Interim Waiver of 37 C.F.R.   1.84(b)(1) for Petitions
               to Accept Black and White Photographs Filed with
                          Only One Set of Photographs
   
   The Patent and Trademark Office (PTO) is sua sponte waiving 37 C.F.R.   
1.84(b)(1)(ii) to the extent that only a single set of black and white
photographs need be submitted with a petition to accept black and white
photographs in lieu of drawings. The reason for this waiver is that the
PTO intends to amend 37 C.F.R.    1.84(b)(1) to reduce the requirement
for the submission of three (3) sets of black and white photographs, as
part of a petition to accept the photographs, to one set of black and
white photographs as a result of patent printing process changes.
   
   Because a significant period of time will elapse before any final rule
change can be promulgated, effective as of the publication date of this
notice, the PTO will, sua sponte, waive 37 C.F.R.    1.84(b)(1)(ii) to
the extent that the submission of a single set (as opposed to three
sets) of black and white photographs will be considered acceptable upon
the filing a petition under 37 C.F.R.    1.84(b)(1).

Background of 37 C.F.R.    1.84(b)(1) and Rationale for Amendment
   
   Under the existing rule, the PTO will accept black and white photographs
in utility and design patent applications in lieu of drawings upon the
granting of a petition to accept the photographs. The petition must
include the fee set forth in 37 C.F.R.    1.17(i) and three (3) sets of
photographs.
   
   Until just recently, PTO processing of black and white photographs for
utility and design applications required three sets of photographs. One
of the three sets of photographs was retained in the application file as
part of the official file record so it could be used during the
examination process. The second and third sets of photographs were used
when the application was being prepared for publication as a patent. At
that time, the first set of photographs was used for optical scanning to
create a scanned version of the photograph for the patent publishing
database, and a special handling process would begin with the separate
creation of three sets of headers. A header contains the patent number,
issue date, and drawing sheet number. The three sets of headers were
respectively applied to each sheet of each set of photographs. The
second set of photographs was forwarded to the Patent and Trademark Copy
Sales (PTCS) Office for use by PTCS as a master set for creating
additional copies of the photographs when patent copies were sold to the
public and the public requested that the copies be made from the
original photograph(s) rather than the published patent. The third set
of photographs was used in the official patent grant which was sent to
the patentee. This special handling process for the headers of the
photographs was disruptive to the normal publication process and added
to the overall time for issuing patents. The more modern Office
processing of drawings for utility and design applications now requires
only a single set of formal drawings. When an application is allowed,
the set of drawings in the application file is optically scanned and the
images are stored in a patent publishing database. Copies of the
drawings generated from the patent publishing database include the
appropriate patent header information and are acceptable for all uses,
including the preparation of Official Gazette notices, printed patents
for the search rooms, and for sales by the PTCS Office, as well as for
the original patent grant sent to the patentee.
   
   Scanning of black and white photographs now results in sufficient image
quality that the special handling process described above is no longer
necessary. Accordingly, the PTO can now process black and white
photographs for design and utility applications in the same manner as
drawings for design and utility applications. Therefore, the second and
third sets of black and white photographs are no longer needed.
   
   This change in procedure will eliminate a time consuming special
handling process and should enable applications with black and white
photographs to be issued as patents more quickly. Furthermore, since the
second and third sets of black and white photographs are no longer
necessary, applicants will avoid the expense associated with the
preparation and supplying of the two extra sets of black and white
photographs.
   
   It is noted that this change in procedure only applies to black and
white photographs for utility and design applications and the current
requirements for color drawings or photographs are not affected. Thus,
three sets of color photographs continue to be necessary for design and
utility applications in which a petition under 37 C.F.R.    1.84(a)(2)
has been granted. Furthermore, two sets of color photographs for plant
patent applications continue to be required.
   
   If there are any questions or comments about this change in practice,
they should be forwarded to Karin Tyson, Senior Legal Advisor, by
facsimile at (703) 308-6916, by telephone at (703) 305-9285, or by
e-mail at karin.tyson@uspto.gov.

May 1, 1998                                                STEPHEN G. KUNIN
                                          Deputy Assistant Commissioner for
                                                 Patent Policy and Projects