(17)               Interim Waiver of 37 C.F.R.    1.163(b)
                       for Two Copies of a Specification
                     of an Application for a Plant Patent

   The Patent and Trademark Office (PTO) is sua sponte waiving 
37 C.F.R    1,163(b) to no longer require two copies of a specification 
for an application for a plant patent. The reason for this waiver is that 
the PTO intends to amend 37 C.F.R.   1.163(b) to eliminate this requirement.
   Because a significant period of time will elapse before any final
rule change can be promulgated, effective as of the publication date of
this notice, the PTO will, sua sponte, waive 37 C.F.R.    1.163(b) to
the extent that two copies of the specification of a plant patent
application are no longer required.
Background of 37 C.F.R.    1.163(b) and Rationale for Amendment
   Under the existing rule, two copies of the specification, including
the claim, of an application for a plant patent are required. The reason
for this requirement was so that one copy of the application could be
forwarded to the Agricultural Research Service of the Department of
Agriculture where necessary for examination of the application. However,
the Office seldom requests the assistance of the Department of
Agriculture in the examination of plant patent applications and the
duplicate copies of the specification are removed from the application
file and stored separately. In the unusual situation where the duplicate
copy of the specification required by 37 C.F.R. 1.163(b) has not been
provided, plant patent examiners have not been requiring a duplicate
copy and, instead, have been making the required copy. If the
requirement for two copies is eliminated, and the Office desires the
assistance of the Department of Agriculture, the Office will make the
required duplicate copy. The elimination of the duplicate copy
requirement will reduce the burden on plant patent applicants in filing
an application for a plant patent. Furthermore, by elimination of this
requirement, the storage space required for plant patent applications
will be reduced, since the Office will no longer have to store duplicate
copies. Any duplicate copies of the plant application specification
submitted after the publication date of this notice or that are
currently being stored by the Office may be discarded.
   This change in practice does not effect the number of color drawings
or color photographs that are required for a plant patent application.
Two copies of color drawings or color photographs continue to be
required for processing of a plant patent application. 37 C.F.R.
1.165(b). One of the two copies of the drawings is placed in the
application file and is used during prosecution of the application,
including printing of the patent. The second copy is used in the
interference files, where it is also available to be sent to the
Department of Agriculture, should the need arise. The second copy is
also available for use by the printer in the event that the first copy
is lost or damaged.
   If there are any questions or comments about this change in practice,
they should be forwarded to Karin Tyson, Senior Legal Advisor, by
facsimile at (703) 308-6916, by telephone at (703) 305-9285, or by
e-mail at karin.tyson@uspto.gov.

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

                                 [1213 OG 109]