[3510-16]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, 5, 7, and
10
[Docket #: 960606163-7130-02]
RIN 0651-AA80
Changes to Patent Practice and Procedure
AGENCY:
Patent and Trademark Office, Commerce.
ACTION:
Final Rule.
SUMMARY:
The Patent and Trademark Office (Office) is amending the rules
of practice to simplify the requirements of the rules, rearrange
portions of the rules for better context, and eliminate unnecessary
rules or portions thereof as part of a government-wide effort
to reduce the regulatory burden on the American public. Exemplary
changes include: simplification of the procedure for filing continuation
and divisional applications; amendment of a number of rules to
permit the filing of a statement that errors were made without
deceptive intent, without a requirement for a further showing
of facts and circumstances; and elimination of the requirement
that the inventorship be named in an application on the day of
its filing, which eliminates the need for certain petitions to
correct inventorship.
EFFECTIVE DATE:
December 1, 1997.
FOR FURTHER INFORMATION CONTACT:
Hiram H. Bernstein or Robert W. Bahr, Senior Legal Advisors,
by telephone at (703) 305-9285, or by mail addressed to:
Box Comments--Patents, Assistant Commissioner for Patents, Washington,
DC 20231 marked to the attention of Mr. Bernstein or by facsimile
to (703) 308-6916.
SUPPLEMENTARY INFORMATION:
This rule change implements the Administration's program of reducing
the regulatory burden on the American public in accordance with
the changes proposed in the Notice of Proposed Rulemaking entitled
"1996 Changes to Patent Practice and Procedure" (Notice
of Proposed Rulemaking), published in the Federal Register
at 61 FR 49819 (September 23, 1996), and in the Official
Gazette at 1191 Off. Gaz. Pat. Office 105 (October 22,
1996). The changes involve: (1) simplification of procedures
for filing continuation and divisional applications, establishing
lack of deceptive intent in reissues, petition practice, and in
the filing of papers correcting improperly requested small entity
status; (2) elimination of unnecessary requirements, such
as certain types of petitions to correct inventorship under § 1.48;
(3) removal of rules and portions thereof that merely represent
instructions as to the internal management of the Office more
appropriate for inclusion in the Manual of Patent Examining Procedure
(MPEP); (4) rearrangement of portions of rules to improve
their context; and (5) clarification of rules to aid in understanding
of the requirements that they set forth.
Changes to proposed rules:
This Final Rule contains a number of changes to the text of the
rules as proposed for comment. The significant changes (as opposed
to additional grammatical corrections) are discussed below. Familiarity
with the Notice of Proposed Rulemaking is assumed.
Discussion of Specific Rules and Response to Comments:
Forty-three written comments were received
in response to the Notice of Proposed Rulemaking. The written
comments have been analyzed. For contextual purposes, the comment
on a specific rule and response to the comment are provided with
the discussion of the specific rule. Comments in support of proposed
rule changes generally have not been reported in the responses
to comments sections.
Title 37 of the Code of Federal Regulations,
Parts 1, 3, 5, 7, and 10 are amended as follows:
Part 1:
Section 1.4:
Section 1.4, paragraphs (d)(1) and (2), are amended to be combined
into § 1.4 paragraphs (d)(1)(i) and (d)(1)(ii). Section
1.4(d)(1)(ii) is also amended to include the phrase "direct
or indirect copy" to clarify that the copy of the document(s)
constituting the correspondence submitted to the Office may be
a copy of a copy (of any generation) of the original document(s),
or a direct copy of the original document(s).
Section 1.4(d)(2) is amended to provide
that the presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether
a practitioner or non-practitioner, constitutes a certification
under § 10.18(b), and that violations of § 10.18(b)(2)
may subject the party to sanctions under § 10.18(c).
That is, by presenting a paper to the Office, the party is making
the certifications set forth in § 10.18(b), and is subject
to sanctions under § 10.18(c) for violations of § 10.18(b)(2),
regardless of whether the party is a practitioner or non-practitioner.
The sentence "[a]ny practitioner violating § 10.18(b)
may also be subject to disciplinary action" clarifies that
a practitioner may be subject to disciplinary action in lieu of
or in addition to sanctions under § 10.18(c) for violations
of § 10.18(b).
Section 1.4(d)(2) is amended so that
the certifications set forth in § 10.18(b) are automatically
made upon presenting any paper to the Office by the party presenting
the paper. The amendments to §§ 1.4(d) and 10.18
support the amendments to §§ 1.6, 1.8, 1.10, 1.27,
1.28, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378,
1.804, 1.805, (§§ 1.821 and 1.825 will be reviewed
at a later date in connection with other matters), 3.26, and 5.4
that delete the requirement for verification (MPEP 602) of statements
of facts by applicants and other parties who are not registered
to practice before the Office. The absence of a required verification
has been a source of delay in the prosecution of applications,
particularly where such absence is the only defect noted. The
change to §§ 1.4(d) and 10.18 automatically incorporates
required averments thereby eliminating the necessity for a separate
verification for each statement of facts that is to be presented,
except for those instances where the verification requirement
is retained. Similarly, the amendments to §§ 1.4(d)
and 10.18 support an amendment to § 1.97 (§§ 1.637
and 1.673 will be reviewed at a later date in connection with
other matters) that changes the requirements for certifications
to requirements for statements. This change in practice does
not affect the separate verification requirement for an
oath or declaration under § 1.63, affidavits or declarations
under §§ 1.130, 1.131, and 1.132, or statements
submitted in support of a petition under § 5.25 for
a retroactive license. The statements in §§ 1.494(e)
and 1.495(f) that verification of translations of documents filed
in a language other than English may be required is also maintained,
as such requirements are made rarely and only when deemed necessary
(e.g., when persons persist in translations which appear
on their face to be inaccurate). The requirements for certification
of service on parties in §§ 1.248, 1.510, 1.637
and 10.142 are also maintained.
Section 1.4 is also amended to add a
new paragraph (g) related to an applicant who has not made of
record a registered attorney or agent being required to state
whether assistance was received in the preparation or prosecution
of a patent application. This is transferred from § 1.33(b)
for consistent contextual purposes.
Section 1.6: Section 1.6(d)(3) is amended to provide that continued prosecution applications under § 1.53(d) may be transmitted to the Office by facsimile. However, the procedures described in § 1.8 do not apply to, and no benefit under § 1.8 will be given to, a continued prosecution application under § 1.53(d). That is, an applicant may file a continued prosecution application by facsimile transmission, but the filing date accorded such continued prosecution application will be the date the complete transmission of the continued prosecution application is received in the Office. For example, a continued prosecution application transmitted by facsimile from California at 10:30 pm (Pacific time) on November 18, 1997, and received in the Office at 1:30 am (Eastern time) on November 19, 1997, will be accorded a filing date of
November 19, 1997. An applicant filing
a continued prosecution application by facsimile transmission
bears the responsibility of transmitting such application in a
manner and at a time that will ensure its complete and timely
(§ 1.53(d)(1)(ii)) receipt in the Office.
An applicant filing an application under
§ 1.53(d) (a continued prosecution application) by facsimile
must include an authorization to charge (at least) the basic filing
fee to a deposit account, or the application must be treated under
§ 1.53(f) as having been filed without the basic filing
fee (as fees cannot otherwise be transmitted by facsimile). To
avoid paying the late filing surcharge under § 1.16(e),
an application (including an application under § 1.53(d))
must include the basic filing fee (§ 1.16(e)). As such,
payment of the basic filing fee for an application under § 1.53(d)
on any date later than the filing date of the application under
§ 1.53(d) (even if paid within the period for reply
to the last action in the prior application) is ineffective to
avoid the late filing surcharge under § 1.16(e). Therefore,
unless an application under § 1.53(d) filed by facsimile
includes an authorization to charge the basic filing fee to a
deposit account, the applicant will be given a notification requiring
payment of the appropriate filing fee (§ 1.53(d)(3))
and the late filing surcharge under § 1.16(e) to avoid
abandonment of the § 1.53(d) application.
Section 1.6(d)(3) is also amended to
delete the reference to § 1.8(a)(2)(ii)(D) as this paragraph
was deleted in the Final Rule entitled "Communications with
the Patent and Trademark Office" ("Communications with
the Office"), published in the Federal Register at
61 FR 56439, 56443 (November 1, 1996), and in the Official
Gazette at 1192 Off. Gaz. Pat. Office 95 (November 26,
1996).
Section 1.6(d)(6) is amended to reflect
the transfer of material from §§ 5.6, 5.7, and
5.8 to §§ 5.1 through 5.5.
Section 1.6(e)(2) is amended to remove the requirement that the statement be verified in accordance with the change to §§ 1.4(d)(2) and 10.18.
Section 1.6(f) is added to provide for
the situation in which the Office has no evidence of receipt of
an application under § 1.53(d) (a continued prosecution
application) transmitted to the Office by facsimile transmission.
Section 1.6(f) requires that a showing thereunder include, inter
alia, a copy of the sending unit's report confirming transmission
of the application under § 1.53(d) or evidence that
came into being after the complete transmission of the application
under § 1.53(d) and within one business day of the complete
transmission of the application under § 1.53(d). Therefore,
applicants are advised to retain copies of the sending unit's
reports in situations in which such unit is used to transmit applications
under § 1.53(d) to the Office or otherwise maintain
a log book of the transmission of any application under § 1.53(d)
to the Office. See also "Communications with the
Patent and Trademark Office" Final Rule.
No comments were received regarding the
proposed change to § 1.6.
Section 1.8:
Section 1.8(a)(2)(i)(A) is amended to specifically refer to a
request for a continued prosecution application under § 1.53(d)
as a correspondence filed for the purposes of obtaining an application
filing date, which is excluded by § 1.8(a)(2)(i)(A)
from the procedure set forth in § 1.8. The purpose
of this amendment is to render it clear that, notwithstanding
that a continued prosecution application under § 1.53(d)
may be filed by facsimile transmission, the procedure set forth
in § 1.8 does not apply to a request for a continued
prosecution application under § 1.53(d) (or any correspondence
filed for the purpose of obtaining an application filing date).
That is, the date on the certificate of transmission (§ 1.8(a))
of an application under § 1.53(d) is not controlling
(or even relevant), in that an application under § 1.53(d)
(a continued prosecution application) filed by facsimile transmission
will not be accorded a filing date as of the date on the certificate
of transmission (§ 1.8(a)), unless Office records indicate,
or applicant otherwise establishes pursuant to § 1.6(f),
receipt in the Office of the complete application under § 1.53(d)
on the date on the certificate of transmission, and that date
is not a Saturday, Sunday, or Federal holiday.
Section 1.8(b)(3) is amended to remove
the requirement that the statement be verified in accordance with
the change to §§ 1.4(d)(2) and 10.18.
Section 1.9:
Section 1.9(d) is amended to define a small business concern
as used in 37 CFR Chapter I as any business concern meeting
the size standards set forth in 13 CFR Part 121 to be eligible
for reduced patent fees. The regulations of the Small Business
Administration (SBA) set forth the size standards of a business
concern to be eligible for reduced patent fees. See 13 CFR
121.802. Thus, the language in § 1.9(d) duplicating
such size standards is deleted as redundant, and to avoid confusion
in the event that such size standards are subsequently changed
by the SBA. The MPEP will include SBA's regulations concerning
size standards for a business concern to be eligible for reduced
patent fees.
Section 1.9(f) is amended to add the
phrase "eligible for reduced patent fees" to clarify
that a small entity as used in 37 CFR Chapter I is limited
to an independent inventor, a small business concern or a non-profit
organization that is eligible for reduced patent fees under 35 U.S.C.
41(h)(1).
Section 1.10:
Sections 1.10(d) and (e) are amended to remove the requirement
for a statement that is verified.
Comment 1: One comment suggested that
§ 1.10 be amended to clearly set forth the controlling
date for correspondence filed by "Express Mail" under
§ 1.10.
Response: Section 1.10 was substantially
amended in the "Communications with the Office" Rule
Final (discussed supra). Section 1.10(a) as amended in
the aforementioned Final Rule provides that: (1) correspondence
received by the Office that was delivered by the "Express
Mail Post Office to Addressee" service of the United States
Postal Service (USPS) under § 1.10 will be considered
filed in the Office on the date of deposit with the USPS; (2) the
date of deposit with the USPS is shown by the "date-in"
on the "Express Mail" mailing label or other official
USPS notation; and (3) if the USPS deposit date cannot be
determined, the correspondence will be accorded the Office receipt
date as the filing date.
Section 1.11:
Section 1.11(b) is amended to provide that the filing of a continued
prosecution application under § 1.53(d) of a reissue
application will not be announced in the Official Gazette.
Although the filing of a continued prosecution application of
a reissue application constitutes the filing of a reissue application,
the announcement of the filing of such continued prosecution application
would be redundant in view of the announcement of the filing of
the prior reissue application in the Official Gazette.
Section 1.14:
Section 1.14(a) is amended to: (1) clarify the provisions
of § 1.14(a); (2) provide that copies of an application-as-filed
may be provided to any person on written request accompanied by
the fee set forth in § 1.19(b), without notice to the
applicant, if the application is incorporated by reference in
a U.S. patent; and (3) treat applications in the file jacket
of a pending application under § 1.53(d) as pending
rather than abandoned in determining whether copies of, and access
to, such applications will be granted.
Under current practice, the public is
entitled to access to the original disclosure (or application-as-filed)
of an application, when the application is incorporated by reference
into a U.S. patent. See In re Gallo, 231 USPQ 496
(Comm'r Pat. 1986). Section 1.14(a)(2) is added to avoid the
need for a petition under § 1.14(e) to obtain a copy
of the original disclosure (or application-as-filed) of an application
that is incorporated by reference into a U.S. patent.
Section 1.14 is also amended to add a
paragraph (f) to recognize the change to § 1.47(a) and
(b) which add exceptions to maintaining pending applications in
confidence by providing public notice to nonsigning inventors
of the filing of a patent application.
Comment 2: One comment stated that the
change from "applications preserved in secrecy" to "applications
preserved in confidence" suggests a lower level of security
for the applications permitting greater discovery by third parties.
Response: The term "secrecy"
in § 1.14 was changed to "confidence" in the
Final Rule entitled "Miscellaneous Changes in Patent Practice"
("Miscellaneous Changes in Patent Practice"), published
in the Federal Register at 61 FR 42790 (August 19,
1996), and in the Official Gazette at 1190 Off. Gaz.
Pat. Office 67 (September 17, 1996). This change did
not represent a change in practice, but merely conformed the language
of § 1.14 to that of 35 U.S.C. 122 (the term "secrecy"
is a term of art in regard to matters of national security, and
its former use in § 1.14 was inappropriate).
Section 1.16:
Section 1.16 is amended to add new paragraphs (m) and (n) including
the unassociated text following paragraphs (d) and (l).
No comments were received concerning
§ 1.16.
Section 1.17:
Section 1.17 (and § 1.136(a)) adds a recitation to
an extension of time fee payment for a reply filed within a fifth
month after a nonstatutory or shortened statutory period for reply
was set.
Section 1.17(a) is subdivided into paragraphs
(a)(1) through (a)(5), with paragraphs (a)(1) through (a)(4) setting
forth the amounts for one-month through four-month extension fees.
Section 1.17(a)(5) provides the small entity and other than small
entity amounts for the new fifth-month extension fee.
Section 1.17(a) is being amended to permit
a petition for a fifth-month extension of time. As the Office
may set a shortened statutory period for reply of one-month or
thirty days, whichever is longer, this authority for a petition
under § 1.136(a) will permit an applicant to extend
the period for reply until the six-month statutory maximum (35 U.S.C.
133) without resorting to a petition under § 1.136(b),
or to extend by five months, pursuant to § 1.136(a),
a non-statutory period for taking action (e.g., the time
period in § 1.192(a) for filing an appeal brief).
Section 1.17 paragraphs (e), (f), and
(g) are rewritten as § 1.17 paragraphs (b), (c), and
(d).
Section 1.17(h) is amended to delete
references to petitions under §§ 1.47, 1.48, and
1.84. Sections 1.47, 1.48, and 1.84(a) and (b) are amended to
contain a reference to the petition fee set forth in § 1.17(i),
rather than the petition fee set forth in § 1.17(h).
Section 1.17(i) is amended to: (1) add
a petition under § 1.41 to supply the name(s) of the
inventor(s) after the filing date without an oath or declaration
as prescribed by § 1.63, except in provisional applications;
(2) add a petition under § 1.47 for filing by other
than all the inventors or a person not the inventor; (3) add
a petition under § 1.48 for correction of inventorship,
except in provisional applications; (4) add a petition under
§ 1.59 for expungement and return of information; (5) delete
the references to petitions under §§ 1.60 and 1.62
in view of the deletion of §§ 1.60 and 1.62; (6) add
a petition under § 1.84 for accepting color drawings
or photographs; and (7) add a petition under § 1.91
for entry of a model or exhibit.
Section 1.17(q) is amended to add a petition
under § 1.41 to supply the name(s) of the inventor(s)
after the filing date without a cover sheet as prescribed by § 1.51(c)(1)
in a provisional application.
Section 1.17, as well as §§ 1.103,
1.112, 1.113, 1.133, 1.134, 1.135, 1.136, 1.142, 1.144, 1.146,
1.191, 1.192, 1.291, 1.294, 1.484, 1.485, 1.488, 1.494, 1.495,
(§§ 1.530, 1.550, 1.560, 1.605, 1.617, 1.640, and
1.652 will be reviewed at a later date in connection with other
matters), 1.770, 1.785, (§ 1.821 will be reviewed at
a later date in connection with other matters), and 5.3 are also
amended to replace the phrases "response" and "respond"
with the phrase "reply" for consistency with § 1.111.
Comment 3: One comment questioned why
the terms "respond" and "response" in the
rules of practice were being replaced with the term "reply."
Response: It is appropriate to use a
single term ("reply") throughout the rules of practice,
to the extent possible, to refer to that "reply" by
an applicant to an Office action required to avoid abandonment
and continue prosecution.
Comment 4: At least one comment noted
that there is no statutory authority under 35 U.S.C. 41(a)(8)(C)
for the $2,010 amount set for the fifth month extension of time.
Response: While the Notice of Proposed
Rulemaking proposed a fifth month extension fee of $2010, a Notice
of Proposed Rulemaking entitled "Revision of Patent and Trademark
Fees for Fiscal Year 1998" ("1998 Fee Revision"),
published in the Federal Register at 62 FR 24865 (May 7,
1997), and in the Official Gazette at 1198 Off. Gaz.
Pat. Office 97 (May 27, 1997), proposed that this fee be set
at $2060. The Office is now adopting the $2060 fifth month extension
fee as proposed in the "1998 Fee Revision" Notice of
Proposed Rulemaking.
Under 35 U.S.C. 41(a)(8)(C) (1991),
the Commissioner is authorized to charge $340 for any third or
subsequent petition for a one-month extension of time. However,
under 35 U.S.C. 41(f), the additional fee established pursuant
to 35 U.S.C. 41(a)(8)(C) for a subsequent petition for a
one-month extension of time has been increased to $560 (i.e.,
$560 is the current difference (established under 35 U.S.C.
41(a)(8)(C)) between the $1510 fee for a four-month extension
of time and the $950 three-month extension of time). The $1510
fee for a four-month extension of time plus the $560 fee for an
additional month is $2070 (this differs from the $2060 fee proposed
in the "1998 Fee Revision" Notice of Proposed Rulemaking
due to rounding). Therefore, the Office is authorized under 35 U.S.C.
41(a)(8) to establish a fee of $2060 for a five-month extension
of time.
Section 1.21:
Section 1.21(l) is amended for consistency with § 1.53,
and § 1.21(n) is amended to change the reference to
an improper application under §§ 1.60 or 1.62 to
a reference to an application in which proceedings are terminated
pursuant to § 1.53(e).
No comments were received regarding the
proposed change to § 1.21.
Section 1.26:
Section 1.26(a) is amended to better track the statutory language
of 35 U.S.C. 42(d) and to add back language relating to refunds
of fees paid that were not "required" that was inadvertently
dropped in the July 1, 1993, publication of title 37 CFR,
and from subsequent publications.
No comments were received regarding the
proposed change to § 1.26.
Section 1.27:
Section 1.27 paragraphs (a) through (d) are amended to remove
the requirement that a statement filed thereunder be "verified,"
and to replace "aver" and "averring" with
"state" and "stating." See comments relating
to § 1.4(d). Section 1.27(b) is also amended for clarification
with the movement of a clause relating to "any verified statement"
within a sentence.
No comments were received regarding the
proposed change to § 1.27.
Section 1.28:
Section 1.28(a) is amended to remove the requirement for a statement
that is "verified." See comments relating to § 1.4(d).
Section 1.28(a) is also amended to provide
that a new small entity statement is not required for a continuing
or reissue application where small entity status is still proper
and reliance is placed on a reference to a small entity statement
filed in a prior application or patent or a copy thereof is supplied.
Section 1.28(a) is further amended to state that the payment
of a small entity basic statutory filing fee in a nonprovisional
application, which claims benefit under 35 U.S.C. 119(e),
120, 121, or 365(c) of a prior application (including a continued
prosecution application) or in a reissue application, where the
prior application or the patent has small entity status, will
constitute a reference in the continuing or reissue application
to the small entity statement in the prior application or in the
patent, thereby establishing small entity status in such a nonprovisional
application.
Section 1.28(a) is also amended to require
a new determination of continued entitlement to small entity status
for continued prosecution applications filed under § 1.53(d)
and to clarify that the refiling of applications as continuations,
divisions and continuation-in-part applications and the filing
of reissue applications also require a new determination of continued
entitlement to small entity status prior to reliance on small
entity status in a prior application or patent.
Comment 5: One comment asked whether
the change to § 1.28 regarding small entity requires
that a small entity statement be filed with each continuing application.
Response: While the filing of a continuing
application requires a new determination of entitlement to small
entity status, § 1.28(a) continues to permit reliance
on a small entity statement filed in a prior application for nonprovisional
continuing applications.
Section 1.28(c) is amended to remove
the requirement for a statement of facts explaining how an error
in payment of a small entity fee(s) occurred in good faith and
how and when the error was discovered. A fee deficiency payment
under § 1.28(c) must include the difference between
fee(s) originally paid as a small entity and the other than small
entity fee(s) in effect at the time of payment of the complete
fee deficiency. A fee deficiency payment under § 1.28(c)
will be treated as a representation by the party submitting the
payment that small entity status was established in good faith
and that the original payment of small entity fees was made in
good faith. Any paper submitted under § 1.28(c) will
be placed in the appropriate file without review after the processing
of any check or the charging of any fee deficiency payment specifically
authorized.
Comment 6: One comment suggested that
§ 1.28(c) be amended to clarify current Office practice
regarding the acceptance of papers under § 1.28(c)(2)
in light of two recent District Court decisions: (1) Haden
Schweitzer Corp. v. Arthur B. Myr Industries, Inc., 901 F.
Supp. 1235, 36 USPQ2d 1020 (E.D. Mich. 1995); and (2) DH
Technology, Inc. v. Synergstex International, Inc., 937 F.
Supp. 902, 40 USPQ2d 1754 (N.D. Cal. 1996).
Response: The Office is also aware of
a recent District Court decision in Jewish Hospital of St.
Louis v. Idexx Laboratories, 951 F. Supp 1, 42 USPQ2d 1720
(D. Me. 1996), that relies on § 1.28(c)(2) exclusively.
The changes to § 1.28(c) are not directed to the issue
of whether § 1.28(c)(2) must be viewed as the exclusive
remedy. Nevertheless, an applicant or patentee can avoid undesirable
results by not claiming small entity status unless it is absolutely
certain that the applicant or patentee is entitled to small entity
status (i.e., resolving any doubt, uncertainty, or lack
of information in favor of payment of the full fee). See
MPEP 509.03 ("Small entity status must not be established
unless the person or persons signing the . . .
statement can unequivocally make the required self-certification"
(emphasis added)).
Section 1.33: Section 1.33 is amended to no longer provide that the required residence and post office address of the applicant can appear elsewhere than in the oath or declaration under § 1.63. Section 1.63(a)(3) is amended to require that the post office address as well as the residence be identified therein and not elsewhere. Permitting the residence to be elsewhere in the application other than the oath or declaration, as was in § 1.33(a), would be inconsistent with unamended § 1.63(c) that states that the residence must appear in the oath or declaration. The requirement for placement of the post office address is equivalent to the requirement for the residence to eliminate confusion between the two, which often are the same destination and are usually provided in the oath or declaration. The reference in § 1.33(a) to the assignee providing a correspondence address has been moved within § 1.33(a) for clarification. Other clarifying language includes a reference to § 1.34(b), use of the terms "provided," "furnished" rather than "notified," and "application" rather than "case," and deletion of the expression "of which the Office."
The former language of § 1.33(b)
is transferred to new § 1.4(g). Section 1.33(b) is
amended to set forth the signature requirement for papers filed
in an application (formerly in § 1.33(a)). Section
1.33(b) is specifically amended to provide that amendments and
other papers filed in an application must be signed by: (1) an
attorney or agent of record appointed in compliance with § 1.34(b);
(2) a registered attorney or agent not of record who acts
in a representative capacity under the provisions of § 1.34(a);
(3) the assignee of record of the entire interest (if there
is such); (4) an assignee of record of an undivided part
interest (if there is such), so long as the amendment or other
paper is also signed by any assignee(s) of the remaining interest
and any applicant retaining an interest; or (5) all of the
applicants, including applicants under §§ 1.42,
1.43 and 1.47, unless there is an assignee of record of the entire
interest and such assignee has chosen to prosecute the application
to the exclusion of the applicant(s), and, as such, has taken
action in the application in accordance with §§ 3.71
and 3.73. This is not a change in practice, but simply a clarification
of current signature requirements.
No comments were received regarding the
proposed change to § 1.33.
Section 1.41:
Section 1.41(a) (and § 1.53) is amended to no longer
require that a patent be applied for in the name of the actual
inventors for an application for patent to be accorded a filing
date. The requirement for use of full names is moved to § 1.63(a)
for better context. Section 1.41(a) is specifically amended:
(1) to provide that a patent is applied for in the name(s)
of the actual inventor(s); (2) to add paragraphs (a)(1) and
(a)(2) indicating how the inventorship is set forth in a nonprovisional
and provisional application; and (3) to add paragraph (a)(3)
indicating the need for an identifier consisting of alphanumeric
characters if no name of an actual inventor is provided.
Section 1.41(a)(1) provides that the
inventorship of a nonprovisional application is that inventorship
set forth in the oath or declaration as prescribed by § 1.63,
except as provided for in §§ 1.53(d)(4) and 1.63(d).
Section 1.41(a)(1) also provides that if an oath or declaration
as prescribed by § 1.63 is not filed during the pendency
of a nonprovisional application, the inventorship is that inventorship
set forth in the application papers filed pursuant to § 1.53(b),
unless a petition under this paragraph accompanied by the fee
set forth in § 1.17(i) is filed supplying the name(s)
of the inventor(s).
Section 1.41(a)(2) provides that the
inventorship of a provisional application is that inventorship
set forth in the cover sheet as prescribed by § 1.51(c)(1).
Section 1.41(a)(2) also provides that if a cover sheet as prescribed
by § 1.51(c)(1) is not filed during the pendency of
a provisional application, the inventorship is that inventorship
set forth in the application papers filed pursuant to § 1.53(c),
unless a petition under this paragraph accompanied by the fee
set forth in § 1.17(q) is filed supplying the name(s)
of the inventor(s).
35 U.S.C. 120 and § 1.78(a)
require, inter alia, that an application have at least
one inventor in common with a prior application to obtain the
benefit of the filing date of such application. Considering the
executed oath or declaration (or cover sheet in a provisional
application) the sole mechanism for naming the inventor(s) would
operate as a trap in the event that an application were abandoned
prior to the filing of an oath or declaration in favor of a continuing
application (or in the event that a cover sheet was not filed
in a provisional application). To avoid this result, § 1.41
as adopted provides that the inventorship is that inventorship
named in an executed oath or declaration under § 1.63
(or in the cover sheet under § 1.51(c)(1) in a provisional
application), but that if no executed oath or declaration under
§ 1.63 (or cover sheet under § 1.51(c)(1)
in a provisional application) is filed during the pendency of
the application, the inventorship will be considered to be the
inventor(s) named in the original application papers.
In the peculiar situation in which no
inventor is named in the original application papers (or the correct
inventor(s) are not named in the original application papers),
and no executed oath or declaration under § 1.63 (or
cover sheet under § 1.51(c)(1) in a provisional application)
is filed during the pendency of the application, it will be necessary
for the applicant to file a petition under § 1.41(a)
(and appropriate fee) to name the inventor(s). No explanation
(other than that the paper is supplying or changing the name(s)
of the inventor(s)) or showing of facts concerning the inventorship
or any delay in naming the inventorship is required or desired
in a petition under § 1.41(a). The petition fee is
required to cover (or defray in a provisional application) the
costs of updating the Office's records for the application.
Where no inventor(s) is named on filing,
the Office requests that an identifying name be submitted for
the application. The use of very short identifiers should be
avoided to prevent confusion. Without supplying at least a unique
identifying name the Office may have no ability or only a delayed
ability to match any papers submitted after filing of the application
and before issuance of an identifying application number with
the application file. Any identifier used that is not an inventor's
name should be specific, alphanumeric characters of reasonable
length, and should be presented in such a manner that it is clear
to application processing personnel what the identifier is and
where it is to be found. It is strongly suggested that applications
filed without an executed oath or declaration under §§ 1.63
or 1.175 include the name of the person(s) believed to be the
inventor for identification purposes. Failure to apprise the
Office of the application identifier being used may result in
applicants having to resubmit papers that could not be matched
with the application and proof of the earlier receipt of such
papers where submission was time dependent.
As any inventor(s) named in the original
application papers is considered to be the inventor(s) only when
no oath or declaration under § 1.63 is filed in a nonprovisional
application or cover sheet under § 1.51(c)(1) filed
in a provisional application, the recitation of the inventorship
in an application submitted under § 1.53(b) or (d) without
an executed oath or declaration or cover sheet, respectively,
for purposes of identification may be changed merely by the later
submission of an oath or declaration executed by a different inventive
entity without recourse to a petition under §§ 1.41
or 1.48.
Comment 7: One comment noted that when
an application is filed only an alphanumeric identifier may be
used, which would of necessity require a correction of inventorship,
and questioned how a verified statement under § 1.48(a)
could be filed as there would be no person to sign such statement,
whether the Office will require that the name(s) of the inventor(s)
be submitted within a specified period, and whether the filing
date will be lost if the name(s) of the inventor(s) is not submitted
within such period.
Response: The name(s) of the inventor(s)
in a nonprovisional application are provided in the oath or declaration
under § 1.63 (§ 1.41(a)(2)) and the name(s)
of the inventor(s) in a provisional application are provided in
the cover sheet (§ 1.41(a)(3)). Thus, an application
filed without the name(s) of the inventor(s) must also have been
filed without an oath or declaration under § 1.63 (nonprovisional)
or cover sheet (provisional).
The Office will set a time period in
a nonprovisional application filed without an oath or declaration
under § 1.63 for the filing of such an oath or declaration
(§ 1.53(f)). The Office will set a time period in a
provisional application filed without a cover sheet for the filing
of such cover sheet (§ 1.53(g)). The subsequently filed
oath or declaration or cover sheet will provide the name(s) of
the inventor(s). No petition under § 1.48(a) would
be required where there was an alphanumeric identifier (and not
a name of a person) or where the person(s) set forth as the inventor(s)
was incorrect.
In the event that an oath or declaration
or cover sheet is not timely filed, the application will become
abandoned and the inventorship will be considered to be the inventor(s)
named in the original application papers. The failure to timely
file an oath or declaration, cover sheet, or the name(s) of the
inventor(s) is not a filing date issue.
Comment 8: One comment thought that
the proposed change eliminating the need to identify any inventor
would lead to sloppy filing procedures and that it should in almost
all cases be possible for practitioners to correctly identify
the inventors at the time of filing.
Response: Experience has demonstrated
that a significant number of applications filed under § 1.53(b)
without an executed oath or declaration have been filed with incorrect
inventorships with explanations running from "there was no
time to investigate the inventorship" to "the inventors
contacted either did not understand the inventorship requirements
under U.S. patent law or did not appreciate that the claims as
filed included or did not include the contribution of the omitted
or erroneously added inventor." Additionally, Office experience
is that while almost all § 1.48(a) petitions concerning
such matters are eventually granted, only a small percentage are
granted on the initial petition thereby causing a prolonged prosecution
period, which is undesirable in view of the amendment to 35 U.S.C.
154 contained in the Uruguay Round Agreements Act (URAA), Pub.
L. 103-465, 108 Stat. 4809 (1994).
Section 1.47:
Section 1.47 paragraphs (a) and (b) are amended, pursuant to
35 U.S.C. 116 and 35 U.S.C 118, to provide for publication
in the Official Gazette of a notice of filing for all applications,
except for continued prosecution applications under § 1.53(d),
submitted under this section rather than only when notice to the
nonsigning inventor(s) is returned to the Office undelivered or
when the address of the nonsigning inventor(s) is unknown. The
information to be published, after grant of the § 1.47
petition, will include: The application number, filing date,
invention title and name(s) of the nonsigning inventor(s). Letters
returned as undeliverable are difficult to match with the related
application file, and when matched with the file, the applications
are burdensome to flag as requiring further action by the Office.
Accordingly, the return of letters is not a desirable means
of triggering publication of a notice to a nonsigning inventor
as to the filing of the application. Furthermore, when a returned
letter is used as such a trigger, another review of the application
must be made for returned correspondence. As the best time for
review of returned letters is after allowance, but before issuance,
of an application, processing of the application would be delayed
and done at a time that could be best used for printing related
processing requirements. Printing of notice of the filing of
all applications wherein § 1.47 status is granted does
not require any such review to be made. In order to best balance
the obligation of providing notice to inventors and efficient
processing of applications, notice in the Official Gazette
of the filing of § 1.47 applications will be prepared
essentially at the same time that the letter notice is directly
sent to the nonsigning inventor.
Paragraphs (a) and (b) of this section
are also amended to exclude the filing of continued prosecution
applications under § 1.53(d) from the notice requirement.
Section 1.47 is also amended for clarification
purposes. A reference to an "omitted inventor" in § 1.47(a)
is replaced with "nonsigning inventor." The statements
in § 1.47 paragraphs (a) and (b) that a patent will
be granted upon a satisfactory showing to the Commissioner are
deleted as unnecessary. Section 1.47(b) is amended to clarify
that it applies only where none of the inventors are willing or
can be found to sign the oath or declaration by substitution of
"an inventor" by "all the inventors." The
use of "must state" in regard to the last known address
is deleted as redundant in view of the explicit requirement for
such address in the rule. The sentence in § 1.47(b)
referring to the filing of the assignment, written agreement to
assign or other evidence of proprietary interest is deleted as
redundant in view of the requirement appearing earlier in § 1.47(b)
calling for "proof of pertinent facts."
Comment 9: One comment believed that
the amendment to § 1.47(b) results in a change in practice
permitting an assignee to proceed thereunder only where all the
inventors refuse to sign, and that the assignee should not be
precluded from making the required declaration where only one
inventor refuses to cooperate as the other inventors may not have
personal knowledge of the facts.
Response: While the specific language
of § 1.47(b) is amended to recite the condition that
"all the inventors refuse to execute an application"
the prior use of the term "inventor" was intended to
mean and was interpreted as meaning all inventors. See
MPEP 409.03(b). Accordingly, the language clarification is not
a change in practice.
Although it is unclear as to what particular
"facts" the comment is addressed to that the other inventors
would not have personal knowledge of, facts as to the inventorship
of the noncooperating inventor would better lie with the other
inventors who are after all required to be joint inventors, 35 U.S.C.
116, and therefore the other inventors should have the best knowledge
of the facts required for a declaration under § 1.63.
Any declaration of facts, in support of the petition, to show,
e.g., that an inventor has refused to sign a declaration
after having been given an opportunity to do so, should be made
by someone with first-hand knowledge of the events, such as the
attorney who presented the inventor with the application papers.
Section 1.48:
Section 1.48 provides for correction of inventorship in an application
(other than a reissue application). Section 1.324 provides for
correction of inventorship in a patent. Sections 1.171 and 1.175
provide for correction of inventorship in a patent via
a reissue application.
Section 1.48 is amended in its title
to clarify that the section concerns patent applications, other
than reissue applications, and not patents. Where a patent names
an incorrect inventive entity, the inventorship error may be corrected
by reissue. See MPEP 1402. Where a reissue application
names an incorrect inventive entity in the executed reissue oath
or declaration (whether the reissue application is filed for the
sole purpose or in-part to correct the inventorship, or is filed
for purposes other than correction of the inventorship), a new
reissue oath or declaration in compliance with § 1.175
may be submitted with the correct inventorship without a petition
under § 1.48. This is because it is the inventorship
of the patent being reissued that is being corrected (via
a reissue application).
35 U.S.C. 251, ¶3, provides that the provisions of title 35, U.S.C., relating to applications apply to reissue applications. 35 U.S.C. 116, ¶3, authorizes the Commissioner to permit correction of inventorship in an application under such terms as the Commissioner prescribes. The Commissioner has determined that correction of inventorship in a reissue application may be accomplished under 35 U.S.C. 251 via the reissue oath or declaration, without resort to a petition under § 1.48. Therefore, § 1.48 has been amended to specifically exclude its applicability to correction of inventorship in a reissue application.
Section 1.48(a) will not require correction
of the inventorship if the inventorship or other identification
under § 1.41 was set forth in error on filing of the
application. Section 1.48(a) is amended to apply only to correction
of inventor or inventors, in applications, other than reissue
applications, from that named in an originally filed executed
oath or declaration and not to the naming of inventors or others
for identification purposes under § 1.41. The statement
to be submitted will be required only from the person named in
error as an inventor or from the person who through error was
not named as an inventor rather than from all the original named
inventors so as to comply with 35 U.S.C. 116. The requirement
that any amendment of the inventorship under § 1.48(a)
be "diligently" made has been removed. The applicability
of a rejection under 35 U.S.C. 102(f) or (g) against an application
with the wrong inventorship set forth therein and any patent that
would issue thereon is a sufficient motivation for prompt correction
of the inventorship without the need for a separate requirement
for diligence.
Comment 10: Two comments expressed opposition to deletion of the diligence requirement in § 1.48 paragraphs (a) through (c) in that removal thereof would seem to promote delay in correction of the inventorship and decrease the importance of having the correct inventorship.
Response: In addition to the motivation
noted in the explanation of the rules for not allowing a patent
to issue with improper inventorship, the criteria for correction
of the inventorship becomes more restrictive subsequent to issuance
under § 1.324 (having a statutory basis under 35 U.S.C.
256) than under § 1.48(a) (having a statutory basis
under 35 U.S.C. 116). 35 U.S.C. 256 requires participation
by all the parties including each original named inventor, which
participation may be harder to obtain after the patent has issued.
Petitions under § 1.48(a) filed earlier while the application
is pending may seek waiver under § 1.183 of participation
of some of the parties needed to participate. Additionally, petitions
under § 1.48 in pending applications are not entered
as a matter of right in rejected (the criteria of § 1.116
applies) or allowed (the criteria of § 1.312 applies)
applications. See § 1.48(a) and MPEP 201.03.
A clarifying reference to § 1.634
is added in § 1.48(a) for instances when inventorship
correction is necessary during an interference and has been moved
from § 1.48(a)(4) for improved contextual purposes.
The § 1.48(a)(1) statement
requires a statement only as to the lack of deceptive intent rather
than a statement of facts to establish how the inventorship error
was discovered and how it occurred, since the latter requirement
is deleted. Additionally, the persons from whom a statement is
required now includes any person who through error was not named
as an inventor but limits statements from the original named inventors
to only those persons named in error as inventors rather than
all persons originally named as inventors including those correctly
named. The paragraph is amended to remove the requirement that
the statement be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18.
Comment 11: One comment opposed the
removal of the Office from examining the issue of inventorship
as substantive law invalidates patents that have issued in the
names of incorrect inventors and the Office is charged with the
duty of examining applications for the purpose of denying issue
to those applications that do not meet the standards of patentability.
Where an oath has originally been filed asserting the proper
inventor is one entity and a subsequent paper asserts that the
proper inventor is another, under such circumstances "the
facts are inherently suspect" and an investigation by the
Office is warranted and required by statute.
Response: The amendments to § 1.48 have otherwise received overwhelming support.
The Office has pursued the existence
of improper inventorship in applications by rejection under 35 U.S.C.
102(f) or (g) and will continue to do so independent of the change
in the verified statement requirements under § 1.48
paragraphs (a) or (c). A request to change inventorship, however,
often requested by the current inventors or assignee on their
own initiative is not seen to be inherently fraught with deceptive
intent as to warrant a close and detailed examination absent more.
A statement that the error was made without deceptive intent
is seen to be a sufficient investigation complying with the statutory
requirement under 35 U.S.C. 116, particularly as most petitions
are eventually granted or an application can be refiled naming
the new desired inventive entity. Refiling of the application
to change the inventorship will not cause the Office, absent more,
to initiate an investigation as to the correct inventorship or
cause a rejection under 35 U.S.C. 102(f) or (g) to be made.
Additionally, it should be noted that the Office views a petition
under § 1.48 to be a procedural matter and not to represent
a substantive determination as to the actual inventorship. See
MPEP 201.03, Verified Statement of Facts.
For those situations where there was
deceptive intent, the Office is lacking certain necessary tools
for a thorough inquiry (e.g., subpoena authority) to ascertain
the truth thereof (as in other situations under §§ 1.28
and 1.56). However, the inquiry cannot be waived by the Office
due to the statutory requirement under 35 U.S.C. 116. There
is no other reasonable course of action than to accept as an explanation
for the execution of a § 1.63 oath or declaration setting
forth an erroneous inventive entity that the inventor did not
remember the contribution of the omitted inventor at the time
the oath or declaration was executed (absent subpoena power and
inter parties hearings), and therefore further inquiries
into the matter other than a statement of lack of deceptive intent
are a waste of Office resources.
Comment 12: One comment suggested that
in limiting the submission of a verified statement of facts to
only the parties being added or deleted as inventors, agreement
of the original named inventors should also be obtained as is
currently done when verified statements of facts from all the
original named inventors are required.
Response: Agreement or acquiescence
of the original named inventors, to the extent that they remain
as inventors, to the new inventorship will be obtained through
the retained requirement that the actual inventive entity complete
a new oath or declaration under § 1.63, which must set
forth the new inventive entity. Additionally, through the rule
changes to this section and §§ 1.28 and 1.175 the
Office is decreasing its investigation of claims relating to a
lack of deceptive intent. The remaining purpose of these rules
is to force the applicant(s) to merely make an assertion as to
a lack of deceptive intent thereby permitting subsequent reviewers
(tribunals or otherwise) to determine, in light of all the available
facts, whether the applicant(s) complied with the statute.
Section 1.48(a)(2) is amended for clarification purposes to indicate the availability of §§ 1.42, 1.43 or 1.47 in meeting the requirement for an executed oath or declaration under § 1.63 from each actual inventor. Section 1.47 is only applicable to the person to be added as an inventor (inventors named in an application transmittal letter can be deleted without petition). For those persons already having submitted an executed oath or declaration under § 1.63, a petition under § 1.183, requesting waiver of reexecution of an oath or declaration, may be an appropriate remedy. The requirement for an oath or declaration is maintained in § 1.48(a) notwithstanding its replacement in § 1.324 for issued patents by a statement of agreement or lack of disagreement with the requested change in view of the need to satisfy the duty of disclosure requirement in a pending application that is set forth in a § 1.63 oath or declaration.
Section 1.48(a)(4) is amended to include
a citation to § 3.73(b) to clarify the requirements
for submitting a written consent of assignee, which is subject
to the requirement under § 3.73(b), and to delete the
reference to an application involved in an interference, which
is being moved to § 1.48(a). Section 1.48(a)(4) is
also amended to clarify that the assignee required to submit its
written consent is only the existing assignee of the original
named inventors at the time the petition is filed and not any
party that would become an assignee based on the grant of the
inventorship correction.
Section 1.48(b) is also amended to remove
the requirement that a petition thereunder be diligently filed.
The applicability of a rejection under 35 U.S.C. 102(f)
or (g) against an application with the wrong inventorship set
forth therein and any patent that would issue thereon is sufficient
motivation for prompt correction of the inventorship without the
need for a separate requirement for diligence.
Section 1.48(b) is amended to have a
clarifying reference to § 1.634 added for instances
when inventorship correction is necessary during an interference.
Comment 13: A comment noted that the
literal wording of § 1.48(b) permits correction thereunder
only where the correct inventors were named on filing thereby
excluding correction under § 1.48(b) where an incorrect
inventorship was named on filing that was subsequently corrected
under § 1.48(a) and, subsequent to the correction prosecution
of the application, required additional correction under § 1.48(b).
Response: The comment is accepted and
§ 1.48(b) has been modified to delete "when filed"
after "nonprovisional application" for clarification
purposes. Additionally, the term "originally" in the
first sentence of paragraph (b) has been replaced with "currently."
Section 1.48(c) is amended so that a
petition thereunder no longer needs to meet the current requirements
of § 1.48(a), which are also changed. A statement from
each inventor being added that the inventorship amendment is necessitated
by amendment of the claims and that the error occurred without
deceptive intent is required under § 1.48(c)(1) rather
than the previous requirement of a statement from each original
named inventor. The previous requirements under § 1.48(a)
for an oath or declaration, the written consent of an assignee
and the written consent of any assignee are retained, but are
now separately set forth in §§ 1.48 paragraphs
(c)(2) through (c)(4). The particular circumstances of a petition
under this paragraph, adding an inventor due to an amendment of
the claims that incorporates material attributable to the inventor
to be added, is seen to be indicative of a lack of deceptive intent
in the original naming of inventors. Accordingly, all that must
be averred to is that an amendment of the claims has necessitated
correction of the inventorship and that the inventorship error
existing in view of the claim amendment occurred without deceptive
intent. The previous requirement for diligence in filing the
petition based on an amendment to the claims is not retained as
applicants have the right, prior to final rejection or allowance,
to determine when particular subject matter is to be claimed.
Applicants should note that any petition under § 1.48
submitted after allowance is subject to the requirements of § 1.312,
and a petition submitted after final rejection is not entered
as a matter of right.
Section 1.48(c)(2) is amended to clarify
the availability of §§ 1.42, 1.43 and 1.47 in meeting
the requirement for an executed oath or declaration under § 1.63.
Section 1.47 is only applicable to the person to be added as
an inventor. For those persons already having an executed oath
or declaration under § 1.63, a petition under § 1.183,
requesting waiver of reexecution of an oath or declaration, may
be an appropriate remedy.
Section 1.48(c)(4) is amended to clarify
that the assignee required to submit its written consent is only
the existing assignee of the original named inventors at the time
the petition is filed and not any party that would become an assignee
based on the grant of the inventorship correction. A citation
to § 3.73(b) is presented.
Section 1.48(d) is amended by addition
of "their part" to replace "the part of the actual
inventor or inventors" and of "omitted" to replace
"actual" to require statements from the inventors to
be added rather than from all the actual inventors so as to comply
with 35 U.S.C. 116.
Section 1.48(d)(1) is also clarified
to specify that the error to be addressed is the inventorship
error. It is not expected that the party filing a provisional
application will normally need to correct an error in inventorship
under this paragraph by adding an inventor therein except when
necessary under § 1.78 to establish an overlap of inventorship
with a continuing application.
Section 1.48(d)(1) is also amended to
remove the requirement that the statement be verified in accordance
with the change to §§ 1.4(d)(2) and 10.18.
Section 1.48(e)(1) is amended to replace
a requirement in provisional applications that the required statement
be one "of facts" directed towards "establishing
that the error" being corrected "occurred without deceptive
intention," requiring only a statement that the inventorship
error occurred without deceptive intent. Paragraph (e)(1) is
also amended to remove the requirement that the statement be verified
in accordance with the change to §§ 1.4(d)(2) and
10.18. It is not expected that the party filing a provisional
application would need to file a petition under this paragraph
since the application will go abandoned by operation of law (35 U.S.C.
111(b)(5)), and the need to delete an inventor will not affect
the overlap of inventorship needed to claim priority under § 1.78(a)(3)
for any subsequently filed nonprovisional application.
Section 1.48(e)(3) is amended to clarify that the assignee required to submit its written consent is only the prior existing assignee before correction of the inventorship is granted and not any party that would become an assignee based on the grant of the inventorship correction. A reference to § 3.73(b) is added.
Section 1.48(f) is added to provide that
the later filing of an executed oath or declaration (or cover
sheet (§ 1.51(c)(1)) in a provisional application) during
the pendency of the application would act to correct the inventorship
without a specific petition for such correction and will be used
to further process the application notwithstanding any inventorship
or other identification name earlier presented.
Section 1.48(g) is added to specifically
recognize that the Office may require such other information as
may be deemed appropriate under the particular circumstances surrounding
a correction of the inventorship.
Section 1.51:
Section 1.51, paragraphs (a)(1) and (a)(2), are re-written as
§ 1.51, paragraphs (b) and (c), respectively, and § 1.51(b)
is re-written as § 1.51(d). Section 1.51(c) covering
the use of an authorization to charge a deposit account is removed
as unnecessary in view of § 1.25(b).
No comments were received regarding the
proposed change to § 1.51.
Section 1.52:
Section 1.52, paragraphs (a) and (d), are amended to remove the
requirement that the translation be verified in accordance with
the change to §§ 1.4(d)(2) and 10.18. Section
1.52, paragraph (c), is amended to remove the reference to §§ 1.123
through 1.125 to: (1) reflect a transfer of material from
§§ 1.123 and 1.124 to § 1.121; (2) further
clarify that § 1.125 is not a vehicle amendment of an
application; and (3) to clarify that alterations to application
papers may be made on, as well as before, the signing of the oath
or declaration. Section 1.52, paragraphs (a) and (d), are also
amended to clarify the need for a statement that the translation
being offered is an accurate translation, as in § 1.69(b).
Comment 14: Two comments were received
asking whether the attorney can sign the statement that the translation
is accurate, and how much firsthand knowledge does a practitioner
need to know that the translation is accurate.
Response: The Office will accept a statement
that the translation is accurate from any party. However, any
party signing such statement must keep in mind the averments that
are made under §§ 1.4(d) and 10.18. The actual
firsthand knowledge needed by a practitioner is that amount of
knowledge to comply with the averments in §§ 1.4(d)
and 10.18.
Comment 15: A comment questioned whether
there is any difference between the previous language of "verified
translation" and the present language of "accurate translation."
Response: The previous language was
directed at a verification that the translation is accurate.
A verification requirement is now unnecessary due to the amendments
to §§ 1.4(d) and 10.18. Thus, § 1.52(d)
is amended to include the more direct term "accurate."
Section 1.53:
Section 1.53 is amended to include headings for each paragraph
for purposes of clarity.
Section 1.53(a) is amended to state that
"[a]ny papers received in the Patent and Trademark Office
which purport to be an application for a patent will be assigned
an application number for identification purposes." That
is, the Office will refer to papers purporting to be an application
for a patent as an "application" and assign such "application"
an application number for identification purposes. This reference,
however, does not imply that such papers meet the requirements
in § 1.53(b) to be accorded a filing date or constitute
an "application" within the meaning of 35 U.S.C.
111.
Section 1.53(b) is amended to provide
that: (1) the filing date of an application for patent filed
under § 1.53(b) is the date on which a specification
as prescribed by 35 U.S.C. 112 containing a description pursuant
to § 1.71 and at least one claim pursuant to § 1.75,
and any drawing required by § 1.81(a) are filed in the
Office; (2) no new matter may be introduced into an application
after its filing date; (3) a continuation or divisional application
filed by all or by fewer than all of the inventors named in a
prior nonprovisional application may be filed under § 1.53(b)
or (d); and (4) a continuation or divisional application
naming an inventor not named in the prior nonprovisional application
or a continuation-in-part application must be filed under § 1.53(b).
Section 1.53(c) is amended to provide for provisional applications (formerly provided for in § 1.53(b)(2)). Section 1.53(c) includes the language of former § 1.53(b)(2), with certain changes for purposes of clarity. Section 1.53(c)(i), for example, includes language requiring either the provisional application cover sheet required by § 1.51(c)(1) or a cover letter identifying the application as a provisional application. The cover letter may be an application transmittal letter or some other paper identifying the accompanying papers as a provisional application.
Section 1.53(d) is amended to provide
for continued prosecution applications. Section 1.53(d)(1) provides
that a continuation or divisional application, but not a continuation-in-part,
of a prior nonprovisional application may be filed as a continued
prosecution application under § 1.53(d), subject to
the conditions specified in paragraph (d)(1)(i) and (d)(1)(ii).
That is, an application under § 1.53(d) cannot be a
continuation-in-part application, and the prior application cannot
be a provisional application.
Section 1.53(d)(1)(i) specifies that
the prior application be either: (1) complete as defined
by § 1.51(b) and filed on or after June 8, 1995;
or (2) the national stage of an international application
in compliance with 35 U.S.C. 371 and filed on or after June 8, 1995.
The phrase "prior" application in § 1.53(d)(1)
means the application immediately prior to the continued prosecution
application under § 1.53(d), in that a continued prosecution
application under § 1.53(d) may claim the benefit under
35 U.S.C. 120, 121, or 365(c) of applications filed prior
to June 8, 1995 so long as the application that is immediately
prior to the continued prosecution application under § 1.53(d)
was filed on or after June 8, 1995.
Section 1.53(d)(1)(ii) specifies that
the application under § 1.53(d) be filed before the
earliest of: (1) payment of the issue fee on the prior application,
unless a petition under § 1.313(b)(5) is granted in
the prior application; (2) abandonment of the prior application;
or (3) termination of proceedings on the prior application.
Section 1.53(d)(2) provides that the
filing date of a continued prosecution application is the date
on which a request on a separate paper for an application under
§ 1.53(d) is filed. That is, a request for an application
under § 1.53(d) cannot be submitted within papers filed
for another purpose (e.g., the filing of a "conditional"
request for a continued prosecution application within an amendment
after final for the prior application is an improper request for
a continued prosecution application under § 1.53(d)).
In addition, a "conditional"
request for a continued prosecution application will not be permitted.
Any "conditional" request for a continued prosecution
application submitted (as a separate paper) with an amendment
after final in an application will be treated as an unconditional
request for a continued prosecution application of such application.
This will result (by operation of § 1.53(d)(2)(v))
in the abandonment of such (prior) application, and (if so instructed
in the request for a continued prosecution application) the amendment
after final in the prior application will be treated as a preliminary
amendment in the continued prosecution application.
Section 1.53(d)(2) further provides that
an application filed under § 1.53(d): (1) must
identify the prior application (§ 1.53(d)(i)); (2) discloses
and claims only subject matter disclosed in the prior application
(i.e., is a continuation or divisional, but not a continuation-in-part)
(§ 1.53(d)(1)(ii)); (3) names as inventors the
same inventors named in the prior application on the date the
application under § 1.53(d) was filed, except as provided
in § 1.53(d)(4) (§ 1.53(d)(2)(iii)); (4) includes
the request for an application under § 1.53(d), will
utilize the file jacket and contents of the prior application,
including the specification, drawings and oath or declaration,
from the prior application to constitute the new application,
and will be assigned the application number of the prior application
for identification purposes (§ 1.53(d)(2)(iv)); and
(5) is a request to expressly abandon the prior application
as of the filing date of the request for an application under
§ 1.53(d) (§ 1.53(d)(2)(v)).
Section 1.53(d)(3) provides that the
filing fee for a continued prosecution application filed under
§ 1.53(d) is: (1) the basic filing fee as set
forth in § 1.16; and (2) any additional § 1.16
fee due based on the number of claims remaining in the application
after entry of any amendment accompanying the request for an application
under § 1.53(d) and entry of any amendments under § 1.116
not entered in the prior application which applicant has requested
to be entered in the continued prosecution application. See
35 U.S.C. 41(a)(1)-(4).
Section 1.53(d)(4) provides that an application
filed under § 1.53(d) may be filed by fewer than all
the inventors named in the prior application, provided that the
request for an application under § 1.53(d) when filed
is accompanied by a statement requesting deletion of the name
or names of the person or persons who are not inventors of the
invention being claimed in the new application, and that no person
may be named as an inventor in an application filed under § 1.53(d)
who was not named as an inventor in the prior application on the
date the application under § 1.53(d) was filed, except
by way of a petition under § 1.48. Thus, an application
under § 1.53(d) must name as inventors either the same as
(§ 1.53(d)(2)(iii)) or fewer than all of (§ 1.53(d)(4))
the inventors named in the prior application. A request for an
application under § 1.53(d) purporting to name as an inventor
a person not named as an inventor in the prior application (even
if accompanied by a new oath or declaration under § 1.63
listing that person as an inventor) will be treated as naming
the same inventors named in the prior application (§ 1.53(d)(2)(iii)).
Section 1.53(d)(5) provides that: (1) any new change must be made in the form of an amendment to the prior application; (2) no amendment in an application under § 1.53(d) (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application; and (3) any new specification filed with the request for an application under § 1.53(d) will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125. Pursuant to the provisions of § 1.53(d)(5), where applicant desires entry of an amendment in the application under § 1.53(d) that was previously denied entry under § 1.116 in the prior application, the applicant must request its entry (and pay any additional claims fee required by § 1.53(d)(3)(ii)) in the application under § 1.53(d) prior to action by the Office in the application under § 1.53(d). Any amendment submitted with the request for an application under § 1.53(d) that seeks to add matter that would have been new matter in the prior application will be objected to under § 1.53(d), and the applicant will be required to cancel the subject matter that would have been new matter in the prior application.
Section 1.53(d)(6) provides that the
filing of a continued prosecution application under § 1.53(d)
will be construed to include a waiver of confidentiality by the
applicant under 35 U.S.C. 122 to the extent that any member
of the public who is entitled under the provisions of § 1.14
to access to, copies of, or information concerning either the
prior application or any continuing application filed under the
provisions of this paragraph may be given similar access to, copies
of, or similar information concerning, the other application(s)
in the application file.
Section 1.53(d)(7) provides that a request
for an application under § 1.53(d) is a specific reference
under 35 U.S.C. 120 to every application assigned the application
number identified in such request, and that no amendment in a
continued prosecution application under § 1.53(d) shall
delete this specific reference to any prior application. That
is, other than the identification of the prior application in
the request required by § 1.53(d) for a continued prosecution
application, a continued prosecution application needs no further
identification of or reference to the prior application (or any
prior application assigned the application number of such application
under § 1.53(d)) under 35 U.S.C. 120 and § 1.78(a)(2).
Section 1.53(d)(8) provides that in addition
to identifying the application number of the prior application,
applicant is urged to furnish in the request for an application
under § 1.53(d) the following information relating to
the prior application to the best of his or her ability: (1) title
of invention; (2) name of applicant(s); and (3) correspondence
address.
Section 1.53(d)(9) provides that: (1) envelopes
containing only requests and fees for filing an application under
§ 1.53(d) should be marked "Box CPA" and (2) requests
for an application under § 1.53(d) filed by facsimile
transmission should be clearly marked "Box CPA."
Section 1.53(e)(1) provides that if an
application deposited under § 1.53 paragraphs (b), (c),
or (d) does not meet the respective requirements in § 1.53
paragraphs (b), (c), or (d) to be entitled to a filing date, applicant
will be so notified, if a correspondence address has been provided,
and given a time period within which to correct the filing error.
Section 1.53(e)(2) provides that: (1) any
request for review of a notification pursuant to § 1.53(e)(1),
or a notification that the original application papers lack a
portion of the specification or drawing(s), must be by way of
a petition pursuant to § 1.53(e); (2) any petition
under § 1.53(e) must be accompanied by the fee set forth
in § 1.17(i) in an application filed under § 1.53
paragraphs (b) or (d), and the fee set forth in § 1.17(q)
in an application filed under § 1.53(c); and (3) in
the absence of a timely (§ 1.181(f)) petition pursuant
to this paragraph, the filing date of an application in which
the applicant was notified of a filing error pursuant to paragraph
(e)(1) of this section will be the date the filing error is corrected.
Section 1.53(e)(3) provides that if an
applicant is notified of a filing error pursuant to § 1.53(e)(1),
but fails to correct the filing error within the given time period
or otherwise timely (§ 1.181(f)) take action pursuant
to § 1.53(e)(2), proceedings in the application will
be considered terminated, and that where proceedings in an application
are terminated pursuant to § 1.53(e)(3), the application
may be disposed of, and any filing fees, less the handling fee
set forth in § 1.21(n), will be refunded.
Section 1.53(f) is amended to include
the language of former § 1.53(d)(1) and to provide that
the oath or declaration required for a continuation or divisional
application under § 1.53(b) may be a copy of the executed
oath or declaration filed in the prior application (under § 1.63(d)).
Section 1.53 paragraphs (g), (h), (i),
and (j) are added and include the language of former § 1.53
paragraphs (d)(2), (e)(1), (e)(2), and (f), respectively.
Comment 16: The majority of the comments
supported the deletion of §§ 1.60 and 1.62 in favor
of the proposed amendment to § 1.53.
Response: The Office is deleting §§ 1.60
and 1.62 in favor of an amended § 1.53.
Comment 17: Several comments suggested
that the Office adopt a continued prosecution procedure for applications
filed on or after June 8, 1995 similar to the practice set
forth in § 1.129(a), rather than the continued prosecution
application practice set forth in § 1.53(d).
Response: Section 532(a)(2)(A) of Pub.
L. 103-465 provides specific authorization for the practice set
forth in § 1.129(a). There is currently no statutory
authority for the Office to simply charge the patent fees set
forth in 35 U.S.C. 41(a) for further examination of an application.
35 U.S.C. 41(d) would authorize the Office to further examine
an application for a fee that recovers the estimated average cost
to the Office of such further examination; however, as 35 U.S.C.
41(h) is applicable only to fees under 35 U.S.C. 41(a) and
(b), the Office would not be authorized to provide a small entity
reduction in regard to such fee. Thus, the only mechanism by
which the Office may provide further examination for a fee to
which the small entity reduction is applicable is via a
continuing application.
Section 209 of H.R. 3460, 104th Cong.,
2d Sess. (1996), would have provided statutory authority for the
further reexamination of an application for a fee to which the
small entity reduction was applicable. Section 209 of H.R. 400,
105th Cong., 1st Sess. (1997), if enacted, will provide statutory
authority for the further reexamination of an application for
a fee to which the small entity reduction will be applicable.
Comment 18: One comment stated that
the combination of §§ 1.53, 1.60, and 1.62 into
a single § 1.53 was complex and confusing. Another
comment suggested that § 1.53 be split into a number
of sections, or that headings be used in § 1.53 in the
manner that headings are used in §§ 1.84 and 1.96.
Response: Placing the provisions of
§ 1.53 into multiple sections, rather than multiple
paragraphs of a single section, would not result in a simplification
of its provisions. The Office considers it appropriate to place
the filing provisions concerning all applications (nonprovisional,
provisional, and continued prosecution) into a single section
to reduce the confusion as to the filing requirements for any
application for patent. Section 1.53 as adopted includes headings
in each paragraph of § 1.53 to indicate the subject
to which each of these paragraphs pertains.
Comment 19: One comment suggested amending
§ 1.53 to require applicants to indicate changes to
the disclosure in a continuation or divisional application.
Response: The suggestion is not adopted.
The Office did not propose to amend § 1.53 to require
applicants to indicate changes to the disclosure in any continuing
application. Thus, adopting a change to impose this additional
burden on an applicant is not considered appropriate in this Final
Rule.
Comment 20: One comment suggested that
the Office permit applicants to file a statement requesting deletion
of an inventor in a continuation or divisional application any
time prior to or coincident with the mailing of an issue fee payment.
The comment questioned whether the time period in § 1.53(e)(1)
addresses this issue.
Response: Unless a statement requesting
the deletion of the names of the person or persons who are not
inventors in the continuation or divisional application accompanies
the copy of the executed oath or declaration submitted in accordance
with § 1.63(d) in an application filed pursuant to § 1.53(b),
or accompanies the request for an application under § 1.53(d)
in an application filed pursuant to § 1.53(d), the inventorship
of the continuation or divisional application filed under § 1.53(b)
using a copy of the oath or declaration of the prior application
pursuant to § 1.63(d) or filed under § 1.53(d)
will be considered identical to that in the prior application,
and correction of the inventorship (if appropriate) must be by
way of § 1.48. Identification of the inventorship is
necessary to the examination of an application (e.g., 35 U.S.C.
102(f) and (g)). As such, the Office must require identification
of the inventorship prior to examination of an application.
Section 1.53(e)(1) applies in those instances
in which papers filed as an application under § 1.53(b),
(c), or (d) do not meet the respective requirements of § 1.53(b),
(c), or (d) to be entitled to a filing date. Submitting an oath
or declaration is not a filing date issue, and naming the inventors
is no longer a filing date issue. Thus, the provisions of § 1.53(e)
do not apply to the filing of a statement requesting deletion
of an inventor in a continuation or divisional application.
Comment 21: One comment questioned whether
§ 1.53(d) applies only to applications filed on or after
June 8, 1995, and questioned whether § 1.53(d)
should be made applicable to pending applications filed prior
to June 8, 1995. The comment also questioned the relationship
between § 1.129(a) and § 1.53(d).
Response: Section § 1.53(d),
by its terms, permits the filing of a continuation or divisional
thereunder of only a nonprovisional application that, inter
alia, is either: (1) complete as defined by § 1.51(b)
and filed on or after June 8, 1995 or; (2) resulted
from entry into the national stage of an international application
in compliance with 35 U.S.C. 371 filed on or after June 8,
1995. While § 1.53(d) and § 1.129(a) both
provide for the continued prosecution of an application, these
sections are distinct in that they apply to a virtually mutually
exclusive class of applications and have separate requirements
(e.g., a request for a § 1.53(d) application
may be filed subsequent to the filing of an appeal brief, so long
as the request is filed before the earliest of: (1) payment
of the issue fee on the prior application, unless a petition under
§ 1.313(b)(5) is granted in the prior application; (2) abandonment
of the prior application; or (3) termination of proceedings
on the prior application).
Comment 22: One comment suggested that
the rules of practice permit the execution of copies of an oath
or declaration by fewer than all of the inventors, without cross-reference
to the other copies to facilitate contemporaneous executions by
geographically separated inventors.
Response: The suggestion is not adopted.
Section 1.63(a)(3) requires that an oath (or declaration), inter
alia, identify each inventor. The rules of practice permit
inventors to execute separate oaths (or declarations), so long
as each oath (or declaration) sets forth all of the inventors
(the necessary cross-reference). That is, § 1.63(a)(3)
prohibits the execution of separate oaths (or declarations) in
which each oath (or declaration) sets forth only the name of the
executing inventor. An amendment to the rules of practice to
permit an inventor to execute an oath or declaration that does
not set forth each inventor would not only lead to confusion as
to the inventorship of an application, but would be inconsistent
with the requirement in 35 U.S.C. 115 that the applicant
make an oath (or declaration) that the applicant believes himself
(or herself) to be the original and first inventor of the subject
matter for which a patent is sought, as the oaths or declarations
would conflict as to the inventorship of the application.
Comment 23: Several comments suggested
that the statement required under 35 U.S.C. 120 in a continued
prosecution application will be confusing as the continued prosecution
application will have the same application number as the prior
application. One comment indicated that this will cause confusion:
(1) as to which application is being referenced in a 35 U.S.C.
120 statement in the divisional application when a divisional
application under § 1.53(b) and a continued prosecution
application filed under § 1.53(d) are filed from the
same prior application; and (2) in docketing applications
as most commercially available software identify applications
by application number. Another comment questioned what sentence
was required pursuant to § 1.78(a)(2) in a continued
prosecution application.
Response: 35 U.S.C. 120 provides
that an application may obtain the benefit of the filing date
of an earlier filed application if, inter alia, the application
"contains or is amended to contain a specific reference to
the earlier filed application." Section 1.78(a) requires
that this specific reference be in the first sentence of the specification
and identify each earlier filed application by application number
or international application number and international filing date
and relationship of the applications. Thus, while a "specific
reference to the earlier filed application" is a requirement
of statute (35 U.S.C. 120), the particulars of this specific
reference (by application number, filing date, and relationship)
is a requirement of regulation (§ 1.78(a)), not the
patent statute.
The purpose of the "specific reference" requirement of 35 U.S.C. 120 is to provide notice to the public of the filing date upon which a patentee may rely to support the validity of the patent:
[35 U.S.C. 120] embodies an important
public policy. The information required to be disclosed is information
that would enable a person searching the records of the Patent
Office to determine with a minimum of effort the exact filing
date upon which a patent applicant is relying to support the validity
of his application or the validity of a patent issued on the basis
of one of a series of applications. In cases such as this, in
which two or more applications have been filed and the validity
of a patent rests upon the filing date of an application other
than that upon which the patent was issued, a person, even if
he had conducted a search of the Patent Office records, could
unwittingly subject himself to exactly this type of infringement
suit unless the later application adequately put him on notice
that the applicant was relying upon a filing date different from
that stated in the later application.
Sampson v. Ampex Corp.,
463 F.2d 1042, 1045, 174 USPQ 417, 419 (2d Cir. 1972); see
also Sticker Indus. Supply Corp. v. Blaw-Knox Co.,
405 F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968)("Congress
may well have thought that [35 U.S.C.] 120 was necessary
to eliminate the burden on the public to engage in long and expensive
search of previous applications in order to determine the filing
date of a later patent . . . . The inventor
is the person best suited to understand the relation of his applications,
and it is no hardship to require him to disclose this information").
To reduce the delay in processing a continued
prosecution application, the Office will maintain in its records
(e.g., in the Patent Application Locating and Monitoring
(PALM) records for an application) for identification purposes
the application number and filing date of the prior application.
Thus, in a continued prosecution application, the application
number of the continued prosecution application will be the application
number of the prior application, and the filing date indicated
on any patent issuing from a continued prosecution application
will be the filing date of the prior application (or, in a chain
of continued prosecution applications, the filing date of the
application immediately preceding the first continued prosecution
application in the chain). In addition, as a continued prosecution
application will use the file wrapper of the prior application,
the prior application will be available upon inspection of the
continued prosecution application.
Unless excepted from § 1.78(a)(2),
the first sentence of a continued prosecution application would
consist of a reference to that application as a continuation or
divisional of an application having the identical application
number and the effective filing date of (the filing date to be
printed on any patent issuing from) the continued prosecution
application. Such a sentence would provide no useful information
to the public.
Therefore, § 1.53(d)(7) as
adopted provides that a request for an application under § 1.53(d)
is a specific reference under 35 U.S.C. 120 to every application
assigned the application number identified in such request, and
§ 1.78(a)(2) as adopted provides that the request for
a continued prosecution application under § 1.53(d)
is the specific reference under 35 U.S.C. 120 to the prior
application. That is, the continued prosecution application includes
the request for an application under § 1.53(d) (§ 1.53(d)(2)(iv)),
and the recitation of the application number of the prior application
in such request (as required by § 1.53(d)) is the "specific
reference to the earlier filed application" required by 35 U.S.C.
120. No further amendment to the specification is required by
35 U.S.C. 120 or § 1.78(a) for a continued prosecution
application for such continued prosecution application to contain
the required specific reference to the prior application, as well
as any other application assigned the application number of the
prior application (e.g., in instances in which a continued
prosecution application is the last in a chain of continued prosecution
applications).
Where an application claims a benefit
under 35 U.S.C. 120 of a chain of applications, the application
must make a reference to the first (earliest) application and
every intermediate application. See Sampson, 463
F.2d at 1044-45, 174 USPQ at 418-19; Sticker Indus. Supply
Corp., 405 F.2d at 93, 160 USPQ at 179; Hovlid v. Asari,
305 F.2d 747, 751, 134 USPQ 162, 165 (9th Cir. 1962); see also
MPEP 201.11. In addition, every intermediate application must
also make a reference to the first (earliest) application and
every application after the first application and before such
intermediate application.
In the situation in which there is a
chain of continued prosecution applications, each continued prosecution
application in the chain will, by operation of § 1.53(d)(7),
contain the required specific reference to its immediate prior
application, as well as every other application assigned the application
number identified in such request. Put simply, a specific reference
to a continued prosecution application by application number and
filing date will constitute a specific reference to: (1) the
non-continued prosecution application originally assigned such
application number (the prior application as to the first continued
prosecution application in the chain); and (2) every continued
prosecution application assigned the application number of such
non-continued prosecution application.
Where the non-continued prosecution application
originally assigned such application number itself claims the
benefit of a prior application or applications under 35 U.S.C.
120, 121, or 365(c), § 1.78(a)(2) continues to require
that such application contain in its first sentence a reference
to any such prior application(s). As a continued prosecution
application uses the specification of the prior application, such
a specific reference in the prior application (as to the continued
prosecution application) will constitute such a specific reference
in the continued prosecution application, as well as every continued
prosecution application in the event that there is a chain of
continued prosecution applications.
Where an applicant in an application
filed under § 1.53(b) seeks to claim the benefit of
an application filed under § 1.53(d) under 35 U.S.C.
120 or 121 (as a continuation, divisional, or continuation-in-part),
§ 1.78(a)(2) requires a reference to the continued prosecution
application by application number in the first sentence of such
application. Section 1.78(a)(2) has been amended to also provide
that "[t]he identification of an application by application
number under this section is the specific reference required by
35 U.S.C. 120 to every application assigned that application
number." Thus, where a referenced continued prosecution
application is in a chain of continued prosecution applications,
this reference will constitute a reference under 35 U.S.C.
120 and § 1.78(a)(2) to every continued prosecution
application in the chain as well as the non-continued prosecution
application originally assigned such application number.
Therefore, regardless of whether an application
is filed under § 1.53(b) or (d), a claim under 35 U.S.C.
120 to the benefit of a continued prosecution application is,
by operation of § 1.53(d)(7) and § 1.78(a)(2),
a claim to every application assigned the application number of
such continued prosecution application. In addition, applicants
will not be permitted to choose to delete such a claim as to certain
applications assigned that application number (e.g., for
patent term purposes).
Finally, while it is recognized that
using a common application number (and file wrapper) for a continued
prosecution application and its prior application (which may also
be a continued prosecution application) will necessitate docketing
modifications (as well as the Office's PALM system), the burden
of such modifications is outweighed by the benefits that will
result from the elimination of the initial processing of such
applications.
Comment 24: One comment suggested that
the phrase "now refiled" be used in lieu of "now
abandoned" to reflect the status of the prior application.
Response: Under 35 U.S.C. 120,
the status of an application is one of three conditions: (1) pending;
(2) patented; or (3) abandoned. See In re
Morganroth, 6 USPQ2d 1802, 1803 (Comm'r Pat. 1988). As the
filing of a continued prosecution application under § 1.53(d)
operates to expressly abandon the prior application under § 1.53(d)(2)(v),
the status of the prior application is appropriately designated
as "abandoned."
Comment 25: Several comments suggested
that the proposed continued prosecution application practice be
made applicable in instances in which the prior application was
filed prior to June 8, 1995, to expedite the prosecution
of such applications.
Response: Permitting the continued prosecution
application practice to be applicable in instances in which the
prior application was filed prior to June 8, 1995, would
result in confusion as to whether the patent issuing from the
continued prosecution application is entitled to the provisions
of 35 U.S.C. 154(c). As the continued prosecution application
practice was not in effect prior to June 8, 1995, no patent issuing
from a continued prosecution application is entitled to the provisions
of 35 U.S.C. 154(c).
As discussed supra, the application
number of a continued prosecution application will be the application
number of the prior application, and the filing date indicated
on any patent issuing from a continued prosecution application
will be the filing date of the prior application (or, in a chain
of continued prosecution applications, the filing date of the
application immediately preceding the first continued prosecution
application in the chain). Thus, any patent issuing from a continued
prosecution application, where the prior application was filed
prior to June 8, 1995, will indicate that the filing date
of the application for that patent was prior to June 8, 1995,
which will confuse the public (and possible the patentee) into
believing that such patent is entitled to the provisions of 35 U.S.C.
154(c).
The Office has implemented § 532(a)(2)(A)
of Pub. L. 103-465 in § 1.129(a) to conclude the examination
of applications pending at least two years as of June 8, 1995,
taking into account any reference made in such application to
any earlier filed application under 35 U.S.C. 120, 121, and
365(c). Further examination of any application may be obtained
via the filing of a continuing application under § 1.53(b).
Requiring applications filed prior to June 8, 1995, that are
not eligible for the transitional procedure set forth in § 1.129(a)
to obtain further examination via the filing of a continuing
application under § 1.53(b) is a reasonable requirement
to avoid confusion as to whether a patent issuing from a continued
prosecution (§ 1.53(d)) application is entitled to the
provisions of 35 U.S.C. 154(c).
Comment 26: One comment suggested that
the phrase "most immediate prior national application"
rather than "prior application" was confusing. The
comment further stated that if the prior application was one filed
under § 1.62, there is no copy in that complete application
of the (oath or) declaration filed in the application under § 1.62.
Response: The phrase "most immediate
prior national application for which priority is claimed under
35 U.S.C. 120, 121 or 365(c)" is changed to "prior
application." An application under §§ 1.53(d),
1.60, or 1.62 must ultimately be a continuing application of an
application filed under § 1.53(b). Where the prior
application is an application under § 1.60, the oath
or declaration is the copy of the oath or declaration from the
prior application vis-à-vis the application under
§ 1.60 submitted in accordance with § 1.60(b)(2).
Where the prior application is an application under §§ 1.62
or 1.53(d), the oath or declaration is the oath or declaration
from the prior application vis-à-vis the application
under §§ 1.62 or 1.53(d). Where there is a chain
of applications under §§ 1.62 or 1.53(d) preceding
the prior application to an application under § 1.53(d),
the oath or declaration of the prior application will be the oath
or declaration of the application under §§ 1.53
or 1.60 immediately preceding the chain of applications under
§§ 1.62 or 1.53(d), as each application in the
chain of applications under §§ 1.62 or 1.53(d)
utilizes the oath or declaration of the prior application.
Comment 27: One comment suggested that
applications filed under § 1.53(d) should be taken up
as amended applications, rather than as newly filed applications.
Response: The comment implies that taking
up a continued prosecution application as an amended application
may result in the examiner acting on the application in a more
timely manner than if the application were accounted for as a
new application. The matter is under consideration along with
other administrative issues, and a decision shall be made in due
course.
Comment 28: One comment suggested that
§ 1.129(a) be amended so as not to be limited to applications
under final rejection, such that an applicant in an application
in which a notice of allowance under § 1.311 has been
mailed may obtain entry of an information disclosure statement
without regard to the requirements of § 1.97(d).
Response: The Notice of Proposed Rulemaking
did not propose to amend § 1.129(a). While the language
of § 532(a)(2)(A) of Pub. L. 103-465 does not expressly
exclude the further examination of an application that has been
allowed (as opposed to an application under a final rejection),
§ 102(d) of Pub. L. 103-465 provides that "[t]he
statement of administrative action approved by the Congress under
section 101(a) shall be regarded as an authoritative expression
by the United States concerning the interpretation and application
of the Uruguay Round Agreements and this Act in any judicial proceeding
in which a question arises concerning such interpretation or application."
The statement of administrative action specifies that such further
examination is to facilitate the completion of prosecution of
applications pending before the Office, and to permit applicants
to present a submission after the Office has issued a final rejection
on an application. See H.R. Rep. 826(i), 103rd Cong.,
2nd Sess. 1005-06, reprinted in 1984 U.S.C.C.A.N.
3773, 4298.
Upon mailing of a notice of allowance
under § 1.311, prosecution of an application before
the Office is concluded. The proposed amendment to obtain further
examination pursuant to § 1.129(a) after allowance would
nullify (rather than facilitate) the completion of prosecution
of the above-identified application, and, as such, would be inconsistent
with the purpose for the provisions of § 532(a)(2)(A)
of Pub. L. 103-465.
Comment 29: One comment questioned how
the filing of a continued prosecution application would result
in less delay than the filing of a continuing application under
§ 1.53(b), as a continued prosecution application would
be subject to pre-examination processing delays.
Response: The Office will not issue
a new filing receipt for a continued prosecution application under
§ 1.53(d). See § 1.54(b). By not
issuing a filing receipt for a continued prosecution application,
the Office will be able to perform the pre-examination of any
continued prosecution application in the examining group to which
the prior application was assigned. Likewise, § 1.6(d)
has been amended to permit an applicant to file a continued prosecution
application under § 1.53(d) by facsimile, and the use
of this means of filing a continued prosecution application will
avoid the delay inherent in routing an application (or any paper)
from the mailroom to the appropriate examining group. These provisions
will enable the Office to process a continued prosecution application
in the manner that a submission under § 1.129(a) is
processed.
Comment 30: One comment questioned whether
the filing date of a continued prosecution application is the
filing date for determining patent term, or is significant only
in establishing copendency. Another comment questioned what filing
date was relevant for determining patent term.
Response: Notwithstanding that a continued
prosecution application is assigned the application number of
the prior application, the filing date of the continued prosecution
application is the date on which the request for such continued
prosecution application was filed (§ 1.53(d)). While
the filing date of the continued prosecution application is relevant
to establishing the copendency required by 35 U.S.C. 120
and § 1.78(a) between the continued prosecution application
and the prior application, the filing date of a continued prosecution
application will never be relevant to the term under 35 U.S.C.
154(b) of any patent issuing from the continued prosecution application.
Any continued prosecution application under § 1.53(d) will be filed on or after June 8, 1995, and will claim the benefit of an earlier application as a continuation or divisional application. Section 1.53(d)(7) specifically provides that:
A request for an application under this
paragraph is the specific reference required by 35 U.S.C.
120 to every application assigned the application number identified
in such request. No amendment in an application under this paragraph
shall delete this specific reference to any prior application.
Thus, an application under § 1.53(d)
cannot be amended to delete the specific reference to the prior
application, as well as the specific reference to any application
to which the prior application contains a specific reference under
35 U.S.C. 120, 121, and 365(c). As an application under
§ 1.53(d) will also contain a specific reference to
at least one other application under 35 U.S.C. 120, 121,
and 365(c), the expiration date under 35 U.S.C. 154(b)(2)
of any patent issuing from the application under § 1.53(d)
will be based upon the filing date of the prior application (or
the earliest application to which the prior application contains
a specific reference under 35 U.S.C. 120, 121, and 365(c)).
Comment 31: One comment argued that
the Office should address not only the filing requirements for
continuing applications, but also the cause of the filing of continuing
applications. The comment specifically argued that the current
second action final practice should be reevaluated as an applicant
no longer has an incentive to delay the prosecution of an application
due to Pub. L. 103-465.
Response: The suggestion is being taken
under advisement as part of a comprehensive effort by the Office
to reengineer the entire patent process. However, it should be
noted that any changes to the current second action final practice
to provide additional examination of an application prior to a
final Office action would necessitate a corresponding increase
in patent fees.
Comment 32: One comment suggested that
the Office simply eliminate the "true copy" requirement
of § 1.60, rather than add new provisions permitting
the use of a copy of the oath or declaration of a prior application.
The comment also suggested that the Office simply amend § 1.62
to eliminate the requirement that the Office assign a new application
number to the application, rather than add a new § 1.53(d).
Response: The amendments to § 1.53
do not simply make minor changes to §§ 1.60 and
1.62. Sections 1.60 and 1.62 are anachronisms that have outlived
their usefulness. A significant number of applications filed
under § 1.60 do not meet the requirements of § 1.60
(and, as such are improper), but would be proper under § 1.53
(in the absence of a reference to § 1.60). The elimination
of § 1.60 will result in a reduction in the Office's
burden in treating and the applicant's burden in correcting these
improper applications under § 1.60, as such applications
would generally have been proper applications if filed under § 1.53
(without a reference to § 1.60). Section 1.63(d) retains
most of the benefits of § 1.60, but eliminates the filing
"traps" of § 1.60.
Section 1.62 practice also causes problems
concerning its prohibition against including a new or substitute
specification, and its permitting the filing of a continuation-in-part.
To avoid continued prosecution application practice under § 1.53(d)
being confused with the former file-wrapper-continuation practice
under § 1.62, the Office has deemed it advisable to
use a new § 1.53(d) rather than § 1.62 in
regard to continued prosecution application practice.
Comment 33: One comment stated that the Office should anticipate the filing of applications containing a reference to § 1.60 or § 1.62 for some period.
Response: That applications containing
a reference to §§ 1.60 or 1.62 will continue to
be filed has been anticipated. The treatment of such applications
is discussed infra with respect to the elimination of §§ 1.60
and 1.62.
Comment 34: One comment stated that
the safeguard in § 1.60 concerning the filing of an
application lacking all of the pages of specification or sheets
of drawings of the prior application has not been retained in
§ 1.53(b). The comment suggested that § 1.53
contain a presumption that a continuation or divisional be presumed,
absent evidence to the contrary, to be the filing of an application
identical to the prior application.
Response: The Court of Customs and Patent Appeals (CCPA) has held that a mere reference to another application, patent, or publication is not an incorporation of anything therein into the application containing such reference. See In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973); see also Dart Industries v. Banner, 636 F.2d 684, 207 USPQ 273 (CCPA 1980)(related decision). These decisions relied upon In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967), which considered the incorporation by reference issue in the context of whether a prior art patent adequately incorporated by reference a prior application. The court, in Lund, specifically stated:
There is little in the term "continuation-in-part"
which would suggest to the reader of the patent that a disclosure
of the nature of Example 2 is present in the earlier application
and should be considered a part of the patent specification.
Thus, we cannot agree that the subject matter of claim 3 is tacitly
"described" in the Margerison patent within the meaning
of § 102(e).
Id.
at 989, 153 USPQ 631-32 (footnote discussing the definition of
"continuation-in-part" as set forth in MPEP 201.08 omitted).
While the holdings in Dart Industries, de Seversky
and Lund appear to be based upon the definitions of the
various categories of continuing applications set forth in the
MPEP (and thus could be changed by a revision to the MPEP), the
Office is not at this time inclined to disturb settled law in
this area.
Nevertheless, an applicant may incorporate
by reference the prior application by including, in the continuing
application-as-filed, a statement that such specifically enumerated
prior application or applications are "hereby incorporated
herein by reference." The inclusion of this incorporation
by reference of the prior application(s) will permit an applicant
to amend the continuing application to include any subject matter
in such prior application(s), without the need for a petition.
Section 1.54:
Section 1.54(b) is amended to add the phrase "unless the
application is an application filed under § 1.53(d)."
To minimize application processing delays in applications filed
under § 1.53(d), such applications will not be processed
by the Office of Initial Patent Examination as new applications.
No comments were received regarding the
proposed change to § 1.54.
Section 1.55:
Section 1.55(a) is amended to remove the requirement that the
statement be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18.
No comments were received regarding the
proposed change to § 1.55.
Section 1.59:
Section 1.59 is amended: (1) by revising the title to indicate
that expungement of information from an application file would
come under this section; (2) by revising the existing paragraph
and designating it as paragraph (a)(1); and (3) by adding
paragraphs (a)(2), (b) and (c). Section 1.59(a)(1) retains the
general prohibition on the return of information submitted in
an application, but no longer limits that prohibition to an application
that has been accorded a filing date under § 1.53.
The portion of the paragraph relating to the Office furnishing
copies of application papers has been shifted to new paragraph
(c). Section 1.59(a)(2) makes explicit that information, forming
part of the original disclosure (i.e., written specification
including the claims, drawings, and any preliminary amendment
specifically incorporated into an executed oath or declaration
under §§ 1.63 and 1.175) will not be expunged from
the application file.
Section 1.59(b) provides an exception
to the general prohibition of paragraph (a) on the expungement
and return of information and would allow for such when it is
established to the satisfaction of the Commissioner that the requested
expungement and return is appropriate. Section 1.59(b) covers
the current practice set forth in MPEP 724.05 where information
is submitted as part of an information disclosure statement and
the submitted information has initially been identified as trade
secret, proprietary, and/or subject to a protective order and
where applicant may file a petition for its expungement and return
that will be granted upon a determination by the examiner that
the information is not material to patentability. Any such petition
should be submitted in reply to an Office action closing prosecution
so that the examiner can make a determination of materiality based
on a closed record. Any petition submitted earlier than close
of prosecution may be dismissed as premature or returned unacted
upon. In the event pending legislation for pre-grant publication
of applications, which provides public access to the application
file, is enacted, then the timing of petition submissions under
this section will be reconsidered.
Petitions to expunge were formerly considered
under § 1.182, with the Office of Petitions consulting
with the examiner on the materiality of the information at issue
prior to rendering a decision. A possible result of the amendment
to § 1.59 would be to have petitions under § 1.59
to expunge simply decided by the examiner who determines the materiality
of the information.
Comment 35: One comment suggested that
petitions to expunge under § 1.59 should be decided
by Group Directors or officials in the Office of Petitions, rather
than by examiners. The comment argued that any individual examiner
would decide such a petition so rarely that it would be difficult
to produce uniform and consistent decisions.
Response: The preamble has been amended
to reflect that a possible result of the rule change is to have
petitions under § 1.59 decided by the examiners. The
heart of most petitions to expunge is a determination as to whether
the material sought to be expunged is material to examination,
a matter that is now referred to examiners prior to a decision
on the petition. Given the major role examiners now play in expungement
matters, it is not clear why examiners would be rendering inconsistent
decisions, particularly as so many other matters are routinely
assigned to examiners including petitions under § 1.48.
Nevertheless, the comment is not germane to § 1.59
as proposed (or adopted), but concerns the internal Office delegation
of such petitions for consideration. Moreover, a petition to
expunge a part of the original disclosure would have to be filed
under § 1.183 and would continue to be decided in the
Office of Petitions.
Comment 36: A comment in requesting
some examples of things that may be expunged asked whether a design
code listing as an appendix in an application may be expunged.
Response: The standard set forth in
paragraph (b) of § 1.59 permits information other than
what is enumerated in paragraph (a) of the section to be expunged
if it is established to the satisfaction of the Commissioner that
the return of the information is appropriate. The types of information
and rationales why the information may be returned are varied
and will be evaluated on a case-by-case basis with the basic inquiry
being whether the information is material to examination of the
application. However, to the extent that an appendix to a specification
of an application is considered part of the original disclosure
it cannot be expunged from the file under § 1.59(a)(2).
Section 1.59(b) also covers information
that was unintentionally submitted in an application, provided
that: (1) the Office can effect such return prior to the
issuance of any patent on the application in issue; (2) it
is stated that the information submitted was unintentionally submitted
and the failure to obtain its return would cause irreparable harm
to the party who submitted the information or to the party in
interest on whose behalf the information was submitted; (3) the
information has not otherwise been made public; (4) there
is a commitment on the part of the petitioner to retain such information
for the period of any patent with regard to which such information
is submitted; and (5) it is established to the satisfaction
of the Commissioner that the information to be returned is not
material information under § 1.56. A request to return
information that has not been clearly identified as information
that may be later subject to such a request by marking and placement
in a separate sealed envelope or container shall be treated on
a case-by-case basis. It should be noted that the Office intends
to start electronic scanning of all papers filed in an application,
and the practicality of expungement from the electronic file created
by a scanning procedure is not as yet determinable. Applicants
should also note that unidentified information that is a trade
secret, proprietary, or subject to a protective order that is
submitted in an Information Disclosure Statement may inadvertently
be placed in an Office prior art search file by the examiner due
to the lack of such identification and may not be retrievable.
Section 1.59(b) also covers the situation
where an unintended heading has been placed on papers so that
they are present in an incorrect application file. In such a
situation, a petition should request return of the papers rather
than transfer of the papers to the correct application file.
The grant of such a petition will be governed by the factors enumerated
above in regard to the unintentional submission of information.
Where the Office can determine the correct application file that
the papers were actually intended for, based on identifying information
in the heading of the papers (e.g., Application number,
filing date, title of invention and inventor(s) name(s)), the
Office will transfer the papers to the correct application file
for which they were intended without the need of a petition.
Section 1.59(c) retains the practice that copies of application papers will be furnished by the Office upon request and payment of the cost for supplying such copies.
Section 1.60:
Section 1.60 is removed and reserved.
Section 1.60 is now unnecessary due to
the amendment to § 1.63(d) to expressly permit the filing
in a continuation or divisional application using a copy of the
oath or declaration filed in the prior application, and to provide
(§ 1.63(d)(2)) for the filing of a continuation or divisional
application by all or by fewer than all the inventors named in
a prior application.
See comments relating to § 1.53.
Section 1.62:
Section 1.62 is removed and reserved.
Section 1.62 is unnecessary due to the
addition of § 1.53(d) to permit the filing of a continued
prosecution application.
It is anticipated that applications purporting
to be applications filed under §§ 1.60 or 1.62
will be filed until the deletion of §§ 1.60 and
1.62 become well known among patent practitioners. An application
purporting to be an application filed under § 1.60 will
simply be treated as a new application filed under § 1.53
(i.e., the reference to § 1.60 will simply be
ignored).
Applications purporting to be an application
filed under § 1.62 will be treated as continued prosecution
applications under § 1.53(d), and those applications
that do not meet the requirements of § 1.53(d) (e.g.,
continuation-in-part applications or continuations or divisional
of applications filed before June 8, 1995) will be treated
as improper continued prosecution applications under § 1.53(d).
Such an improper application under § 1.53(d) may be
accepted and treated as a proper application under § 1.53(b)
by way of petition under § 1.53(e) (and submission of
the $130 fee pursuant to § 1.17(i)).
A petition under § 1.53(e)
to accept and treat an improper application under § 1.53(d)
as a proper application under § 1.53(b) must include:
(1) the $130 petition fee; (2) a true copy of the complete
application designated as the prior application in the purported
§ 1.62 application papers; (3) any amendments entered
in the prior application; and (4) any amendments submitted but
not entered in the prior application and directed to be entered
in the purported § 1.62 application papers. In an application
purporting to be a continuation or divisional application under
§ 1.62, the true copy of the prior application will
constitute the original disclosure of the application under § 1.53(b),
and any amendments entered in the prior application or not entered
in the prior application but directed to be entered in the purported
§ 1.62 application papers and submitted with the § 1.53(e)
petition will be entered in the application under § 1.53(b)
and considered by the examiner for new matter under 35 U.S.C.
112, ¶1, and 132. In an application purporting to be a continuation-in-part
application under § 1.62, the true copy of the prior
application, any amendments entered in the prior application or
not entered in the prior application but directed to be entered
in the purported § 1.62 application papers and submitted
with the § 1.53(e) petition, and any preliminary amendment
submitted with the purported § 1.62 application will
constitute the original disclosure of the application under § 1.53(b).
See comments relating to § 1.53.
Section 1.63:
Section 1.63(a)(3) is amended to require the post office address
to appear in the oath or declaration and to have the requirement
from § 1.41(a) for the full names of the inventors placed
therein.
Comment 37: Two comments raised the
issue regarding the continued requirement that both a post office
address and a residence be supplied and indicated that the residence
is not required by statute, the post office address is sufficient
for communication purposes, and that the burden of submitting
both far outweighs the infrequent need to contact any particular
inventor bypassing counsel so that the residence alone should
be sufficient.
Response: Under the proposed comment
the applicants would still be required to submit either the residence
or post office address. To request that they also supply the
other or state that both are the same is not seen to be a significant
burden as the information is to be supplied on the oath or declaration
form that they must sign anyway and spaces can be provided to
ensure that the information is supplied. While neither the residence
nor the post office address are statutory requirements, the Office
requires this information for the applicant's benefit. As more
than one person may have the same name, a person's name is often
not sufficient to provide a unique identification of the inventor.
Thus, the Office also requires an inventor's residence (which
is not required to be sufficiently detailed to suffice as a post
office address) to specifically identify the person(s) named in
the oath or declaration as the inventor(s), which is a common
practice for legal documents. The post office address is also
required in the event that the Office finds it necessary to directly
contact the inventor(s). It is not uncommon for an inventor to
revoke a power of attorney or authorization of agent in a paper
providing no address for future correspondence from the Office.
Also, the Office will need to directly contact the inventor if
the Office is notified of the death of a sole attorney or agent
of record (MPEP 406).
Section 1.63(d) is amended to: (1) relocate
its current language in a new § 1.63(e); and (2) provide
that a newly executed oath or declaration is not required under
§ 1.51(b)(2) and 1.53(f) in a continuation or divisional
application filed by all or by fewer than all of the inventors
named in a prior nonprovisional application containing an oath
or declaration as prescribed by § 1.63, provided that
a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional application
and the specification and drawings filed in the continuation or
divisional application contain no matter that would have been
new matter in the prior application. The copy of the oath or
declaration must show the signature of the inventor(s) or contain
an indication thereon that the oath or declaration was signed
(e.g., the notation "/s/" on the line provided
for the signature).
A continuation or divisional application
may be filed under 35 U.S.C. 111(a) using the procedures
set forth in § 1.53(b), by providing either: (1) a
copy of the prior application, including a copy of the oath or
declaration in such prior application, as filed; or (2) a
new specification and drawings and a copy of the oath or declaration
as filed in the prior application so long as no matter is included
in the new specification and drawings that would have been new
matter in the prior application. The specification and drawings
of a continuation or divisional application is not limited to
a reproduction or "true copy" of the prior application,
but may be revised for clarity or contextual purposes vis-à-vis
the prior application in the manner that an applicant may file
a substitute specification (§ 1.125) or amend the drawings
of an application so long as it does not result in the introduction
of new matter. Of course, 35 U.S.C. 115 requires that a
supplemental oath or declaration meeting the requirements of § 1.63
be filed in the continuation or divisional application, if a claim
is allowed in the continuation or divisional application which
is drawn to subject matter originally shown or described in the
prior application but not substantially embraced in the statement
of the invention or claims originally presented in the prior application
as filed. See § 1.67(b).
The patent statute and rules of practice
do not require that an oath or declaration include a date of execution,
and the Examining Corps has been directed not to object to an
oath or declaration as lacking either a recent date of execution
or any date of execution. The applicant's duty of candor and
good faith including compliance with the duty of disclosure requirements
of § 1.56 is continuous and applies to the continuing
application.
A new application containing a copy of
an oath or declaration under § 1.63 referring to an
attached specification is indistinguishable from a continuation
or divisional application containing a copy of an oath or declaration
from a prior application submitted pursuant to § 1.63(d).
Unless an application is submitted with a statement that the
application is a continuation or divisional application (§ 1.78(a)(2)),
the Office will process such application as a new non-continuing
application. Applicants are advised to clearly designate any
continuation or divisional application as such to avoid the issuance
of a filing receipt that does not indicate that the application
is a continuation or divisional.
To continue the practice in § 1.60(b)(4)
of permitting the filing of a continuation or divisional application
by all or by fewer than all of the inventors named in a prior
application without a newly executed oath or declaration, new
§ 1.63(d)(2) provides that the copy of the oath or declaration
submitted for a continuation or divisional application under § 1.63(d)
must be accompanied by a statement from applicant, counsel for
applicant or other authorized party requesting the deletion of
the names of the person or persons who are not inventors in the
continuation or divisional application. Where the continuation
or divisional application and copy of the oath or declaration
from the prior application is filed without a statement from an
authorized party requesting deletion of the names of any person
or persons named in the prior application, the continuation or
divisional application will be treated as naming as inventors
the person or persons named in the copy of the executed oath or
declaration from the prior application. Accordingly, if a petition
under § 1.48(a) or (c) was granted in the prior application,
an oath or declaration filed in a continuation or divisional application
pursuant to § 1.63(d) should be the oath or declaration
also executed by the added inventor(s). For situations where
an inventor or inventors are to be added in a continuation or
divisional application, see § 1.63(d)(5).
The statement requesting the deletion
of the names of the person or persons who are not inventors in
the continuation or divisional application must be signed by person(s)
authorized pursuant to § 1.33(b) to sign an amendment
in the continuation or divisional application.
Section 1.63(d)(3) provides for the situation
in which the executed oath or declaration of which a copy is submitted
for a continuation or divisional application was originally filed
in a prior application accorded status under § 1.47.
Section 1.63(d)(3)(i) requires a copy of any decision granting
a petition to accord § 1.47 status to such application,
unless each nonsigning inventor(s) or legal representative (pursuant
to §§ 1.42 or 1.43) has filed an oath or declaration
to join in an application of which the continuation or divisional
application claims a benefit under 35 U.S.C. 120, 121 or
365(c). Where a nonsigning inventor or legal representative (pursuant
to §§ 1.42 or 1.43) subsequently joins in any application
of which the continuation or divisional application claims a benefit
under 35 U.S.C. 120, 121 or 365(c), § 1.63(d)(3)(ii)
also requires a copy of any oath or declaration filed by an inventor
or legal representative to subsequently join in such application.
Section 1.63(d)(4) provides that where
the power of attorney (or authorization of agent) or correspondence
address was changed during the prosecution of the prior application,
the change in power of attorney (or authorization of agent) or
correspondence address must be identified in the continuation
or divisional application, or the Office may not recognize in
the continuation or divisional application the change of power
of attorney (or authorization of agent) or correspondence address
during the prosecution of the prior application.
A newly executed oath or declaration
will continue to be required in a continuation or divisional application
naming an inventor not named in the prior application, or a continuation-in-part
application, and § 1.63(d)(5) expressly states that
a newly executed oath or declaration must be filed in a continuation
or divisional application naming an inventor not named in the
prior application.
New § 1.63(e) provides that
a newly executed oath or declaration must be filed in a continuation-in-part
application, which application may name all, more, or fewer than
all of the inventors named in the prior application, and includes
the language relocated from former § 1.63(d) concerning
an oath or declaration in a continuation-in-part application.
Comment 38: One comment suggested that
the practice of permitting the use of an executed oath or declaration
of a prior application creates a trap for the unwary in the situation
in which an applicant believes in error that no new matter has
been added in the "continuation" application and does
not file a new declaration.
Response: The situation outlined in
the comment is less of a trap for the unwary than the situation
in which an applicant files a substitute specification and believes
in error that no new matter has been added, in that the error
in the "continuation" may be corrected by redesignation
of the application as a continuation-in-part and the filing of
a new oath or declaration. Nevertheless, it remains the applicant's
responsibility to review any substitute specification or new specification
submitted for a continuation application to determine that it
contains no new matter. See MPEP 608.01(q). An applicant
is advised to simply file a continuing application with a newly
executed oath or declaration when it is questionable as to whether
the continuing application adds material that would have been
new matter if presented in the prior application.
Comment 39: One comment suggested that the option of submitting "a copy of an unexecuted oath or declaration, and a statement that the copy is a true copy of the oath or declaration that was subsequently executed and filed to complete . . . the most immediate prior national application for which priority is claimed under 35 U.S.C. 120, 121 or 365(c)" was strange at best as the applicant or representative should have a copy of the oath or declaration that was filed to complete the prior application or could obtain one from Office records.
Response: The suggestion is adopted.
Section 1.63(d) as adopted provides that: "[a] newly executed
oath or declaration is not required under § 1.51(b)(2)
and § 1.53(f) in a continuation or divisional application
filed by all or by fewer than all of the inventors named in a
prior nonprovisional application containing an oath or declaration
as prescribed by paragraphs (a) through (c) of this section, provided
that a copy of the executed oath or declaration filed in the prior
application is submitted for the continuation or divisional application."
Comment 40: One comment questioned whether
§ 1.53 (or § 1.63) is consistent with § 1.48
as to whether the oath or declaration filed in a continuing application
adding an inventor must be executed by all of the inventors, or
just the added inventor.
Response: The oath or declaration filed
in a continuing application adding an inventor or a continuation-in-part
application must name and be executed by all of the inventors.
Sections 1.48 and 1.63(e) are consistent in this regard.
Comment 41: One comment questioned whether,
in a continuation or divisional application following a chain
of continuation or divisional applications, the copy of the executed
oath or declaration may be a copy of the oath or declaration filed
in the immediate prior application (which may itself be a copy
of an oath or declaration from a prior application), or must be
a direct copy of the originally executed oath or declaration.
Response: Section 1.63(d) requires a
copy of the oath or declaration from the prior application. In
instances in which the oath or declaration filed in the prior
application is itself a copy of an oath or declaration from a
prior application, either a copy of the copy of the oath or declaration
in the prior application or a direct copy of the original oath
or declaration is acceptable, as both are a copy of the oath or
declaration in the prior application. See § 1.4(d)(1)(ii).
Section 1.67:
Section 1.67 paragraph (b) is amended to change "§ 1.53(d)(1)"
to "§ 1.53(f)" for consistency with § 1.53.
No comments were received regarding § 1.67.
Section 1.69:
Section 1.69(b) is amended to remove the requirement that the
translation be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18. Section 1.69(b) is also amended to clarify the need
for a statement that the translation being offered is an accurate
translation, as in § 1.52 paragraphs (a) and (d).
Two comments were received in regard
to § 1.69 that also raised similar issues in regard
to § 1.52, which comments are treated with § 1.52.
Section 1.78:
Section 1.78(a)(1) is amended to remove the references to §§ 1.60
and 1.62 in view of the deletion of §§ 1.60 and
1.62, and to include a reference to an "international application
entitled to a filing date in accordance with PCT Article 11 and
designating the United States of America." Section 1.78(a)(2)
is amended for consistency with the changes to § 1.53,
and to provide that "[t]he identification of an application
by application number under this section is the specific reference
required by 35 U.S.C. 120 to every application assigned that
application number."
No comments were received regarding the
proposed change to § 1.78.
Section 1.84:
Section 1.84(b) is amended by removing references to the filing
of black and white photographs in design applications as unnecessary
in view of the reference in § 1.152 to § 1.84(b).
Section 1.84 paragraphs (c) and (g) are amended for consistency
in regard to the English equivalents (5/8 inch.) for 1.5 cm.
No adverse comments were received regarding
the proposed change to § 1.84.
Section 1.91:
The title of § 1.91 is amended to clarify that a certain
type of material is not generally admitted in the file record
by substitution of "admitted" for "required."
Section 1.91 is also amended to clarify
the type of material that is not generally admitted into the file
record of an application. Section 1.91(a) specifically requires
a petition (with the fee set forth in § 1.17(i)) including
an appropriate showing why entry of the model or exhibit into
the file record is necessary to demonstrate patentability, unless
the model or exhibit: (1) substantially conforms with § 1.52
or § 1.84; or (2) was required by the Office.
Section 1.91 is also amended to state that a model, working model or other physical exhibit, whose submission by applicants is generally not permitted, may be required by the Office if deemed necessary for any purpose in the examination of the application. This language is moved from § 1.92.
Comment 42: Several adverse comments
were received expressing concern that the addition of the term
"exhibits" to the bar against admission of models, unless
specifically required by the Office, would prevent applicants
from making their best possible case for patentability, and that
exhibits would be interpreted by the Office as barring two-dimensional
as well as three-dimensional exhibits.
Response: The preamble of the proposed
rule indicated that the change to the rule is in the nature of
a clarification and not a change in practice. Further clarification
has been added to the rule by reference to § 1.52 or
§ 1.84 and to the instant discussion of the rule to
indicate that the use of the term "exhibits" is in the
nature of other three-dimensional models, such as videos, and
will not bar two-dimensional exhibits currently being accepted.
Additionally, a petition route has been added to the rule that
would permit entry of three-dimensional models or exhibits where
they are necessary to establish patentability. Section 1.91 is
also amended to expressly provide for the filing of a petition
thereunder (rather than to require the filing of a petition under
§ 1.183) such that an applicant may gain entry of a
model or exhibit, without a showing of an extraordinary situation
where justice requires grant of the relief sought.
The fact that a three-dimensional model
or exhibit will not generally be entered in the record absent
an appropriate showing does not prevent an applicant from showing
the exhibit to the examiner for purposes of clarifying the examiner's
understanding of the invention and reducing the model or exhibit
to two-dimensional conformance with § 1.52 or § 1.84
for entry of that reduction to the record (which issues are separate
and distinct from the questions as to whether the later presented
material was originally required for an understanding of the invention
and its subsequent addition being subject to a new matter objection
under 35 U.S.C. 132).
Due to the unusual difficulties of storage
for three-dimensional materials and little demonstrated need for
their presence in the file record over what would be provided
for via petition under § 1.91, it is not seen
to be appropriate to permit unrestricted entry of three-dimensional
exhibits in the file record.
Section 1.92:
Section 1.92 is removed and reserved and the language transferred
to § 1.91(b) for improved contextual purposes.
No comments were received regarding the proposed change to § 1.92.
Section 1.97:
Sections 1.97(c) through (e) are amended by replacement of "certification"
by "statement" (see comments relating to § 1.4(d)),
and by clarifying the current use of "statement" by
the terms "information disclosure."
Section 1.97(e)(2) is further amended
to replace "or" by "and" to require that no
item of information contained in the information disclosure statement
was cited in a communication from a foreign patent office in a
counterpart foreign application, and, to the knowledge of the
person signing the statement, after making reasonable inquiry,
no item of information contained in the information disclosure
was known to any individual designated in § 1.56(c)
more than three months prior to the filing of the information
disclosure statement. The use of "and" rather than
"or" is in keeping with the intent of the rule as expressed
in the MPEP 609(B)(2)(ii), that the conjunction be conjunctive
rather than disjunctive. The mere absence of an item of information
from a foreign patent office communication was clearly not intended
to represent an opportunity to delay the submission of the item
when known more than three months prior to the filing of an information
disclosure statement to an individual having a duty of disclosure
under § 1.56.
No comments were received regarding the proposed change to § 1.97.
Section 1.101:
Section 1.101 is removed and reserved as relating to internal
Office instructions.
Comment 43: A number of comments opposed
the deletion of the rules that solely govern Office procedure.
The reasons given for this opposition are: (1) the Office
should subject its procedures to the notice and comment provisions
of the Administrative Procedure Act (APA); (2) the inclusion
of such procedures in the rules of practice imparts the force
and effect of law to such procedures; (3) the greater deference
given to procedures set forth in the rules of practice, rather
than the MPEP, during court action.
Response: The CCPA has held that applicants
before the Office are entitled to rely not only on the patent
statute and rules of practice, but on the provisions of the MPEP,
during the prosecution of an application for patent. See
In re Kaghan, 387 F.2d 398, 401, 156 USPQ 130, 132 (CCPA
1967). Thus, there is in practice little, if any, benefit to
applicants before the Office in having the Office procedure set
forth in the rules of practice, rather than the MPEP. In any
event, no comment pointed to any specific decision, and the Office
is not aware of any decision, in which the result turned on the
inclusion of Office procedure in the rules of practice (rather
than simply in the MPEP).
Nevertheless, in view of the concern
expressed in the comments as to the rules of practice setting
forth the fundamentals of the examination of an application, the
Office will retain the substance of §§ 1.104 and
1.105 in the rules of practice. See In re Phillips,
608 F.2d 879, 883 n.6, 203 USPQ 971, 974 n.6 (CCPA 1979)(although
irrelevant to the result, the Office was criticized for piecemeal
examination contrary to §§ 1.104 and 1.105). The
substance of §§ 1.104, 1.105, 1.106, 1.107, and
1.109, however, will be combined into § 1.104 paragraphs
(a)-(e).
The Office will also retain § 1.351
in the rules of practice, as it has been relied upon as the notice
that the Office will provide concerning changes to the rules of
practice in 37 CFR Part 1. See In re Nielson,
816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987). Finally,
the Office will retain § 1.181 paragraphs (d), (e),
and (g) to avoid confusing petition practice, and § 1.325
to avoid confusion as to the requirements for correction of a
patent.
The Office, however, will delete §§ 1.101,
1.108, 1.122, 1.184, 1.318, and 1.352 from 37 CFR Part 1.
The procedures set forth in §§ 1.101, 1.122, 1.184
and 1.318 do not provide meaningful safeguards to applicants (e.g.,
§ 1.101 does not ensure or give an applicant the right
to examination of an application within any reasonably specific
time frame). The proscription in § 1.108 is simply
an administrative instruction based upon the fact that, unless
otherwise publicly available, abandoned applications do not constitute
prior art under 35 U.S.C. 102 (and thus 103). Finally, as
former § 1.352 included a "whenever required by
law" prerequisite, it provided no independent requirement
that the Office publish proposed rule changes for comment.
Section 1.102:
Section 1.102(a) is amended to remove the requirement that the
showing be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18.
No comments were received regarding the
proposed change to § 1.102.
Section 1.103:
Section 1.103(a) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.103.
Section 1.104:
Section 1.104 is amended to include paragraphs (a) through (e)
including the substance of former §§ 1.104, 1.105,
1.106, 1.107, and 1.109. The re-writing of §§ 1.104,
1.105, 1.106, 1.107, and 1.109 as § 1.104(a) through
(e) involves no change in substance.
See comment relating to § 1.101.
Section 1.105:
Section 1.105 is removed and reserved as the subject matter was
transferred to § 1.104(b).
See comment relating to § 1.101.
Section 1.106:
Section 1.106 is removed and reserved as the subject matter was
transferred to § 1.104(c).
See comment relating to § 1.101.
Section 1.107:
Section 1.107 is removed and reserved as the subject matter was
transferred to § 1.104(d).
See comment relating to § 1.101.
Section 1.108:
Section 1.108 is removed and reserved as relating to internal
Office instructions.
See comment relating to § 1.101.
Section 1.109:
Section 1.109 is removed and reserved as the subject matter was
transferred to § 1.104(e).
See comment relating to § 1.101.
Section 1.111:
Section 1.111 is amended to consistently refer to a "reply"
to an Office action. The prior section used the term "response"
and "reply" in an inconsistent manner and created some
confusion. Paragraph (b) of § 1.111 is also amended
to explicitly recognize that a reply must be reduced to a writing
which must point out the specific distinctions believed to render
the claims, including any newly presented claims, patentable.
It is noted that an examiner's amendment reducing a telephone
interview to writing would comply with § 1.2.
Comment 44: One comment asked whether
pointing out one distinction is sufficient or must applicant provide
an exhaustive list of all distinctions. Additionally, inquiry
is made as to whether it is sufficient to point out the impropriety
of a rejection under 35 U.S.C. 102 that should have been
a rejection under 35 U.S.C. 103, or must a rejection under
35 U.S.C. 103 be anticipated and answered.
Response: A distinction should be kept
in mind between what is necessary for a reply to be considered
sufficient to continue prosecution of the application and what
will advance the application to issuance in the most efficient
manner. While pointing out only one distinction, such as why
a rejection under 35 U.S.C. 102 is inappropriate, would comply
with the requirements of § 1.111, advancement of the
prosecution of the application would best be served by pointing
out all possible distinctions, so that if the argument for one
distinction is not persuasive, another may be. Similarly, anticipation
of and argument against a rejection under 35 U.S.C. 103 where
a rejection under 35 U.S.C. 102 should have been made under
35 U.S.C. 103 could possibly prevent making of the rejection
under 35 U.S.C. 103 by the examiner and an earlier issuance
of the application thereby preserving patent term under 35 U.S.C.
154 as amended by Pub. L. 103-465.
Comment 45: Three comments pointed to
instances where a reply would not necessarily require that distinctions
be pointed out, such as: (1) where context and arguments
presented make the distinctions clear beyond doubt; (2) where
a prima facie case has not been established or motivation
for modification of a reference is lacking; (3) a secondary
reference is from a nonanalogous art improperly combined; or (4) no
reference has been applied.
Response: The comment has been adopted
to the extent that the paragraph (b) of the rule has been amended
to refer to "any" rather than "the" applied
references. Any argument that would make the distinctions clear
beyond doubt would seem to require identification of the distinctions
therein. Where a reply contains an argument that motivation for
a modification of a reference made by an examiner does not exist,
or that a nonanalogous secondary reference has been improperly
combined, the identification of the claim element involved and
the particular factual basis that makes the modification or combination
relating to that claim element inappropriate are necessary elements
of a reply. That an applicant considers a rejection, objection,
or other requirement in an Office action to be inappropriate does
not relieve the applicant of the burden under 35 U.S.C. 133
of prosecuting the application to avoid abandonment.
Comment 46: A comment suggested that
the requirement for supplying claim distinctions for a newly presented
claim is at odds with the Office's burden in the first instance
of explaining any objection or rejection of an applicant's claim,
and that the existing requirement that an applicant distinctly
and specifically point out the errors in the examiner's action
and reply to every ground of objection and rejection are sufficient
without the added language. Another comment noted that it is
believed that the rule already requires that specific distinctions
be supplied and questions what new requirements are being added
by that additional language.
Response: To the extent that the already
existing language would require that claim distinctions be presented,
the added language is seen to clarify what is required of an applicant
in replying to an Office action and is not seen to be at odds
with the Office's burden in first going forward with a rejection
of the claims. Once a claim is rejected, there is a duty on applicants
under § 1.111 to provide an appropriate reply as defined
therein for applicant to be entitled to reconsideration or further
examination.
Section 1.112:
Section 1.112 is amended to remove as unnecessary the statement
that "any amendments after a second Office action must ordinarily
be restricted to the rejection, objections or requirements made
in the office action" to reflect actual practice, in which
amendments after the second action need not be restricted to the
rejection or the objections or requirements set forth in an Office
action. The heading of § 1.112 is also amended to add
"before final action" to clarify that such reconsideration
does not apply after a final Office action.
No comments were received regarding the
proposed change to § 1.112.
Section 1.113:
Section 1.113(a) is amended to add "by the examiner"
after "examination or consideration," change "objections
to form" to "objections as to form" for clarity,
and replace "response" with "reply" in accordance
with the change to § 1.111.
Section 1.113(b) is amended to change
"clearly stating the reasons therefor" to "clearly
stating the reasons in support thereof" for clarity.
Comment 47: A number of comments argued
that first action final practice should be eliminated without
regard to an amendment to § 1.116 as: (1) 35 U.S.C.
132 does not authorize first action final practice; and (2) the
filing fee paid in a continuing application should entitle an
applicant to an examination and reexamination in the continuing
application.
Response: The argument that 35 U.S.C.
132 does not authorize first action final practice has been considered
by the Office and rejected in In re Bogese, 22 USPQ2d 1821
(Comm'r Pat. 1992). Specifically, continuing applications have
historically been considered part of a continuous proceeding in
regard to the prior application. Id. at 1827. First action
final practice denies an applicant the delay inherent in an additional
Office action in a continuation application, thus compelling the
applicant to draft claims in a continuation application in view
of the prosecution history of the parent application (i.e.,
the rejections and prior art of record in the parent application),
and thus make a bona fide effort to define the issues for
appeal or allowance. Id. at 1824-25.
In addition, under the current patent
fee structure, a significant portion of the Office's costs of
examining patent applications is recovered through issue and maintenance
fees. That is, the filing fees required by 35 U.S.C. 41(a)(1)-(4)
and § 1.16 for an application do not cover the Office's
full costs of examining that application pursuant to 35 U.S.C.
131 and 132. Therefore, the argument that first action final
practice is inherently unfair in view of the filing fees paid
by the applicant fails to appreciate the current patent fee structure.
Due to the overwhelming opposition to
the proposed changes to § 1.116 to simplify after final
practice, the proposed change to § 1.113 to eliminate
first action final practice and the proposed changes to § 1.116
to simplify after final practice are not adopted in this Final
Rule. The Office will give further consideration to the elimination
of first action final practice.
Comment 48: One comment suggested that
§ 1.113 should be clarified to reflect the intent of
the rule change that a first action final rejection not issue
in a continuation application.
Response: The proposed change to § 1.113
to prohibit a first action final rejection is not being adopted.
Section 1.115:
Section 1.115 has been removed and reserved, rather than amended
to contain the material of former §§ 1.117 through
1.118, 1.123 and 1.124. The subject matter proposed to be included
in § 1.115 has been transferred to § 1.121.
The change does not constitute a change in substance; the material
of the deleted sections has simply been rearranged and edited
for clarity and contextual purposes in § 1.121. The
reference in § 1.115(b)(2) relating to the rejection
of claims containing new matter has not been retained in § 1.121
as unnecessary.
Comment 49: One comment recognizing
that the subject matter of § 1.118 is transferred to
§ 1.115 (now § 1.121) noted that the particular
material of the second and third sentences of paragraph (a) of
§ 1.118(a) was not so transferred and should be.
Response: While the exact language of
the second and third sentences of paragraph (a) of § 1.118
was not transferred to 1.121 (§ 1.115 as originally
proposed), the concept is retained in § 1.121, paragraphs
(a)(6), (b)(5), and (c)(1), in condensed form.
Comment 50: One comment objected to
the requirement of paragraph (d) of § 1.115 (now § 1.121)
where a disclosure must be amended to secure correspondence between
the claims, the specification and the drawings. Forcing the specification
to parrot the language of new claims, where only new claims originally
use a term not found in the original disclosure and in the original
claims, is said to impose an undue burden on applicant and jeopardize
the validity of all the claims if the new term is found to be
new matter.
Response: The comment does not explain
why a specification containing a later added expression subsequently
found to contain new matter will adversely affect claims that
do not contain that expression, particularly if a portion of the
specification is retained that provides support for claims not
containing that expression. Additionally, the requirement being
criticized is not a new requirement but was material transferred
from § 1.117. However, the comment was adopted in-part
in that § 1.121, paragraphs (a)(5) and (b)(4), require
only "substantial correspondence" between the claims,
the remainder of the specification, and the drawings.
Comment 51: One comment suggested that
the term "sketch" in paragraph (e) of § 1.115
(now § 1.121) be broadened to "drawing."
Response: Sections 1.121(a)(3)(ii) and
1.121(b)(3)(ii) recite sketch, which has been interpreted by the
Office to include a copy. The use of sketch is seen to be the
broader term in allowing a handwritten alteration of a copy of
the previously submitted drawing to be done without the need for
a color copy being obtained.
Comment 52: One comment suggested that
paragraph (f) of § 1.115 (now § 1.121), requiring
no interlineations to appear in a clause as finally presented,
is inconsistent with the requirements of § 1.121 requiring
brackets and underlining of the subject matter deleted and added.
Response: The comment was adopted by
clarifying § 1.121(a)(iii) as adopted by reciting that
the interlineation prohibition relates to previous amendments
being depicted in a subsequent amendment, and to limit its applicability
to applications other than reissue applications (thereby also
excluding reexamination proceedings) in that all changes from
the patent are required to be shown in reissue applications and
reexamination proceedings.
Section 1.116:
Section 1.116 is amended by adding the phrase "or appeal"
to its heading. This change clarifies the current practice that
paragraphs (b) and (c) apply to amendments filed after an appeal,
regardless of whether the application was subject to a final rejection
prior to the appeal.
Section 1.116(a) is also amended for
clarity to limit amendments after a final rejection or other final
action (§ 1.113) to those amendments cancelling claims
or complying with any requirement of form set forth in a previous
Office action, and replaces the phrase "any proceedings relative
thereto" with "any related proceedings" for clarity.
The amendment does not represent a change in practice under § 1.116(a)
as was originally proposed, but merely a clarification of when
an applicant is entitled to entry of an amendment under § 1.116(a).
Comment 53: Almost every comment relating
to the proposed change to § 1.116 to limit entry of
amendments after a final Office action based on simplification
of issues for appeal opposed the change. The various rationales
included: (1) a liberal practice by examiners in entering
amendments after final rejection based on a willingness to engage
in significant negotiations after final rejection; (2) an
increased burden on the Board of Patent Appeals and Interferences
(Board); (3) a loss of potential patent term under 35 U.S.C.
154 if refiling an application was routinely required; (4) a
loss of clarity by applicant and the examiner of the issues involved,
in that it is frequently only after the second action that the
issues become clarified, particularly as counsel are not aware
of the art that may actually be applied against the claims and
therefore do not submit claims that can read over such art; (5) to
the extent the need to enter amendments causes refiling of an
application, greater resources from the Office are required as
opposed to simply entering the amendment in the prior application;
(6) there will be an increase in the requests for interviews
after first action; (7) the change represents encouragement
for examiners to cut down on papers entered particularly in view
of the crediting system; and (8) the proposal is not helpful
to applicant and is only a revenue generator.
Several alternative suggestions were
made including: (1) a fee to have amendments after final
entered as a matter of right; (2) discretion for examiners
to enter any amendment should be explicitly stated in the rule;
(3) consider substantive amendments if submitted at least
one month in advance of the end of the reply period; (4) eliminate
applicant's concern for expedited handling of § 1.116
amendments by having a new period for appealing or refiling; (5) entry
of amendment to solely correct rejections under 35 U.S.C.
112, ¶2, should be permitted; (6) first after final
submission permitted entry under simplification of issues standard
and any subsequent submission would only be permitted under standard
as proposed without simplification of issues available; (7) merging
of a dependent claim into an independent claim ought to be explicitly
permitted as a matter of right; (8) provide a standard of
entry dependent upon good and sufficient reason as to why the
amendment after final was not made earlier; (9) permit consideration
of the amendment for allowable subject matter to save applicant
cost of refiling for such determination; and (10) change
should be linked with a prohibition on applying a new reference
in a final rejection.
Response: In view of the issues raised
and the alternative suggestions presented, it has been determined
that further study is required. The comments have been adopted
solely to the extent that the proposed change to delete
simplification of issues for purpose of appeal, as a basis for
entry of an amendment after final rejection, will not be implemented
at this time.
Section 1.117:
Section 1.117 is removed and reserved as the subject matter was
transferred to § 1.121.
No comments were received regarding the
proposed change to § 1.117.
Section 1.118:
Section 1.118 is removed and reserved and its subject matter
transferred to § 1.121.
See first comment related to § 1.115.
Section 1.119:
Section 1.119 is removed and reserved as duplicative of the provisions
of §§ 1.111 and 1.121.
No comments were received regarding the
proposed change to § 1.119.
Section 1.121:
Section 1.121, paragraphs (a) through (f), are replaced with
paragraphs (a) through (c), which separately treat amendments
in non-reissue nonprovisional applications (paragraph (a)), amendments
in reissue applications (paragraph (b)), and amendments in reexamination
proceedings (paragraph (c)). The intent of the changes is to
retain amendment practice in regard to non-reissue applications
prior to the changes proposed in the Notice of Proposed Rulemaking
and to make final the changes in amendment practice in regard
to reissue applications proposed in the Notice of Proposed Rulemaking,
except for requiring copies of all claims as of the date of submission
of an amendment and a constructive cancellation in their absence.
Additionally, while retaining the previous amendment practice
in non-reissue applications, the regulations have been clarified
by deletion of §§ 1.115, 1.117 through 1.118, 1.123,
and 1.124 and placement of subject matter thereof in § 1.121.
Comment 54: Most comments received on
the proposed change in amendment practice as it relates to non-reissue
applications to bring it into line with reissue and reexamination
amendment practices were very negative. In particular, the proposed
changes to present a complete copy of the claims when any amendment
to the claims is made, and to hold a constructive cancellation
for any claim copy not presented were alarming. However, similar
comments were not received in regard to the proposed changes to
bring reissue and reexamination practice closer together.
Response: The comments were adopted
in that the proposed changes, other than clarifications of current
practice, will not be implemented now and further study will be
undertaken to include suggestions presented in regard to this
rule.
Comment 55: Several comments offered
suggestions and requested clarifications: (1) whether this
was an attempt to push the practice closer to PCT where substitute
pages are used; (2) use of different markings such as strikeouts
of word processors; (3) only require complete copy of claims
at issue; (4) only have a status listing of all claims not
complete copy with each response; (5) continuations or divisions
should be filed showing markups; (6) require only that new
claims pages be substituted; (7) objection to the submission
of a separate complete set of claims in addition to the amendments
being made; (8) some instances separate set may be appropriate
and not too much of a burden; and (9) there should be exception,
liberal reinstatement, or rebuttable presumption for constructive
cancellation if clerical omission.
Response: Paragraphs (a) and (b) of
§ 1.121 each separately treat amendment of the specification
(paragraphs (a)(1) and (b)(1)), and of the claims (paragraphs
(a)(2) and (b)(2)). In comparing amendment practice to the specification
for non-reissue and reissue applications, all amendments in the
reissue application are to be made relative to (i.e., vis-à-vis)
the specification (including the claims) and drawings of the original
patent as of the date of the filing of the reissue application.
Changes are shown using underlining and bracketing relative to
the patent specification. In addition, the entire paragraph of
disclosure with the changes and the entire claim with the changes
must be presented, in making the amendment. On the other hand,
amendments in a non-reissue application are to be made relative
to prior amendments (with underlining and bracketing in a reproduced
claim reflecting changes made relative to the prior amendment),
and insertions and deletions can be made without reproducing the
entire paragraph of disclosure or the entire claim. Further (for
a non-reissue application), in amending the text of the disclosure
other than the claims, changes are not shown by underlining and
bracketing, even where a paragraph of disclosure is reproduced.
Paragraph (a) of § 1.121 relates
to amendments in non-provisional applications, other than reissue
applications, and retains a reference to § 1.52. Paragraph
(a)(1) relates to the manner of making amendments in the specification,
other than in the claims. Paragraph (a)(1)(i) requires the precise
point in the specification to be indicated where an addition is
to be inserted. Paragraph (a)(1)(ii) requires the precise point
in the specification to be indicated where a deletion is to be
made. This should be compared to addition or cancellation of
material from the patent specification in a reissue application
(paragraph (b)(1)(ii)) or in a reexamination proceeding (§ 1.530(d)(1)(ii),
e.g., by way of a copy of the rewritten material). An
amendment containing deletions mixed with additions will be treated
according to both paragraphs (a)(1)(i) and (a)(1)(ii). Amendments
to the specification, additions or deletions, do not require markings,
only identification of an insertion point. However, where the
changes made are not readily apparent the applicant may be requested
by the examiner to provide an explanation of the changes or a
marked up copy showing the changes made. Paragraph (a)(1)(iii)
provides that to reinstate matter previously deleted it must be
reinstated by a new amendment inserting the matter.
Paragraph (a)(2) of § 1.121 relates to the manner of making amendments in the claims of a non-reissue application.
Paragraph (a)(2)(i) permits amendment
by instructions to the Office for a deletion, paragraph (a)(2)(i)(A),
or for an addition limited to five words in any one claim, paragraph
(a)(2)(i)(B). The ability to provide directions to the Office
for the handwritten deletion of five words or less for each claim
does not encompass deletion of equations, charts or other non-word
material. Paragraph (a)(2)(ii) sets forth that a claim may be
amended by a direction to cancel the claim, or by rewriting the
claim with markings showing material to be added and deleted.
Additionally, previously rewritten claims are required to be
so marked and not to have interlineations showing amendment(s)
previous to the one currently being submitted.
Paragraph (a)(3) of § 1.121
clarifies that amendments to the original application drawings
for non-reissue applications are not permitted and are to be made
by way of a substitute sheet for each original drawing sheet that
is to be amended. The paragraph contains material from cancelled
§ 1.115.
Paragraph (a)(4) of § 1.121
requires that any amendment presented in a substitute specification
must be presented under the provision of this section either prior
to or concurrent with the submission of the substitute specification.
The paragraph contains material from cancelled § 1.115.
Paragraph (a)(5) of § 1.121
requires amendment of the disclosure in certain situations (i.e.,
to correct inaccuracies of description and definition) and to
secure substantial correspondence. The paragraph contains material
from cancelled § 1.117. The previous requirement for
"correspondence" has been modified by use of "substantial
correspondence." See comments to § 1.115.
Paragraph (a)(6) prohibits the introduction
of new matter into the disclosure of a non-reissue, non-provisional
application.
Paragraph (b) of § 1.121 applies
to amendments in reissue applications. Paragraph (b)(1) of § 1.121
relates to the manner of making amendments to the specification,
other than in the claims, in reissue applications. Paragraph
(b)(1)(i) requires that amendments including deletions be made
by submission of a copy of one or more newly added or rewritten
paragraphs with markings, except that an entire paragraph may
be deleted by a statement deleting the paragraph without presentation
of the text of the paragraph. Paragraph (b)(1)(ii) requires indication
of the precise point in the specification where the paragraph
which is being amended is located. When a change in one sentence,
paragraph or page results in only format changes to other pages
(e.g., shifting of non-amended text to subsequent pages)
not otherwise being amended, such format changes are not to be
submitted. Compare to amendments to the specification, other
than in the claims, of non-reissue applications wherein deletions
are permitted, paragraph (a)(1)(ii) of this section. Paragraph
(b)(1)(iii) defines the marking set forth in paragraph (b)(1)(ii)
of this section. Proposed paragraph (b)(1)(iii), relating to
a requirement for submission of all amendments be presented when
any amendment to the specification is made, was not implemented.
Paragraph (b)(2) of § 1.121
relates to the manner of making amendments to the claims in reissue
applications. Paragraph (b)(2)(i)(A) of § 1.121 requires
the entire text of each patent claim that is being amended by
the current amendment and of each claim being added by the current
amendment. Requests that the Office hand-enter changes of five
or less words, former § 1.121(c)(2), will no longer
be permitted. Pending claims, whether previously amended or not,
that are not being amended by the current amendment are not to
be resubmitted. This procedure is different from § 1.121(a)(2)(i)(B),
which permits requests that the Office hand-enter changes of five
or less words in a non-reissue application. Additionally, provision
is made for the cancellation of a patent claim by a direction
to cancel without the need for marking by brackets. Paragraph
(b)(2)(i)(B) requires that patent claims not be renumbered. Paragraph
(b)(2)(i)(C) identifies the type of marking required by paragraph
(b)(2)(i)(A), single underlining for added material and single
brackets for material deleted.
Paragraph (b)(2)(ii) of § 1.121
requires that each amendment submission set forth the status (i.e.,
pending or cancelled) of all patent claims and all added claims
as of the date of the submission, as not all claims (non-amended
claims) are to be presented with each submission, paragraph (b)(2)(iv).
The absence of submission of the claim status would result in
an incomplete reply (§ 1.135(c)).
Paragraph (b)(2)(iii) of § 1.121
requires that each claim amendment be accompanied by an explanation
of the support in the disclosure of the patent for the amendment.
The absence of an explanation would result in an incomplete reply
(§ 1.135(c)).
Comment 56: One comment requested that
the Office clarify how an applicant would satisfy this requirement
when the amendment involves a simple editorial change, or when
the amendment uses terms that find no explicit support in the
patent.
Response: When it is clear that the
amendment simply involves an editorial change and does not add
material for which support in the disclosure is required, the
reply may simply explain that the amendment is merely making an
editorial change. When the amendment uses terms that find no
explicit support in the specification, the reply must set forth
where the specification provides, at least implicitly, support
for the amendment as required by 35 U.S.C. 112, ¶1.
In addition, an amendment to the specification to secure correspondence
between the specification and the claims will also be required.
See § 1.75(d)(1) and MPEP 608.01(o). Obviously,
an amendment that does not find either explicit or at least implicit
support in the specification as required by 35 U.S.C. 112,
¶1, is not permitted. See 35 U.S.C. 251,
¶1, (last sentence).
Proposed paragraphs (b)(2)(iv) and (v)
of this section, relating to a requirement for presentation of
all amendments as of the date any amendment to the claims is made,
and to the treatment of the failure to submit a copy of any added
claim as a direction to cancel that claim, were not implemented.
Paragraph (b)(3) of § 1.121
clarifies that amendments to the patent drawings are not permitted
and that any change must be by way of a new sheet of drawings
with the amended figures being identified as "amended"
and with added figures identified as "new" for each
sheet that has changed. The paragraph contains material from
cancelled § 1.115.
Paragraph (b)(4) of § 1.121,
added in view of the deletion of § 1.115 paragraph (d),
requires amendment of the disclosure in certain situations (i.e.,
to correct inaccuracies of description and definition) and to
secure substantial correspondence between the claims, the remainder
of the specification, and the drawings. The previous requirement
for "correspondence" has been modified by use of "substantial
correspondence." See comments to § 1.115.
Paragraph (b)(5) of § 1.121,
containing material transferred from proposed paragraph (b)(2)(vi)
(now deleted), clarifies that: (1) No reissue patent will
be granted enlarging the scope of the claims unless applied for
within two years from the grant of the original patent (additional
broadening outside the two-year limit is appropriate as long as
some broadening occurred within the two-year period, In re
Doll, 419 F.2d 925, 164 USPQ 218 (CCPA 1970)); and (2) no
amendment may introduce new matter or be made in an expired patent.
Paragraph (b)(6) of § 1.121
has been added to clarify that all amendments must be made relative
to (i.e., vis-à-vis) the specification (including
the claims) and drawings of the original patent as of the date
of the filing of the reissue application. If there was a prior
change to the patent (made via a prior reexamination certificate,
reissue of the patent, certificate of correction, etc.),
the first amendment must be made relative to the patent specification
as changed by the prior proceeding or other mechanism for changing
the patent. In addition, all amendments subsequent to the first
amendment must be made relative to the patent specification in
effect as of the date of the filing of the reissue application,
and not relative to the prior amendment.
Paragraph (c) of § 1.121 clarifies
that amendments in reexamination proceedings are to be made in
accordance with § 1.530(d).
Section 1.121 as applied to reissue applications
does not provide for replacement pages whereby a new page would
be physically substituted for a currently existing page. However,
an applicant can direct that a page or pages ("Page(s) ______")
be cancelled and that updated materials be inserted in its place.
The wide availability of word processing
should enable applicants to more easily submit updated material
providing greater accuracy and thereby eliminating the need for
the Office to hand-enter amendments. To that end, § 1.125
is amended to reflect current practice that a substitute specification
may be submitted in an application, other than a reissue application,
at any point up to payment of the issue fee as a matter of right,
provided that such substitute specification is submitted in compliance
with the requirements set forth in § 1.125.
Section 1.122:
Section 1.122 is removed and reserved as representing internal
Office instruction.
See comments related to § 1.101.
Section 1.123:
Section 1.123 is removed and reserved and its subject matter
transferred to § 1.121 for better context.
No comments were received regarding the
proposed change to § 1.123.
Section 1.124:
Section 1.124 is removed and reserved and its subject matter
transferred to § 1.121 for better context.
No comments were received regarding the
proposed change to § 1.124.
Section 1.125:
Section 1.125 is amended by addition of paragraphs (a) through
(d). Section 1.125(a) retains the current practice that a substitute
specification may be required by the examiner and has been clarified
to note that if the legibility of the application papers shall
render it difficult to consider the application, the Office may
require a substitute specification.
Section 1.125 is amended in view of the
continued prosecution application under § 1.53(d), to
reflect the current liberalized practice as set forth in MPEP
608.01(q), and to delete the verification requirement for the
no new matter statement. See comments to § 1.4(d).
Section 1.125(b) specifically provides for the filing of a substitute specification, excluding the claims, at any point up to payment of the issue fee, if it is accompanied by: (1) a statement that the substitute specification includes no new matter; and (2) a marked-up copy of the substitute specification showing the matter being added to and the matter being deleted from the specification of record (i.e., the specification to be replaced by the substitute specification). While § 1.125(b)(2) requires the marked-up copy show the additions and deletions, it does not require that such additions and deletions be shown by underlining and bracketing. Rather, it permits the use of other indicia (e.g., redlining and strikeouts) to show additions and deletions so that the document-compare feature of conventional word-processing programs can be used to produce the marked-up substitute specification.
Section 1.125(b), as proposed, would
have required that a substitute specification contain only changes
that were previously or concurrently submitted by an amendment
under § 1.121. The Office, however, is not adopting
this proposal. Creating a copy of the substitute specification
showing the additions and deletions is relatively easy using the
document-compare feature of a conventional word-processing program,
when compared to the burden of preparing an amendment under § 1.121(a)(1)
showing numerous changes to a specification. Thus, the Office
is adopting the requirement currently set forth in MPEP 608.01(q)
for a marked-up copy of the substitute specification showing the
additions and deletions.
Comment 57: One comment stated that
it is not clear exactly what is to be submitted with the substitute
specification under paragraph (b)(2) of this section even though
paragraph (c) requires it to be in clean form without markings.
Response: Section 1.125 requires an
applicant filing a substitute specification to submit: (1) the
substitute specification in clean form without markings (§ 1.125(c));
(2) a marked-up copy showing the additions and deletions relative
to the specification it is replacing (§ 1.125(b)(2));
and (3) a statement that the substitute specification includes
no new matter (§ 1.125(b)(1)).
Section 1.125(c) is amended to clarify
that a substitute specification is to be submitted without markings
as to amended material.
Section 1.125(d) does not permit a substitute
specification in reissue or reexamination proceedings as markings
for changes from the patent are required therein.
Section 1.126:
Section 1.126 is amended to delete the phrase ", except
when presented in accordance with § 1.121(b)" for
consistency with the change to § 1.121.
No comments were received regarding § 1.126.
Section 1.133:
Section 1.133(b) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.133.
Section 1.134:
Section 1.134 is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.134.
Section 1.135:
Section 1.135 paragraphs (a) and (c) are amended by replacement
of "response" with "reply" in accordance with
the change to § 1.111. Section 1.135(b) is amended
to clarify that the admission of or refusal to admit any amendment
after final rejection, and not just an amendment not responsive
to the last Office action, shall not operate to save the application
from abandonment.
Section 1.135(c) is amended to provide
that a new "time period" under § 1.134 may
be given if a reply to a non-final Office action is substantially
complete but consideration of some matter or compliance with some
requirement has been inadvertently omitted. This replaces the
practice in which an applicant may be given an opportunity to
supply the omission through the setting of a "time limit"
of one month that is not extendable. Under § 1.135(c)
as adopted, a one-month shortened statutory time period will generally
be set enabling an applicant to petition for extensions of time
under § 1.136(a). Where 35 U.S.C. 133 requires
a period longer than one month (i.e., actions mailed in
the month of February), a shortened statutory period of 30 days
will be set.
The setting of a time period for reply
under § 1.134 (rather than a time limit) results in
the date of abandonment (when no further reply is filed) being
the expiration of the new time period rather than the date of
expiration of the period of reply set in the original Office action
for which an incomplete reply was filed. Thus, the amendment
to § 1.135(c) permits the filing of a continuing application
as an alternative to completing the reply, whereas the previous
practice required an applicant to complete the reply that was
held to be incomplete or else the application was held to be abandoned
(retroactively) as of the expiration of the original period for
reply. Thus, applicants had to file an unnecessary reply to preserve
pendency where their only intent was to file a continuing application.
Section 1.135(c), as amended, sets forth a new period within
which a continuing application can be filed, without the applicant
having to supply the omission in the prior application to preserve
pendency. In addition, applicant may file any other reply as
may be appropriate under § 1.111, regardless of whether
a continuing application is filed.
Comment 58: Two comments objected to
the change on the basis that it is subject to intentional misuse.
It is argued that it encourages an applicant to send in piecemeal
replies and permits use of the time period as a subterfuge for
extending prosecution as § 1.135(c) does not specify
how many times an incomplete reply can be given.
Response: 35 U.S.C. 154 as amended
by Pub. L. 103-465 should provide the necessary incentive for
applicants to prosecute an application without undue delay. Additionally,
the examiner can determine that the failure to provide a complete
reply was not "inadvertent" (especially where an applicant
was previously notified of the deficiencies in the reply), and
not set a period under § 1.135(c).
Comment 59: One comment suggested amending
§ 1.135(c) from "may" to "shall"
so that an examiner must provide an opportunity to an applicant
to complete a reply, and that § 1.135(c) should not
be limited to replies to non-final Office actions so that if an
application is in condition for allowance except for an inadvertent
omission it would be beneficial for all parties to provide the
same benefit as for non-final actions.
Response: The term "may" is
used rather than "shall" to encourage applicants to
provide a complete reply, in that an applicant providing an incomplete
reply cannot be certain of being provided with an additional time
period to prosecute the application.
Section 1.113(a) provides that the only
reply to a final Office action effective to avoid abandonment
of an application is: (1) an amendment under § 1.116
that prima facie places the application in condition for
allowance; or (2) a notice of appeal (and appeal fee) under
§ 1.191. Thus, the only reply under § 1.113(a)
that will ensure that abandonment of the application will be avoided
is: (1) an amendment under § 1.116 that cancels
all of the rejected claims; or (2) a notice of appeal (and
appeal fee) under § 1.191 (§ 1.113(a)). That
is, an applicant filing a proposed amendment under § 1.116
or arguments in reply to a final Office action has no assurance
that such reply will necessarily result in allowance of the application.
Given the limited nature of the replies under § 1.113
to a final Office action, it is not appropriate to provide a time
period under § 1.135(c) to complete a reply to a final
Office action.
Section 1.135(c) is also amended to remove an unnecessary reference to consideration of the question of abandonment and to clarify that the reply for which applicant may be given a new time period to reply to must be a "non-final" Office action.
Section 1.136:
Section 1.136(a)(1) is amended to recite the availability of
a maximum of five rather than four months as an extension of time,
subject to any maximum period for reply set by statute. For example,
when a one-month or 30-day period is set for reply to a restriction
requirement or for completing a reply under §1.135(c), that
period may be extended up to the six-month statutory (35 U.S.C.
133) maximum. In addition, as the two-month period set in § 1.192(a)
for filing an appeal brief is not subject to the six-month maximum
period specified in 35 U.S.C. 133, the period for filing
an appeal brief may be extended up to seven months.
Comment 60: At least one comment noted
that there is no statutory authority under 35 U.S.C. 41(a)(8)(C)
for the $2,010 amount set for the fifth month extension of time.
Response: See the response to comment
5.
Section 1.136(a)(1) is also amended by
replacement of "respond" with "reply" in accordance
with the change to § 1.111 and for clarification.
Section 1.136(a)(2) is amended by replacement of "respond" with "reply" in accordance with the change to § 1.111 and other clarification changes.
Comment 61: One comment questioned whether
the addition in paragraph (a)(2) of § 1.136 that requires
a reply to be filed prior to the expiration of the period of extension
to avoid abandonment of the application will affect the timely
filing of a reply under §§ 1.8 or 1.10 where the
mail date rather than the receipt date is the end of the period
for reply.
Response: The referred to addition has
been noted to be a clarification and not a change in practice.
The added language does not change current practice under §§ 1.8
and 1.10.
Section 1.136 is amended by addition
of paragraph (a)(3) that provides for the filing in an application
a general authorization to treat any reply requiring a petition
for an extension of time for its timely submission as containing
a request therefor for the appropriate length of time. The authorization
may be filed at any time prior to or with the submission of a
reply that would require an extension of time for its timely submission,
including submission with the application papers. Previously,
the mere presence of a general authorization, submitted prior
to or with a reply requiring an extension of time, to charge all
required fees does not amount to a petition for an extension of
time for that reply (MPEP 201.06 and 714.17) and under the proposed
amended rule the submission of a reply requiring an extension
of time for its timely submission would not be treated as an inherent
petition for an extension of time absent an authorization for
all necessary extensions of time. The Office will continue to
treat all petitions for an extension of time as requesting the
appropriate extension period notwithstanding an inadvertent reference
to a shorter period for extension and will liberally interpret
comparable papers as petitions for an extension of time. Applicants
are advised to file general authorizations for payment of fees
and petitions for extensions of time as separate papers rather
than as sentences buried in papers directed to other matters (such
as an application transmittal letter). The use of individual
papers directed only to an extension of time or to a general authorization
for payment of fees would permit the Office to more readily identify
the presence of such items and list them individually on the application
file jacket, thus facilitating future identification of these
authorizations.
Comment 62: Two comments requested that it be clarified whether the reference to submission of a paper with an authorization is to be construed as allowing for submission of a standard sentence in a general reply to an Office action that includes a check box on an application transmittal form.
Response: The comments have been adopted
and the proposed language of paragraph (a)(3) of § 1.136
modified to replace the reference to "paper" with "written
request."
Section 1.136(a)(3) is additionally
amended to provide that general authorizations to charge fees
are effective to meet not only the requirement for the extension
of time fee for replies filed concurrent or subsequent to the
authorization but also represent a constructive petition for an
extension of time, which is a change from current practice wherein
a general authorization to charge additional fees does not represent
a petition for an extension of time, which petition must be separately
requested.
Section 1.136(a)(3) also includes the
sentence "[s]ubmission of the fee set forth in § 1.17(a)
will also be treated as a constructive petition for an extension
of time in any concurrent reply requiring a petition for an extension
of time under this paragraph for its timely submission."
This provides for those instances in which an applicant files
a reply with a check (or other means of payment under § 1.23)
for the requisite fee under § 1.17(a)(1) through (5)
for the petition under § 1.136(a) required to render
such reply timely, but omits a request (i.e., a petition)
for an extension of time under § 1.136(a). In such
instances, the mere submission of the appropriate fee will be
treated as a constructive petition for the extension of time to
render the reply timely.
Section 1.136(b) is amended for clarity
and to replace the phrase "response" with the phrase
"reply" for consistency with § 1.111.
Section 1.137:
Section 1.137 is amended to, inter alia, incorporate revival
of abandoned applications and lapsed patents for the failure:
(1) to timely reply to an Office requirement in a provisional
application (§ 1.139); (2) to timely pay the issue
fee for a design application (§ 1.155); (3) to
timely pay the issue fee for a utility or plant application (§ 1.316);
or (4) to timely pay any outstanding balance of the issue
fee (§ 1.317) (lapsed patents).
Section 1.137(a) is amended to provide:
(1) that it is the paragraph that applies to petitions under
the "unavoidable" standard; (2) that "where
the delay in reply was unavoidable, a petition may be filed to
revive an abandoned application or a lapsed patent pursuant to
[§ 1.137(a)]"; and (3) the requirements for
a grantable petition pursuant to § 1.137(a) in paragraphs
(a)(1) through (a)(4).
Section 1.137(a)(1) (and § 1.137(b)(1))
are amended to provide that a grantable petition pursuant to § 1.137(a)
must be accompanied by "[t]he required reply, unless previously
filed." Section 1.137(a)(1) (and § 1.137(b)(1))
is amended to further provide that "[i]n a nonprovisional
application abandoned for failure to prosecute, the required reply
may be met by the filing of a continuing application" and
that "[i]n an application or patent, abandoned or lapsed
for failure to pay the issue fee or any portion thereof, the required
reply must be the payment of the issue fee or any outstanding
balance thereof."
Under § 1.137(a)(1) (and § 1.137(b)(1)),
a continuing application is a permissive (i.e., "may
be met") reply in a nonprovisional application abandoned
for failure to prosecute, in that an applicant in a nonprovisional
application abandoned for failure to prosecute may file a reply
under § 1.111 to a non-final Office action or a reply
under § 1.113 (e.g., notice of appeal) to a final
Office action, or may simply file a continuing application as
the required reply. The Office, however, may require a continuing
application (or request for further examination pursuant to § 1.129(a))
to meet the reply requirement of § 1.137(a)(1) (or § 1.137(b)(1))
where, under the circumstances of the application, treating a
reply under §§ 1.111 or 1.113 would place an inordinate
burden on the Office. Exemplary circumstances of when treating
a reply under §§ 1.111 or 1.113 may place an inordinate
burden on the Office are: (1) an application abandoned for
an inordinate period of time; (2) the application file containing
multiple or conflicting replies to the last Office action; and
(3) the submission of a reply or replies under § 1.137(a)(1)
(or § 1.137(b)(1)) that are questionable as to compliance
with §§ 1.111 or 1.113.
While the revival of applications abandoned
for failure to timely prosecute and for failure to timely pay
the issue fee are incorporated together in § 1.137,
the statutory provisions for the revival of an application abandoned
for failure to timely prosecute and for failure to timely submit
the issue fee are mutually exclusive. See Brenner v.
Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert.
denied 393 U.S. 926, 159 USPQ 799 (1968). 35 U.S.C.
151 authorizes the acceptance of a delayed payment of the issue
fee, if the issue fee "is submitted ... and the delay in
payment is shown to have been unavoidable." 35 U.S.C.
41(a)(7) likewise authorizes the acceptance of an "unintentionally
delayed payment of the fee for issuing each patent." Thus,
35 U.S.C. 41(a)(7) and 151 each require payment of the issue
fee as a condition of reviving an application abandoned or patent
lapsed for failure to pay the issue fee. Therefore, the filing
of a continuing application without payment of the issue fee or
any outstanding balance thereof is not an acceptable proposed
reply in an application abandoned or patent lapsed for failure
to pay the issue fee or any portion thereof.
The Notice of Allowance requires the
timely payment of the issue fee in effect on the date of its mailing
to avoid abandonment of the application. In instances in which
there is an increase in the issue fee by the time of payment of
the issue fee required in the Notice of Allowance, the Office
will mail a notice requiring payment of the balance of the issue
fee then in effect. See In re Mills, 12 USPQ2d
1847 (Comm'r Pat. 1989). The phrase "for failure to pay
the issue fee or any portion thereof" applies to those instances
in which the applicant fails to pay either the issue fee required
in the Notice of Allowance or the balance of the issue fee required
in a subsequent notice. In such instances, the proposed reply
must be the issue fee then in effect, if no portion of the issue
fee was previously submitted, or any outstanding balance of the
issue fee then in effect, if a portion of the issue fee was previously
submitted.
These changes to § 1.137(a)(1)
(and § 1.137(b)(1)) are necessary to incorporate into
§ 1.137 the revival of abandoned applications and lapsed
patents for the failure to: (1) timely reply to an Office
requirement in a provisional application (§ 1.139),
(2) timely pay the issue fee (§§ 1.155 and
1.316), or (3) timely pay any outstanding balance of the
issue fee (§ 1.317).
Section 1.137(a)(3) is amended to provide
that a grantable petition pursuant to § 1.137(a) must
be accompanied by "[a] showing to the satisfaction of the
Commissioner that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition pursuant to this paragraph was unavoidable."
Section 1.137(a) deletes the requirement that a petition thereunder be "promptly filed after the applicant is notified of, or otherwise becomes aware of, the abandonment." The genesis of the "promptly filed" requirement in § 1.137(a) is the legislative history of Pub. L. 97-247, § 3, 96 Stat. 317 (1982) (which provides for the revival of an "unintentionally" abandoned application), which provides, inter alia, that:
In order to prevent abuse and injury
to the public the Commissioner could require a terminal disclaimer
equivalent to the period of abandonment and could require applicants
to act promptly after becoming aware of the abandonment.
See
H.R. Rep. No. 542, 97th Cong., 2d Sess. 7 (1982), reprinted
in 1982 U.S.C.C.A.N. 771 (emphasis added).
Nevertheless, 35 U.S.C. 133 and
151 each require a showing that the "delay" was "unavoidable,"
which requires not only a showing that the delay which resulted
in the abandonment of the application was unavoidable, but also
a showing of unavoidable delay until the filing of a petition
to revive. See In re Application of Takao, 17 USPQ2d
1155 (Comm'r Pat. 1990). The burden of continuing the process
of presenting a grantable petition in a timely manner likewise
remains with the applicant until the applicant is informed that
the petition is granted. Id. Thus, an applicant seeking
to revive an "unavoidably" abandoned application must
cause a petition under § 1.137(a) to be filed without
delay (i.e., promptly upon becoming notified, or otherwise
becoming aware, of the abandonment of the application).
An applicant who fails to file a petition
under § 1.137(a) "promptly" upon becoming
notified, or otherwise becoming aware, of the abandonment of the
application will not be able to show that "the entire delay
in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to [§ 1.137(a)]
was unavoidable." The removal of the language in § 1.137(a)
requiring that any petition thereunder be "promptly filed
after the applicant is notified of, or otherwise becomes aware
of, the abandonment" should not be viewed as: (1) permitting
an applicant, upon becoming notified, or otherwise becoming aware,
of the abandonment of the application, to delay the filing of
a petition under § 1.137(a); or (2) changing (or
modifying) the result in In re Application of S, 8 USPQ2d
1630 (Comm'r Pat. 1988), in which a petition under § 1.137(a)
was denied due to the applicant's deliberate deferral in filing
a petition under § 1.137. An applicant who deliberately
chooses to delay the filing of a petition under § 1.137
(as in Application of S) will not be able to show that
"the entire delay in filing the required reply from the due
date for the reply until the filing of a grantable petition pursuant
to [§ 1.137(a)] was unavoidable" or even make an
appropriate statement that "the entire delay in filing the
required reply from the due date for the reply until the filing
of a grantable petition pursuant to [§ 1.137(b)] was
unintentional."
Therefore, the requirement in § 1.137(a)
that a petition thereunder be "promptly filed after the applicant
is notified of, or otherwise becomes aware of, the abandonment"
is deleted solely because it is considered redundant in light
of the requirement for a showing that the entire delay in filing
the required reply from the due date for the reply until the filing
of a grantable petition pursuant to § 1.137(a) was unavoidable.
Section 1.137(a)(3) (and § 1.137(b)(3))
is further amended to delete the requirement that the showing
(statement) must be a verified showing or statement if made by
a person not registered to practice before the Patent and Trademark
Office. Section 1.56 currently provides that each individual
associated with the filing and prosecution of a patent application
has a duty of candor and good faith. Sections 1.4(d) and 10.18
are amended to provide that a signature on a paper submitted to
the Office constitutes an acknowledgment that willful false statements
are punishable under 18 U.S.C. 1001, and may jeopardize the
validity of the application or any patent issuing thereon. Therefore,
requiring additional verification of a showing or statement under
§ 1.137 would be redundant. In addition, this requirement
results in delays in the treatment of the merits of petitions
that include unverified statements.
Section 1.137(a)(4) (and § 1.137(b)(4))
are added to provide that a grantable petition under § 1.137
must be accompanied by "[a]ny terminal disclaimer (and fee
as set forth in § 1.20(d)) required pursuant to [§ 1.137(c)]."
Section 1.137(b) is amended to provide:
(1) that it is the paragraph that applies to petitions under
the "unintentional" standard; (2) that "where
the delay in reply was unintentional, a petition may be filed
to revive an abandoned application or a lapsed patent pursuant
to [§ 1.137(b)]"; and (3) the requirements
for a grantable petition pursuant to § 1.137(b) in paragraphs
(b)(1) through (b)(4).
Section 1.137(b)(1) is amended (as discussed
supra) to provide that a grantable petition under § 1.137(b)
must be accompanied by "[t]he required reply, unless previously
filed." Section 1.137(b)(1) is amended to further provide
that "[i]n a nonprovisional application abandoned for failure
to prosecute, the required reply may be met by the filing of a
continuing application" and that "[i]n an application
or patent, abandoned or lapsed for failure to pay the issue fee
or any portion thereof, the required reply must be the payment
of the issue fee or any outstanding balance thereof."
Section 1.137(b)(3) is amended to provide
that a grantable petition under § 1.137(b) must be accompanied
by "[a] statement that the entire delay in providing the
required reply from the due date for the reply until the filing
of a grantable petition pursuant to this paragraph was unintentional"
and that "[t]he Commissioner may require additional information
where there is a question whether the delay was unintentional."
While the Office will generally require only the statement that
the entire delay in providing the required reply from the due
date for the reply until the filing of a grantable petition pursuant
to § 1.137(b) was unintentional, the Office may require
an applicant to carry the burden of proof to establish that the
delay from the due date for the reply until the filing of a grantable
petition was unintentional within the meaning of 35 U.S.C.
41(a)(7) and § 1.137(b) where there is a question whether
the entire delay was unintentional. See In re Application
of G, 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989).
Section 1.137(b)(4) is amended to delete
the one-year filing period requirement. Section 1.137(b)(4) is
amended to provide that a grantable petition under § 1.137
must be accompanied by "[a]ny terminal disclaimer (and fee
as set forth in § 1.20(d)) required pursuant to [§ 1.137(c)]."
Requirement that the entire delay until the filing of a grantable petition was unavoidable (§ 1.137(a)) or unintentional (§ 1.137(b)):
There are three periods to be considered
during the evaluation of a petition under § 1.137:
(1) the delay in reply that originally resulted in the abandonment;
(2) the delay in filing an initial petition pursuant to § 1.137
to revive the application; and (3) the delay in filing a
grantable petition pursuant to § 1.137 to revive
the application.
Where the applicant deliberately permits
an application to become abandoned (e.g., due to a conclusion
that the claims are unpatentable, that a rejection in an Office
action cannot be overcome, or that the invention lacks sufficient
commercial value to justify continued prosecution), the abandonment
of such application is considered to be a deliberately chosen
course of action, and the resulting delay cannot be considered
as "unintentional" within the meaning of § 1.137(b).
See Application of G, 11 USPQ2d at 1380. Likewise,
where the applicant deliberately chooses not to seek or persist
in seeking the revival of an abandoned application, or where the
applicant deliberately chooses to delay seeking the revival of
an abandoned application, the resulting delay in seeking revival
of the abandoned application cannot be considered as "unintentional"
within the meaning of § 1.137(b). An intentional delay
resulting from a deliberate course of action chosen by the applicant
is not affected by: (1) the correctness of the applicant's
(or applicant's representative's) decision to abandon the application
or not to seek or persist in seeking revival of the application;
(2) the correctness or propriety of a rejection, or other
objection, requirement, or decision by the Office; or (3) the
discovery of new information or evidence, or other change in circumstances
subsequent to the abandonment or decision not to seek or persist
in seeking revival. Obviously, delaying the revival of an abandoned
application, by a deliberately chosen course of action, until
the industry or a competitor shows an interest in the invention
(a submarine application) is the antithesis of an "unavoidable"
or "unintentional" delay. An intentional abandonment
of an application, or an intentional delay in seeking either the
withdrawal of a holding of abandonment in or the revival of an
abandoned application, precludes a finding of unavoidable or unintentional
delay pursuant to § 1.137. See In re Maldague,
10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).
The Office does not generally question
whether there has been an intentional or otherwise impermissible
delay in filing an initial petition pursuant to § 1.137(a)
or (b), when such petition is filed: (1) within three months
of the date the applicant is first notified that the application
is abandoned; and (2) within one year of the date
of abandonment of the application. Thus, an applicant seeking
revival of an abandoned application is advised to file a petition
pursuant to § 1.137 within three months of the first
notification that the application is abandoned to avoid the question
of intentional delay being raised by the Office (or by third parties
seeking to challenge any patent issuing from the application).
Where a petition pursuant to § 1.137(a)
or (b) is not filed within three months of the date the applicant
is first notified that the application is abandoned, the Office
may consider there to be a question as to whether the delay was
unavoidable or even unintentional. In such instances, the Office
may require: (1) a showing as to how the delay between the
date the applicant was first notified that the application was
abandoned and the date a § 1.137(a) petition was filed
was "unavoidable"; or (2) further information as
to the cause of the delay between the date the applicant was first
notified that the application was abandoned and the date a § 1.137(b)
petition was filed, and how such delay was "unintentional."
To avoid delay in the consideration of a petition under § 1.137(a)
or (b) in instances in which such petition was not filed within
three months of the date the applicant was first notified that
the application was abandoned, applicants should include a showing
as to how the delay between the date the applicant is first notified
by the Office that the application is abandoned and filing of
a petition under § 1.137 was: (1) "unavoidable"
in a petition under § 1.137(a); or (2) "unintentional"
in a petition under § 1.137(b).
Where a petition pursuant to § 1.137(a)
or (b) is not filed within one year of the date of abandonment
of the application (note that abandonment takes place by operation
of law, rather than the mailing of a Notice of Abandonment), the
Office may require: (1) further information as to when the
applicant (or the applicant's representative) first became aware
of the abandonment of the application; and (2) a showing
as to how the delay in discovering the abandoned status of the
application occurred despite the exercise of due care or diligence
on the part of the applicant (or the applicant's representative)
(see Ex parte Pratt, 1887 Dec. Comm'r Pat. 31 (1887)).
To avoid delay in the consideration of a petition under § 1.137(a)
or (b) in instances in which such petition was not filed within
one year of the date of abandonment of the application, applicants
should include: (1) the date that the applicant first became
aware of the abandonment of the application; and (2) a showing
as to how the delay in discovering the abandoned status of the
application occurred despite the exercise of due care or diligence
on the part of the applicant.
In either instance, applicant's failure
to carry the burden of proof to establish that the "entire"
delay was "unavoidable" or "unintentional"
may lead to the denial of a petition under § 1.137(a)
or § 1.137(b), regardless of the circumstances that
originally resulted in the abandonment of the application.
Section 1.137(d) specifies a time period
within which a renewed petition pursuant to § 1.137
must be filed to be considered timely. So long as a renewed petition
is timely filed under § 1.137(d) (including any properly
obtained extensions of time), the Office will consider the delay
in filing a renewed petition under § 1.137(a) "unavoidable"
under § 1.137(a)(3), and will consider the delay in
filing a renewed petition under § 1.137(b) "unintentional"
under § 1.137(b)(3). Where an applicant files a renewed
petition, request for reconsideration, or other petition seeking
review of a prior decision on a petition pursuant to § 1.137
outside the time period specified in § 1.137(d), the
Office may require, inter alia, a specific showing as to
how the entire delay was "unavoidable" (§ 1.137(a))
or "unintentional" (§ 1.137(b)). As discussed
supra, a delay resulting from the applicant deliberately
choosing not to persist in seeking the revival of an abandoned
application cannot be considered "unavoidable" or "unintentional"
within the meaning of § 1.137, and the correctness or
propriety of the decision on the prior petition pursuant to § 1.137,
the correctness of the applicant's (or the applicant's representative's)
decision not to persist in seeking revival, the discovery of new
information or evidence, or other change in circumstances subsequent
to the abandonment or decision to not persist in seeking revival
are immaterial to such intentional delay caused by the deliberate
course of action chosen by the applicant.
Retroactive application of § 1.137(b):
There was no prohibition in former § 1.137(b)
against requests for waiver of its one-year filing period requirement;
however, waiver of the one-year filing period requirement of former
§ 1.137(b) was subject to strictly limited conditions
(§ 1.183). See Final Rule entitled "Changes
in Procedures for Revival of Patent Applications and Reinstatement
of Patents," published in the Federal Register at
58 FR 44277 (August 20, 1993), and in the Official Gazette
at 1154 Off. Gaz. Pat. Office 35 (September 14, 1993).
Thus, under the terms of former § 1.137, an applicant
in an application abandoned for more than one year could file
either a petition under § 1.137(a) to revive the application
on the basis of "unavoidable" delay, or a petition under
§§ 1.183 and 1.137(b) to revive the application
on the basis of "unintentional" delay. That is, where
an application was abandoned for more than one year, and the delay
was "unintentional" but not "unavoidable,"
it was incumbent upon an applicant desiring revival of the application
to promptly file a petition under §§ 1.183 and
1.137(b) to revive the application.
While § 1.137(b), as amended,
is, by its terms, applicable to applications abandoned prior to
its effective date, § 1.137(b) requires, by its terms,
"[a] statement that the entire delay in providing the required
reply from the due date for the reply until the filing of a grantable
petition pursuant to this paragraph was unintentional."
Thus, where an applicant (or the applicant's representative) previously
chose not to seek revival of an application (e.g., due
to the opinion that the former provisions of § 1.137(a)
or (b) did not permit revival thereunder), the resulting delay
in seeking revival of the application cannot be considered "unintentional"
within the meaning of § 1.137(b). Likewise, where an
applicant (or the applicant's representative) previously requested
revival of an application, received an adverse decision (e.g.,
a dismissal or denial), and chose not to persist in seeking revival
of the application (e.g., by request for reconsideration
or review), the resulting delay in seeking revival of the application
likewise cannot be considered "unintentional" within
the meaning of § 1.137(b). The elimination of the one-year
filing period requirement in § 1.137(b) does not create
a new right to overcome any prior intentional delay caused by
a deliberate course of action (or inaction) chosen by the applicant.
Thus, any applicant filing a petition under § 1.137
after the effective date of this Final Rule, but outside the period
set in § 1.137(d) for seeking reconsideration of a prior
adverse decision on a request to revive an application will be
considered to have acquiesced in the abandonment of the application
or lapse of the patent.
Section 1.137(c) is amended to change
the introductory phrase "[i]n all applications filed before
June 8, 1995, and in all design applications filed on or
after June 8, 1995" to "[i]n a design application,
a utility application filed before June 8, 1995, or a plant
application filed before June 8, 1995" for clarity.
Section 1.137(c) is further amended to change the phrase "any
petition to revive pursuant to paragraph (a) of this section"
to "any petition to revive pursuant to this section,"
and the phrase "not filed within six months of the date of
abandonment of the applications" is deleted. Section 1.137(c)
is further amended to change the phrase "must also apply
to any patent granted on any continuing application entitled under
35 U.S.C. 120 to the benefit of the filing date of the application
for which revival is sought" to "must also apply to
any patent granted on any continuing application that contains
a specific reference under 35 U.S.C. 120, 121, or 365(c) to the
application for which revival is sought," since it is the
claim for, and not the entitlement to, the benefit of the filing
date of the application for which revival is sought that triggers
the requirement for the filing of a terminal disclaimer in the
continuing application.
Section 1.137(d) is amended to change
"application" to "abandoned application or lapsed
patent" to incorporate into § 1.137 the revival
of lapsed patents. In view of the elimination of a time period
from § 1.137(b), the provisions of former § 1.137(e)
are incorporated into § 1.137(d) as "[u]nless a
decision indicates otherwise, this time period may be extended
under the provisions of § 1.136."
Section 1.137(e) is amended to expressly
provide that a provisional application, abandoned for failure
to timely reply to an Office requirement, may be revived pursuant
to § 1.137(a) or (b) so as to be pending for a period
of no longer than twelve months from its filing date. In accordance
with 35 U.S.C. 111(b)(5), § 1.137(e) clearly indicates
that "[u]nder no circumstances will a provisional application
be regarded as pending after twelve months from its filing date."
Prior § 1.139(a) and (b) each provided that a provisional
application may be revived so as to be pending for a period of
no longer than twelve months from its filing date, and that under
no circumstances will a provisional application be regarded as
pending after twelve months from its filing date.
Comment 63: The majority of comments
opposed amending § 1.137(a) and (b) to include time
limits based upon the mail date of a notification of abandonment,
as well as the retroactive application of such a change to the
rules of practice. While these comments recognized that any filing
period requirement § 1.137 is better based upon the
date of notification, rather than the date of abandonment, they
argued that there will inevitably be instances in which a blameless
applicant will not be able to meet the filing period requirement
due to extenuating circumstances. The majority of comments supported
amending § 1.137(a) and (b) to remove the filing period
requirement, as well as the retroactive application of such a
change to the rules of practice.
Response: The Office will adopt a § 1.137
that does not include filing period requirements, and will not
limit the retroactive application of § 1.137(b) as adopted,
other than by the terms of the rule (as discussed supra).
Comment 64: One comment generally supported
the change to § 1.137(b) to remove the filing period
requirement, but expressed concerns as to the routine revival
of abandoned applications. The comment specifically suggested
that the Office continue to require a high showing to justify
the revival of an abandoned application, especially where the
petition was filed substantially after abandonment or applicant's
receipt of the notice of abandonment.
Response: The Office does not consider the revival of an abandoned application to be a "routine" matter. The Office will require, inter alia, a "showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to [§ 1.137(a)] was unavoidable" as a prerequisite to the grant of any petition based upon unavoidable delay (§ 1.137(a)). The Office will require, inter alia, a "statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to [§ 1.137(b)] was unintentional" by a registered practitioner or other party in interest having firsthand knowledge of the circumstances surrounding the delay as a prerequisite to the grant of any petition based upon unintentional delay (§ 1.137(b)). The Office expects that such statement made by a registered practitioner not having firsthand knowledge of the circumstances surrounding the delay be based upon a reasonable investigation of the circumstances surrounding the abandonment of the application (§ 10.18), and that such statement by any person be consistent with the duty of candor and good faith and the duty to disclose material information to the Office (§ 1.56).
Regardless of the length of the delay,
§ 1.137(a) requires that the entire delay in filing
the required reply from the due date for the reply until the filing
of a grantable petition pursuant to § 1.137(a) was unavoidable.
Likewise, regardless of the length of the delay, § 1.137(b)
requires that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable petition
pursuant to § 1.137(b) was unintentional. As "unintentional"
delay does not require that the delay have occurred despite the
exercise of due care and diligence (as does "unavoidable"
delay), the Office does not routinely require a "showing"
of unintentional delay for a petition under § 1.137(b).
However, where there may be a question whether the delay was
unintentional, the Office may require a showing of unintentional
delay for a petition under § 1.137(b). Such question
may arise from papers submitted to the Office prior to the petition
under § 1.137(b) (e.g., a letter of express abandonment,
or other communication evidencing a desire to discontinue prosecution)
or from facts set forth in the petition itself. Such question
may also arise simply from the length of the delay between the
date the applicant was notified of the abandoned status of the
application and the date action was taken to revive the abandoned
application, or the length of the period of abandonment. Specifically,
where there is a delay of three months between the date the applicant
was notified of the abandoned status of the application (i.e.,
the mail date of the notice of abandonment) and the date a petition
under § 1.137(b) was filed, or where the application
was abandoned for more than one year prior to the date a petition
under § 1.137(b) was filed, the Office may require further
information and a showing that the delay was unintentional.
Finally, it should be stressed that the
mere fact that a petition under § 1.137(b) was filed
within three months of the date the applicant was notified of
the abandoned status of the application (i.e., the mail
date of the notice of abandonment) or within one year of the date
of abandonment does not imply that the delay was "unintentional."
That is, an applicant who deliberately delays the filing of a
petition under § 1.137 until three months from the mail
date of the notice of abandonment (or based upon the one-year
anniversary of the date of abandonment) cannot appropriately make
the statement that "the delay was unintentional." This
time frame is provided simply as an indication as to when an applicant
should expect the Office to inquire further into the circumstances
of the abandonment of an application for which a petition under
§ 1.137(b) is filed, and in which case the applicant
may expedite consideration of such petition by providing information
as to when applicant was notified of the abandoned status of the
application, and the cause of the delay between the date of notification
and the date a petition under § 1.137 was filed.
Comment 65: One comment suggested that
the Office include in § 1.137 all of the basic interpretations
and guidelines by which the Office applies § 1.137.
The comment specifically suggested that § 1.137 include
the time periods (e.g., three months) by which the Office
measures the applicant's diligence in taking action to revive
the application and the differences between post-abandonment delay
in taking action to revive the application and any pre-abandonment
delay which may have resulted in the abandonment.
Response: The Office will adopt a § 1.137
that does not include filing period requirements, but requires
that the "entire" delay was "unavoidable"
(§ 1.137(a)) or "unintentional" (§ 1.137(b)).
The requirements for a petition to revive an abandoned application
or lapsed patent are set forth in § 1.137; additionally,
the Office will set forth its basic interpretations and guidelines
for application of § 1.137 (instructional information)
in the MPEP.
Section 1.181 provides the basis for
generic requests for relief by petition, and sets forth a two-month
time period therein for the timely filing of a petition (§ 1.181(f)).
While the three-month time frame employed by the Office during
the consideration petitions under § 1.137 exceeds the
two-month period in § 1.181(f) for the timely filing
of a petition, this three-month period is the most frequently
set period for reply by an applicant (see MPEP 710.02(b)).
While the Office considers the two-month period in § 1.181(f)
to be the appropriate period by which the timeliness of a petition
should be determined, it is certainly reasonable to expect that
any applicant desiring to restore an abandoned application to
pending status will file a petition under § 1.137 to
revive such abandoned application no later than three months after
notification of abandonment of the application. See In
re Kokaji, 1 USPQ2d 2005, 2006 (Comm'r Pat. 1986).
The "three-month" time frame
set forth in this Final Rule is a guideline as to when an applicant
can expect further inquiry by the Office (and, as such, should
attempt to provide the relevant information in the initial petition
to avoid delay), in that: (1) it is possible that an applicant
is incapable of filing a petition under § 1.137 within
three months of the date of notification of abandonment (e.g.,
pro se applicant incapacitated from date of notification
of abandonment until action taken to revive the application) rendering
the entire delay in filing the required reply from the due date
for the reply until the filing of a grantable petition unavoidable;
and (2) it is also possible that an applicant, by a deliberately
chosen course of action, delays the filing of a petition under
§ 1.137 until exactly three months after the date of
notification of abandonment to use this period as an extension
of time, in which case a statement that "the entire delay
in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to this paragraph
was unintentional" is not appropriate. To avoid substitution
of the three-month time frame for review by the Office for the
requirement for unavoidable or unintentional delay, the Office
will not amend § 1.137 to include this time frame.
Comment 66: One comment indicated that
the phrase "the delay was unintentional" is unclear.
The comment recited a specific example in which an applicant,
under final rejection, submits an amendment or other correspondence
which is believed by the applicant to place the application in
condition for allowance (and thus constitute a reply within the
meaning of § 1.113), and, as such, the applicant, in
a deliberate course of action/inaction, takes no further steps
to ensure the filing a reply within the meaning of § 1.113
(e.g., a notice of appeal) to the final rejection. The
comment suggested that § 1.137 is unclear as to whether
the delay in this situation, which may be deliberate or intentional
in the literal sense, would constitute an "unintentional"
delay within the meaning of § 1.137(b).
Response: The Office has amended § 1.137
to require that "the entire delay in filing the required
reply from the due date for the reply until the filing of a grantable
petition" was "unavoidable" (§ 1.137(a))
or "unintentional" (§ 1.137(b)). Thus, intentional
delays occurring prior to the due date for reply to avoid abandonment
do not preclude relief pursuant to § 1.137. Should
the delay in the example given extend past the extendable due
date for reply (under § 1.113) to the final rejection,
an appropriate statement of unintentional delay could be made
as the applicant did not intend to have the deadline for reply
under § 1.113 to the final rejection expire.
In addition, there is a distinction between:
(1) a delay resulting from an error in judgment as to whether
to permit an application to become abandoned (whether to prosecute
the application) or whether to seek or persist in seeking the
revival of the abandoned application; and (2) a delay resulting
from an error in judgment as to the steps necessary to continue
the prosecution delay in seeking revival of the application.
Where the abandonment and ensuing delay results from an error
in judgment as to whether to permit an application to become abandoned
(whether to prosecute the application) or whether to seek or persist
in seeking the revival of the abandoned application, the abandonment
of such application is considered a deliberately chosen course
of action, and the resulting delay cannot be considered "unintentional"
within the meaning of § 1.137(b). Where, however, an
error in judgment as to the steps necessary to continue prosecution
results in abandonment of the application, the abandonment of
such application is not necessarily considered a deliberately
chosen course of action, and the resulting delay may be considered
"unintentional" within the meaning of § 1.137(b).
However, §§ 1.116 and
1.135(b) are manifest that proceedings concerning an amendment
after final rejection will not operate to avoid abandonment of
the application in the absence of a timely and proper appeal.
Unless the applicant is informed in writing that the application
is allowed prior to the expiration of the period for reply to
the final Office action, it is the applicant's responsibility
to timely file a notice of appeal (and fee) to avoid the abandonment
of the application. The abandonment of an application subject
to a final Office action is not "unavoidable" within
the meaning of 35 U.S.C. 133 and § 1.137(a) in
the situation in which the applicant simply permits the maximum
extendable statutory period for reply to a final Office action
to expire while awaiting a notice of allowance or other action.
Comment 67: One comment opposed the
changes to § 1.137 on the bases that: (1) it permits
submarine patents, in that an applicant may permit an application
to become abandoned and wait to see whether the invention was
developed by other entities; and (2) the revival of a long-abandoned
application will have an adverse impact on the examiner, in that
the examiner who originally examined that application may no longer
be at the Office, or will have to reacquaint himself or herself
with the application.
Response: The change to § 1.137(b)
does not permit an applicant to obtain revival where either:
(1) the applicant deliberately permitted the application
to become abandoned; or (2) the applicant deliberately delayed
seeking revival to see whether the invention was developed by
other entities. It is well established that where applicant deliberately
permits an application to become abandoned, the abandonment of
such application is considered a deliberately chosen course of
action, and the resulting delay cannot be considered "unintentional"
within the meaning of § 1.137(b). See Application
of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately
chooses not to either seek or persist in seeking the revival of
an abandoned application, the resulting delay in seeking revival
of the application cannot be considered "unintentional"
within the meaning of § 1.137(b). The intentional abandonment
of an application, or an intentional delay in seeking either the
withdrawal of a holding of abandonment in or the revival of an
abandoned application, precludes a finding of unavoidable or unintentional
delay pursuant to § 1.137. See Maldague,
10 USPQ2d at 1478.
While it is possible for an applicant
to make a misleading statement that the delay was unintentional
to obtain revival of an abandoned application, the Office simply
must rely upon the candor and good faith of those prosecuting
patent applications (e.g., it is equally possible for a
party to fabricate evidence and obtain the revival of a long-abandoned
application on the basis of unavoidable delay). Any applicant
obtaining revival based upon a misleading statement that the delay
was unintentional may find the achievement short-lived as a result
of the question of intentional delay being raised by third parties
challenging any patent issuing from the application.
The revival of any long-abandoned application
will have an adverse impact on the examiner; however, long-abandoned
applications have been previously revived pursuant to § 1.137(a)
on the basis of unavoidable delay. See In re Lonardo,
17 USPQ2d 1455 (Comm'r Pat. 1990)(application revived after being
abandoned for more than sixteen years). Thus, this change to
§ 1.137(b) will not create a burden on examiners that
did not exist before, and could in fact reduce the burden as a
result of the requirement that in applications abandoned for excessive
periods of time would have to show that the entire delay was "unavoidable"
or "unintentional."
Comment 68: One comment suggested that
the two-year limitation in 35 U.S.C. 41(c) is a "good
compromise" in regard to a filing period for filing petitions
to revive based upon unintentional delay.
Response: The suggestion is not adopted.
Changing the one-year filing period requirement in § 1.137(b)
to a two-year filing period requirement would not substantially
change the problem caused by a filing period requirement, namely,
that it causes inequitable results in certain instances. In addition,
the inclusion of any filing period requirement in § 1.137(a)
or (b) will likely induce applicants, or their representatives,
to delay the filing of a petition under § 1.137 until
the end of such filing period. See Application of S,
8 USPQ2d at 1632. The Office has no discretion in regard to the
twenty-four month filing period requirement in 35 U.S.C.
41(c), but the presence of a twenty-four month filing period requirement
in 35 U.S.C. 41(c) does not imply that the Office must place
a twenty-four month filing period requirement into the rules implementing
35 U.S.C. 41(a)(7), which contains no filing period requirement.
Comment 69: One comment opposed the
changes to § 1.137 on the basis that the right to revive
an abandoned application should be limited due to the public's
right to practice a technology "that an applicant has abandoned."
Response: 35 U.S.C. 41(a)(7) authorizes
the Office to revive an abandoned application where the abandonment
was unintentional (or unavoidable, the epitome of unintentional),
but not where the abandonment was intentional. Section 1.137
does not authorize the revival of an abandoned application where
the applicant, by deliberate course of action, has abandoned an
application or delayed seeking its revival. Additionally, in
many instances the disclosure in a patent maturing from a revived
application would not have been disclosed and the technology therein
would not be public knowledge, but for the revival of the application.
Comment 70: One comment suggested the need for an intervening rights provision to protect innocent infringers.
Response: The issue of intervening rights
relates to the enforcement of patent rights, which does not directly
concern the conduct of proceedings in the Office. Thus, it is
unclear whether the Office is authorized under 35 U.S.C.
6 to promulgate regulations including an intervening rights provision.
Comment 71: Several comments suggested
that § 1.137(b) be amended to include the "promptly
filed" requirement of § 1.137(a).
Response: The suggestion is effectively
adopted, although via a different mechanism as explained
below. While there is considerable merit to the suggestion for
the inclusion of a "promptly filed" requirement in both
§ 1.137(a) and (b), the Office has eliminated the "promptly
filed" requirement from § 1.137(a) to avoid confusion
between "promptly filed" and "unavoidable delay."
The phrase "promptly filed" has been associated with
§ 1.137(a) and its requirement for "unavoidable"
delay, and, as such, the inclusion of a "promptly filed"
requirement in § 1.137(b) might cause confusion in regard
to the distinction between the circumstances that constitute unavoidable
delay and the circumstances that constitute unintentional delay.
Section 1.137(a)(3) and (b)(3) as adopted
requires that "the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable
petition" has been "unavoidable" (§ 1.137(a))
or "unintentional" (§ 1.137(b)) to clarify
the requirements for a petition under § 1.137(a) and
(b). As discussed supra, an applicant who fails to file
a petition under § 1.137(a) or (b) "promptly"
upon becoming notified, or otherwise becoming aware, of the abandonment
of the application will not be able to show that "the entire
delay in filing the required reply from the due date for the reply
until the filing of a grantable petition pursuant to [§ 1.137(a)]
was unavoidable," and will probably not even be able to make
an appropriate statement that "the entire delay in filing
the required reply from the due date for the reply until the filing
of a grantable petition pursuant to [§ 1.137(b)] was
unintentional." Obviously, any petition under § 1.137(a)
or (b) should be "promptly filed" upon discovery of
abandonment to avoid a question as to whether the filing of such
a petition was intentionally delayed.
Comment 72: One comment questioned how
a patent could lapse for failure to pay the issue fee, as a patent
does not issue unless the issue fee is paid.
Response: 35 U.S.C. 151 provides
that where an applicant timely submits the sum specified in the
Notice of Allowance as the issue fee, but a balance of the issue
fee remains outstanding (due to a fee increase), the patent will
lapse unless the balance of the issue fee is timely paid. See
Mills, 12 USPQ2d at 1848; see also Ex parte Crissy,
201 USPQ 689 (Bd. Pat. App. 1976).
Comment 73: One comment suggested that
§ 1.137(a)(1) and (b)(1) not require a continuing application
if the application became abandoned for failure to reply to a
non-final Office action.
Response: Section 1.137(a)(1) and (b)(1) each provide that a petition thereunder include:
The required reply, unless previously
filed. In a nonprovisional application abandoned for failure
to prosecute, the required reply may be met by the filing of a
continuing application. In an application or patent, abandoned
or lapsed for failure to pay the issue fee or any portion thereof,
the required reply must be the payment of the issue fee or any
outstanding balance thereof.
As discussed supra, there may
be circumstances under which the Office may require a continuing
application to meet this reply requirement. Nevertheless, in
a nonprovisional application abandoned for failure to prosecute,
a continuing application is generally a permissive (i.e.,
"may be met") reply, in that an applicant in a nonprovisional
application abandoned for failure to prosecute may file a reply
under § 1.111 to a non-final Office action or a reply
under § 1.113 (e.g., notice of appeal) to a final
Office action, or may simply file a continuing application as
the required reply. In an application or patent, abandoned or
lapsed for failure to pay any portion of the required issue fee,
the issue fee or any outstanding balance thereof is the mandatory
(i.e., "must be") reply. As the "continuing
application" option is limited to an abandoned nonprovisional
application, the reply in an abandoned provisional application
must be any outstanding reply to an Office requirement.
Comment 74: One comment suggested that
§ 1.137(c) be amended to take into account the provision
in 35 U.S.C. 154(c) that an application (other than a design
application) is entitled to a patent term of not less than twenty
years from its filing date, or if the application contains a specific
reference to an earlier filed application(s) under 35 U.S.C.
120, 121, or 365(c), the date twenty years from the filing date
of the earliest such application(s).
Response: The suggestion is not adopted.
The Office considers this situation to be applicable to a relatively
small class of applications, and, as such, does not deem it prudent
to introduce into § 1.137(c) the complexity necessary
to account for this situation. Applicants in this situation (e.g.,
instances in which an application filed prior to June 8,
1995, is to be revived solely for purposes of copendency with
an application filed on or after June 8, 1995) may file a
petition pursuant to § 1.183 requesting that the Office
waive the provisions of § 1.137(c) to the extent that
§ 1.137(c) requires a disclaimer of the period in excess
of the date twenty years from the filing date of the application,
or if the application contains a specific reference to an earlier
filed application(s) under 35 U.S.C. 120, 121, or 365(c),
the date twenty years from the filing date of the earliest such
application(s). The Office will refund the § 1.17(h)
petition fee if the § 1.183 petition is granted.
Comment 75: One comment suggested that the last paragraph of § 1.137 read:
Under no circumstance may a petition
to revive a provisional application be filed more than twelve
months after the filing date of the provisional application.
No application filed more than twelve months after the filing
date of a provisional application is entitled to a claim of priority
from the provisional [application], notwithstanding the copendency
of any petition to revive the provisional application.
Response: The suggestion is not adopted.
35 U.S.C. 111(b)(3)(C) authorizes the revival of an abandoned
application on the basis of unavoidable or unintentional delay.
35 U.S.C. 111(b)(5) provides that a "provisional application
shall be regarded as abandoned 12 months after the filing date
of such application and shall not be subject to revival thereafter."
35 U.S.C. 111(b) does not contain any limitation on the
filing date of a petition to revive an abandoned provisional application
(or the date by which such a petition must be granted), but only
a limitation as to the period of pendency of the provisional application.
Thus, § 1.137(e) as adopted provides that "[a]
provisional application . . . may be revived . . .
so as to be pending for a period of no longer than twelve months
from its filing date. Under no circumstances will a provisional
application be regarded as pending after twelve months from its
filing date."
Section 1.139:
Section 1.139 is removed and reserved and its subject matter
added to § 1.137.
No comments were received regarding the
proposed change to § 1.139.
Section 1.142:
Section 1.142 is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.142.
Section 1.144:
Section 1.144 is amended for clarification purposes.
No comments were received regarding the
proposed change to § 1.144.
Section 1.146:
Section 1.146 is amended for clarification purposes.
No comments were received regarding the
proposed change to § 1.146.
Section 1.152:
Section 1.152 is amended to place its former provisions into
paragraphs (a), (a)(1), and (a)(2) for clarification.
Section 1.152 is also amended to remove
the prohibition against color drawings and color photographs in
design applications. Section 1.152 is amended to permit the use
of color photographs and color drawings in design applications
subject to the petition requirements of § 1.84(a)(2)
inasmuch as color may be an integral element of the ornamental
design. While pen and ink drawings may be lined for color, a
clear showing of the configuration of the design may be obscured
by this drafting method. New technologies, such as holographic
designs, fireworks and laser light displays may not be accurately
disclosed without the use of color.
The term "article" of § 1.152(a)
is replaced by the term "design" as 35 U.S.C. 171
requires that the claim be directed to the "design for an
article" not the article, per se. Therefore,
to comply with the requirements of 35 U.S.C. 112, ¶1,
it is only necessary that the design as embodied in the article
be fully disclosed and not the article itself. The term "must"
has been replaced by the term "should" to allow for
latitude in the illustration of articles whose configuration may
be understood without surface shading. Clarification language
has been added to note that the use of solid black surfaces is
permitted for representation of the color black as well as color
contrast and that photographs and ink drawings must not be combined
as formal drawings in one application.
A new § 1.152(b) is added to
clarify Office practice concerning details disclosed in the ink
drawings, color drawings, or photographs deposited with the original
application papers. Specifically, § 1.152(b) provides
that any details disclosed in the ink or color drawings, or photographs
deposited with the original application papers constitutes an
integral part of the disclosed and claimed design, except as otherwise
provided in § 1.152(b). Section 1.152(b) further specifies
that this detail may include color or contrast, graphic or written
indicia, including identifying indicia of a proprietary nature
(e.g., a company logo), surface ornamentation on an article,
or any combination thereof. The "but not limited to"
phrase in § 1.152(b) clarifies that this list is exemplary,
not exhaustive.
Section 1.152(b)(1) provides that when
any detail shown in informal drawings or photographs does not
constitute an integral part of the disclosed and claimed design,
a specific disclaimer must appear in the original application
papers either in the specification or directly on the drawings
or photographs. This specific disclaimer in the original application
papers will provide antecedent basis for the omission of the disclaimed
detail(s) in later-filed drawings or photographs. That is, in
the absence of such a disclaimer, later-filed formal or informal
drawings not including any detail disclosed in the original drawings
will be considered to contain new matter, and will be treated
accordingly. See 35 U.S.C. 112, ¶1; § 1.121(a)(6).
Comment 76: One comment stated that
applicant may misunderstand the implications of submitting a design
drawing in color and suggested that § 1.152 should explain
and give notice of the consequences of submitting an initial color
drawing in design applications.
Response: The comment has been adopted.
Section 1.152(b)(2) provides that when
informal color drawings or photographs are deposited with the
original application papers without a disclaimer pursuant to § 1.152(b)(1),
formal color drawings or photographs, or a black and white drawing
lined to represent color, will be required.
Section 1.154:
The heading of § 1.154 is amended to read "[a]rrangement
of application elements" for consistency with §§ 1.77
and 1.163. Section 1.154 paragraph (a) is amended to clarify
that a voluntary submission (see comments under § 1.152
relating to substitution of "design" for "article")
may and should be made of "a brief description of the nature
and intended use of the article in which the design is embodied."
It is current practice for design examiners, in appropriate cases,
to inquire as to the nature and intended use of the article in
which a claimed design is embodied. The submission of such description
will allow for a more accurate initial classification, and aid
in providing a proper and complete search at the time of the first
action on the merits. In those instances where this feature description
is necessary to establish a clear understanding of the article
in which the design is embodied, provision of the feature description
would help in reducing pendency by eliminating the necessity for
time-consuming correspondence. Specifically, requests for information
prior to first action would be avoided. Absent an amendment requesting
deletion of the description it would be printed on any patent
that would issue.
No comments were received regarding the
proposed change to § 1.154.
Section 1.155:
Section 1.155 is amended to include only the language of former
§ 1.155(a). The subject matter of former paragraphs
(b) through (f) of § 1.155 were added to § 1.137.
No comments were received regarding the
proposed change to § 1.155.
Section 1.163:
The heading of § 1.163 is amended to read "[s]pecification
and arrangement of application elements" for consistency
with §§ 1.77 and 1.154. Section 1.163(b) is amended
to remove an unnecessary and outmoded reference to a "legible
carbon copy of the original" specification for plant applications.
No comments were received regarding the
proposed change to § 1.163.
Section 1.165:
The proposed amendment to § 1.165 to remove the reference
to the artistic and competent execution of plant patent drawings
is withdrawn.
Comment 77: One comment argued that
the language proposed to be deleted was actually relied upon by
examiners to obtain new and better illustrations.
Response: The comment was adopted to
the extent that the proposed change is withdrawn to allow for
further study of what language related to the type of plant drawings
should appear in § 1.165.
Section 1.167:
Section 1.167 is amended to include only the language of former
§ 1.167(a), in that paragraph (b) is removed as unnecessary
in view of § 1.132.
Comment 78: One comment questioned whether
§ 1.132 covers paragraph (b) of § 1.167, which
paragraph has been deleted.
Response: Paragraph (b) of § 1.167
provided for the submission of affidavits by qualified agricultural
or horticultural experts regarding the novelty and distinctiveness
of the variety of plant. Section 1.132 relates to affidavits
traversing grounds of rejection, and is recognized as the appropriate
rule under which an affidavit may be submitted which does not
fall within or under other specific rules. See MPEP 716.
Section 1.171:
Section 1.171 is amended to no longer require an order for a
title report in reissue applications as the requirement for a
certification on behalf of all the assignees under concomitantly
amended § 1.172(a) obviates the need for a title report
and fee therefor. Section 1.171 is also amended by deletion of
the requirement for an offer to surrender the patent, which offer
is seen to be redundant in view of § 1.178.
No adverse comments were received regarding
the proposed change to § 1.171.
Section 1.172:
Section 1.172 is amended to require that all assignees establish
their ownership interest in compliance with § 3.73(b).
The amendment as originally proposed repeated requirements found
in § 3.73(b) rather than incorporating § 3.73(b),
as assignees of a part interest are frequently involved in reissue
applications.
Comment 79: One comment noted that the
proposed amendment repeated requirements already found in § 3.73(b)
and was unnecessary.
Response: The comment was adopted, in
that § 1.172 is amended to simply reference § 3.73(b).
Section 3.73(b) is amended to replace a reference to an assignee
of the entire right, title and interest with a reference to an
assignee, so as to include assignees of a part interest.
Section 1.175:
Section 1.175 relating to the content of the reissue oath or
declaration (MPEP 1414), as well as §§ 1.48 and
1.324 relating to correction of inventorship in an application
and in a patent, respectively, are amended to remove the requirement
for a factual showing relating to a matter in which a lack of
deceptive intent must be established. A statement as to a lack
of deceptive intent is sufficient to meet the statutory requirement
under 35 U.S.C. 251 of a lack of deceptive intent relating
to the error(s) to be corrected by reissue, and a factual showing
of how the error(s) to be corrected by reissue arose or occurred
is not required. As the Office no longer investigates fraud and
inequitable conduct issues and a reissue applicant's statement
of a lack of deceptive intent is normally accepted on its face
(See MPEP 1448), the requirement in former § 1.175(a)(5)
that it be shown how the error(s) being relied upon arose or occurred
without deceptive intent on the part of the applicant appears
to be unduly burdensome upon applicants and the Office, and is
deleted. This applies to the initially identified error(s), under
paragraph (a), and any subsequently identified error(s) under
paragraph (b).
Comment 80: Although the elimination
of the requirement for a factual showing relating to how the errors
arose or occurred enjoyed overwhelming support, three comments
cited the need for continued investigation by the Office. One
comment, while agreeing that some relaxation of reissue oath or
declaration requirements are in order, stated that the Office
should not decline to investigate entirely or adopt a pro forma
requirement that can merely be incanted. Two comments stated
that it is hard to get the courts to review this issue and that
the courts and the public are at a disadvantage absent an explanation
of how the error occurred.
Response: Current Office practice is
to reject reissue applications only where there is "smoking
gun" evidence of deceptive intent, which will not be demonstrated
by the type of inquiry limited to a showing of how the error arose
or occurred without the ability to subpoena witnesses or evidence.
Accordingly, the burden presented on all reissue applicants based
on the mere collection of such information for every error is
not seen to be warranted.
Comment 81: One comment suggested that
a final declaration is not needed, and that, as an alternative,
counsel should be allowed to submit a statement based on information
and belief counsel is not aware of deceptive intent.
Response: 35 U.S.C. 251 requires
that an error have been made without deceptive intention to be
corrected via reissue. Accordingly, all errors being corrected
by reissue must have been made without deceptive intention, in
that an error made with deceptive intention cannot be bootstrapped
onto an error made without deceptive intention and corrected via
reissue. The parties with the best knowledge of the lack of deceptive
intention are the patentees and owners of the patent, not counsel
for the reissue application.
An initial reissue oath or declaration
filed pursuant to § 1.175(a) is limited to identification
of the cause(s) of the reissue, and stating generally that all
errors being corrected in the reissue application at the time
of filing of the oath or declaration arose without deceptive intent.
Paragraph (a)(1) requires the identification of at least one
error and only one error may be identified as the basis for reissue.
The current practice under § 1.175(a)(3) and (a)(5)
of specifically identifying all errors being corrected at the
time of filing the initial oath or declaration is not retained.
Although only one error need be identified to provide a basis
for reissue, where only one error among more than one is so identified,
applicant should carefully monitor that the error is retained
or submit a supplemental oath or declaration identifying another
error or errors.
Comment 82: One comment suggested that
since a reissued patent and a reexamined patent may also be reissued,
paragraph (a)(1) of § 1.175 may be clarified to substitute
for "original patent" "reissued," or "existing
patent" as what is wholly or partly inoperative or invalid.
Response: The effect of a reissue or
reexamination proceedings is to cause a substitution for the original
patent so that the reissued or reexamined patent becomes the original
patent.
Paragraph (b)(1) of § 1.175
requires a supplemental reissue oath or declaration for errors
corrected that were not covered by an earlier presented reissue
oath or declaration, such as the initial oath or declaration pursuant
to paragraph (a) of this section or one submitted subsequent thereto
(a supplemental oath or declaration under this paragraph), stating
generally that all errors being corrected, which are not covered
by an earlier presented oath or declaration pursuant to § 1.175(a)
and (b), arose without any deceptive intention on the part of
the applicant. A supplemental oath or declaration that refers
to all errors that are being corrected, including errors covered
by a reissue oath or declaration submitted pursuant to paragraph
(a) of this section, would be acceptable. The specific requirement
for a supplemental reissue oath or declaration to cover errors
sought to be corrected subsequent to the filing of an initial
reissue oath or declaration is not a new practice, but merely
recognition of a current requirement for a supplemental reissue
oath or declaration when additional errors are to be corrected.
However, the current practice of specifically identifying all
supplemental errors being corrected in a supplemental reissue
oath or declaration is not retained.
A supplemental oath or declaration under
paragraph (b)(1) must be submitted prior to allowance. The supplemental
oath or declaration may be submitted with any amendment prior
to allowance, paragraph (b)(1)(i), or in order to overcome a rejection
under 35 U.S.C. 251 made by the examiner where there are
errors sought to be corrected that are not covered by a previously
filed reissue oath or declaration, paragraph (b)(1)(ii). Any
such rejection by the examiner will include a statement that the
rejection may be overcome by submission of a supplemental oath
or declaration, which oath or declaration states that the errors
in issue arose without any deceptive intent on the part of the
applicant. An examiner ordinarily will be introducing a rejection
under 35 U.S.C. 251 based on the lack of a supplemental declaration
for the first time in the prosecution once the claims are determined
to be otherwise allowable. The introduction of a new ground of
rejection under 35 U.S.C. 251 will not prevent an action
from being made final, except first actions pursuant to § 1.113(c),
because of the combination of the following factors: (1) the
finding of the case in condition for allowance is the first opportunity
that the examiner has to make the rejection; (2) the rejection
is being made in response to an amendment of the application (to
deal with the errors in the patent); (3) all applicants are
on notice that this rejection will be made upon finding of the
case otherwise in condition for allowance where errors have been
corrected subsequent to the last oath or declaration filed in
the case, therefore, the rejection should have been expected by
applicant; and (4) the rejection will not prevent applicant
from exercising any rights as to curing the rejection, since applicant
need only submit the supplemental oath or declaration with the
above-described language, and it will be entered to cure the rejection
provided it raises no additional issue, such as an informality
or substantive reissue question (e.g., a previously omitted
claim for priority under 35 U.S.C. 119).
A supplemental oath or declaration under
paragraph (b) of this section would only be required for errors
sought to be corrected during prosecution of the reissue application.
Where an Office action contains only a rejection under 35 U.S.C.
251 and indicates that a supplemental oath or declaration under
this paragraph would overcome the rejection, applicants are encouraged
to authorize the payment of the issue fee at the time the supplemental
reissue oath or declaration is submitted in view of the clear
likelihood that the reissue application will be allowed on the
next Office action. Such authorization will reduce the delays
in the Office awaiting receipt of the issue fee. Where there
are no errors to be corrected over those already covered by an
oath or declaration submitted under paragraphs (a) and (b)(1)
of this section (e.g., the application is allowed on first
action), or where a supplemental oath or declaration has been
submitted prior to allowance and no further errors have been corrected,
a supplemental oath or declaration under this paragraph, or additional
supplemental oath or declaration under paragraph (b)(1), would
not be required.
Paragraph (b)(2) provides that for any
error sought to be corrected after allowance (e.g., under
§ 1.312), a supplemental oath or declaration must accompany
the requested correction stating that the error(s) to be corrected
arose without any deceptive intent on the part of the applicant.
The quotes around lack of deceptive intent,
currently found in § 1.175(a)(6), are removed as the
exact language is not required. The reference to § 1.56,
currently found in § 1.175(a)(7), is removed as unnecessary
in view of the reference to § 1.56 in § 1.63
that is also referred to by § 1.175(a). The stated
ability of applicant to file affidavits or declarations of others
and the ability of the examiner to require additional information,
currently found in § 1.175(b), is deleted as unnecessary
in view of 35 U.S.C. 131 and 35 U.S.C 132.
New paragraph (c) of § 1.175
has been rewritten to clarify its intent that a subsequently submitted
oath or declaration under this section need not identify any errors
other than what was identified in the original oath or declaration
provided at least one of the originally identified errors to be
corrected is retained to provide a basis for the reissue.
In new paragraph (d) of § 1.175
a reference to § 1.53(f) is inserted to clarify that
the initial oath or declaration under § 1.175(a) including
those requirements under § 1.63 need not be submitted
(with the specification, drawing and claims) in order to obtain
a filing date.
Section 1.176:
The adoption of a final change to § 1.176 is held in
abeyance pending further consideration by the Office of the decision
by the Federal Circuit in In re Graff, 111 F.3d 874, 42
USPQ2d 1471 (Fed. Cir. 1997). Graff involved two issues:
(1) whether it is permissible to have a continuation of
a reissue application when the reissue application has issued
as a reissue patent; and (2) whether broadened claims can
be presented more than two years after the original patent date
in a reissue application which was filed within two years but
did not include any broadened claims. While Graff is more
directly related to § 1.177 than § 1.176,
§§ 1.176 and 1.177 are sufficiently interrelated
that the Office considers it appropriate to hold the final changes
to both § 1.176 and § 1.177 in abeyance pending
further consideration by the Office of the decision in Graff.
Comment 83: A comment requested clarification
regarding how restriction, between claims added in a reissue application
and the original patent claims, by the examiner would be permitted
in § 1.176 while § 1.177 would prohibit multiple
reissue patents except among the distinct and separate parts of
the thing patented.
Response: The comment will receive further
consideration when a final change to § 1.176 is adopted.
Section 1.177:
Section 1.177 was proposed to be amended to discontinue the current
practice that copending reissue applications must be issued simultaneously
unless ordered otherwise by the Commissioner pursuant to petition.
As discussed supra, the adoption of a final change to
§ 1.177 is held in abeyance pending further consideration
by the Office of the decision in Graff.
Comment 84: One comment would limit
the granting of multiple reissue patents on different dates to
where a petition for the grant of multiple reissue patents has
been approved prior to the issuance of any reissue patent. Another
comment thought that only one petition fee should be charged notwithstanding
whether a petition in more than one reissue application is required.
Response: The comments will receive
further consideration when a final change to § 1.177
is adopted.
Section 1.181:
The proposed change to § 1.181 will not be made, see
comments relating to § 1.101.
Comment 85: One comment requested that
the material to be deleted from § 1.181, paragraphs
(d), (e), and (g) should be retained as they give fair warning
to all and the consequences of failure to pay a petition fee.
Response: The comment has been adopted.
Section 1.182:
Section 1.182 is amended by providing that a petition under the
section may be granted "subject to such other requirements
as may be imposed" by the Commissioner, language similar
to that appearing for petitions under § 1.183. The
proposal to remove the statement that a decision on a petition
thereunder will be communicated to interested parties in writing
is withdrawn.
Comment 86: One comment opposed the
proposal to remove the statement that a decision on a petition
under § 1.182 will be communicated to interested parties
in writing, arguing that it would not be appropriate for the Office
to decide a petition under § 1.182 without communicating
the decision to the interested parties in writing.
Response: The suggestion is adopted.
The Office did not propose to remove the statement that a decision
on a petition under § 1.182 will be communicated to
interested parties in writing because the Office intended to discontinue
providing written decisions on petitions under § 1.182
(or any other petition), but because it was considered unnecessary
to state as much in the rule itself. While the Office will communicate
the decision on any petition under § 1.182 to the interested
parties in writing, such decision may not always take the form
of a traditional decision on petition. For example, the grant
of a petition under § 1.182 to accept the omitted page(s)
or drawing(s) in a nonprovisional application and accord the date
of such submission as the application filing date will be indicated
by the issuance of a new filing receipt stating the filing date
accorded the application. See Notice entitled "Change
in Procedure Relating to an Application Filing Date" published
in the Federal Register at 61 FR 30041, 30043 (June 13,
1996), and in the Official Gazette at 1188 Off. Gaz.
Pat. Office 48, 50-51 (July 9, 1996).
Section 1.184: Section 1.184 is removed and reserved as representing internal instructions.
Comment 87: Comments suggested that
§ 1.184 not be deleted notwithstanding its internal
directions. See response to comment relating to § 1.101.
Section 1.184 relates to the refusal
of a subsequent Commissioner to reconsider a case once decided
by a previous Commissioner, except in accordance with principles
which govern the granting of new trials. As the Commissioner
is free to waive any requirement of the rules not required by
statute, the prohibition against reconsideration is ineffective.
Additionally, the deletion of the material does not necessarily
represent an intent to engage in reconsideration of matters previously
decided.
Section 1.191:
Section 1.191(a) is amended to permit every applicant, and every
owner of a patent under reexamination, any of whose claims have
been twice or finally (§ 1.113) rejected (rather than
"any of the claims of which have been twice rejected or given
a final rejection (§ 1.113)"), to file an appeal
to the Board of Patent Appeals and Interferences (Board) to better
track the language of 35 U.S.C. 134. Section 1.191(a) is
also amended to: (1) explicitly refer to a "notice
of appeal" to provide antecedent for such term in § 1.192;
(2) replace "response" with "reply" in accordance
with the change to § 1.111; and (3) refer to § 1.17(b)
for consistency with the change to § 1.17.
Comment 88: One comment argued that
the proposed change to § 1.191, limiting the "twice
rejected" requirement for appeal to a particular application,
was inconsistent with 35 U.S.C. 134, as indicated by the
Board in the unpublished decision Ex parte Lemoine, Appeal
No. 94-0216 (Bd. Pat. App. & Inter., December 27, 1994).
A second comment argued that § 1.191 should permit an
appeal based on one rejection in a prior application and one rejection
in a continuing application to avoid requiring an applicant to
file a pro forma reply to meet the requirement that
the particular application be twice rejected.
Response: The comments have been adopted
by elimination of the limitation to twice rejected being related
to a particular application. To avoid inconsistency between § 1.191
and 35 U.S.C. 134, § 1.191 as adopted tracks the
language of 35 U.S.C. 134, except that § 1.191
states "twice or finally (§ 1.113) rejected"
rather than "twice rejected." The patent statute and
rules of practice do not permit an application to be finally rejected
(even under first action final practice) under 35 U.S.C.
132, unless the applicant is one "whose claims have been
twice rejected" within the meaning of 35 U.S.C. 134.
Thus, the phrase "or finally (§ 1.113)" may
be viewed as redundant. Nevertheless, as applicants generally
delay appeal until final action (although Pub. L. 103-465 may
change this practice), and there has been some confusion as to
when 35 U.S.C. 134 and § 1.191 permit an applicant
to appeal a rejection, § 1.191(a) as adopted states
"twice or finally (§ 1.113) rejected."
Section 1.191(b) is amended to eliminate
the requirement for a notice of appeal to: (1) be signed; or
(2) identify the appealed claims. These two requirements have
been deleted as being redundant of the requirements of § 1.192
for an appeal brief, which is necessary to avoid dismissal of
the appeal. Section 1.33 requires that an appeal brief filed
in either an application (§ 1.33(b)) or a reexamination
proceeding (§ 1.33(c)) be signed. Thus, a signed appeal
brief under § 1.192 (which must be filed to avoid dismissal
of the appeal) will serve to, in effect, ratify any unsigned notice
of appeal under § 1.191. Likewise, the former requirement
of § 1.191(b) for an identification of the appealed
claims is unnecessary as § 1.192(c)(3) requires that
the appeal brief, inter alia, identify the "claims
appealed." While it is no longer specifically required by
§ 1.191(b), an applicant or patent owner should continue
to sign notice of appeals under § 1.191(b) (like other
papers) and to also identify the claims appealed. The change
to § 1.191(b), in effect, permits an appeal brief to
constitute an automatic "correction" of a notice of
appeal that is not signed or does not identify the appealed claims.
The failure to timely file an appeal
brief will result in dismissal of an appeal (§ 1.192(b)).
Thus, the failure to timely file an appeal brief (signed in compliance
with § 1.33(b) or (c)) after the filing of an unsigned
notice of appeal will result in dismissal of the appeal as of
the expiration date (including any extensions of time actually
obtained) for filing such appeal brief. It will not result in
treatment of the application or patent under reexamination as
if the notice of appeal had never been filed. This distinction
is significant in an application containing allowed claims, in
that dismissal of an appeal results in cancellation of the rejected
claims and allowance of the application, not abandonment of the
application (which would have occurred if the notice of appeal
had never been filed).
The Office has eliminated the requirements
for a notice of appeal to be signed and to identify the appealed
claims to avoid the delay and expense to the applicant and the
Office that is involved in treating a defective notice of appeal.
These changes were not made to encourage the filing of unsigned
notices of appeal or notices of appeal that do not identify the
claims being appealed; rather, a notice of appeal should be signed
and identify the claims appealed. As the change to § 1.191(b)
does not affect other papers submitted with a notice of appeal
(e.g., an amendment under § 1.116) or other actions
contained within the notice of appeal (e.g., an authorization
to charge fees to a deposit account), the failure to sign a notice
of appeal (or accompanying papers) may have adverse effects notwithstanding
the change to § 1.191(b). For example, an unsigned
notice of appeal filed with an authorization (unsigned) to charge
the appeal fee to a deposit account as payment of the notice of
appeal fee (§ 1.17(b)) will be unacceptable as lacking
the appeal fee, as § 1.191(b) applies to the notice
of appeal, but not to an authorization to charge a deposit account
that happens to be included in the notice of appeal.
Section 1.192:
Section 1.192(a) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111,
and to refer to § 1.17(c) for consistency with the change
to § 1.17.
Comment 89: One comment suggested that
the appeal process could be improved by the imposition of a reasonable
page limit on briefs.
Response: The suggestion will be reviewed
for further consideration.
Section 1.193:
Section 1.193, as well as §§ 1.194, 1.196, and
1.197, are amended to change "the appellant" to "appellant"
for consistency. Section 1.193 is also amended by revision of
paragraph (a) into paragraphs (a)(1) and (a)(2) and revision of
paragraph (b) into paragraphs (b)(1) and (b)(2). Paragraph (a)(1)
retains the subject matter of current paragraph (a), except that
the phrase "and a petition from such decision may be taken
to the Commissioner as provided in § 1.181" is
deleted as superfluous. Section 1.181(a), by its terms, authorizes
a petition from any action or requirement of an examiner in the
ex parte prosecution of an application which is not subject
to appeal.
Section 1.193(a)(2) specifically prohibits
the inclusion of a new ground of rejection in an examiner's answer,
but also expressly provides that when (1) an amendment under
§ 1.116 proposes to add or amend one or more claims,
(2) appellant was advised (in an advisory action) that the
amendment under § 1.116 would be entered for purposes
of appeal, and (3) the advisory action indicates which individual
rejection(s) set forth in the action from which the appeal was
taken (e.g., the final rejection) would be used to reject
the added or amended claim(s), then (1) the appeal brief
must address the rejection(s) of the claim(s) added or amended
by the amendment under § 1.116 as indicated in the advisory
action, and (2) the examiner's answer may include the rejection(s)
of the claim(s) added or amended by the amendment under § 1.116
as indicated in the advisory action. This provision of § 1.193(a)(2)
is intended for those situations in which a rejection is stated
(i.e., applied to some claim) in the final Office action,
but due to an amendment under § 1.116 (after final)
such rejection is now applicable to a claim that was added or
amended under § 1.116. For example, when an amendment
under § 1.116 cancels a claim (the "canceled claim")
and incorporates its limitations into the claim upon which it
depends or rewrites the claim as a new independent claim (the
"appealed claim"), the appealed claim has become the
canceled claim since it now contains the limitations of the canceled
claim (i.e., the only difference between the appealed claim
and the canceled claim is the claim number). In such situations,
the appellant has been given a fair opportunity to react to the
ground of rejection (albeit to a claim having a different claim
number). Thus, the Office does not consider such a rejection
to constitute a "new ground of rejection" within the
meaning of § 1.193(b). Nevertheless, § 1.193(b)(2)
expressly permits such a rejection on appeal and further provides
that "[t]he filing of an amendment under § 1.116
which is entered for purposes of appeal represents appellant's
consent that when so advised any appeal proceed on those claim(s)
added or amended by the amendment under § 1.116 subject
to any rejection set forth in the action from which the appeal
was taken" to eliminate controversy as to the rejection(s)
to which claim(s) added or amended under § 1.116 may
be subject on appeal.
The phrase "individual rejections"
in § 1.193(a)(2) addresses the situation in which claim
2 (which depends upon claim 1) was rejected under 35 U.S.C.
103 on the basis of A in view of B and claim 3 (which depends
upon claim 1) was rejected under 35 U.S.C. 103 on the basis
of A in view of C, but no claim was rejected under 35 U.S.C.
103 on the basis of A in view of B and C, and an amendment under
§ 1.116 proposes to combine the limitations of claims
2 and 3 together into new claim 4. In this situation, the action
from which the appeal is taken sets forth no rejection on the
basis of A in view of B and C, and, as such, § 1.193(a)(2)
does not authorize the inclusion of rejection of newly proposed
claim 4 under 35 U.S.C. 103 on the basis of A in view of
B and C in the examiner's answer. Of course, as a claim including
the limitations of both claim 2 and claim 3 is a newly proposed
claim in the application, such an amendment under § 1.116
may properly be refused entry as raising new issues. Conversely,
that § 1.193(a)(2) would authorize the rejection in
an examiner's answer of a claim sought to be added or amended
in an amendment under § 1.116 has no effect on whether
the amendment under § 1.116 is entitled to entry. The
provisions of § 1.116 control whether an amendment under
§ 1.116 is entitled to entry; the provisions of § 1.193(a)(2)
control the rejections to which a claim added or amended in an
amendment under § 1.116 may be subject in an examiner's
answer.
While § 1.193(a) generally
prohibits a new ground of rejection in an examiner's answer, it
does not prohibit the examiner from expanding upon or varying
the rationale for a ground of rejection set forth in the action
being appealed. That is, the parenthetical definition of "new
ground of rejection" in MPEP 1208.01 as including an "other
reason for rejection" of the appealed claims means another
basis for rejection of the appealed claims, and not simply another
argument, rationale, or reason submitted in support of a rejection
previously of record.
There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425,
426-27 (CCPA 1976). Where the statutory
basis for the rejection remains the same, and the evidence relied
upon in support of the rejection remains the same, a change in
the discussion of or rationale for supporting the rejection does
not constitute a new ground of rejection. Id. at 1303,
190 USPQ at 427 (reliance upon fewer references in affirming a
rejection under 35 U.S.C. 103 does not constitute a new ground
of rejection). Where the examiner simply changes (or adds) a
rationale for supporting a rejection, but relies upon the same
statutory basis and evidence in support of the rejection, there
is no new ground of rejection.
In any event, an allegation that an examiner's
answer contains an impermissible new ground of rejection is waived
if not timely (§ 1.181(f)) raised by way of a petition
under § 1.181(a).
Section 1.193(b)(1) provides appellant
with a right to file a reply brief in reply to an examiner's answer
which is not dependent upon a new point of argument being present
in the examiner's answer. The former practice of permitting reply
briefs based solely on a finding of a new point of argument, as
set forth in former paragraph (b), is eliminated thereby preventing
present controversies as to whether a new point of argument has
been made by the primary examiner. Appellant would be assured
of having the last submission prior to review by the Board. Upon
receipt of a reply brief, the examiner would either acknowledge
its receipt and entry or reopen prosecution to respond to any
new issues raised in the reply brief. Should the Board desire
to remand the appeal to the primary examiner for comment on the
latest submission by appellant or to clarify an examiner's answer
(MPEP 1211, 1211.01, and 1212), appellant would be entitled to
submit a reply brief in reply to the answer by the examiner to
the Board's inquiry, which answer would be by way of a supplemental
examiner's answer.
Thus, § 1.193(a)(2) does not
permit a new ground of rejection in an examiner's answer, and
§ 1.193(b)(1) does not, in the absence of a remand by
the Board, permit an answer (other than a mere acknowledgment)
to a timely filed reply brief. Section 1.193 requires the examiner
to reopen prosecution to either: (1) enter a new ground of
rejection; or (2) provide a substantive answer to a reply brief.
Section 1.193(b)(2) provides that if
appellant desires that the appeal process be reinstated in reply
to the examiner's reopening of prosecution under § 1.193(b)(1),
appellant would be able to file a request to reinstate the appeal
and a supplemental appeal brief as an alternative to filing a
reply (under §§ 1.111 or 1.113, as appropriate)
to the Office action. Amendments, affidavits or other new evidence,
however, would not be entered if submitted with a request to reinstate
the appeal. Like a reply brief, a supplemental appeal brief submitted
pursuant to § 1.193(b)(2)(ii) need not reiterate the
contentions set forth in a previously filed appeal brief (or reply
brief), but need only set forth appellant's contention with regard
to the new ground of rejection(s) raised in the Office action
that reopened prosecution. The supplemental appeal brief will
automatically incorporate all issues and arguments raised in the
previously filed appeal brief (or reply brief), unless appellant
indicates otherwise.
The intent of the change to § 1.193(b)
is to give appellant (rather than the examiner) the option to
continue the appeal if desired (particularly under Pub. L. 103-465),
or to continue prosecution before the examiner in the face of
a new ground of rejection. Should a supplemental appeal brief
be elected as the reply to the examiner reopening prosecution
based on a new ground of rejection under § 1.193(b)(1),
the examiner may under § 1.193(a)(1) issue an examiner's
answer. Where an appeal is reinstated pursuant to § 1.193(b)(2)(ii),
no additional appeal fee is currently required.
Comment 90: A number of comments favored
permitting appellants to file a reply brief as a matter of right.
One comment argued that the Board, rather than the examiner,
should determine whether the appellant should be permitted to
file a reply brief.
Response: Section 1.193 as adopted permits
an appellant to file a reply brief as a matter of right. This
change eliminates the authority of an examiner to refuse entry
of a timely filed reply brief.
Comment 91: One comment suggested that
a reasonable page limit could be placed on reply briefs.
Response: The comment will be studied.
Comment 92: A number of comments opposed
the proposed change to require a substitute appeal brief, rather
than a reply brief. These comments argued that requiring an entirely
new brief reiterating previously submitted arguments, rather than
a mere reply to the examiner's answer, would result in a less
readable and coherent record.
Response: Section 1.193 as adopted permits
a reply brief (rather than a substitute appeal brief) where the
appellant desires to reply to an examiner's answer or and a supplemental
appeal brief where the appellant requests reinstatement of an
appeal. Contentions (or information) set forth in a previously
filed appeal (or reply brief) need not be reiterated in a reply
brief or supplemental appeal brief.
Comment 93: A number of comments favored
prohibiting a new ground of rejection in an examiner's answer.
Response: Section 1.193 as adopted prohibits
a new ground of rejection in an examiner's answer, except under
the limited circumstance specifically provided for in § 1.193(a)(2).
Comment 94: Two comments suggested that
if the examiner reopens prosecution after an appeal brief has
been filed, §§ 1.193 or 1.113 should be amended
to state that the action issued by the examiner cannot be made
final.
Response: The finality of an Office
action is determined under MPEP 706.07(a), which states that "any
second or subsequent actions on the merits shall be final, except
where the examiner introduces a new ground of rejection not necessitated
by amendment of the application by applicant." Whether the
action subsequent to the reopening of prosecution may be made
final will be determined solely by whether such action includes
a new ground of rejection not necessitated by amendment of the
application by the applicant. Thus, where an amendment under
§ 1.116 entered as a result of reopening of prosecution
necessitates a new ground of rejection, the action immediately
subsequent to the reopening of prosecution may be made final.
See MPEP 706.07(a) and 1208.01.
Comment 95: One comment would go further
in permitting applicant to reinstate an appeal as a reply to the
examiner reopening prosecution by permitting amendments, affidavits
and other evidence to address the new ground of rejection. Another
comment desired the ability to reply directly to the Board for
any new ground of rejection raised by the Board.
Response: The comments amount to having
the Board conduct the prosecution of the application and not act
as an appellate review. Amended claims, affidavits and other
evidence should be seen by the examiner first for a determination
as to whether a new search is required, to conduct any newly required
search, and also to evaluate the newly submitted and any newly
discovered material at the examination level. See comments to
§ 1.196(d).
Comment 96: One comment would further
amend § 1.193 to waive any subsequent appeal notice
fee and appeal brief fee, and start the time period for extension
of patent from the time of first appeal in that if the examiner
did his or her duty properly there would be no need to reopen
prosecution.
Response: Under current practice, a
new fee is due for each notice of appeal, each brief, and each
request for an oral hearing, so long as a decision on the merits
by the Board resulted from the prior notice of appeal, brief,
and request for an oral hearing. Thus, when an examiner reopens
prosecution after appeal but prior to a decision by the Board
on the appeal, the fee for the notice of appeal, brief, and request
for an oral hearing will apply to a later appeal. The change
to § 1.193 in this Final Rule is not germane to patent
term extension under 35 U.S.C. 154(b) and § 1.701.
In any event, that prosecution is reopened
subsequent to the filing of an appeal brief is not necessarily
a concession that the rejection of the appealed claims was in
error. It is often the case that prosecution is reopened subsequent
to the filing of an appeal brief in the situation in which the
examiner considers the rejection of the appealed claims to be
appropriate (and thus the appeal to be without merit), but discovers
a better basis for rejecting the claims at issue (e.g.,
even better prior art references). To characterize an examiner,
who decides to reopen prosecution to avoid wasting the Board's
resources (and the appellant's time) with a rejection that is
not the best possible rejection of the appealed claims, as an
examiner who is not properly performing his or her duties, would
be non-sensical.
Comment 97: One comment opposed prohibiting
a new ground of rejection in an examiner's answer. The comment
argued that this change will result in unnecessary delays in prosecution.
Response: The proposal to prohibit a
new ground of rejection in an examiner's answer otherwise received
overwhelming support. Under Pub. L. 103-465, any delay in prosecution
resulting from the reopening of prosecution is to the detriment
of the applicant. Thus, it is considered appropriate to give
the applicant the choice of whether to prosecute the application
before the examiner or reinstate the appeal.
Section 1.194:
Section 1.194(b) is amended to provide that a request for an
oral hearing must be filed in a separate paper, and to refer to
§ 1.17(d) for consistency with the change to § 1.17.
Section 1.194(c) is amended to provide
that appellant will be notified when a requested oral hearing
is unnecessary (e.g., a remand is required).
Comment 98: One comment argued that
§ 1.194 leaves an open statement as to when the Board
may decide that an oral hearing is not necessary, in that this
section does not limit considering an oral hearing not necessary
to when the application has been remanded to the examiner.
Response: The situation in which an
application has been remanded to the examiner was simply an exemplary
situation of special circumstances in which the Board may determine
that an oral hearing is not necessary. Section 1.194 was not
meant to limit the discretion of the Board to determine that an
oral hearing is not necessary to those situations when the application
has been remanded to the examiner.
Section 1.196:
Section 1.196 paragraphs (b) and (d) are combined by amending
paragraph § 1.196(b) to specifically provide therein
for a new ground of rejection for both appealed claims and for
allowed claims present in an application containing claims that
have been appealed rather than the current practice under § 1.196(d)
of recommending a rejection of allowed claims that is binding
on the examiner. The effect of an explicit rejection of an allowed
claim by the Board is not seen to differ from a recommendation
of a rejection and would serve to advance the prosecution of the
application by having the rejection made at an earlier date by
the Board rather than waiting for the application to be forwarded
and acted upon by the examiner. The former practice that the
examiner is not bound by the rejection should appellant elect
to proceed under § 1.196(b)(1) and an amendment or showing
of facts not previously of record in the opinion of the examiner
overcomes the new ground of rejection, is not changed. A period
of two months is now explicitly set forth for a reply to a decision
by the Board containing a new ground of rejection pursuant to
§ 1.196(b), which would alter the one month previously
set forth for replies to recommended rejections of previously
allowed claims. See MPEP 1214.01. Extensions of time
continue to be governed by § 1.196(f) and § 1.136(b)
(and not by § 1.136(a)).
The last sentence of § 1.196(b)(2)
is amended to clarify that appellants do not have to both appeal
and file a request for rehearing where only a rehearing of a portion
of the decision is sought. A decision on a request for rehearing
will incorporate the earlier decision for purposes of appeal of
the earlier decision in situations in which only a partial request
for rehearing has been filed. Additionally, it is clarified that
decisions on rehearing are final unless noted otherwise in the
decision in that under some circumstances it may not be appropriate
to make a decision on rehearing final as is currently automatically
provided for. Section 1.196(b) is also amended to clarify that
the appellant must exercise one of the two options with respect
to the new ground of rejection under § 1.196(b) to avoid
termination of proceedings (§ 1.197(c)) as to the rejected
claims.
Section 1.196(b)(2) (and §§ 1.197(b)
and 1.304(a)(1)) are amended to change the phrase "request
for reconsideration" to "request for rehearing"
for consistency with 35 U.S.C. 7(b). See In re
Alappat, 33 F.3d 1526, 1533, 31 USPQ2d 1545, 1548 (Fed. Cir.
1994)(en banc)(noting "imprecise regulation drafting"
in regard to the phrase "request for reconsideration"
in § 1.197).
Section 1.196(d) is amended to provide
the Board with explicit authority to have an appellant clarify
the record in addition to what is already provided by way of remand
to the examiner (MPEP 1211), and appellant's compliance with the
requirements of an appeal brief (§ 1.192(d)). Section
1.196(d) specifically provides that an appellant may be required
to address any matter that is deemed appropriate for a reasoned
decision on the pending appeal, which may include: (1) the
applicability of particular case law that has not been previously
identified as relevant to an issue in the appeal; (2) the
applicability of prior art that has not been made of record; or
(3) the availability of particular test data that would be
persuasive in rebutting a ground of rejection. Section 1.196(d)
also provides that appellant would be given a non-extendable time
period (not a time limit) within which to reply to any requirement
under § 1.196(d).
Comment 99: One comment suggested that
§ 1.196(b) would appear to authorize the Board to reverse
a restriction requirement, as § 1.196(b) authorizes
the Board to reject any pending claim. The comment suggested
that § 1.196(b) authorize the Board to reject any examined
(rather than pending) claim.
Response: Section 1.196(b) authorizes, but does not require, the Board to reject claims not involved in the appeal. The Board has held that a restriction requirement is not an adverse decision within the meaning of 35 U.S.C. 7 and 134 subject to appeal, and the CCPA and Federal Circuit have supported this position. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971); see also In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990). Thus, concerns that the Board will use the provisions of § 1.196(b) to review restriction requirements are misguided.
Comment 100: Several comments opposed
the change to § 1.196(d) on the basis that it places
the Board in the position of acting as an examiner in the first
instance.
Response: Section 1.196(d) authorizes,
but does not require, the Board to require an appellant to clarify
the record without remanding the application to the examiner.
This change will authorize the Board to obtain clarification
directly from the appellant in those situations in which the Board
considers a remand to or further action by the examiner unnecessary.
Where the Board considers action by an examiner in the first
instance to be necessary or desirable, the Board retains the authority
to remand the application to the examiner for such action. Additionally,
after reply to an inquiry under § 1.196(d) (e.g.,
does there exist test data that would be persuasive in rebutting
a particular ground of rejection), a remand to the examiner may
be deemed to be appropriate (e.g., to evaluate test data
received in reply to an inquiry).
Section 1.197:
Section 1.197(b) is amended to eliminate its use of the passive
voice. Section 1.197(b) is also amended to change "reconsideration
or modification" to "rehearing" for consistency
with 35 U.S.C. 7(b). For consistency with the two-month
period set forth in § 1.196(b), § 1.197(b)
is also amended to provide a two-month period (rather than a one-month
period) within which an appellant may file the single request
for rehearing permitted by § 1.197(b).
No comments were received regarding the
proposed change to § 1.197.
Section 1.291:
Section 1.291(c) is amended by removing the blanket limitation
of one protest per protestor and would provide for a second or
subsequent submission in the form of additional prior art. Mere
argument that is later submitted by an initial protestor would
continue not to be entered and would be returned unless it is
shown that the argument relates to a new issue that could not
have been earlier raised. See MPEP 1901.07(b). Although
later submitted prior art would be made of record by a previous
protestor without a showing that it relates to a new issue, it
should be noted that entry of later submitted prior art in the
file record does not assure its consideration by the examiner
if submitted late in the examination process. Accordingly, initial
protests should be as complete as possible when first filed.
In view of the amendment to § 1.291(a)
in the "Miscellaneous Changes in Patent Practice" Final
Rule (discussed supra) to require that a protest be filed
prior to the mailing of a notice of allowance under § 1.311
to be considered timely (§ 1.291(a)(1)), the restriction
of protests by number is deemed unnecessary and is recognized
as ineffective, in that a party may effectively file multiple
protests by submitting each protest through a third party agent
acting on behalf of such party.
Comment 101: One comment suggested that
permitting more than one submission by a particular party relating
to prior art poses a risk that a third party may sequentially
submit individual pieces of prior art as a delaying factor.
Response: Any delay in submission of
a piece of prior art by a third party poses the risk that the
later submitted prior art will not be considered, particularly
if it is seen as part of a pattern. The review of any piece of
prior art, assuming it is not part of a large package, to determine
its value is not seen to result in any delay in issuing an Office
action. It is recognized that some delay may result where a piece
of prior art in a second submission by a third party is utilized
in a rejection that could have been made sooner if that art had
been submitted earlier; however, on balance the Office would prefer
to delay prosecution of an application and consider and apply
a newly submitted reference not found by the examiner rather than
issue an invalid claim.
Section 1.291(c) is also amended to:
(1) delete the sentence "[t]he Office may communicate
with the applicant regarding any protest and may require the applicant
to reply to specific questions raised by the protest" as
superfluous as the Office may communicate with an applicant regarding
any matter, and require the applicant to reply to specific questions,
concerning the application; (2) replace "respond"
with "reply" in accordance with the change to § 1.111.
Section 1.293:
Section 1.293 paragraph (c) is amended to replace the reference
to § 1.106(e) with a reference to § 1.104(c)(5),
to reflect a transfer of material.
Section 1.294:
Section 1.294 paragraph (b) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.294.
Section 1.304: Section 1.304(a)(1) is amended to replace
"consideration" by "reconsideration"
to correct a typographical error.
No comments were received regarding the proposed change to § 1.304.
Section 1.312:
Section 1.312(b) is amended to have a reference to § 1.175(b)
added in view of the change in § 1.175(b) referencing
§ 1.312(b).
No comments were received regarding the
proposed change to § 1.312.
Section 1.313:
Section 1.313 will not be amended with the addition of paragraph
(c) informing applicants that unless written notification is received
that the application has been withdrawn from issue at least two
weeks prior to the projected date of issue, applicants should
expect that the application will issue as a patent. The matter
will be further studied. It should be noted, however, that once
an application has issued, the Office is without authority to
grant a request under § 1.313 notwithstanding submission
of the request prior to issuance of the patent.
Section 1.316:
Section 1.316 is amended to include only the language of former
§ 1.316(a). The subject matter of former paragraphs
(b) through (f) of § 1.316 were added to § 1.137.
No comments were received regarding the
proposed change to § 1.316.
Section 1.317:
Section 1.317 is amended to include only the language of former
§ 1.317(a). The subject matter of former paragraphs
(b), (c), (e) and (f) of § 1.317 were added to § 1.137.
No comments were received regarding the
proposed change to § 1.317.
Section 1.318:
Section 1.318 is removed and reserved as being an internal Office
instruction.
See comments relating to § 1.101.
Section 1.324:
Section 1.324 is amended by creating paragraphs (a) and (b).
The requirement for factual showings to establish a lack of deceptive
intent is deleted, with a statement to that effect being sufficient,
paragraph (a).
Office practice is to require the same type and character of proof of facts as in petitions under § 1.48(a). See MPEP 1481. Unlike former § 1.48, former § 1.324 contained no diligence requirement. See Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1574, 31 USPQ2d 1290, 1293 (Fed. Cir. 1994). Section 1.324 (and § 1.48) as adopted contain no diligence requirement, for the reasons set forth in the discussion of § 1.48.
Section 1.324(b)(1) is amended to explicitly
require a statement relating to the lack of deceptive intent only
from each person who is being added or deleted as an inventor,
as opposed to the current practice of requiring a statement from
each original named inventor and any inventor to be added.
The current requirements for an oath
or declaration under § 1.63 by each actual inventor
is replaced, paragraph (b)(2) of § 1.324, by a statement
from the current named inventors who have not submitted a statement
under paragraph (b)(1) of § 1.324 either agreeing to
the change of inventorship or stating that they have no disagreement
in regard to the requested change. Not every original named inventor
would necessarily have knowledge of each of the contributions
of the other inventors and/or how the inventorship error occurred,
in which case their lack of disagreement to the requested change
would be sufficient.
Paragraph (b)(3) of § 1.324
requires the written consent of the assignees of all parties who
submitted a statement under paragraph (b)(1) and (b)(2) of this
section similar to the current practice of consents by the assignees
of all the existing patentees. A clarification reference to § 3.73(b)
is added.
Paragraph (b)(4) of § 1.324
states the requirement for a petition fee as set forth in § 1.20(b).
No adverse comments were received regarding
the proposed change to § 1.324.
Section 1.325:
The proposed removal of § 1.325 is withdrawn. See
comments relating to § 1.101.
Section 1.351:
The proposed removal of § 1.351 is withdrawn. See
comments relating to § 1.101.
Section 1.352:
Section 1.352 is removed and reserved as unnecessary as an internal
instruction.
See comments relating to § 1.101.
Section 1.366:
Section 1.366(b) is amended to remove the term "certificate"
as unnecessary. Section 1.366(c) is amended for clarity by changing
"serial number" to "application number," which
consists of the serial number and the series code (e.g.,
"08/").
Paragraph (d) removes the request for
the information concerning the issue date of the original patent
and filing date of the application for the original patent as
unnecessary. The term "serial" is also removed from
paragraph (d).
No comments were received regarding the
proposed change to § 1.366.
Section 1.377:
Section 1.377(c) is amended to remove the requirement that the
petition be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18.
No comments were received regarding the
proposed change to § 1.377.
Section 1.378:
Section 1.378(d) is amended to remove the requirement that the
statement be verified in accordance with the change to §§ 1.4(d)(2)
and 10.18.
No comments were received regarding the
proposed change to § 1.378.
Section 1.425:
Section 1.425 is amended by removing paragraph (a) and its requirement
for proof of the pertinent facts relating to the lack of cooperation
or unavailability of the inventor for which status is sought.
In addition, § 1.425 is further amended by deleting
paragraph (b) and its requirements for proof of the pertinent
facts, presence of a sufficient proprietary interest, and a showing
that such action is necessary to preserve the rights of the parties
or to prevent irreparable damage. Additionally, the requirement
that the last known address of the non-signing inventor be stated
has been removed. The current requirements are thought to be
unnecessary in view of the need for submission of the same information
in a petition under § 1.47 during the national stage.
The paragraph added parallels the requirement in PCT Rule 4.15
for a statement explaining to the satisfaction of the Commissioner
the lack of the signature concerned for submission of the international
application.
No comments were received regarding the
proposed change to § 1.425.
Section 1.484:
Section 1.484 paragraphs (d) through (f) are amended by replacement
of "response" and "respond" with "reply"
in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.484.
Section 1.485:
Section 1.485(a) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.485.
Section 1.488:
Section 1.488(b)(3) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.488.
Section 1.492:
Section 1.492 is amended to add new paragraph (g). See the amendment
to § 1.16 adding a new paragraph (m).
No comments were received regarding the
proposed change to § 1.492.
Section 1.494:
Section 1.494(c) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.494.
Section 1.495:
Section 1.495(c) is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.495.
Section 1.510:
Section 1.510(e) is amended to replace a reference to § 1.121(f)
with a reference to § 1.530(d), which sets forth the
requirements for an amendment in a reexamination proceeding.
No comments were received regarding the
proposed change to § 1.510.
Section 1.530:
The title has been changed by the addition of a semicolon to
clarify that the section is intended to cover not only amendments
submitted with the statement, but also amendments submitted at
any other stage of the reexamination proceedings.
Section 1.530(d) is replaced by paragraphs
(d)(1) through (d)(7) removing the reference to § 1.121(f)
in accordance with the deletion of § 1.121(f). The
manner of proposing amendments in reexamination proceedings is
governed by § 1.530(d)(1) through (d)(6). Paragraph
(d)(1) is directed to the manner of proposing amendments in the
specification, other than in the claims. Paragraph (d)(1)(i)
requires that amendments including deletions be made by submission
of a copy of one or more newly added or rewritten paragraphs with
markings, except that an entire paragraph may be deleted by a
statement deleting the paragraph without presentation of the text
of the paragraph. Paragraph (d)(1)(ii) requires indication of
the precise point in the specification where the paragraph which
is being amended is located. When a change in one sentence, paragraph,
or page results in only format changes to other pages (e.g.,
shifting of non-amended text to subsequent pages) not otherwise
being amended, such format changes are not to be submitted. Paragraph
(d)(1)(iii) defines the markings set forth in paragraph (d)(1)(ii).
Proposed paragraph (d)(1)(iii), relating to a requirement for
submission of all amendments be presented when any amendment to
the specification is made, was not implemented.
Paragraph (d)(2) of § 1.530
relates to the manner of proposing amendments to the claims in
reexamination proceedings. Paragraph (d)(2)(i)(A) of § 1.530
requires that a proposed amendment include the entire text of
each patent claim which is proposed to be amended by the current
amendment and each proposed new claim being added by the current
amendment. Additionally, provision has been made for the cancellation
of a patent claim or of a previously proposed new claim by a direction
to cancel without the need for marking by brackets. Paragraph
(d)(2)(i)(B) prohibits the renumbering of the patent claims and
requires that any proposed new claims follow the number of the
highest numbered patent claim. Paragraph (d)(2)(i)(C) identifies
the type of markings required by paragraph (d)(2)(i)(A), single
underlining for added material and single brackets for material
deleted.
Paragraph (d)(2)(ii) requires the patent
owner to set forth the status (i.e., pending or cancelled)
of all patent claims, and of all currently proposed new claims,
as of the date of the submission of each proposed amendment.
The absence of claim status would result in a notice of informal
response.
Paragraph (d)(2)(iii) of § 1.530 requires an explanation of the support in the disclosure for any amendments to the claims presented for the first time on pages separate from the amendments along with any additional comments. The absence of an explanation would result in a notice of informal response.
Proposed paragraphs (d)(2)(iv) and (v),
relating to a requirement for presentation of all amendments as
of the date any amendment to the claims is made, and to the treatment
of the failure to submit a copy of any added claim as a direction
to cancel that claim, were not implemented.
Paragraph (d)(3) of § 1.530
provides that: (1) an amendment may not enlarge the scope
of the claims of the patent, (2) no amendment may be proposed
for entry in an expired patent, and (3) no amendment will
be incorporated into the patent by certificate issued after the
expiration of the patent.
Paragraph (d)(4) of § 1.530
provides that amendments proposed to a patent during reexamination
proceedings will not be effective until a reexamination certificate
is issued. This replaces paragraph (e) of § 1.530,
which has been removed and reserved.
Paragraph (d)(5) of § 1.530
provides the criteria for the form of amendments in reexamination
proceedings (i.e., paper size must be either letter size
or A4 size, and not legal size).
Paragraph (d)(6) of § 1.530
clarifies that proposed amendments to the patent drawing sheets
are not permitted and that any change must be by way of a new
sheet of drawings with the proposed amended figures being identified
as "amended" and with proposed added figures identified
as "new" for each sheet that has changed. Material
in paragraph (d)(6) has been transferred from cancelled § 1.115.
Paragraph (d)(7) of § 1.530,
has been added in view of the deletion of § 1.115 paragraph
(d), requires amendment of the disclosure in certain situations
(i.e., to correct inaccuracies of description and definition)
and to secure substantial correspondence between the claims, the
remainder of the specification, and the drawings. The previous
requirement for "correspondence" has been modified by
use of "substantial correspondence." See comments to
§ 1.115.
Paragraph (d)(8) of § 1.530
has been added to clarify that all amendments to the patent being
reexamined must be made relative to (i.e., vis-à-vis)
the patent specification in effect as of the date of the filing
of the request for reexamination (the patent specification includes
the claims). If there was a prior change to the patent (made
via a prior reexamination certificate, reissue of the patent,
certificate of correction, etc.), the first amendment must
be made relative to the patent specification as changed by the
prior proceeding or other mechanism for changing the patent.
In addition, all amendments subsequent to the first amendment
must be made relative to the patent specification in effect as
of the date of the filing of the request for reexamination, and
not relative to the prior amendment.
Paragraph (e) of § 1.530 has
been removed with the material formerly contained therein transferred
to new paragraph (d)(4) of § 1.530.
The proposed change in §§ 1.530,
1.550, and 1.560 to replace "response," "responses"
and "respond" with "reply" in accordance with
the change to § 1.111 is not being adopted at this time.
As the term "reply" in a reexamination proceeding refers
to the "reply" of a third party requester (§ 1.535),
the Office is withdrawing for further consideration what term
should consistently be used for the "reply" or "response"
by the patent owner and what term should consistently be used
for the "reply" by a third party requester.
Section 1.550:
Paragraph (a) of § 1.550 is amended to conform the
citation to §§ 1.104 through 1.119 to the changes
to §§ 1.104 through 1.119. Paragraphs (b) and
(e) of § 1.550 are amended for clarification purposes.
Paragraph (e) of § 1.550 clarifies present Office practice
of requiring, after filing of a request for reexamination by a
third party requester, the service of any document filed by either
the patent owner or the third party on the other party in the
reexamination proceeding in the manner provided in § 1.248.
No comments were received regarding the
proposed change to § 1.550.
Section 1.770:
Section 1.770 is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.770.
Section 1.785:
Section 1.785 is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
No comments were received regarding the
proposed change to § 1.785.
Section 1.804:
Section 1.804(b) is clarified grammatically by changing "shall
state" to "stating" and is amended to delete the
requirement that the statement be verified in accordance with
the change to §§ 1.4(d)(2) and 10.18.
No comments were received regarding the
proposed change to § 1.804.
Section 1.805:
Section 1.805(c) is amended by deleting "verified"
in accordance with the change to §§ 1.4(d) and
10.18 and removing unnecessary language noting that an attorney
or agent registered to practice need not verify their statements.
No comments were received regarding the
proposed change to § 1.805.
Part 3:
Portions of Part 3 are amended to incorporate Part 7, which part
is removed and reserved.
No comments were received regarding the
proposed change to Part 3.
Section 3.11:
Section 3.11(a) is created for the current subject matter and
a new paragraph (b) is added citing Executive Order 9424 of February
18, 1944 (9 FR 1959, 3 CFR 1943-1949 Comp., p. 303) and its requirements
that several departments and other executive agencies of the Government
forward items for recording.
Section 3.21:
Section 3.21 is amended to replace the reference to "§ 1.53(b)(1)"
with a reference to "§ 1.53(b)" and to delete
the reference to "§ 1.62" for consistency
with the amendment to § 1.53 and the deletion of § 1.62.
Section 3.26:
Section 3.26 is amended to remove the requirement that an English
language translation be verified in accordance with the change
to §§ 1.4(d)(2) and 10.18.
Section 3.27:
The current subject matter of § 3.27 is designated
as paragraph (a), and a paragraph (b) is added to cite Executive
Order 9424 and a mailing address therefor.
Section 3.31:
Section 3.31(c) is added to require that: (1) the cover
sheet must indicate that the document is to be recorded on the
Governmental Register; (2) the document is to be recorded
on the Secret Register (if applicable); and (3) the document
does not affect title (if applicable).
Section 3.41: The current subject matter of § 3.41 is designated as paragraph (a), and a paragraph (b) is added to specify when no recording fee is required for documents required to be filed pursuant to Executive Order 9424.
Section 3.51: Section 3.51 is amended by removing the term
"certification" as unnecessary
in accordance with the change to §§ 1.4(d)(2) and
10.18.
Section 3.58:
Section 3.58 is added to provide for the maintaining of a Department
Register to record Government interests required by Executive
Order 9424 in § 3.58(a). New § 3.58(b) provides
that the Office maintain a Secret Register to record Government
interests also required by the Executive Order.
Section 3.73:
Section 3.73(b) is amended to remove the sentence requiring an
assignee to specifically state that the evidentiary documents
have been reviewed and to certify that title is in the assignee
seeking to take action. The sentence is deemed to be unnecessary
in view of the amendment to §§ 1.4(d) and 10.18.
Section 3.73 paragraph (b) has also been
amended to replace the language "assignee of the entire right,
title and interest" with "assignee." This change
provides for the applicability of the paragraph to assignees with
a partial interest, such as is often encountered in reissue applications.
Section 3.73(b) is clarified by addition
of a reference to an example of documentary evidence that can
be submitted.
Part 5:
No comments were received regarding the
proposed change to Part 5.
Section 5.1:
Section 5.1 is amended by removing the current subject matter
as being duplicative of material in the other sections of this
part and is replaced by subject matter deleted from § 5.33.
Section 5.2:
Section 5.2(b) is amended by removing the subject matter as being
duplicative of material in the other sections of this part and
is replaced with subject matter of the first sentence from § 5.7.
Section 5.2 paragraphs (c) and (d) are removed as repetitive
of material in the other sections of this part.
Section 5.3:
Section 5.3 is amended by replacement of "response"
with "reply" in accordance with the change to § 1.111.
Section 5.4:
Section 5.4 is amended by removing unnecessary subject matter
from paragraph (a), eliminating, in paragraph (d), the requirement
that the petition be verified in accordance with the amendment
to §§ 1.4(d)(2) and 10.18, and by adding the first
and second sentences of § 5.8 to § 5.4(d).
Section 5.5:
Section 5.5 is amended by removing unnecessary subject matter
from paragraph (b) and by replacing current § 5.5(e)
with subject matter removed from § 5.6(a).
Section 5.6:
Section 5.6 is removed and reserved with the subject matter of
§ 5.6(a) being placed in § 5.5(e).
Section 5.7:
Section 5.7 is removed and reserved with the first sentence thereof
being placed in § 5.2(b).
Section 5.8:
Section 5.8 is removed and reserved with the subject matter from
the first and second sentences thereof being placed in § 5.4(d).
Sections 5.11:
Section 5.11, paragraphs (b), (c) and (e), are amended to update
the references to other parts of the Code of Federal Regulations.
Section 5.12: Section 5.12(b) is amended to clarify that the petition fee (§ 1.17(h)) is required only when expedited handling is sought for the petition.
Section 5.13:
Section 5.13 is amended by removing the last two sentences which
are considered to be unnecessary. Section 5.13 is also amended
to remove the language concerning the requirement for the petition
fee (§ 1.17(h)) for expedited handling of a petition
under § 5.12(b), which is duplicative of the provisions
of § 5.12(b). This amendment does not change current
practice.
Section 5.14:
Section 5.14(a) is amended by removing unnecessary subject matter
and replacing "serial number" with the more appropriate
designation "application number." Section 5.14(a) is
also amended to remove the language concerning the requirement
for the petition fee (§ 1.17(h)) for expedited handling
of a petition under § 5.12(b), which is duplicative
of the provisions of § 5.12(b). This amendment does
not change current practice.
Section 5.15:
Section 5.15, paragraphs (a), (b), (c), and (e), are amended
by removing unnecessary subject matter and to update the references
to other parts of the Code of Federal Regulations.
Section 5.16:
Section 5.16 is removed and reserved as unnecessary.
Section 5.17:
Section 5.17 is removed and reserved as unnecessary.
Section 5.18:
Section 5.18 is amended to update the references to other parts
of the Code of Federal Regulations.
Sections 5.19:
Sections 5.19(a) and (b) are amended to update the references
to other parts of the Code of Federal Regulations. Section 5.19(c)
is removed as unnecessary.
Section 5.20:
Section 5.20 is amended to include only the language of former
§ 5.20(a).
Section 5.25:
Section 5.25(c) is removed as unnecessary.
Section 5.31:
Section 5.31 is removed and reserved as unnecessary.
Section 5.32:
Section 5.32 is removed and reserved as unnecessary.
Section 5.33:
Section 5.33 is removed and reserved and its subject matter added
to § 5.1.
Part 7:
Part 7 is removed and reserved as the substance thereof is incorporated
into part 3.
No comments were received regarding the
proposed change to Part 7.
Part 10:
Section 10.18:
The heading of § 10.18 is amended to read "[s]ignature
and certificate for correspondence filed in the Patent and Trademark
Office" to reflect that it, as amended, applies to correspondence
filed by non-practitioners as well as practitioners.
Section 10.18(a) is amended to provide
that for all documents filed in the Office in patent, trademark,
and other non-patent matters, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Patent and Trademark
Office must bear a signature, personally signed by such practitioner,
in compliance with § 1.4(d)(1). This amendment is simply
a clarification of the requirements of former § 10.18(a).
Section 10.18 is further amended (in
§ 10.18 paragraphs (b) and (c)) to include the changes
proposed to § 1.4 paragraphs (d)(2) and (d)(3). These
changes to 37 CFR Part 10 are to avoid a dual standard between
37 CFR Parts 1 and 10 as to practitioners. In addition,
by operation of § 1.4(d)(2), the provisions of § 10.18
paragraphs (b) and (c) are applicable to any party (whether a
practitioner or non-practitioner) presenting any paper to the
Office. As any party (whether a practitioner or non-practitioner)
presenting any paper to the Office is subject to the provisions
of § 10.18 paragraphs (b) and (c), this change also
avoids a dual standard between practitioners and non-practitioners
as to the certification provisions of § 10.18(b) and
the sanctions provisions of § 10.18(c). The only difference
between a practitioner and a non-practitioner as to § 10.18
paragraphs (b) and (c) is that a practitioner may also be
subject to disciplinary action for violations of § 10.18(b)
in addition to or in lieu of sanctions under § 10.18(c).
Section 10.18(b)(1) is specifically amended
to provide that, by presenting to the Office (whether by signing,
filing, submitting, or later advocating) any paper, the party
presenting such paper (whether a practitioner or non-practitioner)
is certifying that all statements made therein of the party's
own knowledge are true, all statements made therein on information
and belief are believed to be true, and all statements made therein
are made with the knowledge that whoever, in any matter within
the jurisdiction of the Patent and Trademark Office, knowingly
and willfully falsifies, conceals, or covers up by any trick,
scheme, or device a material fact, or makes any false, fictitious
or fraudulent statements or representations, or makes or uses
any false writing or document knowing the same to contain any
false, fictitious or fraudulent statement or entry, shall be subject
to the penalties set forth under 18 U.S.C. 1001, and that
violations of this paragraph may jeopardize the validity of the
application or document, or the validity or enforceability of
any patent, trademark registration, or certificate resulting therefrom.
Section 10.18(b)(2) is specifically amended
to provide that, by presenting to the Office any paper, the party
presenting such paper (whether a practitioner or non-practitioner)
is certifying that to the best of the party's knowledge, information
and belief, formed after an inquiry reasonable under the circumstances,
that: (1) the paper is not being presented for any improper
purpose, such as to harass someone or to cause unnecessary delay
or needless increase in the cost of prosecution before the Office;
(2) the claims and other legal contentions therein are warranted
by existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment
of new law; (3) the allegations and other factual contentions
have evidentiary support or, if specifically so identified, are
likely to have evidentiary support after a reasonable opportunity
for further investigation or discovery; and (4) the denials
of factual contentions are warranted on the evidence, or if specifically
so identified, are reasonably based on a lack of information or
belief.
As discussed supra, the amendments
to § 10.18, in combination with the amendment to § 1.4(d),
will permit the Office to eliminate the verification requirement
for a number of the rules of practice.
Section 10.18(c) specifically provides
that violations of § 10.18(b)(1) may jeopardize the
validity of the application or document, or the validity or enforceability
of any patent, trademark registration, or certificate resulting
therefrom, and that violations of any of § 10.18 paragraphs
(b)(2)(i) through (iv) are, after notice and reasonable opportunity
to respond, subject to such sanctions as deemed appropriate by
the Commissioner, or the Commissioner's designee, which may include,
but are not limited to, any combination of: (1) holding
certain facts to have been established; (2) returning papers;
(3) precluding a party from filing a paper, or presenting
or contesting an issue; (4) imposing a monetary sanction;
(5) requiring a terminal disclaimer for the period of the
delay; or (6) terminating the proceedings in the Patent and
Trademark Office.
With regard to the sanctions enumerated
in § 10.18(c), 35 U.S.C. 6(a) provides that "[t]he
Commissioner . . . may, subject to the approval
of the Secretary of Commerce, establish regulations, not inconsistent
with law, for the conduct of proceedings in the Patent and Trademark
Office." The issue of whether the Office is authorized to
impose monetary sanctions was addressed in the rulemaking entitled
"Patent Appeal and Interference Practice," published
in the Federal Register at 60 FR 14488 (March 17,
1995), and in the Official Gazette at 1173 Off. Gaz.
Pat. Office 36 (April 11, 1995).
The Commissioner's authority under 35 U.S.C.
6(a) to impose monetary sanctions is limited to sanctions which
are remedial, and does not extend to sanctions that are punitive.
Id. at 14494-96, 1173 Off. Gaz. Pat. Office at
41-43. An enabling statute (35 U.S.C. 6(a)) alone is not
the express statutory authorization required for an agency to
impose penal monetary sanctions. See, e.g., Commissioner
v. Acker, 361 U.S. 87, 91 (1959); Gold Kist, Inc. v. Department
of Agriculture, 741 F.2d 344, 348 (11th Cir. 1984). Thus,
the line of demarcation between permissible and impermissible
monetary sanctions under 35 U.S.C. 6(a) is that: (1) the
imposition of a monetary sanction to cover the costs incurred
by the Office due to the violation of § 10.18(b)(2)
is a remedial (and thus permissible) sanction; and (2) the
imposition of a monetary sanction that has no relationship to
the costs incurred by the Office due to the violation of § 10.18(b)(2)
(e.g., a pre-established or arbitrary fine or penalty)
is a punitive (and thus impermissible) sanction. See United
States v. Frame, 885 F.2d 1119, 1142-43 (3rd Cir. 1989)(late
payment charge no higher than reasonable to cover lost interest
and administrative costs incurred in the collection effort is
a remedial sanction, and not a penalty, and, as such, is authorized
by rulemaking enabling statute), cert. denied, 493
U.S. 1094 (1990); see also Griffin & Dickson v.
United States, 16 Cl. Ct. 347, 356-57 (1989)(agency has the
inherent authority to manage its caseload by imposing sanctions
including precluding party from presenting further evidence, disciplining
of representative, or imposing costs against the representative
or the party in interest). As the Office is an entirely fee-funded
entity, it is reasonable to impose a monetary sanction on a party
causing an unnecessary and inordinate expenditure of Office resources
to cover the costs incurred by the Office due to such action,
rather than impose these costs on the Office's customers in general.
Nevertheless, the Office has amended
§§ 1.4(d)(2) and 10.18 with the objective of discouraging
the filing of frivolous or patently unwarranted correspondence
in the Office, not to routinely review correspondence for compliance
with § 10.18(b)(2) and impose sanctions under § 10.18(c).
Thus, the amendment to §§ 1.4(d)(2) and 10.18
should cause no concern to practitioners and pro se
applicants engaging in the ordinary course of business before
the Office. The Office anticipates that sanctions under § 10.18(c)
will be imposed only in rare situations in which such action is
necessary for the Office to halt a clear abuse that is resulting
in a needless and inordinate expenditure of Office resources.
Where the circumstances of an application
or other proceeding warrant a determination of whether there has
been a violation of § 10.18(b), the file or the application
or other proceeding will be forwarded to the Office of Enrollment
and Discipline (OED) for a determination of whether there has
been a violation of § 10.18(b). In the event that OED
determines that a provision of § 10.18(b) has been violated,
the Commissioner, or the Commissioner's designee, will determine
what (if any) sanction(s) under § 10.18(c) is to be
imposed in the application or other proceeding. In addition,
if OED determines that a provision of § 10.18(b) has
been violated by a practitioner, OED will determine whether such
practitioner is to be subject to disciplinary action (see §§ 1.4(d)(2)
and 10.18(d)). That is, OED will provide a determination of whether
there has been a violation of § 10.18(b), and if such
violation is by a practitioner, whether such practitioner is to
be subject to disciplinary action; however, OED will not
be responsible for imposing sanctions under § 10.18(c)
in an application or other proceeding.
Section 10.18(d) provides that any practitioner
violating the provisions of this section may also be subject to
disciplinary action. This paragraph (and the corresponding provision
of § 1.4(d)(2)) clarifies that a practitioner may be
subject to disciplinary action in lieu of, or in addition to,
the sanctions set forth in § 10.18(c) for violations
of § 10.18.
Comment 102: A number of comments supported
the changes to § 1.4(d) to make its certification applicable
to all papers signed and submitted to the Office.
Response: The Office will adopt the
changes to make such a certification applicable to all papers
filed in the Office, but will do so by placing the certification
requirement in § 10.18, and providing in § 1.4(d)
that the presentation of any paper to the Office, whether by a
practitioner or non-practitioner, constitutes a certification
under § 10.18. Thus, the presentation of a paper to
the Office by any person (even a non-practitioner) constitutes
a certification under § 10.18.
Comment 103: A number of comments opposed
the change to § 1.4(d) as increasing the burden on persons
presenting papers to the Office, and, as such, inconsistent with
the stated goal of reducing the burden on the public. One comment
indicated that new burdens in § 1.4(d) on signers of
papers submitted to the Office include: (1) conducting a
reasonable inquiry concerning the document to be submitted to
the Office; (2) not submitting the document to harass or
seek a needless increase in the cost of prosecution; and (3) submitting
only documents likely to have evidentiary support after a reasonable
opportunity for further investigation or discovery.
Response: The change to §§ 1.4(d)
and 10.18 should discourage the filing of frivolous papers in
the Office, and thus reduce the cost to the Office of treating
such papers, which cost is ultimately borne by the Office's customers.
Thus, this change to §§ 1.4(d) and 10.18 will
reduce the burden on the public and to the Office's customers
in general. There is no reasonable argument as to why a person
filing a document in the Office should be permitted to avoid the
"burden" of conducting a reasonable inquiry concerning
the document to be submitted to the Office, not submitting the
document to harass or seek a needless increase in the cost of
prosecution, or submitting only documents likely to have evidentiary
support after a reasonable opportunity for further investigation
or discovery.
Comment 104: Several comments opposed
the addition of § 1.4(d)(2) (now § 10.18(b)(2))
on the basis that the phrase "formed after an inquiry reasonable
under the circumstances" was too vague or was unclear as
to how much of an inquiry must be made to meet the "reasonable
inquiry" requirement.
Response: The phrase "formed after an inquiry reasonable under the circumstances" is taken from Rule 11(b) of the Federal Rules of Civil Procedure (Fed. R. Civ. P. 11(b)), which provides that:
Representations to Court. By presenting to the court (whether by signing, filing, submitting, or later advocating) a pleading, written motion, or other paper, an attorney or unrepresented party is certifying that to the best of the person's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, --
(1) it is not being presented for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation;
(2) the claims, defenses, and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(3) the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) the denials of factual contentions
are warranted on the evidence or, if specifically so identified,
are reasonably based on a lack of information or belief.
See
Fed. R. Civ. P. 11(b)(1993).
Section 10.18(b)(2) tracks the language of Fed. R. Civ. P. 11(b)(1993) to avoid confusion as to what certifications a signature entails. The advisory committee notes to Fed. R. Civ. P. 11(b) provide further information on the "inquiry reasonable under the circumstances" requirement. See Amendments to the Federal Rules of Civil Procedure at 50-53 (1993), reprinted in 146 F.R.D. 401, 584-87. The "inquiry reasonable under the circumstances" requirement of § 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The Federal courts have stated in regard to the "reasonable inquiry" requirement of Fed. R. Civ. P. 11:
In requiring reasonable inquiry before
the filing of any pleading in a civil case in federal district
court, Rule 11 demands "an objective determination of whether
a sanctioned party's conduct was reasonable under the circumstances."
In effect it imposes a negligence standard, for negligence is
a failure to use reasonable care. The equation between negligence
and the failure to conduct a reasonable precomplaint inquiry is . . .
that "the amount of investigation required by Rule 11 depends
on both the time available to investigate and on the probability
that more investigation will turn up important evidence; the Rule
does not require steps that are not cost-justified."
Hays v. Sony Electronics,
847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th. Cir. 1988)(citations
omitted)(decided prior to the 1993 amendment to Fed. R. Civ. P.
11, but discussing a "reasonable under the circumstances"
standard).
Comment 105: One comment opposed the
change in § 1.4(d) to import the verification requirement
into any papers signed and submitted to the Office, on the basis
that the presence of a verification actually on the paper signed
and submitted to the Office would cause the signer to carefully
consider what is being signed and submitted to the Office.
Response: A separate verification requirement
for certain papers results in delays during the examination of
an application when such verification is omitted. The Office
is convinced that people are inclined to either not make false,
misleading or inaccurate statements in documents they sign, or
are not deterred from making such statements by the presence of
a verification clause in the document. The benefit obtained in
the rare instance in which a person otherwise inclined to make
a false, misleading or inaccurate statement is persuaded not to
do so by a verification clause simply does not outweigh the benefit
obtained by the elimination of the delay that results from the
requirement for such a verification clause.
Comment 106: One comment opposed the
change to § 1.4(d) (now § 10.18(b)(2)) on
the basis that "reasonable inquiry" requirement therein
will expose a practitioner to malpractice liability.
Response: Legal malpractice is not an
issue of Federal patent (or trademark) law, but of common law
sounding in tort. See Voight v. Kraft, 342 F. Supp
821, 822, 174 USPQ 294, 295 (D. Idaho 1972). Section 10.18(b)(2)
does not affect the duty (or create a new duty) on the part
of a practitioner to his or her client vis-à-vis
the submission of papers to the Office.
The party's duties under § 10.18
are not to one's own clients; it is to the public in general,
other parties before the Office (the examination of whose applications
are delayed while the Office is, and whose fees must be applied
to the cost of, responding to frivolous papers), and to the Office.
Cf. Mars Steel Corp. v. Continental Bank, 880 F.2d
928, 932 (7th. Cir. 1989)(just as tort law creates duties to one's
client, Fed. R. Civ. P. 11 creates a duty to one's adversary,
other litigants in the courts's queue, and the court itself);
Hays, 847 F.2d at 418, 7 USPQ2d at 1049 (same).
Comment 107: One comment indicated that
the requirements in § 1.4(d)(2) (now § 10.18(b)(2))
may be onerous as to persons not registered to practice before
the Office. Another comment opposed this change on the basis
that it would create new issues during litigation, in that few
non-lawyers have enough legal knowledge to accurately verify that
the documents they sign are consistent with the law. The comment
suggested that § 1.4(d)(2) simply be amended to include
the verification statement from § 1.68.
Response: There is no reasonable argument
as to why the certification for papers submitted to the Office
should be any less than the certification required under Fed.
R. Civ. P. 11(b) for papers filed in the Federal courts. The
Federal Rules of Civil Procedure do not permit a pro se
litigant to avoid the requirements of Fed. R. Civ. P. 11(b) ("By
presenting . . . an attorney or unrepresented
party is certifying . . . ." (emphasis
added)). It is, however, appropriate to take account of the special
circumstances of pro se applicants in determining
whether sanctions under § 10.18(c) are appropriate.
See advisory committee notes to Fed. R. Civ. P. 11 (1983),
reprinted in 97 F.R.D. 165, 198-99 (1983) ("Although
the standard is the same for unrepresented parties, who are obligated
themselves to sign the [papers], the court has sufficient discretion
to take account of the special circumstances that often arise
in pro se situations").
The Office expects that pro se
applicants will often submit arguments that evidence little, if
any, appreciation of the applicable law or procedure. The Office
is not adopting §§ 1.4(d)(2) and 10.18(b) and (c)
for the purpose of imposing, and does not intend to impose, sanctions
on pro se applicants in situations in which they simply
submit arguments lacking an appreciation of the applicable law
or procedure. See Finch v. Hughes Aircraft Co.,
926 F.2d 1574, 1582, 17 USPQ2d 1914, 1921 (Fed. Cir. 1991)("courts
are particularly cautious about imposing sanctions on a pro se
litigant, whose improper conduct may be attributed to ignorance
of the law and proper procedures"); see also Hornback
v. U.S., 40 USPQ2d 1694, 1697 (Cl. Ct. 1996)(pro se
without legal training is not held to the same standard as trained
counsel).
Where, however, a pro se
applicant engages in a course of conduct that any reasonable person
should have known was improper, and which causes a needless and
inordinate expenditure of Office resources, such conduct may result
in the imposition of sanctions on the pro se applicant.
The Federal courts have subjected pro se litigants
to sanctions for: (1) taking or persisting in actions that
even a non-lawyer should have known were frivolous; (2) taking
or persisting in actions that, after engaging in a sufficient
course of litigation, the pro se litigant should have
known were frivolous; or (3) taking or persisting in actions
after having been warned by the court that such actions were frivolous.
See Constant v. U.S., 929 F.2d 654, 658, 18 USPQ2d
1298, 1301 (Fed. Cir.), cert. denied, 501 U.S. 1206 (1991);
Finch, 926 F.2d at 1582-83, 17 USPQ2d at 1921; U.S.
ex rel. Taylor v. Times Herald Record, 22 USPQ2d 1716, 1718
(S.D.N.Y. 1992), aff'd, 990 F.3d 623 (2d Cir. 1993)(table).
Comment 108: One comment argued that
the change to § 1.4(d) would be particularly difficult
to apply in the context of provisional applications.
Response: The patent statute and rules
of practice do not require any papers other than a disclosure
(with or without claims) and a cover sheet for a provisional application
(e.g., an applicant need and should not submit legal arguments
or other contentions with a provisional application). Thus, it
is highly unlikely that the filing of a provisional application
will result in a violation of § 10.18(b).
Comment 109: One comment opposed the
change to § 1.4(d) on the basis that it was not clear
whether a practitioner has an obligation in the case of a submission
of a statement of facts to inform the party making the statement
(or the client) of this certification effect, and the sanctions
applicable to noncompliance. Another comment indicated that practitioners
will now be placed under the obligation of questioning their clients
each time they are given information or instructions.
Response: The submission by an applicant
of misleading or inaccurate statements of facts during the prosecution
of applications for patent has resulted in the patents issuing
on such applications being held unenforceable. See, e.g.,
Refac International Ltd. v. Lotus Development Corp., 81
F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996); Paragon Podiatry
Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182,
25 USPQ2d 1561 (Fed. Cir 1993); Rohm and Haas Corp. v. Crystal
Chemical Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984); Ott v. Goodpasture,
40 USPQ2d 1831 (D.N. Tex. 1996); Herman v. William Brooks Shoe
Co., 39 USPQ2d 1773 (S.D.N.Y. 1996); Golden Valley Microwave
Food Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 24 USPQ2d
1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993)(table),
cert. denied, 511 U.S. 1128 (1994). Likewise, false statements
by a practitioner in a paper submitted to the Office during the
prosecution of an application for patent has resulted in the patent
issuing on such application also being held unenforceable. See
General Electro Music Corp. v. Samick Music Corp., 19 F.3d
1405, 30 USPQ2d 1149 (Fed. Cir. 1994)(false statement in a petition
to make an application special constitutes inequitable conduct,
and renders the patent issuing on such application unenforceable).
In addition, the failure to exercise due care in ascertaining
the accuracy of the statements in a certification submitted to
the Office has also resulted in a patent being held invalid.
See DH Technology, 937 F. Supp. at 910; 40 USPQ2d
at 1761.
For the above-stated reasons, it is highly
advisable for a practitioner to advise a client or third party
that any information so provided must be reliable and not misleading,
regardless of this amendment to §§ 1.4(d)(2) and
10.18. Nevertheless, §§ 1.4(d)(2) and 10.18 as
adopted do not require a practitioner to advise the client (or
third party) providing information of this certification effect
(or the sanctions applicable to noncompliance), or question the
client (or third party) when such information or instructions
are provided. When a practitioner is submitting information (e.g.,
a statement of fact) from the applicant or a third party, or relying
in arguments upon information from the applicant or a third party,
the Office will consider a practitioner's "inquiry reasonable
under the circumstances" duty under § 10.18 met
so long as the practitioner has no knowledge of information that
is contrary to the information provided by the applicant or third
party or would otherwise indicate that the information provided
by the applicant or third party was so provided for the purpose
of a violation of § 10.18 (e.g., was submitted
to cause unnecessary delay).
An applicant has no duty to conduct a
prior art search as a prerequisite to filing an application for
patent. See Nordberg, Inc. v. Telsmith, Inc., 82
F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC
Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d
1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc
Co., Inc., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed.
Cir. 1987); American Hoist & Derrick Co. v. Sowa &
Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.),
cert. denied, 469 U.S. 821, 224 USPQ 520 (1984). The "inquiry
reasonable under the circumstances" requirement of § 10.18
does not create any new duty on the part of an applicant for patent
to conduct a prior art search. See MPEP 609; cf.
Judin v. United States, 110 F.3d 780, 42 USPQ2d 1300 (Fed.
Cir 1997)(the failure to obtain and examine the accused infringing
device prior to bringing a civil action for infringement violates
the 1983 version of Fed. R. Civ. P. 11). The "inquiry reasonable
under the circumstances" requirement of § 10.18,
however, will require an inquiry into the underlying facts and
circumstances when a practitioner provides conclusive statements
to the Office (e.g., a statement that the entire delay
in filing the required reply from the due date for the reply until
the filing of a grantable petition pursuant to § 1.137(b)
was unintentional).
Section 10.23:
Section 10.23 is amended to change the phrase "knowingly
signing" to "signing." This amendment to § 10.23
is for consistency with § 10.18, which contains no "knowingly"
provision or requirement.
Review Under the Paperwork Reduction Act of 1995.
This Final Rule contains information
collection requirements which are subject to review by the Office
of Management and Budget (OMB) under the Paperwork Reduction Act
of 1995 (44 U.S.C. 3501 et seq.). The principal impact
of this Final Rule is: (1) elimination of unnecessary rules
of practice; (2) simplification or elimination of certain
requirements of the rules of practice; (3) rearrangement
of certain rules to improve their context; and (4) clarification
of the requirements of the rules of practice.
The title, description and respondent description of each of the information collections are shown below with an estimate of each of the annual reporting burdens. The collections of
information in this Final Rule have been
reviewed and approved by OMB under the following control numbers:
0651-0016, 0651-0021, 0651-0022, 0651-0027, 0651-0031, 0651-0032,
0651-0033, 0651-0034, 0651-0035, and 0651-0037. Included in each
estimate is the time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the
collection of information.
Notwithstanding any other provision of
law, no person is required to respond to nor shall a person be
subject to a penalty for failure to comply with a collection of
information subject to the requirements of the Paperwork Reduction
Act unless that collection of information displays a currently
valid OMB control number.
OMB Number: 0651-0016.
Title: Rules for Patent Maintenance Fees.
Form Numbers: PTO/SB/45/46/47/65/66.
Type of Review: Approved through July of 1999.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 273,800.
Estimated Time Per Response: 0.08 hour.
Estimated Total Annual Burden Hours: 22,640 hours.
Needs and Uses: Maintenance fees are
required to maintain a patent, except for design or plant patents,
in force under 35 U.S.C. 41(b). Payment of maintenance fees
are required at 3 ½, 7 ½ and 11 ½ years after the
grant of the patent. A patent number and application number of
the patent on which maintenance fees are paid are required in
order to ensure proper crediting of such payments.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO-1382, PCT/IPEA/401, PCT/IB/328.
Type of Review: Approved through May of 2000.
Affected Public: Individuals or Households, Business or Other For-Profit, Federal Agencies or Employees, Not-for-Profit Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 102,950.
Estimated Time Per Response: 0.9538 hour.
Estimated Total Annual Burden Hours: 98,195 hours.
Needs and Uses: The information collected
is required by the Patent Cooperation Treaty (PCT). The general
purpose of the PCT is to simplify the filing of patent applications
on the same invention in different countries. It provides for
a centralized filing procedure and a standardized application
format.
OMB Number: 0651-0022.
Title: Deposit of Biological Materials for Patent Purposes.
Form Numbers: None.
Type of Review: Approved through December of 1997.
Affected Public: Individuals or Households, State or Local Governments, Farms, Business or Other For-Profit, Federal Agencies or Employees, Not-for-Profit Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 3,325.
Estimated Time Per Response: 1.0 hour.
Estimated Total Annual Burden Hours: 3,325 hours.
Needs and Uses: Information on depositing
of biological materials in depositories is required for (1) Office
determination of compliance with the patent statute where the
invention sought to be patented relies on biological material
subject to deposit requirement, which includes notifying interested
members of the public where to obtain samples of deposits, and
(2) depositories desiring to be recognized as suitable by the
Office.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households and Businesses or Other For-Profit.
Estimated Number of Respondents: 170,000.
Estimated Time Per Response: 0.57 hour.
Estimated Total Annual Burden Hours: 97,000 hours.
Needs and Uses: The Office records about
170,000 assignments or documents related to ownership of patent
and trademark cases each year. The Office requires a cover sheet
to expedite the processing of these documents and to ensure that
they are properly recorded.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/ 67-69/91-93/96/97.
Type of Review: Approved through October of 1999.
Affected Public: Individuals or Households, Business or Other For-Profit Institutions, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 1,690,690.
Estimated Time Per Response: 0.361 hours.
Estimated Total Annual Burden Hours: 644,844 hours.
Needs and Uses: During the processing for an application for a patent, the applicant/agent may be required or desire to submit additional information to the Office concerning the examination of a specific application. The specific information required or which may be submitted includes: Information Disclosure Statements; Terminal Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices; Small Entity; Petitions for
Access; Powers to Inspect; Certificates
of Mailing; Certificates under § 3.73(b); Amendments,
Petitions and their Transmittal Letters; and Deposit Account Order
Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/17-20/101-109.
Type of Review: Approved through September of 1998.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 243,100.
Estimated Time Per Response: 7.88 hours.
Estimated Total Annual Burden Hours: 1,915,500 hours.
Needs and Uses: The purpose of this
information collection is to permit the Office to determine whether
an application meets the criteria set forth in the patent statute
and regulations. The standard Fee Transmittal form, New Utility
Patent Application Transmittal form, New Design Patent Application
Transmittal form, New Plant Patent Application Transmittal form,
Plant Color Coding Sheet, Declaration, and Plant Patent Application
Declaration will assist applicants in complying with the requirements
of the patent statute and regulations, and will further assist
the Office in processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,190.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information
is required to administer the patent laws pursuant to title 35, U.S.C.,
concerning the issuance of patents and related actions including
correcting errors in printed patents, refiling of patent applications,
requesting reexamination of a patent, and requesting a reissue
patent to correct an error in a patent. The affected public includes
any individual or institution whose application for a patent has
been allowed or who takes action as covered by the applicable
rules.
OMB Number: 0651-0034.
Title: Secrecy/License to Export.
Form Numbers: None.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 2,156.
Estimated Time Per Response: 0.5 hour.
Estimated Total Annual Burden Hours: 1,129 hours.
Needs and Uses: In the interest of national
security, patent laws and regulations place certain limitations
on the disclosure of information contained in patents and patent
applications and on the filing of applications for patent in foreign
countries.
OMB Number: 0651-0035.
Title: Address-Affecting Provisions.
Form Numbers: PTO/SB/82/83.
Type of Review: Approved through June of 1999.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 44,850.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 8,970 hours.
Needs and Uses: Under existing law,
a patent applicant or assignee may appoint, revoke or change a
representative to act in a representative capacity. Also, an
appointed representative may withdraw from acting in a representative
capacity. This collection includes the information needed to
ensure that Office correspondence reaches the appropriate individual.
OMB Number: 0651-0037.
Title: Provisional Applications.
Form Numbers: PTO/SB/16.
Type of Review: Approved through January of 1998.
Affected Public: Individuals or Households, Business or Other For-Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 6,000.
Estimated Time Per Response: 0.2 hour.
Estimated Total Annual Burden Hours: 1,200 hours.
Needs and Uses: The information included
on the provisional application cover sheet is needed by the Office
to identify the submission as a provisional application and not
some other kind of submission, to promptly and properly process
the provisional application, to prepare the provisional application
filing receipt which is sent to the applicant, and to identify
those provisional applications which must be reviewed by the Office
for foreign filing licenses.
As required by the Paperwork Reduction
Act of 1995 (44 U.S.C. 3507(d)), the Office has submitted
a copy of this Final Rule to OMB for its review of these information
collections. Interested persons are requested to send comments
regarding these information collections, including suggestions
for reducing this burden, to the Office of Information and Regulatory
Affairs of OMB, New Executive Office Bldg., 725 17th St. NW, rm.
10235, Washington, DC 20503, Attn: Desk Officer for the Patent
and Trademark Office.
Other Considerations.
This Final Rule is in conformity with the requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). It has been determined that this rulemaking is not significant for the purposes of Executive Order 12866 (September 30, 1993).
The Assistant General Counsel for Legislation
and Regulation of the Department of Commerce has certified to
the Chief Counsel for Advocacy, Small Business Administration
that this Final Rule would not have a significant impact on a
substantial number of small entities (Regulatory Flexibility Act,
5 U.S.C. 605(b)). The principal impact of this Final Rule
is: (1) elimination of unnecessary rules of practice; (2) simplification
or elimination of certain requirements of the rules of practice;
(3) rearrangement of certain rules to improve their context;
and (4) clarification of the requirements of the rules of
practice.
The Office has determined that this Final
Rule has no Federalism implications affecting the relationship
between the National Government and the States as outlined in
Executive Order 12612.
List of Subjects
37 CFR Part 1
Administrative practice and procedure,
Courts, Freedom of Information, Inventions and patents, Reporting
and record keeping requirements, Small Businesses.
37 CFR Part 3
Administrative practice and procedure,
Inventions and patents, Reporting and record keeping requirements.
37 CFR Part 5
Classified information, foreign relations,
inventions and patents.
37 CFR Part 7
Administrative practice and procedure,
Inventions and patents, Reporting and record keeping requirements.
37 CFR Part 10
Administrative practice and procedure,
Inventions and patents, Lawyers, Reporting and record keeping
requirements.
For the reasons set forth in the preamble,
37 CFR Parts 1, 3, 5, 7 and 10 are amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT
CASES
1. The authority citation for 37 CFR
Part 1 continues to read as follows:
Authority:
35 U.S.C. 6, unless otherwise noted.
2. Section 1.4 is amended by revising
paragraph (d) and by adding paragraph (g) to read as follows:
§ 1.4 Nature of correspondence and signature requirements.
* * * * *
(d)(1) Each piece of correspondence, except as provided in paragraphs (e) and (f) of this section, filed in a patent or trademark application, reexamination proceeding, patent or trademark interference proceeding, patent file or trademark registration file, trademark opposition proceeding, trademark cancellation proceeding, or trademark concurrent use proceeding, which requires a person's signature, must either:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Patent and Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 10.18(c) of this chapter. Any practitioner violating § 10.18(b) may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15).
* * * * *
(g) An applicant who has not made of
record a registered attorney or agent may be required to state
whether assistance was received in the preparation or prosecution
of the patent application, for which any compensation or consideration
was given or charged, and if so, to disclose the name or names
of the person or persons providing such assistance. Assistance
includes the preparation for the applicant of the specification
and amendments or other papers to be filed in the Patent and Trademark
Office, as well as other assistance in such matters, but does
not include merely making drawings by draftsmen or stenographic
services in typing papers.
3. Section 1.6 is amended by revising
paragraphs (d)(3), (d)(6), and (e) and adding paragraph (f) to
read as follows:
§ 1.6 Receipt of correspondence.
* * * * *
(d) * * *
(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), § 1.8(a)(2)(ii)(A), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
* * *
(6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
* * * * *
(e) Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States Postal Service which have been so designated by the Commissioner occur, the Patent and Trademark Office will consider as filed on a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or emergency; and
(2) Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Commissioner to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under § 1.53(d):
(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit's report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).
(2) The Office may require additional
evidence to determine if the application under § 1.53(d)
was transmitted to and received in the Office on the date in question.
4. Section 1.8 is amended by revising
paragraphs (a)(2)(i)(A) and (b) to read as follows:
§ 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(i) * * *
(A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
* * * * *
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Patent and Trademark Office, and the application is held to be abandoned or the proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement.
* * * * *
5. Section 1.9 is amended by revising
paragraphs (d) and (f) to read as follows:
§ 1.9 Definitions.
* * * * *
(d) A small business concern as used in this chapter means any business concern meeting the size standards set forth in 13 CFR Part 121 to be eligible for reduced patent fees. Questions related to size standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW, Washington, DC 20416.
* * * * *
(f) A small entity as used in this chapter means an independent inventor, a small business concern, or a non-profit organization eligible for reduced patent fees.
* * * * *
6. Section 1.10 is amended by revising
paragraphs (d) and (e) to read as follows:
§ 1.10 Filing of correspondence by "Express Mail."
* * * * *
(d) Any person filing correspondence under this section that was received by the Office and delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show that the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Commissioner to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail"; and
(3) The petition includes a showing which establishes, to the satisfaction of the Commissioner, that the requested filing date was the date the correspondence was deposited in the "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the "Express Mail Post Office to Addressee" service of the USPS.
(e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS but not received by the Office, may petition the Commissioner to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail";
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the "Express Mail" mailing label thereon, a copy of any returned postcard receipt, a copy of the "Express Mail" mailing label showing the "date-in," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the satisfaction of the Commissioner, the original deposit of the correspondence and that the copies of the correspondence, the copy of the "Express Mail" mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original "Express Mail" mailing label, returned postcard receipt, and official notation entered by the USPS.
* * * * *
7. Section 1.11 is amended by revising
paragraph (b) to read as follows:
§ 1.11 Files open to the public.
* * * * *
(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
* * * * *
8. Section 1.14 is amended by revising
paragraph (a) and adding a new paragraph (f) to read as follows:
§ 1.14 Patent applications preserved in confidence.
(a) Patent applications are generally preserved in confidence pursuant to 35 U.S.C. 122. No information will be given concerning the filing, pendency, or subject matter of any application for patent, and no access will be given to, or copies furnished of, any application or papers relating thereto, except as set forth in this section.
(1) Status information includes information such as whether the application is pending, abandoned, or patented, as well as the application number and filing date (or international filing date or date of entry into the national stage).
(i) Status information concerning an application may be supplied:
(A) When copies of, or access to, the application may be provided pursuant to paragraph (a)(3) of this section;
(B) When the application is identified by application number or serial number and filing date in a published patent document or in a U.S. application open to public inspection; or
(C) When the application is the national stage of an international application in which the United States of America has been indicated as a Designated State.
(ii) Status information concerning an application may also be supplied when the application claims the benefit of the filing date of an application for which status information may be provided pursuant to paragraph (a)(1)(i) of this section.
(2) Copies of an application-as-filed may be provided to any person, upon written request accompanied by the fee set forth in § 1.19(b)(1), without notice to the applicant, if the application is incorporated by reference in a U.S. patent.
(3) Copies of (upon payment of the fee set forth in § 1.19(b)(2)), and access to, an application file wrapper and contents may be provided to any person, upon written request, without notice to the applicant, when the application file is available and:
(i) It has been determined by the Commissioner to be necessary for the proper conduct of business before the Office or warranted by other special circumstances;
(ii) The application is open to the public as provided in § 1.11(b);
(iii) Written authority in that application from the applicant, the assignee of the application, or the attorney or agent of record has been granted; or
(iv) The application is abandoned, but not if the application is in the file jacket of a pending application under § 1.53(d), and is:
(A) Referred to in a U.S. patent;
(B) Referred to in a U.S. application open to public inspection;
(C) An application which claims the benefit of the filing date of a U.S. application open to public inspection; or
(D) An application in which the applicant has filed an authorization to lay open the complete application to the public.
* * * * *
(f) Information as to the filing of an
application will be published in the Official Gazette in
accordance with § 1.47(a) and (b).
9. Section 1.16 is amended by revising
paragraphs (d) and (l) to read as follows:
§ 1.16 National application filing fees.
* * * * *
(d) In addition to the basic filing fee in an original application, except provisional applications, if the application contains, or is amended to contain, a multiple dependent claim(s), per application:
By a small entity (§ 1.9(f)) ................... 135.00
By other than a small entity ................... 270.00
* * * * *
(l) Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the provisional application:
By a small entity (§ 1.9(f)) .................... 25.00
By other than a small entity .................... 50.00
* * * * *
10. Section 1.17 is amended by removing
and reserving paragraphs (e) through (g) and revising paragraphs
(a) through (d), (h), (i) and (q) to read as follows:
§ 1.17 Patent application processing fees.
(a) Extension fees pursuant to § 1.136(a):
(1) For reply within first month:
By a small entity (§ 1.9(f)) ................... $55.00
By other than a small entity ................... 110.00 (2) For reply within second month:
By a small entity (§ 1.9(f)) ................... 200.00
By other than a small entity ................... 400.00
(3) For reply within third month:
By a small entity (§ 1.9(f)) ................... 475.00
By other than a small entity ................... 950.00
(4) For reply within fourth month:
By a small entity (§ 1.9(f)) ................... 755.00
By other than a small entity ................. 1,510.00
(5) For reply within fifth month:
By a small entity (§ 1.9(f)) ................. 1,030.00
By other than a small entity ................. 2,060.00
(b) For filing a notice of appeal from the examiner to the Board of Patent Appeals and Interferences:
By a small entity (§ 1.9(f)) ................... 155.00
By other than a small entity ................... 310.00
(c) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal:
By a small entity (§ 1.9(f)) ................... 155.00
By other than a small entity ................... 310.00
(d) For filing a request for an oral hearing before the Board of Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity (§ 1.9(f)) ................... 135.00
By other than a small entity ................... 270.00
(e) [Reserved]
(f) [Reserved]
(g) [Reserved]
(h) For filing a petition to the Commissioner under a section listed below which refers to this paragraph ........................................... 130.00
§ 1.182 - for decision on a question not specifically provided for.
§ 1.183 - to suspend the rules.
§ 1.295 - for review of refusal to publish a statutory invention registration.
§ 1.377 - for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent.
§ 1.378(e) - for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent.
§ 1.644(e) - for petition in an interference.
§ 1.644(f) - for request for reconsideration of a decision on petition in an interference.
§ 1.666(c) - for late filing of interference settlement agreement.
§ 5.12 - for expedited handling of a foreign filing license.
§ 5.15 - for changing the scope of a license.
§ 5.25 - for retroactive license.
(i) For filing a petition to the Commissioner under a section listed below which refers to this paragraph ........................................... 130.00
§ 1.12 - for access to an assignment record.
§ 1.14 - for access to an application.
§ 1.41 - to supply the name or names of the inventor or inventors after the filing date without an oath or declaration as prescribed by § 1.63, except in provisional applications.
§ 1.47 - for filing by other than all the inventors or a person not the inventor.
§ 1.48 - for correction of inventorship, except in provisional applications.
§ 1.53 - to accord a filing date, except in provisional applications.
§ 1.55 - for entry of late priority papers.
§ 1.59 - for expungement and return of information.
§ 1.84 - for accepting color drawings or photographs.
§ 1.91 - for entry of a model or exhibit.
§ 1.97(d) - to consider an information disclosure statement.
§ 1.102 - to make an application special.
§ 1.103 - to suspend action in application.
§ 1.177 - for divisional reissues to issue separately.
§ 1.312 - for amendment after payment of issue fee.
§ 1.313 - to withdraw an application from issue.
§ 1.314 - to defer issuance of a patent.
§ 1.666(b) - for access to an interference settlement agreement.
§ 3.81 - for a patent to issue to assignee, assignment submitted after payment of the issue fee.
* * * * *
(q) For filing a petition to the Commissioner under a section listed below which refers to this
paragraph ............................................ 50.00
§ 1.41 - to supply the names or names of the inventor or inventors after the filing date without a cover sheet as prescribed by § 1.51(c)(1) in a provisional application.
§ 1.48 - for correction of inventorship in a provisional application.
§ 1.53 - to accord a provisional application a filing date or to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c).
* * * * *
11. Section 1.21 is amended by revising
paragraphs (l) and (n) to read as follows:
§ 1.21 Miscellaneous fees and charges.
* * * * *
(l) For processing and retaining any application abandoned pursuant to § 1.53(f), unless the required basic filing fee (§ 1.16) has been paid ................... 130.00
* * * * *
(n) For handling an application in which proceedings are terminated pursuant to § 1.53(e) ................ 130.00
* * * * *
12. Section 1.26 is amended by revising
paragraph (a) to read as follows:
§ 1.26 Refunds.
(a) Any fee paid by actual mistake or in excess of that required will be refunded, but a mere change of purpose after the payment of money, as when a party desires to withdraw an application, an appeal, or a request for oral hearing, will not entitle a party to demand such a return. Amounts of twenty-five dollars or less will not be returned unless specifically requested within a reasonable time, nor will the payer be notified of such amounts; amounts over twenty-five dollars may be returned by check or, if requested, by credit to a deposit account.
* * * * *
13. Section 1.27 is revised to read as
follows:
§ 1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity (§ 1.9(f) of this part) for purposes of paying fees in an application or a patent must file a statement in the application or patent prior to or with the first fee paid as a small entity. Such a statement need only be filed once in an application or patent and remains in effect until changed.
(b) When establishing status as a small entity pursuant to paragraph (a) of this section, any statement filed on behalf of an independent inventor must be signed by the independent inventor except as provided in § 1.42, § 1.43, or § 1.47 of this part and must state that the inventor qualifies as an independent inventor in accordance with § 1.9(c) of this part. Where there are joint inventors in an application, each inventor must file a statement establishing status as an independent inventor in order to qualify as a small entity. Where any rights have been assigned, granted, conveyed, or licensed, or there is an obligation to assign, grant, convey, or license, any rights to a small business concern, a nonprofit organization, or any other individual, a statement must be filed by the individual, the owner of the small business concern, or an official of the small business concern or nonprofit organization empowered to act on behalf of the small business concern or nonprofit organization identifying their status. For purposes of a statement under this paragraph, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license as set forth in § 1.9 of this part.
(c)(1) Any statement filed pursuant to paragraph (a) of this section on behalf of a small business concern must:
(i) Be signed by the owner or an official of the small business concern empowered to act on behalf of the concern;
(ii) State that the concern qualifies as a small business concern as defined in § 1.9(d); and
(iii) State that the exclusive rights to the invention have been conveyed to and remain with the small business concern or, if the rights are not exclusive, that all other rights belong to small entities as defined in § 1.9.
(2) Where the rights of the small business concern as a small entity are not exclusive, a statement must also be filed by the other small entities having rights stating their status as such. For purposes of a statement under this paragraph, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license as set forth in § 1.9 of this part.
(d)(1) Any statement filed pursuant to paragraph (a) of this section on behalf of a nonprofit organization must:
(i) Be signed by an official of the nonprofit organization empowered to act on behalf of the organization;
(ii) State that the organization qualifies as a nonprofit organization as defined in § 1.9(e) of this part specifying under which one of § 1.9(e)(1), (2), (3), or (4) of this part the organization qualifies; and
(iii) State that exclusive rights to the invention have been conveyed to and remain with the organization or if the rights are not exclusive that all other rights belong to small entities as defined in § 1.9 of this part.
(2) Where the rights of the nonprofit
organization as a small entity are not exclusive, a statement
must also be filed by the other small entities having rights stating
their status as such. For purposes of a statement under this
paragraph, a license to a Federal agency pursuant to 35 U.S.C.
202(c)(4) does not constitute a conveyance of rights as set forth
in this paragraph.
14. Section 1.28 is amended by revising
paragraphs (a) and (c) to read as follows:
§ 1.28 Effect on fees of failure to establish status, or change status, as a small entity.
(a)(1) The failure to establish status as a small entity (§§ 1.9(f) and 1.27 of this part) in any application or patent prior to paying, or at the time of paying, any fee precludes payment of the fee in the amount established for small entities. A refund pursuant to § 1.26 of this part, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if a statement under § 1.27 and a request for a refund of the excess amount are filed within two months of the date of the timely payment of the full fee. The two-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within two months of the date of payment of, the fee.
(2) Status as a small entity must be specifically established in each application or patent in which the status is available and desired. Status as a small entity in one application or patent does not affect any other application or patent, including applications or patents which are directly or indirectly dependent upon the application or patent in which the status has been established. The refiling of an application under § 1.53 as a continuation, division, or continuation-in-part (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application requires a new determination as to continued entitlement to small entity status for the continuing or reissue application. A nonprovisional application claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a reissue application may rely on a statement filed in the prior application or in the patent if the nonprovisional application or the reissue application includes a reference to the statement in the prior application or in the patent or includes a copy of the statement in the prior application or in the patent and status as a small entity is still proper and desired. The payment of the small entity basic statutory filing fee will be treated as such a reference for purposes of this section.
(3) Once status as a small entity has been established in an application or patent, the status remains in that application or patent without the filing of a further statement pursuant to § 1.27 of this part unless the Office is notified of a change in status.
* * * * *
(c) If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error or that through error the Office was not notified of a change in status as required by paragraph (b) of this section, the error will be excused upon payment of the deficiency between the amount paid and the amount due. The deficiency is based on the amount of the fee, for other than a small entity, in effect at the time the deficiency is paid in full.
* * * * *
15. Section 1.33 is amended by revising
paragraphs (a) and (b) to read as follows:
§ 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) The applicant, the assignee(s) of the entire interest (see §§ 3.71 and 3.73) or an attorney or agent of record (see § 1.34(b)) may specify a correspondence address to which communications about the application are to be directed. All notices, official letters, and other communications in the application will be directed to the correspondence address or, if no such correspondence address is specified, to an attorney or agent of record (see § 1.34(b)), or, if no attorney or agent is of record, to the applicant, so long as a post office address has been furnished in the application. Double correspondence with an applicant and an attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent is made of record and a correspondence address has not been specified, correspondence will be held with the one last made of record.
(b) Amendments and other papers filed in the application must be signed by:
(1) An attorney or agent of record appointed in compliance with § 1.34(b);
(2) A registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34(a);
(3) The assignee of record of the entire interest, if there is an assignee of record of the entire interest;
(4) An assignee of record of an undivided part interest, and any assignee(s) of the remaining interest and any applicant retaining an interest, if there is an assignee of record of an undivided part interest; or
(5) All of the applicants (§§ 1.42, 1.43 and 1.47) for patent, unless there is an assignee of record of the entire interest and such assignee has taken action in the application in accordance with §§ 3.71 and 3.73.
* * * * *
16. Section 1.41 is amended by revising
paragraph (a) to read as follows:
§ 1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual inventor or inventors.
(1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in § 1.53(d)(4) and § 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless a petition under this paragraph accompanied by the fee set forth in § 1.17(i) is filed supplying or changing the name or names of the inventor or inventors.
(2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless a petition under this paragraph accompanied by the fee set forth in § 1.17(q) is filed supplying or changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name or names of person or persons believed to be the actual inventor or inventors should be provided for identification purposes when the application papers pursuant to § 1.53(b) or (c) are filed. If no name of a person believed to be an actual inventor is so provided, the application should include an applicant identifier consisting of alphanumeric characters.
* * * * *
17. Section 1.47 is revised to read as
follows:
§ 1.47 Filing when an inventor refuses to sign or cannot be reached.
(a) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(i) and the last known address of the nonsigning inventor. The Patent and Trademark Office shall, except in a continued prosecution application under § 1.53(d), forward notice of the filing of the application to the nonsigning inventor at said address and publish notice of the filing of the application in the Official Gazette. The nonsigning inventor may subsequently join in the application on filing an oath or declaration complying with § 1.63.
(b) Whenever all of the inventors refuse
to execute an application for patent, or cannot be found or reached
after diligent effort, a person to whom an inventor has assigned
or agreed in writing to assign the invention or who otherwise
shows sufficient proprietary interest in the matter justifying
such action may make application for patent on behalf of and as
agent for all the inventors. The oath or declaration in such
an application must be accompanied by a petition including proof
of the pertinent facts, a showing that such action is necessary
to preserve the rights of the parties or to prevent irreparable
damage, the fee set forth in § 1.17(i), and the last
known address of all of the inventors. The Office shall, except
in a continued prosecution application under § 1.53(d),
forward notice of the filing of the application to all of the
inventors at the addresses stated in the application and publish
notice of the filing of the application in the Official Gazette.
An inventor may subsequently join in the application on filing
an oath or declaration complying with § 1.63.
18. Section 1.48 is revised to read as
follows:
§ 1.48 Correction of inventorship in a patent application, other than a reissue application.
(a) If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in an application, other than a reissue application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the application may be amended to name only the actual inventor or inventors. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1) A petition including a statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
(2) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or 1.47;
(3) The fee set forth in § 1.17(i); and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(b) If the correct inventors are named in a nonprovisional application, other than a reissue application, and the prosecution of the application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the application, an amendment must be filed deleting the name or names of the person or persons who are not inventors of the invention being claimed. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1) A petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application; and
(2) The fee set forth in § 1.17(i).
(c) If a nonprovisional application, other than a reissue application, discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1) A petition including a statement from each person being added as an inventor that the amendment is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
(2) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or 1.47;
(3) The fee set forth in § 1.17(i); and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(d) If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Such amendment must be accompanied by:
(1) A petition including a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2) The fee set forth in § 1.17(q).
(e) If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Such amendment must be accompanied by:
(1) A petition including a statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(2) The fee set forth in § 1.17(q); and
(3) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(f)(1) If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63, the later submission of an executed oath or declaration under § 1.63 during the pendency of the application will act to correct the earlier identification of inventorship.
(2) If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.
(g) The Office may require such other
information as may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
19. Section 1.51 is revised to read as
follows:
§ 1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of Patents and Trademarks.
(b) A complete application filed under § 1.53(b) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;
(2) An oath or declaration, see § 1.63 and § 1.68;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee, see § 1.16.
(c) A complete provisional application filed under § 1.53(c) comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if applicable),
(vi) The docket number used by the person filing the application to identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by the first paragraph of 35 U.S.C. 112, see § 1.71;
(3) Drawings, when necessary, see §§ 1.81 to 1.85; and
(4) The prescribed filing fee, see § 1.16.
(d) Applicants are encouraged to file
an information disclosure statement in nonprovisional applications.
See § 1.97 and § 1.98. No information disclosure
statement may be filed in a provisional application.
20. Section 1.52 is amended by revising
paragraphs (a), (c) and (d) to read as follows:
§ 1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the oath or declaration must be in the English language except as provided for in § 1.69 and paragraph (d) of this section, or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate. All papers which are to become a part of the permanent records of the Patent and Trademark Office must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper. All of the application papers must be presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic reproduction by use of digital imaging and optical character recognition. If the papers are not of the required quality, substitute typewritten or mechanically printed papers of suitable quality will be required. See § 1.125 for filing substitute typewritten or mechanically printed papers constituting a substitute specification when required by the Office.
* * * * *
(c) Any interlineation, erasure, cancellation or other alteration of the application papers filed should be made on or before the signing of any accompanying oath or declaration pursuant to § 1.63 referring to those application papers and should be dated and initialed or signed by the applicant on the same sheet of paper. Application papers containing alterations made after the signing of an oath or declaration referring to those application papers must be supported by a supplemental oath or declaration under § 1.67(c). After the signing of the oath or declaration referring to the application papers, amendments may only be made in the manner provided by § 1.121.
(d) An application may be filed in a
language other than English. An English translation of the non-English-language
application, a statement that the translation is accurate, and
the fee set forth in § 1.17(k) are required to be filed
with the application or within such time as may be set by the
Office.
21. Section 1.53 is revised to read as
follows:
§ 1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by § 1.51(c)(1) or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section,
(i) Provided that a petition requesting the conversion, with the fee set forth in § 1.17(q), is filed prior to the earliest of:
(A) Abandonment of the application filed under paragraph (b) of this section;
(B) Payment of the issue fee on the application filed under paragraph (b) of this section;
(C) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(D) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
(ii) The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application filed under paragraph (b) of this section.
(3) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under § 1.78(a)(3) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
(d) Application filing requirements - Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The prior nonprovisional application is either:
(A) Complete as defined by § 1.51(b) and filed on or after June 8, 1995; or
(B) The national stage of an international application in compliance with 35 U.S.C. 371 and filed on or after June 8, 1995; and
(ii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(b)(5) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed under this paragraph is:
(i) The basic filing fee as set forth in § 1.16;
and
(ii) Any additional § 1.16 fee due based on the number of claims remaining in the application after entry of any amendment accompanying the request for an application under this paragraph and entry of any amendments under § 1.116 unentered in the prior application which applicant has requested to be entered in the continued prosecution application.
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of a petition under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an application under this paragraph should be marked "Box CPA." Requests for an application under this paragraph filed by facsimile transmission should be clearly marked "Box CPA."
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a time period within which to correct the filing error.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph. Any petition under this paragraph must be accompanied by the fee set forth in § 1.17(i) in an application filed under paragraphs (b) or (d) of this section, and the fee set forth in § 1.17(q) in an application filed under paragraph (c) of this section. In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filing - Nonprovisional (including continued prosecution) application. If an application which has been accorded a filing date pursuant to paragraph (b) of this section, including a continuation, divisional, or continuation-in-part application, does not include the appropriate filing fee or an oath or declaration by the applicant pursuant to § 1.63 or § 1.175, or, if an application which has been accorded a filing date pursuant to paragraph (d) of this section does not include the appropriate filing fee, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, oath or declaration, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application. If the required filing fee is not timely paid, or if the processing and retention fee set forth in § 1.21(l) is not paid within one year of the date of mailing of the notification required by this paragraph, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, the oath or declaration in an application under paragraph (b) of this section, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application; or, if no basic filing fee has been paid, one year from the filing date to pay the processing and retention fee set forth in § 1.21(l) to prevent disposal of the application.
(g) Completion of application subsequent to filing -Provisional application. If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the appropriate filing fee or the cover sheet required by § 1.51(c)(1), applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application. If the required filing fee is not timely paid, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application.
(h) Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
(j) Filing date of international application.
The filing date of an international application designating the
United States of America is treated as the filing date in the
United States of America under PCT Article 11(3), except as provided
in 35 U.S.C. 102(e).
22. Section 1.54 is revised to read as
follows:
§ 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
(b) Applicant will be informed of the
application number and filing date by a filing receipt, unless
the application is an application filed under § 1.53(d).
23. Section 1.55 is amended by revising
paragraph (a) to read as follows:
§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and 172. The claim to priority need be in no special form and may be made by the attorney or agent if the foreign application is referred to in the oath or declaration as required by § 1.63. The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) must be filed in the case of an interference (§ 1.630), when necessary to overcome the date of a reference relied upon by the examiner, when specifically required by the examiner, and in all other situations, before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by a petition requesting entry and by the fee set forth in § 1.17(i). If the certified copy is not in the English language, a translation need not be filed except in the case of interference; or when necessary to overcome the date of a reference relied upon by the examiner; or when specifically required by the examiner, in which event an English language translation must be filed together with a statement that the translation of the certified copy is accurate.
* * * * *
24. Section 1.59 is revised to read as
follows:
§ 1.59 Expungement of information or copy of papers in application file.
(a)(1) Information in an application will not be expunged and returned, except as provided in paragraph (b) of this section. See § 1.618 for return of unauthorized and improper papers in interferences.
(2) Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment specifically incorporated into an executed oath or declaration under §§ 1.63 and 1.175) will not be expunged from the application file.
(b) Information, other than what is excluded by paragraph (a)(2) of this section, may be requested to be expunged and returned to applicant upon petition under this paragraph and payment of the petition fee set forth in § 1.17(i). Any petition to expunge and return information from an application must establish to the satisfaction of the Commissioner that the return of the information is appropriate.
(c) Upon request by an applicant and
payment of the fee specified in § 1.19(b), the Office
will furnish copies of an application, unless the application
has been disposed of (see § 1.53(e), (f) and (g)).
The Office cannot provide or certify copies of an application
that has been disposed of.
25. Section 1.60 is removed and reserved.
§ 1.60 [Reserved]
26. Section 1.62 is removed and reserved.
§ 1.62 [Reserved]
27. Section 1.63 is amended by revising
paragraphs (a) and (d) and adding a paragraph (e) to read as follows:
§ 1.63 Oath or declaration.
(a) An oath or declaration filed under § 1.51(b)(2) as a part of an application must:
(1) Be executed in accordance with either § 1.66 or § 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor by: full name, including the family name, and at least one given name without abbreviation together with any other given name or initial, and the residence, post office address and country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the invention claimed.
* * * * *
(d)(1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
(iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
(ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4) Where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
(e) A newly executed oath or declaration
must be filed in any continuation-in-part application, which application
may name all, more, or fewer than all of the inventors named in
the prior application. The oath or declaration in any continuation-in-part
application must also 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 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.
28. Section 1.67 is amended by revising
paragraph (b) to read as follows:
§ 1.67 Supplemental oath or declaration.
* * * * *
(b) A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
* * * * *
29. Section 1.69 is amended by revising
paragraph (b) to read as follows:
§ 1.69 Foreign language oaths and declarations.
* * * * *
(b) Unless the text of any oath or declaration
in a language other than English is a form provided or approved
by the Patent and Trademark Office, it must be accompanied by
an English translation together with a statement that the translation
is accurate, except that in the case of an oath or declaration
filed under § 1.63, the translation may be filed in
the Office no later than two months from the date applicant is
notified to file the translation.
30. Section 1.78 is amended by revising
paragraph (a) to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a)(1) A nonprovisional application may claim an invention disclosed in one or more prior filed copending nonprovisional applications or copending international applications designating the United States of America. In order for a nonprovisional application to claim the benefit of a prior filed copending nonprovisional application or copending international application designating the United States of America, each prior application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior application must be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or
(ii) Complete as set forth in § 1.51(b); or
(iii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or
(iv) Entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(l) within the time period set forth in § 1.53(f).
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application claiming the benefit of one or more prior filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain in the first sentence of the specification following the title a reference to each such prior application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior application. The identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number. Cross-references to other related applications may be made when appropriate (see § 1.14(a)).
(3) A nonprovisional application other than for a design patent may claim an invention disclosed in one or more prior filed copending provisional applications. Since a provisional application can be pending for no more than twelve months, the last day of pendency may occur on a Saturday, Sunday, or Federal holiday within the District of Columbia which for copendency would require the nonprovisional application to be filed on or prior to the Saturday, Sunday, or Federal holiday. In order for a nonprovisional application to claim the benefit of one or more prior filed copending provisional applications, each prior provisional application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior provisional application must be:
(i) Complete as set forth in § 1.51(c); or
(ii) Entitled to a filing date as set forth in § 1.53(c) and include the basic filing fee set forth in § 1.16(k).
(4) Any nonprovisional application claiming the benefit of one or more prior filed copending provisional applications must contain or be amended to contain in the first sentence of the specification following the title a reference to each such prior provisional application, identifying it as a provisional application, and including the provisional application number (consisting of series code and serial number).
* * * * *
31. Section 1.84 is amended by revising
paragraphs (a)(2)(i), (b), (c) and (g) to read as follows:
§ 1.84 Standards for drawings.
(a) * * *
(2) * * *
(i) The fee set forth in § 1.17(i);
* * * * *
(b) Photographs.
(1) Black and white. Photographs are not ordinarily permitted in utility patent applications. However, the Office will accept photographs in utility patent applications only after the granting of a petition filed under this paragraph which requests that photographs be accepted. Any such petition must include the following:
(i) The fee set forth in § 1.17(i); and
(ii) Three (3) sets of photographs. Photographs must either be developed on double weight photographic paper or be permanently mounted on bristol board. The photographs must be of sufficient quality so that all details in the drawings are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied. See paragraph (a)(2) of this section.
(c) Identification of drawings. Identifying indicia, if provided, should include the application number or the title of the invention, inventor's name, docket number (if any), and the name and telephone number of a person to call if the Office is unable to match the drawings to the proper application. This information should be placed on the back of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the top of the page. In addition, a reference to the application number, or, if an application number has not been assigned, the inventor's name, may be included in the left-hand corner, provided that the reference appears within 1.5 cm. (5/8 inch) from the top of the sheet.
* * * * *
(g) Margins. The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 ½ by 11 inch) drawing sheets.
* * * * *
32. Section 1.91 is revised to read as
follows:
§ 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of an application unless it:
(1) Substantially conforms to the requirements of § 1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The petition fee as set forth in § 1.17(i); and
(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of
paragraph (a) of this section, a model, working model, or other
physical exhibit may be required by the Office if deemed necessary
for any purpose in examination of the application.
33. Section 1.92 is removed and reserved.
§ 1.92 [Reserved]
34. Section 1.97 is amended by revising
paragraphs (c) through (e) to read as follows:
§ 1.97 Filing of information disclosure statement.
* * * * *
(c) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of either a final action under § 1.113, or a notice of allowance under § 1.311, whichever occurs first, and is accompanied by either:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
(1) A statement as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information disclosure statement; and
(3) The petition fee set forth in § 1.17(i).
(e) A statement under this section must state either:
(1) That each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
* * * * *
35. Section 1.101 is removed and reserved.
§ 1.101 [Reserved]
36. Section 1.102 is amended by revising
paragraph (a) to read as follows:
§ 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Commissioner to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Commissioner, will justify so advancing it.
* * * * *
37. Section 1.103 is amended by revising
paragraph (a) to read as follows:
§ 1.103 Suspension of action.
(a) Suspension of action by the Office will be granted for good and sufficient cause and for a reasonable time specified upon petition by the applicant and, if such cause is not the fault of the Office, the payment of the fee set forth in § 1.17(i). Action will not be suspended when a reply by the applicant to an Office action is required.
* * * * *
38. Section 1.104 is revised to read
as follows:
§ 1.104 Nature of examination.
(a) Examiner's action.
(1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner's action. The reasons for any adverse action or any objection or requirement will be stated and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
(3) An international-type search will be made in all national applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
(5) Copending applications will be considered by the examiner to be owned by, or subject to an obligation of assignment to, the same person if:
(i) The application files refer to assignments recorded in the Patent and Trademark Office in accordance with Part 3 of this chapter which convey the entire rights in the applications to the same person or organization; or
(ii) Copies of unrecorded assignments which convey the entire rights in the applications to the same person or organization are filed in each of the applications; or
(iii) An affidavit or declaration by the common owner is filed which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; or
(iv) Other evidence is submitted which establishes common ownership of the applications.
(b) Completeness of examiner's action. The examiner's action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
(c) Rejection of claims.
(1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made.
(5) The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter:
(i) Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and
(ii) Which was the same subject matter waived in the statutory invention registration.
(d) Citation of references.
(1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees must be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees must be stated, and such other data must be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon must be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, shall be given.
(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
(e) Reasons for allowance. If
the examiner believes that the record of the prosecution as a
whole does not make clear his or her reasons for allowing a claim
or claims, the examiner may set forth such reasoning. The reasons
shall be incorporated into an Office action rejecting other claims
of the application or patent under reexamination or be the subject
of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting
on the reasons for allowance within such time as may be specified
by the examiner. Failure to file such a statement does not give
rise to any implication that the applicant or patent owner agrees
with or acquiesces in the reasoning of the examiner.
39. Section 1.105 is removed and reserved.
§ 1.105 [Reserved]
40. Section 1.106 is removed and reserved.
§ 1.106 [Reserved]
41. Section 1.107 is removed and reserved.
§ 1.107 [Reserved]
42. Section 1.108 is removed and reserved.
§ 1.108 [Reserved]
43. Section 1.109 is removed and reserved.
§ 1.109 [Reserved]
44. Section 1.111 is amended by revising
paragraph (b) to read as follows:
§ 1.111 Reply by applicant or patent owner.
* * * * *
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
* * * * *
45. Section 1.112 and its heading are
revised to read as follows:
§ 1.112 Reconsideration before final action.
After reply by applicant or patent owner
(§ 1.111) to a non-final action, the application or
patent under reexamination will be reconsidered and again examined.
The applicant or patent owner will be notified if claims are
rejected, or objections or requirements made, in the same manner
as after the first examination. Applicant or patent owner may
reply to such Office action in the same manner provided in § 1.111,
with or without amendment, unless such Office action indicates
that it is made final (§ 1.113).
46. Section 1.113 is revised to read
as follows:
§ 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's or patent owner's reply is limited to appeal in the case of rejection of any claim (§ 1.191), or to amendment as specified in § 1.116. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
(b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
47. Section 1.115 is removed and reserved.
§ 1.115 [Reserved]
48. Section 1.116 is amended by revising
its heading and paragraph (a) to read as follows:
§ 1.116 Amendments after final action or appeal.
(a) After a final rejection or other final action (§ 1.113), amendments may be made cancelling claims or complying with any requirement of form expressly set forth in a previous Office action. Amendments presenting rejected claims in better form for consideration on appeal may be admitted. The admission of, or refusal to admit, any amendment after final rejection, and any related proceedings, will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under § 1.135.
* * * * *
49. Section 1.117 is removed and reserved.
§ 1.117 [Reserved]
50. Section 1.118 is removed and reserved.
§ 1.118 [Reserved]
51. Section 1.119 is removed and reserved.
§ 1.119 [Reserved]
52. Section 1.121 is revised to read
as follows:
§ 1.121 Manner of making amendments.
(a) Amendments in nonprovisional applications, other than reissue applications: Amendments in nonprovisional applications, excluding reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(1) Specification other than the claims. Except as provided in § 1.125, amendments to add matter to, or delete matter from, the specification, other than to the claims, may only be made as follows:
(i) Instructions for insertions: The precise point in the specification must be indicated where an insertion is to be made, and the matter to be inserted must be set forth.
(ii) Instructions for deletions: The precise point in the specification must be indicated where a deletion is to be made, and the matter to be deleted must be set forth or otherwise indicated.
(iii) Matter deleted by amendment can be reinstated only by a subsequent amendment presenting the previously deleted matter as a new insertion.
(2) Claims. Amendments to the claims may only be made as follows:
(i) Instructions for insertions and deletions: A claim may be amended by specifying only the exact matter to be deleted or inserted by an amendment and the precise point where the deletion or insertion is to be made, where the changes are limited to:
(A) Deletions and/or
(B) The addition of no more than five (5) words in any one claim; or
(ii) Claim cancellation or rewriting: A claim may be amended by directions to cancel the claim or by rewriting such claim with underlining below the matter added and brackets around the matter deleted. The rewriting of a claim in this form will be construed as directing the deletion of the previous version of that claim. If a previously rewritten claim is again rewritten, underlining and bracketing will be applied relative to the previous version of the claim, with the parenthetical expression "twice amended," "three times amended," etc., following the original claim number. The original claim number followed by that parenthetical expression must be used for the rewritten claim. No interlineations or deletions of any prior amendment may appear in the currently submitted version of the claim. A claim canceled by amendment (not deleted and rewritten) can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
(3) Drawings.
(i) Amendments to the original application drawings are not permitted. Any change to the application drawings must be by way of a substitute sheet of drawings for each sheet changed submitted in compliance with § 1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4) Any amendment to an application that is present in a substitute specification submitted pursuant to § 1.125 must be presented under the provisions of this paragraph either prior to or concurrent with submission of the substitute specification.
(5) The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(6) No amendment may introduce new matter into the disclosure of an application.
(b) Amendments in reissue applications: Amendments in reissue applications are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a newly added or rewritten paragraph(s) with markings pursuant to paragraph (b)(1)(iii) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in accordance with paragraph (b)(6) of this section and must include the entire text of each claim which is being amended by the current amendment and of each claim being added by the current amendment with markings pursuant to paragraph (b)(2)(i)(C) of this section, except that a patent claim or added claim should be cancelled by a statement cancelling the patent claim or added claim without presentation of the text of the patent claim or added claim.
(B) Patent claims must not be renumbered and the numbering of any claims added to the patent must follow the number of the highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made. If a claim is amended pursuant to paragraph (b)(2)(i)(A) of this section, a parenthetical expression "amended," "twice amended," etc., should follow the original claim number.
(ii) Each amendment submission must set forth the status (i.e., pending or cancelled) as of the date of the amendment, of all patent claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied by an explanation of the support in the disclosure of the patent for the amendment along with any additional comments on page(s) separate from the page(s) containing the amendment.
(3) Drawings.
(i) Amendments to the original patent drawings are not permitted. Any change to the patent drawings must be by way of a new sheet of drawings with the amended figures identified as "amended" and with added figures identified as "new" for each sheet changed submitted in compliance with § 1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4) The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(5) No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251. No amendment to the patent may introduce new matter or be made in an expired patent.
(6) All amendments must be made relative to the patent specification, including the claims, and drawings, which is in effect as of the date of filing of the reissue application.
(c) Amendments in reexamination proceedings:
Any proposed amendment to the description and claims in patents
involved in reexamination proceedings must be made in accordance
with § 1.530(d).
53. Section 1.122 is removed and reserved.
§ 1.122 [Reserved]
54. Section 1.123 is removed and reserved.
§ 1.123 [Reserved]
55. Section 1.124 is removed and reserved.
§ 1.124 [Reserved]
56. Section 1.125 is revised to read
as follows:
§ 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
(b) A substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by:
(1) A statement that the substitute specification includes no new matter; and
(2) A marked-up copy of the substitute specification showing the matter being added to and the matter being deleted from the specification of record.
(c) A substitute specification submitted under this section must be submitted in clean form without markings as to amended material.
(d) A substitute specification under
this section is not permitted in a reissue application or in a
reexamination proceeding.
57. Section 1.126 is revised to read
as follows:
§ 1.126 Numbering of claims.
The original numbering of the claims
must be preserved throughout the prosecution. When claims are
canceled the remaining claims must not be renumbered. When claims
are added, they must be numbered by the applicant consecutively
beginning with the number next following the highest numbered
claim previously presented (whether entered or not). When the
application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they
appear or in such order as may have been requested by applicant.
58. Section 1.133 is amended by revising
paragraph (b) to read as follows:
§ 1.133 Interviews.
* * * * *
(b) In every instance where reconsideration
is requested in view of an interview with an examiner, a complete
written statement of the reasons presented at the interview as
warranting favorable action must be filed by the applicant. An
interview does not remove the necessity for reply to Office actions
as specified in §§ 1.111 and 1.135.
59. The undesignated center heading
in Subpart B-National Processing Provisions, following § 1.133
is revised to read as follows:
TIME FOR REPLY BY APPLICANT; ABANDONMENT
OF APPLICATION
60. Section 1.134 is revised to read
as follows:
§ 1.134 Time period for reply to an Office action.
An Office action will notify the applicant
of any non-statutory or shortened statutory time period set for
reply to an Office action. Unless the applicant is notified in
writing that a reply is required in less than six months, a maximum
period of six months is allowed.
61. Section 1.135 is revised to read
as follows:
§ 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a
bona fide attempt to advance the application to final action,
and is substantially a complete reply to the non-final Office
action, but consideration of some matter or compliance with some
requirement has been inadvertently omitted, applicant may be given
a new time period for reply under § 1.134 to supply
the omission.
62. Section 1.136 is revised to read
as follows:
§ 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to § 1.193(b);
(iii) The reply is a request for an oral hearing submitted pursuant to § 1.194(b);
(iv) The reply is to a decision by the Board of Patent Appeals and Interferences pursuant to § 1.196, § 1.197 or § 1.304; or
(v) The application is involved in an interference declared pursuant to § 1.611.
(2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See § 1.136(b) for extensions of time relating to proceedings pursuant to §§ 1.193(b), 1.194, 1.196 or 1.197; § 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.550(c) for extension of time in reexamination proceedings; and § 1.645 for extension of time in interference proceedings.
(3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b) When a reply cannot be filed within
the time period set for such reply and the provisions of paragraph
(a) of this section are not available, the period for reply will
be extended only for sufficient cause and for a reasonable time
specified. Any request for an extension of time under this paragraph
must be filed on or before the day on which such reply is due,
but the mere filing of such a request will not effect any extension
under this paragraph. In no situation can any extension carry
the date on which reply is due beyond the maximum time period
set by statute. See § 1.304 for extension of time to
appeal to the U.S. Court of Appeals for the Federal Circuit or
to commence a civil action; § 1.645 for extension of
time in interference proceedings; and § 1.550(c) for
extension of time in reexamination proceedings.
63. Section 1.137 is revised to read
as follows:
§ 1.137 Revival of abandoned application or lapsed patent.
(a) Unavoidable. Where the delay in reply was unavoidable, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof;
(2) The petition fee as set forth in § 1.17(l);
(3) A showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (c) of this section.
(b) Unintentional. Where the delay in reply was unintentional, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof;
(2) The petition fee as set forth in § 1.17(m);
(3) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Commissioner may require additional information where there is a question whether the delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (c) of this section.
(c) In a design application, a utility application filed before June 8, 1995, or a plant application filed before June 8, 1995, any petition to revive pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any terminal disclaimer pursuant to this paragraph must also apply to any patent granted on any continuing application that contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to the application for which revival is sought. The provisions of this paragraph do not apply to lapsed patents.
(d) Any request for reconsideration or review of a decision refusing to revive an abandoned application or lapsed patent upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
(e) A provisional application, abandoned
for failure to timely respond to an Office requirement, may be
revived pursuant to this section so as to be pending for a period
of no longer than twelve months from its filing date. Under no
circumstances will a provisional application be regarded as pending
after twelve months from its filing date.
64. Section 1.139 is removed and reserved.
§ 1.139 [Reserved]
65. Section 1.142 is amended by revising
paragraph (a) to read as follows:
§ 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
* * * * *
66. Section 1.144 is revised to read
as follows:
§ 1.144 Petition from requirement for restriction.
After a final requirement for restriction,
the applicant, in addition to making any reply due on the remainder
of the action, may petition the Commissioner to review the requirement.
Petition may be deferred until after final action on or allowance
of claims to the invention elected, but must be filed not later
than appeal. A petition will not be considered if reconsideration
of the requirement was not requested (see § 1.181).
67. Section 1.146 is revised to read
as follows:
§ 1.146 Election of species.
In the first action on an application
containing a generic claim to a generic invention (genus) and
claims to more than one patentably distinct species embraced thereby,
the examiner may require the applicant in the reply to that action
to elect a species of his or her invention to which his or her
claim will be restricted if no claim to the genus is found to
be allowable. However, if such application contains claims directed
to more than a reasonable number of species, the examiner may
require restriction of the claims to not more than a reasonable
number of species before taking further action in the application.
68. Section 1.152 is revised to read
as follows:
§ 1.152 Design drawings.
(a) The design must be represented by a drawing that complies with the requirements of § 1.84, and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.
(1) Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing.
(2) Color photographs and color drawings are not permitted in design applications in the absence of a grantable petition pursuant to § 1.84(a)(2). Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must comply with § 1.84(b) and must not disclose environmental structure but must be limited to the design for the article claimed.
(b) Any detail shown in the ink or color drawings or photographs (formal or informal) deposited with the original application papers constitutes an integral part of the disclosed and claimed design, except as otherwise provided in this paragraph. This detail may include, but is not limited to, color or contrast, graphic or written indicia, including identifying indicia of a proprietary nature, surface ornamentation on an article, or any combination thereof.
(1) When any detail shown in informal drawings or photographs does not constitute an integral part of the disclosed and claimed design, a specific disclaimer must appear in the original application papers either in the specification or directly on the drawings or photographs. This specific disclaimer in the original application papers will provide antecedent basis for the omission of the disclaimed detail(s) in later-filed drawings or photographs.
(2) When informal color drawings or photographs
are deposited with the original application papers without a disclaimer
pursuant to paragraph (b)(1) of this section, formal color drawings
or photographs, or a black and white drawing lined to represent
color, will be required.
69. Section 1.154 is amended by revising
its heading and paragraph (a)(3) as to read follows:
§ 1.154 Arrangement of application elements.
(a) * * *
(3) Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
* * * * *
70. Section 1.155 is revised to read
as follows:
§ 1.155 Issue of design patents.
If, on examination, it appears that the applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant, or applicant's attorney or agent, calling for the payment of the issue fee (§ 1.18(b)). If this issue fee is not paid within three months of the date of the notice of allowance, the application shall be regarded as abandoned.
71. Section 1.163 is amended by revising
its heading and paragraph (b) to read as follows:
§ 1.163 Specification and arrangement of application elements.
* * * * *
(b) Two copies of the specification (including the claim) must be submitted, but only one signed oath or declaration is required.
* * * * *
72. Section 1.167 is revised to read
as follows:
§ 1.167 Examination.
Applications may be submitted by the
Patent and Trademark Office to the Department of Agriculture for
study and report.
73. Section 1.171 is revised to read
as follows:
§ 1.171 Application for reissue.
An application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.
74. Section 1.172 is amended by revising
paragraph (a) to read as follows:
§ 1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
* * * * *
75. Section 1.175 is revised to read
as follows:
§ 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.
(2) For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d) The oath or declaration required
by paragraph (a) of this section may be submitted under the provisions
of § 1.53(f).
76. Section 1.182 is revised to read
as follows:
§ 1.182 Questions not specifically provided for.
All situations not specifically provided
for in the regulations of this part will be decided in accordance
with the merits of each situation by or under the authority of
the Commissioner, subject to such other requirements as may be
imposed, and such decision will be communicated to the interested
parties in writing. Any petition seeking a decision under this
section must be accompanied by the petition fee set forth in § 1.17(h).
77. Section 1.184 is removed and reserved.
§ 1.184 [Reserved]
78. Section 1.191 is amended by revising
paragraphs (a) and (b) to read as follows:
§ 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and every owner of a patent under reexamination, any of whose claims has been twice or finally (§ 1.113) rejected, may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences by filing a notice of appeal and the fee set forth in § 1.17(b) within the time period provided under §§ 1.134 and 1.136 for reply.
(b) The signature requirement of § 1.33 does not apply to a notice of appeal filed under this section.
* * * * *
79. Section 1.192 is amended by revising
paragraph (a) to read as follows:
§ 1.192 Appellant's brief.
(a) Appellant must, within two months from the date of the notice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate. The brief must be accompanied by the fee set forth in § 1.17(c) and must set forth the authorities and arguments on which appellant will rely to maintain the appeal. Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown.
* * * * *
80. Section 1.193 is revised to read
as follows:
§ 1.193 Examiner's answer and reply brief.
(a)(1) The primary examiner may, within such time as may be directed by the Commissioner, furnish a written statement in answer to appellant's brief including such explanation of the invention claimed and of the references and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner finds that the appeal is not regular in form or does not relate to an appealable action, the primary examiner shall so state.
(2) An examiner's answer must not include a new ground of rejection, but if an amendment under § 1.116 proposes to add or amend one or more claims and appellant was advised that the amendment under § 1.116 would be entered for purposes of appeal and which individual rejection(s) set forth in the action from which the appeal was taken would be used to reject the added or amended claim(s), then the appeal brief must address the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised and the examiner's answer may include the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised. The filing of an amendment under § 1.116 which is entered for purposes of appeal represents appellant's consent that when so advised any appeal proceed on those claim(s) added or amended by the amendment under § 1.116 subject to any rejection set forth in the action from which the appeal was taken.
(b)(1) Appellant may file a reply brief to an examiner's answer within two months from the date of such examiner's answer. See § 1.136(b) for extensions of time for filing a reply brief in a patent application and § 1.550(c) for extensions of time for filing a reply brief in a reexamination proceeding. The primary examiner must either acknowledge receipt and entry of the reply brief or withdraw the final rejection and reopen prosecution to respond to the reply brief. A supplemental examiner's answer is not permitted, unless the application has been remanded by the Board of Patent Appeals and Interferences for such purpose.
(2) Where prosecution is reopened by the primary examiner after an appeal or reply brief has been filed, appellant must exercise one of the following two options to avoid abandonment of the application:
(i) File a reply under § 1.111, if the Office action is not final, or a reply under § 1.113, if the Office action is final; or
(ii) Request reinstatement of the appeal.
If reinstatement of the appeal is requested, such request must
be accompanied by a supplemental appeal brief, but no new amendments,
affidavits (§§ 1.130, 1.131 or 1.132) or other
evidence are permitted.
81. Section 1.194 is revised to read
as follows:
§ 1.194 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided without an oral hearing will receive the same consideration by the Board of Patent Appeals and Interferences as appeals decided after oral hearing.
(b) If appellant desires an oral hearing, appellant must file, in a separate paper, a written request for such hearing accompanied by the fee set forth in § 1.17(d) within two months from the date of the examiner's answer. If appellant requests an oral hearing and submits therewith the fee set forth in § 1.17(d), an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. See § 1.136(b) for extensions of time for requesting an oral hearing in a patent application and § 1.550(c) for extensions of time for requesting an oral hearing in a reexamination proceeding.
(c) If no request and fee for oral hearing
have been timely filed by appellant, the appeal will be assigned
for consideration and decision. If appellant has requested an
oral hearing and has submitted the fee set forth in § 1.17(d),
a day of hearing will be set, and due notice thereof given to
appellant and to the primary examiner. A hearing will be held
as stated in the notice, and oral argument will be limited to
twenty minutes for appellant and fifteen minutes for the primary
examiner unless otherwise ordered before the hearing begins.
If the Board decides that a hearing is not necessary, the Board
will so notify appellant.
82. Section 1.196 is amended by revising
paragraphs (b) and (d) to read as follows:
§ 1.196 Decision by the Board of Patent Appeals and Interferences.
* * * * *
(b) Should the Board of Patent Appeals and Interferences have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in the decision a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection shall not be considered final for purposes of judicial review. When the Board of Patent Appeals and Interferences makes a new ground of rejection, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the application will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the examiner reject the claims, appellant may again appeal pursuant to §§ 1.191 through 1.195 to the Board of Patent Appeals and Interferences.
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals and Interferences upon the same record. The request for rehearing must address the new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought. Where request for such rehearing is made, the Board of Patent Appeals and Interferences shall rehear the new ground of rejection and, if necessary, render a new decision which shall include all grounds of rejection upon which a patent is refused. The decision on rehearing is deemed to incorporate the earlier decision for purposes of appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision.
* * * * *
(d) The Board of Patent Appeals and Interferences may require appellant to address any matter that is deemed appropriate for a reasoned decision on the pending appeal. Appellant will be given a non-extendable time period within which to respond to such a requirement.
* * * * *
83. Section 1.197 is amended by revising
paragraphs (a) and (b) to read as follows:
§ 1.197 Action following decision.
(a) After decision by the Board of Patent Appeals and Interferences, the application will be returned to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application may require, to carry into effect the decision.
(b) Appellant may file a single request for rehearing within two months from the date of the original decision, unless the original decision is so modified by the decision on rehearing as to become, in effect, a new decision, and the Board of Patent Appeals and Interferences so states. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought. See § 1.136(b) for extensions of time for seeking rehearing in a patent application and § 1.550(c) for extensions of time for seeking rehearing in a reexamination proceeding.
* * * * *
84. Section 1.291 is amended by revising
paragraph (c) to read as follows:
§ 1.291 Protests by the public against pending applications.
* * * * *
(c) A member of the public filing a protest
in an application under paragraph (a) of this section will not
receive any communications from the Office relating to the protest,
other than the return of a self-addressed postcard which the member
of the public may include with the protest in order to receive
an acknowledgment by the Office that the protest has been received.
In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a protest. The limited involvement
of the member of the public filing a protest pursuant to paragraph
(a) of this section ends with the filing of the protest, and no
further submission on behalf of the protestor will be considered,
except for additional prior art, or unless such submission raises
new issues which could not have been earlier presented.
85. Section 1.293 is amended by revising
paragraph (c) to read as follows:
§ 1.293 Statutory invention registration.
* * * * *
(c) A waiver filed with a request for
a statutory invention registration will be effective, upon publication
of the statutory invention registration, to waive the inventor's
right to receive a patent on the invention claimed in the statutory
invention registration, in any application for an original patent
which is pending on, or filed after, the date of publication of
the statutory invention registration. A waiver filed with a request
for a statutory invention registration will not affect the rights
of any other inventor even if the subject matter of the statutory
invention registration and an application of another inventor
are commonly owned. A waiver filed with a request for a statutory
invention registration will not affect any rights in a patent
to the inventor which issued prior to the date of publication
of the statutory invention registration unless a reissue application
is filed seeking to enlarge the scope of the claims of the patent.
See also § 1.104(c)(5).
86. Section 1.294 is amended by revising
paragraph (b) to read as follows:
§ 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
* * * * *
(b) Applicant will be notified of the results of the examination set forth in paragraph (a) of this section. If the requirements of § 1.293 and this section are not met by the request filed, the notification to applicant will set a period of time within which to comply with the requirements in order to avoid abandonment of the application. If the application does not meet the requirements of 35 U.S.C. 112, the notification to applicant will include a rejection under the appropriate provisions of 35 U.S.C. 112. The periods for reply established pursuant to this section are subject to the extension of time provisions of § 1.136. After reply by the applicant, the application will again be considered for publication of a statutory invention registration. If the requirements of § 1.293 and this section are not timely met, the refusal to publish will be made final. If the requirements of 35 U.S.C. 112 are not met, the rejection pursuant to 35 U.S.C. 112 will be made final.
* * * * *
87. Section 1.304 is amended by revising
paragraph (a)(1) to read as follows:
§ 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from the date of the decision of the Board of Patent Appeals and Interferences. If a request for rehearing or reconsideration of the decision is filed within the time period provided under § 1.197(b) or § 1.658(b), the time for filing an appeal or commencing a civil action shall expire two months after action on the request. In interferences, the time for filing a cross-appeal or cross-action expires:
(i) 14 days after service of the notice of appeal or the summons and complaint; or
(ii) Two months after the date of decision of the Board of Patent Appeals and Interferences, whichever is later.
* * * * *
88. Section 1.312 is amended by revising
paragraph (b) to read as follows:
§ 1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph
(a) of this section filed after the date the issue fee is paid
must be accompanied by a petition including the fee set forth
in § 1.17(i) and a showing of good and sufficient reasons
why the amendment is necessary and was not earlier presented.
For reissue applications, see § 1.175(b), which requires
a supplemental oath or declaration to accompany the amendment.
89. Section 1.316 is revised to read
as follows:
§ 1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three
months from the date of the notice of allowance, the application
will be regarded as abandoned. Such an abandoned application
will not be considered as pending before the Patent and Trademark
Office.
90. Section 1.317 is revised to read
as follows:
§ 1.317 Lapsed patents; delayed payment of balance of issue fee.
If the issue fee paid is the amount specified
in the notice of allowance, but a higher amount is required at
the time the issue fee is paid, any remaining balance of the issue
fee is to be paid within three months from the date of notice
thereof and, if not paid, the patent will lapse at the termination
of the three-month period.
91. Section 1.318 is removed and reserved.
§ 1.318 [Reserved]
92. Section 1.324 is revised to read
as follows:
§ 1.324 Correction of inventorship in patent.
(a) Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Commissioner may, on petition, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 1.634.
(b) Any petition pursuant to paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor and from each person who is being deleted as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
(2) A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
(4) The fee set forth in § 1.20(b).
93. Section 1.352 is removed and reserved.
§ 1.352 [Reserved]
94. Section 1.366 is amended by revising
paragraphs (b) through (d) to read as follows:
§ 1.366 Submission of maintenance fees.
* * * * *
(b) A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in § 1.23 or by an authorization to charge a deposit account established pursuant to § 1.25. Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in § 1.362(d), (e), or (f). Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Commissioner in an expired patent pursuant to a petition filed under § 1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth § 1.23, or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or § 1.10 may be utilized in paying maintenance fees and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the following:
(1) The patent number; and
(2) The application number of the United States application for the patent on which the maintenance fee is being paid.
(d) Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 ½-, 7 ½-, or 11 ½-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c) of this section and should also include the original patent number.
* * * * *
95. Section 1.377 is amended by revising
paragraph (c) to read as follows:
§ 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
* * * * *
(c) Any petition filed under this section
must comply with the requirements of § 1.181(b) and
must be signed by an attorney or agent registered to practice
before the Patent and Trademark Office, or by the patentee, the
assignee, or other party in interest.
96. Section 1.378 is amended by revising
paragraph (d) to read as follows:
§ 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
* * * * *
(d) Any petition under this section must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
* * * * *
97. Section 1.425 is revised to read
as follows:
§ 1.425 Filing by other than inventor.
Where an international application which
designates the United States of America is filed and where one
or more inventors refuse to sign the Request for the international
application or cannot be found or reached after diligent effort,
the Request need not be signed by such inventor if it is signed
by another applicant. Such international application must be
accompanied by a statement explaining to the satisfaction of the
Commissioner the lack of the signature concerned.
98. Section 1.484 is amended by revising
paragraphs (d) through (f) to read as follows:
§ 1.484 Conduct of international preliminary examination.
* * * * *
(d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.
(e) If no written opinion under paragraph (d) of this section is necessary, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(f) An applicant will be permitted a
personal or telephone interview with the examiner, which must
be conducted during the non-extendable time limit for reply by
the applicant to a written opinion. Additional interviews may
be conducted where the examiner determines that such additional
interviews may be helpful to advancing the international preliminary
examination procedure. A summary of any such personal or telephone
interview must be filed by the applicant as a part of the reply
to the written opinion or, if applicant files no reply, be made
of record in the file by the examiner.
99. Section 1.485 is amended by revising
paragraph (a) to read as follows:
§ 1.485 Amendments by applicant during international preliminary examination.
(a) The applicant may make amendments at the time of filing of the Demand and within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must:
(1) Be made by submitting a replacement sheet for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled; and
(2) Include a description of how the replacement sheet differs from the replaced sheet.
* * * * *
100. Section 1.488 is amended by revising
paragraph (b)(3) to read as follows:
§ 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
* * * * *
(b) * * *
(3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
* * * * *
101. Section 1.492 is amended by adding
a new paragraph (g) to read as follows:
§ 1.492 National stage fees.
* * * * *
(g) If the additional fees required by
paragraphs (b), (c), and (d) of this section are not paid on presentation
of the claims for which the additional fees are due, they must
be paid or the claims cancelled by amendment, prior to the expiration
of the time period set for reply by the Office in any notice of
fee deficiency.
102. Section 1.494 is amended by revising
paragraph (c) to read as follows:
§ 1.494 Entering the national stage in the United States of America as a Designated Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before expiration of 20 months from the priority
date but omits:
(1) A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see § 1.497), applicant will be so notified and given a period of time within which to file the translation and/or oath or declaration in order to prevent abandonment of the application. The payment of the processing fee set forth in § 1.492(f) is required for acceptance of an English translation later than the expiration of 20 months after the priority date. The payment of the surcharge set forth in § 1.492(e) is required for acceptance of the oath or declaration of the inventor later than the expiration of 20 months after the priority date. A copy of the notification mailed to applicant should accompany any reply thereto submitted to the Office.
* * * * *
103. Section 1.495 is amended by revising
paragraph (c) to read as follows:
§ 1.495 Entering the national stage in the United States of America as an Elected Office.
* * * * *
(c) If applicant complies with paragraph (b) of this section before expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see § 1.497), applicant will be so notified and given a period of time within which to file the translation and/or oath or declaration in order to prevent abandonment of the application. The payment of the processing fee set forth in § 1.492(f) is required for acceptance of an English translation later than the expiration of 30 months after the priority date. The payment of the surcharge set forth in § 1.492(e) is required for acceptance of the oath or declaration of the inventor later than the expiration of 30 months after the priority date. A copy of the notification mailed to applicant should accompany any reply thereto submitted to the Office.
* * * * *
104. Section 1.510 is amended by revising
paragraph (e) to read as follows:
§ 1.510 Request for reexamination.
* * * * *
(e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530(d).
* * * * *
105. Section 1.530 is amended by removing
paragraph (e) and revising the section heading and paragraph (d)
to read as follows:
§ 1.530 Statement; amendment by patent owner.
* * * * *
(d) Amendments in reexamination proceedings. Amendments in reexamination proceedings are made by filing a paper, in compliance with paragraph (d)(5) of this section, directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a newly added or rewritten paragraph(s) with markings pursuant to paragraph (d)(1)(iii) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in accordance with paragraph (d)(8) of this section and must include the entire text of each claim which is being proposed to be amended by the current amendment and each proposed new claim being added by the current amendment with markings pursuant to paragraph (d)(2)(i)(C) of this section, except that a patent claim or previously proposed new claim should be cancelled by a statement cancelling the patent claim or proposed new claim without presentation of the text of the patent claim or proposed new claim.
(B) Patent claims must not be renumbered and the numbering of any new claims proposed to be added to the patent must follow the number of the highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made. If a claim is amended pursuant to paragraph (d)(2)(i)(A) of this section, a parenthetical expression "amended," "twice amended," etc., should follow the original claim number.
(ii) Each amendment submission must set forth the status (i.e., pending or cancelled) as of the date of the amendment, of all patent claims and of all new claims currently or previously proposed.
(iii) Each amendment, when submitted for the first time, must be accompanied by an explanation of the support in the disclosure of the patent for the amendment along with any additional comments on page(s) separate from the page(s) containing the amendment.
(3) No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment will be incorporated into the patent by certificate issued after the expiration of the patent.
(4) Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued.
(5) The form of amendments other than to the patent drawings must be in accordance with the following requirements. All amendments must be in the English language and must be legibly written either by a typewriter or mechanical printer in at least 11 point type in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, white paper. All amendments must be presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic reproduction by use of digital imaging or optical character recognition. If the amendments are not of the required quality, substitute typewritten or mechanically printed papers of suitable quality will be required. The papers, including the drawings, must have each page plainly written on only one side of a sheet of paper. The sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 and ½ by 11 inches). Each sheet must include a top margin of at least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch), and no holes should be made in the sheets as submitted. The lines must be double spaced, or one and one-half spaced. The pages must be numbered consecutively, starting with 1, the numbers being centrally located, preferably below the text, or above the text.
(6) Drawings.
(i) The original patent drawing sheets may not be altered. Any proposed change to the patent drawings must be by way of a new sheet of drawings with the amended figures identified as "amended" and with added figures identified as "new" for each sheet change submitted in compliance with § 1.84.
(ii) Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(7) The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(8) All amendments to the patent must
be made relative to the patent specification, including the claims,
and drawings, which is in effect as of the date of filing of the
request for reexamination.
106. Section 1.550 is amended by revising
paragraphs (a), (b) and (e) to read as follows:
§ 1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the reexamination order and expiration of the time for submitting any responses thereto, the examination will be conducted in accordance with §§ 1.104, 1.110 through 1.113 and 1.116, and will result in the issuance of a reexamination certificate under § 1.570.
(b) The patent owner will be given at least thirty days to respond to any Office action. Such response may include further statements in response to any rejections or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
* * * * *
(e) The reexamination requester will be sent copies of Office actions issued during the reexamination proceeding. After filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
(1) The active participation of the reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
(i) In accordance with § 1.510; or
(ii) Entered in the patent file prior to the date of the order to reexamine pursuant to § 1.525.
(2) Submissions by third parties, filed
after the date of the order to reexamine pursuant to § 1.525,
must meet the requirements of and will be treated in accordance
with § 1.501(a).
107. Section 1.770 is revised to read
as follows:
§ 1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent
term may be expressly withdrawn before a determination is made
pursuant to § 1.750 by filing in the Office, in duplicate,
a written declaration of withdrawal signed by the owner of record
of the patent or its agent. An application may not be expressly
withdrawn after the date permitted for reply to the final determination
on the application. An express withdrawal pursuant to this section
is effective when acknowledged in writing by the Office. The
filing of an express withdrawal pursuant to this section and its
acceptance by the Office does not entitle applicant to a refund
of the filing fee (§ 1.20(j)) or any portion thereof.
108. Section 1.785 is amended by revising
paragraph (d) to read as follows:
§ 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
* * * * *
(d) An application for extension shall be considered complete and formal regardless of whether it contains the identification of the holder of the regulatory approval granted with respect to the regulatory review period. When an application contains such information, or is amended to contain such information, it will be considered in determining whether an application is eligible for an extension under this section. A request may be made of any applicant to supply such information within a non-extendable period of not less than one month whenever multiple applications for extension of more than one patent are received and rely upon the same regulatory review period. Failure to provide such information within the period for reply set shall be regarded as conclusively establishing that the applicant is not the holder of the regulatory approval.
* * * * *
109. Section 1.804 is amended by revising
paragraph (b) to read as follows:
§ 1.804 Time of making an original deposit.
* * * * *
(b) When the original deposit is made
after the effective filing date of an application for patent,
the applicant must promptly submit a statement from a person in
a position to corroborate the fact, stating that the biological
material which is deposited is a biological material specifically
identified in the application as filed.
110. Section 1.805 is amended by revising
paragraph (c) to read as follows:
§ 1.805 Replacement or supplement of deposit.
* * * * *
(c) A request for a certificate of correction under this section shall not be granted unless the request is made promptly after the replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement or supplemental deposit;
(2) Includes a statement from a person in a position to corroborate the fact, and stating that the replacement or supplemental deposit is of a biological material which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted diligently --
(i) In the case of a replacement deposit, in making the deposit after receiving notice that samples could no longer be furnished from an earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit after receiving notice that the earlier deposit had become contaminated or had lost its capability to function as described in the specification;
(4) Includes a statement that the term of the replacement or supplemental deposit expires no earlier than the term of the deposit being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
* * * * *
PART 3 - ASSIGNMENT, RECORDING AND
RIGHTS OF ASSIGNEE
111. The authority citation for 37 CFR
Part 3 continues to read as follows:
Authority:
15 U.S.C. 1123; 35 U.S.C. 6.
112. Section 3.11 is revised to read
as follows:
§ 3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations, accompanied by completed cover sheets as specified in §§ 3.28 and 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in §§ 3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Commissioner.
(b) Executive Order 9424 of February
18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires
the several departments and other executive agencies of the Government,
including Government-owned or Government-controlled corporations,
to forward promptly to the Commissioner of Patents and Trademarks
for recording all licenses, assignments, or other interests of
the Government in or under patents or patent applications. Assignments
and other documents affecting title to patents or patent applications
and documents not affecting title to patents or patent applications
required by Executive Order 9424 to be filed will be recorded
as provided in this part.
113. Section 3.21 is revised to read
as follows:
§ 3.21 Identification of patents and patent applications.
An assignment relating to a patent must
identify the patent by the patent number. An assignment relating
to a national patent application must identify the national patent
application by the application number (consisting of the series
code and the serial number, e.g., 07/123,456). An assignment
relating to an international patent application which designates
the United States of America must identify the international application
by the international application number (e.g., PCT/US90/01234).
If an assignment of a patent application filed under § 1.53(b)
is executed concurrently with, or subsequent to, the execution
of the patent application, but before the patent application is
filed, it must identify the patent application by its date of
execution, name of each inventor, and title of the invention so
that there can be no mistake as to the patent application intended.
If an assignment of a provisional application under § 1.53(c)
is executed before the provisional application is filed, it must
identify the provisional application by name of each inventor
and title of the invention so that there can be no mistake as
to the provisional application intended.
114. Section 3.26 is revised to read
as follows:
§ 3.26 English language requirement.
The Office will accept and record non-English
language documents only if accompanied by an English translation
signed by the individual making the translation.
115. Section 3.27 is revised to read
as follows:
§ 3.27 Mailing address for submitting documents to be recorded.
(a) Except as provided in paragraph (b) of this section, documents and cover sheets to be recorded should be addressed to the Commissioner of Patents and Trademarks, Box Assignment, Washington, D.C. 20231, unless they are filed together with new applications or with a petition under § 3.81(b).
(b) A document required by Executive Order 9424 to be filed which does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)) must be addressed and mailed to the Commissioner of Patents and Trademarks, Box Government Interest, Washington, D.C. 20231.
116. Section 3.31 is amended by adding
paragraph (c) to read as follows:
§ 3.31 Cover sheet content.
* * * * *
(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:
(1) Indicate that the document is to be recorded on the Governmental Register, and, if applicable, that the document is to be recorded on the Secret Register (see § 3.58); and
(2) Indicate, if applicable, that the
document to be recorded is not a document affecting title (see
§ 3.41(b)).
117. Section 3.41 is revised to read
as follows:
§ 3.41 Recording fees.
(a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(q) of this chapter for trademarks.
(b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:
(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
(2) The document and cover sheet are
mailed to the Office in compliance with § 3.27(b).
118. Section 3.51 is revised to read
as follows:
§ 3.51 Recording date.
The date of recording of a document is
the date the document meeting the requirements for recording set
forth in this part is filed in the Office. A document which does
not comply with the identification requirements of § 3.21
will not be recorded. Documents not meeting the other requirements
for recording, for example, a document submitted without a completed
cover sheet or without the required fee, will be returned for
correction to the sender where a correspondence address is available.
The returned papers, stamped with the original date of receipt
by the Office, will be accompanied by a letter which will indicate
that if the returned papers are corrected and resubmitted to the
Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date
of recording of the document. The procedure set forth in § 1.8
or § 1.10 of this chapter may be used for resubmissions
of returned papers to have the benefit of the date of deposit
in the United States Postal Service. If the returned papers are
not corrected and resubmitted within the specified period, the
date of filing of the corrected papers will be considered to be
the date of recording of the document. The specified period to
resubmit the returned papers will not be extended.
119. Section 3.58 is added to read as
follows:
§ 3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.
(b) The Office will maintain a Secret
Register to record governmental interests required to be recorded
by Executive Order 9424. Any instrument to be recorded will be
placed on this Secret Register at the request of the department
or agency submitting the same. No information will be given concerning
any instrument in such record or register, and no examination
or inspection thereof or of the index thereto will be permitted,
except on the written authority of the head of the department
or agency which submitted the instrument and requested secrecy,
and the approval of such authority by the Commissioner of Patents
and Trademarks. No instrument or record other than the one specified
may be examined, and the examination must take place in the presence
of a designated official of the Patent and Trademark Office.
When the department or agency which submitted an instrument no
longer requires secrecy with respect to that instrument, it must
be recorded anew in the Departmental Register.
120. The undesignated center heading
in Part 3 - Assignment, Recording and Rights of Assignee, following
§ 3.61 is revised to read as follows:
ACTION TAKEN BY ASSIGNEE
121. Section 3.73 is amended by revising
its heading and paragraph (b) to read as follows:
§ 3.73 Establishing right of assignee to take action.
* * * * *
(b) When an assignee seeks to take action
in a matter before the Office with respect to a patent application,
trademark application, patent, registration, or reexamination
proceeding, the assignee must establish its ownership of the property
to the satisfaction of the Commissioner. Ownership is established
by submitting to the Office, in the Office file related to the
matter in which action is sought to be taken, documentary evidence
of a chain of title from the original owner to the assignee (e.g.,
copy of an executed assignment submitted for recording) or by
specifying (e.g., reel and frame number) where such evidence
is recorded in the Office. The submission establishing ownership
must be signed by a party authorized to act on behalf of the assignee.
Documents submitted to establish ownership may be required to
be recorded as a condition to permitting the assignee to take
action in a matter pending before the Office.
PART 5 - SECRECY OF CERTAIN INVENTIONS
AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
122. The authority citation for 37 CFR
Part 5 continues to read as follows:
Authority:
35 U.S.C. 6, 41, 181-188, as amended by the Patent Law Foreign
Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et
seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C.
2011 et seq.; and the Nuclear Non-Proliferation Act of
1978, 22 U.S.C. 3201 et seq.; and the delegations
in the regulations under these Acts to the Commissioner (15 CFR
370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
123. Section 5.1 is revised to read as
follows:
§ 5.1 Correspondence.
All correspondence in connection with
this part, including petitions, must be addressed to "Assistant
Commissioner for Patents (Attention Licensing and Review), Washington,
DC 20231."
124. Section 5.2 is amended by removing
paragraphs (c) and (d) and revising paragraph (b) to read as follows:
§ 5.2 Secrecy order.
* * * * *
(b) Any request for compensation as provided
in 35 U.S.C. 183 must not be made to the Patent and Trademark
Office, but directly to the department or agency which caused
the secrecy order to be issued.
125. Section 5.3 is amended by revising
paragraph (c) to read as follows:
§ 5.3 Prosecution of application under secrecy orders; withholding patent.
* * * * *
(c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted.
* * * * *
126. Section 5.4 is amended by revising
paragraphs (a) and (d) to read as follows:
§ 5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate.
* * * * *
(d) Appeal to the Secretary of Commerce,
as provided by 35 U.S.C. 181, from a secrecy order cannot
be taken until after a petition for rescission of the secrecy
order has been made and denied. Appeal must be taken within sixty
days from the date of the denial, and the party appealing, as
well as the department or agency which caused the order to be
issued, will be notified of the time and place of hearing.
127. Section 5.5 is amended by revising
paragraphs (b) and (e) to read as follows:
§ 5.5 Permit to disclose or modification of secrecy order.
* * * * *
(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate.
* * * * *
(e) Organizations requiring consent for
disclosure of applications under secrecy order to persons or organizations
in connection with repeated routine operation may petition for
such consent in the form of a general permit. To be successful
such petitions must ordinarily recite the security clearance status
of the disclosees as sufficient for the highest classification
of material that may be involved.
128. Section 5.6 is removed and reserved.
§ 5.6 [Reserved]
129. Section 5.7 is removed and reserved.
§ 5.7 [Reserved]
130. Section 5.8 is removed and reserved.
§ 5.8 [Reserved]
131. Section 5.11 is amended by revising
paragraphs (b), (c) and (e)(3) to read as follows:
§ 5.11 License for filing in a foreign country an application on an invention made in the United States or for transmitting international application.
* * * * *
(b) The license from the Commissioner of Patents and Trademarks referred to in paragraph (a) would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign patent application without separately complying with the regulations contained in 22 CFR Parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR Part 779 (Regulations of the Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs of the Department of Energy).
(c) Where technical data in the form of a patent application, or in any form, is being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, without the license from the Commissioner of Patents and Trademarks referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR Parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR Parts 768-799 (Export Administration Regulations of the Department of Commerce) and 10 CFR Part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term "exported" means export as it is defined in 22 CFR Part 120, 15 CFR Part 779 and activities covered by 10 CFR Part 810.
* * * * *
(e) * * *
(3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:
(i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign patent application;
(ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.
* * * * *
132. Section 5.12 is amended by revising
paragraph (b) to read as follows:
§ 5.12 Petition for license.
* * * * *
(b) Petitions for license should be presented
in letter form, and must include the petitioner's address and
full instructions for delivery of the requested license when it
is to be delivered to other than the petitioner. If expedited
handling of the petition under this paragraph is sought, the petition
must also include the fee set forth in § 1.17(h).
133. Section 5.13 is revised to read
as follows:
§ 5.13 Petition for license; no corresponding application.
If no corresponding national or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted.
134. Section 5.14 is amended by revising
paragraph (a) to read as follows:
§ 5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application.
* * * * *
135. Section 5.15 is amended by revising
paragraph (a), (b), (c) and (e) to read as follows:
§ 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to §§ 5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and supplements containing additional subject matter to, or divisions of, a foreign patent application, if such changes to the application do not alter the general nature of the invention in a manner which would require the United States application to have been made available for inspection under 35 U.S.C. 181. Grant of this license authorizing the export and filing of an application in a foreign country or the transmitting of an international application to any foreign patent agency or international patent agency when the subject matter of the foreign or international application corresponds to that of the domestic application. This license includes authority:
(1) To export and file all duplicate and formal application papers in foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and
(3) To take any action in the prosecution of the foreign or international application provided that the adding of subject matter or taking of any action under paragraphs (a)(1) or (2) of this section does not change the general nature of the invention disclosed in the application in a manner which would require such application to have been made available for inspection under 35 U.S.C. 181 by including technical data pertaining to:
(i) Defense services or articles designated in the United States Munitions List applicable at the time of foreign filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR Parts 121 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology useful in the production or utilization of special nuclear material or atomic energy, dissemination of which is subject to restrictions of the Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation Act of 1978, as implemented by the regulations for Unclassified Activities in Foreign Atomic Energy Programs, 10 CFR Part 810, in effect at the time of foreign filing.
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(b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 will be eligible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a foreign country or the transmitting of an international application to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications, and supplements to, file divisions of, and take any action in the prosecution of the foreign or international application, provided subject matter additional to that covered by the license is not involved.
(c) A license granted under § 5.12(b) pursuant to § 5.13 or § 5.14 shall have the scope indicated in paragraph (a) of this section, if it is so specified in the license. A petition, accompanied by the required fee (§ 1.17(h)), may also be filed to change a license having the scope indicated in paragraph (b) of this section to a license having the scope indicated in paragraph (a) of this section. No such petition will be granted if the copy of the material filed pursuant to § 5.13 or any corresponding United States application was required to be made available for inspection under 35 U.S.C. 181. The change in the scope of a license will be effective as of the date of the grant of the petition.
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(e) Any paper filed abroad or transmitted to an international patent agency following the filing of a foreign or international application which changes the general nature of the subject matter disclosed at the time of filing in a manner which would require such application to have been made available for inspection under 35 U.S.C. 181 or which involves the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) of this section must be separately licensed in the same manner as a foreign or international application. Further, if no license has been granted under § 5.12(a) on filing the corresponding United States application, any paper filed abroad or with an international patent agency which involves the disclosure of additional subject matter must be licensed in the same manner as a foreign or international application.
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136. Section 5.16 is removed and reserved.
§ 5.16 [Reserved]
137. Section 5.17 is removed and reserved.
§ 5.17 [Reserved]
138. Section 5.18 is revised to read
as follows:
§ 5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR Parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR Part 121). However, if a patent applicant complies with regulations issued by the Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner is required by the provisions of §§ 5.11 and 5.12 (22 CFR Part 125).
(b) When a patent application containing
subject matter on the Munitions List (22 CFR Part 121) is
subject to a secrecy order under § 5.2 and a petition
is made under § 5.5 for a modification of the secrecy
order to permit filing abroad, a separate request to the Department
of State for authority to export classified information is not
required (22 CFR Part 125).
139. Section 5.19 is revised to read
as follows:
§ 5.19. Export of technical data.
(a) Under regulations (15 CFR 770.10(j)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office.
(b) An export license is not required
for data contained in a patent application prepared wholly from
foreign-origin technical data where such application is being
sent to the foreign inventor to be executed and returned to the
United States for subsequent filing in the U.S. Patent and Trademark
Office (15 CFR 779A.3(e)).
140. Section 5.20 is revised to read
as follows:
§ 5.20 Export of technical data relating to sensitive nuclear technology.
Under regulations (10 CFR 810.7)
established by the United States Department of Energy, an application
filed in accordance with the regulations (§§ 5.11
through 5.25) of the Patent and Trademark Office and eligible
for foreign filing under 35 U.S.C. 184, is considered to
be information available to the public in published form and a
generally authorized activity for the purposes of the Department
of Energy regulations.
141. Section 5.25 is amended by removing
paragraph (c).
142. Section 5.31 is removed and reserved.
§ 5.31 [Reserved]
143. Section 5.32 is removed and reserved.
§ 5.32 [Reserved]
144. Section 5.33 is removed and reserved.
§ 5.33 [Reserved]
PART 7 - REGISTER OF GOVERNMENT INTERESTS
IN PATENTS
145. Part 7 is removed and reserved.
Part 7 [Reserved]
PART 10 - REPRESENTATION OF OTHERS
BEFORE THE PATENT AND TRADEMARK OFFICE
146. The authority citation for 37 CFR
Part 10 continues to read as follows:
Authority:
5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 6, 31,
32, 41.
147. Section 10.18 is revised to read
as follows:
§ 10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trademark Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this chapter.
(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that --
(1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and
(2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that --
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;
(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of paragraph (b)(1) of this section by a practitioner or non-practitioner may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Commissioner, or the Commissioner's designee, which may include, but are not limited to, any combination of --
(1) Holding certain facts to have been established;
(2) Returning papers;
(3) Precluding a party from filing a paper, or presenting or contesting an issue;
(4) Imposing a monetary sanction;
(5) Requiring a terminal disclaimer for the period of the delay; or
(6) Terminating the proceedings in the Patent and Trademark Office.
(d) Any practitioner violating the provisions
of this section may also be subject to disciplinary action. See
§ 10.23(c)(15).
148. Section 10.23 is amended by revising
paragraph (c)(15) to read as follows:
§ 10.23 Misconduct.
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(c) * * *
(15) Signing a paper filed in the Office in violation of the provisions of § 10.18 or making a scandalous or indecent statement in a paper filed in the Office.
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Date:_________ ______________________________________
Bruce A. Lehman
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks