Interim Waiver of 37 C.F.R. 1.84(b)(1) for Petitions to
Accept Black and White Photographs and Advance Notice
of Change to M.P.E.P. 608.02
The Patent and Trademark Office (PTO) is sua sponte waiving 37 C.F.R.
1.84(b)(1) to the extent that a petition and petition fee are no
longer required in order 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 eliminate the requirement for a petition and
petition fee.
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 CF.R. 1.84(b)(1) to
the extent that a petition and petition fee are no longer required for
acceptance of black and white photographs in applications that are
pending as of the publication date of this notice or any applications
filed thereafter. If an Office action has been mailed which requires a
petition under 37 C.F.R. 1.84(b)(1) and/or a petition fee, an
acceptable reply to the Office action would be a reference to this
notice and a request that the requirement be withdrawn. However, any
petition fees set forth in 37 C.F.R. 1.17(i) which were paid prior to
the publication date of this notice will not be refunded, since they
were required at the time they were paid. A fee authorized to be charged
to a deposit account is considered to have been paid on the date the
paper with the authorization was filed. Any petition fees set forth in
37 C.F.R. 1.17(i) paid or authorized to be paid after the publication
date of this notice will not have been required at the time the fees
were paid or authorized and may be refunded. See 37 C.F.R. 1.26(a).
Manual of Patent Examining Procedure, Section 608.02 will be amended
consistent with this Notice.
Background of 37 C.F.R. 1.84(b)(1) and Rationale for Amendment
Currently, under 37 C.F.R. 1.84(b)(1), 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.
However, petitions under 37 C.F.R. 1.84(b)(1) do not serve a
usefulpurpose in the examination process and therefore unnecessarily
delay the issuance of patents containing black and white photographs. As
noted in "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,"
1211 O.G. 34 (June 9, 1998), 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. Since the special handling
process has been eliminated, a petition is no longer necessary. In
addition, the requirement for a petition for black and white photographs
as set forth in 37 C.F.R. 1.84(b)(1) does not address when black and
white photographs are acceptable in an application instead of drawings.
Manual of Patent Examining Procedure (MPEP), section 608.02, states that
the photographs or photomicrographs "must show the invention more
clearly than they can be done by India ink drawings," but 37 C.F.R
1.84(b)(1) does not include this language. Accordingly, petitions under
37 C.F.R. 1.84(b)(1) are grantable if the petition fee set forth in
37 C.F.R. 1.17(i) is included and the photographs are either properly
mounted or on double weight photographic paper, even though photographs
may not be acceptable instead of drawings in that application because
the subject matter is capable of illustration by a drawing. See 37
C.F.R. 1.81(c). For example, a photograph of a syringe would not be
acceptable if the syringe is capable of being drawn. In addition, the
requirement of a petition to accept black and white photographs leads to
delays in issuance of patents containing photographs (increases the
cycle time of applications with photographs) and misuses valuable
resources for several reasons. First, the petitions take time to decide,
which adds to the processing time of applications with black and white
photographs. Second, an added delay is caused by the practice of
applicants first filing petitions under 37 C.F.R. 1.84(b)(1) while
applications are being prepared for issuance and are no longer in the
Technology Centers, where such petitions are decided, which requires
applications with the petition and photograph(s) to be returned to the
Technology Centers for treatment of the petitions. For these reasons,
the requirement of 37 C.F.R. 1.84(b)(i) for a petition and petition
fee should be eliminated.
This change in procedure should not change the number of applications
in which photographs are filed. Photographs continue to be acceptable
only in applitations in which the invention is not capable of being
illustrated in an ink drawing or where the invention is shown more
clearly in a photograph. For example, photographs or photomicrographs of
electrophoresis gels, blots, e.g., immunological, western, Southern, and
northern, autoradiographs, cell cultures (stained and unstained),
histological tissue cross sections (stained and unstained), animals,
plants, in vivo imaging, thin layer chromatography plates, crystalline
structures, metallurgical microstructures, textile fabrics, grain
structures, and ornamental effects continue to be acceptable.
If a photograph that is filed in an application shows an invention
which is capable of illustration, the examiner will, pursuant to 37
C.F.R. 1.81(c) and/or 37 C.F.R. 1.83(c), require a drawing of the
subject matter. For example, syringes are capable of being drawn and
drawings would generally demonstrate the details thereof more clearly
(for example, cross hatching can be included to show the materials
used). If a photograph (or a copy of a photograph) of a syringe is filed
with the application, the examiner should require a drawing in lieu of
the photograph. If the subsequently submitted drawing contains new
matter, however, the examiner will not approve entry of the drawing, so
applicants should be careful when initially submitting photographs
instead of drawings. See MPEP 608.02(h) and 608.04. (The issue of new
matter can also arise if a poor quality photograph or a photocopy of a
photograph which is a poor reproduction is originally submitted and a
better quality or the original photograph is later submitted and shows
details beyond that shown in the photograph or photocopy that was
originally submitted.)
It is noted that this change in procedure only applies to black and
white photographs for utility and design applications. The current
requirements for petitions for color drawings or color photographs are
not affected. Color drawings and color photographs require special
handling in the Office and the requirement for a petition is one
mechanism for ensuring that these applications are properly processed.
Thus, a petition, petition fee, and a reference in the specification
continue to be necessary in design and utility applications for color
drawings or color photographs to be accepted under 37 C.F.R.
1.84(a)(2).
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.
July 1, 1998 STEPHEN G. KUNIN
Deputy Assistant Commisioner for
Patent Policy and Projects
Interim Waiver of 37 C.F.R. 1.163(b) for Two Copies of
a Specification of an Application for a Plant Patent
The Patent and Trademark Office (PTO) is sua sponte waiving 37 C.F.R
1,163(b) to no longer require two copies of a specification for an
application for a plant patent. The reason for this waiver is that the
PTO intends to amend 37 C.F.R. 1.163(b) to eliminate this requirement.
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. 1.163(b) to
the extent that two copies of the specification of a plant patent
application are no longer required.
Background of 37 C.F.R. 1.163(b) and Rationale for Amendment
Under the existing rule, two copies of the specification, including
the claim, of an application for a plant patent are required. The reason
for this requirement was so that one copy of the application could be
forwarded to the Agricultural Research Service of the Department of
Agriculture where necessary for examination of the application. However,
the Office seldom requests the assistance of the Department of
Agriculture in the examination of plant patent applications and the
duplicate copies of the specification are removed from the application
file and stored separately. In the unusual situation where the duplicate
copy of the specification required by 37 C.F.R. 1.163(b) has not been
provided, plant patent examiners have not been requiring a duplicate
copy and, instead, have been making the required copy. If the
requirement for two copies is eliminated, and the Office desires the
assistance of the Department of Agriculture, the Office will make the
required duplicate copy. The elimination of the duplicate copy
requirement will reduce the burden on plant patent applicants in filing
an application for a plant patent. Furthermore, by elimination of this
requirement, the storage space required for plant patent applications
will be reduced, since the Office will no longer have to store duplicate
copies. Any duplicate copies of the plant application specification
submitted after the publication date of this notice or that are
currently being stored by the Office may be discarded.
This change in practice does not effect the number of color drawings
or color photographs that are required for a plant patent application.
Two copies of color drawings or color photographs continue to be
required for processing of a plant patent application. 37 C.F.R.
1.165(b). One of the two copies of the drawings is placed in the
application file and is used during prosecution of the application,
including printing of the patent. The second copy is used in the
interference files, where it is also available to be sent to the
Department of Agriculture, should the need arise. The second copy is
also available for use by the printer in the event that the first copy
is lost or damaged.
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.
July 1, 1998 STEPHEN G. KUNIN
Deputy Assistant Commissioner for
Patent Policy and Projects