
any petition under 1.48 submitted after allowance is subject to the
requirements of 1.312, and a petition submitted after final rejection
is not entered as a matter of right. The statement of facts must be a
verified statement if made by a person not registered to practice before
the Patent and Trademark Office.
Section 1.48(c)(2) would clarify the availability of 1.42, 1.43
and 1.47 in meeting the requirement for an executed oath or declaration
under 1.63. Section 1.47 would only be applicable to the person to be
added as an inventor. For those persons already having an executed oath
or declaration under 1.63 a petition under 1.183, requesting
waiver of reexecution of an oath or declaration, may be an appropriate
remedy.
Section 1.48(c)(4) would clarify that the assignee required to submit
its written consent is only the existing assignee of the original named
inventors at the time the petition is filed and not any party that would
become an assignee based on the grant of the inventorship correction. A
citation to 3.73(b) would be presented.
Section 1.48(d) would be amended by addition of "their part" to
replace "the part of the actual inventor or inventors" and of "omitted"
to replace "actual" to require statements from the inventors to be added
rather than from all the actual inventors so as to comply with 35 U.S.C
116. Section 1.48(d)(1) would also be clarified to identify the error to
be addressed is the inventorship error. It is not expected that the
party filing a provisional application will normally need to correct an
error in inventorship under this paragraph by adding an inventor therein
except when necessary under 1.78 to establish an overlap of
inventorship with a continuing application. Automatic correction of the
inventorship is not possible as is the case for nonprovisional
applications when an executed oath or declaration under 1.63 with the
correct inventorship is later filed; sincean oath or declaration is not
to be submitted in provisional applications, 1.51(a)(2).
Section 1.48(d)(1) would be amended to remove the requirement that
the statement be verified in accordance with the proposed change to
1.4(d)(2).
Section 1.48(e)(1) would be amended to replace a requirement in
provisional applications that the required statement be one "of facts"
directed towards "establishing that the error" being corrected "occurred
without deceptive intention," thereby requiring only a statement that
the inventorship error occurred without deceptive intent. Paragraph
(e)(1) would also be amended to remove the requirement that the
statement be verified in accordance with the proposed change to
1.4(d)(2). It is not expected that the party filing a provisional
application would need to file a petition under this paragraph since the
application will go abandoned by operation of law, 1.53(e)(2), and
the need to delete an inventor will not affect the overlap of
inventorship needed to claim priority under 1.78(a)(3) for any
continuing application.
Section 1.48(e)(3) would be amended to clarify that the assignee
required to submit its written consent is only the prior existing
assignee before correction of the inventorship is granted and not any
party that would become an assignee based on the grant of the
inventorship correction and a reference to 3.73(b) would be added.
Section 1.48(f) would be added to provide that the later filing of an
executed oath or declaration would act to correct the inventorship
without a specific petition for such correction and would be used to
issue a filing receipt and process the application notwithstanding any
inventorship or other identification name earlier presented.
Section 1.48(g) would be added to specifically recognize that the
Office may require such other information as may be deemed appropriate
under the particular circumstances surrounding a correction of the
inventorship.
Section 1.51(c) covering the use of an authorization to charge a
deposit account is proposed to be removed as unnecessary in view of
1.25(b).
Section 1.52 paragraphs (a) and (d) would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to 1.4(d)(2). Paragraphs (a) and (d) of this section
would also be amended to clarify the need for a statement that the
translation being offered is an accurate translation, as is also
proposed in 1.69 paragraph (b).
Section 1.53(b)(1), as proposed, would remove: (1) the phrase "in the
name of the actual inventor or inventors as required by 1.41," and
(2) the sentence "[i]f 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) is filed which sets forth the reasons the delay
in supplying the names should be excused." These proposed changes are
consistent with the proposed change to 1.41. Section 1.53(b)(1) (and
1.41(a)) would no longer require that a patent be applied for in the
name of the actual inventors for an application for patent to receive a
filing date.
Section 1.53(b)(1), as proposed, would change (1) "[a] continuation
or divisional application (filed under the conditions specified in 35
U.S.C. 120, 121 or 365(c) and 1.78(a)) may be filed under this
section, 1.60 or 1.62" and (2) "[a] continuation-in-part
application may also be filed under this section or 1.62" to (1)
[a]continuation or divisional application (filed under the conditions
specified in 35 U.S.C. 120, 121 or 365(c) and 1.78(a)) may be filed
under this paragraph or paragraph (b)(3) of this section" and (2) "[a]
continuation-in-part application must be filed under this paragraph,
respectively. Upon the deletion of 1.60 and 1.62, any
continuation-in-part applications must be filed under 1.53(b)(1), but
a continuation or divisional application may be filed under
1.53(b)(1) or (b)(3).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i) expressly providing that any continuation or divisional
application may be filed by all or by less than all of the inventors
named in a prior application, and that a newly executed oath or
declaration is not required pursuant to 1.51(a)(1)(ii) and 1.53(d)
in a continuation or divisional application filed by all or by less than
all of the inventors named in a prior application, provided that one of
the following is submitted: (1) a copy of the executed oath or
declaration filed to complete ( 1.51(a)(1)) the most immediate prior
national application for which priority is claimed under 35 U.S.C. 120,
121 or 365(c), or (2) a copy of an unexecuted oath or declaration, and a
statement that the copy is a true copy of the oath or declaration that
was subsequently executed and filed to complete ( 1.51(a)(1)) the most
immediate prior national application for which priority is claimed under
35 U.S.C. 120, 121 or 365(c). The phrase "most immediate prior national
application" is proposed rather than "prior application" to accommodate
those situations in which the prior application was filed under current
1.60 or 1.62, or where the prior application was itself a
continuation or divisional application and filed with a copy of the
executed oath or declaration from a prior application pursuant to
1.53(b)(1)(i). As is currently the situation under 1.60 and 1.62,
the applicant's duty of candor and good faith including compliance with
the duty of disclosure requirements of 1.56 is continuous and applies
to the continuation, divisional or continued prosecution ( 1.53(b)(3))
application, notwithstanding the lack of a newly executed oath or
declaration. Therefore, applicants should be informed of the intent to
file a continuation, divisional or continued prosecution application
with a copy of the proposed claimed supplied. New 1.53(b)(1)(i), as
proposed, would also reference 1.53(d) for the filing of a
continuation or divisional application without the concomitant
submission of a newly executed oath or declaration or a copy of the oath
or declaration for the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c).
Section 1.53(b)(1), as proposed, would also add a new paragraph
(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath
or declaration for the most immediate prior national application for
which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be
accompanied by a statement from applicant, counsel for applicant or
other authorized party requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application. Where the continuation or divisional application
and copy of the oath or declaration from the prior application is filed
without a statement from an authorized party requesting deletion of the
names of any person or persons named in the prior application, the
continuation or divisional application will be treated as naming as
inventors the person or persons named in the prior application, taking
into account any petition for correction of inventorship pursuant to
1.48 in the prior application that has been granted prior to the filing
of the continuation or divisional application. For situations where an
inventor or inventors are to be added in a continuation or divisional
application see paragraph (ii) under this section.
The statement requesting the deletion of the names of the person or
persons who are not inventors in the continuation or divisional
application must be signed by person(s) authorized pursuant to
1.33(a) to sign an amendment in the continuation or divisional
application. That is, such a statement must be signed by: (1) all of the
inventors in the continuation or divisional application (see MPEP
714.01(a)), (2) the assignee of record of the entire interest in the
continuation or divisional application in compliance with 3.73(b)
(see MPEP 324), (3) an attorney or agent of record, or (4) a registered
attorney or agent acting in a representative capacity pursuant to
1.34(a).
Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B)
providing that where the power of attorney or correspondence address was
changed during the prosecution of the prior application, the change in
power of attorney or correspondence address must be identified in the
continuation or divisional application.
Section 1.53(b)(1), as proposed, would add a new paragraph (ii)
providing that a newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application. For situations where an inventor or inventors are
to be added in a continuation or divisional application the Office will
not require a petition pursuant to 1.48, but will require only the
newly executed oath or declaration naming the correct inventorship in
the continuation or divisional application under 1.53. For deletion
of inventors in a continuation or divisional application see
1.53(b)(1)(i) and (b)(3). New 1.53(b)(1)(ii), as proposed, would also
provide that a newly executed oath or declaration must be filed in a
continuation-in-part application, which application may name all, more,
or less than all of the inventors named in the prior application.
Section 1.53(b)(1)(iii), as proposed, would clarify that the
inventorship is not set forth in an application until an executed oath
or declaration is submitted therein in accordance with the proposed
change to 1.41(a). Where the inventorship was voluntarily set forth
on filing an application without an executed oath or declaration
pursuant to 1.53(d) for purposes of identification, the actual
inventorship of the application will be controlled by the later
submission of an executed oath or declaration which may change what was
originally identified as the inventorship without recourse to a petition
under 1.48 in accordance with the proposed change to 1.41(a).
Section 1.53(b)(2), as proposed, would remove the phrase "in the name
of the actual inventor or inventors as required by 1.41" and the
sentence "[i]f 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." Section 1.53(b)(2) (and
1.41(a)) would no longer require that a patent be applied for in the
name of the actual inventors for an application for patent to receive a
filing date.
Section 1.53(b)(2)(ii), as proposed, would change the phrase "treated
as" to "converted to" for clarity.
Section 1.53(b)(3) is proposed to be added to provide for the filing
of a continued prosecution application.
Section 532 of the Uruguay Round Agreement Act (Public Law 103-465,
532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide that the
term of patent protection begins on the date of patent grant and ends on
the date 20 years from the filing date of the application. As any delay
in the prosecution of the application will reduce the term of patent
protection, reducing unnecessary delays in the prosecution of
applications is a mutual interest of patent applicants and the Office.
An applicant in a nonprovisional application filed on or after June
8, 1995, must file a continuing application to obtain further
examination subsequent to a final rejection or other final action. The
current continuing practice under 1.60 and 1.62 of processing an
application filed thereunder with a new application number and filing
date delays the examination of such continuing applications. Therefore,
the Office proposes to eliminate this delay by: (1) not assigning a new
application number to an application filed under 1.53(b)(3), and (2)
not processing the application filed under 1.53(b)(3) with a filing
date of the request for an application under 1.53(b)(3). Rather, a
continued prosecution application would retain the application number
and the filing date of the prior application to which it relates for
identification purposes thereby allowing examination to proceed without
the delays that would be caused by the current need to assign to
applications filed under 1.60 and 1.62 a new application number and
filing date as of the date the Rule 60 or 62 application was requested
(submitted).
Section 1.53(b)(3), as proposed, would specifically provide that: (1)
in a complete nonprovisional application ( 1.51(a)(1)) filed on or
after June 8, 1995, a continuation or divisional application that
discloses and claims only subject matter disclosed in that prior
complete application and names as inventors the same or less than all
the inventors named in that prior complete application may be filed
under this paragraph, and (2) the filing date of the continued
prosecution application, such as for continuity purposes under 35 U.S.C.
120 and 1.78, is the date on which a request for an application under
this paragraph, including identification of the prior application number
is filed.
The specific reference to the prior application required by 35 U.S.C.
120 and 1.78(a)(2) will be satisfied by a sentence that the continued
prosecution application is a continuation or divisional, as appropriate,
of prior application number ##/###,###, filed ##/##/##, now abandoned,
notwithstanding that the so identified application number and filing
date are also the application number and filing date assigned to the
continued prosecution application under this paragraph. Where the
continued prosecution application derives from a chain of 1.53(b)(3)
applications assigned a common application number and filing date, a
sentence that the application is a continuation or divisional, as
appropriate, of the common application number and filing date will
constitute a specific reference (35 U.S.C. 120 and 1.78(a)(2)) to
each application assigned that application number and filing date. Since
1.53(b)(3) is proposed to be limited to continuations and
divisionals, the actual filing date of the request for an application
under 1.53(b)(3) will be relevant only to the copendency requirement
of 35 U.S.C. 120 and 1.78 and patent term vis-a-vis Public Law
103-465. Nevertheless, 1.53(b)(3) is proposed to be limited to a
continuation or divisional of a complete application filed on or after
June 8, 1995, so as to avoid any dispute as to whether the application
is subject to 20-year patent term as set forth in Public Law 103-465.
That is, any continuation or divisional of an application filed prior to
June 8, 1995, as well as any continuation-in-part, must be filed under
1.53(b)(1).
Section 1.53(b)(3)(i)(A), as proposed, would provide that an
application under 1.53(b)(3) (a continued prosecution application)
will use the specification, drawings and oath or declaration from the
prior complete application and will be assigned its application number
for identification purposes.
Section 1.53(b)(3)(i)(B), as proposed, would provide that the filing
of a request for a continued prosecution application is a request to
expressly abandon the prior application as of the filing date granted
the application under 1.53(b)(3).
Section 1.53(b)(3)(i)(C), as proposed, would provide that a continued
prosecution application must be filed before the payment of the issue
fee, abandonment of, or termination of proceedings on the prior
application with the filing date of a request for a continued
prosecution application being the date on which a request for a
continued prosecution application including identification of the
application number of the prior complete application is filed
Section 1.53(b)(3)(ii)(A) and (B), as proposed, would provide that
filing fee for a continued prosecution application is the statutory
basic filing fee as set forth in 1.16 and any additional fee due
based on the number of claims remaining in the application after entry
of any amendment accompanying the request for an application under this
section and entry of any amendments under 1.116 unentered in the
prior application which applicant has requested to be entered in the new
application.
In instances in which a continued prosecution application is
submitted without the basic statutory filing fee or any additional
claims fee due, the Office will continue to mail a "Notice of Missing
Parts" under 1.53(d)(1) and give the applicant a period of time
within which to file the fee and to pay the surcharge under 1.16(e)
to prevent abandonment of the application (see 1.53(d)(1)). Thus, the
filing of a continued prosecution application without the basic
statutory filing fee or any additional claims fee due will result in a
delay in the initial processing of the application. An applicant,
however, may eliminate or limit this delay by either filing the request
for a continued prosecution application with the appropriate filing fee
or not delaying the submission of the appropriate filing fee until the
mailing of or expiration of the period for response to the "Notice of
Missing Parts."
Section 1.53(b)(3)(iii), as proposed, would provide that if a
continued prosecution 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
continued prosecution application. Where an application is filed under
1.53(b)(3) without a statement requesting deletion of the names of any
person or persons named in the prior application, the application will
be treated as naming as inventors the person or persons named in the
prior application, taking into account any grant of a petition
correcting inventorship in the prior application pursuant to 1.48. To
correct the inventorship in the continued prosecution application, the
Office will not require a petition pursuant to 1.48 as the
application is to be filed without a newly executed oath or declaration,
but will require only a newly executed oath or declaration naming the
correct inventorship in the continued prosecution application, which is
similar to the requirements for correction of the inventorship in
applications filed under 1.53(b)(1) without a newly executed oath or
declaration.
Section 1.53(b)(3)(iv), as proposed, would require that any new
change be made in the form of an amendment to the prior application, and
would provide that any new specification filed with the request for an
application under 1.53(b)(3) would not be considered part of the
original application papers, but would be treated as a substitute
specification in accordance with 1.125. In the event that legislation
mandating the 18-month publication of patent applications (e.g., H.R.
1733) is enacted, it will be necessary to amend proposed
1.53(b)(3)(iii) to require a substitute specification in compliance with
1.125 and drawings including only those changes to the prior
application during the prosecution of the prior application.
Section 1.53(b)(3)(v), as proposed, would provide that the filing of
a continued prosecution application will be construed to include a
waiver of confidence by the applicant under 35 U.S.C. 122 to the extent
that any member of the public who is entitled under the provisions of
1.14 to access to, or information concerning either the prior
application or any application filed under the provisions of
1.53(b)(3) may be given similar access to, or similar information
concerning, the other application(s) in the file wrapper.
Section 1.53(b)(3)(vi)(A) through (D), as proposed, would provide
that the applicant is urged to furnish in the request for an application
under 1.53(b)(3) the following information relating to the prior
application to the best of his or her ability: (A) title as originally
filed and as last amended, (B) name of applicant as originally filed and
as last amended, (C) current correspondence address of applicant, and
(D) identification of prior foreign application and any priority claim
under 35 U.S.C. 119.
Section 1.53(b)(3)(vii), as proposed, would provide that envelopes
containing only requests and fees for filing an application under
1.53(b)(3) should be marked "Box CPA."
Section 1.53(c), as proposed, would replace its current language with
three paragraphs treating: (1) applications found to be improper or
incomplete, (2) any requests for review of a notification that an
application has been found to be improper or incomplete, and (3)
termination of proceedings in an application for failure to timely
correct a filing error or seek review of a notification that an
application has been found to be improper or incomplete.
Section 1.53(c)(1), as proposed, would specifically provide that
"[i]f any application filed under paragraph (b) of this section is found
to be incomplete or improper, applicant will be so notified and given a
time period within which to correct the filing error."
Section 1.53(c)(2), as proposed, would specifically provide that
"[a]ny request for review of a notification pursuant to paragraph (c)(1)
of this section, or a notification that the original application papers
lack a portion of the specification or drawing(s), must be by way of a
petition pursuant to this paragraph," "[a]ny petition under this
paragraph must be accompanied by the fee set forth in 1.17(i) in an
application filed under paragraphs (b)(1) or (b)(3) of this section, and
the fee set forth in 1.17(q) in an application filed under paragraph
(b)(2) of this section," and "[i]n the absence of a timely ( 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (c)(1) of this section will be the date the filing error is
corrected."
Section 1.53(c)(3), as proposed, would specifically provide that
"[i]f an applicant is notified of a filing error pursuant to paragraph
(c)(1) of this section, but fails to correct the filing error within the
given time period or otherwise timely ( 1.181(f)) take action pursuant
to paragraph (c)(2) of this section, proceedings in the application will
be considered terminated" and "[w]here proceedings in an application are
terminated pursuant to this paragraph, the application may be returned
or otherwise disposed of, and any filing fees, less the handling fee set
forth in 1.21(n), will be refunded" Section 1.53(c)(3), as proposed
would not provide that proceedings in the application will be considered
terminated for failure to timely respond to a notification that the
original application papers lack a portion of the specification or
drawing(s). Thus, the failure to timely seek review of a notification
that the original application papers lack a portion of the specification
or drawing(s) will not result in termination of proceedings in (or
abandonment of) the application, but will simply result in such portion
of the specification or drawing(s) not being considered part of the
original disclosure of the application.
Section 1.53(d)(1), as proposed, would change "paragraph (b)(1) of
this section" to "paragraphs (b)(1) or (b)(3) of this section," such
that 1.53(d)(1) would be applicable to applications filed under
1.53(b)(1) and (b)(3), where 1.53(d)(2) would be applicable to
applications filed under 1.53(b)(2) (i.e., provisional applications).
While 1.53(d)(1) addresses both the filing fee and the oath or
declaration, the oath or declaration of an application under
1.53(b)(3) will be the oath or declaration of the prior complete (
1.51(a)(1)) application. As such, an oath or declaration will not be
required under 1.53(d)(1) for a proper application under
1.53(b)(3).
Section 1.53(d)(1), as proposed, would be further amended to add the
phrases "including a continuation, divisional, or continuation-in-part
application" and "pursuant to 1.63 or 1.175, which may be a copy of
the executed oath or declaration filed to complete ( 1.51(a)(1)) the
most immediate prior national application for which priority is claimed
under 35 U.S.C. 120, 121 or 365(c), or a copy of an unexecuted oath or
declaration, and a statement that the copy is a true copy of the oath or
declaration that was subsequently executed and filed to complete (
1.51(a)(1)) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a
continuation or divisional application" for clarity and consistency with
1.53(b)(1). A reference to submission of a copy of a Notice to File
Missing Parts would be removed.
Section 1.54(b), as proposed, would add the phrase "unless the
application is an application filed under 1.53(b)(3)." To minimize
application processing delays in applications filed under 1.53(b)(3),
as proposed, such applications will not be processed by the Office of
Initial Patent Examination as new applications.
Section 1.55 paragraph (a) would be amended to remove the requirement
that the statement be verified in accordance with the proposed change to
1.4(d)(2).
Section 1.59 would be amended: by revising the title to indicate that
expungement of information from an application file would come under
this section, by revising the existing paragraph and designating it as
paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c).
Paragraph (a)(1) would retain the general prohibition on the return of
information submitted in an application which has a filing date. The
portion of the paragraph relating to the Office furnishing copies of
application papers has been shifted to new paragraph (c). Paragraph
(a)(2) would make explicit that information, forming part of the
original disclosure, i.e., written specification, drawings, claims and
any preliminary amendment specifically incorporated into an executed
oath or declaration under 1.63 and 1.175, will not be expunged from
the application file.
Paragraph (b) of 1.59 would provide an exception to the general
prohibition of paragraph (a) on the expungement and return of
information and would allow for such when it is established to the
satisfaction of the Commissioner that the requested expungement and
return is appropriate.
Paragraph (b) of 1.59 is intended to cover the current practice
set forth in MPEP 724.05 where the submitted information has initially
been identified as trade secret, proprietary, and/or subject to a
protective order and where applicant may file a petition for its
expungement and return that will be granted upon a determination by the
examiner that the information is not material to patentability. Any such
petition should be submitted in response to an Office action closing
prosecution so that the examiner can make a determination of materiality
based on a closed record. Any petition submitted earlier than close of
prosecution may be returned unacted upon. In the event pending
legislation for pre-grant publication of applications, which provides
public access to the application file, is enacted, then the timing of
petition submissions under this section will be reconsidered. A result
of the proposed amendment to this section would be to have a petition to
expunge decided under the instant rule by the examiner who determines
the materiality of the information to be expunged rather than by the
Office of Petitions under 1.182, which prior to rendering a decision
on the petition consults with the examiner on materiality of the
information at issue.
Paragraph (b) of 1.59 is also intended to cover information that
was unintentionally submitted in an application, provided that: (i) the
Office can effect such return prior to the issuance of any patent on the
application in issue, (ii) that it is stated that the information
submitted was unintentionally submitted and the failure to obtain its
return would cause irreparable harm to the party who submitted the
information or to the party in interest on whose behalf the information
was submitted, (iii) the information has not otherwise been made public,
(iv) there is a commitment on the part of the petitioner to retain such
information for the period of any patent with regard to which such
information is submitted, and (v) it is established to the satisfaction
of the Commissioner that the information to be returned is not material
information under 1.56. Requests to return information that have not
been clearly identified as information that may be later subject to such
request by marking and placement in a separate sealed envelope or
container shall be treated on a case-by-case basis. It should be noted
that the Office intends to start electronic scanning of all papers filed
in an application, and the practicality of expungement from the
electronic file created by a scanning procedure is not as yet
determinable. Applicants should also note that unidentified information
that is a trade secret, proprietary, or subject to a protective order
that is submitted in an Information Disclosure Statement may
inadvertently be placed in an Office prior art search file by the
examiner due to the lack of such identification and may not be
retrievable.
Paragraph (b) of 1.59 is also intended to cover the situation
where an unintended heading has been placed on papers so that they are
present in an incorrect application file. In such situation, a petition
should request return of the papers rather than transfer of the papers
to the correct application file. The grant of such a petition will be
governed by the factors enumerated above in regard to the unintentional
submission of information. Where the Office can determine the correct
application file that the papers were actually intended for, based on
identifying information in the heading of the papers, e.g., Application
number., filing date, title of invention and inventor(s) name(s), the
Office will transfer the papers to the correct application file for
which they were intended without need of a petition.
Added paragraph (c) of 1.59 retains the practice that copies of
application papers will be furnished by the Office upon request and
payment of the cost for supplying such copies.
Section 1.60 is proposed to be removed and reserved.
In the notice of proposed rulemaking entitled "Changes to Implement
20-Year Patent Term and Provisional Application" (20-Year Term Notice of
Proposed Rulemaking) published in the Federal Register at 59 FR 63951
(December 12, 1994), and in the Patent and Trademark Office Official
Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3, 1995), 1.60 was
proposed to be removed due to the rule change to 1.4(d), which
permits the filing of a copy of an oath or declaration. The proposed
removal of 1.60 in the 20-Year Term Notice of Proposed Rulemaking,
however, was withdrawn in the final rule to permit further study.
A continuation or divisional application may be filed under 35 U.S.C.
111(a) using the procedures set forth in 1.53, by providing a copy of
the prior application, including a copy of the oath or declaration in
such prior application, as filed. The patent statutes and rules of
practice do not require that an oath or declaration include a recent
date of execution, and the Examining Corps has been directed not to
object to an oath or declaration as lacking either a recent date of
execution or any date of execution. This change in examining practice
will appear in the next revision of the MPEP. As discussed supra, the
applicant's duty of candor and good faith including compliance with the
duty of disclosure requirements of 1.56 is continuous and applies to
the continuing application.
Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a
continuation or divisional application by all or by less than all of the
inventors named in a prior application without a newly executed oath or
declaration. To continue this practice, 1.53 is proposed to be
amended to provide that any continuation or divisional application may
be filed by all or by less than all of the inventors named in a prior
application, but where a newly executed oath or declaration is not
submitted for a continuation or divisional application filed by less
than all the inventors named in the prior application, the copy of the
oath or declaration for the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be
accompanied by a statement requesting the deletion of the names of the
person or persons who are not inventors in the continuation or
divisional application. A newly executed oath or declaration will
continue to be required in a continuation or divisional application
naming an inventor not named in the prior application, or a
continuation-in-part application.
Section 1.60 is now unnecessary due to: (1) the rule change to
1.4(d), (2) the proposed addition of 1.53(b)(1)(i) to expressly
permit the filing of either a newly executed oath or declaration, or a
copy of the executed oath or declaration filed to complete pursuant to
1.51(a)(1) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a
continuation or divisional application, (3) the proposed addition of
1.53(b)(1)(i) to permit the filing of a continuation or divisional
application by all or by less than all the inventors named in a prior
application, using a copy of the executed oath or declaration filed to
complete the prior application, and (4) the proposed addition of
1.53(b)(3) to permit the filing of a continued prosecution application.
A new application containing a copy of an oath or declaration under
1.63 referring to an attached specification is indistinguishable from a
continuation or divisional application containing a copy of an oath or
declaration from a prior application submitted pursuant to
1.53(b)(1)(i), as proposed. Unless an application is submitted with a
statement that the application is a continuation or divisional
application ( 1.78(a)(2)), the Office will process such a new
application without requiring a new oath or declaration. Applicants are
advised to clearly designate any continuation or divisional application
as such to avoid the issuance of a filing receipt that does not indicate
that the application is a continuation or division.
Section 1.62 is proposed to be removed and reserved.
In the proposed rulemaking entitled "Changes to Implement 18-Month
Publication of Patent Applications" (18-Month Publication Notice of
Proposed Rulemaking) published in the Federal Register at 60 FR 42352
(August 15, 1995), and in the Patent and Trademark Office Official
Gazette at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995), 1.62(e)
was proposed to be amended to require a substitute specification in
compliance with 1.125 and drawings where the application filed under
1.62 is a continuation-in-part application. The 18-Month Publication
Notice of Proposed Rulemaking proposed to digital image and/or optical
character recognition (OCR) scan application material into an electronic
data base, which data base would be used to publish the application
(e.g., for producing copies of the technical contents of the
application-as-filed). The 18-Month Publication Notice of Proposed
Rulemaking indicated that as applications filed prior to the
implementation of 18-month publication will not have been image- or
OCR-scanned into the electronic data base, the technical contents of an
application filed under 1.62 in which the prior application was
itself filed prior to the implementation of 18-month publication will
not be contained in the electronic data base.
The solution proposed in the 18-Month Publication Notice of Proposed
Rulemaking was for the Office to obtain the microfiche copy of the prior
application for applications under 1.62 which do not add additional
disclosure (i.e., continuation or divisional applications) and image or
OCR scan it into the electronic data base, and to amend 1.62 to
provide that, where the application adds additional disclosure (i.e., is
a continuation-in-part application), a substitute specification in
compliance with 1.125 and drawings will be required.
The proposal in the 18-Month Publication Notice of Proposed
Rulemaking to obtain the microfiche copy of prior continuation or
divisional applications is now considered unfeasible. A number of
applications filed under 1.62 derive from a chain of applications
filed under 1.62. The information pertaining to such an application's
chain of prior applications contained within the Patent Application
Location and Monitoring (PALM) system is not sufficiently comprehensive
to readily and reliably indicate the prior application that contains a
specification and drawings, and is not sufficiently reliable to avoid
the occasional inclusion of an unrelated application in the chain of
prior applications. This could result in the inadvertent publication of
the specification and drawings of the wrong application.
In addition, the microfiche copy of the prior application may be a
microfiche of sheets of specification and/or drawings on 8 and 1/2 by
14-inch paper, which paper size is not technically useable by the
equipment which will be employed for pre-grant publication of patent
applications. Attempts to reduce such sheets of specification and/or
drawings to a paper size processible by pre-grant publication equipment
results in electronic files which contain illegible text and figures.
Moreover, the microfilming process under pre-grant publication differs
from the previous microfilming process, and as such, the microfiche copy
of such a prior application is sufficiently dissimilar from the
microfiche copy of an application under pre-grant publication that it
causes accurate technical date capture difficulties.
In the event that legislation mandating the 18-month publication of
patent application is enacted, it will be necessary to require a
substitute specification in compliance with 1.125 and drawings
including any changes to the prior application during the prosecution of
the prior application or pursuant to 1.62(e) to continue 1.62
practice.
Section 1.62 is now unnecessary due to: (1) the rule change to
1.4(d), (2) the proposed change to 1.53(b)(1) to expressly permit the
filing of either a newly executed oath or declaration, or a copy of the
executed oath or declaration filed to complete pursuant to 1.51(a)(1)
the most immediate prior national application for which priority is
claimed under 35 U.S.C. 120, 121 or 365(c), in a continuation or
divisional application, (3) the proposed change to 1.53(b)(1) to
permit the filing of a continuation or divisional application by all or
by less than all the inventors named in a prior application, using a
copy of the executed oath or declaration filed to complete the prior
application, and (4) the proposed addition of 1.53(b)(3) to permit
the filing of a continued prosecution application.
The Office currently receives a number of petitions requesting that
an application filed under 1.60 and 1.62 be accepted even though at
the time of filing of the application, the application did not comply
with all the requirements of 1.60 or 1.62 due to inadvertent error
on the part of the applicant. The examination of these improper
applications under 1.60 and 1.62 is delayed until a petition to
accept the application is filed and granted. The large majority of the
applications filed under 1.60, however, complied at the time of
filing with the requirements of 1.53(b)(1), and the copy of the oath
or declaration from the prior application is now acceptable as the oath
or declaration for the application, regardless of whether the
application is an application under 1.53 or 1.60. The removal of
1.60 and simplification of 1.62 will reduce the number of these
types of petitions and will simplify the procedures for filing an
application for both the Office and patent practitioners.
It is anticipated that, subsequent to the removal of 1.60 and
1.62, applications purporting to be applications filed under 1.60
or 1.62 will be filed until the deletion of 1.60 and 1.62 become
well known among patent practitioners. Applications purporting to be an
application filed under 1.60 will simply be treated as a new
application filed under 1.53 (i.e., the reference to 1.60 will
simply be ignored).
Applications purporting to be an application filed under 1.62 will
be treated as continued prosecution applications under 1.53(b)(3),
and those applications that do not meet the requirements of
1.53(b)(3) (e.g., continuation-in-part applications or continuations or
divisional of applications filed before June 8, 1995) will be treated as
improper continued prosecution applications under 1.53(b)(3). Such
improper applications under 1.53(b)(3) may be corrected by way of
petition under 1.53(b)(c) (and $130 fee pursuant to 1.17(i)).
Such a 1.53(c) petition in a continuation or divisional
application will be granted on the condition that the applicant file:
(1) the $130 petition fee, and (2) a true copy of the complete
application designated as the prior application in the purported 1.62
application papers as filed, or, if the prior application was an
application filed under 1.62, a true copy of its most immediate
parent application which contained a specification and drawings as
filed. Such a 1.53(c) petition in a continuation-in-part application
will be granted on condition that the applicant file: (1) the $130
petition fee, and (2) a true copy of the complete application designated
as the prior application in the purported 1.62 application papers as
filed, or, if the prior application was an application filed under
1.62, a true copy of its most immediate parent application which
contained a specification and drawings as filed, and any amendments
submitted during the prosecution of the prior application.
Section 1.63(a)(3) is proposed to be amended by requiring the post
office address to appear in the oath or declaration and having the
requirement from 1.41(a) for the full names of the inventors placed
therein.
Section 1.69, paragraph (b), would be amended to remove the
requirement that the translation be verified in accordance with the
proposed change to 1.4(d)(2). Paragraph (b) of this section is also
being amended to clarify the need for a statement that the translation
being offered is an accurate translation, as is proposed for 1.52,
paragraph (a) and (d).
Section 1.78(a)(1)(ii), as proposed, would remove the references to
1.60 and 62 in view of the proposed deletion of 1.60 and 62.
Section 1.84, paragraph (b), is proposed to be amended by removing
references to the filing of black and white photographs in design
applications as unnecessary in view of the reference in 1.152 to
1.84(b).
Section 1.91 is proposed to be amended for clarification purposes by
additionally reciting "Exhibits" as well as models. The section is
proposed to be amended to state that a model, working model or other
physical exhibit may be required by the Office if deemed necessary for
any purpose in examination of the application. This language is moved
from 1.92.
Section 1.92 is proposed to be removed and reserved and the language,
as stated above, transferred to 1.91 for improved contextual purposes.
Section 1.97(c) through (e) are proposed to be amended by replacement
of "certification" by "statement," see comments relating to 1.4(d),
and by clarifying the current use of "statement" by the terms
"information disclosure." Section 1.97(e)(2) is further amended to
replace "or" by "and" to require that: no item of information contained
in the information disclosure statement was cited in a communication
from a foreign patent office in a counterpart foreign application and
that no item of information contained in the information disclosure
statement to the knowledge of the person signing the statement, after
making reasonable inquiry, was known to any individual designated in
1.56(c) more than three months prior to the filing of the information
disclosure statement. The use of "and" rather than "or" is in keeping
with the intent of the rule as expressed in the MPEP 609, page 600-91,
that the conjunction be conjunctive rather than disjunctive. The mere
absence of an item of information from a foreign patent office
communication was clearly not intended to represent an opportunity to
delay the submission of the item when known more than three months prior
to the filing of an information disclosure statement to an individual
having a duty of disclosure under 1.56.
Section 1.101 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.102, paragraph (a), would be amended to remove the
requirement that the showing be verified in accordance with the proposed
change to 1.4(d)(2).
Section 1.103, paragraph (a), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.104 is proposed to be removed and reserved as relating to
internal Office instructions (the material of paragraph (c) would be
present in the MPEP).
Section 1.105 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.108 is proposed to be removed and reserved as relating to
internal Office instructions.
Section 1.111(b) is proposed to be amended to explicitly recognize
that a reply must be reduced to a writing which must point out the
specific distinctions believed to render the claims, including any newly
presented claims, patentable. It is noted that an examiner's amendment
reducing a telephone interview to writing would comply with 1.2.
In 1.112 it is proposed to remove as being unnecessary the
statement that "any amendments after a second Office action must
ordinarily be restricted to the rejection, objections or requirements
made in the office action" to reflect actual practice wherein an
unrestricted right of entry exists prior to a final rejection and that
an application or patent under reexamination be considered repeatedly
unless a final action is rendered. It is proposed to amend the section
for clarification purposes by addition of a reference to reconsideration
"before final action."
Section 1.113(a), as proposed, would add "by the examiner" after
"examination or consideration," change "objections to form" to
"objections as to form" for clarity, and would replace "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.113(b), as proposed, would change "clearly stating the
reasons therefor" to "clearly stating the reasons in support thereof"
for clarity.
A new 1.113(c) would be added to provide that the first action in
an application will not be made final. See comments to 1.116 and
1.191.
Section 1.115 is proposed to be replaced by new 1.115 that would
contain material to be deleted from 1.117 through 1.119, 1.123 and
1.124. No change in substance is contemplated with the material of
deleted sections being rearranged and edited for clarity and contextual
purposes in the new section. The reference to "application" is intended
to include reissue applications.
Section 1.116(a), as proposed, would limit amendments after a final
rejection or other final action ( 1.113) to those amendments
cancelling claims or complying with any requirement of form set forth in
a previous Office action, and would replace the phrase "any proceedings
relative thereto" with "any related proceedings" for clarity.
Section 1.116(b), as proposed, would provide that any amendment not
in compliance with 1.116(a) must be submitted with a request for an
application under 1.53(b)(3) to ensure consideration of the amendment.
Under 1.116, as proposed, amendments after final rejection or
other final action would be limited to cancelling claims or complying
with any requirement of form expressly set forth in a previous Office
action. Currently, amendments after final which concern the merits of an
application may, upon a showing of good and sufficient reasons why they
are necessary and were not earlier presented, be entered and amendments
after final which present rejected claims in better form for
consideration on appeal may be entered. This procedure causes delays in
the ultimate issuance of the application as a patent, since applicants
will await a ruling on whether such amendment will be entered prior to
deciding whether to obtain the entry of such amendment through the
filing of a continuing application. In addition, the expedited handling
of numerous amendments after final, and the expedited consideration of
whether there is an adequate showing of good and sufficient reasons why
an amendment after final concerning the merits of an application is
necessary and not earlier presented, or whether an amendment after final
presents rejected claims in better form for consideration on appeal,
places a significant burden on Office resources.
Section 1.113(c), as proposed, would eliminate first action final
practice, and, as such, would eliminate the necessity to submit an
amendment after final simply to avoid a first action final in a
continuing application. In view of this safeguard, and the delay and
burden of the current practice for the treatment of amendments after
final, 1.116 is proposed to be amended to limit those amendments that
may be presented as a matter of right after a final rejection or other
final action. Put simply, the proposed elimination of first action final
practice by the Office is the quid pro quo for the proposed strict
limitation of after final practice. Persons submitting comments
objecting to this proposed limitation of after final practice should
frame such comments in the context that the proposed elimination of
first action final practice by the Office is coupled to the proposed
limitation of after final practice.
Section 1.116, as proposed, would not affect the authority of an
examiner to enter in an application under final an amendment that places
the application in condition for allowance, but does not strictly meet
the requirements of 1.116(a). That is, in instances in which the
applicant and examiner agree on an amendment that would place the
application in condition for allowance, the examiner would retain the
authority to enter the amendment, notwithstanding the requirements of
1.116(a). Where, however, the applicant and the examiner do not agree on
whether an amendment would place an application in condition for
allowance, and the amendment does not meet the requirements of
1.116(a), the applicant could not require the examiner to consider the
amendment as a matter of right.
Section 1.117 is proposed to be removed and reserved as the subject
matter was transferred to proposed 1.115.
Section 1.118 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115.
Section 1.119 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115.
Section 1.121 paragraphs (a) through (f) are proposed to be replaced
with paragraphs (a) through (c), which separately treat amendments in
non-reissue applications (paragraph (a)), amendments in reissue
applications (paragraph (b)) and amendments in reexamination proceedings
(paragraph (c)). Paragraphs (a) and (b) each separately treat amendment
of the specification (paragraphs (a)(1) and (b)(1)) and of the claims
(paragraphs (a)(2) and (b)(2)). In comparing amendment practice to the
specification for non-reissue and reissue applications: when making an
amendment to the specification of a non-reissue application a copy of
all previous amendments would not be required, whereas for reissue
applications a copy of all previous amendments to the patent
specification would be required. In comparing amendment practice to the
claims for non-reissue and reissue applications: when making an
amendment to the claims of a non-reissue application or when new claims
are added, a copy of all pending claims, including original claims that
have never been amended, would be required, whereas for reissue
applications a copy of only claims that are being amended or added would
be required.
Paragraph (a) of 1.121 would relate to amendments in non-reissue
applications and retains a reference to 1.52. Paragraph (a)(1) would
relate to the manner of making amendments in the specification other
than in the claims. Paragraph (a)(1)(i) would require the precise point
to be indicated where an amendment is made. Paragraph (a)(1)(ii) would
allow amendments that are deletions only to be done by a direction to
cancel rather than presenting the sentence(s), paragraph(s) and/or
page(s) with brackets. This should be compared to cancellation of
material from the patent specification in a reissue application
(paragraph (b)((1)((ii)) or in a reexamination proceedings (
1.530(d)(1)(ii) - by way of a copy of the rewritten material). Paragraph
(a)(1)(iii) would require all other amendments, such as additions or
deletions mixed with additions, to be made by submission of a copy of
the rewritten sentence(s), paragraph(s) and/or page(s) to permit the
examiner to more readily recognize the changes that are being made.
Current practice does not require the marking of an amendment to the
specification in non-reissue applications. A change in one sentence,
paragraph or page that results in only format changes to other pages not
being amended are not to be submitted. Paragraph (a)(1)(iv) would
identify the type of markings required by paragraph (a)(1)(iii), single
underlining for added material and single brackets for material deleted.
The marking would also be required to be applied in reference to the
material as previously rewritten and not as originally presented if that
differed from the previous presentation.
Paragraph (a)(2) of 1.121 would relate to the manner of making
amendments in the claims of a non-reissue application. Paragraph
(a)(2)(i)(A) would permit cancellation of a claim by a direction to do
so or by simply omitting a copy of the claim when a complete copy of all
pending claims are presented pursuant to paragraph (a)(2)(ii) of this
section. Paragraph (a)(2)(i)(B) would permit amendment of a previously
submitted claim, other than mere cancellation by submission of a copy of
the claim completely rewritten with markings pursuant to paragraph
(a)(2)(iii) of this section rather than continuing to permit requests
that the Office hand-enter changes of five or less words,
1.121(c)(2). Such rewriting would be construed as a direction that the
rewritten claim be a replacement for the previously submitted claim.
Paragraph (a)(2)(i)(C) sets forth that a new claim may only be added by
the submission of a clean copy of the new claim.
Paragraph (a)(2)(ii) of 1.121 would require that when a previously
submitted claim is amended, or when a new claim is added, applicant must
submit a separate copy of all pending claims to include all newly
rewritten claims, all newly added claims, all previously rewritten
claims that are still pending and any unamended claims that are still
pending. This would enable the examiner to more quickly identify the
claims that must be reviewed for the next Office action and would enable
the printer to have a current version of the allowed claims for printing
should the application be allowed. Compare with amendment of claims in
reissue applications wherein only a copy of an amended patent claim or
added claim is required, paragraph (b)(2)(i)(A) of this section, but not
of previous claims (patent and added claims) that are not currently
being amended. Current practice does not require a complete copy of all
pending claims but only those claims being amended or added.
Paragraph (a)(2)(iii) of 1.121 would identify the type of marking
required by paragraph (a)(2)(i)(B), single underlining for added
material and single brackets for material deleted.
Paragraph (a)(2)(iv) of 1.121 would provide that the failure to
submit a copy of any previously submitted claim would be construed as a
direction to cancel that claim.
Paragraph (a)(3) of 1.121 would clarify that amendments to the
original application drawings for non-reissue applications are not
permitted and are to be made by way of a substitute sheet for each
original drawing sheet that is to be amended.
Paragraph (a)(4) of 1.121 would require that any amendment
presented in a substitute specification must be presented under the
provision of this section either prior to or concurrent with the
submission of the substitute specification.
Paragraph (b) of 1.121 would apply to amendments in reissue
applications. Paragraph (b)(1) of 1.121 would relate to the manner of
making amendments to the specification other than in the claims in
reissue applications. Paragraph (b)(1)(i) would require the precise
point to be indicated where an amendment is made. Paragraph (b)(1)(ii)
would require that all amendments including deletions be made by
submission of a copy of the rewritten paragraph(s) with markings. A
change in one sentence, paragraph or page that results in only format
changes to other pages not being amended are not to be submitted.Compare
to amendments to the specification other than in the claims of
non-reissue applications wherein deletions are permitted, paragraph
(a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that each
amendment to the specification must include all amendments to the
specification relative to the patent as of the date of the submission.
Compare to amendments to the specification other than claims in
nonreissue applications wherein previous amendments to the specification
are not required to accompany the current amendment to the
specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would define
the marking set forth in paragraph (b)(1)(ii) of section. Paragraph
(b)(2) of 1.121 would relate to the manner of making amendments to
the claims in reissue applications. Paragraph (b)(2)(i)(A) of 1.121
would require the entire text of each patent claim that is being amended
and of each added claim rather than continuing to permit requests that
the Office hand-enter changes of five or less words, 1.121(c)(2), but
not of all pending claims, such as patent claims that have not been
amended. Compare paragraph (a)(2)((ii). Additionally, provision would be
made for the cancellation of a patent claim by a direction to cancel
without the need for marking by brackets. Paragraph (b)(2)(i)(B) would
require that patent claims not be renumbered. Paragraph (b)(2)(i)(C)
would identify the type of marking required by paragraph (b)(2)(i)(A),
single underlining for added material and single brackets for material
deleted.
Paragraph (b)(2)(ii) of 1.121 would require that each amendment
submission set forth the status of all patent claims and all added
claims as of the date of the submission, as not all claims (non-amended
claims) are to be presented with each submission, paragraph (b)(2)(iv).
The absence of submission of the claim status would result in an
incomplete response, 35 U.S.C. 135.
Paragraph (b)(2)(iii) of 1.121 would require that each claim
amendment be accompanied by an explanation of the support in the
disclosure of the patent for the amendment. The absence of an
explanation would result in an incomplete response, 35 U.S.C. 135.
Paragraph (b)(2)(iv) of 1.121 would require that each submission
of an amendment to any claim (patent claim or added claim) requires
copies of all amendments to the claims as of the date of the submission.
A copy of a previous amendment would not meet the requirement of this
section in that all amendments must be represented, as only the last
amendment will be used for printing.
Paragraph (b)(2)(v) of 1.121 would provide that the failure to
submit a copy of any added claim would be construed as a direction to
cancel that claim.
Paragraph (b)(2)(vi) of 1.121 would clarify that: 1) no reissue
patent would be granted enlarging the scope of the claims unless applied
for within two years from the grant of the original patent (additional
broadening outside the two-year limit is appropriate as long as some
broadening occurred within the two-year period), and 2) no amendment may
introduce new matter or be made in an expired patent.
Paragraph (b)(3) of 1.121 clarify that amendments to the patent
drawings are not permitted and that any change must be by way of a new
sheet of drawings with the amended figures being identified as "amended"
and with added figures identified as "new" for each sheet that has
changed.
Paragraph (c) of 1.121 would clarify that amendments in
reexamination proceedings are to be made in accordance with 1.530.
Section 1.121 as applied both to non-reissue and reissue applications
does not provide for replacement pages whereby a new page would be
physically substituted for a currently existing page. However, an
applicant can direct that Page _____ be cancelled and the following
inserted in its place. The wide availability of word processing should
enable applicants to more easily submit updated material providing
greater accuracy and thereby eliminating the need for the Office to
hand-enter amendments. To that end, 1.125 is proposed to be amended
to provide that a substitute specification may be submitted at any point
up to payment of the issue fee as a matter of right.
The proposed changes to 1.121 relate in part to the method of
presenting amendments in reissue and reexamination proceedings, that
would more closely parallel each other. The Office seeks guidance on the
usefulness of bringing reissue and reexamination proceedings in closer
harmony. Currently, both practitioners and Office personnel must retain
a working knowledge of these infrequently used but vital avenues for
review of an issued patent. The Office has identified the following
areas for possible harmonization and would like comments as to the
appropriateness of these areas, identification of other suitable areas
for consideration and specific means to achieve harmonization in the
identified areas, e.g., whether a concept or practice in one area should
be applied to the other area or a new practice for both should be
started:
- Procedures for amending claims and the specification, 1.121
- To utilize a reissue certificate (similar to a reexamination
certificate) attached to a copy of the original patent as the reissued
patent. This procedure would eliminate the need to reprint the entire
reissued patent.
- Whether the special dispatch provisions of reexamination should be
applied to reissue applications.
Section 1.122 is proposed to be removed and reserved as representing
internal Office instruction.
Section 1.123 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115 for better context.
Section 1.124 is proposed to be removed and reserved and its subject
matter transferred to proposed 1.115 for better context.
Section 1.125 is proposed to be amended by addition of paragraphs (a)
through (d). Paragraph (a) would retain the current practice that a
substitute specification may be required by the examiner and would be
clarified to note that if the legibility of the application papers shall
render it difficult to consider the case, the Office may require a
substitute specification.
Paragraph (b) of 1.125 would provide for the right of filing a
substitute specification in an application other than a reissue
application, at any point up to payment of the issue fee, if it is
accompanied by a statement that the substitute specification includes no
new matter and does not introduce any amendments unless they have been
submitted in accordance with the requirements of 1.121(a) either
prior to or concurrent with the submission of the substitute
specification. In view of the proposed continued prosecution application
under 1.53(b)(3) and the need to submit sentence, paragraph, and/or
page changes under 1.121(a), liberalization of the substitute
specification requirements is desirable. The requirement for a lack of
new matter statement being verified would be deleted. See comments to
1.4(d).
Paragraph (c) of 1.125 would clarify that a substitute
specification is to be submitted without markings as to amended material.
Paragraph (d) of 1.125 would not permit a substitute specification
in reissue or reexamination proceedings as markings for changes from the
patent are required therein.
Section 1.133, paragraph (b), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.134 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.135, paragraphs(a) and (c), would be amended by replacement
of "response" with "reply" in accordance with the proposed change to
1.111. Paragraph (b) is proposed to be amended to clarify that the
admission of or refusal to admit any amendment after final rejection,
and not just an amendment not responsive to the last Office action,
shall not operate to save the application from abandonment.
Section 1.135, paragraph (c), is proposed to be amended to provide
that a new "time period" under 1.134 may be given if a reply to a
non-final Office action is substantially complete but consideration of
some matter or compliance with some requirement has been inadvertently
omitted. This would replace the current practice whereby applicant may
be given an opportunity to supply the omission through the setting of a
"time limit" of one month that is not currently extendable. Generally, a
new one month shortened statutory time period would be utilized enabling
an applicant to petition for extensions of time under 1.136(a). Where
35 U.S.C. 133 requires a period longer than one month, i.e., actions
mailed in the month of February, a shortened statutory period of 30 days
will be set. The setting of a time period for reply under 1.134
rather than a time limit would result in the date of abandonment (when
no further reply is filed) being the expiration of the new time period
rather than, at present, the date of expiration of the period of reply
set in the original Office action for which an incomplete reply was
filed. Thus, the proposed amendment to paragraph (c) of 1.135 would
permit the refiling of a continuing application as an alternative to
completing the reply, whereas the current rule only permits an applicant
to complete the reply that was held to be incomplete.
Section 1.135, paragraph (c), is also proposed to be amended to
remove an unnecessary reference to consideration of the question of
abandonment and to clarify that the reply for which applicant may be
given a new time period to reply to must be a "non-final" Office action.
Section 1.136, paragraph (a)(1), is proposed to be amended to recite
the availability of a maximum of five (5) rather than four (4) months as
an extension of time when only a one (1) month or 30 day shortened
statutory period or a non-statutory period for reply is set. Paragraph
(a)(1) is would also be amended by replacement of "respond" with "reply"
in accordance with the proposed change to 1.111.
Section 1.136, paragraph (a)(2), would be amended by replacement of
"respond" with "reply" in accordance with the proposed change to
1.111 and other clarification changes.
Section 1.136 is proposed to be amended by addition of paragraph
(a)(3) that would now provide for the filing in an application a general
authorization to treat any reply requiring a petition for an extension
of time for its timely submission as containing a request therefor for
the appropriate length of time. The authorization may be filed at any
time prior to or with the submission of a reply that would require an
extension of time for its timely submission, including submission with
the application papers. Currently, the mere presence of a general
authorization, submitted prior to or with a reply requiring an extension
of time, to charge all required fees does not amount to a petition for
an extension of time for that reply (MPEP 201.06 and 714.17) and under
the proposed amended rule the submission of a reply requiring an
extension of time for its timely submission would not be treated as an
inherent petition for an extension of time absent an authorization for
all necessary extensions of time. The Office will continue to treat all
petitions for an extension of time as requesting the appropriate
extension period notwithstanding an inadvertent reference to a shorter
period for extension and will liberally interpret comparable papers as
petitions for an extension of time. Applicants are advised to file
general authorizations for payment of fees and petitions for extensions
of times as separate papers rather than as sentences buried in papers
directed to other matters (such as an application transmittal letter).
The use of individual papers directed only to an extension of time or to
a general authorization for payment of fees would permit the Office to
more readily identify the presence of such items and list them
individually on the application file jacket thereby providing ready
future identification of these authorizations.
Clarifying language is proposed for 1.136(a)(3) to reflect current
practice that general authorizations to charge fees are effective to
meet the requirement for the extension of time fee for responses filed
concurrent or subsequent to the authorization. However, a general
authorization to charge additional fees does not represent a petition
for an extension of time, which petition must be separately requested.
Section 1.137 is proposed to be amended by moving language presently
codified, elsewhere to, inter alia, incorporate revival of abandoned
applications and lapsed patents for the failure: (1) to timely reply to
an Office requirement in a provisional application ( 1.139), (2) to
timely pay the issue fee for a design application ( 1.155 paragraphs
(b)-(f)), (3) to timely pay the issue fee for a utility or plant
application ( 1.316 paragraphs (b)-(f)), or to timely pay the full
amount of the issue fee ( 1.317 paragraphs (b)-(f)) (lapsed patents).
Cites in parentheses reference where subject matter is contained in
current rules.
Section 1.137(a), as proposed, would further move into paragraph
(a)(3) the requirement that a petition thereunder be "promptly filed
after the applicant is notified of, or otherwise becomes aware of, the
abandonment." 35 U.S.C. 133 requires that "it be shown . . . that such
delay was unavoidable." This requirement is regarded as requiring not
only a showing that the delay which resulted in the abandonment of the
application was unavoidable, but also a showing of unavoidable delay
from the time an applicant becomes aware of the abandonment of the
application until the filing of a petition to revive. See In re
Application of Takao 17 USPQ2d 1155 (Comm'r Pat. 1990). The burden of
continuing the process of presenting a grantable petition in a timely
manner likewise remains with the applicant until the applicant is
informed that the petition is granted. Id. An applicant seeking to
revive an "unavoidably" abandoned application is expected to cause a
petition under 1.137(a) to be filed without delay (i.e., promptly
upon becoming notified, or otherwise becoming aware, of the abandonment
of the application). As such, the placement of the requirement that a
petition pursuant to 1.137(a) be filed promptly upon becoming
notified, or otherwise becoming aware, of the abandonment of the
application is appropriately located in paragraph (a)(3), since
1.137(a)(3) includes the requirement for a showing of unavoidable delay.
The requirement that an applicant seeking to revive an application as
"unavoidably" abandoned "promptly" file a petition under 1.137 is
regarded as a requirement that a petition pursuant to 1.137(a) be
filed without delay upon the applicant or his or her representative
being notified of, or otherwise becoming aware of, the abandonment.
Thus, under the current and proposed practice, the failure to file a
petition under 1.137(a) within three months of the date the applicant
or his or her representative is notified of, or otherwise becomes aware
of, the abandonment would generally be regarded as a failure to
"promptly" file a petition pursuant to 1.137.
Providing a time period based upon the date of abandonment during
which a petition pursuant to 1.137(b) must be filed to be timely, but
providing no comparable time period within which a petition pursuant to
1.137(a) must be filed to be timely, results in the misapplication of
1.137 on the part of practitioners, which in turn results in an
inordinate administrative burden to the Office. The Office is proposing
to either: (1) eliminate the time period requirement for filing a
petition pursuant to 1.137(b), or (2) provide comparable time period
requirements for filing either a petition pursuant to 1.137(a) and/or
1.137(b), which time period will be based upon the date of the first
Office notification that the application had become abandoned or that
the patent had lapsed. Interested persons are advised to comment on each
of these proposals, since, depending upon further consideration by the
Office and the comments received in response to this notice of proposed
rulemaking, either proposal may be adopted in the final rule.
Providing the period of "within one year of the date on which the
application became abandoned" as the period during which a petition
under 1.137(b) may be timely filed has had the undesirable effect of
inducing applicants, or their representatives, to delay the filing of a
petition under 1.137(b) until the end of this one year period. This
deliberate delay in filing a petition under 1.137(b), or use of this
one year period as an extension of time, is considered an abuse of
1.137(b). See In re Application of S., 8 USPQ2d 1630, 1632 (Comm'r Pats
1988). In addition, 1.137(b) was recently amended to require that any
petition thereunder include a statement that the delay (i.e., the entire
delay), and not merely the abandonment, was unintentional. See Final
Rule, "Changes in Procedures for Revival of Patent Applications and
Reinstatement of Patents," published in the Federal Register at 58 FR.
44277 (August 20, 1993) and in the Patent and Trademark Office Official
Gazette at 1154 Off. Gaz. Pat Office 4 (September 14, 1993). As such,
any intentional delay in filing a petition under 1.137(b) is
prohibited by the current terms of the rule.
Under current rules, in instances in which an applicant, or his or
her representative, intentionally delays the filing of a petition under
1.137(b) until the end of this one year period, but files a petition
under 1.137(b) within this one year period, the petition is timely
under 1.137(b)(4), but the statement that "the delay was
unintentional" is not appropriate. In instances in which the filing of a
petition under 1.137(b) is intentionally delayed until the end of
this one year period, and the applicant, or his or her representative,
miscalculates the actual date of abandonment, or otherwise misdockets
the end of this one year period, the statement that "the delay was
unintentional" is likewise not appropriate, but the petition is also
barred by the terms of the rule. In addition, subsequent petitions under
1.137(a) are, regardless of the original cause of the abandonment,
barred due to the applicant's failure to cause a petition under
1.137(a) to be "promptly filed after the applicant is notified of, or
otherwise becomes aware of, the abandonment." See Application of S., 8
USPQ2d at 1632.
Where the applicant deliberately permits an application to become
abandoned (e.g., due to a conclusion that the claims are unpatentable
(e.g., that a rejection in an Office action cannot be overcome), or that
the invention lacks sufficient commercial value to justify continued
prosecution), the abandonment of such application is considered a
deliberately chosen course of action, and the resulting delay cannot be
considered "unintentional" within the meaning of 37 CFR 1.137(b). See In
re Application of G., 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989). Likewise,
where the applicant deliberately chooses not to either seek or persist
in seeking the revival of an abandoned application, the resulting delay
in seeking revival of the application cannot be considered
"unintentional" within the meaning of 37 CFR 1.137. The correctness or
propriety of the rejection, or other objection, requirement, or
decision, by the Office, the appropriateness of the applicant's decision
to abandon the application or to not seek or persist in seeking revival,
or the discovery of new information or evidence, or other change in
circumstances subsequent to the abandonment or decision not to seek or
persist in seeking revival, are immaterial to such intentional delay
caused by the deliberate course of action chosen by the applicant.
The intentional abandonment of an application, or an intentional
delay in seeking either the withdrawal of a holding of abandonment in or
the revival of an abandoned application, precludes a finding of
unavoidable or unintentional delay pursuant to 1.137. See In re
Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).
Proposed elimination of the time period requirement for filing a
petition pursuant to 1.137(b):
Under this proposal, an intentional delay in the filing of a petition
under 1.137(b) will not result in an untimely petition pursuant to
1.137(b). The statement that "the delay was unintentional," however,
will continue to be inappropriate. That is, where there is an
intentional delay in the filing of a petition under 1.137(b), the
statement that "the delay was unintentional" will continue to be
inappropriate (i.e., the applicant, or his or her representative cannot
properly make this statement, and thus cannot properly request revival
of the application), but 1.137(b) would no longer include an
additional time period requirement. It is anticipated that the effects
of prosecution delay due to abandonment on patent term under Public Law
103-465, and the proposed changes to 1.137(c), will eliminate any
incentive to intentionally delay the revival of an abandoned application.
An applicant, assignee, or his or her representative, desiring the
revival of an application that has inadvertently or unintentionally
become abandoned is expected to act without intentional delay in seeking
revival of the application. The Office does not question whether there
has been an intentional or otherwise impermissible delay when a petition
pursuant to 1.137 is filed within three months of the date the
applicant is first notified by the Office that the application is
abandoned. Where, however, there is a greater delay between the date the
applicant is first notified by the Office that the application is
abandoned and the filing of a petition pursuant to 1.137(b), the
Office may raise the question as to whether the delay was unintentional,
and may require more than a mere statement that the delay was
unintentional. The Office may question whether the delay was
unintentional in instances in which an applicant fails to timely seek
reconsideration of a decision refusing to revive an abandoned
application (see 1.137(d)).
Regardless of whether the time period requirement in 1.137(b) is
eliminated, applicants seeking revival of an abandoned application are
advised to file a petition pursuant to 1.137 within three months of
first notification that the application is abandoned to avoid the
question of intentional delay being raised by the Office or third
parties seeking to challenge any patent issuing from the application.
While this proposal would permit revival pursuant to 1.137(b)
without regard to the period of abandonment, 1.137(a) currently
permits revival pursuant thereto without regard to the period of
abandonment. In addition, the Office currently entertains petitions
pursuant to 1.183, albeit under strictly limited conditions, to waive
the time period requirement in 1.137(b).
Since an application may currently be revived pursuant to 1.137
without regard to the period of abandonment, any current reliance upon
the period of abandonment to ensure that the application will never
issue as a patent is misplaced. Thus, the proposed elimination of the
time period requirement in 1.137(b) would not significantly decrease
the relationship between the period of abandonment of an application and
the likelihood that such application would ever issue as a patent.
In the event that the proposed elimination of the time period
requirement for filing a petition pursuant to 1.137(b) is adopted,
public comment is also requested on the application of this rule change
to applications that were abandoned prior to the effective date of this
rule change. This provision could be made effective as to petitions
filed on or after the effective date of the rule change, which would
permit the revival pursuant to 1.137(b) of applications abandoned for
extended periods of time, provided that the entire delay was
unintentional. This provision could also be made effective as to
applications abandoned on or after the effective date, with the
provisions of current 1.137(b) being applied to applications
abandoned prior to the effective date of the rule change. This provision
could also be made effective as to applications abandoned within and/or
having a petition to revive filed within a specified period preceding
the effective date of the rule change.
Proposed comparable time period requirements each of 1.137(a)
and (b) based upon the date of the first Office notification that the
application had become abandoned or that the patent had lapsed:
The Office is also considering amending each of 1.137(a) and (b)
to include an express requirement that a petition thereunder be filed
within a time certain. Specifically, the Office is also considering
amending 1.137(a) to include the express requirement that a petition
thereunder be filed within three months of the date of the first Office
notification that the application had become abandoned or that the
patent had lapsed and amending 1.137(b) to include the requirement
that a petition thereunder be filed within three months of the date of
the first Office notification that the application had become abandoned
or that the patent had lapsed, or within three months of the date of the
first decision on a timely petition pursuant to 1.137(a).
The "promptly filed" requirement in 1.137(a) is the subject of
various interpretations by applicants seeking revival pursuant to
1.137(a). To avoid misunderstandings as to the timeliness with which the
Office expects an applicant seeking revival pursuant to 1.137(a) to
file a petition thereunder, the Office is considering amending
1.137(a) to include the express requirement that a petition thereunder
be filed within a time certain. Providing a period during which a timely
petition pursuant to 1.137(a) and/or (b) may be filed based upon the
date of the first Office notification that the application had become
abandoned or that the patent had lapsed, rather than the date of
abandonment or patent lapse, is considered a better measure of
timeliness. In addition, providing such a period will reduce uncertainty
as to the expiration of the period during which a timely petition
pursuant to 1.137(b), as well as 1.137(a), may be filed.
Therefore, the Office is also considering basing the period during
which a timely petition under 1.137 (b), as well as 1.137(a), may
be filed on the date of notification of the abandonment, rather than the
date of abandonment, and considers that a period of within three months
of the date of the first Office notification that the application had
become abandoned or that the patent had lapsed to be the appropriate
period.
Under the appropriate circumstances, petitions under 1.183 to
waive any time period requirement in 1.137(a) and/or (b) would be
available. Waiver of any requirement of 1.137 will, in accordance
with 1.183, be strictly limited to an "extraordinary situation" in
which "justice requires" such waiver.
Section 1.137(a)(1), as proposed, would replace the phrase "a
proposed response to continue prosecution of that application, or the
filing of a continuing application, unless either has been previously
filed" with "accompanied by the required reply, unless previously filed.
In a nonprovisional application abandoned for failure to prosecute, the
proposed reply requirement may be met by the filing of a continuing
application. In an abandoned application or a lapsed patent, for failure
to pay any portion of the required issue fee, the proposed reply must be
the issue fee or any outstanding balance thereof."
Section 1.137(b)(1), as proposed, would likewise replace the phrase
"Accompanied by a proposed response to continue prosecution of that
application, or filing of a continuing application, unless either has
been previously filed" with "accompanied by the required reply, unless
previously filed. In a nonprovisional application abandoned for failure
to prosecute, the proposed reply requirement may be met by the filing of
a continuing application. In an abandoned application or a lapsed
patent, for failure to pay any portion of the required issue fee, the
proposed reply must be the issue fee or any outstanding balance thereof."
While the revival of applications abandoned for failure to timely
prosecute and for failure to timely pay the issue fee are proposed to be
incorporated together in 1.137, the statutory provisions for the
revival of an application abandoned for failure to timely prosecute and
for failure to timely submit the issue fee are mutually exclusive. See
Brenner v. Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied
393 U.S. 926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the
acceptance of a delayed payment of the issue fee, if the issue fee "is
submitted ... and the delay in payment is shown to have been
unavoidable." 35 U.S.C. 41(a)(7) likewise authorizes the acceptance of
an "unintentionally delayed payment of the fee for issuing each patent."
Thus, 35 U.S.C. 41(a)(7) and 151 each require payment of the issue fee
as a condition of reviving an application abandoned or patent lapsed for
failure to pay the issue fee. Therefore, the filing of a continuing
application without payment of the issue fee or any outstanding balance
thereof is not an acceptable proposed reply in an application abandoned
or patent lapsed for failure to pay any portion of the required issue
fee.
The Notice of Allowance requires the timely payment of the issue fee
in effect on the date of its mailing to avoid abandonment of the
application. In instances in which there is an increase in the issue fee
by the time of payment of the issue fee required in the Notice of
Allowance, the Office will mail a notice requiring payment of the
balance of the issue fee then in effect. The phrase "for failure to pay
any portion of the required issue fee" applies to those instances in
which the applicant fails to pay either the issue fee required in the
Notice of Allowance or the balance of the issue fee required in a
subsequent notice. In such instances, the proposed reply must be the
issue fee then in effect, if no portion of the issue fee was previously
submitted, or any outstanding balance of the issue fee then in effect,
if a portion of the issue fee was previously submitted.
These proposed changes to 1.137(a)(1) and (b)(1) are necessary
to incorporate into 1.137 the revival of abandoned applications and
lapsed patents for the failure to timely reply to an Office requirement
in a provisional application, to timely pay the issue fee, or to timely
pay the full amount of the issue fee.
Sections 1.137(a) and (b), as proposed, would each include a new
paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that
any petition thereunder must be accompanied by any terminal disclaimer
(and fee as set forth in 1.20(d)) required pursuant to 1.137(c),
to include in 1.137(a) and (b) an explicit reference to the
terminal disclaimer requirement in 1.137(c).
Section 1.137(c), as proposed, would change the phrase "any petition
pursuant to paragraph (a) of this section" to "any petition pursuant to
this section." As the period for the timely filing of a petition under
1.137(b) would no longer be based upon the period of abandonment,
administrative convenience no longer justifies not requiring, for all
design applications and all other nonprovisional utility applications
filed prior to June 8, 1995, a terminal disclaimer under 1.137(c) for
all petitions pursuant to 1.137.
In addition, the phrase "not filed within six months of the date of
abandonment of the application" is proposed to be removed from
1.137(c). The only justification for the current six month limitation on
the terminal disclaimer requirement in 1.137(c) is administrative
convenience in treating a petition pursuant to 1.137(a) filed within
six months of the date of abandonment. Since the date of abandonment is
miscalculated in a significant number of instances, this provision of
1.137(c) leads to errors in determining when a terminal disclaimer is
required pursuant to 1.137(c), and thus leads to delays in continuing
prosecution of the abandoned application. In any event, administrative
convenience is no longer considered an adequate justification for the
effective different treatment that would result by operation of Public
Law 103-465 of: (1) applications filed on or after June 8, 1995, except
for design applications, and (2) applications filed prior to June 8,
1995 and all design applications.
Section 1.137(d), as proposed, would change "application" to
"abandoned application or lapsed patent" to incorporate into 1.137
the revival of lapsed patents.
Section 1.137(e), as proposed, would provide that the time periods
set forth in 1.137 may be extended under the provisions of 1.136.
Section 1.137(f), as proposed, will expressly provide that a
provisional application, abandoned for failure to timely reply to an
Office requirement, may be revived pursuant to 1.137(a) or (b) so as
to be pending for a period of no longer than twelve months from its
filing date. In accordance with 35 U.S.C. 111(b)(5), 1.137(f), as
proposed, will clearly indicate that "[u]nder no circumstances will a
provisional application be regarded as pending after twelve months from
its filing date." Sections 1.139(a) and (b) each currently provide that
a provisional application may be revived so as to be pending for a
period of no longer than twelve months from its filing date, and that
under no circumstances will a provisional application be regarded as
pending after twelve months from its filing date.
Section 1.139 is proposed to be removed and reserved and its subject
matter added to 1.137.
Section 1.142 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.144 is proposed to be amended for clarification purposes.
Section 1.146 is proposed to be amended for clarification purposes.
Section 1.152 is proposed to be amended by removing the prohibition
against color drawings and color photographs in design applications.
Section 1.152 would be amended to permit the use of color photographs
and color drawings in design applications subject to the petition
requirements of 1.84(a)(2) inasmuch as color may be an integral
element of the ornamental design. While pen and ink drawings may be
lined for color, a clear showing of the configuration of the design may
be obscured by this drafting method. New technologies, such as
holographic designs, fireworks and laser light displays may not be
accurately disclosed without the use of color.
The term "article" of 1.152 would be replaced by the term "design"
as 35 U.S.C. 171 requires that the claim be directed to the "design for
an article" not the article, per se. Therefore, to comply with the
requirements of 35 U.S.C. 112, first paragraph, it is only necessary
that the design as embodied in the article be fully disclosed and not
the article itself. The term "must" would be replaced by the term
"should" to allow for latitude in the illustration of articles whose
configuration may be understood without surface shading. Clarification
language would be added to note that the use of solid black surfaces
would be permitted for representation of the color black as well as
color contrast and that photographs and ink drawings must not be
combined as formal drawings in one application.
Section 1.154 paragraph (a) would be amended to clarify that a
voluntary submission (see comments under 1.152 relating to
substitution of "design" for "article") may and should be made of "a
brief description of the nature and intended use of the article in which
the design is embodied." It is current practice for design examiners, in
appropriate cases, to inquire as to the nature and intended use of the
article in which a claimed design is embodied. The submission of such
description will allow for a more accurate initial classification, and
aid in providing a proper and complete search at the time of the first
action on the merits. In those instances where this feature description
is necessary to establish a clear understanding of the article in which
the design is embodied, provision of the feature description would help
in reducing pendency by eliminating the necessity for time consuming
correspondence. Specifically, requests for information prior to first
action would be avoided. Absent an amendment requesting deletion of the
description it would be printed on any patent that would issue.
Sections 1.155(b) through (f) are proposed to be removed in view of
the proposed amendments to 1.137.
Section 1.163 is proposed to be amended to remove an unnecessary and
outmoded reference to a "legible carbon copy of the original"
specification for plant applications.
Section 1.165 is proposed to be amended by removing a reference to
the artistic and competent execution of plant patent drawings which is
unnecessary in view of the reference to 1.84.
Section 1.167 is proposed to be amended by removing and reserving
paragraph (b) as unnecessary in view of 1.132.
Section 1.171 would no longer require an order for a title report in
reissue applications as the requirement for a certification on behalf of
all the assignees under concomitantly amended 1.172(a) obviates the
need for a title report and fee therefor. Section 1.171 is also proposed
to be amended by deletion of the requirement for an offer to surrender
the patent, which offer is seen to be redundant in view of 1.178.
Section 1.172 is proposed to be amended to require that all assignees
establish their ownership interest by submission of
vidence of the chain of title or by specifying where such evidence is
recorded in the Office.
Section 1.175 relating to the content of the reissue oath or
declaration (MPEP 1414), as well as 1.48 and 1.324 relating to
correction of inventorship in an application and in a patent,
respectively, are proposed to be amended to remove the requirement for a
showing of a lack of deceptive intent based on facts and circumstances.
As the Office no longer investigates fraud and inequitable conduct
issues and a reissue applicant's statement of a lack of deceptive intent
is normally accepted on its face (See MPEP 1448), the current
requirement in 1.175(a)(5) that it be shown how the error(s) being
relied upon arose or occurred without deceptive intent on the part of
the applicant appears to be unduly burdensome upon applicants and the
Office, and is proposed to be deleted. This would apply to the initially
identified error(s), under paragraph (a), and any subsequently
identified error(s) under paragraph (b). An initial reissue oath or
declaration would be required to be filed pursuant to 1.175(a)
limited to identification of the cause(s) of the reissue, and stating
generally that all errors being corrected in the reissue application at
the time of filing of the oath or declaration arose without deceptive
intent. The current practice under 1.175(a)(3) and (a)(5) of
specifically identifying all errors being corrected at the time of
filing the initial oath or declaration would not be retained.
Paragraph (b)(1) of 1.175 would require a supplemental reissue
oath or declaration for errors corrected that were not covered by an
earlier presented reissue oath or declaration, such as the initial oath
or declaration pursuant to paragraph (a) of this section or one
submitted subsequent thereto (a supplemental oath or declaration under
this paragraph), stating generally that all errors being corrected which
are not covered by an earlier presented oath or declaration pursuant to
paragraphs (a) and (b) of this section arose without any deceptive
intention on the part of the applicant. A supplemental oath or
declaration that refers to all errors that are being corrected,
including errors covered by a reissue oath or declaration submitted
pursuant to paragraph (a) of this section, would be acceptable. The
specific requirement for a supplemental reissue oath or declaration to
cover errors sought to be corrected subsequent to the filing of an
initial reissue oath or declaration is not a new practice, but merely
recognition of a current requirement for a supplemental reissue oath or
declaration when additional errors are to be corrected. However, the
current practice of specifically identifying all supplemental errors
being corrected in a supplemental reissue oath or declaration would
not be retained. A supplemental oath or declaration under paragraph
(b)(1) would be required to be submitted prior to allowance. The
supplemental oath or declaration may be submitted with any
amendment prior to allowance, paragraph (b)(1)(i), or in order to
overcome a rejection under 35 U.S.C. 251 made by the examiner where
there are errors sought to be corrected that are not covered by a
previously filed reissue oath or declaration, paragraph
(b)(1)(ii). Any such rejection by the examiner will include a
statement that the rejection may be overcome by submission of a
supplemental oath or declaration, which oath or declaration states that
the errors in issue arose without any deceptive intent on the part of
the applicant. A supplemental oath or declaration under paragraph (b)
would only be required for errors sought to be corrected during
prosecution of the reissue application. Where an Office action contains
only a rejection under 35 U.S.C. 251 and indicates that a supplemental
oath or declaration under this paragraph would overcome the rejection,
applicants are encouraged to authorize the payment of the issue fee at
the time the supplemental reissue oath or declaration is submitted in
view of the clear likelihood that the reissue application will be
allowed on the next Office action. Such authorization will reduce the
delays in the Office awaiting receipt of the issue fee. Where there are
no errors to be corrected over those already covered by an oath or
declaration submitted under paragraphs (a) and (b)(1) of this section,
e.g., the application is allowed on first action, or where a
supplemental oath or declaration has been submitted prior to allowance
and no further errors have been corrected, a supplemental oath or
declaration under this paragraph, or additional supplemental oath or
declaration under paragraph (b)(1), would not be required.
Paragraph (b)(2) would provide that for any error sought to be
corrected after allowance, e.g., under 1.312, a supplemental oath or
declaration must accompany the requested correction stating that the
error(s) to be corrected arose without any deceptive intent on the part
of the applicant.
The quotes around lack of deceptive intent in 1.175(a)(6) would be
removed as the exact language would not be required. Section
1.175(a)(7), referencing 1.56, is proposed to be removed as
unnecessary in view of the reference to 1.56 in 1.63 that is also
referred to by 1.175(a). Section 1.175(b) noting the ability of
applicant to file affidavits or declarations of others and the ability
of the examiner to require additional information would be deleted as
unnecessary in view of 1.132 and 35 U.S.C 132. A reference to
1.53(b) would be inserted in newly proposed 1.175(c) to clarify that
the initial oath or declaration under 1.175(a) including those
requirements under 1.63 need not be submitted (with the
specification, drawing and claims) in order to obtain a filing date.
37 CFR 1.176 would be amended to permit the Office to require
restriction between claims added in a reissue application and the
original patent claims, where the claims added in the reissue
application are separate and distinct from the original patent claims.
This change is provided to deal with the added examination burden
which results when new inventions are added via the reissue application.
The Office would continue to not require restriction between original
claims of the patent, i.e., between claims that were in the patent prior
to filing the reissue application. In order for restriction to be
required between the original patent claims and the newly added claims,
the newly added claims must be separate and distinct from the original
patent claims. Restriction between multiple inventions in the newly
added claims would also be possible provided the newly added claims are
drawn towards separate and distinct inventions.
Section 1.177 is proposed to be amended to discontinue the current
practice that copending reissue applications must be issued
simultaneously unless ordered otherwise by the Commissioner pursuant to
petition.
Section 1.177 is proposed to be further amended by creating
paragraphs (a) through (d) to clarify when multiple reissue patents may
be issued and the conditions that applicant must comply with in order to
have the Commissioner exercise his or her discretion and authorize
issuance of multiple reissue patents. The Commissioner has discretion
pursuant 35 U.S.C. 251 to permit the issuance of multiple reissue
patents for distinct and separate parts of the thing patented. The
Commissioner will exercise his or her statutory discretion under the
limited conditions set forth in paragraph (a) of this section. Absent
compliance with the provisions of paragraph (a) of this section, as
defined by paragraphs (b) and (c) of this section, the Commissioner will
not exercise his or her discretion under the statute and will not permit
the issuance of multiple reissue applications, as is set forth in
paragraph (d) of this section.
The conditions for the Commissioner to exercise his or her discretion
and permit multiple reissue patents to be issued for distinct and
separate parts of the thing patented set forth in paragraph (a) of this
section are as follows: (1) Copending reissue applications for distinct
and separate parts of the thing patented have been filed, (2) Applicant
has filed in each copending reissue application a timely demand by way
of petition for multiple reissue patents, (3) The required filing and
issue fees for each copending reissue application have been paid, and
(4) The petition for multiple reissue patents is granted prior to
issuance of a reissue patent on any of the copending reissue
applications.
Paragraph (b) of 1.177 would set forth the requirements of the
petition provided for in paragraph (a)(2) of this section, which
requirements are: (1) A request for the issuance of multiple reissue
patents for distinct and separate parts of the thing patented, (2) The
petition fee pursuant to 1.17(i), (3) An identification of the other
copending reissue application(s), (4) A statement that the inventions as
claimed in the copending reissue applications are distinct and separate
parts of the thing patented, and (5) A showing sufficient to establish
to the satisfaction of the Commissioner that the claimed subject matter
of the thing patented is in fact being divided into distinct and
separate parts.
The "distinct and separate parts of the thing patented" means two
things: (1) that the thing patented is being proposed to be divided into
separate parts, i.e., the claims in the original patent are being
separated into different reissue applications, and (2) that the divided
claims are distinct as set forth in MPEP 802.01.
Items (4) and (5) are intended to cover those situations where the
Commissioner can and has determined, based on material and/or
information supplied by applicant, or otherwise, that the subject matter
of the thing patented is in fact being separated into parts that are
distinct.
The Commissioner intends to delegate the authority for decisions on
the petitions required under this section to the Group Directors of the
groups where the copending reissue applications are pending.
Paragraph (c) of 1.177 would define the timeliness requirements
for submission of the petitions set forth in paragraph (a)(1) of this
section. When the copending reissue applications are filed at the same
time, the petitions must be filed no later than the earliest submission
of the reissue oath or declaration under 1.175(a) for any of the
copending reissue applications. When the copending reissue applications
are filed at different times, the petitions must be filed no later than
the earliest of: (1) payment of the issue fee for any of the copending
reissue applications, or (2) submission of the reissue oath or
declaration under 1.175 in the later filed copending reissue
application.
Paragraph (d) of 1.177 sets forth that the Commissioner will not
permit multiple reissue patents to be issued if the requirements of this
section are not met.
It is contemplated that where the requirements of paragraphs (a) and
(b) of 1.177 are capable of being perfected, the Office will give a
one-month time period for perfection, with extensions of time available
under 1.136(a). Where a first copending reissue application has
issued, however, perfection would not be possible. It is not the intent
of the Commissioner to provide any possibility of review by way of
appeal to the Board of Patent Appeals and Interferences from his or her
determination that the requirements of this section have not been
complied with. Review of determinations on questions as to whether it
has been established that the copending reissue applications are for
distinct and separate parts of the thing patented will be by way of
petition under 1.181(a)(3) and subsequently to court as to whether
the Commissioner, or his or her designate, has properly exercised the
discretion provided by 35 U.S.C. 251 as is now proposed to be
implemented in 1.177.
The proposed changes are not intended to affect the type of errors
that are or are not appropriate for correction under 35 U.S.C. 251,
e.g., a patent granted on elected claims will not be considered to be
partially inoperative by reason of claiming less than they had a right
to claim and applicant's failure to timely file a divisional application
is not considered to be the type of error that can be corrected by a
reissue. MPEP 1402 and 1450.
Section 1.177 is also proposed to be clarified by a new more
descriptive title in view of the substantive amendments and a reference
to the statutory authority.
Section 1.181 is proposed to be amended by removing paragraphs
(d),(e) and (g) as unnecessary and at most representing internal
instructions.
Section 1.182 is proposed to be amended by providing that a petition
under the section may be granted "subject to such other requirements as
may be imposed" by the Commissioner, language similar to that appearing
for petitions under 1.183. The section would have removed as
unnecessary a statement that a decision on a petition thereunder will be
communicated to interested parties in writing.
Section 1.184 is proposed to be removed and reserved as representing
internal instructions.
Section 1.191 would be amended, to provide for an appeal only after
the claims of an applicant or a patent owner of a patent under
reexamination are twice rejected, by deletion of appeal after having
received a final rejection. The reference to a final rejection is deemed
unnecessary in view of the proposed amendment to 1.113 by addition of
paragraph (c) prohibiting a first action final rejection. An appeal
would not then be appropriate in any application including reissue and
continued prosecution ( 1.53(b)(3)) applications or in a patent under
reexamination unless that application or that patent under reexamination
in which an appeal is filed has been twice rejected, particularly in
view of the elimination of first action final rejections. A second
rejection need not be a final rejection for an appeal to be taken as is
currently the practice. However, an applicant or patent owner of a
patent under reexamination would not be able to appeal after a first
action rejection in a continuation, divisional or continued prosecution
application as no first action would be a final rejection and the only
basis to appeal would be that the claims of an applicant or patent owner
of a patent under reexamination have been twice rejected in the same
application or the same patent under reexamination.
Section 1.191, paragraph (a), would be amended for conformance with
the language of 35 U.S.C. 134 by replacement of "the claims of which
have" by "whose claims have." Section 1.191 would also be amended by
replacement of "response" with "reply" in accordance with the proposed
change to 1.111.
Sections 1.192, 1.193, 1.194, 1.196, and 1.197 are proposed to be
amended to change "the appellant" to "appellant" for consistency.
Paragraph (a) of 1.192 would be amended by replacement of "response"
with "reply" in accordance with the proposed change to 1.111.
Section 1.193 would be amended in its title by addition of "and
substitute brief" to more accurately reflect the section's contents.
Section 1.193 would also be amended, by revision of paragraph (a) into
paragraphs (a)(1) and (a)(2) and revision of paragraph (b) into
paragraphs (b)(1) and (b)(2). Paragraph (a)(1) would retain the subject
matter of current paragraph (a). Paragraph (a)(2) would specifically
prohibit the inclusion of a new ground of rejection in an examiner's
answer.
Paragraph (b)(1) would remove the current discretion under existing
paragraph (b) of this section of the examiner to enter a new ground of
rejection in an examiner's answer responding to an appeal in conformance
with proposed paragraph (a)(2). Paragraph (b)(1) would require the
examiner to reopen prosecution to enter any new ground of rejection.
Reopening of prosecution would require entering of any previously
submitted paper that has been refused entry.
Paragraph (b)(1) of 1.193 would also provide appellant with a
right to file a substitute appeal brief in compliance with 1.192 in
reply to an examiner's answer where the right to file a substitute
appeal brief would not be dependent upon a new point of argument being
present in the examiner's answer. The current practice of permitting
reply briefs based solely on a finding of a new point of argument, as
set forth in current paragraph (b), would be eliminated thereby
preventing present controversies as to whether a new point of argument
has been made by the primary examiner. Appellant would be assured of
having the last submission prior to review by the Board. Upon receipt of
a substitute appeal brief the examiner would either acknowledge its
receipt and entry or reopen prosecution to respond to any new issues
raised in the substitute appeal brief. Should the Board desire to remand
the appeal to the primary examiner for comment on the latest submission
by appellant or to clarify an examiner's answer, MPEP 1211,1211.01, and
1212, appellant would be entitled to submit a substitute appeal brief in
response to the reply by the examiner to the Board's inquiry, which
reply would be by way of a substitute examiner's answer. The use of
substitute appeal briefs and substitute examiner's answers is intended
to provide the Board with a single most current paper from each party.
Paragraph (b)(2) of 1.193 would provide that if appellant desires
that the appeal process be reinstated in reply to the examiner's
reopening of prosecution under paragraph (b)(1) of this section,
appellant would be able to file a new appeal brief under 1.192 and a
request to reinstate the appeal. Amendments, affidavits or other new
evidence would not be entered if submitted with a request to reinstate
the appeal. Reinstatement of the appeal would constitute a new notice of
appeal but no additional appeal fees would be required, since such fees
have been previously paid. The intent of the rule change is to give
appellant (rather than the examiner) the option to continue the appeal
if desired (particularly under a 20 year term), or to continue
prosecution before the examiner in the face of a new ground of
rejection. Should an appeal brief be elected as the response to the
examiner reopening prosecution based on a new ground of rejection under
paragraph (b)(1) of this section, the examiner may under paragraph
(a)(1) of this section issue an examiner's answer.
Section 1.194, paragraph (b), is proposed to be amended to provide
that a request for an oral hearing must be filed in a separate paper.
Section 1.194, paragraph (c), is proposed to be amended to provide
that appellant will be notified when a requested oral hearing is
unnecessary, e.g., a remand is required.
Section 1.196, paragraphs (b) and (d), are proposed to be combined by
amending paragraph (b) to specifically provide in paragraph (b) for a
new ground of rejection for both appealed claims and for allowed claims
present in an application containing claims that have been appealed
rather than the current practice under paragraph (d) of recommending a
rejection of allowed claims that is binding on the examiner. The effect
of an explicit rejection of an allowed claim by the Board of Patent
Appeals and Interferences is not seen to differ from a recommendation of
a rejection and would serve to advance the prosecution of the
application by having the rejection made at an earlier date by the Board
of Patent Appeals and Interferences rather than waiting for the
application to be forwarded and acted upon by the examiner. The current
practice, that the examiner is not bound by the rejection should
appellant elect to proceed under paragraph (b)(1) and an amendment or
showing of facts not previously of record in the opinion of the examiner
overcomes the new ground of rejection, is not proposed to be changed. A
period of two months would now explicitly be set forth for a reply to a
decision by the Board of Patent Appeals and Interferences containing a
new ground of rejection pursuant to 1.196(b), which would alter the
one month now set forth for replies to recommended rejections of
previously allowed claims. MPEP 1214.01, page 1200-28. Extensions of
time would continue to be governed by 1.196(f) and 1.136(b) (and
not by 1.136(a)).
The last sentence of paragraph (b)(2) of 1.196 would be amended to
clarify that appellants do not have to both appeal and file request for
reconsideration where only a reconsideration of a portion of the
decision is sought in that a decision on a request for reconsideration
will incorporate the earlier decision for purposes of appeal of the
earlier decision for which only a partial request for reconsideration
may have been filed. Additionally it is clarified that decisions on
reconsideration are final unless noted otherwise in the decision in that
under some circumstances it may not be appropriate to make a decision on
reconsideration final as is currently automatically provided for.
Section 1.196 would have a new paragraph (d) providing the Board of
Patent Appeals and Interferences with explicit authority to have an
appellant clarify the record in addition to what is already provided by
way of remand to the examiner, MPEP 1211, and appellant's compliance
with the requirements of an appeal brief, 1.192(d). Paragraph (d)(1)
would provide that an appellant may be required to address any matter
that is deemed appropriate for a reasoned decision on the pending
appeal. Such matters would include:
(1) the applicability of particular case law that has not been
previously identified as relevant to an issue in the appeal,
(2) the applicability of prior art that has not been made of record,
and
(3) the availability of particular test data that would be persuasive
in rebutting a ground of rejection.
Paragraph (d)(2) would provide that appellant would be given a time
limit within which to reply to any inquiry under paragraph (d)(1) of
this section. Time limits, unlike time periods for reply, are not
extendable under 1.136(a).
Section 1.197, paragraph (b), is proposed to be amended to provide a
period of two months, rather than the one month currently provided, for
the single request for reconsideration or modification of the Board
decision as provided for in 1.197(b).
Section 1.291, paragraph (c), is proposed to be amended by removing
the blanket limitation of one protest per protestor and would provide
for a second or subsequent submission in the form of additional prior
art. Mere argument that is later submitted by an initial protestor would
continue not to be entered and returned unless it is shown that the
argument relates to a new issue that could not have been earlier raised.
MPEP 1907(b). Although, later submitted prior art would be made of
record by a previous protestor without a showing that it relates to a
new issue, it should be noted that entry of later submitted prior art in
the file record does not assure its consideration by the examiner if
submitted late in the examination process. Accordingly, initial protests
should be as complete as possible when first filed.
In view of the proposed change to 1.291(a) of this section in the
18-Month Publication Notice of Proposed Rulemaking, discussed supra,
e.g., at 1.62 of the preamble, limiting the filing of protests to the
issuance of patents to particular time periods (none after the notice of
allowance is mailed, none after two months from publication or the
filing of protests with a fee during the two-month period from
publication where a notice of allowance has not been mailed), the
restriction of protests by number is deemed unnecessary and is
recognized as ineffective in that the current rule may allow for more
than one protest to be filed on behalf of a party.
Section 1.291 paragraph (c) would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.294 paragraph (b) would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.304(a)(1) is proposed to be amended to replace
"consideration" by "reconsideration," an error that resulted from
mistyping when it first appeared in the Federal Register.
Section 1.312, paragraph (b), is proposed to have a reference to
1.175(b) added in view of the proposed change in 1.175(b) referencing
1.312(b).
Section 1.313 paragraph is proposed to be amended by the addition of
paragraph (c) informing applicants that unless written notification is
received that the application has been withdrawn from issue at least two
weeks prior to the projected date of issue, applicants should expect
that the application will issue as a patent. Once an application has
issued, the Office is without authority to grant a request under
1.313 notwithstanding submission of the request prior to issuance of the
patent.
Sections 1.316(b) through (f) are proposed to be removed as they
would be combined in proposed 1.137.
Sections 1.317(b) through (f) are proposed to be removed as they
would be combined in proposed 1.137.
Section 1.318 is proposed to be removed and reserved as being an
internal Office instruction.
Section 1.324 is proposed to be amended by creating paragraphs (a)
and (b). The requirement for factual showings to establish a lack of
deceptive intent would be deleted, with a statement to that effect being
sufficient, paragraph (a).
As Office practice (MPEP 1481) is to require the same type and
character of proof of facts as in petitions under 1.48(a), a showing
of diligence proposed to be deleted in 1.48 would not be continued in
either 1.48 or 1.324, which currently follows the requirements of
1.48. The applicability of a rejection under 35 U.S.C. 102(f)/(g)
against a patent with the wrong inventorship set forth therein is deemed
to provide sufficient motivation for prompt correction of the
inventorship without the need for a separate requirement for diligence.
The parties set forth in 35 U.S.C. 256 are interpreted to be only the
person named as an inventor or not named as an inventor through error.
Accordingly, 1.324 is proposed to be amended, paragraph (b)(1), to
explicitly require a statement relating to the lack of deceptive intent
only from each person who is being added or deleted as an inventor, as
opposed to the current practice of requiring a statement from each
original named inventor and any inventor to be added.
The current requirements for an oath or declaration under 1.63 by
each actual inventor would be replaced, paragraph (b)(2) of 1.324, by
a statement from the current named inventors who have not submitted a
statement under paragraph (b)(1) of 1.324 either agreeing to the
change of inventorship or stating that they have no disagreement in
regard to the requested change. Not every original named inventor would
necessarily have knowledge of each of the contributions of the other
inventors and/or how the inventorship error occurred, in which case
their lack of disagreement to the requested change would be sufficient.
Paragraph (b)(3) of 1.324 would require the written consent of the
assignees of all parties who submitted a statement under paragraph
(b)(1) and (b)(2) of this section similar to the current practice of
consents by the assignees of all the existing patentees. A clarification
reference to 3.73(b) has been added.
Paragraph (b)(4) of 1.324 states the requirement for a petition
fee as set forth in 1.20(b).
Section 1.325 relating to mistakes not corrected is proposed to be
removed and reserved as unnecessary in that mistakes cannot be corrected
unless a basis for their correction is found.
Sections 1.351 and 1.352 are proposed to be removed and reserved as
unnecessary in that they are internal instructions.
Section 1.366, paragraph (b), would have the term "certificate"
removed as unnecessary. Paragraph (c) would be clarified by changing
"serial number" to "application number" which consists of the serial
number and the series code (e.g., "08/"). Paragraph (d) would have the
suggested requirements for the patent issue date and the application
filing date removed as unnecessary in that the patent number is
sufficient to identify the file and the change parallels an intended
deletion of these dates from forms PTO/SB/45 and PTO/SB/47. The term
"serial" would be removed from paragraph (d).
Section 1.377, paragraph (c), would be amended to remove the
requirement that the petition be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.378, paragraph (d), would be amended to remove the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.425 would be amended by removing paragraph (a) and its
requirement for: proof of the pertinent facts, which relates to the lack
of cooperation or unavailability of the inventor for which status is
sought and by deleting paragraph (b) and its requirements for: proof of
the pertinent facts, the presence of a sufficient proprietary interest,
and a showing that such action is necessary to preserve the rights of
the parties or to prevent irreparable damage. Additionally, the
requirement that the last known address of the non-signing inventor be
stated would be removed. The current requirements are thought to be
unnecessary in view of the need for submission of the same information
in a petition under 37 CFR 1.47 during the national stage. The paragraph
to be added would parallel the requirement in PCT Rule 4.15 for a
statement explaining to the satisfaction of the Commissioner the lack of
the signature concerned.
Section 1.484, paragraphs (d) through (f), would be amended by
replacement of "response" and "respond" with "reply" in accordance with
the proposed change to 1.111.
Section 1.485 paragraph (a) would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.488, paragraph (b), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.492 proposed to be amended to add new paragraph (g).
Section 1.494, paragraph (c), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.495, paragraph (c)(2), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.510, paragraph (e), would be amended to replace a reference
to 1.121(f), in view of it proposed removal, with a reference to
1.530(d) in view of its proposed revision.
Section 1.530 the title and paragraph (a) would be amended by
replacement of "amendment" and "response" with "reply" in accordance
with the proposed change to 1.111.
Section 1.530, paragraph (d), would be replaced by paragraphs (d)(1)
through (d)(6) removing the reference to 1.121(f) in accordance with
the proposed deletion of 1.121(f). The manner of making amendments in
reexamination proceeding under the current reexamination practice is
governed by 1.530(d)(1) through (d)(6). Paragraph (d) would apply to
proposed amendments in reexamination proceedings. Paragraph (d)(1) would
be directed to the manner of proposing amendments in the specification
other than in the claims. Paragraph (d)(1)(i) would require the precise
point to be indicated where a proposed amendment is to be made.
Paragraph (d)(1)(ii) would require that all amendments including
deletions be made by submission of a copy of the rewritten paragraph(s)
with markings. A change in one sentence, paragraph, or page that results
in only format changes to other pages not being amended are not to be
submitted. Paragraph (d)(1)(iii) would require proposed amendments to
the specification to be made by rewritten relative to the patent
specification and not relative to a previous proposed amendment.
Paragraph (d)(1)(iv) would define the markings set forth in paragraph
(d)(1)(ii).
Paragraph (d)(2) of 1.530 would relate to the manner of proposing
amendment of the claims in reexamination proceedings. Paragraph
(d)(2)(i)(A) would require that a proposed amendment include the entire
text of each patent claim which is proposed to be amended, but not all
pending claims, such as patent claims that have not been proposed to be
amended. Additionally, provision would be made for the cancellation of
patent or of a proposed claim by a direction to cancel without the need
for marking by brackets. Compare with deletion of claims in reissue
applications where only patent claims and not added claims may be
cancelled by direction, paragraph (b)(2)(i)(A). Paragraph (b)(2)(i)(B)
would prohibit the renumbering of the patent claims and require that any
proposed added claims follow the number of the highest numbered patent
claim. Paragraph (b)(2)(i)(C) would identify the type of markings
required by paragraph (d)(2)(i)(A), single underlining for added
material and single brackets for material deleted.
Paragraph (d)(2)(ii) would require the patent owner to set forth the
status of all patent claims, of all currently proposed claims, and of
all previously proposed claims that are no longer being proposed as of
the date of submission of each proposed amendment. Compare with
1.121(b)(2)(ii), which does not require the status of patent claims that
were not amended or of added claims that were cancelled.
Paragraph (d)(2)(iii) of 1.530 would require an explanation of the
support in the disclosure for any proposed first-time amendments to the
claims on pages separate from the amendments along with any additional
comments.The absence of an explanation would result in an incomplete
reply, 35 U.S.C. 135.
Paragraph (d)(2)(iv) of 1.530 would require that each submission
of a proposed amendment to any claim (patent claims and all proposed
claims) requires copies of all proposed amendments to the claims as of
the date of the submission. A copy of a previous amendment would not
meet the requirement of this section in that all amendments must be
represented, as only the last amendment will be used for printing. A
copy of a patent claim that has not been proposed to be amended is not
to be presented.
Paragraph (d)(2)(v) of 1.530 would provide that the failure to
submit a copy of any proposed added claim would be construed as a
direction to cancel that claim.
Paragraph (d)(3) of 1.530 would clarify that: 1) a proposed
amendment may not enlarge the scope of the claims of the patent, 2) that
no amendment may be proposed in an expired patent, and 3) no amendment
will be incorporated into the patent by certificate issued after the
expiration of the patent.
Paragraph (d)(4) of 1.530 would clarify that amendments proposed
to a patent during reexamination proceedings will not be effective until
a reexamination certificate is issued.
Paragraph (d)(5) of 1.530 would provide the specifications that
the form of papers must comply with in reexamination proceedings, e.g.,
paper size must be either letter size or A4 size (and not legal size).
Paragraph (d)(6) of 1.530 would clarify that proposed amendments
to the patent drawings are not permitted and that any change must be by
way of a new sheet of drawings with the proposed amended figures being
identified as "amended" and with proposed added figures identified as
"new" for each sheet that has changed.
Section 1.550, paragraphs (a),(b), and (d), would be amended by
replacement of "response," "responses" and "respond" with "reply" in
accordance with the proposed change to 1.111.
Section 1.560, paragraph (b), would be amended by replacement of
"response" with "reply" in accordance with the proposed change to
1.111.
Section 1.770 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.785 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 1.804, paragraph (b), would be clarified grammatically by
changing "shall state" to "stating" and would be amended to delete the
requirement that the statement be verified in accordance with the
proposed change to 1.4(d)(2).
Section 1.805, paragraph (c), would be amended by replacement of
"verified" with "statement" in accordance with the proposed change to
1.111 and removing unnecessary language noting that an attorney or agent
registered to practice need not verify their statements.
Portions of Part 3 are proposed to be amended to incorporate Part 7
that is proposed to be removed and reserved.
Section 3.11(a) is proposed to be created for the current subject
matter and a new paragraph (b) would be added citing Executive Order
9424 and its requirements by several departments and other executive
agencies of the Government for forwarding items for recording.
Section 3.26 would be amended to remove the requirement that English
language translation be verified in accordance with the proposed change
to 1.4(d)(2).
Section 3.27(a) is proposed to be added to include current subject
matter and an exception for 3.27(b) that would be added citing
Executive Order 9424 and a mailing address therefor.
Section 3.31(c) is proposed to be added to require that the cover
sheet must indicate that the document is to be recorded on the
governmental register and if applicable that the document is to be
recorded on the Secret Register and that the document will not affect
title.
Section 3.41(a) is proposed to be added for the current subject
matter and a 3.41(b) added to note when no recording fee is required
in 3.41(b)(1) through (3) when it is required by Executive Order 9424.
Section 3.51 is proposed to be amended by removing the term
"certification" as unnecessary in accordance with the proposed change to
1.4(d)(2).
Section 3.58 is proposed to be added to provide for the maintaining
of a Department Register to record Government interests required by
Executive Order 9424 in 3.58(a). New 3.58(b) would provide that
the Office maintain a Secret Register to record Government interests
also required by the Executive Order.
Section 3.73(b) is proposed to be amended to remove the sentence
requiring an assignee to specifically state that the evidentiary
documents have been reviewed and to certify that title is in the
assignee seeking to take action. The sentence is deemed to be
unnecessary in view of the proposed amendment to 1.4(d). Section
3.73(b) has been clarified by addition of a reference to an example of
documentary evidence that can be submitted.
Section 5.1 is proposed to be amended by removing the current subject
matter as being duplicative of material in the other sections of this
part and to be replaced by subject matter proposed to be deleted from
5.33.
Section 5.2(b) through (d) are proposed to be removed as repetitive
of material in the sections following with 5.2(b) being replaced with
subject matter of the first sentence from 5.7.
Section 5.3 would be amended by replacement of "response" with
"reply" in accordance with the proposed change to 1.111.
Section 5.4 is proposed to be amended by removing unnecessary subject
matter from paragraph (a), eliminating, in paragraph (d), the
requirement that the petition be verified in accordance with the
proposed amendment to 1.4(d)(2) and by adding the first sentence of
5.8 to paragraph (d).
Section 5.5 is proposed to be amended by removing unnecessary subject
matter from paragraph (b) and by replacing current 5.5(e) with
subject matter proposed to be removed from 5.6(a).
Section 5.6 is proposed to be removed and reserved with the subject
matter of 5.6(a) being placed in proposed 5.5(e).
Section 5.7 is proposed to be removed and reserved with the first
sentence thereof being placed in proposed 5.2(b).
Section 5.8 is proposed to be removed and reserved with the subject
matter from the first sentence thereof being placed in proposed
5.4(e).
Sections 5.11(b) and (c) are proposed to be amended to update the
references to other parts of the Code of Federal Regulations.
Section 5.13 is proposed to be amended by removing the last two
sentences which are considered to be unnecessary.
Section 5.14(a) is proposed to be amended by removing unnecessary
subject matter and replacing "serial number" with the more appropriate
designation "application number".
Section 5.15(a) is proposed to be amended by removing unnecessary
subject matter and to update the references to other parts of the Code
of Federal Regulations.
Section 5.16 is proposed to be removed and reserved as unnecessary.
Section 5.17 is proposed to be removed and reserved as unnecessary.
Section 5.18 is proposed to be amended to update the references to
other parts of the Code of Federal Regulations.
Sections 5.19(a) and (b) are proposed to be amended to update the
references to other parts of the Code of Federal Regulations.
Section 5.19(c) is proposed to be removed as unnecessary.
Section 5.20(b) is proposed to be removed as unnecessary.
Section 5.25(c) is proposed to be removed as unnecessary.
Section 5.31 is proposed to be removed and reserved as unnecessary.
Section 5.32 is proposed to be removed and reserved as unnecessary.
Section 5.33 is proposed to be removed and reserved and the subject
matter added to 5.1.
Part 7 is proposed to be removed and reserved as the substance
thereof has been incorporated into Part 3.
Compilation of Inquiries to Public
The Supplementary Information portion and the preamble portion of
1.137 request comments on the advisability of applying retroactively
provisions in the final rules to papers submitted prior to the effective
date of the final rule changes.
The 1.121 portion of the preamble requests comments regarding the
advisability of harmonizing reissue practice with reexamination practice.
The 1.137(b) portion of the preamble requests comments on
alternatives as to the time period for submitting a petition thereunder.
Review Under the Paperwork Reduction Act of 1995
This proposed rule contains information collection requirements which
are subject to review by the Office of Management and Budget (OMB) under
the Paperwork Reduction Act of 1995. The title, description and
respondent description of each of the information collections are shown
below with an estimate of each of the annual reporting burdens. The
collections of information in this proposed rule have been reviewed and
approved by, or are pending approval by the OMB under the following
control numbers: 0651-0035, 0651-0033, 0651-0031, 0651-0016, 0651-0032
and 0651-0027. Included in each estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
With respect to the following collections of information, the Office
invites comments on: (1) Whether the proposed collection of information
is necessary for the proper performance of the Office's functions,
including whether the information will have practical utility; (2) The
accuracy of the Office's estimate of the burden of the proposed
collection of information, including the validity of the methodology and
assumptions used; (3) Ways to enhance the quality, utility, and clarity
of the information to be collected; and (4) Ways to minimize the burden
of the collection of information on respondents, including through the
use of automated collection techniques, when appropriate, and other
forms of information technology.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
OMB Number: 0651-0035
Title: Address-Affecting Provisions
Form Numbers: PTO/SB/82/83
Type of Review: Pending OMB approval
Affected Public: Individuals or Households, Business or Other
Non-Profit, Not-For-Profit Institutions and Federal Government.
Estimated Number of Respondents: 44,850
Estimated Time Per Response: 0.2 hours
Estimated Total Annual Burden Hours: 8,970 hours
Needs and Uses: Under existing law, a patent applicant or assignee
may appoint, revoke or change a representative to act in a
representative capacity. Also, an appointed representative may withdraw
from acting in a representative capacity. This collection includes the
information needed to ensure that Office correspondence reaches the
appropriate individual.
OMB Number: 0651-0033
Title: Post Allowance and Refiling
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b
Type of Review: Pending OMB approval
Affected Public: Individuals or Households, Business or Other
Non-Profit, Not-For-Profit Institutions and Federal Government.
Estimated Number of Respondents: 165,900
Estimated Time Per Response: 0.382 hours
Estimated Total Annual Burden Hours: 63,400 hours
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to Title 35 of the U.S. Code
concerning the issuance of patents and related actions including
correcting errors in printed patents, refiling of patent applications,
requesting reexamination of a patent, and requesting a reissue patent to
correct an error in a patent. The affected public includes any
individual or institution whose application for a patent has been
allowed or who takes action as covered by the applicable rules.
OMB Number: 0651-0031
Title: Patent Processing (Updating)
Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/67-69/91-93/96/97
Type of Review: Pending OMB approval
Affected Public: Individuals or Households, Business or Other
Non-Profit Institutions, Not-For-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 364,000
Estimated Time Per Response: 1.779 hours
Estimated Total Annual Burden Hours: 647,720 hours
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Citations; Terminal
Disclaimers; Petitions to Revive; Express Abandonment; Appeal Notice;
Small Entity; Petition for Access; Power to Inspect; Certificate of
Mailing; Amendment Transmittal Letter; Deposit Account Order Form.
OMB Number: 0651-0016
Title: Rules for Patent Maintenance Fees
Form Numbers: PTO/SB/45/46/47/65/66
Type of Review: Pending OMB approval
Affected Public: Individuals or Households, Business or Other
Non-Profit, Not-For-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800
Estimated Time Per Response: .08 hours
Estimated Total Annual Burden Hours: 22,640 hours
Needs and Uses: Maintenance fees are required to maintain a patent in
force under Title 35 of the U.S. Code. Payment of maintenance fees are
required at 3 1/2, 7 1/2 and 11 1/2 years after the grant of the patent.
A patent number and serial number of the patent on which maintenance
fees are paid are required in order to ensure proper crediting of such
payments.
OMB Number: 0651-0032
Title: Initial Patent Application
Form Number: PTO/SB/01-07/17-20/101-109
Type of Review: Currently approved through 9/98
Affected Public: Individuals or Households, Business or Other
Non-Profit, Not-For-Profit Institutions and Federal Government.
Estimated Number of Respondents: 221,000
Estimated Time Per Response: 10.8 hours
Estimated Total Annual Burden Hours: 2,387,000 hours
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the criteria
set forth in the patent statutes and regulations. The standard Fee
Transmittal form, New Utility Patent Application Transmittal form, New
Design Patent Application Transmittal form, New Plant Patent Application
Transmittal form, Plant Color Coding Sheet, Declaration, and Plant
Patent Application Declaration will assist applicants in complying with
the requirements of the patent statutes and regulations, and will
further assist the Office in processing and examination of the
application.
OMB Number: 0651-0027
Title: Changes in Patent and Trademark Assignment Practices
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41
Type of Review: Currently approved through 9/98
Affected Public: Individuals or households and businesses or other
for-profit institutions.
Estimated Number of Respondents: 170,000
Estimated Time Per Response: 0.5 hours
Estimated Total Annual Burden Hours: 85,000 hours
Needs and Uses: The Office records about 170,000 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
As required by the Paperwork Reduction Act of 1995 (44 U.S.C.
3507(d)), the Office has submitted a copy of this proposed rulemaking to
OMB for its review of these information collections. Interested persons
are requested to send comments regarding these information collections,
including suggestions for reducing this burden, to the Office of
Information and Regulatory Affairs of OMB, New Executive Office Bldg.,
725 17th St. N.W., rm. 10235, Washington, D.C. 20503, Attn: Desk Officer
for the Patent and Trademark Office.
OMB is required to make a decision concerning the collections of
information contained in these proposed regulations between 30 and 60
days after publication of this document in the Federal Register.
Therefore, a comment to OMB is best assured of having its full effect if
OMB receives it within 30 days of publication. This does not affect the
deadline for the public to comment to the Office on the proposed
regulations.
Other Considerations
This proposed rule change is 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 1995, 44 U.S.C. 3501 et seq.
It has been determined that this rulemaking is not significant for the
purposes of Executive Order 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 change would not
have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, Pub. L. 96-354). The principal impact of
these proposed changes is to reduce the regulatory burden on the public
in filing patent applications and petitions therein.
The PTO has determined that this proposed rule change has no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Deceptive intent, Inventions and
patents.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents.
37 CFR Part 5
Administrative practice and procedure, Inventions and patents, licenses
and exports, secrecy.
37 CFR Part 7
Inventions and patents.
For the reasons set forth in the preamble, 37 CFR Parts 1,3,5 and 7
are proposed to be amended as follows, with removals indicated by
brackets ([ ]) and additions are indicated by arrows (><):
Part 1 - Rules of Practice in Patent Cases
1. The authority citation for Part 1 continues to read as follows: 35
U.S.C. 6 and 23, unless otherwise noted.
1a. Section 1.4 is proposed to be amended by revising paragraph(d) and
by adding paragraph (g) to read as follows:
1.4 Nature of correspondence and signature requirements.
* * * * *
(d)>(1)< Each piece of correspondence, except as provided for in
paragraphs (e) and (f) of this section, filed in a patent or trademark
application, reexamination proceeding, patent file or trademark
registration file, trademark opposition proceeding, trademark
cancellation proceeding, or trademark concurrent use proceeding, which
requires a person's signature, must either:
[(1)]>(i)< Be an original, that is, have an original signature
personally signed in permanent ink by that person; or
[(2)]>(ii)< Be a copy, such as a photocopy or facsimile transmission
( 1.6(d)), of an original >or of a copy of a copy<. In the event that
a copy of the original is filed, the original should be retained as
evidence of authenticity. If a question of authenticity arises, the
Patent and Trademark Office may require submission of the original.
>(2) By presenting to the Office any paper the party submitting such
paper is certifying that to the best of the person's knowledge,
information and belief, formed after an inquiry reasonable under the
circumstances that:
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted by
existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment of new
law;
(iii) The allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(3) Sanctions:
(i) Violations of paragraphs (d)(2)(i) to (iv) of this section after
notice and reasonable opportunity to respond are subject to such
sanctions as are deemed appropriate by the Commissioner including
issuance of a Notice of Termination of Proceedings or return of papers;
and
(ii) Whoever, in any matter within the jurisdiction of the Patent and
Trademark Office knowingly and willfully falsifies, conceals, or covers
up by any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or uses
any false writing or document knowing the same to contain any false,
fictitious or fraudulent statement or entry, shall be subject to the
penalties set forth in 18 U.S.C. 1001, and may jeopardize the validity
or enforceability of the application or any patent issuing thereon.<
* * * * *
>(g) An applicant who has not made of record a registered attorney or
agent may be required to state whether assistance was received in the
preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of the
specification and amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in such matters, but
does not include merely making drawings by draftsmen or stenographic
services in typing papers.<
2. Section 1.6 is proposed to be amended by revising paragraph (e) to
read as follows:
1.6 Receipt of correspondence.
* * * * *
(e) Interruptions in U.S. Postal Service. If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Commissioner occur, the Patent and Trademark Office
will consider as filed on a particular date in the Office any
correspondence which is:
(1) Promptly filed after the ending of the designated interruption or
emergency; and
(2) Accompanied by a statement indicating that such correspondence would
have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service. [Such statement must be a verified statement if made by a
person other than a practitioner as defined in 10.1(r) of this
chapter.]
3. Section 1.8 is proposed to be amended by revising paragraph (b) to
read as follows:
1.8 Certificate of mailing or transmission.
* * * * *
(b) In the event that correspondence is considered timely filed by being
mailed or transmitted in accordance with paragraph (a) of this section,
but not received in the Patent and Trademark Office, and the application
is held to be abandoned or the proceeding dismissed, terminated, or
decided with prejudice, the correspondence will be considered timely if
the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence,
(2) Supplies an additional copy of the previously mailed or transmitted
correspondence and certificate, and
(3) Includes a statement which attests on a personal knowledge basis or
to the satisfaction of the Commissioner to the previous timely mailing
or transmission. [Such statement must be a verified statement if made by
a person other than a practitioner as defined in 10.1(r) of this
chapter.] If the correspondence was sent by facsimile transmission, a
copy of the sending unit's report confirming transmission may be used to
support this statement.
* * * * *
4. Section 1.10 is proposed to be amended by revising paragraph(c) to
read as follows:
1.10 Filing of papers and fees by "Express Mail" with certificate.
* * * * *
(c) The Patent and Trademark Office will accept the certificate of
mailing by "Express Mail" and accord the paper or fee the certificate
date under 35 U.S.C. 21(a) (unless the certificate date is a Saturday,
Sunday, or Federal holiday within the District of Columbia - see
1.6(a)) without further proof of the date on which the mailing by
"Express Mail" occurred unless a question is present regarding the date
of mailing. If more than a reasonable time has elapsed between the
certificate date and the Patent and Trademark Office receipt date or if
other questions regarding the date of mailing are present, the person
mailing the paper or fee may be required to file a copy of the "Express
Mail" receipt showing the actual date of mailing and a statement from
the person who mailed the paper or fee [averring to the fact] >stating<
that the mailing occurred on the date certified. [Such statement must be
a verified statement if made by a person not registered to practice
before the Patent and Trademark Office.]
5. Section 1.14 is proposed to be amended by revising paragraphs (a) and
(e) and by adding paragraph (f) to read as follows:
1.14 Patent applications preserved in [secrecy] >confidence<.
(a) Except as provided in 1.11(b) pending patent applications are
preserved in [secrecy] >confidence<. No information will be given by the
Office respecting the filing by any particular person of an application
for a patent, the pendency of any particular case before it, or the
subject matter of any particular application, nor will access be given
to or copies furnished of any pending application or papers relating
thereto, without written authority in that particular application from
the applicant or his >or her< assignee or attorney or agent of record,
unless the application has been identified by [serial] >application<
number in a published patent document or the United States of America
has been indicated as a Designated State in a published international
application, in which case status information >,< such as whether it is
pending, abandoned, or patented >,< may be supplied, or unless it shall
be necessary to the proper conduct of business before the Office or as
provided by this part. Where an application has been patented, the
patent number and issue date may also be supplied.
* * * * *
(e) Any request by a member of the public seeking access to, or copies
of, any pending or abandoned application preserved in [secrecy]
>confidence< 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), 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.
>(f) Information as to the filing of an application will be published
in the Official Gazette as required by 1.47(a) and (b).<
6. Section 1.17 is proposed to be amended by removing and reserving
paragraphs (b) through (d) and revising paragraph (a) and (i) to read as
follows:
1.17 Patent application processing fees.
(a) Extension fee>s pursuant to 1.136(a):< [for response within first
month pursuant to 1.136(a):
By a small entity ( 1.9(f)) $ 55.00
By other than a small entity $ 110.00]
>(1) For reply within first month:
By a small entity ( 1.9(f)) $ 55.00
By other than a small entity $ 110.00
(2) For reply within second month:
By a small entity ( 1.9(f)) $ 195.00
By other than a small entity $ 390.00
(3) For reply within third month:
By a small entity ( 1.9(f)) $ 465.00
By other than a small entity $ 930.00
(4) For reply within fourth month:
By a small entity ( 1.9(f)) $ 735.00
By other than a small entity $1,470.00
(5) For reply within fifth month:
By a small entity ( 1.9(f)) $1,005.00
By other than a small entity $2,010.00<
(b) >Removed< [Extension fee for response within second month pursuant
to 1.136(a):
By a small entity ( 1.9(f)) $ 190.00
By other than a small entity $ 380.00]
(c) >Removed< [Extension fee for response within third month pursuant to
1.136(a):
By a small entity ( 1.9(f)) $ 450.00
By other than a small entity $ 900.00]
(d) >Removed< [Extension fee for response within fourth month pursuant
to 1.136(a):
By a small entity ( 1.9(f)) $ 700.00
By other than a small entity $1,400.00]
* * * * *
(i) 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.
> 1.59 - for expungement and return of information.<
[ 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 an application special.
1.103 - to suspend action in application.
1.177>(a)< - for [divisional] >multiple reissue applications<
[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 an interference settlement agreement.
3.81 - for a patent to issue to assignee, [where the] assignment
[was] submitted after payment of the issue fee.
* * * * *
7. Section 1.21 is proposed to be amended by revising paragraph (n) to
read as follows:
1.21 Miscellaneous fees and charges.
* * * * *
(n) For handling an incomplete or improper application under 1.53(c)
[, 1.60 or 1.62] $ 130.00
* * * * *
8. Section 1.26 is proposed to be amended by revising paragraph(a) to
read as follows:
1.26 Refunds
(a) [Money] >Any fee< paid by [actual] mistake or in excess >of that
required< will be refunded, but a mere change of purpose after the
payment of money, as when a party desires to withdraw an application, an
appeal, or a request for oral hearing, will not entitle a party to
demand such a return. Amounts of twenty-five dollars or less will not be
returned unless specifically requested within a reasonable time, nor
will the payer be notified of such amounts; amounts over twenty-five may
be returned by check or, if requested, by credit to a deposit account.
* * * * *
9. Section 1.27 is proposed to be revised to read as follows:
1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity ( 1.9(f)
of this part) for purposes of paying fees in an application or a patent
must file a [verified] statement in the application or patent prior to
or with the first fee paid as a small entity. Such a [verified]
statement need only be filed once in an application or patent and
remains in effect until changed.
(b) >When establishing status as a small entity< [Any verified
statement filed] pursuant to paragraph (a) of this section >, any
statement filed< on behalf of an independent inventor must be signed by
the independent inventor except as provided in 1.42, 1.43, or
1.47 of this part and must aver that the inventor qualifies as an
independent inventor in accordance with 1.9(c) of this part. Where
there are joint inventors in an application, each inventor must file a
[verified] statement establishing status as an independent inventor in
order to qualify as a small entity. Where any rights have been assigned,
granted, conveyed, or licensed, or there is an obligation to assign,
grant, convey, or license, any rights to a small business concern, a
nonprofit organization, or any other individual, a [verified] statement
must be filed by the individual, the owner of the small business
concern, or an official of the small business concern or nonprofit
organization empowered to act on behalf of the small business concern or
nonprofit organization averring to their status. For purposes of a
[verified] statement under this paragraph, a license to a Federal agency
resulting from a funding agreement with that agency pursuant to 35
U.S.C. 202(c)(4) does not constitute a license as set forth in 1.9 of
this part.
(c) Any [verified] statement filed pursuant to paragraph (a) of this
section on behalf of a small business concern must (1) be signed by the
owner or an official of the small business concern empowered to act on
behalf of the concern; (2) aver that the concern qualifies as a small
business concern as defined in 1.9(d); and (3) aver that the
exclusive rights to the invention have been conveyed to and remain with
the small business concern or, if the rights are not exclusive, that all
other rights belong to small entities as defined in 1.9. Where the
rights of the small business concern as a small entity are not
exclusive, a [verified] statement must also be filed by the other small
entities having rights averring to their status as such. For purposes of
a [verified] statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not constitute a license as set forth in 1.9
of this part.
(d) Any [verified] statement filed pursuant to paragraph (a) of this
section on behalf of a nonprofit organization must (1) be signed by an
official of the nonprofit organization empowered to act on behalf of the
organization; (2) aver that the organization qualifies as a nonprofit
organization as defined in 1.9(e) of this part specifying under which
one of 1.9(e)(1), (2), (3), or (4) of this part the organization
qualifies; and (3) aver that exclusive rights to the invention have been
conveyed to and remain with the organization or if the rights are not
exclusive that all other rights belong to small entities as defined in
1.9 of this part. Where the rights of the nonprofit organization as a
small entity are not exclusive, a [verified] statement must also be
filed by the other small entities having rights averring to their status
as such. For purposes of a [verified] statement under this paragraph, a
license to a Federal agency pursuant to 35 U.S.C. 202(c)(4) does not
constitute a conveyance of rights as set forth in this paragraph.
10. Section 1.28 is proposed to be amended by revising paragraphs(a) and
(c) 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 in each application or patent in which the status is
available and desired. 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. >The
refiling of an application under 1.53 as a continuation, division,
continuation-in-part or continued prosecution application or the filing
of a reissue application requires a new determination as to continued
entitlement to small entity status for the refiled application or the
reissue application.< A nonprovisional application claiming benefit
under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, >a
continued prosecution application, or a reissue application< may rely on
a [verified] statement filed in the prior application >or in the patent<
if the nonprovisional application >, the continued prosecution
application or the reissue application< includes a reference to the
[verified] statement in the prior application >or in the patent< or
includes a copy of the [verified] statement in the prior application >or
in the patent< and status as a small entity is still proper and desired.
>The payment of a small entity basic statutory filing fee will
substitute for the reference.< 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.
* * * * *
(c) If status as a small entity is established in good faith, and fees
as a small entity are paid in good faith, in any application or patent,
and it is later discovered that such status as a small entity was
established in error or that through error the Office was not notified
of a change in status as required by paragraph (b) of this section, the
error will be excused [(1) if any deficiency between the amount paid and
the amount due is paid within three months after the date the error
occurred or (2) if any] >upon payment of the< deficiency between the
amount paid and the amount due [is paid more than three months after the
date the error occurred and the payment is accompanied by a statement
explaining how the error in good faith occurred and how and when the
error was discovered. The statement must be a verified statement if made
by a person not registered to practice before the Patent and Trademark
Office]. The deficiency is based on the amount of the fee, for other
than a small entity, in effect at the time the deficiency is paid in
full.
* * * * *
11. Section 1.33 is proposed to be amended by revising paragraph(a) to
read as follows and to remove and reserve paragraph(b):
1.33 Correspondence >address< respecting patent applications,
reexamination proceedings, and other proceedings.
(a) [The residence and post office address of the applicant must appear
in the oath or declaration if not stated elsewhere in the application.]
The applicant [may also specify and] >, the assignee(s) of the entire
interest (see 3.71 and 3.73) or< an attorney or agent of record
>(see 1.34(b))< may specify a correspondence address to which
communications about the application are to be directed. All notices,
official letters, and other communications in the [case] >application<
will be directed to the correspondence address or, if no such
correspondence address is specified, to an attorney or agent of record
(see 1.34(b)), or, if no attorney or agent is of record, to the
applicant [, or to any assignee of record of the entire interest if the
applicant or such assignee so requests, or to an assignee of an
undivided part if the applicant so requests, at the] >provided a< post
office address [of which the Office] has been [notified] >furnished< in
the [case] >application<. Amendments and other papers filed in the
application must be signed: (1) by the applicant, or (2) if there is an
assignee of record of an undivided part interest, by the applicant and
such assignee, or (3) if there is an assignee of record of the entire
interest, by such assignee, or (4) by an attorney or agent of record, or
(5) by a registered attorney or agent not of record who acts in a
representative capacity under the provisions of 1.34(a). Double
correspondence with an applicant and [his] >an< attorney or agent, or
with more than one attorney or agent, will not be undertaken. If more
than one attorney or agent [be] >is< made of record and a correspondence
address has not been specified, correspondence will be held with the one
last made of record.
(b) >[Reserved]<
* * * * *
12. Section 1.41 is proposed to be amended by revising paragraph (a) to
read as follows:
1.41 Applicant for patent.
(a) A patent [must be] >is< applied for in the name of the actual
inventor or inventors. >The inventorship of an application is set forth
in the oath or declaration that is executed in accordance with 1.63.<
[Full names must be stated, including the family name, and at least one
given name without abbreviation together with any other given name or
initial.] >For identification purposes, the name of the actual inventor
or inventors should be supplied when the specification and any required
drawing are filed. If the name of the actual inventor or inventors are
not supplied when the specification and any required drawing are filed,
the application should include an applicant identification consisting of
alphanumeric characters.<
* * * * *
13. Section 1.47 is proposed to be revised to read as follows:
1.47 Filing when an inventor refuses to sign or cannot be reached.
(a) If a joint inventor refuses to join in an application for patent or
cannot be found or reached after diligent effort, the application may be
made by the other inventor on behalf of himself or herself and the
[omitted] >nonsigning< inventor. The oath or declaration in such an
application must be accompanied by a petition including proof of the
pertinent facts >,< [and] by the [required] fee > set forth in< [(]
1.17(h)[)]>,< and [must state] the last known address of the [omitted
]>nonsigning< inventor. The Patent and Trademark Office shall forward
notice of the filing of the application to the [omitted] >nonsigning<
inventor at said address[. Should such notice be returned to the Office
undelivered, or should the address of the omitted inventor be unknown,]
>and< notice of the filing of the application shall be published in the
Official Gazette. The [omitted] >nonsigning< inventor may subsequently
join in the application on filing an oath or declaration [of the
character required by] >complying with< 1.63. [A patent may be
granted to the inventor making the application, upon a showing
satisfactory to the Commissioner, subject to the same rights which the
omitted inventor would have had if he or she had been joined.]
(b) Whenever [an] >all the< [inventor] >inventors< [refuses] >refuse<
to execute an application for patent, or cannot be found or reached
after diligent effort, a person to whom [the] >an< inventor has assigned
or agreed in writing to assign the invention or who otherwise shows
sufficient proprietary interest in the matter justifying such action may
make application for patent on behalf of and as agent for >all< the
[inventor] >inventors<. The oath or declaration in such an application
must be accompanied by a petition including proof of the pertinent facts
>,< [and] a showing that such action is necessary to preserve the rights
of the parties or to prevent irreparable damage, [and by] the [required]
fee > set forth in< [(] 1.17(h)[)]>,< and [must state] the last known
address of >all< the [inventor] >inventors<. [The assignment, written
agreement to assign or other evidence of proprietary interest, or a
verified copy thereof, must be filed in the Patent and Trademark
Office.] The Office shall forward notice of the filing of the
application to >all< the [inventor] >inventors< at the [address]
>addresses< stated in the application[. Should such notice be returned
to the Office undelivered, or should the address of the inventor be
unknown] >and< notice of the filing of the application shall be
published in the Official Gazette. [The] >An< inventor may subsequently
join in the application on filing an oath or declaration [of the
character required by] >complying< with 1.63. [A patent may be
granted to the inventor upon a showing satisfactory to the Commissioner.]
14. Section 1.48 is proposed to be revised to read as follows:
1.48 Correction of inventorship >in a patent application<.
(a) [If the correct inventor or inventors are not named in a
nonprovisional application through error without any deceptive intention
on the part of the actual inventor or inventors,] >If the inventive
entity is set forth in error in an executed 1.63 or 1.175 oath or
declaration and such error arose without any deceptive intention on the
part of the person named as an inventor in error or on the part of the
person who through error was not named as an inventor<, the application
may be amended to name only the actual inventor or inventors. >When the
application is involved in an interference, the amendment shall comply
with the requirements of this section and shall be accompanied by a
motion under 1.634.< 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] >from each
person who is being added as an inventor and from each person who is
being deleted as an inventor that the error in inventorship occurred
without deceptive intention on their part<;
(2) An oath or declaration by each actual inventor or inventors as
required by 1.63 >or as permitted by 1.42, 1.43 or 1.47<;
(3) The fee set forth in 1.17(h); and
(4) >If an assignment has been executed by any of the original named
inventors the,< [The] written consent of [any] >the< assignee >, see
3.73(b)<. [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] >a< nonprovisional
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. >When the application is involved in an
interference, the amendment shall comply with the requirements of this
section and shall be accompanied by a motion under 1.634. Such< [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 a nonprovisional 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. >When the application is involved in an interference,
the amendment shall comply with the requirements of this section and
shall be accompanied by a motion under 1.634. Such amendment must be
accompanied by:
(1) A petition including a statement from each person being added as
an inventor that the amendment is necessitated by amendment of the
claims and that the inventorship error occurred without deceptive
intention on their part;
(2) An oath or declaration by each actual inventor or inventors as
required by 1.63 or as permitted by 1.42, 1.43 or 1.47;
(3) The fee set forth in 1.17(h); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee, see 3.73(b).<
(d) If the name or names of an inventor or inventors were omitted in
a provisional application through error without any deceptive intention
on >their part< [the part of the actual inventor or inventors], the
provisional application may be amended to add the name or names of the
[actual] >omitted< inventor or inventors. Such amendment must be
accompanied by:
(1) A petition including a statement that the >inventorship< error
occurred without deceptive intention on the part of the [actual]
>omitted< 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).
(e) If a person or persons were named as an inventor or inventors in
a provisional application through error without any deceptive intention
>on their part<, an amendment may be filed in the provisional
application deleting the name or names of the person or persons who were
erroneously named. Such amendment must be accompanied by:
(1) A petition including a statement [of facts verified] by the
person or persons whose name or names are being deleted [establishing]
that the >inventorship< error occurred without deceptive intention >on
their part<;
(2) The fee set forth in 1.17(q); and
(3) [The written consent of any assignee.] >If an assignment has been
executed by any of the original named inventors, the written consent of
the assignee, see 3.73(b).
(f) If the correct inventor or inventors are not named on filing a
nonprovisional application without an executed oath or declaration under
1.63, the later submission of an executed oath or declaration under
1.63 will act to correct the earlier identification of inventorship.
(g) The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.<
15. Section 1.51 is proposed to be amended by removing paragraph (c).
1.51 General requisites of an application.
* * * * *
(c) [Removed].
16. Section 1.52 is proposed to be amended by revising paragraphs (a)
and (d) as follows:
1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the oath
or declaration must be in the English language except as provided for in
1.69 and paragraph (d) of this section, or be accompanied by a
[verified] translation of the application and a translation of any
corrections or amendments into the English language >together with a
statement that the translation is accurate<. All papers which are to
become a part of the permanent records of the Patent and Trademark
Office must be legibly written, typed, or printed in permanent ink or
its equivalent in quality. All of the application papers must be
presented in a form having sufficient clarity and contrast between the
paper and the writing, typing, or printing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes.
If the papers are not of the required quality, substitute typewritten or
printed papers of suitable quality may be required.
* * * * *
(d) An application may be filed in a language other than English. [A
verified] >An< English translation of the non-English-language
application >, a statement that the translation is accurate,< and the
fee set forth in 1.17(k) are required to be filed with the
application or within such time as may be set by the Office.
17. Section 1.53 is proposed to be amended by revising paragraphs (b)
through (d) as follows:
1.53 Application number, filing date, and completion of application.
* * * * *
(b)(1) The filing date of an application for patent filed under this
section, except for a provisional application >under paragraph (b)(2) of
this section or a continued prosecution application under paragraph
(b)(3) of this section<, is the date on which: a specification
containing a description pursuant to 1.71 and at least one claim
pursuant to 1.75; and any drawing required by 1.81(a), are filed
in the Patent and Trademark Office [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 >(1.115(b)(1))< [( 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) is filed which sets forth the reasons the delay in supplying
the names should be excused.] A continuation or divisional application
(filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c)
and 1.78(a)) may be filed under this >paragraph or paragraph (b)(3)
of this< section [, 1.60 or 1.62]. A continuation-in-part
application >must< [may also] be filed under this >paragraph< [section
or 1.62].
>(i) Any continuation or divisional application may be filed by all
or by less than all of the inventors named in a prior application. A
newly executed oath or declaration is not required ( 1.51(a)(1)(ii))
and paragraph (d) of this section in a continuation or divisional
application filed by all or by less than all of the inventors named in a
prior application, provided that one of the following is submitted: a
copy of the executed oath or declaration filed to complete (
1.51(a)(1)) the most immediate prior national application for which
priority is claimed under 35 U.S.C. 120, 121 or 365(c), or a copy of an
unexecuted oath or declaration, and a statement that the copy is a true
copy of the oath or declaration that was subsequently executed and filed
to complete ( 1.51(a)(1)) the most immediate prior national
application for which priority is claimed under 35 U.S.C. 120, 121 or
365(c). See paragraph (d) of this section for the filing of a
continuation or divisional application without the submission of a newly
executed oath or declaration or a copy of the oath or declaration for
the most immediate prior national application for which priority is
claimed under 35 U.S.C. 120, 121 or 365(c).
(A) The copy of the executed or unexecuted oath or declaration for
the most immediate prior national application for which priority is
claimed under 35 U.S.C. 120, 121 or 365(c) must be accompanied by a
statement requesting the deletion of the names of the person or persons
who are not inventors in the continuation or divisional application.
(B) Where the power of attorney or correspondence address was changed
during the prosecution of the prior application, the change in power of
attorney or correspondence address must be identified in the
continuation or divisional application.
(ii) A newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application. A newly executed oath or declaration must be
filed in a continuation-in-part application, which application may name
all, more, or less than all of the inventors named in the prior
application.
(iii) The inventorship of an application is set forth in the oath or
declaration that is executed in accordance with 1.63.<
(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 >paragraph
(b)(1) of this section< [ 1.53(b)(1)].
(ii) An application for patent filed under >paragraph (b)(1) of this
section< [ 1.53(b)(1)] may be [treated as] >converted to< 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 the abandonment of
the [ 1.53(b)(1)] application >under paragraph (b)(1) of this
section<, the payment of the issue fee, the expiration of 12 months
after the filing date of the [ 1.53(b)(1)] application >under
paragraph (b)(1) of this section<, or the filing of a request for a
statutory invention registration under 1.293. 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 >paragraph (b)(1) of this
section< [ 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
through 1.825 regarding application disclosures containing nucleotide
and/or amino acid sequences are not mandatory for provisional
applications.
>(3) In a nonprovisional application that is complete as defined by
1.51(a)(1) and filed on or after June 8, 1995, a continuation or
divisional application that discloses and claims only subject matter
disclosed in and names as inventors the same or less than all the
inventors named in that prior complete application may be filed as a
continued prosecution application under this paragraph. The filing date
of a continued prosecution application is the date on which a request
for an application under this paragraph including identification of the
prior application number is filed.
(i) An application filed under this paragraph:
(A) Will utilize the file jacket and contents of the prior
application, including the specification, drawings and oath or
declaration, from the prior complete application ( 1.51(a)) to
constitute the new application, and will be assigned the application
number of the prior application for identification purposes,
(B) Is a request to expressly abandon the prior application as of the
filing date of the request for an application under this paragraph, and
(C) Must be filed before the payment of the issue fee, abandonment
of, or termination of proceedings on the prior application, or after
payment of the issue fee if a petition under 1.313(b)(5) is granted
in the prior application.
(ii) The filing fee for a continued prosecution application filed
under this paragraph is:
(A) The basic filing fee as set forth in 1.16(a), and
(B) Any additional 1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under 1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.
(iii) If an application filed under this paragraph 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 new application.
(iv) Any new change must be made in the form of an amendment to the
prior application. Any new specification filed with the request for an
application under this paragraph will not be considered part of the
original application papers, but will be treated as a substitute
specification in accordance with 1.125.
(v) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidence by the
applicant under 35 U.S.C. 122 to the extent that any member of the
public who is entitled under the provisions of 1.14 to access to, or
information concerning either the prior application or any application
filed under the provisions of this paragraph may be given similar access
to, or similar information concerning, the other application(s) in the
file jacket.
(vi) In addition to identifying the application number of the prior
application, applicant is urged to furnish in the request for an
application under this paragraph the following information relating to
the prior application to the best of his or her ability:
(A) Title of invention;
(B) Name of applicant(s);
(C) Correspondence address;
(D) Identification of any priority claim under 35 U.S.C. 119, 120 and
121.
(vii) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Box CPA."<
(c)>(1) If any application filed under paragraph (b) of this section
is found to be incomplete or improper, applicant will be so notified and
given a time period within which to correct the filing error.
(2) Any request for review of a notification pursuant to paragraph
(c)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in 1.17(i) in an
application filed under paragraphs (b)(1) or (b)(3) of this section, and
the fee set forth in 1.17(q) in an application filed under paragraph
(b)(2) of this section. In the absence of a timely ( 1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
paragraph (c)(1) of this section will be the date the filing error is
corrected.
(3) If an applicant is notified of a filing error pursuant to
paragraph (c)(1) of this section, but fails to correct the filing error
within the given time period or otherwise timely ( 1.181(f)) take
action pursuant to paragraph (c)(2) of this section, proceedings in the
application will be considered terminated. Where proceedings in an
application are terminated pursuant to this paragraph, the application
may be returned or otherwise disposed of, and any filing fees, less the
handling fee set forth in 1.21(n), will be refunded.< [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] >paragraphs< (b)(1) >or (b)(3)< of this section
>, including a continuation, divisional, or continuation-in-part
application,< does not include the appropriate filing fee or an oath or
declaration by the applicant [,] >pursuant to 1.63 or 1.175, which
may be a copy of the executed oath or declaration filed to complete,
pursuant to 1.51(a)(1), the most immediate prior national application
for which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or a
copy of an unexecuted oath or declaration, and a statement that the copy
is a true copy of the oath or declaration that was subsequently executed
and filed to complete ( 1.51(a)(1)) the most immediate prior national
application for which priority is claimed under 35 U.S.C. 120, 121 or
365(c), in a continuation or divisional application,< applicant will be
so notified, if a correspondence address has been provided, 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 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.
* * * * *
18. Section 1.54 is proposed to be amended by revising paragraph(b) to
read as follows:
1.54 Parts of application to be filed together; filing receipt.
* * * * *
(b) Applicant will be informed of the application number and filing date
by a filing receipt >, unless the application is an application filed
under 1.53(b)(3)<.
19. Section 1.55 is proposed to be amended revising paragraph (a)to read
as follows:
1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit
of the filing date of one or more prior foreign applications under the
conditions specified in 35 U.S.C. 119(a) through (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 35 U.S.C. 119(b)
must be filed in the case of an interference ( 1.630), when necessary
to overcome the date of a reference relied upon by the examiner, when
specifically required by the examiner, and in all other cases, before
the patent is granted. If the certified copy 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 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.]
* * * * *
20. Section 1.59 is proposed to be revised to read as follows:
1.59 >Expungement of information or copy of papers in application
file< [Papers of application with filing date not to be returned].
>(a)(1) Information< [Papers] in an application which has received a
filing date pursuant to 1.53 will not be >expunged and< returned [for
any purpose whatever] >, except as provided in paragraph (b) of this
section<. [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, if the application
was filed under 1.53(b)(1), the processing and retention fee
1.21(l) has been paid.] See 1.618 for return of unauthorized and
improper papers in interferences.
>(2) Information forming part of the original disclosure, i.e.,
written specification, drawings, claims and any preliminary amendment
specifically incorporated into an executed oath or declaration under
1.63 and 1.175, will not be expunged from the application file.
(b) Information, other than what is excluded by paragraph (a)(2) of
this section, may be requested to be expunged and returned to applicant
upon petition under this paragraph and payment of the petition fee set
forth in 1.17(i). Any petition to expunge and return information from
an application must establish to the satisfaction of the Commissioner
that the return of the information is appropriate.
(c) If applicants have not preserved copies of any application
papers, the Office will furnish copies upon request, at the usual cost,
for any application in which either the required basic filing fee (
1.16) or, if the application was filed under 1.53(b)(1), the
processing and retention fee ( 1.21(l)) has been paid.<
21. Section 1.60 is proposed to be removed and reserved.
1.60 [Removed and Reserved]
22. Section 1.62 is proposed to be removed and reserved.
1.62 [Removed and Reserved]
23. 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)(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 >by: full name, including the family name,
and at least one given name without abbreviation together with any other
given name or initial,< and the residence >, post office address< and
country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
* * * * *
24. Section 1.69 is proposed to be amended by revising paragraph (b) to
read as follows:
1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration in a language other than
English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by [a verified] >an< English translation
>together with a statement that the translation is accurate<, except
that in the case of an oath or declaration filed under 1.63 the
translation may be filed in the Office no later than two months from the
date applicant is notified to file the translation.
25. Section 1.78 is proposed to be amended by revising paragraph(a)(1)
as follows:
1.78 Claiming benefit of [an] earlier filing date and
cross-references to other applications.
(a)(1) A nonprovisional application may claim an invention disclosed in
one or more prior filed copending nonprovisional applications or
international applications designating the United States of America. In
order for a nonprovisional application to claim the benefit of a prior
filed copending nonprovisional application or international application
designating the United States of America, each prior application must
name as an inventor at least one inventor named in the later filed
nonprovisional application and disclose the named inventor's invention
claimed in a least one claim of the later filed nonprovisional
application in the manner provided by the first paragraph of 35 U.S.C.
112. In addition, each 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
(b)(3)< [, 1.60 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)(1) 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)(1).
* * * * *
26. Section 1.84 is proposed to be amended by revising paragraph (b) as
follows:
1.84 Standards for drawings.
* * * * *
(b) Photographs.
(1) Black and white. Photographs are not ordinarily permitted in
utility [and design] applications. However, the Office will accept
photographs in utility [and design] applications only after >the<
granting of a petition filed under this paragraph which requests that
photographs be accepted. Any such petition must include the following:
(i) The appropriate fee set forth in 1.17(h); and
(ii) Three (3) sets of photographs. Photographs must either be
developed on double weight photographic paper or be permanently mounted
on bristol board. The photographs must be of sufficient quality so that
all details in the drawings are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.
* * * * *
27. Section 1.91 is proposed to be revised to read as follows:
1.91 Models >and exhibits< not generally required as part of
application or patent.
Models >and exhibits< [were once required in all cases admitting a
model, as a part of the application, and these models became a part of
the record of the patent. Such models are no longer generally required
(the description of the invention in the specification, and the
drawings, must be sufficiently full and complete, and capable of being
understood, to disclose the invention without the aid of a model), and]
will not be admitted unless specifically [called for.] >required by the
Office. A model, working model, or other physical exhibit may be
required if deemed necessary for any purpose in examination of the
application.<
28. Section 1.92 is proposed to be removed and reserved.
1.92 [Removed and Reserved]
29. Section 1.97 is proposed to be amended by revising paragraphs (c)
through (e) to read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(c) An information disclosure statement shall be considered by the
Office if filed after the period specified in paragraph (b) of this
section, but before the mailing date of either:
(1) A final action under 1.113>;< or
(2) A notice of allowance under 1.311, whichever occurs first,
provided the >information disclosure< statement is accompanied by either
a [certification] >statement< as specified in paragraph (e) of this
section or the fee set forth in 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed after the mailing date of either:
>(1) A< [a] final action under 1.113>;< or
>(2) A< [a] notice of allowance under 1.311, whichever occurs
first, but before payment of the issue fee, provided the >information
disclosure< statement is accompanied by:
[(1) >(i)< A [certification] >statement< as specified in paragraph
(e) of this section,
[2] >(ii)< a petition requesting consideration of the information
disclosure statement, and
[3] >(iii)< The petition fee set forth in 1.17(i)(1).
(e) A [certification] >statement< under this section must state
either:
(1) That each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the >information disclosure< statement [,]; >;< or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application [or] >and<, to the knowledge
of the person signing the [certification] >statement< after making
reasonable inquiry, was known to any individual designated in 1.56(c)
more than three months prior to the filing of the >information
disclosure< statement.
* * * * *
30. Section 1.101 is proposed to be removed and reserved.
1.101 [Reserved]
31. Section 1.102 is proposed to be amended by revising paragraph (a) to
read as follows:
1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for
further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a [verified] showing
which, in the opinion of the Commissioner, will justify so advancing it.
* * * * *
32. 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 >reply< [response] by the applicant to an Office action
is required.
* * * * *
33. Section 1.104 is proposed to be removed and reserved.
1.104 [Removed and Reserved].
34. Section 1.105 is proposed to be removed and reserved.
1.105 [Removed and Reserved].
35. Section 1.108 is proposed to be removed and reserved.
1.108 [Removed and Reserved].
36. Section 1.111 is proposed to be amended by revising paragraph (b) to
read as follows:
1.111 Reply by applicant or patent owner.
* * * * *
(b) In order to be entitled to reconsideration or further examination,
the applicant or patent owner must [make request therefor in writing]
>reply<. The reply by the applicant or patent owner must >be reduced to
a writing which< distinctly and specifically [point] >points< out the
supposed errors in the examiner's action and must [respond] >reply< to
every ground of objection and rejection in the prior Office action. >The
reply must present arguments pointing out the specific distinctions
believed to render the claims, including any newly presented claims,
patentable over the applied references.< If the reply is with respect to
an application, a request may be made that objections or requirements as
to form not necessary to further consideration of the claims be held in
abeyance until allowable subject matter is indicated. The applicant's or
patent owner's reply must appear throughout to be a bona fide attempt to
advance the case to final action. A general allegation that the claims
define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes them from the references
does not comply with the requirements of this section.
* * * * *
37. Section 1.112 is proposed to be revised to read as follows:
1.112 Reconsideration >before final action<.
After [response] >reply< by applicant or patent owner ( 1.111) >to a
non-final action<, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination. Applicant or patent
owner may [respond] >reply< to such Office action in the same manner
provided in 1.111, with or without amendment. [Any amendments after
the second Office action must ordinarily be restricted to the rejection
or to the objections or requirements made. The application or patent
under reexamination will be again considered, and so on repeatedly,
unless the examiner has indicated that the action is final.]
38. Section 1.113 is proposed to be revised to read as follows:
1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration >by the
examiner< the rejection or other action may be made final, whereupon
applicant's or patent owner's >reply< [response] is limited to appeal in
the case of rejection of any claim ( 1.191), or to amendment as
specified in 1.116. Petition may be taken to the Commissioner in the
case of objections or requirements not involved in the rejection of any
claim ( 1.181). >Reply< [Response] to a final rejection or action must
include cancellation of, or appeal from the rejection of, each rejected
claim. If any claim stands allowed, the >reply< [response] to a final
rejection or action must comply with any requirements or objections >as<
to form.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the case, clearly stating the reasons >in support thereof< [therefor].
>(c) The first action in an application will not be made final.<
39. Section 1.115 is proposed to be revised to read as follows:
1.115 Amendment.
[The applicant may amend before or after the first examination and
action and also after the second or subsequent examination or
reconsideration as specified in 1.112 or when and as specifically
required by the examiner. The patent owner may amend in accordance with
1.510(e) and 1.530(b) prior to reexamination and during reexamination
proceedings in accordance with 1.112 and 1.116.]
>(a) The applicant or the patent owner may amend the disclosure
(e.g., specification, claims, drawings and abstract) of an application
before final action as indicated in 1.121, except for nonprovisional
applications which are subject to 1.53(b)(2). The patent owner may
amend the patent in a reexamination proceeding in accordance with
1.510(e) and 1.530(d).
(b)(1) No amendment shall introduce new matter into the disclosure of
an application.
(2) If it is determined that an amendment filed after the filing date
of the application introduces new matter into the disclosure, the claims
containing the new matter will be rejected and deletion of the new
matter in the description and drawings will be required.
(c) Claims may be amended by canceling particular claims, by
presenting new claims, or by rewriting particular claims as indicated in
1.121(b). If an amendment is in reply to an Office action note
1.111.
(d) The disclosure must be amended when required to correct
inaccuracies of description and definition, and to secure correspondence
between the claims, the specification, and the drawing.
(e) No amendment to the drawing may be made except with permission of
the Office. Permissible changes in the construction shown in any drawing
may be made only by the submission of a substitute drawing by applicant.
A sketch in permanent ink showing proposed changes in red, to become
part of the record, must be filed for approval by the examiner and
should be in a separate paper.
(f) To amend a clause that was previously amended, the clause should
be wholly rewritten so that no interlineations or deletions shall appear
in the clause as finally presented. Matter canceled by amendment can be
reinstated only by a subsequent amendment presenting the canceled matter
as a new insertion.<
40. Section 1.116 is proposed to be amended by revising paragraphs (a)
and (b) to read as follows:
1.116 Amendments after final action.
(a) After >a< final rejection or >other final< action ( 1.113) >,<
amendments >are limited to< [may be made] cancelling claims or complying
with any requirement of form >expressly set forth in a previous Office
action.< [which has been made. Amendments presenting rejected claims in
better form for consideration on appeal may be admitted.] The admission
of, or refusal to admit, any amendment after final rejection, and any
>related< proceedings [relative thereto], shall not operate to relieve
the application or patent under reexamination from its condition as
subject to appeal or to save the application from abandonment under
1.135.
(b) >Any amendment not in compliance with paragraph (a) of this
section must be submitted with a request for an application under
1.53(b)(3) to ensure its consideration.< [If amendments touching the
merits of the application or patent under reexamination are presented
after final rejection, or after appeal has been taken, or when such
amendment might not otherwise be proper, they may be admitted upon a
showing of good and sufficient reasons why they are necessary and were
not earlier presented.]
* * * * *
41. Section 1.117 is proposed to be removed and reserved.
1.117 [Removed and Reserved].
42. Section 1.118 is proposed to be removed and reserved.
1.118 [Removed and Reserved].
43. Section 1.119 is proposed to be removed and reserved.
1.119 [Removed and Reserved].
44. Section 1.121 is proposed to be revised to read as follows:
1.121 Manner of making amendments.
[(a) Erasures, additions, insertions, or alterations of the Office file
of papers and records must not be physically entered by the applicant.
Amendments to the application (excluding the claims) are made by filing
a paper (which should conform to 1.52) directing or requesting that
specified amendments be made. The exact word or words to be stricken out
or inserted by said amendment must be specified and the precise point
indicated where the deletion or insertion is to be made.
(b) Except as otherwise provided herein, a particular claim may be
amended only by directions to cancel or by rewriting such claim with
underlining below the word or words added and brackets around the word
or words deleted. The rewriting of a claim in this form will be
construed as directing the cancellation of the original claim; however,
the original claim number followed by the parenthetical word must be
used for the rewritten claim. If a previously rewritten claim is
rewritten, underlining and bracketing will be applied in reference to
the previously rewritten claim with the parenthetical expression "twice
amended," "three times amended," etc., following the original claim
number.
(c) A particular claim may be amended in the manner indicated for the
application in paragraph (a) of this section to the extent of
corrections in spelling, punctuation, and typographical errors.
Additional amendments in this manner will be admitted provided the
changes are limited to (1) deletions and/or (2) the addition of no more
than five words in any one claim. Any amendment submitted with
instructions to amend particular claims but failing to conform to the
provisions of paragraphs (b) and (c) of this section may be considered
nonresponsive and treated accordingly.
(d) Where underlining or brackets are intended to appear in the
printed patent or are properly part of the claimed material and not
intended as symbolic of changes in the particular claim, amendment by
rewriting in accordance with paragraph (b) of this section shall be
prohibited.
(e) In reissue applications, both the descriptive portion and the
claims are to be amended by either (1) submitting a copy of a portion of
the description or an entire claim with all matter to be deleted from
the patent being placed between brackets and all matter to be added to
the patent being underlined, or (2) indicating the exact word or words
to be stricken out or inserted and the precise point where the deletion
or insertion is to be made. Any word or words to be inserted must be
underlined. See 1.173.
(f) Proposed amendments presented in patents involved in
reexamination proceedings must be presented in the form of a full copy
of the text of: (1) Each claim which is amended and (2) each paragraph
of the description which is amended. Matter deleted from the patent
shall be placed between brackets and matter added shall be underlined.
Copies of the printed claims from the patent may be used with any
additions being indicated by carets and deleted material being placed
between brackets. Claims must not be renumbered and the numbering of the
claims added for reexamination must follow the number of the highest
numbered patent claim. No amendment may enlarge the scope of the claims
of the patent. No new matter may be introduced into the patent.]
>(a) Amendments in non-reissue applications: Amendments in
applications excluding reissue applications are made by filing a paper,
in compliance with 1.52, directing that specified amendments be made.
(1) Specification other than claims: Amendments to the specification
other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where an
amendment is to be made.
(ii) If the only changes to the specification are deletions,
amendments may only be made by precise directions to delete.
(iii) Except as provided by paragraph (a)(1)(ii) of this section,
amendments must be made by submission of a copy of the rewritten
sentence(s), paragraph(s) and/or page(s) with marking pursuant to
paragraph (a)(1)(iv) of this section.
(iv) Underlining below the subject matter added and brackets around
the subject matter deleted are to be used to mark the amendments being
made. If a previously rewritten sentence(s), paragraph(s) or page(s) is
again rewritten, marking will be applied in reference to the
sentence(s), paragraph(s) or page(s) as previously rewritten.
(2) Claims: Amendments to the claims may only be made as follows:
(i)(A) A claim may be cancelled by a direction to cancel the claim or
by omitting the claim when submitting a complete copy of all pending
claims as required by paragraph (a)(2)(ii) of this section.
(B) A previously submitted claim may only be amended, other than by
cancellation pursuant to paragraph (a)(2)(i)(A) of this section, by
submitting a copy of the claim completely rewritten with markings,
pursuant to paragraph (a)(2)(iii) of this section, of the subject matter
added and/or deleted. The rewriting of a claim in this form will be
construed as directing that the rewritten claim be a replacement for the
previously submitted claim; however, the previously submitted claim
number followed by the parenthetical word "amended" must be used for the
rewritten claim.
(C) A new claim may only be added by submitting a clean copy of the
new claim. The numbering of any new claims added must follow the number
of the highest numbered previously submitted claim.
(ii) Whenever a previously submitted claim is amended by rewriting
pursuant to paragraph (a)(2)(i)(B) of this section or a new claim is
added pursuant to paragraph (a)(2)(i)(C), applicant must submit a
separate complete copy of all pending claims. Such separate complete
copy must include all newly rewritten, all newly added, all previously
rewritten claims that are still pending, and any unamended claims that
are still pending. For all claims, other than those claims being newly
rewritten, the copy must be submitted in clean form without markings as
to previous amendments.
(iii) Underlining below the subject matter added and brackets around
the subject matter deleted relative to the previously submitted claim
are to be used to mark the amendments being made.If a previously
rewritten claim is again rewritten, marking will be applied in reference
to the claim as previously rewritten, and the parenthetical expression
will be "twice amended," "three times amended," etc., following the
original claim number.
(iv) The failure to include a copy of any previously submitted claim
with the separate complete copy of all pending claims required by
paragraph (a)(2)(ii) of this section will be construed as a direction to
cancel that claim.
(3) Drawings: Amendments to the original application drawings are not
permitted. Any change to the application drawings must be by way of a
substitute sheet of drawings for each sheet changed submitted in
compliance with 1.84.
(4) Any amendment to an application that is present in a substitute
specification submitted pursuant to 1.125 must be presented under the
provisions of 1.121(a)(1) either prior to or concurrent with
submission of the substitute specification.
(b) Amendments in reissue applications: Amendments in reissue
applications are made by filing a paper, in compliance with 1.52,
directing that specified amendments be made.
(1) Specification other than claims: Amendments to the specification
other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where an
amendment is to be made.
(ii) Amendments must be made by submission of the entire text of the
rewritten paragraph(s) with markings pursuant to paragraph (b)(1)(iv) of
this section.
(iii) Each submission of an amendment to the specification must
include all amendments to the specification relative to the patent as of
the date of the submission. This would include amendments to the
specification of the patent submitted for the first time as well as any
previously submitted amendments that are still desired. Any previously
submitted amendments to the specification that are no longer desired
must not be included in the submission.
(iv) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims: Amendments to the claims are made as follows:
(i)(A) The amendment must include the entire text of each patent
claim which is amended and of each added claim with marking pursuant to
paragraph (b)(2)(i)(C) of this section, except a patent claim should be
cancelled by a statement cancelling the patent claim without
presentation of the text of the patent claim.
(B) Patent claims must not be renumbered and the numbering of any
claims added to the patent must follow the number of the highest
numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status, as of the
date of the amendment, of all patent claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied by
an explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.
(iv) Each submission of an amendment to any claim (patent claims and
all added claims) must include all pending amendments to the claims as
of the date of the submission. This would include amendments to the
claims submitted for the first time as well as any previously submitted
amendments to the claims that are still desired. Any previously
submitted amendments to the claims that are no longer desired must not
be included in the submission. A copy of any patent claims that have not
been amended are not to be presented with each amendment submission.
(v) The failure to submit a copy of any added claim, as required by
paragraph (b)(2)(iv) of this section, will be construed as a direction
to cancel that claim.
(vi) No reissue patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years from
the grant of the original patent, pursuant to 35 U.S.C. 251. No
amendment to the patent claims may introduce new matter or be made in an
expired patent.
(3) Drawings: Amendments to the original patent drawings are not
permitted. Any change to the patent drawings must be by way of a new
sheet of drawings with the amended figures identified as "amended" and
with added figures identified as "new" for each sheet changed submitted
in compliance with 1.84.
(c) Amendments in reexamination proceedings: Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with 1.530.<
45. Section 1.122 is proposed to be removed and reserved.
1.122 [Removed and Reserved].
46. Section 1.123 is proposed to be removed and reserved.
1.123 [Removed and Reserved].
47. Section 1.124 is proposed to be removed and reserved.
1.124 [Removed and Reserved].
48. Section 1.125 is proposed to be revised as follows:
1.125 Substitute specification.
>(a)< If the number or nature of the amendments >or the legibility of
the specification< [shall] render it difficult to [consider the case, or
to arrange the papers for printing or copying] >process an application<,
the Office may require the entire specification, including the claims,
or any part thereof, to be rewritten in clean form incorporating all
amendments.
>(b)< A substitute specification for an application other than a
reissue application may [not be accepted unless it has been required by
the examiner or unless it is clear to the examiner that acceptance of a
substitute specification would facilitate processing of the application.
Any substitute specification] >be< filed [must be] >at any point up to
payment of the issue fee if it is< accompanied by a statement that the
substitute specification: (1) >includes no new matter <,and (2) includes
only amendments submitted in accordance with the requirements of
1.121(a) either prior to or concurrent with submission of the substitute
specification<. [Such statement must be a verified statement if made by
a person not registered to practice before the Office.]
>(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.
(d) A substitute specification under this section is not permitted in
reissue applications or in reexamination proceedings.<
49. Section 1.133 is proposed to be amended by revising paragraph(b) to
read as follows:
1.133 Interviews.
* * * * *
(b) In every instance where reconsideration is requested in view of an
interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed
by the applicant. An interview does not remove the necessity for >reply<
[response] to Office actions as specified in 1.111, 1.135.
50. The undesignated center heading in Subpart B-National processing
Provisions, following 1.133 is proposed to be revised to read as
follows:
TIME FOR >REPLY< [RESPONSE] BY APPLICANT;
ABANDONMENT OF APPLICATION
51. Section 1.134 is proposed to be revised as follows:
1.134 Time period for >reply< [response] to an Office action.
An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for >reply< [response] to an Office
action. Unless the applicant is notified in writing that [response] >a
reply< is required in less than six months, a maximum period of six
months is allowed.
52. Section 1.135 is proposed to be revised to read as follows:
1.135 Abandonment for failure to >reply< [respond] within time period.
(a) If an applicant of a patent application fails to >reply< [respond]
within the time period provided under 1.134 and 1.136, the
application will become abandoned unless an Office action indicates
otherwise.
(b) Prosecution of an application to save it from abandonment
pursuant to paragraph (a) of this section must include such complete and
proper action as the condition of the case may require. The admission of
>, or refusal to admit, any amendment after final rejection, and any
related proceedings,< an amendment not responsive to the last Office
action, or refusal to admit the same, and any proceedings relative
thereto, shall not operate to save the application from abandonment.
(c) When action by the applicant is a bona fide attempt to >reply<
[respond] and to advance the case to final action, and is substantially
a complete [response] >reply< to the >non-final< Office action, but
consideration of some matter or compliance with some requirement has
been inadvertently omitted, >applicant< [opportunity to explain and
supply the omission] may be given >a new time period for reply under
1.134 to supply the omission or to file a continuing application<
[before the question of abandonment is considered].
53. Section 1.136 is proposed to be amended by revising the heading and
paragraph (a) to read as follows:
1.136 Filing of timely >replies< [responses] with petition and fee
for extension of time and extensions of time for cause.
(a)(1) If an applicant is required to >reply< [respond] within a
nonstatutory or shortened statutory time period, applicant may >reply<
[respond] up to [four] >five< months after the time period set >and
within the statutory period, if applicable,< if a petition for an
extension of time and the fee set in 1.17 >(a)< are filed [prior to
or with the response], unless:
(i) Applicant is notified otherwise in an Office action,
(ii) The >reply< [response] is a reply brief submitted pursuant to
1.193(b),
(iii) The >reply< [response] is a request for an oral hearing
submitted pursuant to 1.194(b),
(iv) The >reply< [response] is to a decision by the Board of Patent
Appeals and Interferences pursuant to 1.196, 1.197 or 1.304, or
(v) The application is involved in an interference declared pursuant
to 1.611.
(2) The date on which the [response, the] petition [,] and the fee
have been filed is the date [of the response and also the date] for
purposes of determining the period of extension and the corresponding
amount of the fee. The expiration of the time period is determined by
the amount of the fee paid. >A reply must be filed prior to the
expiration of the period of extension to avoid abandonment of the
application ( 1.135), but in< [In] no case may an applicant >reply<
[respond] later than the maximum time period set by statute, or be
granted an extension of time under paragraph (b) of this section when
the provisions of this paragraph are available. See 1.136(b) for
extensions of time relating to proceedings pursuant to 1.193(b),
1.194, 1.196 or 1.197. See 1.304 for extension of time to appeal to
the U.S. Court of Appeals for the Federal Circuit or to commence a civil
action. See 1.550(c) for extension of time in reexamination
proceedings and 1.645 for extension of time in interference
proceedings.
>(3) A paper may be submitted in an application with an authorization
to treat any concurrent or future reply requiring a petition for an
extension of time under paragraph (a) of this section for its timely
submission as incorporating such petition for the appropriate length of
time. An authorization to charge all required fees, fees under 1.17,
or all required extension of time fees will be treated as a constructive
petition for an extension of time in any concurrent or future reply
requiring a petition for an extension of time under paragraph (a) of
this section for its timely submission.<
* * * * *
54. Section 1.137 is proposed to be revised to read as follows:
1.137 Revival of abandoned application >or lapsed patent<.
(a) An >abandoned< application [abandoned for failure to prosecute] may
be revived as a pending application >or a lapsed patent may be revived
as a patent< if it is shown to the satisfaction of the Commissioner that
the delay >in prosecution or payment of any portion of the required
issue fee< was unavoidable. A petition to revive an >unavoidably<
abandoned application >or unavoidably lapsed patent< must be [promptly
filed after the applicant is notified of, or otherwise becomes aware of,
the abandonment, and must be] accompanied by:
[(1) A proposed response to continue prosecution of that application,
or the filing of a continuing application, unless either has been
previously filed;]
>(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the proposed reply
requirement may be met by the filing of a continuing application. In an
abandoned application or a lapsed patent, for failure to pay any portion
of the required issue fee, the proposed reply must be the issue fee or
any outstanding balance thereof;<
(2) The petition fee as set forth in 1.17(l); [and]
(3) A showing that the delay was unavoidable >and that the petition
was promptly filed after the applicant was notified of, or otherwise
became aware of, the abandonment or lapse; and< [The showing must be a
verified showing if made by a person not registered to practice before
the Patent and Trademark Office.]
>(4) Any terminal disclaimer (and fee as set forth in 1.20(d))
required pursuant to paragraph (c) of this section.<
(b) An >abandoned< application [unintentionally abandoned for failure
to prosecute] may be revived as a pending application >or lapsed patent
may be revived as a patent< if the delay >in prosecution or payment of
any portion of the required issue fee< was unintentional. A petition to
revive an unintentionally abandoned application >or< lapsed patent must
be >accompanied by:<
>(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the proposed reply
requirement may be met by the filing of a continuing application. In an
abandoned application or a lapsed patent, for failure to pay any portion
of the required issue fee, the proposed reply must be the issue fee or
any outstanding balance thereof;<
[(1) Accompanied by a proposed response to continue prosecution of
that application, or filing of a continuing application, unless either
has been previously filed;]
(2) [Accompanied by the] The petition fee as set forth in 1.17(m);
(3) [Accompanied by a] 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) >Any terminal disclaimer (and fee as set forth in 1.20(d))
required pursuant to paragraph (c) of this section.< [Filed either:
(i) Within one year of the date on which the 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 application became abandoned.]
(c) >In all design applications and in all nonprovisional utility or
plant applications filed before June 8, 1995< [In all applications filed
before June 8, 1995, and all design applications filed on or after June
8, 1995], any petition pursuant to [paragraph (a) of] this section [not
filed within six months of the date of abandonment of the application,]
must be accompanied by a terminal disclaimer with fee under 1.321
dedicating to the public a terminal part of the term of any patent
granted thereon equivalent to the period of abandonment of the
application. The terminal disclaimer must also apply to any patent
granted on any continuing application entitled under 35 U.S.C. 120 to
the benefit of the filing date of the application for which revival is
sought.
(d) Any request for reconsideration or review of a decision refusing
to revive an >abandoned< application >or lapsed patent< 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.
(e) The time periods set forth in this section [cannot be extended,
except that the three-month period set forth in paragraph (b)(4)(ii) and
the time period set forth in paragraph (d) of this section] may be
extended under the provisions of 1.136.
>(f) A provisional application, abandoned for failure to timely reply
to an Office requirement, may be revived pursuant to paragraphs (a) or
(b) this section so as to be pending for a period of no longer than
twelve months from its filing date. Under no circumstances will a
provisional application be regarded as pending after twelve months from
its filing date.<
55. Section 1.139 is proposed to be removed and reserved.
1.139 [Removed and Reserved]
56. Section 1.142 is proposed to be amended by revising paragraph (a) to
read as follows:
1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a
single application, the examiner in [his] >an Office< action shall
require the applicant in [his] >a reply< [response] to that action to
elect [that] >an< invention to which [his] >the< [claim] >claims< shall
be restricted, this official action being called a requirement for
restriction (also known as a requirement for division). [If the
distinctness and independence of the inventions be clear, such] >Such<
requirement will >normally< be made before any action on the merits;
however, it may be made at any time before final action [in the case at
the discretion of the examiner].
* * * * *
57. Section 1.144 is proposed to be revised to read as follows:
1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to
making any >reply< [response] due on the remainder of the action, may
petition the Commissioner to review the requirement. Petition may be
deferred until after final action on or allowance of claims to the
invention elected, but must be filed not later than appeal. A petition
will not be considered if reconsideration of the requirement was not
requested.
58. Section 1.146 is proposed to be revised to read as follows:
1.146 Election of species.
In the first action on an application containing a [generic] claim >to a
generic invention (genus)< and claims [restricted separately to each of]
>to< more than one >patentably distinct< species embraced thereby, the
examiner may require the applicant in his >or her reply< [response] to
that action to elect [that] >a< species of his or her invention to which
his or her claim shall be restricted if no [generic] claim >to the
genus< is [held] >found to be< allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the case.
59. Section 1.152 is proposed to be revised to read as follows:
1.152 Design drawings.
The design must be represented by a drawing that complies with the
requirements of 1.84, and must contain a sufficient number of views
to constitute a complete disclosure of the appearance of the [article]
>design<. Appropriate >and adequate< surface shading [must] >should< be
used to show the character or contour of the surfaces represented. Solid
black surface shading is not permitted except when used to represent
>the color black as< well as color contrast. Broken lines may be used to
show visible environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and
broken lines in the same view are not permitted in a design drawing.
>Color photographs and color drawings will be permitted in design
applications only after the granting of a petition filed under
1.84(a)(2).< Photographs and ink drawings must not be combined >as
formal drawings< in one application. Photographs submitted in lieu of
ink drawings in design patent applications must comply with 1.84(b)
and must not disclose environmental structure but must be limited to the
design for the article claimed. [Color drawings and color photographs
are not permitted in design patent applications.]
60. Section 1.154 is proposed to be amended by revising paragraph (a) as
follows:
1.154 Arrangement of specification.
* * * * *
(a) Preamble, stating name of the applicant >,< [and] title of the
design >, and a brief description of the nature and intended use of the
article in which the design is embodied<.
* * * * *
61. Section 1.155 is proposed to be amended by removing paragraphs (b)
through (f).
1.155 Issue and term of design patents.
* * * * *
(b) [Removed].
(c) [Removed].
(d) [Removed].
(e) [Removed].
(f) [Removed].
62. Section 1.163 is proposed to be amended by revising paragraph (b) to
read as follows:
1.163 Specification.
* * * * *
(b) Two copies of the specification (including the claim) must be
submitted, but only one signed oath or declaration is required. [The
second copy of the specification may be a legible carbon copy of the
original.]
63. Section 1.165 is proposed to be amended by revising paragraph (a) to
read as follows:
1.165 Plant Drawings.
(a) Plant patent drawings [should be artistically and competently
executed and] must comply with the requirements of 1.84. View numbers
and reference characters need not be employed unless required by the
examiner. The drawing must disclose all the distinctive characteristics
of the plant capable of visual representation.
* * * * *
64. Section 1.167(b) is proposed to be removed and reserved.
1.167 Examination
* * * * *
(b) [Reserved].
65. Section 1.171 is proposed to be revised to read as follows:
1.171 Application for reissue.
An application for reissue must contain the same parts required for an
application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications. [The application must be accompanied by a certified copy
of an abstract of title or an order for a title report accompanied by
the fee set forth in 1.19(b)(4), to be placed in the file, and by an
offer to surrender the original patent ( 1.178).]
66. Section 1.172 is proposed to be amended by revising paragraph (a) to
read as follows:
1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made by
the inventor or inventors except as otherwise provided (see 1.42,
1.43, 1.47), and must be accompanied by the written [assent] >consent<
of all assignees, if any, owning an undivided interest in the patent,
but a reissue oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not seek to
enlarge the scope of the claims of the original patent. >All assignees
consenting to the reissue must establish their ownership interest in the
patent to the satisfaction of the Commissioner. Ownership is established
by submitting to the Office documentary evidence of a chain of title
from the original owner to the assignee or by specifying (e.g., reel and
frame number, etc.) where such evidence is recorded in the Office.
Documents submitted to establish ownership may be required to be
recorded.<
* * * * *
67. Section 1.175 is proposed to be revised to read as follows:
1.175 Reissue oath or declaration.
(a) [Applicants for reissue,] >The reissue oath or declaration< in
addition to complying with the requirements of 1.63, must also [file
with their applications] >include< [a statement] >statement(s)< [under
oath or declaration] as follows:
(1) [When] >That< the applicant [verily] believes the original patent
to be wholly or partly inoperative or invalid [, stating such belief and
the reasons why.
(2) When it is claimed that such patent is so inoperative or invalid
"] by reason of a defective specification or drawing, [" particularly
specifying such defects.
(3) When it is claimed that such patent is inoperative or invalid "]
>or < by reason of the patentee claiming more or less than [he]
>patentee< had the right to claim in the patent, [" distinctly
specifying the excess or insufficiency in the claims.] >and<
[(4)] [Reserved]
[(5) Particularly] >(2) stating< [specifying at least one error
relied upon, and how they arose or occurred] >that all errors being
corrected in the reissue application up to the time of filing of the
oath or declaration under this paragraph arose without deceptive
intention on the part of the applicant<.
[(6)] >(b)(1) For any error corrected not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration< [Stating] >stating<
that> every such error< [said errors] arose ["] without any deceptive
intention ["] on the part of the applicant. >Any supplemental oath or
declaration required by this paragraph must be submitted before
allowance and may be submitted:
(i) With any amendment prior to allowance, or
(ii) In order to overcome a rejection under 35 U.S.C 251 made by the
examiner where it is indicated that the submission of a supplemental
oath or declaration as required by this paragraph will overcome the
rejection.
(2) For any error sought to be corrected after allowance, a
supplemental oath or declaration must accompany the requested correction
stating that the error(s) to be corrected arose without any deceptive
intention on the part of the applicant.
(c) Other than as set forth in paragraphs (a)(2) and (b) of this
section, an oath or declaration under this section need not specifically
identify the error or errors that are being corrected.<
[(7) Acknowledging the duty to disclose to the Office all information
known to applicants to be material to patentability as defined in
1.56.
(b) Corroborating affidavits or declarations of others may be filed
and the examiner may, in any case, require additional information or
affidavits or declarations concerning the application for reissue and
its object.]
>(d) The oath or declaration required by paragraph (a) of this
section may be submitted under the provisions of 1.53(d)(1).<
68. Section 1.176 is proposed to be revised to read as follows:
1.176 Examination of reissue.
[An original claim, if re-presented in the reissue application, is
subject to reexamination, and the] >The< entire >reissue< application
will be examined in the same manner as original applications, subject to
the rules relating thereto, excepting that division will not be required
>between the original claims of the patent<. Applications for reissue
will be acted on by the examiner in advance of other applications, but
not sooner than two months after the announcement of the filing of the
reissue application has appeared in the Official Gazette.
69. Section 1.177 is proposed to be revised to read as follows:
1.177 >Multiple reissue applications< [Reissue in divisions].
>(a)<The Commissioner [may] >will pursuant to< [, in] his or her
discretion, > under 35 U.S.C. 251,< [cause several] >permit multiple
reissue< patents to be issued for distinct and separate parts of the
thing patented[,upon] >if the following conditions are met: (1)
Copending reissue applications for distinct and separate parts of the
thing patented have been filed, (2) Applicant has filed in each
copending application a timely< demand [of the applicant] >by way of
petition for multiple reissue patents, (3)< [upon payment of the] >The<
required >filing and issue< [fee]>fees< for each [division] >copending
reissue application have been paid, and (4) Each petition for multiple
reissue patents is granted prior to issuance of a reissue patent on any
of the copending reissue applications.
(b) Each petition under paragraph (a) of this section must be
accompanied by: (1) A request for the issuance of multiple reissue
patents for distinct and separate parts of the thing patented, (2) The
petition fee pursuant to 1.17(i), (3) An identification of the other
copending reissue application(s), (4) A statement that the inventions as
claimed in the copending reissue applications are distinct and separate
parts of the thing patented, and (5) A showing sufficient to establish
to the satisfaction of the Commissioner that the claimed subject matter
of the thing patented is in fact being divided into distinct and
separate parts<. [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.]
>(c) When the copending reissue applications are filed at the same
time, each petition under paragraph (a) of this section, must be filed
no later than the earliest submission of the reissue oath or declaration
under 1.175(a) for any of the copending reissue applications. When
the copending reissue applications are filed at different times, each
petition under paragraph (a) of this section must be filed no later than
the earliest of: (1) Payment of the issue fee for any of the copending
reissue applications, or (2) Submission of the reissue oath or
declaration under 1.175(a) in the later filed copending reissue
application.< [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), all the divisions of a reissue will issue simultaneously, if
there is any controversy as to one division, the others will be withheld
from issue until the controversy is ended, unless the Commissioner
orders otherwise].
>(d) Where the requirements of this section have not been complied
with, the Commissioner will not permit multiple reissue patents to be
issued.<
70. Section 1.181 is proposed to be amended by removing paragraphs (d),
(e) and (g).
1.181 Petition to the Commissioner.
* * * * *
(d) [Removed].
(e) [Removed].
* * * * *
(g) [Removed].
71. Section 1.182 is proposed to be revised to read as follows:
1.182 Questions not specifically provided for.
All cases not specifically provided for in the regulations of this part
will be decided in accordance with the merits of each case by or under
the authority of the Commissioner, >subject to such other requirements
as may be imposed< [and such decision will be communicated to the
interested parties in writing]. Any petition seeking a decision under
this section must be accompanied by the petition fee set forth in
1.17(h).
72. Section 1.184 is proposed to be removed and reserved.
1.184 [Removed and Reserved].
73. Section 1.191 is proposed to be amended by revising paragraphs (a)
and (b) to read as follows:
1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, or every
owner of a patent under reexamination[, any of] >whose claims have< [the
claims of which have] been twice rejected >in a particular application
or patent under reexamination< [or who has been given a final rejection
( 1.113)], may>file an< [, upon the payment of the fee set forth in
1.17(e),] appeal from the decision of the examiner to the Board of
Patent Appeals and Interferences >by filing a notice of appeal and
paying the fee set forth in 1.17(e)< within the time allowed for
>reply< [response].
(b) The >notice of< appeal in an application or reexamination
proceeding must identify the rejected claim or claims appealed, and must
be signed by the applicant, patent owner or duly authorized attorney or
agent.
* * * * *
74. Section 1.192 is proposed to be amended by revising paragraph (a) to
read as follows:
1.192 Appellant's brief.
(a) >Appellant< [The appellant] shall, within [2] >two< months from the
date of the notice of appeal under 1.191 in an application, reissue
application, or patent under reexamination, or within the time allowed
for >reply< [response] to the action appealed from, if such time is
later, file a brief in triplicate. The brief must be accompanied by the
requisite fee set forth in 1.17(f) and must set forth the authorities
and arguments on which the appellant will rely to maintain the appeal.
Any arguments or authorities not included in the brief may be refused
consideration by the Board of Patent Appeals and Interferences.
* * * * *
75. Section 1.193 is proposed to be revised to read as follows:
1.193 Examiner's answer >and substitute brief<.
(a)>(1)< The primary examiner may, within such time as may be directed
by the Commissioner, furnish a written statement in answer to [the]
appellant's brief including such explanation of the invention claimed
and of the references and grounds of rejection as may be necessary,
supplying a copy to [the] appellant. If the primary examiner shall find
that the appeal is not regular in form or does not relate to an
appealable action, [he] >the primary examiner< shall so state [and a
petition from such decision may be taken to the Commissioner as provided
in 1.181].
>(a)(2) An examiner's answer may not include a new ground of
rejection.<
(b)>(1) Appellant< [The appellant] may file a [reply] >substitute
appeal< brief [directed only to such new points of argument as may be
raised in the] >under 1.192 to an< examiner's answer, within two
months from the date of [such answer] >the examiner's answer.< [The new
points or argument shall be specifically identified in the reply brief.
If the examiner determines that the reply brief is not directed only to
new points of argument raised in the examiner's answer, the examiner may
refuse entry of the reply brief and will so notify the appellant. If the
examiner's answer expressly states that it includes a new ground of
rejection, appellant must file a reply thereto within two months from
the date of such answer to avoid dismissal of the appeal as to the
claims subject to the new ground of rejection; such reply may be
accompanied by any amendment or material appropriate to then new
ground.] See 1.136(b) for extensions of time for filing a [reply]
>substitute< brief in a patent application and 1.550(c) for
extensions of time in a reexamination proceeding. >The primary examiner
may either acknowledge receipt and entry of the substitute appeal brief
or reopen prosecution to respond to any new issues raised in the
substitute appeal brief. A substitute examiner's answer is not
permitted, except where the application has been remanded by the Board
of Patent Appeals and Interferences for such purpose.<
>(2) Where prosecution is reopened by the primary examiner after an
appeal brief has been filed, an appeal brief under 1.192 is an
appropriate reply by an applicant to the reopening of prosecution if it
is accompanied by a request that the appeal be reinstated. If
reinstatement of the appeal is elected, no amendments, affidavits (
1.131 or 1.132) or other new evidence are permitted. If reinstatement of
the appeal is not elected, amendments, affidavits and other new evidence
are permitted.<
76. Section 1.194 is proposed to be revised to read as follows:
1.194 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in
which [the] appellant considers such a hearing necessary or desirable
for a proper presentation of [his] >the< appeal. An appeal decided
without an oral hearing will receive the same consideration by the Board
of Patent Appeals and Interferences as appeals decided after oral
hearing.
(b) If appellant desires an oral hearing, appellant must file >, in a
separate paper,< a written request for such hearing accompanied by the
fee set forth in 1.17(g) within two months after the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in 1.17(g), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board. See 1.136(b)
for extensions of time for requesting an oral hearing in a patent
application and 1.550(c) for extensions of time in a reexamination
proceeding.
(c) If no request and fee for oral hearing have been timely filed by
[the] appellant, the appeal will be assigned for consideration and
decision. If [the] appellant has requested an oral hearing and has
submitted the fee set forth in 1.17(g), a day of hearing will be set,
and due notice thereof given to [the] appellant and to the primary
examiner. >A< [Hearing] >hearing< will be held as stated in the notice,
and oral argument will be limited to twenty minutes for [the] appellant
and fifteen minutes for the primary examiner unless otherwise ordered
before the hearing begins. >If the Board decides that a hearing is not
necessary, the Board will so notify appellant.<
77. Section 1.196 is proposed to be amended by revising paragraphs (b)
and (d) to read as follows:
1.196 Decision by the Board of Patent Appeals and Interferences.
* * * * *
(b) Should the Board of Patent Appeals and Interferences have knowledge
of any grounds not involved in the appeal for rejecting any [appealed]
>pending< claim, it may include in the decision a statement to that
effect with its reasons for so holding, which statement shall constitute
a new >ground of< rejection of the [claims] >claim<. A new >ground of<
rejection shall not be considered final for purposes of judicial review.
When the Board of Patent Appeals and Interferences makes a new >ground
of< rejection [of an appealed claim], the appellant >, within two months
from the date of the decision,< may exercise [any one] >either< of the
following two options with respect to the new ground >of rejection<:
(1) The appellant may submit an appropriate amendment of the claims
so rejected or a showing of facts >relating to the claims so rejected<,
or both, and have the matter reconsidered by the examiner in which event
the application will be remanded to the examiner. The [statement] >new
ground of rejection< shall be binding upon the examiner unless an
amendment or showing of facts not previously of record be made which, in
the opinion of the examiner, overcomes the new ground [for] >of<
rejection stated in the decision. Should the examiner [again reject the
application] >reject the claims, appellant< [the applicant] may again
appeal >pursuant to 1.191 through 1.195< to the Board of Patent
Appeals and Interferences.
(2) The appellant may have the case reconsidered under 1.197(b) by
the Board of Patent Appeals and Interferences upon the same record. The
request for reconsideration [shall] >must< address the new ground [for]
>of< rejection and state with particularity the points believed to have
been misapprehended or overlooked in rendering the decision and also
state all other grounds upon which reconsideration is sought. Where
request for such reconsideration is made, the Board of Patent Appeals
and Interferences shall reconsider the new ground [for] >of< rejection
and, if necessary, render a new decision which shall include all grounds
>of rejection< upon which a patent is refused. The decision on
reconsideration is deemed to incorporate the earlier decision >for
purposes of appeal<, except for those portions specifically withdrawn on
reconsideration, and is final for the purpose of judicial review>,
except when noted otherwise in the decision<.
* * * * *
[(d) Although the Board of Patent Appeals and Interferences normally
will confine its decision to a review of rejections made by the
examiner, should it have knowledge of any grounds for rejecting any
allowed claim it may include in its decision a recommended rejection of
the claim and remand the case to the examiner. In such event, the Board
shall set a period, not less than one month, within which the appellant
may submit to the examiner an appropriate amendment, a showing of facts
or reasons, or both, in order to avoid the grounds set forth in the
recommendation of the Board of Patent Appeals and Interferences. The
examiner shall be bound by the recommendation and shall enter and
maintain the recommended rejection unless an amendment or showing of
facts not previously of record is filed which, in the opinion of the
examiner, overcomes the recommended rejection. Should the examiner make
the recommended rejection final the applicant may again appeal to the
Board of Patent Appeals and Interferences.]
>(1) The Board of Patent Appeals and Interferences may require
Appellant to address any matter that is deemed appropriate for a
reasoned decision on the pending appeal.
(2) Appellant will be given a time limit within which to reply to the
inquiry made under paragraph (d)(1) of this section.<
* * * * *
78. Section 1.197 is proposed to be amended by revising paragraphs (a)
and (b) to read as follows:
1.197 Action following decision.
(a) After decision by the Board of Patent Appeals and Interferences, the
case shall be returned to the examiner, subject to [the] appellant's
right of appeal or other review, for such further action by [the]
appellant or by the examiner, as the condition of the case may require,
to carry into effect the decision.
(b) A single request for reconsideration or modification of the
decision may be made if filed within >two months< [one month] from the
date of the original decision, unless the original decision is so
modified by the decision on reconsideration as to become, in effect, a
new decision, and the Board of Patent Appeals and Interferences so
states. The request for reconsideration shall state with particularity
the points believed to have been misapprehended or overlooked in
rendering the decision and also state all other grounds upon which
reconsideration is sought. See 1.136(b) for extensions of time for
seeking reconsideration in a patent application and 1.550(c) for
extensions of time in a reexamination proceeding.
* * * * *
79. Section 1.291 is proposed to be amended by revising paragraph (c) to
read as follows:
1.291 Protests by the public against pending applications.
* * * * *
(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a
self-addressed postcard which the member of the public may include with
the protest in order to receive an acknowledgment by the Office that the
protest has been received. The Office may communicate with the applicant
regarding any protest and may require the applicant to >reply< [respond]
to specific questions raised by the protest. In the absence of a request
by the Office, an applicant has no duty to, and need not, >reply<
[respond] to a protest. The limited involvement of the member of the
public filing a protest pursuant to paragraph (a) of this section ends
with the filing of the protest, and no further submission on behalf of
the protestor will be considered >,except for additional prior art, or<
unless such submission raises new issues which could not have been
earlier presented.
80. Section 1.294 is proposed to be amended by revising paragraph (b) to
read as follows:
1.294 Examination of request for publication of a statutory invention
registration and patent application to which the request is directed.
* * * * *
(b) Applicant will be notified of the results of the examination set
forth in paragraph (a) of this section. If the requirements of 1.293
and this section are not met by the request filed, the notification to
applicant will set a period of time within which to comply with the
requirements in order to avoid abandonment of the application. If the
application does not meet the requirements of 35 U.S.C. 112, the
notification to applicant will include a rejection under the appropriate
provisions of 35 U.S.C. 112. The periods for >reply< [response]
established pursuant to this section are subject to the extension of
time provisions of 1.136. After >reply< [response] by the applicant,
the application will again be considered for publication of a statutory
invention registration. If the requirements of 1.293 and this section
are not timely met, the refusal to publish will be made final. If the
requirements of 35 U.S.C. 112 are not met, the rejection pursuant to 35
U.S.C. 112 will be made final.
* * * * *
81. Section 1.304 is proposed to be amended by revising paragraph(a) to
read as follows:
1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit ( 1.302) or for commencing a civil
action ( 1.303) is two months from the date of the decision of the
Board of Patent Appeals and Interferences. If a request for
[consideration] >reconsideration< or modification of the decision is
filed within the time period provided under 1.197(b) or 1.658(b),
the time for filing an appeal or commencing a civil action shall expire
two months after action on the request. In interferences, the time for
filing a cross-appeal or cross-action expires:
(i) 14 days after service of the notice of appeal or the summons and
complaint, or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
* * * * *
82. 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) and a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented. > For reissue applications, see 1.175(b), which requires a
supplemental oath or declaration to accompany the amendment.<
83. Section 1.313 is proposed to be amended by adding a new paragraph
(c) to read as follows:
1.313 Withdrawal from issue.
* * * * *
>(c) Unless an applicant receives written notification that the
application has been withdrawn from issue at least two weeks prior to
the projected date of issue, applicant should expect that the
application will issue as a patent.<
84. Section 1.316 paragraphs (b) through (f) are proposed to be removed.
1.316 Application abandoned for failure to pay issue fee.
* * * * *
(b) [Removed].
(c) [Removed].
(d) [Removed].
(e) [Removed].
(f) [Removed].
85. Section 1.317 paragraphs (b) through (f) are proposed to be removed.
1.317 Lapsed patents; delayed payment of balance of issue fee.
* * * * *
(b) [Removed].
(c) [Removed].
(d) [Removed].
(e) [Removed].
(f) [Removed].
86. Section 1.318 is proposed to be removed and reserved.
1.318 [Removed and Reserved].
87. Section 1.324 is proposed to be revised to read as follows:
1.324 Correction of inventorship in patent.
>(a) Whenever through error a person is named in an issued patent as the
inventor, or through error an inventor is not named in an issued patent
and such error arose without any deceptive intention on his or her part,
< [Whenever a patent is issued and it appears that the correct inventor
or inventors were not named through error without deceptive intention on
the part of the actual inventor or inventors,] the Commissioner may, on
petition [of all the parties and the assignees and satisfactory proof of
the facts and payment of the fee set forth in 1.20(b)], or on order
of a court before which such matter is called in question, issue a
certificate naming only the actual inventor or inventors. A >petition<
[request] to correct inventorship of a patent involved in an
interference shall comply with the requirements of this section and
shall be accompanied by a motion under 1.634.
>(b) Any petition pursuant to paragraph (a) of this section must be
accompanied by:
(1) a statement from each person who is being added as an inventor
and from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on their
part;
(2) a statement from the current named inventors who have not
submitted a statement under paragraph (b)(1) of this section either
agreeing to the change of inventorship or stating that they have no
disagreement in regard to the requested change;
(3) a statement from all assignees of the parties submitting a
statement under paragraph (b)(1) and (b)(2) of this section agreeing to
the change of inventorship in the patent; such statement must comply
with the requirements of 3.73(b); and
(4) the fee set forth in 1.20(b).<
88. Section 1.325 is proposed to be removed and reserved.
1.325 [Removed and Reserved].
89. Sections 1.351 is proposed to be removed and reserved.
1.351 [Removed and Reserved].
90. Section 1.352 is proposed to be removed and reserved.
1.352 [Removed and Reserved].
91. Section 1.366 is proposed to be amended by revising paragraphs (b)
through (d) to read as follows:
1.366 Submission of maintenance fees.
* * * * *
(b) A maintenance fee and any necessary surcharge submitted for a patent
must be submitted in the amount due on the date the maintenance fee and
any necessary surcharge are paid and may be paid in the manner set forth
in 1.23 or by an authorization to charge a deposit account
established pursuant to 1.25. Payment of a maintenance fee and any
necessary surcharge or the authorization to charge a deposit account
must be submitted within the periods set forth in 1.362(d), (e), or
(f). Any payment or authorization of maintenance fees and surcharges
filed at any other time will not be accepted and will not serve as a
payment of the maintenance fee except insofar as a delayed payment of
the maintenance fee is accepted by the Commissioner in an expired patent
pursuant to a petition filed under 1.378. Any authorization to charge
a deposit account must authorize the immediate charging of the
maintenance fee and any necessary surcharge to the deposit account.
Payment of less than the required amount, payment in a manner other than
that set forth in the filing of an authorization to charge a deposit
account having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The [certificate] procedures
of either 1.8 or 1.10 may be utilized in paying maintenance fees
and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the following:
(1) The patent number, and
(2) The [serial] >application< number of the United States
application for the patent on which the maintenance fee is being paid.
(d) Payment of maintenance fees and any surcharges should identify
the fee being paid for each patent as to whether it is the 3 1/2-, 7
1/2-, or 11 1/2-year fee, whether small entity status is being changed
or claimed, the amount of the maintenance fee and any surcharge being
paid, and any assigned payor number[, the patent issue date and the
United States application filing date]. If the maintenance fee and any
necessary surcharge is being paid on a reissue patent, the payment must
identify the reissue patent by reissue patent number and reissue
application [serial] number as required by paragraph (c) of this section
and should also include the original patent number[, the original patent
issue date, and the original United States application filing date].
* * * * *
92. Section 1.377 is proposed to be amended by revising paragraph (c) to
read as follows:
1.377 Review of decision refusing to accept and record payment of a
maintenance fee filed prior to expiration of patent.
* * * * *
(c) Any petition filed under this section must comply with the
requirements of paragraph (b) of 1.181 and must be signed by an
attorney or agent registered to practice before the Patent and Trademark
Office, or by the patentee, the assignee, or other party in interest.
[Such petition must be in the form of a verified statement if made by a
person not registered to practice before the Patent and Trademark
Office.]
93. Section 1.378 is proposed to be amended by revising paragraph (d) to
read as follows:
1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
* * * * *
(d) Any petition under this section must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest. [Such
petition must be in the form of a verified statement if made by a person
not registered to practice before the Patent and Trademark Office.]
* * * * *
94. Section 1.425 is proposed to be revised to read as follows:
1.425 Filing by other than inventor.
[(a) If a joint inventor refuses to join in an international application
which designates the United States of America or cannot be found or
reached after diligent effort, the international application which
designates the United States of America may be filed by the other
inventor on behalf of himself or herself and the omitted inventor. Such
an international application which designates the United States of
America must be accompanied by proof of the pertinent facts and must
state the last known address of the omitted inventor. The Patent and
Trademark Office shall forward notice of the filing of the international
application to the omitted inventor at said address.
(b) Whenever an inventor refuses to execute an international
application which designates the United States of America, or cannot be
found or reached after diligent effort, a person to whom the inventor
has assigned or agreed in writing to assign the invention or who
otherwise shows sufficient proprietary interest in the matter justifying
such action may file the international application on behalf of and as
agent for the inventor. Such an international application which
designates the United States of America must be accompanied by proof of
the pertinent facts and a showing that such action is necessary to
preserve the rights of the parties or to prevent irreparable damage and
must state the last known address of the inventor. The assignment,
written agreement to assign or other evidence of proprietary interest,
or a verified copy thereof, must be filed in the Patent and Trademark
Office.The Office shall forward notice of the filing of the application
to the inventor at the address stated in the application.]
Where an international application which designates the United States
of America is filed and where one or more inventors refuse to sign the
request for the international application or could not be found or
reached after diligent effort, the request need not be signed by such
inventor if it is signed by another applicant. Such international
application must be accompanied by a statement explaining to the
satisfaction of the Commissioner the lack of the signature concerned.
95. Section 1.484 is proposed to be amended by revising paragraphs (d)
through (f) to read as follows:
1.484 Conduct of international preliminary examination.
* * * * *
(d) The International Preliminary Examining Authority will establish a
written opinion if any defect exists or if the claimed invention lacks
novelty, inventive step or industrial applicability and will set a
non-extendable time limit in the written opinion for the applicant to
>reply< [respond].
(e) If no written opinion under paragraph (d) of this section is
necessary, or after any written opinion and the >reply< [response]
thereto or the expiration of the time limit for >reply< [response] to
such written opinion, an international preliminary examination report
will be established by the International Preliminary Examining
Authority. One copy will be submitted to the International Bureau and
one copy will be submitted to the applicant.
(f) An applicant will be permitted a personal or telephone interview
with the examiner, which must be conducted during the non-extendable
time limit for >reply< [response] by the applicant to a written opinion.
Additional interviews may be conducted where the examiner determines
that such additional interviews may be helpful to advancing the
international preliminary examination procedure. A summary of any such
personal or telephone interview must be filed by the applicant as a part
of the >reply< [response] to the written opinion or, if applicant files
no >reply< [response], be made of record in the file by the examiner.
96. Section 1.485 is proposed to be amended by revising paragraph (a) to
read as follows:
1.485 Amendments by applicant during international preliminary
examination.
(a) The applicant may make amendments at the time of filing of the
Demand and within the time limit set by the International Preliminary
Examining Authority for >reply< [response] to any notification under
1.484(b) or to any written opinion. Any such amendments must:
(1) Be made by submitting a replacement sheet for every sheet of the
application which differs from the sheet it replaces unless an entire
sheet is cancelled, and
(2) Include a description of how the replacement sheet differs from the
replaced sheet.
* * * * *
97. Section 1.488 is proposed to be amended by revising paragraph (b) to
read as follows:
1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
* * * * *
(b) If the International Preliminary Examining Authority considers that
the international application does not comply with the requirement of
unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary
examination report, in respect of the entire international application
and indicate that unity of invention is lacking and specify the reasons
therefor without extending an invitation to restrict or pay additional
fees. No international preliminary examination will be conducted on
inventions not previously searched by an International Searching
Authority.
(2) Invite the applicant to restrict the claims or pay additional
fees, pointing out the categories of the invention found, within a set
time limit which will not be extended. No international preliminary
examination will be conducted on inventions not previously searched by
an International Preliminary Examining Authority, or
(3) If applicant fails to restrict the claims or pay additional fees
within the time limit set for >reply< [response], the International
Preliminary Examining Authority will issue a written opinion and/or
establish an international preliminary examination report on the main
invention and shall indicate the relevant facts in the said report. In
case of any doubt as to which invention is the main invention, the
invention first mentioned in the claims and previously searched by an
International Searching Authority shall be considered the main invention.
* * * * *
98. Section 1.492 is proposed to be amended by adding a new paragraph
(g) to read as follows:
1.492 National stage fees.
* * * * *
>(g) If the additional fees required by paragraphs (b), (c), and (d) are
not paid on presentation of the claims for which the additional fees are
due, they must be paid or the claims cancelled by amendment, prior to
the expiration of the time period set for reply by the Office in any
notice of fee deficiency.<
99. Section 1.494 is proposed to be amended by revising paragraph (c) to
read as follows:
1.494 Entering the national stage in the United States of America as
a Designated Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497), applicant will be so notified and given a period of time
within which to file the translation and/or oath or declaration in order
to prevent abandonment of the application. The payment of the processing
fee set forth in 1.492(f) is required for acceptance of an English
translation later than the expiration of 20 months after the priority
date. The payment of the surcharge set forth in 1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 20 months after the priority date. A copy of the
notification mailed to applicant should accompany any >reply< [response]
thereto submitted to the Office.
* * * * *
100. Section 1.495 is proposed to be amended by revising paragraph (c)
to read as follows:
1.495 Entering the national stage in the United States of America as
an Elected Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
1.497), applicant will be so notified and given a period of time
within which to file the translation and/or oath or declaration in order
to prevent abandonment of the application. The payment of the processing
fee set forth in 1.492(f) is required for acceptance of an English
translation later than the expiration of 30 months after the priority
date. The payment of the surcharge set forth in 1.492(e) is required
for acceptance of the oath or declaration of the inventor later than the
expiration of 30 months after the priority date. A copy of the
notification mailed to applicant should accompany any >reply< [response]
thereto submitted to the Office.
* * * * *
101. Section 1.510 is proposed to be amended by revising paragraph (e)
to read as follows:
1.510 Request for reexamination.
* * * * *
(e) A request filed by the patent owner may include a proposed amendment
in accordance with [ 1.121(f)] > 1.530(d)<.
102. Section 1.530 is proposed to be amended by revising theheading and
paragraphs (a) and (d) to read as follows:
1.530 Statement and [amendment] >reply< by patent owner.
(a) Except as provided in 1.510(e), no statement or other >reply<
[response] by the patent owner shall be filed prior to the
determinations made in accordance with 1.515 or 1.520. If a
premature statement or other >reply< [response] is filed by the patent
owner it will not be acknowledged or considered in making the
determination.
* * * * *
[(d) Any proposed amendment to the description and claims must be made
in accordance with 1.121(f). No amendment may enlarge the scope of
the claims of the patent or introduce new matter. No amended or new
claims may be proposed for entry in an expired patent. Moreover, no
amended or new claims will be incorporated into the patent by
certificate issued after the expiration of the patent.]
>(d) Amendments in reexamination proceedings: Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.
(1) Specification other than claims: Amendments to the specification
other than claims may only be made as follows:
(i) The precise point in the specification must be indicated where an
amendment is to be made.
(ii) Amendments must be made by submission of the entire text of the
rewritten paragraph(s) with markings pursuant to paragraph (d)(1)(iv) of
this section.
(iii) Each submission of an amendment to the specification of the
patent must include all amendments to the specification relative to the
patent as of the date of the submission. This would include amendments
to the specification of the patent submitted for the first time as well
as any previously submitted amendments that are still desired. Any
previously submitted amendments to the specification that are no longer
desired must not be included in the submission.
(iv) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims: Amendments to the claims are made as follows:
(i)(A) The amendment must include the entire text of each patent
claim which is amended and each proposed claim with marking pursuant to
paragraph (d)(2)(i)(C), except a patent or proposed claim should be
cancelled by a statement cancelling the patent or proposed claim without
presentation of the text of the patent or proposed claim.
(B) Patent claims must not be renumbered and the numbering of any
claims proposed to be added to the patent must follow the number of the
highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression
"amended," "twice amended," etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status, as of the
date of the amendment, of all patent claims, of all claims currently
proposed, and of all previously proposed claims that are no longer being
proposed.
(iii) Each amendment when originally submitted must be accompanied by
an explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.
(iv) Each submission of an amendment to any claim (patent claims and
all proposed claims) must include all amendments to the claims as of the
date of the submission. This would include amendments to the claims
submitted for the first time as well as any previously submitted
amendments to the claims that are still desired. Any previously
submitted amendments to the claims that are no longer desired must not
be included in the submission. A copy of any patent claims that have not
been amended are not to be presented with each amendment submission.
(v) The failure to submit a copy of any proposed claim will be
construed as a direction to cancel that claim.
(3) No amendment may enlarge the scope of the claims of the patent or
introduce new matter. No amendment may be proposed for entry in an
expired patent. Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.
(4) Amendments made to a patent during a reexamination proceeding
will not be effective until a reexamination certificate is issued.
(5) The form of replies, amendments, briefs, appendices and other
papers must be in accordance with the following requirements. All
documents, including any amendments or corrections thereto, must be in
the English language. All papers which are to become a part of the
permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper. All printed matter must
appear in at least 11 point type. All of the papers must be presented in
a form having sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic reproduction by
use of digital imaging and optical character recognition. If the papers
are not of the required quality, substitute typewritten or mechanically
printed papers of suitable quality will be required. The papers,
including the drawings, must have each page plainly written on only one
side of a sheet of paper. The sheets of paper must be the same size and
either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2
by 11 inches). Each sheet must include a top margin of at least 2.0 cm.
(3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a right
side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at
least 2.0 cm. (3/4 inch), and no holes should be made in the sheets as
submitted. The lines must be 1 1/2 or double spaced. The pages must be
numbered consecutively, starting with 1, the numbers being centrally
located above or preferably, below, the text.
(6) Drawings: The original patent drawing sheets may not be altered.
Any proposed change to the patent drawings must be by way of a new sheet
of drawings with the amended figures identified as "amended" and with
added figures identified as "new" for each sheet changed submitted in
compliance with 1.84<
* * * * *
103. Section 1.550 is proposed to be amended by revising paragraphs (a),
(b) and (d) to read as follows:
1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the Board
of Patent Appeals and Interferences, will be conducted with special
dispatch within the Office. After issuance of the reexamination order
and expiration of the time for submitting any >replies< [responses]
thereto, the examination will be conducted in accordance with 1.104
through 1.116 and will result in the issuance of a reexamination
certificate under 1.570.
(b) The patent owner will be given at least [30] >thirty< days to
>reply< [respond] to any Office action. Such >reply< [response] may
include further statements in >reply< [response] to any rejections
and/or proposed amendments or new claims to place the patent in a
condition where all claims, if amended as proposed, would be patentable.
* * * * *
(d) If the patent owner fails to file a timely and appropriate >reply<
[response] to any Office action, the reexamination proceeding will be
terminated and the Commissioner will proceed to issue a certificate
under 1.570 in accordance with the last action of the Office.
* * * * *
104. Section 1.560 is proposed to be amended by revising paragraph (b)
to read as follows:
1.560 Interviews in reexamination proceedings.
* * * * *
(b) In every instance of an interview with an examiner, a complete
written statement of the reasons presented at the interview as
warranting favorable action must be filed by the patent owner. An
interview does not remove the necessity for >reply< [response] to Office
actions as specified in 1.111.
105. Section 1.770 is proposed to be revised to read as follows:
1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly withdrawn
before a determination is made pursuant to 1.750 by filing in the
Office, in duplicate, a written declaration of withdrawal signed by the
owner of record of the patent or its agent. An application may not be
expressly withdrawn after the date permitted for >reply< [response] to
the final determination on the application. An express withdrawal
pursuant to this section is effective when acknowledged in writing by
the Office. The filing of an express withdrawal pursuant to this section
and its acceptance by the Office does not entitle applicant to a refund
of the filing fee 1.20(j)) or any portion thereof.
106. Section 1.785 is proposed to be amended by revising paragraph (d)
to read as follows:
1.785 Multiple applications for extension of term of the same patent
or different patents for the same regulatory review period for a product.
* * * * *
(d) An application for extension shall be considered complete and formal
regardless of whether it contains the identification of the holder of
the regulatory approval granted with respect to the regulatory review
period or express and exclusive authorization from the holder of the
regulatory approval to rely on the regulatory review period for
extension. When an application contains such information, or is amended
to contain such information, it will be considered in determining
whether an application is eligible for an extension under this section.
A request may be made of any applicant to supply such information within
a non-extendable period of not less than one [(1)] month whenever
multiple applications for extension of more than one patent are received
and rely upon the same regulatory review period. Failure to provide such
information within the period for >reply< [response] set shall be
regarded as conclusively establishing that the applicant is not the
holder of the regulatory approval and is not expressly and exclusively
authorized by the holder of the regulatory approval to seek the
extension being sought.
* * * * *
107. Section 1.804 is proposed to be amended by revising paragraph (b)
to read as follows:
1.804 Time of making an original deposit.
* * * * *
(b) When the original deposit is made after the effective filing date of
an application for patent, the applicant shall promptly submit a
[verified] statement from a person in a position to corroborate the
fact, [and shall state] >stating<, that the biological material which is
deposited is a biological material specifically identified in the
application as filed[, except if the person is an attorney or agent
registered to practice before the Office, in which case the statement
need not be verified].
108. Section 1.805 is proposed to be amended by revising paragraph (c)
to read as follows:
1.805 Replacement or supplement of deposit.
* * * * *
(c) A request for a certificate of correction under this section shall
not be granted unless the request is made promptly after the replacement
or supplemental deposit has been made and:
(1) Includes a [verified] statement of the reason for making the
replacement or supplemental deposit;
(2) Includes a [verified] statement from a person in a position to
corroborate the fact, and [shall state] >stating<, that the replacement
or supplemental deposit is of a biological material which is identical
to that originally deposited;
(3) Includes a [verified] showing that the patent owner acted
diligently [-]>:<
(i) In the case of a replacement deposit, in making the deposit after
receiving notice that samples could no longer be furnished from an
earlier deposit, or
(ii) In the case of a supplemental deposit, in making the deposit
after receiving notice that the earlier deposit had become contaminated
or had lost its capability to function as described in the specification;
(4) Includes a [verified] statement that the term of the replacement
or supplemental deposit expires no earlier than the term of the deposit
being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations[, except
that if the person making one or more of the required statements or
showing is an attorney or agent registered to practice before the
Office, that statement or showing need not be verified].
* * * * *
Part 3 - Assignment, Recording, and Rights of Assignee
109. The authority citation for Part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
109a. Section 3.11 is proposed to be revised to read as follows:
3.11 Documents which will be recorded.
>(a)< Assignments of applications, patents, and registrations,
accompanied by completed cover sheets as specified in 3.28 and
3.31, will be recorded in the Office. Other documents, accompanied by
completed cover sheets as specified in 3.28 and 3.31, affecting
title to applications, patents, or registrations, will be recorded as
provided in this Part or at the discretion of the Commissioner.
>(b) Executive Order 9424 (3 CFR 1943 - 1948 Comp.) requires the
several departments and other executive agencies of the Government,
including Government-owned or Government-controlled corporations, to
forward promptly to the Commissioner of Patents and Trademarks for
recording all licenses, assignments, or other interests of the
Government in or under patents or patent applications. Assignments and
other documents affecting title to patents or patent applications and
documents not affecting title to patents or patent applications required
by Executive order 9424 (3 CFR 1943 - 1948 Comp.) to be filed will be
recorded as provided in this Part.<
110. Section 3.26 is proposed to be revised to read as follows:
3.26 English language requirement.
The Office will accept and record non-English language documents only if
accompanied by [a verified] >an< English translation signed by the
individual making the translation.
Section 3.27 is proposed to be revised to read as follows:
3.27 Mailing address for submitting documents to be recorded.
>(a) Except as provided in paragraph (b) of this section, documents<
[Documents] and cover sheets to be recorded should be addressed to the
Commissioner of Patents and Trademarks, Box Assignments, Washington,
D.C. 20231, unless they are filed together with new applications or with
a petition under 3.81(b).
>(b) A document required by Executive Order 9424 (3 CFR 1943 - 1948
Comp.) to be filed which does not affect title and is so identified in
the cover sheet (see 3.31(c)(2)) must be addressed and mailed to the
Commissioner of Patents and Trademarks, Box Government Interest,
Washington, D.C. 20231.<
111. Section 3.31 is proposed to be amended by adding paragraph (c) to
read as follows:
3.31 Cover sheet content.
* * * * *
>(c) Each patent cover sheet required by 3.28 seeking to record a
governmental interest as provided by 3.11(b) must:
(1) Indicate that the document is to be recorded on the governmental
register, and, if applicable, that the document is to be recorded on the
Secret Register (see 3.58), and
(2) Indicate, if applicable, that the document to be recorded is not
a document affecting title (see 3.41(b)).<
112. Section 3.41 is proposed to be revised to read as follows:
3.41 Recording fees.
>(a)< All requests to record documents must be accompanied by the
appropriate fee. >Except as provided in paragraph (b) of this section,
a< [A] fee is required for each application, patent and registration
against which the document is recorded as identified in the cover sheet.
The recording fee is set in 1.21(h) of this [Chapter] >chapter< for
patents and in 2.6(q) of this [Chapter] >chapter< for trademarks.
>(b) No fee is required for each patent application and patent
against which a document required by Executive Order 9424 (3 CFR 1943 -
1948 Comp.) is to be filed if:
(1) The document does not affect title and is so identified in the
cover sheet (see 3.31(c)(2));
(2) The cover sheet is filed in a format approved by the Office; and
(3) The document and cover sheet are mailed to the Office in
compliance with 3.27(b).<
113. Section 3.51 is proposed to be revised to read as follows:
3.51 Recording date.
The date of recording of a document is the date the document meeting the
requirements for recording set forth in this [Part] >part< is filed in
the Office. A document which does not comply with the identification
requirements of 3.21 will not be recorded. Documents not meeting the
other requirements for recording, for example, a document submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available. The returned papers, stamped with the original date of
receipt by the Office, will be accompanied by a letter which will
indicate that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The [certification] procedure under either
1.8 or 1.10 of this [Chapter] >chapter< may be used for resubmissions
of returned papers to have the benefit of the date of deposit in the
United States Postal Service. If the returned papers are not corrected
and resubmitted within the specified period, the date of filing of the
corrected papers will be considered to be the date of recording of the
document. The specified period to resubmit the returned papers will not
be extended.
114. Section 3.58 is proposed to be added to read as follows:
> 3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record
governmental interests required to be recorded by Executive Order 9424
(3 CFR 1943 - 1948 Comp.). This Departmental Register will not be open
to public inspection but will be available for examination and
inspection by duly authorized representatives of the Government.
Governmental interests recorded on the Departmental Register will be
available for public inspection as provided in 1.12.
(b) The Office will maintain a Secret Register to record governmental
interests required to be recorded by Executive Order 9424 (3 CFR 1943 -
1948 Comp.). Any instrument to be recorded will be placed on this Secret
Register at the request of the department or agency submitting the same.
No information will be given concerning any instrument in such record or
register, and no examination or inspection thereof or of the index
thereto will be permitted, except on the written authority of the head
of the department or agency which submitted the instrument and requested
secrecy, and the approval of such authority by the Commissioner of
Patents and Trademarks. No instrument or record other than the one
specified may be examined, and the examination must take place in the
presence of a designated official of the Patent and Trademark Office.
When the department or agency which submitted an instrument no longer
requires secrecy with respect to that instrument, it must be recorded
anew in the Departmental Register.<
115. Section 3.73 is proposed to be amended by revising paragraph (b) to
read as follows:
3.73 Establishing right of assignee to prosecute.
* * * * *
(b) When the assignee of the entire right, title and interest seeks to
take action in a matter before the Office with respect to a patent
application, trademark application, patent registration, or
reexamination proceeding, the assignee must establish its ownership of
the property to the satisfaction of the Commissioner. Ownership is
established by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee >(e.g., copy of an
executed assignment submitted for recording, etc.)< or by specifying
(e.g., reel and frame number, etc.) where such evidence is recorded in
the Office. Documents submitted to establish ownership may be required
to be recorded as a condition to permitting the assignee to take action
in a matter pending before the Office. [In addition, the assignee of a
patent application or patent must submit a statement specifying that the
evidentiary documents have been reviewed and certifying that, to the
best of assignee's knowledge and belief, title is in the assignee
seeking to take the action.]
Part 5 - Secrecy of Certain Inventions and Licenses to Export and File
Applications in Foreign Countries
116. The authority citation for Part 5 is proposed to be revised to read
as follows:
Authority: 35 U.S.C. 6, 41, 181-188; 22 U.S.C. 2751 et seq.; 22 U.S.C.
3201 et seq.; 42 U.S.C. 2011 et seq.; 10 CFR 810.7; 15 CFR 770.10(j); 22
CFR 125.4.
116a. Section 5.1 is proposed to be revised to read as follows:
5.1 [Defense inspection of certain applications]>Correspondence<.
[(a) The provisions of this part shall apply to both national and
international applications filed in the Patent and Trademark Office and,
with respect to inventions made in the United States, to applications
filed in any foreign country or any international authority other than
the United States Receiving Office. The (1) filing of a national or an
international application in a foreign country or with an international
authority other than the United States Receiving Office, or (2)
transmittal of an international application to a foreign agency or an
international authority other than the United States Receiving Office is
considered to be a foreign filing within the meaning of Chapter 17 of
Title 35, United States Code.
(b) In accordance with the provisions of 35 U.S.C. 181, patent
applications containing subject matter the disclosure of which might be
detrimental to the national security are made available for inspection
by defense agencies as specified in said section. Only applications
obviously relating to national security, and applications within fields
indicated to the Patent and Trademark Office by the defense agencies as
so related, are made available. The inspection will be made only by
responsible representatives authorized by the agency to review
applications. Such representatives are required to sign a dated
acknowledgment of access accepting the condition that information
obtained from the inspection will be used for no purpose other than the
administration of 35 U.S.C. 181 - 188. Copies of applications may be
made available to such representatives for inspection outside the Patent
and Trademark Office under conditions assuring that the confidentiality
of the applications will be maintained, including the conditions that:
(1) All copies will be returned to the Patent and Trademark Office
promptly if no secrecy order is imposed, or upon rescission of such
order if one is imposed, and (2) no additional copies will be made by
the defense agencies. A record of the removal and return of copies made
available for defense inspection will be maintained by the Patent and
Trademark Office. Applications relating to atomic energy are made
available to the Department of Energy as specified in 1.14 of this
chapter.]
> All correspondence in connection with this part, including
petitions, must be addressed to "Assistant Commissioner for Patents
(Attention Licensing and Review), Washington, DC 20231."<
117. Section 5.2 proposed to be amended by revising paragraph (b) and
removing paragraphs (c) and (d) to read as follows:
5.2 Secrecy order.
* * * * *
(b) [The secrecy order is directed to the applicant, his successors, any
and all assignees, and their legal representatives; hereinafter
designated as principals.] >Any request for compensation as provided in
35 U.S.C. 183 must not be made to the Patent and Trademark Office, but
directly to the department or agency which caused the secrecy order to
be issued.<
[(c) A copy of the secrecy order will be forwarded to each principal
of record in the application and will be accompanied by a receipt,
identifying the particular principal, to be signed and returned.
(d) The secrecy order is directed to the subject matter of the
application. Where any other application in which a secrecy order has
not been issued discloses a significant part of the subject matter of
the application under secrecy order, the other application and the
common subject matter should be called to the attention of the Patent
and Trademark Office. Such a notice may include any material such as
would be urged in a petition to rescind secrecy orders on either of the
applications.]
118. Section 5.3 is proposed to be amended by revising paragraph (c) to
read as follows:
5.3 Prosecution of application under secrecy orders; withholding
patent.
* * * * *
(c) When the national application is found to be in condition for
allowance except for the secrecy order the applicant and the agency
which caused the secrecy order to be issued will be notified. This
notice (which is not a notice of allowance under 1.311 of this
chapter) does not require >reply< [response] by the applicant and places
the national application in a condition of suspension until the secrecy
order is removed. When the secrecy order is removed the Patent and
Trademark Office will issue a notice of allowance under 1.311 of this
chapter, or take such other action as may then be warranted.
* * * * *
119. Section 5.4 is proposed to be amended by revising paragraphs (a)
and (d) to read as follows:
5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be filed
by, or on behalf of, any principal affected thereby. Such petition may
be in letter form, and it must be in duplicate. [The petition must be
accompanied by one copy of the application or an order for the same,
unless a showing is made that such a copy has already been furnished to
the department or agency which caused the secrecy order to be issued.]
* * * * *
(d) [Unless based upon facts of public record, the petition must be
verified.]
> Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181,
from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied.<
120. Section 5.5 is proposed to be amended by revising paragraphs (b)
and (e) to read as follows:
5.5 Permit to disclose or modification of secrecy order.
* * * * *
(b) Petitions for a permit or modification must fully recite the reason
or purpose for the proposed disclosure. Where any proposed disclosee is
known to be cleared by a defense agency to receive classified
information, adequate explanation of such clearance should be made in
the petition including the name of the agency or department granting the
clearance and the date and degree thereof. The petition must be filed in
duplicate [and be accompanied by one copy of the application or an order
for the same, unless a showing is made that such a copy has already been
furnished to the department or agency which caused the secrecy order to
be issued].
* * * * *
(e) [The permit or modification may contain conditions and limitations.]
>Organizations requiring consent for disclosure of applications under
secrecy order to persons or organizations in connection with repeated
routine operation may petition for such consent in the form of a general
permit. To be successful such petitions must ordinarily recite the
security clearance status of the disclosees as sufficient for the
highest classification of material that may be involved.<
121. Section 5.6 is proposed to be removed and reserved.
5.6 [Removed and Reserved].
122. Section 5.7 is proposed to be removed and reserved.
5.7 [Removed and Reserved].
123. Section 5.8 is proposed to be removed and reserved.
5.8 [Removed and Reserved].
124. Section 5.11 is proposed to be amended by revising paragraphs (b)
and (c) to read as follows:
5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting international
application.
* * * * *
(b) The license from the Commissioner of Patents and Trademarks referred
to in paragraph (a) of this section would also authorize the export of
technical data abroad for purposes relating to the preparation, filing
or possible filing and prosecution of a foreign patent application
without separately complying with the regulations contained in 22 CFR
Parts [121] >120< through 130 (International Traffic in Arms Regulations
of the Department of State), 15 CFR [Part 379 (Regulations of the Bureau
of Export Administration, Department of Commerce)] >Parts 768-799
(Export Administration Regulations of the Department of Commerce)< and
10 CFR Part 810 [(Foreign Atomic Energy Programs of the Department of
Energy)] >(Assistance to Foreign Atomic Energy Activities - Regulations
of the Department of Energy).<
(c) Where technical data in the form of a patent application, or in
any form, is being exported for purposes related to the preparation,
filing or possible filing and prosecution of a foreign patent
application, without the license from the Commissioner of Patents and
Trademarks referred to in paragraphs (a) or (b) of this section, or on
an invention not made in the United States, the export regulations
contained in 22 CFR Parts [121] >120< through 130 (International Traffic
in Arms Regulations of the Department of State), 15 CFR [Part 379
(Regulations of the Bureau of Export Administration, Department of
Commerce)] >Parts 768-799 (Export Administration Regulations of the
Department of Commerce)< and 10 CFR Part 810 [(Foreign Atomic Energy
Programs of the Department of Energy)] >(Assistance to Foreign Atomic
Energy Activities - Regulations of the Department of Energy)< must be
complied with unless a license is not required because a United States
application was on file at the time of export for at least six months
without a secrecy order under 5.2 being placed thereon. The term
"exported" means export as it is defined in 22 CFR [Parts 121 through
130] >Part 120<, 15 CFR Part [379] >779< and >activities covered by< 10
CFR Part 810.
* * * * *
125. Section 5.13 is proposed to be revised to read as follows:
5.13 Petition for license; no corresponding application.
If no corresponding national or international application has been filed
in the United States, the petition for license under 5.12(b) must be
accompanied by the required fee ( 1.17(h)), if expedited handling of
the petition is also sought, and a legible copy of the material upon
which a license is desired. This copy will be retained as a measure of
the license granted. [For assistance in the identification of the
subject matter of each license so issued, it is suggested that the
petition be submitted in duplicate and provide a title and other
description of the material. The duplicate copy of the petition will be
returned with the license or other action on the petition.]
126. Section 5.14 is proposed to be amended by revising paragraph (a) to
read as follows:
5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file, a
petition for license under 5.12(b) must include the required fee (
1.17(h)), if expedited handling of the petition is also sought, and must
identify this application by [serial] >application< number, filing date,
inventor, and title, but a copy of the material upon which the license
is desired is not required. The subject matter licensed will be measured
by the disclosure of the United States application. [Where the title is
not descriptive, and the subject matter is clearly of no interest from a
security standpoint, time may be saved by a short statement in the
petition as to the nature of the invention.]
* * * * *
127. Section 5.15 is proposed to be amended by revising paragraph (a) to
read as follows.
5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to 5.12
through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181 and 5.1, will be
eligible for a license of the scope provided in this paragraph. This
license permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
patent application, if such changes to the application do not alter the
general nature of the invention in a manner which would require the
United States application to have been made available for inspection
under 35 U.S.C. 181 and 5.1. [This license also covers the inventions
disclosed in foreign applications which have been granted a license
under this part prior to April 4, 1984, and which were not subject to
security inspection under 35 U.S.C. 181 and 5.1.] Grant of this
license authorizing the export and filing of an application in a foreign
country or the transmitting of an international application to any
foreign patent agency when the subject matter of the foreign or
international application corresponds to that of the domestic
application. This license includes authority:
(1) To export and file all duplicate and formal application papers in
foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and
(3) To take any action in the prosecution of the foreign or
international application provided that the adding of subject matter of
taking of any action under paragraphs (a)(1) or (2) of this section does
not change the general nature of the invention disclosed in the
application in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 and 5.1 by
including technical data pertaining to:
(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended and 22 CFR Parts [121] >120< through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful for the production or utilization of special nuclear material or
atomic energy, dissemination of which is subject to restrictions of the
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation
Act of 1978, as implemented by the regulations [for Unclassified
Activities in Assistance to Foreign Atomic Energy Activities] >of the
Department of Energy for assistance to foreign energy activities<, 10
CFR Part 810, in effect at the time of foreign filing.
* * * * *
128. Section 5.16 is proposed to be removed and reserved.
5.16 [Removed and Reserved].
129. Section 5.17 is proposed to be removed and reserved.
5.17 [Removed and Reserved].
130. Section 5.18 is proposed to be revised to read as follows:
5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition, and
implements of war generally is subject to the International Traffic in
Arms Regulations of the Department of State (22 CFR Parts [121] >120<
through [128] >130<); the articles designated as arms, ammunition, and
implements of war are enumerated in the U.S. Munitions List, 22 CFR
[121.01] >Part 121<. However, if a patent applicant complies with
regulations issued by the Commissioner of Patents and Trademarks under
35 U.S.C. 184, no separate approval from the Department of State is
required unless the applicant seeks to export technical data exceeding
that used to support a patent application in a foreign country. This
exemption from Department of State regulations is applicable regardless
of whether a license from the Commissioner is required by the provisions
of 5.11 and [5.15 (22 CFR 125.04(b), 125.20(b))] >5.12 (22 CFR Part
125)<.
(b) When a patent application containing subject matter on the Munitions
List (22 CFR [121.01] >Part 121<) is subject to a secrecy order under
5.2 and a petition is made under 5.5 for a modification of the
secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22 CFR [125.05(d)] >Part 125<).
131. Section 5.19 is proposed to be revised to read as follows:
5.19. Export of technical data.
(a) Under regulations (15 CFR 770.10(j)) established by the [U.S.]
Department of Commerce, [Bureau of Export Administration, Office of
Export Licensing,] a [validated export] license is not required in any
case to file a patent application or part thereof in a foreign country
if the foreign filing is in accordance with the regulations (37 CFR
5.11 through 5.33) of the Patent and Trademark Office.
(b) [A validated] >An< export license is not required for data
contained in a patent application prepared wholly from foreign-origin
technical data where such application is being sent to the foreign
inventor to be executed and returned to the United States for subsequent
filing in the U.S. Patent and Trademark Office (15 CFR 379.3(c)).
132. Section 5.20, paragraph (b), is proposed to be removed.
5.20 Export of technical data relating to sensitive nuclear
technology.
* * * * *
(b) [Removed].
133. Section 5.25, paragraph (c), is proposed to be removed.
5.25 Petition for retroactive license.
* * * * *
(c) [Removed].
134. Section 5.31 is proposed to be removed and reserved.
5.31 [Removed and Reserved].
135. Section 5.32 is proposed to be removed and reserved.
5.32 [Removed and Reserved].
136. Section 5.33 is proposed to be removed and reserved.
5.33 [Removed and Reserved].
137. Part 7 is proposed to be removed and reserved.
Part 7 - [Removed and Reserved]
September 10, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks