Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 3, 5, and 10
[Docket No.: 980826226-9185-02]
RIN 0651-AA98
Changes to Implement the Patent Business Goals
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The Patent and Trademark Office (Office) has established
business goals for the organizations reporting to the Assistant
Commissioner for Patents (Patent Business Goals). The focus of the
Patent Business Goals is to increase the level of service to the public
by raising the efficiency and effectiveness of the Office's business
processes. In furtherance of the Patent Business Goals, the Office is
proposing changes to the rules of practice to eliminate unnecessary
formal requirements, streamline the patent application process, and
simplify and clarify their provisions.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before December 3, 1999. While comments
may be submitted after this date, the Office cannot ensure that
consideration will be given to such comments. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic 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, or by facsimile to
(703) 308-6916, marked to the attention of Hiram H. Bernstein. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. Where comments are submitted by mail,
the Office would prefer that the comments be submitted on a DOS
formatted 3 1/4 inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Room 3-C23 of Crystal Plaza 4,
2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: ftp.uspto.gov). Since comments will be made available for
public inspection, information that is not desired to be made public,
such as an address or phone number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein or Robert W. Bahr,
by telephone at (703) 305-9285, or by mail addressed to: Box
Comments-Patents, Assistant Commissioner for Patents, Washington, DC
20231, or by facsimile to (703) 308-6916, marked to the attention of Mr.
Bernstein.
SUPPLEMENTARY INFORMATION: The organizations reporting to the Assistant
Commissioner for Patents have established five business goals (Patent
Business Goals) to meet the Office's Year 2000 commitments. The Patent
Business Goals have been adopted as part of the Fiscal Year 1999
Corporate Plan Submission of the President. The five Patent Business
Goals are:
Goal 1: Reduce Office processing time (cycle time) to twelve months
or less for all inventions.
Goal 2: Establish fully-supported and integrated Industry Sectors.
Goal 3: Receive applications and publish patents electronically.
Goal 4: Exceed our customers' quality expectations, through the
competencies and empowerment of our employees.
Goal 5: Align fees commensurate with resource utilization and customer
efficiency.
This rulemaking proposes changes to the regulations to support the
Patent Business Goals. A properly reengineered or reinvented system
eliminates the redundant or unnecessary steps that slow down processing
and frustrate customers. In furtherance of the Patent Business Goals,
these proposed changes to the rules of practice take a fresh view of the
business end of issuing patents, and continue a process of
simplification. Formal requirements of rules that are no longer useful
would be eliminated. When the intent of an applicant is understood, the
Office would simply go forward with the processing. The essentials are
maintained, while formalities are greatly reduced. The object is to
focus on the substance of examination and decrease the time that an
application for patent is sidelined with unnecessary procedural issues.
Additionally, the Office desires to continue to make its rules more
understandable, such as by using plain language instead of legalese. The
Office is seeking efficiency by improving the clarity of the wording of
the regulations so that applicants and Office employees understand
unequivocally what is required at each stage of the prosecution and can
get it right on the first try. The Office welcomes comments and
suggestions on this effort.
In streamlining this process, the Office will be able to issue a patent
in a shorter time by eliminating formal requirements that must be
performed by the applicant, his or her representatives and the Office
itself. Applicants will benefit from a reduced overall cost to them for
receiving patent protection and from a faster receipt of their patents.
Finally, these proposed changes are intended to improve the Office's
business processes in the context of the current legal and technological
environment. Should these environments change (e.g., by adoption of an
international Patent Law Treaty, enactment of patent legislation, or
implementation of new automation capabilities), the Office would have to
reconsider its business processes and make such further changes to the
rules of practice as are necessary.
Advance Notice of Proposed Rulemaking
The Office published an advance notice of proposed rulemaking
(Advance Notice) presenting a number of changes to patent practice and
procedure under consideration to implement the Patent Business Goals.
See Changes to Implement the Patent Business Goals; Advance Notice of
Proposed Rulemaking, 63 FR 53497 (October 5, 1998), 1215 Off. Gaz. Pat.
Office 87 (October 27, 1998). The Advance Notice set forth twenty-one
topics on which the Office specifically requested public input:
Topic (1) Simplifying requests for small entity status;
Topic (2) Requiring separate surcharges and supplying filing receipts;
Topic (3) Permitting delayed submission of an oath or declaration, and
changing time period for submission of the basic filing fee and English
translation;
Topic (4) Limiting the number of claims in an application;
Topic (5) Harmonizing standards for patent drawings;
Topic (6) Printing patents in color;
Topic (7) Reducing time for filing corrected or formal drawings;
Topic (8) Permitting electronic submission of voluminous material;
Topic (9) Imposing limits/requirements on information disclosure
statement submissions;
Topic (10) Refusing information disclosure statement consideration under
certain circumstances;
Topic (11) Providing no cause suspension of action;
Topic (12) Requiring a handling fee for preliminary amendments and
supplemental replies;
Topic (13) Changing amendment practice to replacement by
paragraphs/claims;
Topic (14) Providing for presumptive elections;
Topic (15) Creating a rocket docket for design applications;
Topic (16) Requiring identification of broadening in a reissue
application;
Topic (17) Changing multiple reissue application treatment;
Topic (18) Creating alternative review procedures for applications under
appeal;
Topic (19) Eliminating preauthorization of payment of the issue fee;
Topic (20) Reevaluating the Disclosure Document Program; and
Topic (21) Creating a Patent and Trademark Office review service for
applicant-created forms.
See Changes to Implement the Patent Business Goals, 63 FR at 53499, 1215
Off. Gaz. Pat. Office at 89.
Changes Set Forth in the Advance Notice Included in This Notice of
Proposed Rulemaking (Notice)
This notice proposes changes to the rules of practice based upon the
following topics in the Advance Notice:
(1) Simplifying request for small entity status (Topic 1- 1.9, 1.27,
and 1.28);
(2) Harmonizing standards for patent drawings (Topic 5- 1.84);
(3) Printing patents in color (Topic 6- 1.84);
(4) Reducing time for filing corrected or formal drawings (Topic 7-
1.85 and 1.136);
(5) Permitting electronic submission of voluminous material (Topic 8-
1.96, 1.821, 1.823, and 1.825);
(6) Imposing limits/requirements on information disclosure statement
submissions (Topic 9- 1.97 and 1.98);
(7) Requiring a handling fee for preliminary amendments and supplemental
replies (Topic 12- 1.111 and 1.115);
(8) Changing amendment practice to replacement by paragraphs/claims
(Topic 13- 1.52 and 1.121);
(9) Creating a rocket docket for design applications (Topic 15-
1.155);
(10) Changing multiple reissue application treatment (Topic 17-
1.177); and
(11) Eliminating preauthorization of payment of the issue fee (Topic 19-
1.25 and 1.311).
The Office has taken into account the comments submitted in reply to the
Advance Notice in arriving at the specific changes to the rules of
practice being proposed in this notice. These comments are addressed
with the relevant proposed rule change in the section-by-section
discussion portion of this notice.
This notice also includes a number of proposed changes to the rules of
practice that are not based upon proposals set forth in the Advance
Notice. This notice proposes changes to the following sections of title
37 of the Code of Federal Regulations: 1.4, 1.6, 1.9, 1.12, 1.14, 1.17,
1.19, 1.22, 1.25, 1.26, 1.27, 1.28, 1.33, 1.41, 1.47, 1.48, 1.51, 1.52,
1.53, 1.55, 1.56, 1.59, 1.63, 1.64, 1.67, 1.72, 1.77, 1.78, 1.84, 1.85,
1.91, 1.96, 1.97, 1.98, 1.102, 1.103, 1.111, 1.112, 1.121, 1.125, 1.131,
1.132, 1.133, 1.136, 1.137, 1.138, 1.152, 1.154, 1.155, 1.163, 1.173,
1.176, 1.177, 1.178, 1.193, 1.303, 1.311, 1.312, 1.313, 1.314, 1.322,
1.323, 1.324, 1.366, 1.446, 1.497, 1.510, 1.530, 1.550, 1.666, 1.720,
1.730, 1.740, 1.741, 1.780, 1.809, 1.821, 1.823, 1.825, 3.27, 3.71,
3.73, 3.81, 5.1, 5.2, 5.12, and 10.23. Additionally, this notice
proposes to amend title 37 of the Code of Federal Regulations by
removing 1.44 and 1.174, and adding 1.76, 1.105, and 1.115.
Changes Set Forth in the Advance Notice That Are NOT Included in This
Notice
This notice does not include proposed changes to the rules of
practice based upon the following topics in the Advance Notice:
(1) Requiring separate surcharges and supplying filing receipts (Topic
2);
(2) Permitting delayed submission of an oath or declaration, and
changing the time period for submission of the basic filing fee and
English translation (Topic 3);
(3) Limiting the number of claims in an application (Topic 4);
(4) Refusing information disclosure statement consideration under
certain circumstances (Topic 10);
(5) Providing no cause suspension of action (Topic 11);
(6) Providing for presumptive elections (Topic 14);
(7) Requiring identification of broadening in a reissue application
(Topic 16);
(8) Creating alternative review procedures for applications under appeal
(Topic 18);
(9) Reevaluating the Disclosure Document Program (Topic 20); and (10)
Creating a Patent and Trademark Office review service for
applicant-created forms (Topic 21).
Comments received in response to the Advance Notice on these topics are
addressed below.
Requiring Separate Surcharges and Supplying Filing Receipts (Topic 2)
The Office indicated that it was considering charging separate
surcharges in a nonprovisional application under 35 U.S.C. 111(a) for
(a) the delayed submission of an oath or declaration, and (b) the
delayed submission of the basic filing fee. That is, a single surcharge
(currently $130) would be required if one of (a) the oath or declaration
or (b) the basic filing fee were not present on filing. Two surcharges
(totaling $260) would be required if both the oath or declaration and
the basic filing fee were not present on filing. Therefore, the absence
(on filing) of the oath or declaration or the basic filing fee would
have necessitated a separate surcharge. The Office also indicated that
it was considering issuing another filing receipt, without charge, to
correct any errors or to update filing information, as needed.
While a few comments supported the proposal (indicating that the
additional services were worth the additional fees), a majority of
comments opposed charging separate surcharges. These included arguments
that: (1) the proposal is simply a fee increase with no advantage to
applicants; and (2) a separate surcharge should be required only if the
oath or declaration and the basic filing fee are submitted separately
because there is no additional cost to the Office to process both the
oath or declaration and the basic filing fee in the same submission.
Response: This notice does not propose changing 1.53 to charge
separate surcharges in a nonprovisional application under 35 U.S.C.
111(a) for the delayed submission of an oath or declaration, and for the
delayed submission of the basic filing fee.
Permitting Delayed Submission of an Oath or Declaration, and Changing
the Time Period for Submission of the Basic Filing Fee and English
Translation (Topic 3)
The Office indicated that it was considering: (1) Amending 1.53 to
provide that an executed oath or declaration for a nonprovisional
application would not be required until the expiration of a period that
would be set in a ``Notice of Allowability'' (PTOL-37); and (2) amending
1.52 and 1.53 to provide that the basic filing fee and an English
translation (if necessary) for a nonprovisional application must be
submitted within one month (plus any extensions under 1.136) from the
filing date of the application. The Office was specifically considering
amending 1.53 to provide that an executed oath or declaration for a
nonprovisional application would not be required until the applicant is
notified that it must be submitted within a one-month period that would
be set in a ``Notice of Allowability,'' provided that the following are
submitted within one month (plus any extensions under 1.136) from the
filing date of the application: (1) The name(s), residence(s), and
citizenship(s) of the person(s) believed to be the inventor(s); (2) all
foreign priority claims; and (3) a statement submitted by a registered
practitioner that: (a) an inventorship inquiry has been made, (b) the
practitioner has sent a copy of the application (as filed) to each of
the person(s) believed to be the inventor(s), (c) the practitioner
believes that the inventorship of the application is as indicated by the
practitioner, and (d) the practitioner has given the person(s) believed
to be the inventor(s) notice of their obligations under 1.63(b). The
Office was also specifically considering amending 1.52 and 1.53 to
provide, by rule, that the basic filing fee and an English translation
(if the application was filed in a language other than English) for a
nonprovisional application must be submitted within one month (plus any
extensions under 1.136) from the filing date of the application.
Applicants would not be given a notice (e.g., a ``Notice To File Missing
Parts of Application'' (PTO-1533)) that the basic filing fee is missing
or insufficient, unless the application is filed with an insufficient
basic filing fee that at least equals the basic filing fee that was in
effect the previous fiscal year. The filing receipt, however, would
indicate the amount of filing fee received. Further, the filing receipt
would remind applicants that the basic filing fee must be submitted
within one month (plus any extensions under 1.136) from the filing
date of the application.
While some comments supported this proposed change, a majority of
comments opposed permitting delayed submission of an oath or
declaration; and changing the time period for submission of the basic
filing fee and English translation.
The reasons given for opposition to the proposed change to permit
delayed submission of an oath or declaration included arguments that:
(1) The proposed inventorship inquiry and notification requirements for
practitioners who submitted an application without an executed oath or
declaration would be too onerous; (2) an application should not be
examined until inventorship is settled and the inventors have
acknowledged their duty of disclosure; (3) the delayed submission of an
oath or declaration would cause confusion as to ownership of the
application, which would cause confusion as to who is authorized to
appoint a representative in the application; (4) the delayed submission
of an oath or declaration would increase the difficulty in acquiring the
inventor's signatures on an oath or declaration, which would lead to an
increase in the number of petitions under 1.47, as well as an
increase in the number of oaths or declarations signed by the legal
representatives of deceased inventors; and (5) the delayed submission of
an oath or declaration would increase the number of certified copies of
an application not having a copy of the executed oath or declaration
(considered undesirable). Some comments suggested that the Office seek
legislation to eliminate the oath requirement of 35 U.S.C. 115.
The reasons given for opposition to the proposed change to the time
period for submission of the basic filing fee and English translation
included arguments that: (1) A one-month period for submitting the basic
filing fee or English translation is too short because applicants may
not know the assigned application number within one month of the
application filing date (i.e., this period should be two or three
months); (2) the period for submitting the basic filing fee or English
translation should be tied to the mail date of the Filing Receipt; and
(3) the public relies upon the current Notice to File Missing Parts of
Application practice to inform applicants as to whether the filing fee
and the oath or declaration has been received by the Office (i.e.,
verify whether the Office has received the basic filing fee and oath or
declaration), and to inform applicants of the period for reply for
supplying the missing basic filing fee and/or oath or declaration.
Response: This notice does not propose changing 1.52 and 1.53 to
provide that: (1) An executed oath or declaration for a nonprovisional
application would not be required until the expiration of a period that
would be set in a ``Notice of Allowability'' (PTOL-37); or (2) the basic
filing fee and an English translation (if necessary) for a
nonprovisional application must be submitted within one month (plus any
extensions under 1.136) from the filing date of the application.
Limiting the Number of Claims in an Application (Topic 4)
The Office indicated in the Advance Notice that it was considering a
change to 1.75 to limit the number of total and independent claims
that will be examined (at one time) in an application. The Office was
specifically considering a change to the rules of practice to: (1) Limit
the number of total claims that will be examined (at one time) in an
application to forty; and (2) limit the number of independent claims
that will be examined (at one time) in an application to six. In the
event that an applicant presented more than forty total claims or six
independent claims for examination at one time, the Office would
withdraw the excess claims from consideration, and require the applicant
to cancel the excess claims.
While the comments included sporadic support for this proposed change,
the vast majority of comments included strong opposition to placing
limits on the number of claims in an application. The reasons given for
opposition to the proposed change included arguments that: (1) Decisions
by the Court of Appeals for the Federal Circuit (Federal Circuit) leave
such uncertainty as to how claims will be interpreted that additional
claims are necessary to adequately protect the invention; (2) the
applicant (and not the Office) should be permitted to decide how many
claims are necessary to adequately protect the invention; (3) there are
situations in which an applicant justifiably needs more than six
independent and forty total claims to adequately protect an invention;
(4) the proposed change exceeds the Commissioner's rule making
authority; (5) the change will simply result in more continuing
applications and is just a fee raising scheme; (6) the Office currently
abuses restriction practice and this change will further that abuse; and
(7) since only five percent of all applicants exceed the proposed claim
ceiling, there is no problem. Several comments which opposed the
proposed change offered the following alternatives: (1) Charge higher
fees (or a surcharge) for applications containing an excessive number of
claims; (2) charge fees for an application based upon what it costs
(e.g., number of claims, pages of specification, technology, IDS
citations) to examine the application; and (3) credit examiners based
upon the number of claims in the application. Several comments which
indicated that the proposed change would be acceptable, placed the
following conditions on that indication: (1) That a multiple dependent
claim be treated as a single claim for counting against the cap; (2)
that a multiple dependent claim be permitted to depend upon a multiple
dependent claim; (3) that a Markush claim be treated as a single claim
for counting against the cap; (4) that any additional applications are
taken up by the same examiner in the same time frame; (5) that allowed
dependent claims rewritten in independent form do not count against the
independent claim limit; (6) that the Office permit rejoinder of
dependent claims upon allowance; and (7) that higher claim limits are
used.
Response: This notice does not propose changing 1.75 to place a
limit on the number of claims that will be examined in a single
application.
Refusing Information Disclosure Statement Consideration Under Certain
Circumstances (Topic 10)
The Office indicated in the Advance Notice that it was considering
revising 1.98 to reserve the Office's authority to not consider
submissions of an Information Disclosure Statement (IDS) in unduly
burdensome circumstances, even where all the stated requirements of
1.98 are met. The Office was specifically considering an amendment to
1.98 to permit the Office to refuse consideration of an unduly
burdensome IDS submission (e.g., extremely large documents and
compendiums), and give the applicant an opportunity to modify the
submission to eliminate the burdensome aspect of the IDS.
While the proposal received support from a significant minority of the
comments, the large majority of comments included strong opposition to
the proposal to revise 1.98. The reasons given for opposition to the
proposed change included arguments that: (1) The term ``unduly
burdensome'' is not defined objectively; thus, decisions as to whether a
submission is too burdensome for consideration will be subjective; (2)
without a clear definition of ``unduly burdensome'' (to provide a
standard), the proposal would not pass the Administrative Procedure Act
tests of scrutiny; (3) the Office will have to expend time and effort in
deciding the petitions and defending, in court, its subjective decisions
not to consider ``unduly burdensome'' IDSs (thus, the proposal will cost
the Office time in the long run); (4) the proposal gives the examiner
unlimited ability to not consider art submitted due to the ambiguous
standard for refusal of an IDS submission coupled with the examiner's
discretion to advance the status of the application to a point where the
IDS would not be timely even though it is corrected; (5) the Office's
refusal to examine unduly burdensome IDS submissions despite compliance
with the rules (other than the burdensome aspect) would impose a huge
financial and time burden upon applicants to fix what the examiner deems
as unduly burdensome; (6) imposing this new financial and time burden
would be contrary to the stated purpose of the Office to expedite
prosecution and to relieve the burdens on the examination process; (7)
burdensome IDS situations exist, and the Office should learn to deal
with them as a service to its customers and in order to meet its mission
of issuing valid patents (the Office cannot realistically ignore
situations where the IDS documents cited are complex or lengthy, and
nothing can be done about the complexity or length by applicant); (8)
the burdensome IDS problem is not frequent and the rare unduly
burdensome IDS submissions should be addressed on a case-by-case basis
(thus, no rule change is needed); (9) no data has been presented to show
the problem is wide-spread, and more facts are needed to show the extent
and nature of the unduly burdensome IDS problem; (10) citations should
not be discarded from the record where the unduly burdensome IDS has not
been corrected since an original and only copy of the citation (which is
submitted so the examiner can more fully appreciate the citation) may be
very expensive or even impossible to replace; (11) reducing the size of
a citation can make it less valuable, the submitted ``relevant
portions'' (the partial citation) may be taken out-of-context of the
entire citation, and the excerpt containing the relevant portion would
not provide additional assistance to the examiner as to background,
terminology, and alternative subject matter which may bear on the
examination.
Response: This notice does not propose changing 1.98 to reserve the
Office's authority to not consider submissions of an IDS in unduly
burdensome circumstances, even where all the stated requirements of
1.98 are met.
Providing No Cause Suspension of Action (Topic 11)
The Office indicated that it was considering adding an additional
suspension of action practice, under which an applicant may request
deferred examination of an application without a showing of ``good and
sufficient cause,'' and for an extended period of time, provided that
the applicant waived the confidential status of the application under 35
U.S.C. 122, and agreed to publication of the application. The Office was
specifically considering a procedure under which the applicant may
(prior to the first Office action) request deferred examination for a
period not to exceed three years, provided that: (1) The application is
entitled to a filing date; (2) the filing fee has been paid; (3) any
needed English-language translation of the application has been filed;
and (4) all ``outstanding requirements'' have been satisfied (except
that the oath or declaration need not be submitted if the names of all
of the persons believed to be the inventors are identified).
The comments included support and opposition in roughly equal measure to
the proposed extended suspension of action procedure. The reasons given
for opposition to the proposal included arguments that: (1) The
``deferred examination'' of application under an extended suspension of
action and the publication of an application under such suspension of
action would create uncertainty over legal rights; and (2) the
publication provisions of such a suspension of action procedure amount
to an eighteen-month publication system that is not authorized by 35
U.S.C. 122.
Response: This notice does not propose changing 1.103 to provide for
extended suspension of action.
Providing for Presumptive Elections (Topic 14)
The Office indicated in the Advance Notice that it was considering a
change to the restriction practice to eliminate the need for a written
restriction requirement and express election in most restriction
situations. The Office was specifically considering a change to the
restriction practice to provide: (1) That if more than one independent
and distinct invention is claimed in an application, the applicant is
considered to have constructively elected the invention first presented
in the claims; (2) for rejoinder of certain process claims in an
application containing allowed product claims; and (3) for rejoinder of
certain combination claims in an application containing allowed
subcombination claims.
While some comments supported this proposed change, a large majority of
comments opposed providing for presumptive elections. The reasons given
for opposition to the proposed change included arguments that: (1) The
commercially important invention may change (or is not known until)
after the application is prepared and filed; (2) the change will
increase cost of preparing an application since the order of claims must
be carefully considered; (3) examiners aggressively apply restriction,
and presumptive elections will increase the number of restrictions; and
(4) the loss of the ability to contest improper restrictions prior to
examination on the merits will lead to less likelihood of success in
persuading examiner to withdraw an improper restriction. Several
comments which opposed the proposed change offered as an alternative
that the Office adopt the PCT unity of invention standard in considering
restriction. Several comments which indicated that the proposed change
would be acceptable placed the following conditions on that indication:
(1) That any presumptive election practice not apply to an election of
species; and (2) that an election by presumption apply only if an
attempted telephone restriction requirement is not successful.
Response: This notice does not propose changing 1.141 et seq. to
provide for a presumptive election. The Office is considering the impact
of applying the ``unity of invention'' standard of the PCT, rather than
the ``independent and distinct'' standard of 35 U.S.C. 121, in
restriction practice. Nevertheless, this change to restriction practice,
without a corresponding change to other patent fees, would have a
negative impact on the Office's ability to obtain the necessary
operating funding.
Requiring Identification of Broadening in a Reissue Application (Topic
16)
The Office indicated in the Advance Notice that it was considering a
change to 1.173 to require reissue applicants to identify all
occurrences of broadening of the patent claims in a reissue application.
As proposed, reissue applicants would have to point out all occurrences
of broadening in the claims as an aid to examiners who should consider
issues involving broadening relative to the two-year limit and the
recapture doctrine.
While a few comments supported this proposed change, a large majority of
comments strongly opposed the concept. A number of those commenting were
wary of the consequences in court resulting from their failure to
identify all issues of broadening in a reissue application. Several of
the commenters expressed concerns that patent owners could have their
patent claims put at risk in litigation if they unintentionally failed
to identify all occurrences of broadening, which they feared could be a
basis for charging patentees with inequitable conduct. Some were
concerned about saddling applicants with yet another burden which more
properly should be left with the Office and the examiner. Others felt
that any unintentional omission of a broadening identification could
raise problems for the practitioner, which problems are not offset by
any increase in benefits derived by presenting this information to the
Office.
Response: This notice does not propose changing 1.173 to require an
identification of all occurrences of broadening in reissue claims. In
view of the comments received, the Office will continue to rely on the
examiner to identify any occurrences of broadening during the
examination of the reissue application, and not impose any additional
burden on the reissue applicants. The Office does not wish to undo the
benefits of the recently liberalized reissue oath/declaration
requirements by proposing additional rule changes which may add burdens
as well as possible unforeseen risks.
Creating Alternative Review Procedures for Applications Under Appeal
(Topic 18)
The Office indicated in the Advance Notice that it was considering
alternative review procedures to reduce the number of appeals forwarded
to the Board of Patent Appeals and Interferences. The Office was
specifically considering two alternative review procedures to reduce the
number of appeals having to be forwarded to the Board of Patent Appeals
and Interferences for decision. Both review procedures would have
involved a review that would be available upon request and payment of a
fee by the appellant, and would have involved review by at least one
other Office official. The first review would have occurred after the
filing of a notice of appeal but before the filing of an appeal brief
and have involved a review of all rejections of a single claim being
appealed to see whether any rejection plainly fails to establish a prima
facie case of unpatentability. The second review would have occurred
after the filing of an appeal brief and have involved a review of all
rejections on appeal.
The comments were split between supporting and opposing the appeal
review procedures under consideration. Most comments opposing the appeal
review procedures under consideration supported the concept of screening
the tenability of rejections in applications before they are forwarded
to the Board of Patent Appeals and Interferences, but argued that: (1)
The proposed appeal review amounts to quality control for which the
applicant should not be required to pay (appeal fees should be raised if
appropriate); (2) an appeal review is meaningless (only advisory) unless
the decision is binding on the examiner; (3) the Board of Patent Appeals
and Interferences may give undue deference to a rejection that has been
through an appeal review; and (4) the proposed appeal review will delay
ultimate review by the Board of Patent Appealsand Interferences. Several
comments indicated that the proposed change would be acceptable, but
included the following conditions with that indication: (1) That the
applicant need not pay for either review; (2) that the reviewer be
someone outside the normal chain of review for an application being
forwarded to the Board of Patent Appeals and Interferences for decision;
(3) that the reviewer be someone who has at least full signatory
authority; (4) that the report gives a detailed explanation of the
results of the appeal review (especially if a position is
changed/application allowed); (5) that fees (appeal or appeal review) be
refunded if the review results in the allowance of the application; (6)
that the pre-brief review involve review of the application by more than
one person; (7) that the pre-brief review also determine whether any
prima facie case of unpatentability has been overcome; and (8) that the
appeal process should be revised to model the German Patent Office.
Response: This notice does not propose changing 1.191 et seq. to
provide for appeal reviews. The Office intends to increase the use of
the current appeal conference procedures as set forth in section 1208 of
the Manual of Patent Examining Procedure (7th ed. 1998) (MPEP).
Reevaluating the Disclosure Document Program (Topic 20):
The Office indicated in the Advance Notice that it was reevaluating
the Disclosure Document Program (DDP) because this program has been the
subject of numerous abuses by so-called ``invention development
companies'' resulting in complaints from individual inventors, and
therefore may be detrimental to the interests of its customers. At the
same time, the distinctly different provisional applications provide a
viable alternate route whereby, for the basic small entity filing fee of
$75 ( 1.16(k)), a provisional application may be filed by a small
entity. A provisional application does not require a claim in compliance
with 35 U.S.C. 112, A 2, or an inventor's oath under 35 U.S.C. 115.
Although abandoned after one year, provisional applications are retained
by the Office for at least twenty years, or longer if it is referenced
in a patent. A provisional application is considered a constructive
reduction to practice of an invention as of the filing date accorded the
provisional application if it describes the invention in sufficient
detail to enable a person of ordinary skill in the art to make and use
the invention and discloses the best mode known by the inventor for
carrying out the invention. Unlike the DDP, a provisional application
may be used under the Paris Convention to establish a priority date for
foreign filing. In other words, except for adding the best mode
requirement, the disclosure requirements for a provisional application
are identical to the disclosure requirements for a Disclosure Document
and a provisional application provides users with a filing date without
starting the patent term period. Thus, almost any paper filed today as a
proper Disclosure Document can now be filed as a provisional application
with the necessary cover sheet.
For these reasons, the Office posed in the Advance Notice several
questions directed to whether the DDP served a useful function. Only one
comment presented evidence of a single instance where a disclosure
document was used in conjunction with an interference, but this person
was an extensive user of the DDP and cautioned that independent
inventors fail to keep records of the date of their invention. The same
commenter suggested that if the attorney signing the provisional
application could also claim small entity status for his client, this
would diminish the need for the DDP. This appears likely to be adopted
since, contemporaneously with this proposal, under Topic 1 (relating to
the simplification of the request for small entity status), it is being
proposed that applicant or applicant's attorney may assert entitlementto
small entity status. This proposal will make it easier for both
attorneys or applicants to assert small entity status when filing
provisional applications. See discussion of proposed changes to
1.9, 1.27 and 1.28 relating to small entity status for further details.
Six commenters felt that the program should be eliminated because there
is no value to applicants in light of the provisional application
procedure. Some felt that the program creates a dangerous situation in
that applicants may assume they are getting some type of patent
protection or that the statutory bar provision in 35 U.S.C. 102(b) has
been avoided. One commenter characterized the DDP as an ``unwitting
vehicle and accomplice for fraud and delusion of small inventors by so-
called ``invention development companies'', or self-delusions of
independent inventors, who have been mailing thousands of these
`Disclosure Documents' to the PTO * * *.'' Another commenter, however,
postulated that if the only difference between the DDP and provisional
applications was the cost, then the cancellation of the DDP would only
result in the abuse of the provisional patent applications at a higher
cost to unsuspecting inventors.
Four commenters confused the DDP with defensive publications as their
responses wrongfully indicated a belief that the DDP involved
publication of the disclosures. One commenter suggested that before the
program is eliminated that the Office should engage in an educational
program (with a survey) to explain the questionable value of the program
and alternative procedures available to the public. The commenter
further stated that the education program should focus on those
individuals who use the DDP and could include a survey of those
individuals to determine the benefit to the public. A second commenter
supported the concept of contacting the independent inventors. At least
one other comment suggested that elimination might be detrimental to
individual inventors.
Response: A review of the comments on this proposal reveals that the
independent inventor community submitted only a few of the responses.
The Office considers it inappropriate to proceed with this proposal in
the absence of greater input from the independent inventor community.
Therefore, this notice does not propose changes to the rules of practice
concerning the Disclosure Document Program. The Office will continue to
study the Disclosure Document Program and seek greater input from the
independent inventor community before any further action is taken. In
this regard, the matter will be referred to the Office of Independent
Inventor Programs, headed by Director Donald Grant Kelly. The Office of
Independent Inventor Programs was established on March 15, 1999.
Reporting directly to the Commissioner, this new office was established
to provide assistance to independent inventors, particularly in terms of
improved communications, educational outreach, and Office-based support.
In addition, the Office of Independent Inventor Programs will work to
establish or strengthen cooperative efforts with the Federal Trade
Commission, the Department of Justice, and various Bar Associations to
address the growing problem of invention development company marketing
scams.
Creating a Patent and Trademark Office Review Service for
Applicant-Created Forms (Topic 21)
The Office indicated that it was considering establishing a new
service, under which the Office would (for a fee) review
applicant-created forms intended to be used for future correspondence to
the Office. After the review is completed, the Office would provide a
written report, including comments and suggestions (if any), but the
Office would not formally ``approve'' any form. If a (reviewed) form is
modified in view of a Office written report, comments and/or suggestion,
the revised form could be resubmitted to the Office for a follow up
review for an additional charge (roughly estimated at approximately
$50). After a form has been reviewed and revised, as may be needed, to
comply with the Office's written report, it would be acceptable for the
form to indicate if it is a substitute for an Office form, and that it
has been ``reviewed by the Patent and Trademark Office.''
The Office received few comments on this proposal. Of those comments
received on this proposal, most supported this new service. The comments
included the following specific concerns and suggestions: (1) That the
form review service be optional and not mandatory; (2) that there be one
fee per form, regardless of the number of submissions needed to have the
form reviewed; (3) the service had little value unless the Office would
be willing to approve a form; and (4) the time has come to require the
use of mandatory forms.
Response: The Office indicated in the Advance Notice that this new
service would involve significant start-up costs, and, absent positive
feedback on the matter, the Office does not intend to implement this new
service. See Changes to Implement the Patent Business Goals, 63 FRat
53530, 1215 Off. Gaz. Pat. Office at 117. In view of the limited
interest shown by the comments in this new service, the Office has
decided not to proceed with the proposal to provide a review service for
applicant-created forms.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10,
are proposed to be amended as follows:
Part 1
Section 1.4: Section 1.4(b) is proposed to be amended to refer to a
patent or trademark application, patent file, trademark registration
file, or other proceeding, rather than only an application file. Section
1.4(b) is also proposed to be amended to provide that the filing of
duplicate copies of correspondence in a patent or trademark application,
patent file, trademark registration file, or other proceeding should be
avoided (except in situations in which the Office requires the filing of
duplicate copies), and that the Office may dispose of duplicate copies
of correspondence in a patent or trademark application, patent file,
trademark registration file, or other proceeding. Finally, 1.4(b) and
1.4(c) are also proposed to be amended to change ``should'' to
``must'' because the Office needs separate copies of papers directed to
two or more files, or of papers dealing with different subjects.
Section 1.6: Section 1.6(d)(9) is proposed to be amended to delete the
reference to recorded answers under 1.684(c), as 1.684(c) has been
removed and reserved.
Section 1.9: Section 1.9(f) is proposed to be amended to provide the
definition of who can qualify to pay small entity fees, and paragraphs
(c) through (e) of 1.9 are proposed to be removed and reserved.
Paragraph (f) of 1.9 is proposed to: (1) Be reformatted, (2) define a
``person'' to include inventors and also noninventors holding rights in
the invention, (3) explain that qualification depends on whether any
rights in the invention were transferred and to whom, and (4) provide
that a license by a person to the Government under certain situations
does not bar entitlement to small entity status.
Section 1.9 paragraph (f) is proposed to be reformatted to place the
subject matter relating to definitions of small entities: (1) Persons,
(2) small business concerns; and (3) nonprofit organizations, in one
paragraph rather than as currently in paragraphs (c) through (e). The
expression ``independent inventor'' of current paragraph (c) is proposed
to be replaced with the term ``person'' in paragraph (f)(1) (and other
paragraphs of this section). The term ``person'' in paragraph (f) is
proposed to be defined to include individuals who are inventors and also
individuals who are not inventors but who have been transferred some
right or rights in the invention. This would clarify that individuals
who are not inventors but who have rights in the invention are covered
by the provisions of 1.9 and 1.27.
Paragraphs (f)(2)(i) and (f)(3)(i) of 1.9 are proposed to be added to
clarify that in order for small entity businesses and nonprofit
organizations to remain entitled to small entity status, they must not
in some manner transfer or be under an obligation to transfer any rights
in the invention to any party that would not qualify for small entity
status. Current 1.27 paragraphs (b), (f)(1)(iii), and (f)(1)(iii)
make clear that this rights transfer requirement applies to all parties
(independent inventors, small businesses and nonprofit organizations,
respectively). The absence of this requirement however, from current
1.9 paragraphs (d) and (e) (small business and nonprofit organization,
respectively), notwithstanding its presence in 1.9 paragraph (c)
(independent inventor), has lead to confusion as to the existence of
such a requirement for small businesses and nonprofit organizations. In
view of the appearance of the rights transfer requirement in 1.9, it
is proposed to be removed from all paragraphs of 1.27.
Paragraph (f)(4)(i) of 1.9 is proposed to be added to provide a new
exception relating to the granting of a license to the U.S. Government
by a person, that results from a particular rights determination. Such a
license would not bar entitlement to small entity status. Similarly
paragraph (f)(4)(ii) of 1.9 is proposed to be added to have
transferred to it (from current 1.27 paragraphs (c)(2) and (d)(2))
the current exceptions relating to a licence to a Federal agency by a
small business or a nonprofit organization resulting from a particular
funding agreement. Again, such a license would not bar entitlement to
small entity status.
For additional proposed changes to small entity requirements see
1.27 and 1.28.
Section 1.9(i) is proposed to be added to define ``national security
classified.'' Section 1.9(i), as proposed, defines ``national security
classified'' as used in 37 CFR Chapter 1 as meaning ``specifically
authorized under criteria established by an Act of Congress or Executive
order to be kept secret in the interest of national defense or foreign
policy and, in fact, properly classified pursuant to Act of Congress or
Executive order.''
Section 1.12: Section 1.12(c)(1) is proposed to be amended to change the
reference to the fee set forth in `` 1.17(i)'' to the fee set forth
in `` 1.17(h).'' This change is for consistency with the changes to
1.17(h) and 1.17(i). See discussion of changes to 1.17(h) and
1.17(i).
Section 1.14: Section 1.14 is proposed to be amended to make it easier
to understand. Section 1.14 is also proposed to be amended to provide
that the Office will no longer give status information or access in
certain situations where applicants have an expectation of
confidentiality.
Section 1.14(a) is proposed to be amended to define ``status
information'' and ``access.'' ``Status information'' is proposed to be
defined as information that the application is pending, abandoned, or
patented, as well as the application numeric identifier. An
application's numeric identifier is (a) the application number, or (b)
the serial number and filing date, or date of entry into the national
stage. If an international application has not been assigned a U.S.
application number, no such application number can be provided by the
Office.
Section 1.14 as proposed would also eliminate the provisions making
available data on any continuing cases of an application identified in a
patent. (The provisions of current 1.14(a)(1)(ii) are proposed to be
deleted.)
Section 1.14(b) is proposed to be amended to state when status
information may be supplied, retaining the reasons set forth in current
1.14(a)(1)(i). Section 1.14(b)(3) is proposed to be simplified so as
to indicate that status information will be given for international
applications in which the United States is designated, even if that
application has not yet entered the national stage.
Section 1.14(c) is proposed to be amended to contain the provisions of
current 1.14(a)(2).
The provisions of current 1.14(a)(3)(i), 1.14(a)(3)(iv)(C) and
1.14(a)(3)(iv)(D) are proposed to be deleted, and the remaining
provisions of 1.14(a)(3) are proposed to be separated into 1.14(d)
and 1.14(e).
Section 1.14(d), as proposed, substantially corresponds to current
1.14(a)(3)(iii) with additional text from current 1.14(e)(2). Section
1.14(d), as proposed, states that an applicant, an attorney oragent of
record, or an applicant's assignee may have access to an application by
filing a power to inspect. In addition, 1.14(d), as proposed,
provides that if an executed oath or declaration has not been filed, a
registered attorney or agent named in the papers filed with the
application may have access, or authorize another person to have access,
to an application by filing a power to inspect. The form for a power to
inspect is PTO/SB/67.
Section 1.14(e), as proposed, substantially corresponds to current
1.14(a)(3) and states that any person may obtain access to an
application by submitting a request for access if certain conditions
apply. Access to international phase application files is governed by
the provisions of the PCT and not by 1.14. The form for a request for
access to an abandoned application is PTO/SB/68. Section 1.14(e)(1), as
proposed, corresponds to current 1.14(a)(3)(ii). Section
1.14(e)(2)(i) corresponds to current 1.14(a)(3)(iv)(A). Section
1.14(e)(2)(ii), as proposed, corresponds to current 1.14(a)(3)(iv)(B).
Current 1.14 (b), (c), (d), (f), and (g) are proposed to be
redesignated 1.14 (f), (g), (h), (i) and (j), respectively.
Current 1.14(e) is proposed to be redesignated 1.14(k) and to be
amended to explain the requirements of a petition for access and include
the provisions of current 1.14(e)(1). Current 1.14(e)(2) is
proposed to be moved to proposed 1.14(d).
Section 1.14(k) is also proposed to indicate that the Office may provide
access or copies of an application if necessary to carry out an Act of
Congress or if warranted by other special circumstances. The Office may,
for example, provide access to, or copies of, applications to another
federal government agency, such as a law enforcement agency, whether the
Office is acting on its own initiative or in response to a petition from
the other agency when access is needed for a criminal investigation. The
Office may additionally provide access or copies without requiring the
other federal agency to file a petition including a showing that access
to the application is necessary to carry out an Act of Congress or that
special circumstances exist which warrant petitioner being granted
access to the application.
Section 1.17: Section 1.17(h) and 1.17(i) are proposed to be amended
to characterize the fee set forth in 1.17(h) as a petition fee, and
the fee set forth in 1.17(i) as a processing fee. Section 1.17(h) is
proposed to be amended to list only those matters that require the
exercise of judgment or discretion in determining whether the
request/petition will be granted or denied (e.g., 1.47, 1.53, 1.182,
1.183, 1.313). Section 1.17(i) is proposed to be amended to list those
matters that do not require the exercise of judgment or discretion, but
which are routinely granted once the applicant has complied with the
stated requirements (e.g., 1.41, 1.48, 1.55). Thus, the Office proposes
to amend 1.17(h) and 1.17(i) to locate matters requiring a
petition in 1.17(h), and those matters that do not require a
petition, but only a processing fee, in 1.17(i). Section 1.17(i) is
also proposed to be amended to provide a processing fee for: (1) Filing
a nonprovisional application in a language other than English (
1.52(d)), now in 1.17(k); and (2) filing an oath or declaration
pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different
from the inventive entity set forth in the international stage (
1.497(d)).
Section 1.17(k) is proposed to be amended to provide a $200 fee for
processing an application containing color drawings or photographs.
Section 1.17 (l) and (m) are proposed to be amended for clarity and to
eliminate unassociated text.
Section 1.17(q) is proposed to be amended for consistency with
1.17(h) and 1.17(i), as the matters listed therein apply to
provisional applications.
Section 1.17(t) is proposed to be added to provide a fee for filing a
request for expedited examination under 1.155(a).
Section 1.19: Section 1.19(a) is proposed to be amended to clarify that
the fees set forth in 1.19(a)(1) do not apply to patents containing a
color photograph or drawing, that the fee in 1.19(a)(2) applies to
plant patents in color, and that the fee in 1.19(a)(3) applies to
patents (other than plant patents) containing a color drawing.
Section 1.19(b)(2) is proposed to be amended to provide a fee of $250
for a certified or uncertified copy of a patent-related file wrapper and
contents of 400 or fewer pages, and an additional fee of $25 for each
additional 100 pages or portion thereof. Due to increases in the number
of pages in the contents of patent, patent application, and
patent-related interference files, the Office is adjusting the fee
specified in 1.19(b)(2) to recover its cost of providing copies of
these files. To better allocate costs, the Office is proposing to charge
a ``flat'' rate of $250 for a copy of a patent-related file wrapper and
contents of 400 or fewer pages (which includes most patent-related
files), but charge an additional fee of $25 for each additional 100
pages or portion thereof to make persons requesting copies of
patent-related files having contents containing a large number of pages
(e.g., interference proceedings) bear the cost of making copies of such
files. Since the Office cannot ascertain the exact number of pages of
the contents of a patent-related file, the Office expects to determine
the additional fee in proposed 1.19(b)(2)(ii) by estimating (e.g., by
measuring file thickness) rather than actually counting pages.
Section 1.19(h) is proposed to be removed. The $25 fee under 1.19(h)
for obtaining a corrected or duplicate filing receipt is no longer
necessary as the Office is now performing that service without charge.
Consequently, where a filing receipt has an error in it, applicants no
longer need to provide a showing that the error was due to Office
mistake or pay a $25 fee for the corrected receipt. See Changes In
Practice In Supplying Certified Copies And Filing Receipts, Notice, 1199
Off. Gaz. Pat. Office 38 (June 10, 1997).
Section 1.22: Section 1.22(b) is proposed to be amended to change
``should'' to ``must'' because the Office needs fees to be submitted in
such a manner that it is clear for which purpose the fees are paid.
Section 1.22(b) is also proposed to be amended to provide that the
Office may return fees that are not itemized as required by 1.22(b),
and that the provisions of 1.5(a) do not apply to the resubmission of
fees returned pursuant to 1.22.
Section 1.22(c) is proposed to be added to define, based upon current
Office practice, when a fee is considered paid. Section 1.22(c)(1)(i) is
proposed to provide that a fee paid by anauthorization to charge such
fee to a deposit account containing sufficient funds to cover the
applicable fee amount ( 1.25) is considered paid on the date the paper
for which the fee is payable is received in the Office ( 1.6), if the
paper including the deposit account charge authorization was filed prior
to or concurrently with such paper. Section 1.22(c)(1)(ii) is proposed
to provide that a fee paid by an authorization to charge such fee to a
deposit account containing sufficient funds to cover the applicable fee
amount ( 1.25) is considered paid on the date the paper including the
deposit account charge authorization is received in the Office ( 1.6),
if the deposit account charge authorization is filed after the filing of
the paper for which the fee is payable. The provision of
1.22(c)(1)(ii) would apply, for example, in the following situation: In
reply to an Office action setting a three-month shortened statutory
period for reply, a paper is filed three and one-half months after the
mail date of the Office action without payment of the fee for a
one-month extension of time. Thereafter, the applicant discovers the
lack of payment and files a second paper including an authorization to
charge the appropriate fee for any extension of time required, but the
second paper is received in the Office ( 1.6) four and one-half months
from the mail date of the Office action. The fee required for the reply
to the Office action to be timely is considered paid when the second
paper was received ( 1.6) in the Office. Section 1.22(c)(1)(iii) is
proposed to provide that a fee paid by an authorization to charge such
fee to a deposit account containing sufficient funds to cover the
applicable fee amount ( 1.25) is considered paid on the date of the
agreement, if the deposit account charge authorization is the result of
an agreement between the applicant and an Office employee as long as the
agreement is reduced to a writing. That is, the fee is considered paid
on the date of the agreement (e.g., the date of the interview), and the
date the agreement is subsequently reduced to writing (e.g., the mail
date of the interview summary) is not relevant to the date the fee is
considered paid.
Section 1.22(c)(2) is proposed to provide that a fee paid other than by
an authorization to charge such fee to a deposit account is considered
paid on the date the applicable fee amount is received in the Office (
1.6). Section 1.22(c)(3) is proposed to provide that the applicable fee
amount is determined by the fee in effect on the date such fee is paid
in full. When fees change (due to a CPI increase under 35 U.S.C. 41(f)
or other legislative change), the Office generally accords fee payments
the benefit of the provisions of 1.8 vis-a-vis the applicable fee
amount even though the fee is not considered paid until it is received
in the Office ( 1.6). See Revision of Patent Fees for Fiscal Year
1999, Final Rule Notice, 63 FR67578, 67578-79 (December 8, 1998), 1217
Off. Gaz. Pat. Office 148, 148 (December 29, 1998). This treatment of
fee payments is an ``exception'' to the provisions of 1.22(c) as
proposed, in that such fee would be not be entitled to any benefit under
1.8 vis-a-vis the applicable fee amount but for the express exception
provided in the fee change rulemaking. Of course, a fee is considered
timely if the fee is submitted to the Office under the procedure set
forth in 1.8(a) (unless excluded under 1.8(a)(2)), even though the
fee is not considered paid until it is actually received in the Office (
1.6).
Section 1.25: Section 1.25(b) is proposed to be amended to provide that
an authorization to charge fees under 1.16 in an application
submitted under 1.494 or 1.495 will be treated as an authorization
to charge fees under 1.492. There are many instances in which papers
filed for the purpose of entering the national stage under 35 U.S.C. 371
and 1.494 or 1.495 include an authorization to charge fees under
1.16 (rather than fees under 1.492). In such instances, the Office
treats the authorization as an authorization to charge fees under
1.492 since: (1) Timely payment of the appropriate national fee under
1.492 is necessary to avoid abandonment of the application as to the
United States; and (2) the basic filing fee under 1.16 is not
applicable to such papers or applications. Therefore, the Office is
proposing to change 1.25(b) to place persons filing papers to enter
the national stage under 35 U.S.C. 371 and 1.494 or 1.495 on
notice as to how an authorization to charge fees under 1.16 will be
treated.
Section 1.25(b) is also proposed to be amended to provide that an
authorization to charge fees set forth in 1.18 to a deposit account
is subject to the provisions of 1.311(b).
Section 1.26: The Office is proposing to amend the rules of practice to
provide that all requests for refund must be filed within specified time
periods. The rules of practice do not (other than in the situation in
which a request for refund is based upon subsequent entitlement to small
entity status) set any time period (other than ``a reasonable time'')
within which a request for refund must be filed. In the absence of such
a time period, Office fee record keeping systems and business planning
must account for the possibility that a request for refund may be filed
at any time, including many years after payment of the fee at issue.
It is a severe burden on the Office to treat a request for refund filed
years after payment of the fee at issue. Since Office fee record keeping
systems change over time, the Office must check any system on which fees
for the application, patent or trademark registration have been posted
to determine what fees were in fact paid. In addition, changes in fee
amounts, which usually occur on October 1 of each year, make it
difficult to determine with certainty whether a fee paid years ago was
the correct fee at the time and under the condition it was paid.
It also causes business planning problems to account for the possibility
that a request for refund may be filed years after payment of the fee at
issue. Without any set time period within which a request for refund
must be filed, the Office must maintain fee records, in any automated
fee record keeping system ever used by the Office, in perpetuity.
Finally, as the Office can never be absolutely certain that a submitted
fee was not paid by mistake or in excess of that required, the absence
of such a time period subjects the Office to unending and uncertain
financial obligations.
Accordingly, the Office is proposing to amend 1.26 to provide
non-extendable time periods within which any request for refund must be
filed to be timely.
Section 1.26(a) is proposed to be amended by dividing its first sentence
into two sentences. Section 1.26(a) is further amended for consistency
with 35 U.S.C. 42(d) (``[t]he Commissioner may refund a fee paid by
mistake or any amount paid in excess of that required''). Under 35
U.S.C. 42(d), the Office may refund: (1) a fee paid when no fee is
required (a fee paid by mistake); or (2) any fee paid in excess of the
amount of fee that is required. See Ex parte Grady, 59 USPQ 276, 277
(Comm'r Pats. 1943) (the statutory authorization for the refund of fees
under the ``by mistake'' clause is applicable only to a mistake relating
to the fee payment). In the situation in which an applicant or patentee
takes an action ``by mistake'' (e.g., files an application or maintains
a patent in force ``by mistake''), the submission of fees required to
take that action (e.g., a filing fee submitted with such application or
a maintenance fee submitted for such patent) is not a ``fee paid by
mistake'' within the meaning of 35 U.S.C. 42(d). Section 1.26(a) is also
proposed to be amended to revise the ``change of purpose'' provisions to
read ``[a] change of purpose after the payment of a fee, as when a party
desires to withdraw a patent or trademark filing for which the fee was
paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee.''
Section 1.26(a) is also proposed to be amended to change the sentence
``[a]mounts 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 amount; amounts over twenty-five dollars may be
returned by check or, if requested, by credit to a deposit account'' to
``[t]he Office will not refund amounts of twenty-five dollars or less
unless a refund is specifically requested, and will not notify the payor
of such amounts.'' Except as discussed below, the Office intends to
continue to review submitted fees to determine that they have not been
paid by mistake or in excess of that required, and to sua sponte refund
fees (of amounts over twenty-five dollars) determined to have been paid
by mistake or in excess of that required. Section 1.26(a), however, is
proposed to be amended to eliminate language that appears to obligate
the Office to sua sponte refund fees to be consistent with the
provisions of 1.26(b) which requires that any request for refund be
filed within a specified time period.
Section 1.26(a) is also proposed to be amended to facilitate refunds by
electronic funds transfer. Section 31001(x) of the Omnibus Consolidated
Rescissions and Appropriations Act of 1996, Pub. L. 104-134, 110 Stat.
1321 (1996) (the Debt Collection Improvement Act of 1996), amended 31
U.S.C. 3332 to require that all disbursements by Federal agencies
(subject to certain exceptions and waivers) be made by electronic funds
transfer. The Department of the Treasury has implemented this
legislation at 31 CFR Part 208. See Management of Federal Agency
Disbursements, Final Rule Notice, 63 FR 51489 (September 25, 1998).
Thus, 1.26(a) is proposed to be amended to enable the Office to
obtain the banking information necessary for making refunds by
electronic funds transfer in accordance with 31 U.S.C. 3332 and 31 CFR
Part 208.
Specifically, 1.26(a) is also proposed to be amended such that if a
party paying a fee or requesting a refund does not instruct that refunds
be credited to a deposit account, the Office will attempt to make any
refund by electronic funds transfer. If such party does not provide the
banking information necessary for making refunds by electronic funds
transfer, the Commissioner may either require such banking information
or use the banking information on the payment instrument to make a
refund. This provision will authorize the Office to: (1) Use the banking
information on the payment instrument (e.g., a personal check is
submitted to pay the fee) when making a refund due to an excess payment;
or (2) require such banking information in other situations (e.g., a
refund is requested or a money order or certified bank check is
submitted containing an excess payment). The purpose of this proposed
change to 1.26(a) is to encourage parties to submit the banking
information necessary for making refunds by electronic funds transfer
(if not on the payment instrument) up-front, and not to add a step
(requiring such banking information) to the refund process. If it is not
cost-effective to require the banking information necessary for making
refunds by electronic funds transfer, the Office may simply issue any
refund by treasury check. See 31 CFR 208.4(f).
Section 1.26(b) is proposed to be added to provide that any request for
refund must be filed within two years from the date the fee was paid,
except as otherwise provided in 1.26(b) or in 1.28(a). See the
discussion of proposed 1.22(c) concerning the date a fee is
considered paid.
Section 1.26(b) is also proposed to provide that if the Office charges a
deposit account by an amount other than an amount specifically indicated
in an authorization ( 1.25(b)), any request for refund based upon such
charge must be filed within two years from the date of the deposit
account statement indicating such charge, and that such request must be
accompanied by a copy of that deposit account statement. This provision
of 1.26(b) would apply, for example, in the following types of
situations: (1) A deposit account is charged for an extension of time as
a result of there being a prior general authorization in the application
( 1.136(a)(3)); or (2) a deposit account is charged for the
outstanding balance of a fee as a result of an insufficient fee being
submitted with an authorization to charge the deposit account for any
additional fees that are due. In these situations, the party providing
the authorization is not in a position to know the exact amount by which
the deposit account will be charged until the date of the deposit
account statement indicating the amount of the charge.
Finally, 1.26(b) is proposed to provide that the time periods set
forth in 1.26(b) are not extendable.
Section 1.27: The Office is considering simplifying applicant's request
for small entity status under 1.27. The currently used small entity
statement forms are proposed to be eliminated as they would no longer be
needed. Some material in 1.28 is proposed to be reorganized into
1.27.
Small entity status would be established at any time by a simple
assertion of entitlement to small entity status. The currently required
statements, which include a formalistic reference to 1.9, would no
longer be required. Payment of an exact small entity basic filing or
national fee would also be considered an assertion of small entity
status. This would be so even if the wrong exact basic filing or
national fee was selected. To establish small entity status after
payment of the basic filing fee as a non-small entity, a written
assertion of small entity status would be required to be submitted. The
parties who could assert small entity status would be liberalized to
include one of several inventors or a partial assignee.
Other clarifying changes are proposed to be made including a transfer of
material into 1.27 from 1.28 drawn towards: (1) Assertions in
related, continuing and reissue applications; (2) notification of loss
of entitlement to small entity status; and (3) fraud on the Office in
regard to establishing small entity status or paying small entity fees.
While there would be no change in the current requirement to make an
investigation in order to determine entitlement to small entity status,
a recitation would be added noting the need for a determination of
entitlement prior to an assertion of status; the Office would only be
changing the ease with which small entity status could be claimed once
it has been determined that a claim to such status is appropriate.
For additional proposed changes to small entity requirements see
1.9 and 1.28.
Problem and Background
Section 1.27 currently requires that a request for small entity
status be accompanied by submission of an appropriate statement that the
party seeking small entity status qualifies in accordance with 1.9.
Either a reference to 1.9 or a specific statement relating to the
provisions of 1.9 is mandatory. For a small business, the small
business must either state that exclusive rights remain with the small
business, or if not, identify the party to which some rights have been
transferred so that the party to which rights have been transferred can
submit its own small entity statement (current 1.27(c)(1)(iii)). This
can lead to the submission of multiple small entity statements for each
request for small entity status where rights in the invention are split.
The request for small entity status and reference/statement may be
submitted prior to paying, or, at the latest, at the time of paying, any
small entity fee. In part, to ensure that at least the reference to
1.9 is complied with, the Office has produced four types of small entity
statement forms (including ones for the inventors, small businesses and
non-profit organizations) that include the required reference to 1.9
and specific statements as to exclusive rights in the invention. Where
an application has not been assigned and there are multiple inventors,
each inventor must actually sign a small entity statement, the execution
of which must all be coordinated and submitted at the same time.
Similarly, coordination of execution and submission of statements is
needed where there is more than one assignee. Additionally, the
statement forms relating to small businesses and non-profit
organizations need to be signed by an appropriate official empowered to
act on behalf of the small business or non-profit organization. Refunds
of non-small entity fees can only be obtained if a refund is
specifically requested within two months of the payment of the full
(non-small entity) fee and is supported by all required small entity
statements. See current 1.28(a)(1). The current two-month refund
window under 1.28 is not extendable.
The rigid requirements of 1.27 and 1.28 have led to a substantial
number of problems. Applicants, particularly pro se applicants, do not
always recognize that a particular reference to 1.9 is required in
their request to establish small entity status. They believe that all
they have to do is pay the small entity fee and state that they are a
small entity. Further, the time required to ascertain who are the
appropriate officials to sign the statement and to have the statements
(referring to 1.9) signed and collected (where more than one is
necessary), results, in many instances, in having to pay the higher
non-small entity fees and then seek a refund. These situations result
in: (1) Small entity applicants also having to pay additional fees
(e.g., surcharges and extension(s) of time fees for the delayed
submission of the small entity statement form); (2) additional
correspondence with the office to perfect a claim for small entity
status; and (3) the filing of petitions with petition fees to revive
abandoned applications. This increases the pendency of the prosecution
of the application in the Office and, in some cases, results in loss of
patent term. For example, under current procedures, if a pro se
applicant files a new application with small entity fees but without a
small entity statement, the office mails a notice to the pro se
applicant requiring the full basic filing fee of a non-small entity.
Even if the applicant timely files a small entity statement, the
applicant must still timely pay the small entity surcharge for the
delayed submission of the small entity statement to avoid abandonment of
the application. A second example is a non-profit organization paying
the basic filing fee as a non-small entity because of difficulty in
obtaining the non-profit small entity statement form signed by an
appropriate official. In this situation, a refund pursuant to 1.26,
based on establishing status as a small entity, may only be obtained if
a statement under 1.27 and the request for a refund of the excess
amount are filed within the non-extendable two-month period from the
date of the timely payment of the full fee. A third example is an
application filed without the basic filing fee on behalf of a small
business by a practitioner who includes the standard authorization to
pay additional fees. The Office will immediately charge the non-small
entity basic filing fee without specific notification thereof at the
time of the charge. By the time the deposit account statement is
received and reviewed, the two-month period for refund may have expired.
Accordingly, a simpler procedure to establish small entity status would
reduce processing time within the Office (Patent Business Goal 1) and
would be a tremendous benefit to small entity applicants as it would
eliminate the time-consuming and aggravating processing requirements
that are mandated by the current rules. Thus, the proposed
simplification would help small entity applicants to receive patents
sooner with fewer expenditures in fees and resources and the office
could issue the patent with fewer resources (Patent Business Goals 4 and
5).
Assertion as to Entitlement to Small Entity Status; Assertion by Writing
The Office is proposing to allow small entity status to be
established by the submission of a simple written assertion of
entitlement to small entity status. The current formal requirements of
1.27, which include a reference to either 1.9, or to the exclusive
rights in the invention, would be eliminated.
The written assertion would not be required to be presented in any
particular form. Written assertions of small entity status or references
to small entity fees would be liberally interpreted to represent the
required assertion. The written assertion could be made in any paper
filed in or with the application and need be no more than a simple
sentence or a box checked on an application transmittal letter or reply
cover sheet. It is the intent of the Office to modify its application
transmittal forms to provide for such a check box. Accordingly, small
entity status could be established without submission of any of the
current small entity statement forms (PTO/SB/09-12) that embody and
comply with the current requirements of 1.27 and which are now used
to establish small entity status.
Assertion by Payment of Small Entity Basic Filing or National Fee
The payment of an exact small entity basic filing or national fee
will also be considered to be a sufficient assertion of entitlement to
small entity status. An applicant filing a patent application and paying
an exact small entity basic filing or national fee would automatically
establish small entity status for the application even without any
further written assertion of small entity status. This is so even if an
applicant were to inadvertently select the wrong type of small entity
basic filing or national fee for the application being filed. If small
entity status was not established when the basic filing fee was paid,
such as by payment of a large entity basic filing or national fee, a
later claim to small entity status would require a written assertion.
Payment of a small entity fee other than a small entity basic filing or
national fee (e.g., extension of time, or issue fee) without inclusion
of a written assertion would not be sufficient.
Even though applicants can assert small entity status by payment of an
exact small entity basic filing or national fee, the Office strongly
encourages applicants to file a written assertion of small entity
status. A written assertion would guarantee the applicant that the
application will have small entity status even if applicant fails to pay
the exact small entity basic filing or national fee. The limited
provision providing for small entity status by payment of an exact small
entity basic filing or national fee is only intended to act as a safety
net to avoid possible financial loss to inventors or small businesses
that can qualify for small entity status.
Caution: Even though small entity status would be accorded where the
wrong type of small entity basic filing fee or national fee were
selected but the exact amount of the fee were paid, applicant would
still need to pay the correct small entity amount for the basic filing
or national fee where selection of the wrong type of fee results in a
deficiency. While an accompanying general authorization to charge any
additional fees would suffice to pay the balance due of the proper small
entity basic filing or national fee, specific authorizations to charge
fees under 1.17 or extension of time fees would not suffice to pay
any balance due of the proper small entity basic filing or national fee
because they do not actually authorize payment of small entity amounts.
Examples: Applications under 35 U.S.C. 111: If an applicant were to file
a utility application under 35 U.S.C. 111 yet only pay the exact small
entity amount for a design application (currently the small entity
filing fees for utility and design applications are $380 and $155,
respectively), small entity status for the utility application would be
accorded. See the following examples:
(1) Where the utility application was filed inadvertently with the exact
small entity basic filing fee for a design application rather than for a
utility application and an authorization to charge the filing fee was
not present, the Office would accord small entity status and mail a
Notice to File Missing Parts of Application, requiring the $225
difference between the small entity utility application filing fee owed
and the small entity design application filing fee actually paid plus a
small entity surcharge (of $65) for the late submission of the correct
filing fee.
(2) Where the utility application was filed without any filing fee but
the $155 exact small entity filing fee for a design application was
inadvertently paid in response to a Notice to File Missing Parts of
Application, small entity status would be established even though the
correct small entity filing fee for a utility application was not fully
paid. While the Office will notify applicant of the remaining amount
due, the period for reply to pay the correct small entity utility basic
filing fee would, however, continue to run. Small entity extensions of
time under 1.136(a) would be needed for the later submission of the
$225 difference between the $380 small entity utility basic filing fee
owed and the $155 small entity design filing fee inadvertently paid. If
there was an authorization to charge a deposit account in the response
to the Notice, the $225 difference would have been charged along with
the small entity $65 surcharge and the period for response to the Notice
to File Missing Parts of Application would not continue to run.
Applications entering that national stage under 35 U.S.C. 371: Section
1.492(a) sets forth five (5) different basic national fee amounts which
apply to different situations. If an applicant pays a basic national fee
which is the exact small entity amount for one of the fees set forth in
1.492(a), but not the particular fee which applies to that
application, the applicant will be considered to have made an assertion
of small entity status. This is true whether the fee paid is higher or
lower than the actual fee required. See the following examples.
(1) An applicant pays $485 (the small entity amount due under
1.492(a)(3), where the United States was neither the International
Searching Authority (ISA) nor the International Preliminary Examining
Authority (IPEA) and the search report was not prepared by the European
Patent Office (EPO) or Japanese Patent Office (JPO)) when in fact the
required small entity fee is $420 under 1.492(a)(5), because the JPO
or EPO prepared the search report. The applicant will be considered to
have made the assertion of small entity status. The office will apply
$420 to the payment of the basic national fee and refund the overpayment
of $65.
(2) An applicant pays $420 (the small entity fee due under
1.492(a)(5) where the search report was prepared by the EPO or JPO). In
fact, the search report was prepared by the Australian Patent Office and
no preliminary examination fee was paid to the Patent and Trademark
Office. Thus, the required small entity fee is $485 under
1.492(a)(3). The applicant will be considered to have made the assertion
of small entity status. If the applicant has authorized payment of fee
deficiencies to a deposit account, the Office will charge the $65 to the
deposit account and apply it and the $420 to the basic national fee. If
there is no authorization or there are insufficient fees in the deposit
account, the basic national fee payment is insufficient. If the balance
is not provided before 20 or 30 months from the priority date has
expired, the application is abandoned.
If payment is attempted to be made of the proper type of basic filing or
national fee, but it is not the exact small entity fee required (an
incorrect fee amount is supplied) and a written assertion of small
entity status is not present, small entity status would not be accorded.
The Office would mail a notice of insufficient basic filing or national
fee with a surcharge due as in current practice if an authorization to
charge the basic filing or national fee were not present. The Office
would not consider a basic filing or national fee submitted in an amount
above the correct fee amount, but below the non-small entity fee amount,
as a request to establish small entity status unless an additional
written assertion is also present. Of course, the submission of a basic
filing or national fee below the correct fee amount would not serve to
establish small entity status.
Where an application is originally filed by a party, who is in fact a
small entity, with an authorization to charge fees (including basic
filing or national fees) and there is no indication (assertion) of
entitlement to small entity status present, that authorization would not
be sufficient to establish small entity status unless the authorization
was specifically directed to small entity basic filing or national fees.
The general authorization to charge fees would continue to be acted upon
immediately and the full (not small entity) basic filing or national
fees would be charged with applicant having three months to request a
refund by asserting entitlement to small entity status. This would be so
even if the application were a continuing application where small entity
status had been established in the prior application.
Parties Who Could Assert Entitlement to Small Entity Status by Writing
The parties who could submit a written assertion of entitlement to
small entity status would be any party permitted by Office regulations,
1.33(b), to file a paper in an application. This eliminates the
additional requirement of obtaining the signature of an appropriate
party other than the party prosecuting the application. By way of
example, in the case of three pro se inventors for a particular
application, the three inventors upon filing the application could
submit a written assertion of entitlement to small entity status and
thereby establish small entity status for the application. For small
business concerns and non-profit organizations, the practitioner could
supply the assertion rather than the current requirement for an
appropriate official of the organization to execute a small entity
statement form. In addition, a written assertion of entitlement to small
entity status would be able to be made by one of several inventors or a
partial assignee. Current practice does not require an assignee
asserting small entity status to submit a 3.73(b) certification, and
such certifications would not be required under the proposed revision
either for partial assignees or for an assignee ofthe entire right,
title, and interest.
Parties Who Could Assert Entitlement to Small Entity Status by Payment
of Basic Filing or National Fee
Where small entity status is sought by way of payment of the basic
filing or national fee, any party may submit payment, such as by check,
and small entity status would be accorded.
Inventors Asserting Small Entity Status
Any inventor would be permitted to submit a written assertion of
small entity status, including inventors who are not officially named of
record until an executed oath/declaration is submitted. See
1.41(a)(1). Where an application is filed without an executed
oath/declaration pursuant to 1.53(f), the Office will accept the
written assertion of an individual who has merely been identified as an
inventor on filing of the application (e.g., application transmittal
letter) as opposed to being named as an inventor. Sections 1.4(d)(2) and
10.18(b) are seen as sufficient basis to permit any individual to
provide a written assertion so long as the individual identifies himself
or herself as an inventor. Where a 1.63 oath or declaration is later
filed, any original written assertion as to small entity status will
remain unless changed by an appropriate party under 1.27(f)(2). Where
a later filed 1.63 oath or declaration sets forth an inventive entity
that does not include the person who initially was identified as an
inventor and who asserted small entity status, small entity status will
also remain. Where small entity status is asserted by payment of the
small entity basic filing, or national fee any party may submit such
fee, including an inventor who was not identified in the application
transmittal letter, or a third party.
Caution: The fact that certain parties can execute a written assertion
of entitlement to small entity status, such as one of several inventors,
or a partial assignee, does not entitle that written assertion to be
entered in the Official file record and become an effective paper unless
the person submitting the paper is authorized to do so under 1.33(b).
In other words, the fact that one of several inventors can sign a
written assertion of entitlement to small entity status does not also
imply that the same inventor can submit the paper to the Office and have
it entered of record.
The written assertion, even though effective once entered in the
Official file record, must still be submitted by a party entitled to
file a paper under 1.33(b). Payment of the small entity basic filing
or national stage fee would not be subject to such submission
requirement and any payment thereof would be accepted and treated as an
effective assertion of small entity status.
Policy Considerations
Office policy and procedures already permit establishment of small
entity status in certain applications through simplified procedures. For
example, small entity status may be established in a continuing or
reissue application simply by payment of the small entity basic filing
fee if the prior application/patent had small entity status. See current
1.28(a)(2). The instant concept of payment of the small entity basic
statutory filing fee to establish small entity status in a new
application is merely a logical extension of that practice.
There may be some concern that elimination of the small entity statement
forms will result in applicants who are not actually entitled to small
entity status requesting such status. On balance, it seems that more
errors occur where small entity applicants who are entitled to such
status run afoul of procedural hurdles created by the requirements of
1.27 than the requirements help to prevent status claims for those who
are not in fact entitled to such status.
Continued Obligations for Thorough Investigation of Small Entity Status
Applicants should not confuse the fact that the Office is making it
easier to qualify for small entity status with the need to do a complete
and thorough investigation before an assertion is made that they do, in
fact, qualify for small entity status. It should be clearly understood
that, even though it would be much easier to assert and thereby
establish small entity status, applicants would continue to need to make
a full and complete investigation of all facts and circumstances before
making a determination of actual entitlement to small entity status.
Where entitlement to small entity status is uncertain it should not be
claimed. See MPEP 509.03. The assertion of small entity status (even by
mere payment of the exact small entity basic filing fee) is not
appropriate until such an investigation has been completed. Thus, in the
previous example of the three pro se inventors, before one of the
inventors could pay the small entity basic filing or national fee to
establish small entity status, the single inventor asserting entitlement
to small entity status would need to check with the other two inventors
to determine whether small entity status was appropriate.
The intent of 1.27 is that the person making the assertion of
entitlement to small entity status is the person in a position to know
the facts about whether or not status as a small entity can be properly
established. That person, thus, has a duty to investigate the
circumstances surrounding entitlement to small entity status to the
fullest extent. Therefore, while the Office is interested in making it
easier to claim small entity status, it is important to note that small
entity status must not be claimed unless the person or persons can
unequivocally make the required self-certification. Section 1.27(g)
would recite current provisions in 1.28(d)(1) and (2) relating to
fraud practiced on the Office.
Consistent with 1.4(d)(2), the payment of a small entity basic filing
or national fee, would constitute a certification under 10.18(b).
Thus, a simple payment of the small entity basic filing or national fee,
without a specific written assertion, will activate the provisions of
1.4(d)(2) and, by that, invoke the self-certification requirement set
forth in 10.18(b), regardless of whether the party is a practitioner
or non-practitioner.
Clarification of Need for Investigation
Section 1.27 is proposed to be clarified (paragraph (e)) by
explicitly providing that a determination ``should'' be made of
entitlement to small entity status according to the requirement set
forth in 1.9 prior to asserting small entity status. The need for
such a determination of entitlement to small entity status prior to
assertion of small entity status is set forth in terms of that there
``should'' be such a determination, rather than there ``must'' be such a
determination. In view of the ease with which small entity status would
now be obtainable, it is deemed advisable to provide an explicit
direction that a determination of entitlement to small entity status
pursuant to 1.9 be made before its assertion. Consideration was given
to making the need for a determination a requirement rather than
advisory; however, the decision was made to make it advisory,
particularly in view of the following possible scenario: One of three
inventors submits a written assertion of entitlement to small entity
status without making any determination of entitlement to such status,
such as by checking with the other two inventors to see if they have
assigned any rights in the invention. Small entity status was proper at
the time asserted notwithstanding the lack of a proper determination. If
the determination is set forth as a requirement (``must''), the lack of
such a determination might act to cause an unduly harsh result where
small entity status was in fact appropriate and the failure to check
prior to assertion was innocent. It is recognized that the use of
``should'' may cause concern that a cavalier approach to asserting
entitlement to small entity status may be taken by encouraging some who
are asserting status not to make a complete determination as the
determination is not set forth as being mandatory. On balance, it is
thought that the use of ``should'' would lead to more equitable results.
The danger of encouraging the assertion of small entity status without a
prior determination as to qualification for small entity status is
thought to be small, because, should status turn out to be improper, the
lack of a prior determination may result in a failure to meet the lack
of deceptive intent requirements under 1.27(g) or 1.28(c). The
Office has noted that any attempt to improperly establish status as a
small entity will be viewed as a serious matter. See MPEP 509.03.
Removal of Status
Section 1.27 is also proposed to be clarified (paragraph (f)(2)) that
once small entity status is established in an application, any change in
status from small to large, would also require a specific written
assertion to that extent, rather than only payment of a large entity
fee, similar to current practice. For example, when paying the issue fee
in an application that has previously been accorded small entity status
and the required new determination of continued entitlement to small
entity status reveals that status has been lost, applicant should not
just simply pay the large issue fee or cross out the recitation of small
entity status on the returned copy of the notice of allowance
(PTOL-85(b)), but submit a separate paper requesting removal of small
entity status pursuant to proposed 1.27(f)(2).
Correction of any inadvertent and incorrect establishment of small
entity status would be by way of a paper under proposed 1.28(c) as in
current practice.
Response to Comments
Many comments supported the proposal without qualification. Only two,
however, explicitly mentioned the payment option for obtaining small
entity status with one recognizing that any error is now easier to
correct under 1.28(c). Others would eliminate the possibility of
obtaining small entity status based on payment of the exact small entity
basic filing (or national fee) due to possible error in paying an
unintended small entity basic filing (or national fee) and being
accorded an unwanted small entity status. There was only one total
opposition to the proposal as a ``bad'' idea.
Comment: Several comments supported the proposal as a positive change
that is both helpful to applicants and attorneys and one that will
reduce the cost of establishing small entity status, particularly where
there are multiple forms required due to joint ownership or licensing of
multiple rights. It was noted that the proposal eliminates the
time-consuming requirement for obtaining a signature of a person, such
as an officer of the company, who may not have been involved in the
application drafting process. It was also stated that the need to
withhold the filing fee on filing an original application would be
eliminated where the current small entity statement cannot be signed in
time.
Response: The comments were adopted. The proposal from the Advance
Notice is being carried forward in the instant notice. The particular
parties who may assert entitlement to small entity status is being
further liberalized over the Advance Notice to include only one of the
inventors or a partial assignee.
Comment: One individual opposed the proposal because the submission of a
paper is the only effective way an attorney can be certain that a client
is complying with the requirements for small entity status. Eliminating
the form removes the incentive of the client to provide the attorney
with needed information, particularly with respect to foreign clients.
Response: A copy of 1.9 and 1.27 can be supplied to a client as
easily as the form and should be just as effective with foreign clients.
It is not seen that the requirement of signing the form would be a more
certain means that compliance exists than if the client would have to
state to the attorney, either orally or in a letter, that the client
complies with the requirements for asserting entitlement to small entity
status. The form itself does not provide the underlying factual basis
for entitlement to small entity status. It merely recites the
requirement of 1.9 and that the party executing it seeks small entity
status. The attorney is not now required to confirm that a client is in
compliance once the form is signed by the client and would not be
required to make such confirmation under the proposal. It would continue
to be up to the client to determine whether it wishes to assume whatever
risk there may be should it decide to do the small entity determination
by itself rather than rely on the attorney for aid.
Comment: A few comments would eliminate the option of asserting small
entity status by payment of the basic filing (or national fee) due to
possible errors in fee payments thereby obtaining unwanted small entity
status. One comment recognized that the Office's adoption in the last
rulemaking of a straightforward approach to correction under 1.28(c)
would make correction of improper status for good faith errors a simple
procedure.
Response: The comment seeking elimination of the payment option is not
adopted. The comment noting the previous easing of correction for good
faith errors so that the possibility of inadvertent errors should not be
a bar to the payment option is adopted. It is expected that this would
occur very infrequently if at all in that the exact small entity amount
must be submitted. Only errors in amounts paid where the error was the
exact small entity amount for the basic filing (or national fee) would
trigger small entity status. In view of the continued need for an
affirmative determination of entitlement to small entity status to be
made, the error would mostly occur by a misreading of a fee chart. Such
type of error if it inadvertently leads to the establishment of small
entity status would be easily correctable by the current 1.28(c).
Comment: Some comments sought to ensure that the written assertion would
be easy to make by adding a check box to provide for an assertion on:
Office forms, the 1.63 declaration, on the application, or on the
transmittal sheet.
Response: The comments are adopted to the extent that this is an
implementation issue to be addressed when a final rule is issued. The
Office intends at this time to at least supply a check box on its
application transmittal forms.
Paragraph by Paragraph Analysis
Section 1.27 is proposed to be amended in its title to recognize anew
means of establishing small entity status by replacing ``statement''
with ``assertion,'' to indicate that an assertion of small entity status
would permit the payment of small entity fees, and to reflect transfer
of subject matter from 1.28 relating to determination of entitlement
to and notification of loss of entitlement to small entity status, and
fraud on the Office.
Paragraphs (a) through (d) of 1.27 is proposed to be reformatted and
amended to recite ``assertion'' as a new means for establishing small
entity status to replace ``statement'', and new paragraphs (e), (f)(1)
and (f)(2), and (g) are proposed to be added.
Paragraph (b) of 1.27 is proposed to be reformatted to add paragraphs
(b)(1) through (b)(4) of 1.27. Paragraph (b) (1) of 1.27 would
permit assertion of small entity status by a writing that is clearly
identifiable as present ((b)(1)(i)), signed ((b)(1)(ii)), and convey the
concept of small entity status without the need for specific words but
with a clear indication of an intent to assert entitlement to small
entity status ((b)(1)(iii)). Paragraph (b)(2) of 1.27 would make
submission of a written assertion to obtain small entity status easier
in view of increased categories of parties who could submit such a
paper. The parties who could sign the written assertion are identified
as: one of the parties who can currently submit a paper under 1.33(b)
((b)(2)(i) of 1.27), at least one of the inventors ((b)(2)(ii) of
1.27) rather than all the inventors (applicants) as required by
1.33(b)(4) for other types of papers, or a partial assignee ((b)(2)(iii)
of 1.27) rather than all the partial assignees and any applicant
retaining an interest as required by 1.33(b)(3) for other types of
papers. A 3.73(b) certification would not be required for an assignee
under either paragraphs (b)(2)(i) or (iii). Paragraph (b)(3) of 1.27
would permit the payment, by any party, of an exact amount of one of the
small entity basic filing or national fees set forth in 1.16(a), (f),
(g), (h), or (k), or 1.492(a)(1) through (a)(5) to be treated as a
written assertion of entitlement to small entity status even where an
incorrect type of basic filing or national fee is inadvertently selected
in error. Paragraph (b)(3)(i) would provide that where small entity
status was accorded based on the payment of a wrong type of small entity
basic filing or national fee, the correct small entity amount would
still be owed. Paragraph (b)(3)(ii) would provide that payment of a
small entity fee in its exact amount for a fee other than what is
provided for in paragraph (b)(3) would not be sufficient to establish
small entity status absent a concomitant written assertion of
entitlement to small entity status. After a basic filing or national fee
is paid as a large entity, a refund under 1.28(a) of the large entity
portion can only be obtained by establishing small entity status by a
written assertion and not by paying a second basic filing or national
fee in a small entity amount. Payment of a large entity basic filing or
national fee precludes paying a second basic filing or national fee in a
small entity amount to establish small entity status. Paragraph (b)(4)
of 1.27 recites material transferred from current 1.28(a)(2).
Paragraph (c) of 1.27 is proposed to be amended to provide that fees
other than the basic filing and national fees can only be paid in small
entity amounts if submitted with or subsequent to a written assertion of
entitlement to small entity status. The paragraph would clarify that an
exception exists under 1.28(a) for refunds of the large entity
portion of a fee within three months of payment thereof if the refund
request is accompanied by a written assertion of entitlement to small
entity status.
Paragraph (d)(1) of 1.27 is proposed to be amended to reference
1.28(b) as the means of changing small entity status. It would be
clarified that where rights in an invention are assigned, or there is an
obligation to assign, to a small entity subsequent to an assertion of
entitlement to small entity status, a second assertion is not required.
Paragraph (d)(2) would clarify that once small entity status is
withdrawn a new written assertion would be required to again obtain
small entity status.
Paragraph (e) of 1.27 is proposed to be added to clarify the need to
do a determination of entitlement to small entity status prior to
asserting small entity status, and that the Office generally does not
question assertions of entitlement to small entity status.
Paragraph (f)(1) of 1.27 is proposed to be added to contain material
transferred from current 1.28. Paragraph (f)(2) is proposed to be
added to revise the current reference to the party who can sign a
notification of loss of entitlement to small entity status to require a
party identified in 1.33(b).
Paragraph (g) of 1.27 is proposed to be added to contain material
transferred from paragraphs (d)(1) and (d)(2) of current 1.28
relating to fraud attempted or committed on the Office in regard to
paying small entity fees.
Section 1.28: Section 1.28 is proposed to be amended to be entirely
reformatted with some material transferred to 1.27.
Section 1.28(a) is proposed to be amended to allow a three-month period
(presently a two-month period) for refunds based on later establishment
of small entity status. See further discussion in 1.28(b)(1).
Section 1.28(b)(1) is proposed to be amended to refer to 1.22(c).
Section 1.22(c) sets forth that the filing date for an authorization to
charge fees starts the period for refunds under 1.28(a). The current
time period for a refund request is two months from payment of the full
fee and the date of payment for refund purposes can vary depending on
the means the applicant used to pay the required fee. For example, if
the applicant paid the required fee by check, the date of payment is the
date on which the fee paper, including the check, was filed in the
Office. If the applicant authorized a charge to a deposit account,
however, the date of payment is the date the Office debited the deposit
account. In view of the proposed change in practice under 1.22(c)
and 1.28(b)(1) to accord the same date of payment for checks and
authorizations to charge deposit accounts, the refund period would be
extended to three months in order to in-part offset any shortening of
the refund time period that may result in starting the time period from
the filing date of the fee paper instead of the debit date for an
authorization to charge a deposit account. Additionally, in view of
changes in practice under 1.27 to ease the claiming of small entity
status, the need for refunds should diminish, and the different payment
date of an authorization to charge a deposit account for small entity
refund purposes should not cause much inconvenience to applicants.
Section 1.28(b)(2) is proposed to be amended to state that the
deficiency amount owed under 1.28(c) is calculated by using the date
on which the deficiency was paid in full.
Section 1.28(c) is proposed to be amended to require that deficiency
payments must be submitted separately for each file ( 1.28(c)(1)) and
must include the itemization of the deficiency payment by identifying:
type of fee along with the current fee amount ( 1.28(c)(2)(ii)(A)),
the small entity amount paid and when ( 1.28 (c)(2)((ii)(B)), the
deficiency owed for each individual fee paid in error (
1.28(c)(2)(ii)(C)), the total deficiency payment owed (
1.28(c)(2)(ii)(D)), and that any failure to comply with the separate
payment and itemization requirements would allow the Office at its
option to charge a processing fee or set a non-extendable one month
period for compliance to avoid return of the paper ( 1.28(c)(3)).
Paragraph by Paragraph Analysis
The title of 1.28 is proposed to be revised to focus on refunds
and on how errors in status are excused in view of transfer of material
to 1.27.
Paragraphs (a)-(c) of 1.28 are proposed to be reformatted.
Paragraph (a)(1) of 1.28 is proposed to be amended as paragraph (a).
Paragraph (a) of 1.28 is proposed to be amended to clarify that the
period for a refund runs from payment of the ``full fee,'' and that it
is the payment of the full fee that is considered the significant event
relative to establishing status for a particular fee. Additionally,
paragraph (a) would amend the time period for requesting a refund based
upon later establishment of small entity status. The proposed time
period would be three months measured from the filing date of the fee
paper.
Paragraph (a)(2) of 1.28 is proposed to be amended to have some
subject matter transferred to 1.27(b)(4). The next to last sentence,
relating to filing a continuing or reissue application and referencing a
small entity statement in the prior application or patent, would be
deleted as unnecessary. The currently required reference to status in
the prior application or patent would be replaced by the equally easily
written assertion of 1.27(b)(1). Written references to small entity
status in a prior application, including submission of a copy of the
small entity statement in a prior application, submitted in a continuing
application subsequent to the effective date of any final rule, would be
liberally construed under the proposed 1.27(b)(1)(iii). Similarly,
the last sentence of current paragraph (a)(2) would be deleted as the
payment option for establishing small entity status in continuing or
reissue applications has been expanded in 1.27(b)(3) to include all
applications.
Caution: Although the Office intends to liberally construe what is
deemed to be an assertion of small entity status, the concept of
entitlement must be clearly conveyed.
Example: A prior application has been accorded small entity status. A
continued prosecution application (CPA) under 1.53(d) is filed with a
general authorization to charge fees that does not state that the fees
to be charged are small entity fees. Even though the CPA contains the
same application number as its prior application (and the small entity
statement), it would not be accorded small entity status and large
entity filing fees would be immediately charged. This would be so
because a new determination of entitlement to small entity status must
be made upon filing of a new application, such as a CPA. Accordingly, in
filing the CPA there must be some affirmative act to indicate that the
determination has been done anew and small entity status is still
appropriate. Where a copy of the small entity statement from the prior
application, or a written assertion in the CPA application transmittal
letter, or an authorization to charge small entity fees were present,
the result would be reversed and small entity status would be accorded
the CPA application on filing.
Paragraph (a)(3) of 1.28 is proposed to be amended to have its
subject matter transferred to 1.27(d)(1).
Paragraph (b) of 1.28 is proposed to be amended to have its subject
matter transferred to 1.27(f)(1) and (2). New paragraphs (b)(1) and
(b)(2) are proposed to be added. Paragraph (b)(1) of 1.28 would refer
to 1.22(c) to define the date a fee is paid for the purpose of
starting the three-month period for refund. Current practice for
authorizations to charge deposit accounts is to give benefit of the date
that the deposit account is actually debited by the Office, which is a
later time than when the paper authorizing charge of the fee to a
deposit account is filed with the Office. Current practice would
therefore be changed so that it is the date the paper is filed, not the
date of debit of the fee, that would start the three-month refund
period. Paragraph (b)(2) of 1.28 would refer to 1.22(c) to define
the date when a deficiency payment is paid in full, which is the date
that determines the amount of deficiency that is due.
Example: A small entity issue fee has been paid in error in January and
a paper under 1.28(c) was submitted the following June with the
deficiency payment. The deficiency payment of the issue fee was
incorrectly determined so that the full amount owed (for the issue fee)
was not submitted in June. If the mistake in the June payment is not
discovered until the following November, the extra amount owed must be
recalculated to take into account any October 1 increase in the issue
fee.
Paragraph (c) of 1.28 is proposed to be amended to recite that
separate submissions, including separate payments and itemizations, are
required for any deficiency payment. Paragraph (c)(1) would require that
a deficiency paper/submission be limited to one application or patent
file. Where, for example, the same set of facts has caused errors in
payment in more than one application and/or patent file, a separate
paper would need to be submitted in each file for which an error is to
be excused. Paragraph (c)(2) would now require that for each fee that
was erroneously paid in error the following itemization be provided: The
particular fee (e.g., basic filing fee, extension of time fee)
(paragraph (c)(2)(ii)((A)), the small entity fee amount actually paid
and when (for example, distinguishing between two one-month extension
of time fees erroneously paid on two different dates) (paragraph
(c)(2)(ii)(B)), the actual deficiency owed for each fee previously paid
in error (paragraph (c)(2)(ii)(C)), and the total deficiency owed that
is the sum of the individual deficiencies owed (paragraph
(c)(2)(ii)(D)). Paragraph (c)(3) would address the failure to comply
with the separate submission, including separate payment and itemization
requirements of paragraph (c)(1) and (2) of this section. Paragraph
(c)(3), upon failure to comply, would permit the Office at its option
either to charge a processing fee ( 1.17(i) would be suitably amended)
to process the paper or require compliance within a one-month
non-extendable time period to avoid return of the paper.
Paragraphs (d) (1) and (2) of 1.28, are proposed to be amended to
have the material relating to fraud attempted or committed on the Office
as to paying of small entity fees, transferred to 1.27(g). New
paragraph (d) of 1.28 is proposed to be added to clarify that any
paper submitted under paragraph (c) of 1.28 would also be treated as
a notification of loss of small entity status under paragraph (f)(2) of
1.27.
Section 1.33: Paragraph (a) of 1.33 would be reformatted to create
additional paragraphs (a)(1) and (a)(2) to separately identify the
parties who can change a correspondence address depending upon the
presence or absence of a 1.63 oath/declaration. The revision is
intended to make clear what may be a confusing practice to applicants as
to which parties can set forth or change a correspondence address when
an application does not yet have a 1.63 oath or declaration by any of
the inventors. See 1.14(d)(4) for a similar change regarding status
and access information. References to a 1.63 oath/declaration are
intended to mean an executed oath/declaration by any inventor, but not
necessarily all the inventors.
Paragraph (a) of 1.33 is proposed to be amended to provide that in a
patent application the applicant must, either in an application data
sheet ( 1.76) or in a clearly identifiable manner elsewhere in any
papers submitted with an application filing, specify a correspondence
address to which the Office will send notices, letters and other
communications in or about the application. It is now stated that where
more than one correspondence address is specified, the Office would
determine which one to establish as the correspondence address. This is
intended to cover the situation where an unexecuted application is
submitted with conflicting correspondence addresses in the application
transmittal letter and in an unexecuted oath/declaration, or other
similar situations.
Paragraph (a) of 1.33 would request the submission of a daytime
telephone number of the party to whom correspondence is to be addressed.
While business is to be conducted on the written record, 1.2, a
daytime telephone number would be useful in initiating contact that
could later be reduced to a writing. The phone number would be
changeable by any party who could change the correspondence address.
Paragraph (a)(1) of 1.33 would provide that any party filing the
application and setting forth a correspondence address could later
change the correspondence address provided that a 1.63
oath/declaration by any of the inventors has not been submitted. The
parties who may so change the correspondence address would include only
the one inventor filing the application even if more than one inventor
was identified on the application transmittal letter. If two of three
inventors filed the application, the two inventors filing the
application would be needed to change the correspondence address.
Additionally, any registered practitioner named in the application
transmittal letter, or a person who has the authority to act on behalf
of the party that will be the assignee (if the application was filed by
the party that will be the assignee), could change the correspondence
address. A registered practitioner named in a letterhead would not be
sufficient, but rather a clear identification of the individual as being
a representative would be required. The intent is to permit a company
(to whom the invention has been assigned, or to whom there is an
obligation to assign the invention) who files an application, to
designate the correspondence address, and to change the correspondence
address, until such time as a (first) 1.63 oath/declaration is filed.
The mere filing of a 1.63 oath/declaration, that does not include a
correspondence address, including when the company is only a potential
partial assignee would not affect any correspondence address previously
established on filing of the application, or changed per paragraph
(a)(1) of this section. The expression ``party that will be the
assignee'' rather than assignee is used in that until a declaration is
submitted, inventors have only been identified and any attempted
assignment, or partial assignment, cannot operate for Office purposes
until the declaration is supplied. Hence, the mere identification of a
party as a party that will be an assignee or assignee would be
sufficient for it to change the correspondence address without resort to
3.73(b).
Paragraph (a)(2) of 1.33 would retain the current requirements for
changing a correspondence address when a 1.63 oath/declaration by any
of the inventors has been filed. Where a correspondence address was set
forth or changed pursuant to paragraph (a)(1) (prior to the filing of a
1.63 oath or declaration), that correspondence address remains in
effect upon filing of a 1.63 declaration and can then only be changed
pursuant to paragraph (a)(2).
Paragraph (b) of 1.33 would be simplified to make it easier to
understand who are appropriate parties to file papers, particularly in
view of the proposed change under 3.71(b).
Paragraph (b)(3) of 1.33 is proposed to be amended to add a reference
to 3.71.
Section 1.41: Section 1.41(a)(1) is proposed to be amended to indicate
that a paper including the processing fee set forth in 1.17(i) is
required for supplying or changing the name(s) of the inventor(s) where
an oath or declaration prescribed in 1.63 is not filed during
pendency of a nonprovisional application, rather than a petition
including a petition fee, for consistency with the proposed amendment to
1.17(i). Section 1.41(a)(2) is proposed to be amended to indicate
that a paper including the processing fee set forth in 1.17(q) is
required for supplying or changing the name(s) of the inventor(s) where
a cover sheet prescribed by 1.53(c)(1) is not filed during the
pendency of a provisional application, rather than a petition including
a petition fee, for consistency with the proposed amendment to
1.17(q). Section 1.41(a)(3) is proposed to be amended to delete the
language concerning an alphanumeric identifier, and to provide that the
name, residence, and citizenship of each person believed to be an actual
inventor should be provided when the application papers pursuant to
1.53(b) are filed without an oath or declaration or application papers
pursuant to 1.53(c) are filed without a cover sheet. Section
1.41(a)(4) is proposed to be added to set forth that the inventors who
submitted an application under 1.494 or 1.495 are the inventors in
the international application designating the United States.
Section 1.44: Section 1.44 is proposed to be removed and reserved to
eliminate the requirement that proof of the power or authority of the
legal representative be recorded in the Office or filed in an
application under 1.42 or 1.43.
Section 1.47: Section 1.47 is proposed to be amended to refer to ``the
fee set forth in 1.17(h)'' for consistency with the proposed
amendment to 1.17(h) and (i). See discussion of the proposed
amendment to 1.17. Section 1.47 is also proposed to be amended to add
a new paragraph (c) providing that the Office will send notice of the
filing of the application to all inventors who have not joined in the
application at the address(es) provided in the petition under 1.47,
and will publish notice of the filing of the application in the Official
Gazette. This provision is currently included in each of 1.47(a) and
1.47(b). Section 1.47(c) is also proposed to provide that the Office
may dispense with such notice provisions in a continuation or divisional
application where notice regarding the filing of the prior application
has already been sent to the nonsigning inventor(s). The patent statute
gives the Office great latitude as to the notice that must be given to
an inventor who has not joined in an application for patent. See 35
U.S.C. 116, A2 (``after such notice to the omitted inventor as [the
Commissioner] prescribes''), and 118 (upon such notice to [the inventor]
as the Commissioner deems sufficient''). Providing notice to a
non-joined inventor in a continuation or divisional application places a
significant burden on the Office, especially when such continuation or
divisional application is filed using a copy of the oath or declaration
from a prior application under 1.63(d). In addition, providing
additional notice to the non-joined inventor in the continuation or
divisional application provides little (if any) actual benefit to the
non-joined inventor, as identical notice was previously given during the
processing of the prior application. Thus, the Office considers it
appropriate to dispense with notice under 1.47 in situations
(continuations or divisionals of an application accorded status under
1.47) in which the non-joined inventor was previously given such notice
in a prior application.
Section 1.48: Section 1.48 is proposed to be amended to have the title
revised to reference the statutory basis for the rule, 35 U.S.C. 116.
Section 1.48 paragraphs (a) through (c) are proposed to be amended to:
delete the recitation of ``other than a reissue application'' as such
words are unnecessary in view of the indication in the title of the
section that the section does not apply to reissue applications and the
revision to paragraph (a) (discussed below), to change ``When'' to
``If,'' and to add ``nonprovisional'' before ``application'' where it
does not already appear.
Sections 1.48 paragraphs (a)(1) through (e)(1) would be revised to
replace the reference to a ``petition'' with a reference to a
``request.'' What is meant to be encompassed by the term ``petition,''
as it is currently used in the section, may be better defined by the
term ``request.'' The presence of ``petition'' currently in the section
is misleading to the extent that it may indicate to applicants that
papers under this section have to be filed with the Office of Petitions
when in fact amendments to correct the inventorship under 1.48 are to
be decided by the primary examiners in the Technology Centers and should
be submitted there. See MPEP 1002.02(e). The requirements for a
statement currently in 1.48 paragraphs (a)(1), (c)(1), and (e)(1)
would be placed in 1.48 paragraphs (a)(2), (c)(2), and (e)(2) and
corresponding changes made in subsequent paragraphs.
Section 1.48 paragraphs (b) and (d) are proposed to be revised to
indicate that a request to correct the inventorship there under must be
signed by a party as set forth in 1.33(b) (which would enable a
practitioner alone to sign all the needed papers). The inventors,
whether being added, deleted or retained, are not required to
participate in a correction under these paragraphs. Thus, the
inventor(s) to be deleted pursuant to paragraph (b) in a nonprovisional
application, or added pursuant to paragraph (d) in a provisional
application, and those inventors that are retained in either situation,
are not required to participate in the inventorship correction, such as
by signing a statement of facts, or a new oath or declaration under
1.63.
Section 1.48 paragraphs (a) through (e) are proposed to be revised to
define the fee required as a ``processing'' fee, to delete the reference
to a ``petition,'' and to indicate that amendment of the application to
correct the inventorship would require the filing of a request to
correct the inventorship along with other items, as set forth in the
respective paragraphs of this section. The latter change is not one of
substance but a clarification that the amendment requirement of the
statute, 35 U.S.C. 116, merely refers to the change in Office records
(face of the application file wrapper corrected, notation on a
previously submitted 1.63 oath/declaration, change in Patent
Application Location and Monitoring (PALM) data, and a corrected filing
receipt issued) that would be made upon the grant of a 1.48 request.
Thus, amendment of the inventorship in an application is not made as an
amendment under 1.121. Where there is a need to make an actual
1.121(a)(1) amendment, such as when a cover page of the specification
recites the inventive entity, that should also be submitted. In the
absence of such an amendment, the Office may, at its option, correct the
inventor's names on the cover sheet or in the specification. Where an
application needs correction of inventorship under 1.48 and a paper
is submitted with a title that does not set forth the paper as a request
under 1.48, but it is clear from the papers submitted that an
inventorship correction is desired, a request for a correction of
inventorship under 1.48 will be inferred from the papers submitted
and will be treated under 1.48.
A request for a corrected filing receipt correcting a typing or office
error in the names of the inventors will not ordinarily be treated under
1.48. Any request to correct inventorship should be presented as a
separate paper. For example, placing a request under 1.48(b) to
correct the inventorship in the remarks section of an amendment may
cause the Office to overlook the request and not act on it.
Paragraph (f)(1) of 1.48 is proposed to be clarified to recite that
its provision for changing the inventorship only applies if an oath or
declaration under 1.63 has not been submitted by any of the
inventors, and that submission of an oath or declaration under 1.63
by any of the inventors is sufficient to correct an earlier
identification of the inventorship.
Example 1: An unexecuted application is filed identifying A, B, and C as
the inventors. A 1.63 declaration is also submitted signed only by A
and naming A, B, and C as the inventors. To complete the application (
1.53(f)) a 1.63 oath or declaration by B and C is needed. In
attempting to reply to a Notice to File Missing Parts of Application
requiring the missing oath or declaration by B and C it is discovered
that D is also an inventor. A declaration by A, B, C, and D if submitted
without a petition under 1.48(a) to correct the inventorship to A-D
from A-C will not be accepted as a reply to the Notice to File Missing
Parts of Application.
Thus, it should be clear that a first oath or declaration under 1.63
completed by less than all the inventors initially identified, when the
oath or declaration is submitted when the application is filed (or
after), will under 1.48(f)(1) lock in the inventorship, and the later
filing of another declaration by a different but complete inventive
entity will not be effective under 1.48(f)(1) to correct the
inventorship.
Example 2: An application is filed identifying A, B, and C as the
inventors in the application transmittal letter, and a 1.63
declaration is concomitantly submitted only by A naming only A as the
sole inventor. The inventorship of the application is A (because of the
declaration of A). A later submitted 1.63 declaration by A, B, and C
would require a petition under 1.48(a) to correct the inventorship to
A, B, and C before the declaration by A, B, and C could be accepted.
Paragraph (f)(1) of 1.48 is proposed to be amended toreference
1.497(d) for submission of an executed oath or declaration naming an
inventive entity different from the inventive entity set forth in the
international stage when entering the national stage under 35 U.S.C. 371
and 1.494 or 1.495.
Section 1.48(h) is proposed to be added to indicate that the provisions
of this section do not apply to reissue applications, and referencing
1.171 and 1.175 for correction of inventorship in reissue applications.
Section 1.48(i) is proposed to be added to reference 1.324 and
1.634 for corrections of inventorship in patents and interference
proceedings, respectively.
Section 1.48 paragraphs (a) through (i) are proposed to have titles
added to make locating the appropriate paragraph easier.
Section 1.51: Section 1.51(b) is proposed to be amended to include a
reference to 1.53(d), as a proper continued prosecution application
under 1.53(d) in which the basic filing fee has been paid is a
complete application under 1.51(b).
Section 1.52: Section 1.52(a) and (b) are proposed to be amended to
clarify the paper standard requirements for papers submitted as part of
the record of a patent application. Section 1.52(a) sets forth the paper
standard requirements for all papers which are to become a part of the
permanent records of the Office, and 1.52(b) sets forth the paper
standard requirements for the application (specification, including the
claims, drawings, and oath or declaration) and any amendments or
corrections to the application. Papers making up the application or an
amendment or correction to the application must meet the requirements of
1.52 (a) and (b), but papers submitted for the record that do not
make up the application (e.g., a declaration under 1.132) need not
meet the requirements of 1.52(b).
The Office is proposing in 1.52(b)(6) an optional procedure for
numbering the paragraphs of the specification, but not including the
claims or the abstract. Although not required to do so, applicants would
be strongly encouraged to present, at the time of filing, each paragraph
of the specification as individually and consecutively numbered. The
presentation of numbered paragraphs at the time of filing would
facilitate the entry of amendments (in compliance with proposed 1.121)
during the prosecution of the application. If the paragraphs of the
specification are not numbered at the time of filing, applicants would
be urged, when the first response to an Office action is submitted, to
supply a substitute specification including numbered paragraphs,
consistent with the requirement of 1.121 for amending the
specification. Thereafter, amendments would be made through the use of
numbered paragraph replacement.
The proposal to include paragraph numbering is to provide a consistent
and uniform basis for the amendment practice being proposed in 1.121
and as an aid to transitioning into total electronic filing. The
proposed rule language establishes a procedure for numbering the
paragraphs of the specification at the time of filing. This procedure
would facilitate the entry of amendments by providing a uniform method
for identifying paragraphs in the specification, thus overcoming any
differences created by word processor formatting and pagination
variations. Concurrently proposed changes to 1.121 for amendment
practice would additionally require the submission of clean copies of
numbered replacement paragraphs, which would eliminate much of the red
ink associated with hand entry of amendments and expedite the Optical
Character Recognition (OCR) scanning and reading employed in the patent
printing process, ultimately resulting in patents containing fewer errors.
The Office will neither number the paragraphs or sections of the
specification, nor accept any instructions from applicants to do the
same.
The proposed procedure for paragraph numbering, in the interest ofu
niformity, encourages applicants to use four digit Arabic numerals
enclosed within square brackets and including leading zeroes as the
first element of the paragraph. The numbers and brackets should be
highlighted in bold (e.g., [0001], [0002]), and should appear as the
first part of the paragraph immediately to the right of the left margin.
Approximately four character spaces should follow the bracketed number
before the beginning of the actual text of the paragraph. Paragraph (or
section) headers, such as ``Description of the Invention'' or ``Example
3,'' are not considered part of any paragraph and should not be
numbered. Nontext elements, such as tables, mathematical formulae, etc.,
are considered part of the paragraph around or above the element, and
should not be numbered separately. All portions of any nontext elements
should be kept from extending to the left margin.
Response to Comments: Although paragraph numbering (as it appears in
proposed 1.52) was not an independent topic in the Advance Notice,
the proposal did appear in conjunction with the replacement paragraph
concept as part of Topic 13. While there was some opposition to
paragraph numbering in the comments received relative to Topic 13 as
being burdensome and inconsistent with the requirements of other
countries, the Office proposes to move forward with this concept as the
most effective plan currently under consideration for identifying
paragraphs of the specification. The JPO and EPO have already begun to
use paragraph numbering in their application and publication processing.
Some of the comments received in response to Topic 13 suggested
identification of paragraphs by page and line number. Inasmuch as the
Office proposal must be consistent with future electronic requirements,
this suggestion of identification by page and line number could not be
adopted in that fixed pages do not exist in documents created on a
computer. Page and line numbering are affected by font size, line
spacing and formatting and can vary between different hardware and
software components. Once each paragraph has been individually
identified and tagged with a number, however, all future processing of
the application, whether by paper or electronic version, may be done
uniformly and accurately by both the Office and the applicant.
Section 1.52(b)(7) is proposed to be added to provide that if papers
submitted as part of the application do not comply with 1.52 (b)(1)
through (b)(5), the Office may require the applicant to provide
substitute papers that comply with 1.52(b)(1) through (b)(5), or the
Office may convert the papers submitted by applicant into papers that do
comply with 1.52(b)(1) through (b)(5) and charge the applicant for
the costs incurred by the Office in doing so ( 1.21(j)).
Section 1.52(c) is proposed to be amended to provide that: (1)
Alterations to the application papers must (rather than ``should'') be
made before the oath or declaration is signed; (2) a substitute
specification ( 1.125) is required if the application papers do not
comply with 1.52 (a) and (b) due to interlineations, erasures,
cancellations or other alterations of the application papers; and (3) if
an oath or declaration is a copy of the oath or declaration from a prior
application, the application for which such copy is submitted may
contain alterations that do not introduce matter that would have been
new matter in the prior application.
Section 1.52(d) is proposed to be amended to provide separately for
nonprovisional applications and provisional applications filed in a
language other than English. Section 1.52(d)(1) is proposed to be added
to provide that: (1) If a nonprovisional application is filed in a
language other than English, an English language translation of the
non-English-language application, a statement that the translation is
accurate, and the processing fee set forth in 1.17(i) are required;
and (2) if these items are not filed with the application, applicant
will be notified and given a period of time within which they must be
filed in order to avoid abandonment. Section 1.52(d)(2) is proposed to
be added to provide that: (1) If a provisional application is filed in a
language other than English, an English language translation of the
non-English-language provisional application will not be required in the
provisional application; but (2) if a nonprovisional application claims
the benefit of such provisional application, an English-language
translation of the non-English-language provisional application and a
statement that the translation is accurate must be supplied if the
nonprovisional application is involved in an interference ( 1.630), or
when specifically required by the examiner.
Section 1.53: Section 1.53(c)(1) is proposed to be amended to clearly
provide that the cover sheet required by 1.51(c)(1) may be an
application data sheet ( 1.76).
Section 1.53(c)(2) is proposed to be amended for clarity and to refer to
``the processing fee set forth in 1.17(q)'' for consistency with the
proposed amendment to 1.17(q).
Section 1.53(d)(4) is proposed to be amended to eliminate the reference
to a petition under 1.48 for consistency with the proposed amendment
to 1.48. Section 1.53(d) is also proposed to be amended to add a new
1.53(d)(10) to provide a reference to 1.103(b) for requesting a
limited suspension of action in a continued prosecution application
(CPA) under 1.53(d).
Section 1.53(e)(2) is proposed to be amended to require that a petition
under 1.53(e) be accompanied by the fee set forth in 1.17(h),
regardless of whether the application is filed under 1.53(b),
1.53(c), or 1.53(d). While provisional applications filed under
1.53(c) are not subject to examination under 35 U.S.C. 131 (35 U.S.C.
111(b)(8)), petitions under 1.53(e) in provisional applications under
1.53(c) are as burdensome as petitions under 1.53(e) in
nonprovisional applications under 1.53(b) or 1.53(d). Therefore,
it is appropriate to charge the petition fee set forth in 1.17(h) for
petitions under 1.53(e) in applications filed under 1.53(b),
1.53(c), or 1.53(d).
Section 1.53(f) and (g) are proposed to be amended for clarity andto
include a reference to ``or reissue'' in the paragraph heading to
clarify that the provisions of 1.53(f) apply to all nonprovisional
applications, which include continuation, divisional, and
continuation-in-part applications, as well as reissue applications and
continued prosecution applications. Section 1.53(f) is also proposed to
be amended to provide that if applicant does not pay one of either the
basic filing fee or the processing and retention fee set forth in
1.21(l) during the pendency of the application (rather than within one
year of the mailing of a Notice to File Missing Parts of Application),
the Office may dispose of the application.
Section 1.55: Section 1.55(a) is proposed to be amended to refer to``the
processing fee set forth in 1.17(i)'' for consistency with the
proposed amendment to 1.17(h) and (i). See discussion of the proposed
amendment to 1.17.
Section 1.55(a)(2)(i) through (iii) is proposed to clarify the current
Office practice concerning when the claim for priority and the certified
copy of the foreign application specified in 35 U.S.C. 119(b) must be
filed. Specifically 1.55(a)(2)(i) clarifies current Office practice
that in an application filed under 35 U.S.C. 111(a) that the Office
requires the claim for priority and the certified copy of the foreign
application be filed before a patent is granted. Section 1.55(a)(2)(ii)
clarifies current Office practice that in an application that entered
the national stage of an international application after compliance with
35 U.S.C. 371, the time limits set in the PCT and the Regulations under
the PCT control the time limit for making the claim for priority, while
the certified copy of the foreign application must be filed before the
patent is granted if the certified copy was not filed in accordance with
the PCT and the Regulation under the PCT. Section 1.55(a)(2)(iii)
clarifies current Office practice that the Office may require both the
claim for priority and certified copy of the foreign application be
filed at an earlier time than in 1.55(a)(2)(i) or 1.55(a)(2)(ii)
under certain circumstances.
Section 1.55(a)(2)(iv) is also proposed to provide that priority claims
and documents may be submitted after payment of the issue fee but with
no further review by the Office other than placement in the application
file. Changes to the patent printing process will dramatically reduce
the period between the date of issue fee payment and the date a patent
is issued. See Filing of Continuing Applications, Amendments, or
Petitions after Payment of Issue Fee, Notice, 1221 Off. Gaz. Pat. Office
14 (April 6, 1999); and Patents to Issue More Quickly After Issue Fee
Payment, Notice, 1220 Off. Gaz. Pat. Office 42 (March 9, 1999). Thus, it
is now difficult for the Office to match a petition containing a
priority claim or certified priority document filed after payment of the
issue fee with an application file, and determine whether the applicant
has met the conditions of 35 U.S.C. 119(a)-(d) to make the priority
claim, before the date the application will issue as a patent.
Nevertheless, it is also undesirable to prohibit applicants from filing
a priority claim or certified priority document between the date the
issue fee is paid and the date a patent is issued. Therefore, the Office
will permit applicants to file a priority claim or certified priority
document (with the processing fee set forth in 1.17(i)) between the
date the issue fee is paid and the date a patent is issued. The Office
will, however, merely place such submission in the application file but
will not attempt to determine whether the applicant has met the
conditions of 35 U.S.C. 119(a)-(d) to make the priority claim nor
include the priority claim information in the text of the patent. In
such a situation (as is currently the situation when a petition under
1.55 is granted), the patent will not contain the priority claim
information, and the patentee may request a certificate of correction
under 35 U.S.C. 255 and 1.323 at which point a determination of
entitlement for such priority will be made.
Section 1.56: Section 1.56 is proposed to be amended to add a new
1.56(e) to provide that in any continuation-in-part application, the
duty under 1.56 includes the duty to disclose to the Office all
information known to the person to be material to patentability which
became available between the filing date of the prior application and
the national or PCT international filing date of the
continuation-in-part application. Section 1.63(e) currently requires
that the oath or declaration in a continuation-in-part application
acknowledge that the duty under 1.56 includes the duty to disclose to
the Office all information known to the person to be material to
patentability (as defined in 1.56(b)) which became available between
the filing date of the prior application and the national or PCT
international filing date of the continuation-in-part application. Thus,
the examiner must object to an oath or declaration in a
continuation-in-part that does not contain this statement. By amending
1.56 to expressly provide that the duty under 1.56 includes this
duty, an acknowledgment of the duty of disclosure under 1.56 is an
acknowledgment of this duty in a continuation-in-part application, and
an express statement to that effect in the oath or declaration will no
longer be required.
Section 1.59: Section 1.59 is proposed to be amended to refer ``the fee
set forth in 1.17(h)'' for consistency with the proposed amendment to
1.17(h) and (i). See discussion of the proposed amendment to 1.17.
Section 1.63: Section 1.63 is proposed to be amended for clarity and
simplicity. Section 1.63(a) is proposed to be amended to set forth the
oath or declaration requirements that are requirements of 35 U.S.C. 115
(and thus cannot be waived by the Office pursuant to 1.183).
Specifically, 1.63(a) is proposed to be amended to provide that an
oath or declaration filed under 1.51(b)(2) as a part of a
nonprovisional application must: (1) Be executed (i.e., signed) in
accordance with either 1.66 or 1.68; (2) identify each inventor
and country of citizenship of each inventor; and (3) state that the
person making the oath or declaration believes the named inventor or
inventors to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patentis sought.
Section 1.63(b) is proposed to be amended to provide that inaddition to
meeting the requirements of 1.63(a), the oath or declaration must
also: (1) Identify the application to which it is directed; (2) state
that the person making the oath or declaration has reviewed and
understands the contents of the application, including the claims, as
amended by any amendment specifically referred to in the oath or
declaration; and (3) state that the person making the oath or
declaration acknowledges the duty to disclose to the Office all
information known to the person to be material to patentability as
defined in 1.56. These requirements are currently located at
1.63(a)(2), (b)(1), and (b)(3).
Section 1.63(c) is proposed to provide that an applicant may provide
identifying information either in an application data sheet ( 1.76) or
in the oath or declaration. Permitting applicants to provide such
identifying information in an application data sheet (rather than in the
oath or declaration) should result in: (1) An increase in the use of
application data sheets; and (2) a decrease in the need for supplemental
oaths or declarations (providing omitted information) for applications
in which an application data sheet was submitted.
Section 1.63(e) is proposed to be amended to eliminate the requirement
that an oath or declaration in a continuation-in-part application state
that the person making the oath or declaration also acknowledge that the
duty under 1.56 includes the duty to disclose to the Office all
information known to the person to be material to patentability (as
defined in 1.56(b)) which became available between the filing date of
the prior application and the national or PCT international filing date
of the continuation-in-part application. See discussion of the proposed
amendment to 1.56(e).
Section 1.64: Section 1.64 is proposed to be amended to also refer to
any supplemental oath or declaration ( 1.67). In addition, 1.64(b)
is proposed to be amended to provide that if the person making the oath
or declaration is the legal representative, the oath or declaration
shall state that the person is the legal representative and shall also
state the citizenship, residence and mailing address of the legal
representative.
Section 1.67: Section 1.67(a) is proposed to be amended to also refer to
1.162, and to provide that if the earlier-filed oath or declaration
complied with 1.63(a), the Office may permit the supplemental oath or
declaration to be made by fewer than all of the inventors or by an
applicant other than the inventor.
Section 1.67(c) is proposed to be deleted as unnecessary because it
simply reiterates other provisions of the rules of practice. If the
application was altered after the oath or declaration was signed (except
as permitted by 1.52(c)), 1.52(c) requires a supplemental oath or
declaration under 1.67. If the oath or declaration was signed in
blank (while incomplete), without review thereof by the person making
the oath or declaration, or without review of the specification,
including the claims, the oath or declaration does not meet the
requirements of 1.63. In this situation, 1.67(a) requires a
supplemental oath or declaration.
Section 1.72: Section 1.72(a) is proposed to be amended to state
[u]nless the title is supplied in an application data sheet ( 1.76)''
to clarify that the title is not requested to be a heading on the first
page of the specification if supplied in an application data sheet.
Section 1.72(b) is proposed to be amended to provide that ``[t]he
abstract in an application filed under 35 U.S.C. 111 may not exceed 150
words in length'' to harmonize with PCT guidelines.
Section 1.76: A new 1.76 is proposed to be added to provide for the
inclusion of an application data sheet in an application. Section
1.76(a) is proposed to: (1) Explain that an application data sheet is a
sheet or set of sheets containing bibliographic information concerning
the associated patent application, which is arranged in aspecified
format; and (2) when an application data sheet is provided, the
application data sheet becomes part of the application. While the use of
an application data sheet is optional, the Office would prefer its use
to help facilitate the machine reading of this important information.
Entry of the information in this manner is more timely and accurate than
the current practice of presenting the information on numerous other
documents. Applicants benefit from the use of application data sheets by
being provided with more accurate and timely filing receipts, by
reducing the time required to collect bibliographic information and by
having such information printed on the granted patents. The applicant
also benefits by receiving an official notice of the receipt of papers
from the Office at an earlier stage of the processing.
Section 1.76(b) is proposed to provide that bibliographic data asused in
1.76(a) includes: (1) applicant information; (2) correspondence
information; (3) specified application information; (4) representative
information; (5) domestic priority information; and (6) foreign priority
information. Section 1.76(b) as proposed also reminds applicants that
the citizenship of each inventor must be provided in the oath or
declaration under 1.63 (as is required by 35 U.S.C. 115) even if this
information is provided in the application data sheet.
Applicant information includes the name, residence, mailing address, and
citizenship of each applicant ( 1.41(b)). The name of each applicant
must include the family name, and at least one given name without
abbreviation together with any other given name or initial. If the
applicant is not an inventor, this information also includes the
applicant's authority ( 1.42, 1.43 and 1.47) to apply for the patent
on behalf of the inventor.
Correspondence information includes the correspondence address, which
may be indicated by reference to a customer number, to which
correspondence is to be directed (see 1.33(a)).
Application information includes the title of the invention, the total
number of drawing sheets, whether the drawings are formal, any docket
number assigned to the application, the type (e.g., utility, plant,
design, reissue utility, provisional) of application. Application
information also indicates whether the application discloses any
significant part of the subject matter of an application under a secrecy
order pursuant to 5.2 of this chapter (see 5.2(c)).
Representative information includes the registration number of each
practitioner, or the customer number, appointed with a power of attorney
or authorization of agent in the application. Section 1.76(b)(4) is
proposed to state that providing this information in the application
data sheet does not constitute a power of attorney or authorization of
agent in the application (see 1.34(b)). This is because the Office
does not expect the application data sheet to be executed (signed) by
the party (applicant or assignee) who may appoint a power of attorney or
authorization of agent in the application.
Domestic priority information includes the application number (series
code and serial number), the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes the
specific reference required by 35 U.S.C. 119(e) or 120. While the rules
of practice ( 1.78(a)(2) or 1.78(a)(4)) require that this claim or
specific reference be in the first line of the specification the patent
statute requires that a claim to the benefit of (specific reference to)
a provisional (35 U.S.C. 119(e)(1)) or nonprovisional (35 U.S.C. 120) be
in the application. Since the application data sheet (if provided) is
considered part of the application, the specific reference to an earlier
filed provisional or nonprovisional application in the application data
sheet meets the ``specific reference'' requirement of 35 U.S.C.
119(e)(1) or 120.
Foreign priority information includes the application number, country,
and filing date of each foreign application for which priority is
claimed, as well as any foreign application having a filing date before
that of the application for which priority is claimed. Providing this
information in the application data sheet constitutes the claim for
priority as required by 35 U.S.C. 119(b) and 1.55(a). The patent
statute (35 U.S.C. 119(b)) does not require that a claim to the benefit
of a prior foreign application take any particular form.
Section 1.76(c) as proposed indicates that inconsistencies between the
information in the application data sheet (if provided) and the oath or
declaration under 1.63 will be resolved in favor of the application
data sheet. This is because the application data sheet (and not the oath
or declaration) is intended as the means by which applicants will
provide information to the Office. Section 1.76(c) is also proposed to
provide that a supplemental application data sheet maybe submitted to
correct or update information provided in a previous application data
sheet.
Section 1.77: Section 1.77(a) is proposed to be separated into sections
1.77(a) and 1.77(b). New 1.77(a) would list the order of the papers
in a utility patent application, including the proposed application data
sheet (see 1.76). New 1.77(b) would list the order of the sections
in the specification of a utility patent application. Current 1.77(b)
is proposed to be redesignated1.77(c).
Section 1.78: Section 1.78(a)(2) is proposed to be amended to provide
that the specification must contain or be amended to contain a specific
reference required by 35 U.S.C. 120 in the first sentence following the
title, unless the reference is included in an application data sheet.
Section 1.78(a)(4) is proposed to be amended to provide that the
specification must contain or be amended to contain a specific reference
required by 35 U.S.C. 119(e)(1) in the first sentence following the
title, unless the reference is included in an application data sheet.
See discussion of proposed 1.76(b)(5).
Section 1.78(c) is proposed to be amended for consistency with 1.110
and for clarity.
Section 1.84: Section 1.84 is proposed to be amended to delete some
requirements that are more stringent than the requirements of the PCT,
while retaining the provisions related to acceptance of color
drawings/photographs which are, at this time, more lenient.
The Office is proposing to delete the petition requirements in
1.84(a)(2) and 1.84(b)(1) and the requirement for three copies of
black and white photographs. This change would make 1.84 consistent
with current Office practice. See Interim Waiver of 37 CFR 1.84(b)(1)
for Petitions to Accept Black and White Photographs and Advance Notice
of Change to M.P.E.P. 608.02, Notice, 1213 Off. Gaz. Pat. Office 108
(August 4, 1998); and Interim Waiver of 37 CFR 1.84(b)(1) for Petitions
to Accept Black and White Photographs Filed with only One Set of
Photographs, Notice, 1211 Off. Gaz. Pat. Office 34 (June 9, 1998). In
addition, paragraphs (d), (h), (i), (j), (k)(1) and (3), (m), (n), (p),
(r), (s), and (x) of 1.84 are proposed to be deleted for
simplification. These paragraphs describe characteristics of patent
drawings which are desirable because they assist in clearly
communicating the disclosed invention, but which are not necessary for
the reproduction of drawings. The requirements set forth in paragraphs
(d), (h), (i), (j), (k)(l) and (3), (m), (n), (p), (r), (s), and (x) of
1.84 will continue to be described in the MPEP and/or publications
such as the Guide for the Preparation of Patent Drawings.
Section 1.84(g) is proposed to be changed to 1.84(f). In addition, the
dimensions of sight on 21.6 cm by 27.9 cm (8 1/2 by 11 inch)drawing
sheets are proposed to be changed 17.0 cm by 24.4 cm (6 3/4 by 9 5/8
inches) to standardize the sight with that for A4 paper.
In Topic 5 of the Advance Notice the Office proposed to harmonize patent
drawing standards with those of the PCT. The Office received a number of
comments. The majority of the comments welcomed a single standard for
patent drawings in PCT and United States patent applications so long as
applicants do not lose their ability to file color drawings/photographs
or to use 8 1/2 by 11 paper. Some expressed confusion about the exact
requirements of the PCT and its regulations. Furthermore, many commented
that drawing standards should be enforced in the same manner, and that
drawings should not be objected to in the national stage if they were
not objected to in the international stage. In this vein, several argued
that only the patent examiners should be allowed to review the patent
drawings. If the examiners could understand the invention from the
drawings, no draftsperson should be permitted to make ``petty
objections'' unrelated to how well the invention is disclosed in the
drawings. On the other hand, several people commented that the standards
for PCT applications are too low, since many PCT applications are
published with illegible drawings or drawings that do not adequately
communicate the invention. Several observed that the PCT rules do not
permit color drawings or photographs and stated that the requirements of
the two systems should be the same. Others observed that the PCT rules
essentially require formal drawings on filing, which is contrary to U.S.
practice, and argued that such a policy would be unnecessarily expensive
to applicants.
Careful consideration of the comments and the business practice of
drawing review has led the Office to conclude that, in general, drawings
should only be objected to by the Office if they cannot be reproduced or
there is an error in the drawings. The Office should accept drawings
that would be acceptable under the PCT rules, but should not copy PCT
rules solely for the sake of uniformity. A proper application of a low
standard for drawing review will result in fewer drawings being objected
to and fewer corrected or formal drawings being filed after allowance of
a patent application. This should reduce delays during the printing
cycle (during which time the Office waits for corrected or formal
drawings to be filed). Applicants who submit informal drawings on filing
will be unlikely to encounter a draftsperson's objection because few
drawings will fail to meet the reduced standards. Any formal drawings
filed after allowance which were not required by the Office, however,
are unlikely to be included in the printed patent because the printing
process will have begun before payment of the issue fee and the formal
drawings are unlikely to catch up to the application file in time to be
included in the printed patent.
Patents printed with high quality drawings look better and should be
easier to understand. Applicants interested in having their patents
printed with good quality drawings should be motivated by their own
interests to submit good quality drawings. However, the Office should
not spend resources to insist upon high-quality drawings when lesser
quality drawings would suffice to communicate the invention and to meet
the printer's requirements. Accordingly, if applicants submit drawings
which are of inferior quality, but acceptable to the Office, applicants
should not be surprised when a patent issues with those very same
drawings.
Section 1.84 is also proposed to provide for a fee for processing and
printing patents with color drawings or photographs in color rather than
in black and white. The petition fee set forth in 1.84(a)(2)(i) is
proposed to be deleted and a fee commensurate with the Office costs of
handling and printing color photographs will be charged instead.
Many comments were received welcoming printing of patents in color, and
stating that applicants would be willing to pay any required fees for
their patent to be printed in color.
When filing international applications under the PCT, applicants must
remember to consult the PCT and its regulations regarding requirements
of drawings, especially the provisions related to amendment or
correction of drawings. While color drawings are permitted in U.S.
patent applications, submission of color drawings ininternational
applications is not permitted and may cause difficulties in
international processing which cannot be overcome. Black and white
drawings submitted after the international filing date to overcome
objections to color drawings may be refused if they do not comply with
the requirements of PCT Rule 91.1, which could result in significant
loss to applicants.
Section 1.85: Section 1.85 is proposed to be amended to make the period
for filing corrected or formal drawings in response to a Notice of
Allowability a non-extendable period.
In Topic 7 of the Advance Notice the Office proposed to reduce the time
for filing corrected or formal drawings after the mailing date of the
``Notice of Allowability'' from three months to one month. In response,
many comments were received which explained that one month was too short
of a period of time in which to make the necessary changes to the
drawings. In addition, many stated that having two different time
periods running against the applicant makes docketing of the required
replies too complicated. Several comments received indicated that
corrected or formal drawings should be required at the same time as the
issue fee, with no opportunity for the drawings to be filed later.
Others indicated that, while one month was too short of a period of
time, two months would be adequate.
After consideration of the comments and the Office's business goal of
decreasing cycle time for all inventions, the Office is proposing to
amend 1.85(c) to provide that corrected or formal drawings must be
filed within three months of the date of mailing of the ``Notice of
Allowability'' requiring such drawings, and that no extensions of time
under 1.136(a) or (b) will be permitted. Refusing to permit an
extension of time when formal or corrected drawings cannot be filed
within the three-month period and sufficient cause exists for an
extension may appear to be harsh. A strong policy is considered
necessary, however, to ensure that the drawings are filed within the set
period. The Office has also considered that many applicants are in the
habit of filing formal or corrected drawings with an extension of time
and may, out of habit and ignorance of the rule change, continue to do
so. These applicants will have to file a petition to revive under
1.137(b) as the failure to timely file any formal drawings that were
required will cause the application to go abandoned.
The Office is taking positive steps to make it easier for applicants to
submit drawings which will be approved. See the changes proposed in
1.84. Thus, the instances where formal drawings will be required when
the case is allowable will be reduced as more drawings will be approved
as submitted.
If the amendment to 1.85 is adopted, the time period for filing any
required supplemental oath or declaration in compliance with 1.63
will be set to be the same non-extendable time period of three months
from the date of mailing of the Notice of Allowability requiring the
supplemental oath or declaration.
Section 1.91: Section 1.91(a)(3)(i) is proposed to be amended to refer
to ``[t]he fee set forth in 1.17(h)'' for consistency with the
changes to 1.17(h) and 1.17(i). See discussion of changes to
1.17(h) and 1.17(i).
Section 1.96: The Office indicated in the Advance Notice that the
submission of computer program listings on microfiche placed a burden on
applicants and the Office, and that it was considering changes to
1.96 to permit machine readable computer program listings to be
submitted on electronic media in lieu of microfiche. See Changes to
Implement the Patent Business Goals, 63 FR at 53510-12, 1215 Off.
Gaz.Pat. Office at 99-100.
Section 1.96 is proposed to be amended to provide for voluminous program
listings to be submitted on archival electronic media instead of
microfiche. Section 1.96(b) is proposed to be amended to limit computer
program listings that may be submitted as drawings or part of the
specification to computer program listings that are contained on one
sheet.
Under 1.96 as proposed, any computer program listing may, and any
computer program listing that would be contained on more than one sheet
must, be submitted as a computer program listing appendix pursuant to
1.96(c) (subject to the ``transitional'' practice discussed below).
Section 1.96(c) is specifically proposed to provide that a``computer
program listing appendix'' be submitted on a Compact Disk-Read Only
Memory (CD-ROM) or Compact Disk-Recordable (CD-R). A CD-ROM is the only
practical electronic medium of archival quality under the current
standards of the National Archives and Records Administration (NARA).
See 36 CFR 1228.188(c) and (d) and 1234.30. The Office considers CD-R to
be an electronic medium having an archival quality equivalent to the
archival quality of CD-ROM. The information so submitted will be
considered a ``computer program listing appendix'' (rather than a
microfiche appendix). Section 1.96(c) will continue to require a
reference at the beginning of the specification as itemized in
1.77(b)(4). As with a microfiche appendix, the contents of the
``computer program listing appendix'' on a CD-ROM or CD-R will not be
printed with the published patent, but will be available at the Office
on a medium to be specified by the Office. The contents of a ``computer
program listing appendix'' on a CD-ROM or CD-R may not be amended
pursuant to 1.121, but must be submitted on a substitute CD-ROM or
CD-R. Section 1.96(c) does not apply to international applications filed
in the United States Receiving Office.
Section 1.96(c)(1) is proposed to provide that the availability ofthe
computer program will be directly analogous to that of the microfiche.
The Office will make the contents available for inspection, for example
at electronic workstations in the Public Search Room. If needed,
multiple CD-ROMs or CD-Rs may be used for the submissions pertaining to
a single patent application, but each application with anelectronic
medium appendix must be supplied with its own copy of the medium or
media. Section 1.96(c)(2) is proposed to provide submission requirements
that refer to the relevant NARA standards in 36 CFR Part 1228 for
submissions of Government electronic records to NARA. Section 1.96(c)(2)
is also proposed to provide that a CD-ROM or CD-R ``computer program
listing appendix'' must be labeled with the following information: (1)
The name of each inventor (if known); (2) title of the invention; and
(3) the docket number used by the person filing the application to
identify the application (if applicable).
Even after adoption of this proposed change to 1.96, the Office will
continue to accept a computer program listing that complies with current
1.96 (i.e., a computer program listing contained on ten or fewer
sheets as drawings or part of the specification, or a ``computer program
listing appendix'' on microfiche) for some period of time (e.g., two
years) that will be specified in any final rule notice adopting this
proposed change to 1.96. Should these provisions be adopted,
conforming changes may be made in the regulations to accommodate
international applications in the national stage.
Comments: The comments (almost without exception) were supportive of
this proposal. Comments specifically indicated that this proposal was
``long overdue,'' and that the proposal should include provisional
applications and other technologies including chemical and manufacturing
processes requiring precise computer control. The comments provided
advice including the concepts of safeguarding the information from
alteration, of making the public access and examiner access easy, and of
assuring the submissions are readable. The only negative comment was an
expression of disbelief that the Office was equipped to handle
electronic media submissions.
Response: The Office is proposing changes to 1.96 to provide for
voluminous program listings to be submitted on archival electronic media
instead of microfiche. The effective date of the proposed change will be
linked to the development and deployment of electronic systems at the
Office to capture, store and retrieve information submitted on archival
electronic media in a manner to assure the integrity and authenticity of
the information, and provide its display as needed for the Office, the
patentee (and applicants), and the public.
The proposed change to Sec. 1.96 and 1.821 et seq. (discussed below)
contemplated for computer program listings and sequence listings would
eliminate the need for submissions of hard to handle and reproduce
microfiche computer program listings and voluminous paper sequence
listings. To focus specifically on the Office's difficult paper handling
problem, and to simplify this project so it can be deployed in a short
time span, only the computer program listings and the nucleotide and/or
amino acid sequences would be accepted in machine readable format.
Relationship to Office automation plans: These changes being proposed
are understood to be the initial steps towards solutions to difficult
Office paper-handling problems. The Office is planning for full
electronic submission of applications and related documents by fiscal
year 2003. The changes proposed in this notice are an initial step in
that direction, permitting certain application and related material to
be submitted on an acceptable archival medium.
Sections 1.97 and 1.98: The Office proposes to go forward, at the
present time, with only one aspect of the plan for information
disclosure statement (IDS) revision that was set forth in the Advance
Notice: the proposal to require that an IDS include a legible copy of
each cited pending U.S. application. The proposed IDS rules are also
being revised for consistency and grammar, and to tie up a number of
loose ends, as will be discussed below.
Other than the proposed requirement for a copy of each cited U.S.
application, the IDS proposals as set forth in Topics 9 and 10 of the
Advance Notice have been withdrawn. Accordingly, there is no proposal at
this time for a statement of personal review nor for a unique
description as were called for in the Advance Notice, and the amount of
citations that may be submitted is not presently proposed to be limited.
The Office issued a notice of hearing and request for public comments to
obtain views of the public on issues associated with the identification
and consideration of prior art during patentability determinations. See
Notice of Public Hearing and Request for Comments on Issues Related to
the Identification of Prior Art During the Examination of a Patent
Application, Notice of Hearing and Request for Public Comments, 64 FR
28803 (May 27, 1999), 1223 Off. Gaz. Pat. Office 91 (June 15, 1999).
Pursuant to that notice, the Office held public hearings on June 28th
and July 14th of 1999 on the issues. These prior art issues are related
to the changes presently being considered by the Office to impose
requirements/limits on IDS submissions. Thus, it would be premature to
go forward with a comprehensive new IDS alternative until the results of
the hearings and comments submitted in response to the notice have been
appropriately evaluated. It is contemplated that any new IDS
alternatives will be advanced in any rulemaking notice which may result
from the evaluation of the results of the public hearings and comments
submitted in response to the notice.
The Office recently issued guidelines for reviewing requests for
reexaminations and ongoing reexaminations for compliance with In re
Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997).
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), Notice,
64 FR 15346 (March 31, 1999), 1223 Off. Gaz. Pat. Office 124 (June 22,
1999). These guidelines are pertinent to the consideration given IDS
citations, stating:
Where the IDS citations are submitted but not described, the examiner is
only responsible for cursorily reviewing the references. The initials of
the examiner on the PTOL-1449 indicate only that degree of review unless
the reference is either applied against the claims, or discussed by the
examiner as pertinent art of interest, in a subsequent office action.
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR at
15347, 1223 Off. Gaz. Pat. Office at 125 (response to comment 6).
The public should thus be aware that full consideration of all
citations submitted in compliance with 1.97 and 1.98 is not
required on the part of the examiner. The examiner performs a cursory
review of each IDS citation to the extent that he/she needs in order to
determine whether he/she will evaluate the citation further. If the
cursory review reveals the citation not to be useful, the examiner will
simply stop looking at it. The examiner will be understood to have
provided full consideration only where the examiner applies the IDS
citation as a reference against the claims in the application being
examined, or otherwise deems the citation useful to the examination and
discusses that use. Further, the applying of the IDS citation as a
reference, or the discussion of the use of the citation (where the
citation is not applied as a reference), must be in writing:
[T]he Office cannot presume that a prior art reference was previously
relied upon to reject or discussed in a prior PTO proceeding if there is
no basis in the written record to so conclude other than the examiner's
initials or a check mark on a PTO 1449 form, or equivalent, submitted
with an information disclosure statement. Thus, any discussion of prior
art must appear on the record of a prior related PTO proceeding.
See Guidelines for Reexamination of Cases in View of In re Portola
Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), 64 FR at
15349, 1223 Off. Gaz. Pat. Office at 127 (endnote 7).
It is also noted that the Office intends to issue a notice dealing
with printing of IDS citations on the face of the patent. Currently, all
IDS citations which are listed on a PTO-1449 form, or an equivalent of
the PTO-1449, and are initialed by the examiner, are printed on the face
of the patent together with art cited by the examiner. In the notice,
the public would be informed that IDS citations printed on the face of
the patent will be distinguished from citations made by the examiner,
using a separate printing field, markings, or some other means.
Specifics of the contemplated IDS revisions: The specifics of the
contemplated revisions to 1.97 and 1.98 will now be discussed as
to the one Advance Notice proposed change that is being retained, asto
newly advanced changes, and as to Advance Notice proposed changes that
are being dropped. The discussion is presented in the following twelve
parts which separately address identifiable portions of the subject
matter: (1) Deletion of unassociated text; (2) items cited in continued
prosecution applications (CPAs); (3) filing the IDS before the mail date
of final Office actions; (4) required fee and statement for IDS
submission made after close of prosecution; (5) newly cited item in
foreign office must be cited for the first time; (6) IDS that does not
comply with either 1.97 or 1.98; (7) copies of cited U.S.
applications required; (8) how to identify a cited U.S. application; (9)
citation was previously made in parent application; (10) grammar and
consistency; (11) aspects of Topic 9 in the Advance Notice not being
pursued in this notice; and (12) comments generally directed at revision
of the IDS rules.
Part (1) Deletion of Unassociated Text
The phrase ``whichever event occurs last'' appears at the end of
paragraph (b)(3) of 1.97, and thus it physically appears to apply
only to paragraph (b)(3). In reality, ``whichever event occurs last''
should be associated with each of paragraphs (b)(1), (b)(2) and (b)(3).
Accordingly, it is proposed to delete ``whichever event occurs last''
from paragraph (b)(3), and to insert ``within any one of the following
time periods'' in paragraph (b). This would eliminate the unassociated
text ``whichever event occurs last'' from paragraph (b)(3), while, at
the same time, making it clear that the IDS will be entered if it is
filed within any of the time periods of paragraphs (b)(1), (b)(2) or
(b)(3). Additionally, paragraph (c) of 1.97 is proposed to be
revised, in conformance with paragraph (b), to delete ``whichever occurs
first.''
Part (2) Items Cited in Continued Prosecution
Applications (CPAs)
Section 1.97(b)(1) is proposed to be amended to insert ``other than an
application under 1.53(d)'' to eliminate the three-month window
for filing an IDS in a CPA. Because of the streamlined processing for
CPAs, it is expected that the examiner will issue an action on the
merits before three months from the filing date. Under the current rule,
should an examiner issue an action on the merits prior to three months
from the filing date and an IDS is submitted after the Office action is
mailed but within the three-month window, the examiner must redo the
action to consider the IDS. A CPA is a continuing application, and,
thus, applicant should have had ample opportunity to file an IDS. In
addition, as pointed out below, it is being proposed to revise 1.103
to provide for a request of a three-month suspension of action upon
filing of a CPA; thus, in an unusual instance where a need to file an
IDS newly arises, applicant can request the three-month suspension based
upon that need. In view of the above, it is deemed appropriate to
require that any IDS be filed before filing the CPA, or concurrently
with the filing of the CPA.
Part (3) Filing the IDS Before the Mail Date of Final Office Actions
Paragraph (c) of 1.97 would be revised to include, in addition to a
final action under 1.113 and a notice of allowance under 1.311,
other Office actions which close prosecution in the application. This
would typically occur when an Office action under Ex parte Quayle, 1935
Dec. Comm'r Pat. 11 (1935), is issued. No reason is seen for including
only two of the types of actions which close prosecution (that under
1.113, and that under 1.311), while not including other types.
Part (4) Required Fee and Statement for IDS Submission Made After Close
of Prosecution:
Paragraph (d)(3) of 1.97 would be revised to delete reference to the
fee as a petition fee under 1.17(i) and instead make reference to the
fee as an IDS fee under 1.17(p). There is no reason for the reduced
fee of $130 that is currently recited by paragraph (d), as opposed to
the larger $240 IDS fee set forth in paragraph (c). On the contrary, the
paragraph (d) submission is made later in the prosecution than that of
paragraph (c), and thus interrupts the process at least as much as the
paragraph (c) submission. Therefore, the fee for the paragraph (d)
submission should be at least as much the $240 IDS fee required for the
paragraph (c) submission.
In addition, paragraph (d)(2) of 1.97 has been deleted in its
entirety, to remove all reference to the filing of a petition. A
petition unduly complicates the matter, while there is really no issue
to be decided other than the entry of the IDS, which issue is ordinarily
decided by the patent examiner. As it is contemplated to be amended,
paragraph (d) of 1.97 would simply require (for an IDS submitted
after the close of prosecution and before payment of the issue fee) the
combination of the IDS fee and a statement as is specified in paragraph
(e) of 1.97.
Part (5) Newly Cited Item in Foreign office Must Be Cited for the First
Time
Section 1.97(e)(1) is proposed to be amended to specify that an item
first 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 statement is entitled to special consideration for entry
into the record. An item first cited by a foreign patent office (for
example) a year before in a communication from that foreign patent
office, which item is once again cited by another foreign patent office
within three months prior to the filing of the statement in the Office,
is not entitled to special consideration for entry, since applicant was
aware of the item a year ago, yet did not submit that item.
Part (6) IDS That Does Not Comply With Either 1.97 or 1.98
Paragraph (i) of 1.97 is proposed for revision to delete "filed
before the grant of a patent.'' This phrase is surplusage since there
can be no information disclosure statement after the grant of the
patent. A submission of information items after the patent grant is a
``prior art citation'' which is made, and treated, under 501.
Paragraph (i) of 1.97 would also be revised to make it a little
clearer as to what sections must be complied with, and to change the
paragraph (i) plural recitation of information disclosure statements to
a singular recitation, which would be in conformance with the rest of
1.97.
Part (7) Copies of Cited U.S. Applications Required
The Office proposes to go forward, at the present time, with one
aspect of the Advance Notice IDS proposal. Section 1.98(a)(2) would be
revised to require that an IDS include a legible copy of each cited
pending U.S. application. Thus, the current exception to the requirement
for supplying citation copies set forth in 1.98(a)(2)(ii) for pending
U.S. applications would be eliminated.
The Office noted, in the Advance Notice, its concern that current
1.98 does not require applicant to supply copies of U.S. application
citations. It was pointed out that there is a real burden on the
examiner to locate and copy one or more pending applications, thus
delaying the examination of the application being examined (in which the
U.S. application citation is made). Further, copying a cited application
has the potential for interfering with the processing and examination of
the cited application itself. Accordingly, 1.98(a)(2) is proposed for
revision to require, for each U.S. application citation listed, that
applicant submit either a copy of the application specification,
including the claims, and any drawing of the application, or as a
minimum, the portion of the application which caused it to be listed,
including any claims directed to the portion which caused it to be
listed. This proposed revision would, additionally, be a benefit to the
public since the copy of the application would be readily available upon
issuance of the application as a patent.
Comments Received in Response to the Advance Notice: In response to the
Advance Notice, a significant number of comments were in favor of
adopting the requirement for copies of U.S. applications, and indicated
that there should be no problem with requiring submission of copies.
Comments noted that the submission of copies of cited applications will
speed up the application process. It will decrease the time burden on
examiners in obtaining and copying such applications. It will also avoid
interruption of the examination of the application being cited, as
otherwise, papers in the original file of the cited application must be
removed and copied in order to be reviewed. Even further, it was noted
that this revision of the rule should reduce risks of application papers
in the cited cases being misplaced or lost.
A number of comments were concerned that submission of copies of
multiple U.S. patent applications in an IDS will overwhelm the Office
with an increased volume of paper. Some comments opposed the requirement
for copies of U.S. patent applications on the grounds thatit will place
a difficult burden on counsel/applicants to provide the Office with a
copy of each cited U.S. application. An example was given, where the
client has an extensive patent portfolio distributed among several
patent firms (e.g., the result of licensing agreements or other
conflicts of interest which require different counsel to be responsible
for different cases in a portfolio). In such a scenario, counsel may not
be able to receive/view copies of related applications due to
constraints imposed by applicable ethical rules and thus may not be able
to supply copies. Another example was given, where a practitioner may be
aware that a pending application is relevant and may not have access to
that pending application, since it is that of another party.
With respect to these grounds for opposition to the requirement, it
should initially be noted that citation of another application in an IDS
is relatively rare and, as such, should not significantly increase the
volume of paper the Office must deal with. Also, in those few situations
where U.S. applications are cited and counsel cannot provide copies of
the applications, a petition could be submitted for waiver of the rules,
and the petition would be decided on a case-by-case basis. In addition,
if a practitioner is not permitted, due to ethical considerations, to
review material that may be of significance in the prosecution of a
particular application, it is not clear why the practitioner would be
involved in the prosecution of that application. As to the comment
relating to lack of access by practitioner, such lack of access may
result from the fact that the application to be cited is that of a third
party and is not available to the public, which includes the
practitioner or the practitioner's client; the patent rules should not
be a means whereby the Office will provide practitioner with a copy of a
pending U.S. application merely because the practitioner or the client
thereof has come across the application number.
It was suggested in the comments that review of the Office file is
better than review of a supplied copy; i.e., it is more useful for the
examiner to review the Office file, which is more comprehensive, than to
review the copies that applicant would send. As to this concern, the
benefits of eliminating the Office's burden of obtaining and copying
such applications, as well as avoiding interruption of examination of
the cases being cited, are deemed to be greater than the possible
benefit associated with the review of the Office file. If the submitted
copy of a cited U.S. patent application is found by the examiner to be
of sufficient relevance for further review of the application, at that
point in time, the examiner can expend the extra effort to obtain and
review the file. On the other hand, for the majority of the cited
applications that are not worthy of looking into further, this extra
expenditure of time and effort will be saved.
The comments further urged that if a cited U.S. application supplied
with an IDS is later abandoned, a petition to expunge the copy of the
cited application must be submitted to remove the application from the
file, and the Office would then need to consider if the U.S. application
is immaterial to patentability of the invention such that it can be
expunged (see MPEP 724.05). This concern is noted; however, it should be
the exception rather than the rule. The time expended in deciding the
relatively few petitions to expunge that are filed should more than be
counterbalanced by the reduction of the burden to obtain and copy
applications and the avoidance of interruption of examination of the
application being cited. In addition, even under the current system
where application-citation copies are not required, a petition to
expunge is still needed to expunge the listed application number, in
cases where the content of that application citation is sufficiently
identified in the record. Thus, the increase in petitions to expunge
(generated by the proposal) should be very small indeed.
It was suggested that the examiner's time in obtaining U.S. application
files could be saved by providing clerical support in the groups, which
would function to assist the examiner with obtaining the cited
application files. This, however, would be a large drain on Office
resources, which are limited, and would still result in undesirable
interruptions of examination of the application being cited.
It was suggested that, instead of requiring copies of all cited
applications with the IDS, the Office should reserve the right to later
request copies from applicant where specific application files are not
easily available. As to this suggestion, it is first noted that it would
not at all reduce the time that the cited application would be away from
the examiner of the cited application, and thus does not deal with the
problem of interruption of the examination of the application being
cited. In addition, making a requirement from applicant for the
application after the IDS is received (for difficult-to-obtain cases)
slows the examination process since the examiner must wait for the copy,
while if the copy were submitted with the IDS, the examiner could
immediately begin the examination. Furthermore, a large expenditure of
time would have been made in finding out that the application file is
not easily available. Even after the application is obtained and
reviewed, it is, at times, found that some portion is missing. At that
time, the effort would already have been expended, and only then would
the copy of the application first be required from applicant.
Part (8) How To Identify a Cited U.S. Application
Section 1.98(b) is proposed to be amended to require that eachlisted
U.S. application to be identified by the inventors, application number
and filing date.
Part (9) Citation Was Previously Made in Parent
Application
Paragraph (d) of 1.98 is proposed to be revised to make it clear
that the mere submission of the citation in the parent application (by
applicant) is not enough to take advantage of paragraph (d) when
submitting the citation in the ``child'' application. A copy of the
citation must have been submitted in the parent, and the submission of
the citation made in the parent must have complied with 1.97, except
for an application filed under 1.53(d).
A situation might arise where applicant would establish continuity with
an existing application having listed U.S. applications for which copies
were not supplied (under the current practice, i.e., before the changes
proposed in this notice would go into effect), and applicant would
thereby take advantage of paragraph (d) of 1.98 to have the cited
applications reviewed in the newly filed ``continuation'' (i.e., filed
after the changes proposed in this notice would go into effect) without
submitting copies. To deal with this possibility, paragraph (d) of
1.98 would be revised to require that where the cited U.S. application
(the listed information) was not cited ``by * * * the Office'' (i.e.,
not cited by the examiner in the parent), the information submission
made in the prior application must have been in compliance with
paragraphs (a) through (c) of 1.98 as they are drafted in this
notice. In other words, if the copy of the application papers (for the
cited application) was not present in the parent, it must now be
submitted in the continuation.
It might be argued that because a copy of the citation was submitted in
the parent, paragraph (d) is satisfied even though the submission of the
citation made in the parent did not comply with 1.97. Paragraph (d)
of 1.98 as proposed for revision dealswith this argument.
Part (10) Grammar and Consistency
All changes which are proposed in 1.97 and 1.98 other than those
explicitly identified above would be made for grammar and consistency
within the sections. This includes, for example, deleting the last
sentence of 1.98(c) and inserting it as the last sentence of
1.98(a)(3) where it more appropriately belongs.
Part (11) Aspects of Topic 9 in the Advance Notice Not Being Pursued
Further
Statement of Personal Review: In the Advance Notice, it was proposed
that the IDS submitter be required to state that he/she personally
reviewed each submitted IDS citation to determine whether or not that
citation is relevant to the claimed invention(s) and is appropriate to
cite to the Office in the IDS. This statement of personal review would
have to be made by a registered practitioner (where applicant is
represented by a practitioner), or by at least one of the inventors
(where applicant is not represented).
A large majority of the comments (in response to the Advance Notice)
opposed requiring the statement of personal review as proposed in the
Advance Notice. Opposition was based upon the following: (1) The
required statement of personal review as proposed in the Advance Notice
would greatly increase prosecution costs; (2) the impact of the cost
burden imposed would be extremely hard on small entities and independent
inventors, and may be contrary to the Office's Independent Inventor
Initiative; (3) the proposed review by the practitioner (where applicant
is represented) will result in a duplication of the prior efforts of
inventors, in-house counsel (not representing the inventor before the
Office), or foreign associates who initially provided the information
(the practitioner must ``second guess'' the inventor, etc. as to whether
the citation is relevant and how it is relevant; (4) the proposed
practitioner reviewwould provide new grounds for allegations of
inequitable conduct (whether the subjective requirements of the personal
review statement were complied with), and the possibility of malpractice
as to the review conducted; (5) the statement of review is already
inherent in any IDS ( 10.18(b)(2), 1.56), and an explicit statement
is not needed; (6) the proposed practitioner review would raise problems
as to attorney-client relations, e.g., conflict of interest, and
potentially a breach of attorney-client privilege as to the review of
the documents made; and (7) the statement of personal review would not
be effective (it will not prevent marginally related and unrelated
citations from being submitted), since one could make a cursory personal
review of a citation, reach no decision, and simply submit the citation,
with minimal comment.
There was some limited support for adoption of the proposal requiring a
statement of personal review (at least in part); however, a substantial
majority of the comments expressed opposition to the statement of
personal review. The Office has taken note of the duplication of review
effort, the potential increased costs, the subjectivity of the
statement, the resulting potential for charges of inequitable conduct,
and the conflict-of-interest problems that could be brought about by
going forward with the proposed requirement for a statement of personal
review. Accordingly, a decision has been made to not go forward with the
requirement for a statement of personal review at this time.
Citations To Be Uniquely Described: The Advance Notice proposed that
applicant be required to compare each of the citations to each of the
independent claims, or specific dependent claim(s), in a meaningful way
unique to each citation. The description of each citation would have to
point out why applicant believes the citation to be unique in its
teaching/showing relative to the claimed invention(s). Description would
not be required for any ten citations, and for citations in a
corresponding application by a foreign patent office, PCT international
searching authority, or PCT international preliminary examining
authority, provided the search report or office action in the English
language is also submitted.