The Provisional Application Cover Sheet in Microsoft Power Point format and The Declaration for Patent Application in Postscript file format are available here.
Changes to Implement 20-Year Patent Term and Provisional Applications
[BILLING CODE 3510-16]
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No. 950404087-5087-01]
RIN: 0651-AA76
Changes to Implement 20-Year Patent Term and Provisional
Applications
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Patent and Trademark Office (PTO) is amending
the rules of practice in patent cases to establish
procedures for: (1) filing and processing provisional
application papers; (2) calculating the length of any patent
term extension to which an applicant is entitled where the
issuance of a patent on an application filed on or after
June 8, 1995 (the implementation date of the 20-year patent
term provisions of the Uruguay Round Agreements Act), other
than for designs, was delayed due to interference
proceedings, the imposition of a secrecy order and/or
appellate review; and (3) implementing certain transitional
provisions contained in the Uruguay Round Agreements Act.
EFFECTIVE DATE: June 8, 1995.
FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or
John F. Gonzales, Senior Legal Advisors, Office of the
Deputy Assistant Commissioner for Patent Policy and
Projects, by telephone at (703)305-9285, by fax at
(703)308-6916 or by mail marked to their attention and
addressed to the Commissioner of Patents and Trademarks,
Box DAC, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act
(Public Law 103-465) was enacted on December 8, 1994.
Public Law 103-465 amends 35 U.S.C. 154 to provide that the
term of patent protection begins on the date of grant and
ends 20 years from the filing date of the application. The
amendment applies to all utility and plant patents issued on
applications having an actual United States application
filing date on or after June 8, 1995. Specifically,
35 U.S.C. 154(a)(2), as contained in Public Law 103-465,
provides that the patent term will begin on the date on
which the patent issues and will end twenty years from the
date on which the application was filed in the United
States. If the application contains a specific reference to
an earlier application under 35 U.S.C. 120, 121 or 365(c),
the patent term will end twenty years from the date on which
the earliest application referred to was filed. As amended
by Public Law 103-465, 35 U.S.C. 154 does not take into
account for determination of the patent term any application
on which priority is claimed under 35 U.S.C. 119, 365(a) or
365(b).
Under 35 U.S.C. 154(b)(1), as contained in Public Law
103-465, if the issuance of an original patent is delayed
due to interference proceedings under 35 U.S.C. 135(a) or
because the application is placed under a secrecy order
under 35 U.S.C. 181, the term of the patent shall be
extended for the period of delay, but in no case more than
five (5) years.
Under 35 U.S.C. 154(b)(2), as contained in Public Law
103-465, if the issuance of a patent is delayed due to
appellate review by the Board of Patent Appeals and
Interferences or by a Federal court and the patent is issued
pursuant to a decision in the review reversing an adverse
determination of patentability, the term of the patent shall
be extended for a period of time but in no case more than
five (5) years. However, a patent shall not be eligible for
extension under 35 U.S.C. 154(b)(2) if the patent is subject
to a terminal disclaimer due to the issuance of another
patent claiming subject matter that is not patentably
distinct from that under appellate review.
Under 35 U.S.C. 154(b)(3)(B) and 154(b)(3)(C), as contained
in Public Law 103-465, the period of extension under
35 U.S.C. 154(b)(2) shall be reduced by any time
attributable to appellate review before the expiration of
three (3) years from the filing date of the application and
for any period of time during which the applicant for patent
did not act with due diligence, as determined by the
Commissioner.
Under 35 U.S.C. 154(b)(4), as contained in Public Law
103-465, the total duration of all extensions of a patent
under 35 U.S.C. 154(b) shall not exceed five (5) years.
The provisions for patent term extension under
35 U.S.C. 154(b) are separate from and in addition to the
patent term extension provisions of 35 U.S.C. 156. The
patent term extension provisions of 35 U.S.C. 154(b) are
designed to compensate the patent owner for delays in
issuing a patent, whereas the patent term extension
provisions of 35 U.S.C. 156 are designed to restore term
lost to premarket regulatory review after the grant of a
patent. In order to prevent a term extension under
35 U.S.C. 154(b) from precluding a term extension under
35 U.S.C. 156, Public Law 103-465 amends 35 U.S.C. 156(a)(2)
to specify that the term has never been extended under
35 U.S.C. 156(e)(1).
The 20-year patent term provision is contained in
35 U.S.C. 154, as amended by Public Law 103-465. Section
154 of title 35, United States Code, applies to utility and
plant patents, but not to design patents. The term of a
design patent is defined in 35 U.S.C. 173 as fourteen (14)
years from the date of grant. Therefore, the patent term
and patent term extension provisions set forth in
35 U.S.C. 154, as amended by Public Law 103-465, do not
apply to patents for designs.
In addition, Public Law 103-465 establishes a domestic
priority system. In accordance with the provisions of the
Paris Convention for the Protection of Industrial Property,
the term of a patent cannot include the Paris Convention
priority period. Public Law 103-465 provides a mechanism to
enable applicants to quickly and inexpensively file
provisional applications. Applicants will be entitled to
claim the benefit of priority in a given application based
upon a previously filed provisional application in the
United States. The domestic priority period will not count
in the measurement of the term.
Section 111 of title 35, United States Code, was amended by
Public Law 103-465 to provide for the filing of a
provisional application on or after June 8, 1995. Section
41(a)(1) of title 35, United States Code, was amended by
Public Law 103-465 to provide a $150.00 filing fee for each
provisional application, subject to a fifty (50) percent
reduction for a small entity. The requirements for
obtaining a filing date for a provisional application are
the same as those which previously existed for an
application filed under 35 U.S.C. 111, except that no claim
or claims as set forth in 35 U.S.C. 112, second paragraph,
is required. Moreover, no oath/declaration as set forth in
35 U.S.C. 115 is required. The provisional application is
also not subject to the provisions of 35 U.S.C. 131, 135 and
157, i.e., a provisional application will not be examined
for patentability, placed in interference or made the
subject of a statutory invention registration. Further, the
provisional application will automatically be abandoned no
later than twelve (12) months after its filing date and will
not be subject to revival to restore it to pending status
beyond a date which is after twelve (12) months from its
filing date. A provisional application will not be entitled
to claim priority benefits based on any other application
under 35 U.S.C. 119, 120, 121 or 365.
Also, Public Law 103-465 amended 35 U.S.C. 119 to allow an
applicant to claim the benefit of the filing date of one or
more copending provisional applications in a later filed
application for patent under 35 U.S.C. 111(a) or 363. The
later filed application for patent under 35 U.S.C. 111(a) or
363 must be filed by an inventor or inventors named in the
copending provisional application not later than 12 months
after the date on which the provisional application was
filed and must contain or be amended to contain a specific
reference to the provisional application. The provisional
application must disclose an invention which is claimed in
the application for patent under 35 U.S.C. 111(a) or 363 in
the manner provided by the first paragraph of 35 U.S.C. 112.
In addition, the provisional application must be pending on
the filing date of the application for patent under
35 U.S.C. 111(a) or 363 and the filing fee set forth in
subparagraph (A) or (C) of 35 U.S.C. 41(a)(1) must be paid.
Since 35 U.S.C. 154(a)(3), as contained in Public Law
103-465, excludes from the determination of the patent term
any application on which priority is claimed under
35 U.S.C. 119, 365(a) or 365(b), the filing date of a
provisional application is not considered in determining the
term of any patent.
Section 119(e)(1) of title 35, United States Code, provides
that if all of the conditions of 35 U.S.C. 119(e)(1) and
(e)(2) are met, an application for patent filed under
35 U.S.C. 111(a) or 363 shall have the same effect as though
filed on the date of the provisional application. Thus, the
effective United States filing date of an application for
patent filed under 35 U.S.C. 111(a), and entitled to
benefits under 35 U.S.C. 119(e), is the filing date of the
provisional application. Any patent granted on such an
application, is prior art under 35 U.S.C. 102(e) as of the
filing date of the provisional application.
Likewise, the effective United States filing date of a
patent issued on an international application filed under
35 U.S.C. 363, and entitled to benefits under 35 U.S.C.
119(e), is the filing date of the provisional application,
except for the purpose of applying that patent as prior art
under 35 U.S.C. 102(e). For that purpose only, 35 U.S.C.
102(e) defines the filing date of the international
application as the date the requirements of 35 U.S.C.
371(c)(1), (c)(2) and (c)(4) were fulfilled.
Public Law 103-465 further includes transitional provisions
for limited reexamination in certain applications pending
for two (2) years or longer as of June 8, 1995, taking into
account any reference to any earlier application under
35 U.S.C. 120, 121 or 365(c). The transitional provisions
also permit examination of more than one independent and
distinct invention in certain applications pending for
three (3) years or longer as of June 8, 1995, taking into
account any reference to any earlier application under
35 U.S.C. 120, 121 or 365(c). These transitional provisions
are not applicable to any application which is filed after
June 8, 1995, regardless of whether the application is a
continuing application.
The amendments to title 35 relating to 20-year patent term,
patent term extension, provisional applications and the
transitional provisions are effective on the date which is
six (6) months after the date of enactment, i.e., on June 8,
1995.
A Notice of Proposed Rulemaking was published in the Federal
Register at 59 FR 63951 (December 12, 1994) and in the
Patent and Trademark Office Official Gazette at 1170 Off.
Gaz. Pat. Office 377-390 (January 3, 1995).
Forty-nine written comments were received in response to the
Notice of Proposed Rulemaking. A public hearing was held at
9:30 a.m. on February 16, 1995. Fourteen individuals
offered oral comments at the hearing. The forty-nine
written comments and a transcript of the hearing are
available for public inspection in the Special Program Law
Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, Room 520, Crystal Park I, 2011
Crystal Drive, Arlington, Virginia, and are available on the
Internet through anonymous file transfer protocol (ftp),
address: ftp.uspto.gov.
The following includes a discussion of the rules being added
or amended, the reasons for those additions and amendments
and an analysis of the comments received in response to the
Notice of Proposed Rulemaking.
Changes in text: The final rules contain numerous changes
to the text of the rules as proposed for comment. Those
changes are discussed below. Familiarity with the Notice of
Proposed Rulemaking is assumed.
Section 1.9(a)(1) is being changed for clarity to define a
national application as a U.S. application for patent which
was either filed in the Office under 35 U.S.C. 111, or which
entered the national stage from an international application
after compliance with 35 U.S.C. 371. Also, a new paragraph
(a)(3) is being added to define the term "nonprovisional
application" as a U.S. national application for patent which
was either filed in the Office under 35 U.S.C. 111(a), or
which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
The proposed deletion of 1.60 is being withdrawn.
Therefore, 1.17(i) is being changed to retain the
reference to 1.60.
Section 1.17(q) is being changed to delete the fifty (50)
percent reduction for small entities in the $50.00 fee
established for filing a petition under 1.48 in a
provisional application and a petition to accord a
provisional application a filing date or to convert an
application filed under 1.53(b)(1) to a provisional
application.
Sections 1.17(r) and (s) are being changed to include a
fifty (50) percent reduction for small entities in the fees
established for entry of a submission after final rejection
under 1.129(a) and for each additional invention requested
to be examined under 1.129(b). In the final rule, the fee
required by 1.17(r) and 1.17(s) from a small entity is
$365.00. The fee required from other than a small entity is
$730.00.
The elimination of the small entity reduction in 1.17(q)
and the addition of the small entity reduction in 1.17(r)
and (s) are the result of additional review, which resulted
in the conclusion that the fees established for the
transitional procedures in 1.129(a) and (b) may be
reduced by fifty (50) percent for small entities. However,
the petition fees required by 1.17(q) are not subject to
the fifty (50) percent reduction for small entities.
The proposed deletion of the retention fee practice set
forth in former 1.53(d), now redesignated 1.53(d)(1), is
being withdrawn. Therefore, 1.21(l) is being retained and
amended to refer to 1.53(d)(1). Also, the proposed change
in the text to 1.17(n) is being withdrawn, since 1.60 is
being retained.
Section 1.28(a) is being changed to clarify the procedure
for establishing status as a small entity in a
nonprovisional application claiming benefit under 35 U.S.C.
119(e), 120, 121, or 365(c) of a prior application. In such
cases, applicants may file a new verified statement or they
may rely on a verified statement filed in the prior
application, if status as a small entity is still proper and
desired. If applicants intend to rely on a verified
statement filed in the prior application, applicants must
include in the nonprovisional application either a reference
to the verified statement filed in the prior application or
a copy of the verified statement filed in the prior
application. A verified statement in compliance with
existing 1.27 is required to be filed in each provisional
application in which it is desired to pay reduced fees.
Section 1.45(c), first sentence, is being changed for
clarity to refer to a "nonprovisional" application.
Section 1.48 is being changed to include a new paragraph (e)
setting forth the procedure for deleting the name of a
person who was erroneously named as an inventor in a
provisional application. The procedure requires an
amendment deleting the name of the person who was
erroneously named accompanied by: a petition including a
statement of facts verified by the person whose name is
being deleted establishing that the error occurred without
deceptive intention; the fee set forth in 1.17(q); and the
written consent of any assignee. The first sentences of
1.48(a)-(c) are also being changed for clarity to refer
to a "nonprovisional" application.
Section 1.51(a)(2)(i) is being changed to require that the
provisional application cover sheet include the residence of
each named inventor and, 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, the name of the U.S.
Government agency and Government contract number. The
residence of each named inventor is information which is
necessary to identify those provisional applications which
must be reviewed by the PTO for foreign filing licenses. If
the invention disclosed in the provisional application was
made by an agency of the U.S. Government or under a contract
with an agency of the U.S. Government, the security review
for that application should already have been done by that
agency of the U.S. Government. Therefore, identification of
those particular provisional applications on the cover sheet
will reduce the number of applications which the PTO must
forward to other agencies of the U.S. Government for
security review.
Section 1.53(b)(1) is being changed to retain the reference
to 1.60.
Section 1.53(b)(2)(ii) is being changed to require that any
petition and petition fee to convert a 1.53(b)(1)
application to a provisional application be filed in the
1.53(b)(1) application prior to the earlier of the
abandonment of the 1.53(b)(1) application, the payment of
the issue fee, the expiration of twelve (12) months after
the filing date of the 1.53(b)(1) application, or the
filing of a request for a statutory invention registration
under 1.293. Where the 1.53(b)(1) application was
abandoned before the expiration of twelve (12) months after
the filing date of the application, a petition to convert
the application to a provisional application may be filed in
the 1.53(b)(1) application if the petition to convert is
filed prior to the expiration of twelve (12) months after
the filing date of the 1.53(b)(1) application and is
accompanied by an appropriate petition to revive an
abandoned application under 1.137.
Section 1.53(b)(2)(iii) is being changed to indicate that
the requirements of 1.821-1.825 regarding application
disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.
Section 1.53(d)(1) is being changed to retain the retention
fee practice. The proposal to delete the retention fee
practice set forth in 1.53(d) is being withdrawn.
The first sentences of 1.55(a) and (b) are being changed
for clarity to refer to a "nonprovisional" application.
Also, 1.55(a) and (b) are being changed to clarify that
the nonprovisional application may claim the benefit of one
or more prior foreign applications or one or more
applications for inventor's certificate.
Section 1.59 is being changed to retain the reference to the
retention fee set forth in 1.21(l) and to clarify that the
retention fee practice applies only to applications filed
under 1.53(b)(1).
The proposal to delete 1.60 is being withdrawn.
Therefore, 1.60 is being retained and amended to clarify
in the title of the section and in paragraph (b)(1) that the
procedure set forth in the section is only available for
filing a continuation or divisional application if the prior
application was a nonprovisional application and complete as
set forth in 1.51(a)(1). Also, paragraph (b)(4) is being
amended to delete the requirement that the statement which
must accompany the copy of the prior application include the
language that "no amendments referred to in the oath or
declaration filed to complete the prior application
introduced new matter therein." The requirement is
unnecessary because any amendment filed to complete the
prior application would be considered a part of the original
disclosure of the prior application and, by definition,
could not contain new matter. Also, paragraph (b)(4) is
being amended to refer to 1.17(i).
Section 1.62(a) is being changed to refer to a prior
complete "nonprovisional" application and to clarify that a
continuing application may be filed under 1.62 after
payment of the issue fee if a petition under 1.313(b)(5)
is granted in the prior application. Section 1.62(a) is
also being changed to clarify the existing practice that the
request for a 1.62 application must include identification
of the inventors named in the prior application.
Section 1.63(a) is being changed for clarity to refer to an
oath or declaration filed as a part of a "nonprovisional"
application.
Section 1.67(b) is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.78(a)(1) and (a)(2) are being changed to refer to
a "nonprovisional" application and to clarify that the
nonprovisional application may claim the benefit of one or
more prior copending nonprovisional applications or
international applications designating the United States of
America. Section 1.78(a)(1)(ii) is being changed to retain
the reference to 1.60. Section 1.78(a)(1)(iii) is being
retained and amended to refer to 1.53(b)(1) and
1.53(d)(1).
Sections 1.78(a)(3) and (a)(4) are being changed to refer to
a "nonprovisional" application and to clarify that the
nonprovisional application may claim the benefit of one or
more prior copending provisional applications.
Section 1.78(a)(3) is also being changed to remind
applicants and practitioners that when the last day of
pendency of a provisional application falls on a Saturday,
Sunday, or Federal holiday within the District of Columbia,
any nonprovisional application claiming benefit of the
provisional application must be filed prior to the Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 111(b)(5) of title 35, United States Code, states
that a provisional application is abandoned twelve months
after its filing date. Sections 119(e)(1) and (e)(2) of
title 35, United States Code, require that a nonprovisional
application claiming benefit of a prior provisional
application be filed not later than twelve months after the
date on which the provisional application was filed and that
the provisional application be pending on the filing date of
the nonprovisional application. Under 1.6 and 1.10, no
filing dates are accorded to applications on a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Thus, if a provisional application is abandoned by operation
of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal
holiday within the District of Columbia, a nonprovisional
application claiming benefit of the provisional application
under 35 U.S.C. 119(e) must be filed no later than the
preceding day which is not a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Section 1.78(a)(4) is also being changed to delete the
requirement that the reference in the nonprovisional
application to the provisional application indicate the
relationship of the applications. As a result of the
change, 1.78(a)(4) provides that a nonprovisional
application claiming benefit of one or more provisional
applications must contain a reference to each provisional
application, identifying it as a provisional application and
including the provisional application number (consisting of
series code and serial number). However, the section does
not require the nonprovisional application to identify the
nonprovisional application as a continuation, divisional or
continuation-in-part application of the provisional
application.
Section 1.83(a) is being changed to delete the proposed
redesignation of paragraph (a) and to delete proposed
paragraph (a)(2). Also, 1.83(a) and (c) are being
changed for clarity to refer to a "nonprovisional"
application. Further, 1.83(c) is being changed to remove
the reference to paragraph (a)(1).
Section 1.101 is being changed for clarity to refer to a
"nonprovisional" application.
Sections 1.129(a) and (b) are being changed to identify the
effective date of 35 U.S.C. 154(a)(2) as June 8, 1995.
Further, 1.129(a) is being changed to provide that the
first and second submissions and fees set forth in 1.17(r)
must be filed prior to the filing of an Appeal Brief, rather
than prior to the filing of the Notice of Appeal, and prior
to abandonment of the application. The requirement that the
fee set forth in 1.17(r) be filed within one month of the
notice refusing entry is being deleted. Section 1.129(a) is
also being changed to provide that the finality of the final
rejection is automatically withdrawn upon the timely filing
of the submission and payment of the fee set forth in
1.17(r). The language indicating that the submission
would be entered and considered after timely payment of the
fee set forth in 1.17(r) "to the extent that it would have
been entered and considered if made prior to final
rejection" is being deleted. In view of the magnitude of
the fee set forth in 1.17(r), the next PTO action
following timely payment of the fee set forth in 1.17(r)
will be equivalent to a first action in a continuing
application. Under existing PTO practice, it would not be
proper to make final a first Office action in a continuing
application where the continuing application contains
material which was presented in the earlier application
after final rejection or closing of prosecution but was
denied entry because (1) new issues were raised that
required further consideration and/or search, or (2) the
issue of new matter was raised. The identical procedure
will apply to examination of a submission considered as a
result of the procedure under 1.129(a). Thus, under
1.129(a), if the first submission after final rejection
was initially denied entry in the application because
(1) new issues were raised that required further
consideration and/or search, or (2) the issue of new matter
was raised, then the next action in the application will not
be made final. Likewise, if the second submission after
final rejection was initially denied entry in the
application because (1) new issues were raised that required
further consideration and/or search, or (2) the issue of new
matter was raised, then the next action in the application
will not be made final. In view of 35 U.S.C. 132, no
amendment considered as a result of the payment of the fee
set forth in 1.17(r) may introduce new matter into the
disclosure of the application.
Section 1.129(b)(1) is being changed to identify the date
which is two months prior to the effective date of
35 U.S.C. 154(a)(2) as April 8, 1995. Section 1.129(b)(1)
is also being changed to clarify in subsection (ii) that the
examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to
actions by the applicant.
Section 1.129(b)(2) is being changed to delete the
identification of the period provided for applicants to
respond to a notification under 1.129(b) as one month.
The time period for response will be identified in any
written notification under 1.129(b) and will usually be
one month, but in no case will it be less than thirty days.
The period may be extended under 1.136(a). The language
is also being changed to provide that applicant may respond
to the notification by (i) electing the invention or
inventions to be searched and examined, if no election has
been made prior to the notice, and paying the fee set forth
in 1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant
elects, (ii) confirming an election made prior to the notice
and paying the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in addition to the one invention which applicant
previously elected, or (iii) filing a petition under
1.129(b)(2) traversing the requirement without regard to
whether the requirement has been made final. No petition
fee is required. The section is also being changed to
provide that if the petition under 1.129(b)(2) is filed in
a timely manner, the original time period for electing and
paying the fee set forth in 1.17(s) will be deferred and
any decision on the petition affirming or modifying the
requirement will set a new time period to elect the
invention or inventions to be searched and examined and to
pay the fee set forth in 1.17(s) for each independent and
distinct invention claimed in the application in excess of
one which applicant elects.
Section 1.129(c) is being changed to clarify that the
provisions of 1.129(a) and (b) are not applicable to any
application filed after June 8, 1995. However, any
application filed on June 8, 1995 would be subject to a
20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after June 8,
1995, except design applications, the requirement that a
terminal disclaimer accompany any petition under 1.137(a)
not filed within six (6) months of the date of the
abandonment of the application. The language "filed before
June 8, 1995" and "filed on or after June 8, 1995" as used
in the amended rule, refer to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365. No change to 1.137 was
proposed in the Notice of Proposed Rulemaking. However, in
all applications filed on or after June 8, 1995, except
design applications, any delay in filing a petition under
1.137(a) will automatically result in the loss of patent
term. The loss of patent term will be the incentive for
applicants to promptly file any petition to revive.
Therefore, no need is seen for requiring a terminal
disclaimer in such applications. It would amount to a
penalty if a terminal disclaimer was required.
Section 1.316 is being amended by revising paragraph (d) to
eliminate, in all applications filed on or after June 8,
1995, except design applications, the requirement that a
terminal disclaimer accompany any petition under 1.316(b)
not filed within six (6) months of the date of the
abandonment of the application. Acceptance of a late
payment of an issue fee in a design application is
specifically provided for in 1.155. Therefore, 1.316
does not apply to design applications. The language "filed
before June 8, 1995" as used in the amended rule, refers to
the actual United States filing date, without reference to
any claim for benefit under 35 U.S.C. 120, 121 or 365. No
change to 1.316 was proposed in the Notice of Proposed
Rulemaking. However, in all applications filed on or after
June 8, 1995, except design applications, any delay in
filing a petition under 1.316(b) will automatically result
in the loss of patent term. The loss of patent term will be
the incentive for applicants to promptly file any petition
under 1.316(b). Therefore, no need is seen for requiring
a terminal disclaimer in such applications. It would amount
to a penalty if a terminal disclaimer was required.
Section 1.317 is being amended by removing and reserving
paragraph (d) to eliminate the requirement that a terminal
disclaimer accompany any petition under 1.317(b) not filed
within six (6) months of the date of lapse of the patent.
No change to 1.317 was proposed in the Notice of Proposed
Rulemaking. However, the delay in filing a petition under
1.317(b) does not result in any gain of patent term.
Therefore, no reason is seen for requiring a terminal
disclaimer in such cases.
Section 1.701(a) is being changed to identify the
implementation date as June 8, 1995, and to clarify that a
proceeding under 35 U.S.C. 135(a) is an interference
proceeding.
Section 1.701(b) is being changed to provide that the term
of a patent entitled to an extension under 1.701 shall be
extended for the sum of the periods of delay calculated
under paragraphs (c)(1), (c)(2), (c)(3) and (d) of 1.701
and the extension will run from the expiration date of the
patent. The reference to a terminal disclaimer is being
deleted to be consistent with 1.701(a)(3) and to avoid any
confusion.
Section 1.701(c)(1)(i) is being changed for clarity by
deleting the phrase "if any" after the first occurrence of
"interference" and by inserting the same phrase after the
phrase "the number of days."
Section 1.701(c)(1)(ii) is being changed to clarify that the
period referred to ends on the "date of the termination of
the suspension" rather than on the date of the next PTO
communication reopening prosecution.
Section 1.701(d)(1) is being amended to clarify that the
"time" referred to is time "during the period of appellate
review".
Section 1.701(d)(2) is being amended to clarify that the
Commissioner, under the broad discretion granted by
35 U.S.C. 154(b)(3)(C), has decided to limit consideration
of applicant's due diligence only to acts occurring during
the period of appellate review. The supplementary
information published in the Notice of Proposed Rulemaking
contained examples of what might be considered a lack of due
diligence for purposes of 1.701(d)(2) as proposed.
Specifically, the supplementary information identified
requests for extensions of time to respond to Office
communications, submission of a response which is not fully
responsive to an Office communication, and filing of
informal applications as examples. In view of the comments
received and the language adopted in the final rules, those
examples are withdrawn. Acts which the Commissioner
considers to constitute prima facie evidence of lack of due
diligence under 1.701(d)(2) are suspensions at applicant's
request under 1.103(a) during the period of appellate
review and abandonments during the period of appellate
review.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1
and 3, are being amended as indicated below:
Section 1.1 is being amended to add a paragraph (i) to
provide a special "Box Provisional Patent Application"
address to assist the Mail Room in separating and processing
provisional applications and mail relating thereto.
Section 1.9 is being amended to redesignate paragraph (a) as
paragraph (a)(1) and to define a national application as a
U.S. application for patent which was either filed in the
Office under 35 U.S.C. 111, or which entered the national
stage from an international application after compliance
with 35 U.S.C. 371. A new paragraph (a)(2) is being added
to define the term "provisional application" as a U.S.
national application filed under 35 U.S.C. 111(b). Also, a
new paragraph (a)(3) is being added to define the term
"nonprovisional application" as a U.S. national application
for patent which was either filed in the Office under
35 U.S.C. 111(a), or which entered the national stage from
an international application after compliance with 35 U.S.C.
371.
Sections 1.12 and 1.14 are being amended to replace the
references to 1.17(i)(1) with references to 1.17(i).
Sections 1.16(a)-(e) and (g) are being amended to clarify
that those sections do not apply to provisional
applications. A complete provisional application does not
require claims. However, provisional applications may be
filed with one or more claims as part of the application.
Nevertheless, no additional claim fee or multiple dependent
claim fee will be required in a provisional application.
Section 1.16(f) is being amended to insert the words "basic
fee". Section 1.16(e) refers to "the basic filing fee".
Current Office practice allows a design application to be
filed without the design filing fee or the oath/declaration
as set forth in 1.53(d)(1). The change to 1.16(f) is
merely for clarification. In addition, 1.16(a) is being
amended to replace the word "cases" with the word
"applications", since the word "applications" is used
elsewhere in the rule.
Section 1.16 is also being amended to add a new paragraph
(k) which lists the basic filing fee for a provisional
application as $75.00 for a small entity (see 1.9(c)-(f))
or $150.00 for other than a small entity as contained in
Public Law 103-465. Since the filing fee for a provisional
application is established by Public Law 103-465 as a
35 U.S.C. 41(a) fee, the filing fee for a provisional
application will be subject to the fifty (50) percent
reduction provided for in 35 U.S.C. 41(h).
Further, 1.16 is being amended to add a new paragraph (l)
which establishes the surcharge required by new 1.53(d)(2)
for filing the basic filing fee or the cover sheet required
by new 1.51(a)(2) for a provisional application at a time
later than the provisional application filing date as $25.00
for a small entity or $50.00 for other than a small entity.
Section 1.17(h) is being amended to clarify that the $130.00
petition fee for filing a petition for correction of
inventorship under 1.48 applies to all patent
applications, except provisional applications.
Paragraph (i)(1) is being redesignated as paragraph (i) and
paragraph (i)(2) is being removed. The fee for a petition
under 1.102 to make an application special has been placed
in paragraph (i). The words "of this part", in 1.17,
paragraphs (h) and (i), are being deleted, since the
paragraphs currently refer to sections in parts other than
Part 1. Section 1.17(i) is also being amended to clarify
that the fee set forth in paragraph (i) for filing a
petition to accord a filing date under 1.53 applies to all
patent applications, except provisional applications.
A new 1.17(q) is being added to establish a petition fee
of $50.00 for filing a petition for correction of
inventorship under 1.48 in a provisional application and
for filing a petition to accord a provisional application a
filing date or to convert an application filed under
1.53(b)(1) to a provisional application. The petition fee
set forth in 1.17(q) is not reduced for a small entity.
New 1.17(r) and (s) are being added to establish the fees
for entry of a submission after final rejection under
1.129(a) and for each additional invention requested to be
examined under 1.129(b), respectively. These fees have
been set at $365.00 for a small entity and $730.00 for other
than a small entity.
Section 1.21(l) is being amended to refer to 1.53(d)(1).
Section 1.28(a) is being amended to clarify the procedure
for establishing status as a small entity in a
nonprovisional application claiming benefit under
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application. In such cases, applicants may file a new
verified statement or rely on a verified statement filed in
the prior application, if status as a small entity is still
proper and desired. If applicants intend to rely on a
verified statement filed in the prior application,
applicants must include in the nonprovisional application
either a reference to the verified statement filed in the
prior application or a copy of the verified statement filed
in the prior application. Status as a small entity may be
established in a provisional application by complying with
existing 1.27.
Section 1.45(c) is being amended to clarify that the first
sentence applies to a "nonprovisional" application.
Section 1.45(c) is also being amended to add a second
sentence relating to joint inventors named in a provisional
application. The second sentence states that each inventor
named in a provisional application must have made a
contribution to the subject matter disclosed in the
provisional application. All that 1.45(c), second
sentence, requires is that if a person is named as an
inventor in a provisional application, that person must have
made a contribution to the subject matter disclosed in the
provisional application.
Sections 1.48(a)-(c) are being amended to specify that the
procedures for correcting an error in inventorship set forth
in those sections apply to nonprovisional applications. New
paragraph (d) is being added to establish a procedure for
adding the name of an inventor in a provisional application,
where the name was originally omitted without deceptive
intent. Paragraph (d) does not require the verified
statement of facts by the original inventor or inventors,
the oath or declaration by each actual inventor in
compliance with 1.63 or the consent of any assignee as
required in paragraph (a). Instead, the procedure requires
the filing of a petition identifying the name or names of
the inventors to be added and including a statement that the
name or names of the inventors were omitted through error
without deceptive intention on the part of the actual
inventor(s). The statement would be required to be verified
if made by a person not registered to practice before the
PTO. The statement could be signed by a registered
practitioner of record in the application or acting in a
representative capacity under 1.34(a). The $50.00
petition fee set forth in 1.17(q) would also be required.
New paragraph (e) is also being added setting forth the
procedure for deleting the name of a person who was
erroneously named as an inventor in a provisional
application. The procedure requires an amendment deleting
the name of the person who was erroneously named accompanied
by: a petition including a statement of facts verified by
the person whose name is being deleted establishing that the
error occurred without deceptive intention; the fee set
forth in 1.17(q); and the written consent of any assignee.
Section 1.51 is being amended to redesignate 1.51(a) as
1.51(a)(1) and to include a new paragraph (a)(2)
identifying the required parts of a complete provisional
application. As set forth in 1.51(a)(2), a complete
provisional application includes a cover sheet, a
specification as prescribed in 35 U.S.C. 112, first
paragraph, any necessary drawings and the provisional
application filing fee. A suggested cover sheet format for
a provisional application is included as an Appendix A to
this Notice of Final Rulemaking and is available from the
PTO free of charge to the public. However, the rule does
not require the applicant to use the PTO suggested cover
sheet. Any paper containing the information required in
1.51(a)(2)(i) will be acceptable. The cover sheet is
required to identify the paper as a provisional application
and to provide the information which is necessary for the
PTO to prepare the provisional application filing receipt.
Also, the residence of each named inventor and, if the
invention disclosed in the provisional application was made
by an agency of the U.S. Government or under a contract with
an agency of the U.S. Government, the name of the U.S.
Government agency and Government contract number must be
identified on the cover sheet.
Section 1.51(b) is being amended to indicate that an
information disclosure statement is not required and may not
be filed in a provisional application. Any information
disclosure statements filed in a provisional application
will either be returned or disposed of at the convenience of
the Office. An information disclosure statement filed in a
1.53(b)(1) application which has been converted to a
provisional application will be retained in the application
after the conversion, if the information disclosure
statement was filed before the petition required by
1.53(b)(2)(ii) was filed.
The title of 1.53 and paragraph (a) are being amended to
refer to application number, rather than application serial
number. The term "application number" is found in current
1.5(a).
Section 1.53(b) is being redesignated as 1.53(b)(1) and is
being amended to refer to 1.17(i) rather than 1.17(i)(1)
to conform to the change therein.
A new 1.53(b)(2) is being added to set forth the
requirements for obtaining a filing date for a provisional
application. Section 1.53(b)(2) states that a filing date
will be accorded to a provisional application as of the date
the specification as prescribed by 35 U.S.C. 112, first
paragraph, any necessary drawings, and the name of each
inventor of the subject matter disclosed are filed in the
PTO. The filing date requirements for a provisional
application set forth in new paragraph (b)(2) parallel the
existing requirements set forth in former paragraph (b), now
redesignated paragraph (b)(1), except that no claim is
required. In order to minimize the cost of processing
provisional applications and to reduce the handling of
provisional applications, amendments, other than those
required to make the provisional application comply with
applicable regulations, are not permitted after the filing
date of the provisional application.
Section 1.53(b)(2)(i) is being added requiring all
provisional applications to be filed with a cover sheet
identifying the application as a provisional application.
The section also indicates that the PTO will treat an
application as having been filed under 1.53(b)(1), unless
the application is identified as a provisional application
on filing. A provisional application, which is identified
as such on filing, but which does not include all of the
information required by 1.51(a)(2)(i) would still be
treated as a provisional application. However, the omitted
information and a surcharge would be required to be
submitted at a later date under new 1.53(d)(2).
Section 1.53(b)(2)(ii) is being added to establish a
procedure for converting an application filed under
1.53(b)(1) to a provisional application. The section
requires that a petition requesting the conversion and a
petition fee be filed in the 1.53(b)(1) application prior
to the earlier of the abandonment of the 1.53(b)(1)
application, the payment of the issue fee, the expiration of
twelve (12) months after the filing date of the 1.53(b)(1)
application, or the filing of a request for a statutory
invention registration under 1.293. The grant of any such
petition would not entitle applicant to a refund of the fees
properly paid in the application filed under 1.53(b)(1).
Section 1.53(b)(2)(iii) is being added to call attention to
the provisions of Public Law 103-465 which prohibit any
provisional application from claiming a right of priority
under 35 U.S.C. 119 or 365(a) or the benefit of an earlier
filing date under 35 U.S.C. 120, 121 or 365(c) of any other
application. The section also calls attention to the
provisions of Public Law 103-465 which provide that no claim
for benefit of an earlier filing date may be made in a
design application based on a provisional application and
that no request for a statutory invention registration may
be filed in a provisional application. Section
1.53(b)(2)(iii) further specifies that the requirements of
1.821-1.825 are not mandatory for provisional
applications. However, applicants are reminded that an
invention being claimed in an application filed under
35 U.S.C. 111(a) or 365 which claims benefit under
35 U.S.C. 119(e) of a provisional application must be
disclosed in the provisional application in the manner
provided by the first paragraph of 35 U.S.C. 112. Voluntary
compliance with the requirements of 1.821-1.825 in the
provisional application is recommended, in order to ensure
that support for the invention claimed in the
35 U.S.C.111(a) application can be readily ascertained in
the provisional application.
Section 1.53(c) is being amended to require that any request
for review of a refusal to accord an application a filing
date be made by way of a petition accompanied by the fee set
forth in 1.17(i), if the application was filed under
1.53(b)(1), or by the fee set forth in 1.17(q), if the
application was filed under 1.53(b)(2). This reflects the
current practice set forth in the Manual of Patent Examining
Procedure (MPEP), section 506.02 (Sixth Edition, Jan. 1995)
with regard to any request for review of a refusal to accord
a filing date for an application. The PTO will continue its
current practice of refunding the petition fee, if the
refusal to accord the requested filing date is found to have
been a PTO error.
Section 1.53(d) is being redesignated as 1.53(d)(1).
Section 1.53(d)(2) is being added to provide that a
provisional application may be filed without the basic
filing fee and without the complete cover sheet required by
1.51(a)(2). In such a case, the applicant will be
notified and given a period of time in which to file the
missing fee, and/or cover sheet and to pay the surcharge set
forth in 1.16(l).
Section 1.53(e) is being redesignated as 1.53(e)(1) and
amended to refer to 1.53(b)(1). Also, a new 1.53(e)(2)
is being added to indicate that a provisional application
will not be given a substantive examination and will be
abandoned no later than twelve (12) months after its filing
date.
Sections 1.55(a) and (b) are being amended to clarify that
the sections apply to nonprovisional applications and to
clarify that a nonprovisional application may claim the
benefit of one or more prior foreign applications or one or
more applications for inventor's certificate. Also,
1.55(a) is being amended to replace the reference to
35 U.S.C. 119 with a reference to 35 U.S.C. 119(a)-(d). In
addition, the reference to 1.17(i)(1) in 1.55(a) is
being replaced by a reference to 1.17(i) to be consistent
with the change to 1.17. Section 1.55(b) is also being
amended to refer to 35 U.S.C. 119(d) to conform to the
paragraph designations contained in Public Law 103-465.
Section 1.59 is being amended to clarify that the retention
fee practice set forth in 1.53(d)(1) applies only to
applications filed under 1.53(b)(1).
Section 1.60 is being amended to clarify in the title of the
section and in paragraph (b)(1) that the procedure set forth
in the section is only available for filing a continuation
or divisional application if the prior application was a
nonprovisional application and complete as set forth in
1.51(a)(1). Paragraph (b)(4) is being amended to delete
the requirement that the statement which must accompany the
copy of the prior application include the language that "no
amendments referred to in the oath or declaration filed to
complete the prior application introduced new matter
therein." The requirement is unnecessary because any
amendment filed to complete the prior application would be
considered a part of the original disclosure of the prior
application and, by definition, could not contain new
matter. Also, paragraph (b)(4) is being amended to refer to
1.17(i).
Section 1.62(a) is being amended to clarify that the
procedure set forth in the section is only available for
filing a continuation, continuation-in-part, or divisional
application of a prior nonprovisional application which is
complete as defined in 1.51(a)(1). Section 1.62(a) is
also being amended to clarify that a continuing application
may be filed under 1.62 after payment of the issue fee if
a petition under 1.313(b)(5) is granted in the prior
application and that the request for a 1.62 application
must include identification of the inventors named in the
prior application. The phrase "Serial number, filing date"
in 1.62(a) is being changed to "application number."
Section 1.62(e) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17. Also, the term "application
serial number" in 1.62(e) is being changed to "application
number."
Section 1.63(a) is being amended to replace the reference to
1.51(a)(2) with a reference to 1.51(a)(1)(ii) in order
to conform with the changes in 1.51 and to refer to an
oath or declaration filed as a part of a nonprovisional
application.
Section 1.67(b) is being amended to replace the reference to
1.53(d) with a reference to 1.53(d)(1) in order to
conform with the changes in 1.53. Furthermore, the
references to 1.53(b) and 1.118 are being deleted to make
clear that the new matter exclusion applies to all
applications including those filed under 1.60 and 1.62.
Also, the section is being amended to refer to a
nonprovisional application.
Sections 1.78(a)(1) and (a)(2) are being amended to clarify
that the sections apply to nonprovisional applications
claiming the benefit of one or more copending nonprovisional
applications or international applications designating the
United States of America. Section 1.78(a)(1)(iii) is being
amended to refer to 1.53(b)(1) and 1.53(d)(1). Section
1.78(a)(2) is also being amended to eliminate the use of
serial number and filing date as an identifier for a prior
application. The section will require that the prior
application be identified by application number (consisting
of the series code and serial number) or international
application number and international filing date.
Sections 1.78(a)(3) and (a)(4) are being added to set forth
the conditions under which a nonprovisional application may
claim the benefit of one or more prior copending provisional
applications. The later filed nonprovisional application
must be an application other than for a design patent and
must be copending with each provisional application. There
must be a common inventor named in the prior provisional
application and the later filed nonprovisional application.
Each prior provisional application must be complete as set
forth in 1.51(a)(2), or entitled to a filing date as set
forth in 1.53(b)(2) and include the basic filing fee.
Section 1.78(a)(3) also includes the warning that when the
last day of pendency of a provisional application falls on a
Saturday, Sunday, or Federal holiday within the District of
Columbia, any nonprovisional application claiming benefit of
the provisional application must be filed prior to the
Saturday, Sunday, or Federal holiday within the District of
Columbia. A provisional application may be abandoned by
operation of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which
case, a nonprovisional application claiming benefit of the
provisional application under 35 U.S.C. 119(e) must be filed
no later than the preceding day which is not a Saturday,
Sunday, or Federal holiday within the District of Columbia.
Section 1.78(a)(4) is also being added to provide that a
nonprovisional application claiming benefit of one or more
provisional applications must contain a reference to each
provisional application, identifying it as a provisional
application and including the provisional application number
(consisting of series code and serial number). The section
does not require the nonprovisional application to identify
the nonprovisional application as a continuation, divisional
or continuation-in-part application of the provisional
application.
Sections 1.83(a) and (c) are being amended to clarify that
the sections apply to nonprovisional applications.
Section 1.97(d) is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.101(a) is being amended to indicate that the
section applies to nonprovisional applications.
Section 1.102(d) is being amended to replace the reference
to 1.17(i)(2) with a reference to 1.17(i) to be
consistent with the change to 1.17.
Section 1.103(a) is amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.129 is being added to set forth the procedure for
implementing certain transitional provisions contained in
Public Law 103-465. Section 1.129(a) provides for limited
reexamination of applications pending for 2 years or longer
as of June 8, 1995, taking into account any reference to any
earlier application under 35 U.S.C. 120, 121 or 365(c). An
applicant will be entitled to have a first submission
entered and considered on the merits after final rejection
if the submission and the fee set forth in 1.17(r) are
filed prior to the filing of an Appeal Brief and prior to
abandonment of the application. Section 1.129(a) also
provides that the finality of the final rejection is
automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in 1.17(r).
After submission and payment of the fee set forth in
1.17(r), the next PTO action on the merits may be made
final only under the conditions currently followed by the
PTO for making a first action in a continuing application
final. If a subsequent final rejection is made in the
application, applicant would be entitled to have a second
submission entered and considered on the merits under the
same conditions set forth for consideration of the first
submission. Section 1.129(a) defines the term "submission"
as including, but not limited to, an information disclosure
statement, an amendment to the written description, claims
or drawings, and a new substantive argument or new evidence
in support of patentability. For example, the submission
may include an amendment, a new substantive argument and an
information disclosure statement. In view of the fee set
forth in 1.17(r), any information disclosure statement
previously refused consideration in the application because
of applicant's failure to comply with 1.97(c) or (d) or
which is filed as part of either the first or second
submission will be treated as though it had been filed
within one of the time periods set forth in 1.97(b) and
will be considered without the petition and petition fee
required in 1.97(d), if it complies with the requirements
of 1.98. In view of 35 U.S.C. 132, no amendment
considered as a result of the payment of the fee set forth
in 1.17(r) may introduce new matter into the disclosure of
the application.
Section 1.129(b)(1) is being added to provide for
examination of more than one independent and distinct
invention in certain applications pending for 3 years or
longer as of June 8, 1995, taking into account any reference
to any earlier application under 35 U.S.C. 120, 121 or
365(c). Under 1.129(b)(1), a requirement for restriction
or for the filing of divisional applications would only be
made or maintained in the application after June 8, 1995,
if: (1) the requirement was made in the application or in
an earlier application relied on under 35 U.S.C. 120, 121 or
365(c) prior to April 8, 1995; (2) the examiner has not made
a requirement for restriction in the present or parent
application prior to April 8, 1995, due to actions by the
applicant; or (3) the required fee for examination of each
additional invention was not paid. Under 1.129(b)(2), if
the application contains claims to more than one independent
and distinct invention, and no requirement for restriction
or for the filing of divisional applications can be made or
maintained, applicant will be notified and given a time
period to (i) elect the invention or inventions to be
searched and examined, if no election has been made prior to
the notice, and pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one which applicant elects, (ii) in
situations where an election was made in response to a
requirement for restriction that cannot be maintained,
confirm the election made prior to the notice and pay the
fee set forth in 1.17(s) for each independent and distinct
invention claimed in the application in addition to the one
invention which applicant previously elected, or (iii) file
a petition under 1.129(b)(2) traversing the requirement
without regard to whether the requirement has been made
final. No petition fee is required. Section 1.129(b)(2)
also provides that if the petition is filed in a timely
manner, the original time period for electing and paying the
fee set forth in 1.17(s) will be deferred and any decision
on the petition affirming or modifying the requirement will
set a new time period to elect the invention or inventions
to be searched and examined and to pay the fee set forth in
1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant
elects. Under 1.129(b)(3), each additional invention for
which the required fee set forth in 1.17(s) has not been
paid will be withdrawn from consideration under 1.142(b).
An applicant who desires examination of an invention so
withdrawn from consideration can file a divisional
application under 35 U.S.C. 121.
Section 1.129(c) is being added to clarify that the
provisions of 1.129(a) and (b) are not applicable to any
application filed after June 8, 1995. However, any
application filed on June 8, 1995, would be subject to a
20-year patent term.
Section 1.137 is being amended by revising paragraph (c) to
eliminate, in all applications filed on or after
June 8, 1995, except design applications, the requirement
that a terminal disclaimer accompany any petition under
1.137(a) not filed within six (6) months of the date of
the abandonment of the application. The language "filed
before June 8, 1995" and "filed on or after June 8, 1995" as
used in the amended rule, refer to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365.
Section 1.139 is being added to set forth the procedure for
reviving a provisional application where the delay was
unavoidable or unintentional. Section 1.139(a) addresses
the revival of a provisional application where the delay was
unavoidable and 1.139(b) addresses the revival of a
provisional application where the delay was unintentional.
Applicant may petition to have an abandoned provisional
application revived as a pending provisional application for
a period of no longer than twelve months from the filing
date of the provisional application where the delay was
unavoidable or unintentional. It would be permissible to
file a petition for revival later than twelve months from
the filing date of the provisional application but only to
revive the application for the twelve-month period following
the filing of the provisional application. Thus, even if
the petition were granted to reestablish the pendency up to
the end of the twelve-month period, the provisional
application would not be considered pending after twelve
months from its filing date. The requirements for reviving
an abandoned provisional application set forth in 1.139
parallel the existing requirements set forth in 1.137.
Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being
amended to replace the references to 1.17(i)(1) with
references to 1.17(i) to be consistent with the change to
1.17.
Section 1.316(d) is being amended to eliminate, in all
applications filed on or after June 8, 1995, except design
applications, the requirement that a terminal disclaimer
accompany any petition under 1.316(b) not filed within
six (6) months of the date of the abandonment of the
application. Acceptance of a late payment of an issue fee
in a design application is specifically provided for in
1.155. Therefore, 1.316 does not apply to design
applications. The language "filed before June 8, 1995" as
used in the amended rule, refers to the actual United States
filing date, without reference to any claim for benefit
under 35 U.S.C. 120, 121 or 365.
Section 1.317(d) is being removed and reserved to eliminate
the requirement that a terminal disclaimer accompany any
petition under 1.317(b) not filed within six (6) months of
the date of lapse of the patent.
Section 1.666 is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Section 1.701 is being added to set forth the procedure the
PTO will follow in calculating the length of any extension
of patent term to which an applicant is entitled under
35 U.S.C. 154(b) where the issuance of a patent on an
application, other than for designs, filed on or after
June 8, 1995, was delayed due to certain causes of
prosecution delay. Applicants need not file a request for
the extension of patent term under 1.701. The extension
of patent term is automatic by operation of law. It is
currently anticipated that applicant will be advised as to
the length of any patent term extension at the time of
receiving the Notice of Allowance and Issue Fee Due. Review
of the length of a patent term extension calculated by the
PTO under 1.701 prior to the issuance of the patent would
be by way of petition under 1.181. If an error is noted
after the patent issues, patentee and any third party may
seek correction of the period of patent term granted by
filing a request for Certificate of Correction pursuant to
1.322. The PTO intends to identify the length of any
patent term extension calculated under 1.701 on the
printed patent.
Section 1.701(a) is being added to identify those patents
which are entitled to an extension of patent term under
35 U.S.C. 154(b).
Section 1.701(b) is being added to provide that the term of
a patent entitled to extension under 1.701(a) shall be
extended for the sum of the periods of delay calculated
under 1.701(c)(1), (c)(2), (c)(3) and (d), to the extent
that those periods are not overlapping, up to a maximum of
five years. The section also provides that the extension
will run from the expiration date of the patent.
Section 1.701(c)(1) is being added to set forth the method
for calculating the period of delay where the delay was a
result of an interference proceeding under 35 U.S.C. 135(a).
The period of delay with respect to each interference in
which the application was involved is calculated under
1.701(c)(1)(i) to include the number of days in the period
beginning on the date the interference was declared or
redeclared to involve the application in the interference
and ending on the date that the interference was terminated
with respect to the application. An interference is
considered terminated as of the date the time for filing an
appeal under 35 U.S.C. 141 or civil action under 35 U.S.C.
146 expired. If an appeal under 35 U.S.C. 141 is taken to
the Court of Appeals for the Federal Circuit, the
interference terminates on the date of receipt of the
court's mandate by the PTO. If a civil action is filed
under 35 U.S.C. 146, and the decision of the district court
is not appealed, the interference terminates on the date the
time for filing an appeal from the court's decision expires.
See section 2361 of the MPEP. The period of delay with
respect to an application suspended by the PTO due to
interference proceedings under 35 U.S.C. 135(a) not
involving the application is calculated under
1.701(c)(1)(ii) to include the number of days in the
period beginning on the date prosecution in the application
is suspended due to interference proceedings not involving
the application and ending on the date of the termination of
the suspension. The period of delay under 1.701(a)(1) is
the sum of the periods calculated under 1.701(c)(1)(i)
and (c)(1)(ii), to the extent that the periods are not
overlapping.
Section 1.701(c)(2) is being added to set forth the method
for calculating the period of delay where the delay was a
result of the application being placed under a secrecy
order.
Section 1.701(c)(3) is being added to set forth the method
for calculating the period of delay where the delay was a
result of appellate review. The period of delay is
calculated under 1.701(c)(3) to include the number of days
in the period beginning on the date on which an appeal to
the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and ending on the date of a final
decision in favor of the applicant by the Board of Patent
Appeals and Interferences or by a Federal court in an appeal
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
Section 1.701(d) is being added to set forth the method for
calculating any reduction in the period calculated under
1.701(c)(3). As required by 35 U.S.C. 154(b)(3)(B),
1.701(d)(1) provides that the period of delay calculated
under 1.701(c)(3) shall be reduced by any time during the
period of appellate review that occurred before three years
from the filing date of the first national application for
patent presented for examination. The "filing date" for the
purpose of 1.701(d)(1) would be the earliest effective
U.S. filing date, but not including the filing date of a
provisional application or the international filing date of
a PCT application. For PCT applications entering the
national stage, the PTO will consider the "filing date" for
the purpose of 1.701(d)(1) to be the date on which
applicant has complied with the requirements of 1.494(b),
or 1.495(b), if applicable.
As contained in Public Law 103-465, 35 U.S.C. 154(b)(3)(C)
states that the period of extension referred to in
35 U.S.C. 154(b)(2) "shall be reduced for the period of time
during which the applicant for patent did not act with due
diligence, as determined by the Commissioner." Section
1.701(d)(2) is being added to provide that the period of
delay calculated under 1.701(c)(3) shall be reduced by any
time during the period of appellate review, as determined by
the Commissioner, during which the applicant for patent did
not act with due diligence. Section 1.701(d)(2) also
provides that in determining the due diligence of an
applicant, the Commissioner may examine the facts and
circumstances of the applicant's actions during the period
of appellate review to determine whether the applicant
exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a
person during a period of appellate review. Acts which the
Commissioner considers to constitute prima facie evidence of
lack of due diligence under 1.701(d)(2) are suspension at
applicant's request under 1.103(a) during the period of
appellate review and abandonment during the period of
appellate review.
Section 3.21 is being amended to provide that 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) and to eliminate the use of serial number and
filing date as an identifier for national patent
applications in assignment documents. This change is
intended to eliminate any confusion as to whether an
application identified by its serial number and filing date
in an assignment document is an application filed under
1.53(b)(1), 1.60 or 1.62 or a design application or a
provisional application since there is a different series
code assigned to each of these types of applications.
Section 3.21 is also being amended to provide that if an
assignment of a patent application filed under 1.53(b)(1)
or 1.62 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.
Further, 3.21 is being amended to provide that if an
assignment of a provisional application 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.
Section 3.81 is being amended to replace the reference to
1.17(i)(1) with a reference to 1.17(i) to be consistent
with the change to 1.17.
Responses to and Analysis of Comments: Forty-nine written
comments were received in response to the Notice of Proposed
Rulemaking. These comments, along with those made at the
public hearing, have been analyzed. Some suggestions made
in the comments have been adopted and others have not been
adopted. Responses to the comments follow:
GENERAL COMMENTS
1. Comment: One comment questioned the use of the word
"proposed" in the notice of proposed rulemaking in
describing the statutory amendments contained in Public Law
103-465.
Response: The statutory changes contained in Public Law
103-465 were described as "proposed" changes in the Notice
of Proposed Rulemaking because the President had not signed
the legislation at the time the notice was prepared for
publication. In fact, the legislation was signed by the
President on December 8, 1994, which is the date of
enactment.
2. Comment: Several comments urged the PTO to favorably
consider the 17/20 patent term specified in H.R. 359 since
this proposed legislation would overcome the existing impact
of extended PTO prosecution and eliminate patent term
extensions for prosecution delays. Furthermore, the
proposed legislation is consistent with the Uruguay Round
Agreements Act, Public Law 103-465.
Response: The administration and the PTO strongly believe
that the 20-year patent term as enacted in Public Law
103-465 is the appropriate way to implement the 20-year
patent term required by the GATT Uruguay Round Agreements
Act. The PTO will take steps to ensure that processing and
examination of applications are handled expeditiously.
3. Comment: One comment stated that the proposed rules are
premature in view of the Rohrabacher bill, H.R. 359.
Response: The proposed rules are not premature. Public Law
103-465 was signed into law on December 8, 1994, with an
effective date of June 8, 1995, for the implementation of
the 20-year patent term and provisional applications. The
Commissioner must promulgate regulations to implement the
changes required by Public Law 103-465.
4. Comment: One comment stated that there is nothing in
the TRIPs agreement that requires the term to be measured
from filing, nor that provisional applications be provided
for, nor that new fees of $730 as set forth in 1.17(r)
and (s) be established. It is suggested that 35 U.S.C. 154
be amended to provide that "every patent (other than a
design patent) shall be granted a term of twenty years from
the patent issue date, subject to the payment of maintenance
fees." It was also suggested that the section regarding
maintenance fees be amended to add a new fee payable at 16.5
years of $5000 (for large entity)/ $2500 (for small entity)
for maintenance of patent between 17 and 20 years.
Response: The suggestion has not been adopted. The
administration and the PTO strongly believe that the 20-year
patent term as enacted in Public Law 103-465 is the
appropriate way to implement the 20-year patent term
required by the GATT Uruguay Round Agreements Act. The
establishment of a provisional application is not required
by GATT. The provisional application has been adopted as a
mechanism to provide easy and inexpensive entry into the
patent system. The filing of provisional applications is
optional. Provisional applications will place domestic
applicants on an equal footing with foreign applicants as
far as the measurement of term is concerned because the
domestic priority period, like the foreign priority period,
is not counted in determining the endpoint of the patent
term. As to the 1.17(r) and (s) fees, the statute
authorizes the Commissioner to establish appropriate fees
for further limited reexamination of applications and for
examination of more than one independent and distinct
inventions in an application.
5. Comment: One comment suggested that the 20-year patent
term of claims drawn to new matter in continuation-in-part
(CIP) applications be measured from the filing date of the
CIP application, irrespective of any reference to a parent
application under 35 U.S.C. 120.
Response: The suggestion has not been adopted. The term of
a patent is not based on a claim-by-claim approach. Under
35 U.S.C. 154(a)(2), if an application claims the benefit of
the filing date of an earlier filed application under
35 U.S.C. 120, 121 or 365(a), the 20-year term of that
application will be based upon the filing date of the
earliest U.S. application that the application makes
reference to under 35 U.S.C. 120, 121 or 365(a). For a
CIP application, applicant should review whether any claim
in the patent that will issue is supported in an earlier
application. If not, applicant should consider canceling
the reference to the earlier filed application.
6. Comment: One comment objected to the 20-year term
provisions of Public Law 103-465 because it was believed
that payment of maintenance fees would be required earlier
under 20-year term than under 17-year term.
Response: The payment of maintenance fees are not due
earlier under 20-year term than under 17-year term.
Maintenance fees continue to be due at 3.5, 7.5 and 11.5
years from the issue date of the patent.
7. Comment: Several comments suggested that the expiration
date be printed on the face of the patent.
Response: The suggestion has not been adopted. The
expiration date will not be printed on the face of the
patent. The PTO will publish any patent term extension that
is granted as a result of administrative delay pursuant to
1.701 on the face of the patent. The term of a patent
will be readily discernible from the face of the patent.
Furthermore, it is noted that the term of a patent is
dependent on the timely payment of maintenance fees which is
not printed on the face of the patent.
8. Comment: One comment suggested that in order to aid the
bar in advising clients as to whether a provisional
application has had its priority claimed in a patent, the
PTO should somehow link the provisional application number
with the complete application number and/or the patent
number.
Response: It is contemplated by the PTO that all
provisional applications will be given application numbers,
starting with a series code "60" followed by a six digit
number, e.g., "60/123,456." If a subsequent 35 U.S.C.
111(a) application claims the benefit of the filing date of
the provisional application pursuant to 35 U.S.C. 119(e) and
the 35 U.S.C. 111(a) application results in a patent, the
provisional application would be listed by its application
number and filing date on the face of the patent under the
heading "Related U.S. Application Data." The public will be
able to identify an application under the above-noted
heading as a provisional application by checking to see if
it has a series code of "60."
9. Comment: Several comments suggested that the PTO
consider modifying the rules to permit the filing of all
applications by assignees. This would promote harmonization
with other patent laws throughout the world and would
eliminate one of the difficulties which will occur for the
PTO in considering claims for priority based on the filing
of a provisional application.
Response: Assignee filing was recommended in the 1992
Advisory Commission Report on Patent Law Reform. The PTO is
currently undertaking a project to reengineer the entire
patent process. The suggestion will be taken under
advisement in that project.
10. Comment: Several comments stated that a complete
provisional application should not be forwarded to a central
repository for storage.
Response: In view of the relatively small filing fee for a
provisional application and the fact that the provisional
application will not be examined, PTO handling must be kept
to a minimum and these provisional applications, once
complete, will be sent to the Files Repository for storage
rather than being kept in the examination area of the PTO.
11. Comment: One comment suggested that the provisional
application be maintained with the 35 U.S.C. 111(a)
application because the examiner may need it to determine
whether the 35 U.S.C. 111(a) application is entitled to the
benefit of the prior provisional application and in the
event of 18-month publication, there will be a demand for
accessibility by the public to the provisional and 35 U.S.C.
111(a) applications upon publication.
Response: The suggestion has not been adopted. Benefit of
the same provisional application may be claimed in a number
of 35 U.S.C. 111(a) applications. If the PTO is to maintain
the provisional application file with one of several
35 U.S.C. 111(a) applications claiming benefit of the
provisional application and the 35 U.S.C. 111(a) application
containing the provisional application file were to go
abandoned while one of the other 35 U.S.C. 111(a)
applications issues, the public would be entitled to inspect
the provisional application file but not the abandoned
35 U.S.C. 111(a) application file containing the provisional
application file. This would create access problems.
12. Comment: One comment suggested that provisional
applications be available in full to the public if the
benefit of priority is being claimed.
Response: Section 1.14 relating to access applies to all
applications including provisional applications. If the
benefit of a provisional application is claimed in a later
filed 35 U.S.C. 111(a) application which resulted in a
patent, then access to the provisional application will be
available to the public pursuant to 1.14. The mere fact
that a provisional application is claimed in a later filed
35 U.S.C. 111(a) application does not give the public access
to the provisional application unless the 35 U.S.C. 111(a)
application issues as a patent.
13. Comment: Several comments requested that the PTO
clarify whether a 35 U.S.C. 111(a) application will be
accorded an effective date as a reference under 35 U.S.C.
102(e) as of the filing date of the provisional application
for which benefit under 35 U.S.C. 119(e) is claimed. If so,
the comment questioned whether pending applications will be
rejected under 35 U.S.C. 102(e) on the basis that an
invention was described in a patent granted on a provisional
application by another filed in the U.S. before the
invention thereof by the applicant for patent.
Response: If a patent is granted on a 35 U.S.C. 111(a)
application claiming the benefit of the filing date of a
provisional application, the filing date of the provisional
application will be the 35 U.S.C. 102(e) prior art date. A
pending application will be rejected under 35 U.S.C. 102(e)
on the basis that an invention was described in a patent
granted on a 35 U.S.C. 111(a) application which claimed the
benefit of the filing date of a provisional application by
another filed in the U.S. before the invention thereof by
the applicant for patent.
14. Comment: One comment suggested that the PTO issue a
final rule stating that if a 35 U.S.C. 111(a) application
claims the benefit of the filing date of a provisional
application, the "inventive entity" for the purposes of
35 U.S.C. 102(e) will be the inventors listed on the issued
patent, and the list of inventors in the provisional
application shall have no effect on the identity of an
"inventive entity" for the purposes of 35 U.S.C. 102(e).
Response: The suggestion has not been adopted. The
"inventive entity" for the purpose of 35 U.S.C. 102(e) is
determined by the patent and not by the inventors named in
the provisional application. As long as the requirements of
35 U.S.C. 119(e) are satisfied, a patent granted on a
35 U.S.C. 111(a) application which claimed the benefit of
the filing date of a provisional application has a 35 U.S.C.
102(e) prior art effect as of the filing date of the
provisional application based on the inventive entity of the
patent. It is clear from 35 U.S.C. 102(e) that the
inventive entity is determined by the patent and a rule to
this effect is not necessary.
15. Comment: One comment requested the PTO to express its
position as to whether the filing of a provisional
application with the subsequent filing of a 35 U.S.C. 111(a)
application claiming benefit of the provisional application
under 35 U.S.C. 119(e) creates a prior art date against
other patent applicants under 35 U.S.C. 102(g).
Response: As to 35 U.S.C. 102(g), the filing of a
provisional application with the subsequent filing of a
35 U.S.C. 111(a) application claiming benefit of the
provisional application under 35 U.S.C. 119(e) creates a
prior art date under 35 U.S.C. 102(g) as of the filing date
of the provisional application.
16. Comment: One comment suggested that in view of the
20-year patent term measured from filing, 1.103(a) should
be deleted. The PTO should not have the right to suspend
action on any application, thereby reducing applicant's term
of protection.
Response: Section 1.103(a) refers to suspension of action
as a result of a request by applicant. If applicant wishes
to suspend prosecution and thereby reduce his/her term of
protection, applicant should be permitted to do so.
17. Comment: One comment suggested that in order to avoid
delays resulting from consideration of petitions to withdraw
premature notices of abandonment, examiners should be
required to contact an attorney of record prior to
abandoning the application to find out if a response to an
Office communication has been filed.
Response: The suggestion has not been adopted. However, in
order to avoid loss of patent term, applicants are
encouraged to check on the status in cases where applicants
have not received a return postcard from the PTO within
two (2) weeks of the filing of any response to a PTO action.
18. Comment: One comment asked whether there is a "cut-
off" date after which patentees may lose the opportunity to
choose 17 vs. 20-year patent term.
Response: The "cut-off" date is June 8, 1995. A patent
that is in force on June 8, 1995, or a patent that issues
after June 8, 1995, on an application filed before June 8,
1995, is automatically entitled to the longer of the 20-year
patent term measured from the earliest U.S. effective filing
date or 17 years from grant. This is automatic by operation
of law. Patentees need not make any election to be entitled
to the longer term. A patent that issues on an application
filed on or after June 8, 1995 is entitled to a 20-year
patent term measured from the earliest U.S. effective filing
date.
19. Comment: One comment stated that there is no clear
guidance as to a patentee's "bonus rights" that may arise
because of the difference in a 17-year term vs. a 20-year
term. Will parties that were previously in a licensing
arrangement have to renegotiate terms for the bonus patent
term?
Response: Section 154(c) of title 35, United States Code,
states that the remedies of sections 283 (injunction), 284
(damages) and 285 (attorney fees) shall not apply to acts
which were commenced or for which substantial investment was
made before June 8, 1995, and became infringing by reason of
the 17/20 year term and that these acts may be continued
only upon the payment of an equitable remuneration to the
patentee that is determined in an action brought under
chapters 28 and 29 of Title 35. There is no guidance
provided in the statute as to the meaning of "substantial
investment" and "equitable remuneration." Licensing
arrangements are between the parties to the agreement and
are determined by the terms of the agreement and state law
and are outside the jurisdiction of the PTO.
20. Comment: One comment questioned whether an
international application designating the U.S. filed before
June 8, 1995, with entry into the U.S. national stage on or
after June 8, 1995, preserves the 17-year patent term
measured from grant.
Response: An international application designating the U.S.
that is filed before June 8, 1995, with entry into the U.S.
national stage under 35 U.S.C. 371 on or after June 8, 1995,
preserves the option for a 17-year patent term measured from
date of grant.
21. Comment: One comment suggested that 35 U.S.C. 371(c)
be amended because a declaration should not be required to
obtain a filing date and a prior art date under 35 U.S.C.
102(e).
Response: The suggestion has not been adopted. This issue
was not addressed in the Notice of Proposed Rulemaking.
However, the suggestion will be taken under advisement as
part of a comprehensive effort being conducted by the PTO to
reengineer the entire patent process.
22. Comment: One comment suggested that 1.604, 1.605
and 1.607 be amended to state that provisional applications
are not subject to interference.
Response: The suggestion has not been adopted because it is
unnecessary. By statute, 35 U.S.C. 111(b)(8), provisional
applications are not subject to 35 U.S.C. 135, i.e., a
provisional application will not be placed in interference.
23. Comment: One comment suggested that 1.821-1.825 be
amended so that (1) only unbranched sequences of ten or more
amino acids and twenty or more nucleotides which are claimed
have to be included in Sequence Listings, (2) previously
published sequences can be omitted, and (3) the sequences of
primers and oligonucleotide probes should not be included in
a Sequence Listing if encompassed by another disclosed
sequence.
Response: The suggestion has not been adopted. There was
no change proposed to 1.821 - 1.825 in the Notice of
Proposed Rulemaking. However, the suggestion will be taken
under advisement as part of a comprehensive effort being
conducted by the PTO to reengineer the entire patent
process.
24. Comment: One comment suggested that 5.11 to 5.15 be
amended to provide for the grant of a foreign license for a
provisional application.
Response: The suggestion has not been adopted. The present
language of 5.11 to 5.15 already provides for the grant
of a foreign license for a provisional application.
25. Comment: One comment suggested that in order to assist
defense agencies in reviewing application for secrecy
orders, PTO should (1) automatically impose a secrecy order
on any application filed under 35 U.S.C. 111(a) if a secrecy
order was previously imposed on corresponding provisional
application, and (2) require applications filed under
35 U.S.C. 111(a) based on a previous provisional application
to indicate changes made to the provisional application in
the 35 U.S.C. 111(a) application by means of underlining and
bracketing.
Response: The suggestions have not been adopted. The PTO
cannot automatically impose a secrecy order on any
35 U.S.C. 111(a) applications even if a secrecy order was
previously imposed on a provisional application, for which
benefit under 35 U.S.C. 119(e) is claimed, unless the agency
which imposed the secrecy order on the provisional
application specifically requests the PTO to do so since the
35 U.S.C. 111(a) application could disclose subject matter
which is different from that which is disclosed in the
provisional application.
As to item (2), the PTO will not require applicants to
identify the differences in subject matter disclosed in the
35 U.S.C. 111(a) application and the provisional
application.
26. Comment: One comment suggested that in order to
relieve defense agencies from possible liability for secrecy
orders imposed for more than 5 years, the PTO should seek
legislation setting patent term at 20 years from the
earliest filing date or 17 years from the issue date,
whichever is longer, for any patent application placed under
secrecy order.
Response: The suggestion has not been adopted. The PTO
strongly believes that the 20-year patent term as enacted in
Public Law 103-465 is the appropriate way to implement the
20-year patent term required by the GATT Uruguay Round
Agreements Act. The 5-year limit for patent term extension
set forth in 1.701(b) is required by statute,
35 U.S.C. 154(b).
COMMENTS DIRECTED TO SPECIFIC RULES
27. Comment: One comment suggested that in order to
eliminate the need for the expression "other than a
provisional application" in other parts of the regulations,
1.9 should be amended to identify a 35 U.S.C. 111(a)
application by some term that can be used in the rules to
distinguish that type of application from a provisional
application.
Response: The suggestion has been adopted. The rules are
being amended to include a definition of the term
"nonprovisional application" in 1.9(a) to describe an
application filed under 35 U.S.C. 111(a) or 371. Further,
the term "nonprovisional application" is being used in the
final rules where the rule applies only to applications
filed under 35 U.S.C. 111(a) or 371 and not to provisional
applications.
28. Comment: One comment suggested that the rules be
simplified if a "national application" could be defined in
1.9 to exclude a provisional application.
Response: The suggestion has not been adopted. Section
1.9(a), prior to this rulemaking, defined a national
application to include any application filed under 35 U.S.C.
111. A provisional application is an application filed
under 35 U.S.C. 111. It is appropriate to define a
provisional application as a special type of national
application.
29. Comment: One comment requested an explanation of the
showing required in a petition under 1.12 and 1.14 for
access to pending applications and to assignment records for
pending applications.
Response: There was no substantive change proposed to
either 1.12 or 1.14 in the Notice of Proposed Rulemaking.
Thus, the showing required in a petition under 1.12 or
1.14 remains the same after this final rulemaking as before.
A discussion of such a petition can be found in section 103
of the MPEP.
30. Comment: Several comments objected to the definition
in 1.45(c) of joint inventors in provisional applications
as being those having made a contribution to "the subject
matter disclosed" in the provisional application. Various
language, such as, "the subject matter which constitutes the
invention," "subject matter disclosed and regarded to be the
invention," "disclosed invention," "the inventive subject
matter disclosed" was suggested. Another comment requested
guidance as to the determination of inventorship in a
provisional application.
Response: The suggestion has not been adopted. The term
"invention" is typically used to refer to subject matter
which applicant is claiming in his/her application. Since
claims are not required in a provisional application, it
would not be appropriate to reference joint inventors as
those who have made a contribution to the "invention"
disclosed in the provisional application. If the
"invention" has not been determined in the provisional
application because no claims have been presented, then the
name(s) of those person(s) who have made a contribution to
the subject matter disclosed in the provisional application
should be submitted. Section 1.45(c) states that "if
multiple inventors are named in a provisional application,
each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in
the provisional application." All that 1.45(c) requires
is that if someone is named as an inventor, that person must
have made a contribution to the subject matter disclosed in
the provisional application. When applicant has determined
what the invention is by the filing of the 35 U.S.C. 111(a)
application, that is the time when the correct inventors
must be named. The 35 U.S.C. 111(a) application must have
an inventor in common with the provisional application in
order for the 35 U.S.C. 111(a) application to be entitled to
claim the benefit of the provisional application under
35 U.S.C. 119(e).
31. Comment: Several comments suggested that it might be
desirable to correct inventorship in a provisional
application where an individual was erroneously named as an
inventor and that the procedure for doing so should be set
forth in 1.48.
Response: Under 35 U.S.C. 119(e), as contained in Public
Law 103-465, a later filed application under 35 U.S.C.
111(a) may claim priority benefits based on a copending
provisional application so long as the applications have at
least one inventor in common. An error in naming a person
as an inventor in a provisional application would not
require correction by deleting the erroneously named
inventor from the provisional application since this would
have no effect upon the ability of the provisional
application to serve as a basis for a priority claim under
35 U.S.C. 119(e). However, in response to the comments,
1.48 is being amended to include a new paragraph (e) which
sets forth the requirements for deleting the names of the
inventors incorrectly named as joint inventors in a
provisional application, namely, a petition including a
verified statement by the inventor(s) whose name(s) are
being deleted stating that the error arose without deceptive
intent, the fee set forth in 1.17(q) and the written
consent of all assignees.
32. Comment: One comment suggested that in order to make
the procedures for provisional applications as simple as
possible, there is no need to provide any rules to add
inventor(s) or change inventorship in a provisional
application since the whole concept of inventorship is
meaningless without a claim. Error in inventorship can be
corrected by the filing of a 35 U.S.C. 111(a) application
within 12 months after the filing of a provisional
application.
Response: The suggestion has not been adopted. One of the
requirements of 35 U.S.C. 119(e) is that a 35 U.S.C. 111(a)
application must have at least one inventor in common with a
provisional application in order for the 35 U.S.C. 111(a)
application to be entitled to claim the benefit of the
filing date of the provisional application. In situations
where there is no inventor in common between the 35 U.S.C.
111(a) application and the provisional application due to
error in naming the inventors in the provisional
application, procedures must be established to permit
applicant to correct the inventorship in the provisional
application.
33. Comment: One comment suggested that an individual who
is the inventor of subject matter disclosed in a provisional
application, but who is not named as an inventor in the
provisional application because that subject matter was not
intended to be claimed in a later filed 35 U.S.C. 111(a)
application, could be added as an inventor pursuant to
1.48(d) in the provisional application if the subject
matter was later claimed in the 35 U.S.C. 111(a)
application.
Response: The individual could be added as an inventor
pursuant to 1.48(d) in the provisional application so long
as the individual was originally omitted without deceptive
intent.
34. Comment: One comment questioned whether it would be
proper for a registered practitioner who did not file the
provisional application to sign the statement required by
1.48(d) that the error occurred without deceptive
intention on the part of the inventors.
Response: It would be proper for a registered practitioner
who did not file the provisional application to sign the
statement required by 1.48(d), if the registered
practitioner has a reasonable basis to believe the truth of
the statement being signed.
35. Comment: One comment suggested that there should be no
diligence requirement to correct inventorship in a
provisional application.
Response: Diligence is not a requirement to correct
inventorship in a provisional application in either
1.48(d) or 1.48(e).
36. Comment: One comment suggested that 1.48(a) be
amended by deleting the requirements for "a statement of
facts verified by the original named inventor or inventors
establishing when the error without deceptive intention was
discovered and how it occurred" and for the written consent
of any assignee.
Response: The suggestion has not been adopted. There was
no substantive change proposed to 1.48(a) in the Notice of
Proposed Rulemaking. Since the correction of inventorship
affects ownership rights, the existing rules are designed to
provide assurances that all parties including the original
named inventors and all assignees agree to the change of
inventorship. If the requirements for verified statements
of facts from the original named inventors and written
consent of the assignees are to be deleted, the PTO would no
longer have the assurances that all parties agree to the
change.
37. Comment: One comment expressed concern that a
provisional application filed without a claim will leave
subsequent readers with little or no clue as to what the
inventors in the provisional application considered to be
their invention at the time the provisional application was
filed and doubted that a provisional application filed
without a claim defining the invention could ever provide a
sufficient disclosure to support a claim for a foreign or
U.S. priority date.
Response: Claims are not required by the statute to provide
a specification in compliance with the requirements of
35 U.S.C. 112, first paragraph. However, if an applicant
desires, one or more claims may be included in a provisional
application. Any claim filed with a provisional application
will, of course, be considered a part of the original
provisional application disclosure.
38. Comment: One comment suggested that the PTO issue a
specification format or guideline for a provisional
application to enable an inventor to comply with 35 U.S.C.
112, first paragraph.
Response: The format of a provisional application is the
same as for other applications and is set forth in existing
1.77 which is applicable to provisional applications
except no claims are required for provisional applications.
39. Comment: Several comments suggested that the PTO
revise its rules to clarify that strict adherence to the
enablement, description and best mode requirements of
35 U.S.C. 112, first paragraph, is not required in
provisional applications.
Response: The suggestion has not been adopted. The
substantive requirements of a specification necessary to
comply with 35 U.S.C. 112, first paragraph, are established
by court cases interpreting that section of the statute, not
by rule. The case law applies to provisional applications
as well as to applications filed under 35 U.S.C. 111(a).
40. Comment: Several comments suggested that the rules or
comments published with the Final Rule indicate whether
there is any requirement to update the best mode disclosed
in the provisional application when filing the 35 U.S.C.
111(a) application.
Response: No rule was proposed to address the issue when
going from a provisional application to a 35 U.S.C. 111(a)
application because no current rule exists when going from
one 35 U.S.C. 111(a) application to another 35 U.S.C. 111(a)
application. The question of whether the best mode has to
be updated is the same when going from one 35 U.S.C. 111(a)
application to another 35 U.S.C. 111(a) application or from
a provisional application to a 35 U.S.C. 111(a) application.
Accordingly, the rationale of Transco Products, Inc. v.
Performance Contracting, Inc., 38 F.3d 551, 32 U.S.P.Q.2d
1077 (Fed. Cir. 1994), would appear to be applicable.
Clearly, if the substantive content of the application does
not change when filing the 35 U.S.C. 111(a) application,
there is no requirement to update the best mode. However,
if subject matter is added to the 35 U.S.C. 111(a)
application, there may be a requirement to update the best
mode.
41. Comment: One comment suggested that 1.51(c) be
amended to permit a provisional application to be filed with
an authorization to charge fees to a deposit account.
Response: Section 1.51(c) permits an application to be
filed with an authorization to charge fees to a deposit
account. Section 1.51(c) applies to provisional
applications. Therefore, no change to 1.51(c) is
necessary.
42. Comment: One comment suggested that the PTO confirm
that there will be no procedural examination of a
provisional application other than to determine whether the
provisional application complies with 1.51(a)(2).
Response: The PTO intends to require compliance with the
formal requirements of 1.52(a)-(c) only to the extent
necessary to permit the PTO to properly microfilm and store
the application papers.
43. Comment: Several comments suggested that an English
translation of a foreign language provisional application
should not be required unless necessary in prosecution of
the 35 U.S.C. 111(a) application to establish benefit. If
an English translation is required, there is no useful
purpose to require the translation at any time earlier than
the filing of 35 U.S.C. 111(a) application claiming the
benefit of the provisional application.
Response: Provisional applications may be filed in a
language other than English as set forth in existing
1.52(d). However, an English language translation is
necessary for security screening purposes. Therefore, the
PTO will require the English language translation and
payment of the fee required in 1.52(d) in the provisional
application. Failure to timely submit the translation in
response to a PTO requirement will result in the abandonment
of the provisional application. If a 35 U.S.C. 111(a)
application is filed without providing the English language
translation in the provisional application, the English
language translation will be required to be supplied in
every 35 U.S.C. 111(a) application claiming priority of the
non-English language provisional application.
44. Comment: One comment suggested that a new model oath
or declaration form for use in claiming 35 U.S.C. 119(e)
priority and a "cover sheet" for use in filing provisional
applications be published as an addendum to the final rules.
Response: The suggestion has been adopted. See Appendix A
for the sample cover sheet for filing a provisional
application and Appendix B for the sample declaration for
use in claiming 35 U.S.C. 119(e) priority.
45. Comment: One comment suggested that the statement in
1.53(b)(2) that the provisional application will not be
given a filing date if all the names of the actual inventor
or inventor(s) are not supplied be deleted and 1.41 be
amended to make an exception for provisional applications.
The comment suggested that 35 U.S.C. 111(b) is satisfied as
long as the name of one person who made an inventive
contribution to the subject matter of the application is
given.
Response: The suggestion has not been adopted. Section
111(b) of title 35, United States Code, states that "a
provisional application shall be made or authorized to be
made by the inventor." This language parallels
35 U.S.C. 111(a). The naming of inventors for obtaining a
filing date for a provisional application is the same as for
other applications. A provisional application filed with
the inventors identified as "Jones et al." will not be
accorded a filing date earlier than the date upon which the
name of each inventor is supplied unless a petition with the
fee set forth in 1.17(i) is filed which sets forth the
reasons the delay in supplying the names should be excused.
Administrative oversight is an acceptable reason. It should
be noted that for a 35 U.S.C. 111(a) application to be
entitled to claim the benefit of the filing date of a
provisional application, the 35 U.S.C. 111(a) application
must have at least one inventor in common with the
provisional application.
46. Comment: One comment suggested that a drawing should
not be required to obtain a filing date for a provisional
application. Whatever is filed should be given a serial
number and filing date in order to establish status as a
provisional application, regardless of what is in the
specification or drawing. If the provisional application
omitted drawings, has pages missing, or is otherwise
incomplete, then applicant may not be able to rely on the
filing date of the provisional application in a subsequently
filed 35 U.S.C. 111(a) application. It should not be the
job of the Application Branch to review compliance with
1.81(a).
Response: Section 111(b) of title 35, United States Code,
states that a provisional application must include a
specification as prescribed by 35 U.S.C. 112, first
paragraph and a drawing as prescribed by 35 U.S.C. 113.
Drawings are required pursuant to 35 U.S.C. 113 if they are
necessary to understand the subject matter sought to be
patented. If a provisional application as filed omitted
drawings and/or has pages missing, the provisional
application is prima facie incomplete and no filing date
will be granted. Application Branch currently reviews all
applications to make sure that no filing date will be
granted to an application that is prima facie incomplete.
Application Branch will perform the same type of review with
provisional applications. If a filing date is not granted
to a provisional application because it is prima facie
incomplete, applicant may petition the PTO under 1.182 to
grant a filing date to the provisional application as of the
date of deposit of the application papers if it can be shown
that the omitted items are not necessary for the
understanding of the subject matter.
47. Comment: One comment objected to the requirement in
1.53(b)(2)(i) for a cover sheet identifying the
application as a provisional application because it is
unnecessarily rigid and contrary to Congress' desire to keep
the filing of provisional application as simple as possible.
Response: The requirement that a provisional application be
specifically identified on filing as a provisional
application is not seen to be burdensome on the applicant
and is necessary for the PTO to properly process the papers
as a provisional application. All an applicant is required
to do in order to comply with the requirement of
1.53(b)(2)(i) is to include a transmittal sheet
identifying the papers being filed as a PROVISIONAL
application.
48. Comment: Several comments suggested that in
1.53(b)(2)(ii), as proposed, the phrase "the expiration of
12 months after the filing date of the provisional
application" should read "the expiration of 12 months after
the filing date of the 1.53(b)(1) application".
Response: The suggestion has been adopted.
49. Comment: One comment objected to the requirement in
1.53(b)(2)(ii) for a petition to convert an application
filed under 1.53(b)(1) to a provisional application and
suggested that any confusion concerning applicant's
intention could be handled informally without a petition or
petition fee.
Response: The requirement for a petition and fee is
intended to ensure that the cost of any PTO reprocessing is
borne specifically by the applicant requesting the action.
50. Comment: Several comments suggested that the filing
fee required in an application filed under 35 U.S.C. 111(a)
claiming benefit of the filing date of an earlier
35 U.S.C. 111(a) application which has been converted to a
provisional application under proposed 1.53(b)(2)(ii) be
reduced, since the $730/$365 filing fee was paid in the
earlier application.
Response: The suggestion has not been adopted. The filing
fee required in an application filed under 35 U.S.C. 111(a)
is set by statute. The statute does not provide for the
suggested reduction in the filing fee.
51. Comment: One comment suggested that proposed
1.53(b)(2)(iii) should apply retroactively to permit
applications filed between June 9, 1994, and June 8, 1995,
to be converted to provisional applications.
Response: The suggestion has not been adopted. The statute
does not permit a provisional application to have a filing
date prior to June 8, 1995.
52. Comment: One comment suggested that 1.53(b)(2)(ii)
be revised to state that the petition requesting conversion
must also be filed before (1) the application becomes
involved in interference, or (2) notice by the PTO of intent
to publish the application as a statutory invention
registration. This suggestion conforms with 35 U.S.C.
111(b)(8).
Response: The suggestion has not been fully adopted. It is
not necessary to include interference in 1.53(b)(2)(ii)
because if a 35 U.S.C. 111(a) application becomes involved
in an interference proceeding and applicant files a petition
requesting conversion of that 35 U.S.C. 111(a) application
to a provisional application, the 35 U.S.C. 111(a) will be
removed from the interference proceeding upon granting the
petition to convert. When a subsequent 35 U.S.C. 111(a)
application is filed based on the provisional application,
the subsequent 35 U.S.C. 111(a) application could be placed
in the interference proceeding if necessary. As to the
reference to statutory invention registration,
1.53(b)(2)(ii) is being amended to require the petition
and the fee be filed prior to the earlier of the abandonment
of the 35 U.S.C. 111(a) application, the payment of the
issue fee, the expiration of 12 months after the filing date
of the 35 U.S.C. 111(a) application, or the filing of a
request for a statutory invention registration under
1.293.
53. Comment: One comment suggested that the procedures for
converting a 35 U.S.C. 111(a) application to a provisional
application be explained in greater detail in
1.53(b)(2)(ii) or in the discussion. If a 35 U.S.C.
111(a) application is converted to a provisional application
on the last day of the 12-month period, and a second
35 U.S.C. 111(a) application is concurrently filed, how
should this be done and how should the first sentence in the
second 35 U.S.C. 111(a) application be worded. Furthermore,
if a 35 U.S.C. 111(a) application is converted to a
provisional application on the last day of the 12-month
period, will it be necessary to file a second 35 U.S.C.
111(a) application on the same day, or else lose the
priority claim.
Response: The suggestion has not been adopted. The
language in 1.53(b)(2)(ii) is clear relating to the
requirements for converting a 35 U.S.C. 111(a) application
to a provisional application. If applicant wishes to
convert a 35 U.S.C. 111(a) application to a provisional
application, applicant must file a petition requesting the
conversion along with the petition fee set forth in
1.17(q). The petition and the fee must be filed prior to
the earlier of the abandonment of the 35 U.S.C. 111(a)
application, the payment of the issue fee, the expiration of
12 months after the filing date of the 35 U.S.C. 111(a)
application, or the filing of a request for a statutory
invention registration under 1.293. In the example noted
in the comment, if a 35 U.S.C. 111(a) application is
converted to a provisional application on the last day of
the 12-month period, a second 35 U.S.C. 111(a) application
must be filed on that same day, otherwise, applicant will
lose the priority pursuant to 35 U.S.C. 119(e). An example
of how the first sentence of the second 35 U.S.C. 111(a)
application would read is, "This application claims the
benefit of U.S. Provisional Application No. 60/---,
filed---, which was converted from Application No.---."
54. Comment: One comment suggested that the PTO consider a
rule mandating that any prior U.S. application that would
have been eligible for conversion to a provisional
application that is abandoned in favor of a continuing
application within one year of the earliest priority date
asserted be deemed constructively converted to a provisional
application.
Response: The suggestion has not been adopted. Conversion
of a 35 U.S.C. 111(a) application to a provisional will be
permitted only by way of a petition and under the conditions
set forth in 1.53(b)(2)(ii). One reason for this is that
the PTO plans to provide sufficient information on the
printed patent to determine the end date of the
20-year patent term by identifying provisional applications
using a unique series code, i.e., "60". Thus, a 35 U.S.C.
111(a) application converted to a provisional application
will need to be reprocessed by the PTO with a new
application number. The petition fee is intended to
reimburse the PTO for the extra processing necessitated by
the conversion.
55. Comment: One comment stated that 1.53(b)(2)(ii)
permits the conversion of a 35 U.S.C. 111(a) application to
a provisional application. However, it is silent as to
whether such a conversion would kill any benefit the
35 U.S.C. 111(a) application had of domestic and/or foreign
priority.
Response: Section 111(b)(7) of title 35, United States
Code, specifically states that a provisional application
shall not be entitled to the right of priority of any other
application under 35 U.S.C. 119 or 365(a) or to the benefit
of an earlier filing date in the United States under
35 U.S.C. 120, 121, or 365(c). If a 35 U.S.C. 111(a)
application is converted to a provisional application, the
granting of the conversion will automatically eliminate any
claim of priority which could have been made in the
35 U.S.C. 111(a) application.
56. Comment: Several comments suggested that it was
inconsistent with the purpose of the provisional application
to require any compliance with the Sequence Disclosure Rules
1.821 - 1.823 and 1.825, since the provisional
applications are not examined and there is no comparison of
the sequences with the prior art.
Response: The Office agrees with the comments that a
provisional application need not comply with the
requirements of 1.821 through 1.825. Section
1.53(b)(2)(iii) is being amended to indicate that the
requirements of 1.821 through 1.825 regarding sequence
listings are not mandatory for a provisional application.
However, applicants are cautioned that in order for a
35 U.S.C. 111(a) application to obtain the benefit of the
filing date of an earlier filed provisional application, the
claimed subject matter of the 35 U.S.C. 111(a) application
must have been disclosed in the provisional application in a
manner provided by 35 U.S.C. 112, first paragraph.
Applicants are encouraged to follow the sequence rules to
ensure that support for the invention claimed in the
35 U.S.C. 111(a) application can be readily ascertained in
the provisional application.
57. Comment: One comment suggested that the language in
1.53(e)(2) that a provisional application will become
abandoned no later than twelve months after its filing date
was misleading and that the words "no later than" should be
deleted because it was believed that a provisional
application could not be abandoned prior to twelve months
after its filing date.
Response: The statute does not state that a provisional
application can never be abandoned prior to twelve months
after its filing date. In fact, a provisional application
may be abandoned as a result of applicant's failure to
timely respond to a PTO requirement. For example, if a
provisional application which has been accorded a filing
date does not include the appropriate filing fee or the
cover sheet required by 1.51(a)(2), 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 to pay the surcharge as set forth in 1.16(l).
Failure to timely respond will result in the abandonment of
the application. This may occur prior to twelve months
after its filing date. Furthermore, a provisional
application may also be expressly abandoned prior to twelve
months from its filing date.
58. Comment: One comment objected to the deletion of the
"retention fee" practice in 1.53(d) since it permits an
applicant in a first application claiming benefits under
35 U.S.C. 119(a)-(d) or 120 to correct inventorship by
filing a second application without having to pay the full
filing fee in the first application.
Response: Since the comment indicated that there is a
benefit to retain the retention fee practice, the proposal
to eliminate the practice is withdrawn.
59. Comment: One comment stated that the language of
1.53(d)(1) and (d)(2) indicates an intent by the PTO to
mail the "Notice Of Missing Parts" to applicant's post
office address and argues that the "Notice" should be mailed
to the registered practitioner who filed the application on
behalf of the applicant.
Response: The language in 1.53(d)(1) and (d)(2) states
that the applicant will be notified of the missing part, if
a correspondence address is provided. This means that the
"Notice" to applicant will be mailed to the correspondence
address provided in the application papers. Under current
PTO practice, if no specific correspondence address is
identified in the application, the address of the registered
practitioner who filed the application on behalf of the
applicant is used as the correspondence address. If no
specific correspondence address or registered practitioner
is identified in the application, the post office address of
the first named inventor is used as the correspondence
address. No change in current PTO practice in this regard
is required as a result of 1.53(d)(2) nor is any change
planned.
60. Comment: Several comments objected to the proposed
deletion of 1.60. One comment suggested that the deletion
of 1.60 was a major rule change and should have been
proposed separate from the proposed rules dealing with the
changes in practice required by Public Law 103-465.
Response: In view of the comments received, the proposal to
delete 1.60 is withdrawn. However, the proposal will be
considered as part of a comprehensive effort being conducted
by the PTO to reengineer the entire patent process.
61. Comment: One comment suggested that in view of the
deletion of 1.60, language should be incorporated in
1.53(a)(1) to state that a copy of the prior application
along with a copy of the declaration may be filed to obtain
a filing date. Furthermore, full details and guidelines of
the procedure should accompany the rule.
Response: The suggestion has not been adopted. The
proposal to delete 1.60 is withdrawn in view of several
comments received objecting to the deletion.
62. Comment: One comment suggested that the removal of the
stale oath practice be codified.
Response: The suggestion has not been adopted. Neither the
statute nor the rules require a recent date of execution to
appear on the oath or declaration. The PTO practice of
objecting to an oath or declaration where the time elapsed
between the date of execution and the filing date of the
application is more than three months is found in
section 602.05 of the MPEP. Therefore, the removal of the
stale oath practice will be accomplished by amending the
MPEP.
63. Comment: One comment questioned whether a copy of an
application faxed to an attorney could be filed in the PTO
as the application papers.
Response: Yes. While a patent application may not be faxed
directly to the PTO, an application faxed to an attorney may
be forwarded to the PTO by mail or courier as the
application papers provided the papers meet the formal
requirements of 1.52. Effective November 22, 1993, 1.4
was amended to include a new paragraph (d) to specify that
most correspondence filed in the PTO, which requires a
person's signature, may be an original, a copy of an
original or a copy of a copy. Only correspondence
identified in 1.4(e) and (f) require the original to be
filed in the PTO. Thus, an oath or declaration required by
1.63, 1.153, 1.162 or 1.175 may be an original, a copy of
an original or a copy of a copy. See 1156 Off. Gaz. Pat.
Office 61 (November 16, 1993).
64. Comment: One comment suggested that applicant be
permitted to use 1.62 procedure to file the
35 U.S.C. 111(a) application which claims the benefit of a
provisional application, at least in those situations where
the 35 U.S.C. 111(a) application has been converted to a
provisional application which is followed by the filing of a
second 35 U.S.C. 111(a) application.
Response: The suggestion has not been adopted.
Section 1.62 will not be amended to permit the filing a
35 U.S.C. 111(a) application based on a provisional
application because the PTO sees this situation as a trap
for applicants. The filing procedures would be made more
complicated if an exception is provided to address
situations where a 35 U.S.C. 111(a) application is converted
to a provisional application and a second 35 U.S.C. 111(a)
application is later filed. However, the suggestion will be
taken under advisement when greater familiarity with
provisional applications is developed.
65. Comment: One comment suggested that 1.62 procedure
be replaced with a simple petition procedure to reopen
prosecution.
Response: The suggestion is not being adopted. However,
the suggestion will be taken under advisement as part of a
comprehensive effort being conducted by the PTO to
reengineer the entire patent process.
66. Comment: One comment suggested that the language in
1.62(a) that requires an identification of the
"applicant's name of the prior complete application" is
confusing and should be clarified.
Response: The suggestion has been adopted. Section 1.62 is
being amended to require the identification of the
"applicants named in the prior complete application."
67. Comment: One comment suggested that 1.62 be amended
to state that the refiling procedures set forth in 1.62
may be used after the issue fee is paid when a petition
under 1.313(b)(5) is granted. This practice is permitted
pursuant to the notice published in 1138 Off. Gaz. Pat.
Office 40 (May 19, 1992).
Response: The suggestion has been adopted.
68. Comment: One comment suggested that 1.62 be amended
to clarify whether applicant need to re-list, in the 1.62
application, all the references cited by the examiner and
applicant in the parent application in order to get those
references printed on the eventual patent.
Response: The suggestion has not been adopted. Section 609
of the MPEP (Sixth Edition, Jan. 1995) has been amended to
clarify that in a 1.62 application, references submitted
and cited in the parent application need not be resubmitted.
These references will be printed on the patent. However, in
any continuing application filed under 1.53(b)(1) or 1.60,
a list of the references must be resubmitted if applicant
wishes to have the references printed in the eventual
patent.
69. Comment: One comment suggested that 1.67 should go
into more detail on when supplemental oaths are required in
1.53 filings of continuation and divisional applications.
Response: The suggestion has not been adopted because it is
seen to be unnecessary and no substantive change was
proposed to 1.67 in the Notice of Proposed Rulemaking.
70. Comment: One comment suggested that "not but" in
1.67(b) should read "but not".
Response: The suggestion has been adopted.
71. Comment: Several comments suggested that a rule be
provided to state that an application for patent is
permitted to claim the benefit of the filing date of more
than one prior provisional application so long as the
applicant complies with all statutory provisions.
Response: The suggestion has been adopted. Section
1.78(a)(3) is being amended to indicate that applicants are
permitted to separately claim the benefit of the filing date
of more than one prior provisional application in a later
filed 35 U.S.C. 111(a) application provided all statutory
requirements of 35 U.S.C. 119(e) are complied with. It is
noted that current practice permits an application to claim
the benefits of the filing date of more than one prior
foreign application under 35 U.S.C. 119(a)-(d) and of more
than one prior copending U.S. application under 35 U.S.C.
120, without an explicit statement to that effect in the
rules. Since the final rules are being amended to
specifically permit applications filed under 35 U.S.C.
111(a) to claim the benefits of the filing date of more than
one prior copending provisional application, corresponding
changes are also being made to 1.55 and 1.78(a)(1)
relating to claims for the benefits available under
35 U.S.C. 119(a)-(d) and 120 to be consistent with
1.78(a)(3).
72. Comment: Several comments requested that the PTO
specify language to use in the first sentence of an
application when priority is based on more than one
provisional application.
Response: Section 1.78(a)(4) requires that "any application
claiming the benefit of a prior filed copending provisional
application must contain or be amended to contain in the
first sentence of the specification following the title a
reference to such prior provisional application, identifying
it as a provisional application, and including the
provisional application number." Where a 35 U.S.C. 111(a)
application claims the benefit of more than one provisional
application, a suitable reference would read, "This
application claims the benefit of U.S. Provisional
Application No. 60/---, filed --- and U.S. Provisional
Application No. 60/---, filed ---." In addition, for an
application which is claiming the benefit under 35 U.S.C.
120 of a prior application, which in turn claims the benefit
of a provisional application under 35 U.S.C. 119(e), a
suitable reference would read, "This application is a
continuation of U.S. application No. 08/---, filed ---, now
abandoned, which claims the benefit of U.S. Provisional
Application No. 60/---, filed ---."
73. Comment: One comment suggested that the rules address
the effect on patent term where an applicant in a
continuing application deletes the reference to the prior
filed application before the patent issues.
Response: An applicant has full control over claims to the
benefit of an earlier filing date under 35 U.S.C. 120, 121
or 365(c). The 20-year patent term will be based upon the
filing date of the earliest U.S. application that the
applicant makes reference to under 35 U.S.C. 120, 121 and
365(c). Whether an applicant is entitled to the benefit of
the filing date of an earlier application is something that
an applicant should examine before the patent is issued.
The PTO is not, unless it comes up as an issue in the
examination process, going to determine whether any of the
claims are entitled to the earlier filing date. Applicant
however, should determine whether the claims are entitled to
or require the benefit of the earlier filing date. If not,
the applicant should consider canceling the reference to the
earlier filed application to avoid having the 20-year patent
term measured from that earlier filing date. An amendment
adding or deleting a reference to an earlier filed
application presented prior to a final action will be
entered, however, the claims may be subject to possible
intervening prior art.
74. Comment: One comment stated that in view of the fact
that a provisional application is not entitled to claim the
benefit of a prior filed copending national or international
application as stated in 1.53(b)(2)(iii), the phrase
"other than a provisional application" in 1.78(a)(2) is
unnecessary.
Response: Section 1.78(a)(2) is being amended to state that
"any nonprovisional application claiming the benefit of a
prior copending nonprovisional or international application
must contain...." Section 1.78(a)(2) addresses a
35 U.S.C. 111(a) application which claims the benefit of a
prior copending 35 U.S.C. 111(a) application or
international application.
75. Comment: Several comments objected to the content
requirements for drawings filed in a provisional application
as originally set forth in proposed 1.83(a)(2). One
comment suggested that no rule was necessary to set forth
the required content of drawings in a provisional
application.
Response: In view of the comments received, the proposed
amendment to 1.83 is withdrawn. Under 35 U.S.C. 113,
first sentence, applicant must furnish drawings in a
provisional application "where necessary for the
understanding of the subject matter sought to be patented."
This requirement is also stated in existing 1.81(a).
Therefore, no further elaboration on the content of the
drawings in a provisional application is believed necessary
in the rules.
76. Comment: One comment suggested that the rules specify
that formal drawings are not required in a provisional
application.
Response: The suggestion has not been adopted. However,
the PTO intends to examine provisional applications for
requirements of form only to the extent that is necessary to
permit normal storage and microfilming of the application
papers. Formal drawings are usually not required for those
purposes.
77. Comment: Several comments suggested that 1.97(d) be
amended to require the PTO to consider any information
disclosure statement submitted after a final rejection or
notice of allowance if an appropriate fee is paid.
Response: The suggestion has not been adopted because no
substantive change to this rule was proposed in the Notice
of Proposed Rulemaking. The existing rules are designed to
encourage prompt submission of information to the PTO. To
permit applicant to merely pay a fee to have any information
disclosure statement submitted after a final rejection or
Notice of Allowance would be contrary to the effort to
encourage prompt submissions.
78. Comment: One comment suggested that 1.97 be changed
so that an Office action which uses a newly cited reference
as a ground for rejection under 35 U.S.C. 102 or 103 cannot
be made final.
Response: The suggestion has not been adopted because no
substantive change to this rule was proposed in the Notice
of Proposed Rulemaking.
79. Comment: One comment suggested that the words "which
are not examined" in 1.101 as proposed are unnecessary and
could create a negative implication that some provisional
applications are examined.
Response: The suggestion has not been adopted. By statute,
provisional applications are not subject to 35 U.S.C. 131,
i.e., the Commissioner is not permitted to examine a
provisional application for patentability.
80. Comment: Several comments stated that it is unfair to
require small entities to pay the full $730.00 fee set forth
in proposed 1.129. It is suggested that the fee be
changed to $365.00 or less.
Response: Pursuant to Public Law 103-465, the Commissioner
has the authority to establish appropriate fees for the
further limited reexamination of applications and for the
examination of more than one independent and distinct
invention in an application. As a result of additional
review, it was concluded that these fees may be reduced by
50% for small entities. Sections 1.17(r) and (s) are being
amended to indicate that the fees are reduced by 50% for
small entities, that is, $365.00 for small entities.
81. Comment: Several comments suggested that the
transitional procedure set forth in 1.129(a) as proposed
is equivalent to filing one application, i.e., it provides
for an extra examination and reexamination after the
original final rejection, and, therefore, the requirement
for two $730.00 fees, which is equivalent to two filing
fees, is unwarranted. Another comment suggested that if the
proposed $730.00 fee is adopted, the examiner should be
instructed to treat the after-final amendment as any other
initial filing, i.e., a new application, not as an amendment
submitted after a non-final office action.
Response: Under existing PTO practice, it would not be
proper to make final a first Office action in a continuing
or substitute application where the continuing or substitute
application contains material which was presented in the
earlier application after final rejection or closing of
prosecution but was denied entry because (1) new issues were
raised that required further consideration and/or search, or
(2) the issue of new matter was raised. The identical
procedure will apply to examination of a submission
considered as a result of the procedure under 1.129(a).
Thus, under 1.129(a), if the first submission after final
rejection was initially denied entry in the application
because (1) new issues were raised that required further
consideration and/or search, or (2) the issue of new matter
was raised, then the next action in the application will not
be made final. Likewise, if the second submission after
final rejection was initially denied entry in the
application because (1) new issues were raised that required
further consideration and/or search, or (2) the issue of new
matter was raised, then the next action in the application
will not be made final. Thus, the fee required by
1.129(a) has been set at the amount required for filing an
application because the procedure provided by the rule is
equivalent to the filing of two applications. No new matter
can be entered by payment of the fee set forth in 1.17(r).
82. Comment: Several comments suggested that the fees
required for filing a provisional application and those fees
required by 1.129(a) and (b) for the transitional
procedures should not be greater than the average cost of
processing such matters by the PTO. Two comments stated
that the fee required by 1.129(a) is excessive relative to
PTO costs.
Response: The fee required for filing a provisional
application is set by Public Law 103-465 and the PTO has no
discretion with respect to the amount of that particular
fee. As to the fee required by 1.129(a), the procedures
relating to the first submission provided by 1.129(a) is
equivalent to the filing of a file wrapper continuation
application under 1.62, and therefore, the fee required
with the first submission is appropriately set at the same
amount as a filing fee, which is $730.00. The $730.00 fee
is subject to a 50% reduction for small entities. The
second submission is equivalent to the filing of a second
file wrapper continuation application and the fee for the
second submission is appropriately set at the same amount as
a filing fee. As to the fee required by 1.129(b), the
procedures set forth in 1.129(b) permit applicants to
retain multiple inventions in a single application rather
than having to file multiple divisional applications. The
fee for each independent and distinct invention in excess of
one is appropriately set at the same amount as the filing
fee for a divisional application, which is $730.00. The
$730.00 fee is subject to a 50% reduction for small
entities.
83. Comment: One comment suggested that the time period
for the payment of the $730.00 fee for the transitional
after-final practice be extended if applicant files a
petition seeking reversal of the examiner's refusal to enter
the amendment after final without fee, until one month after
an unfavorable decision on the petition.
Response: If an earlier filed petition seeking reversal of
the examiner's refusal to enter the amendment after final is
granted by the Director finding that the final rejection was
premature, but the petition had not been decided by the time
the 1.129(a) fee was due, applicant must submit the
1.129(a) fee so as to toll the time period for response to
the final rejection. Otherwise, the application would be
abandoned. Upon granting of such a petition by the
Director, the 1.129(a) fee paid will be refundable to
applicant on request. Applications that fall under
1.129(a) are under final rejection and there is a time
period running against the applicant. Applicant must toll
that time period by paying the transitional after-final fee
set forth in 1.129(a) and any necessary extension of time
fees and Notice of Appeal fee. Section 1.129(a) is being
amended to indicate that the submission and the fee set
forth in 1.17(r) may be submitted before the filing of the
Appeal Brief and prior to abandonment of the application.
84. Comment: One comment suggested that if it is decided
that the transitional after-final practice is made
permanent, the PTO should seek legislative authorization to
provide reduced fees for small entities.
Response: If it is decided that the transitional
after-final practice be made permanent, the PTO will propose
legislation to accomplish this change.
85. Comment: Several comments suggested that 1.129(a)
and (b) should apply to all applications regardless of
whether they were filed before or after June 8, 1995.
Several comments suggested that the practices set forth in
1.129(a) and (b) should be made permanent.
Several comments suggested that an applicant should be
permitted to have a submission entered and considered after
any final rejection upon payment of a fee as set forth in
1.17(r), not just the first and second final rejections.
Response: The suggestions have not been adopted at this
time. However, the PTO is undertaking a project to
reengineer the entire patent process. These suggestions
will be taken under advisement in that project.
86. Comment: One comment suggested that the PTO make an
effort to treat applications in which a submission under
1.129(a) has been filed on an expedited basis.
Response: Once the submission is filed and the fee set
forth in 1.17(r) is paid the finality of the last PTO
action is withdrawn. The filing of the submission and the
fee under 1.129(a) is equivalent to the filing of a
continuing application and will be treated in the same
fashion and under the same turnaround time frame as a
continuing application.
87. Comment: One comment suggested that PTO practice be
changed so that a first Office action in a continuing
application cannot be made final.
One comment suggested that PTO practice regarding second
action final be relaxed.
Response: The suggestions have not been adopted at this
time. However, the PTO is undertaking a project to
reengineer the entire patent process. These suggestions
will be taken under advisement in that project.
88. Comment: One comment stated that in proposed 1.129,
there is no express provision for the finality of the
previous rejection to be withdrawn if applicant complies
with the proposed rule. It is suggested that the proposed
rule state that the finality of the previous action would be
withdrawn if applicant complied with the rule when making a
first or second submission after a final action.
Response: The suggestion has been adopted.
89. Comment: One comment requested that the PTO clarify
whether 1.129(a) required the first final rejection to be
specifically withdrawn and a different final (i.e., one
containing a new ground of rejection) rejection made before
applicant is entitled to make a second submission.
Response: The final rule provides that the finality of the
previous final office action is automatically withdrawn upon
the timely filing of the first 1.129(a) submission and the
fee set forth in 1.17(r). If the first PTO action
following the payment of the 1.17(r) fee is a non-final
office action, a further response from applicant will be
entered and considered as a matter of right without payment
of the fee set forth in 1.17(r). If the next office
action or any subsequent action is made final, the finality
of that office action will be automatically withdrawn upon
the timely filing of a second 1.129(a) submission and the
fee set forth in 1.17(r).
90. Comment: One comment suggested that the PTO not permit
the first PTO action following the payment of the
1.17(r) fee to be made final under any circumstances.
Response: The suggestion has not been adopted. The first
PTO action following the payment of the 1.17(r) fee may be
made final under the same conditions that a first office
action may be made final in a continuing application (see
section 706.07(b) of the MPEP). However, it would not be
proper to make final a first Office action in a continuing
or substitute application where the continuing or substitute
application contains material which was presented in the
earlier application after final rejection or closing of
prosecution but was denied entry because (1) new issues were
raised that required further consideration and/or search, or
(2) the issue of new matter was raised. The procedure set
forth in section 706.07(b) of the MPEP will apply to
examination of a submission considered as a result of the
procedure under 1.129(a).
91. Comment: Several comments suggested that the filing of
the first submission under 1.129(a) within the statutory
period for response set in final rejection should toll the
running of the six-month statutory period.
Response: The filing of a submission, e.g., an information
disclosure statement or an amendment, after a final
rejection without payment of the fee set forth in 1.17(r)
will not toll the period for response set in the final
rejection. However, 1.129(a) is being amended to provide
in the rule that the finality of the previous Office action
is automatically withdrawn upon the filing of the submission
and the payment of the fee set forth in 1.17(r). Thus,
the filing of a submission and the payment of the fee set
forth in 1.17(r) and any extension of time fees and Notice
of Appeal fee, if they are necessary to avoid abandonment of
the application, will automatically toll the period for
response set in the final rejection. It must be kept in
mind that the provisions of 1.129 apply only to an
application, other than for reissue or a design patent, that
has been pending for 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).
92. Comment: One comment asked (1) whether it would be
necessary to file a Notice of Appeal and appeal fee with or
after the first submission and fee if the examiner acts on
the first submission and before the end of the six months
from the date of the final rejection issues (a) a notice of
allowance, (b) a non-final action, or (c) a second final
rejection; (2) would the Notice of Appeal and fee be due
only at the end of the six months from the date of the final
rejection regardless of whether the examiner has acted on
the submission by then; and (3) if the Notice of Appeal and
fee have once been paid following a first final rejection,
would a second notice and fee need to be paid if a second
final rejection were issued and applicant desired to file a
second submission under 1.129(a).
Another comment suggested that the appeal fee set forth in
1.17(e) should not be required where the Notice of Appeal
is filed with a 1.129(a) submission and the fee set forth
in 1.17(r).
Response: As to questions (1) and (2) and the second
comment, if the first submission and the proper fee set
forth in 1.17(r) are timely filed in response to the final
rejection, the finality of the previous rejection will be
automatically withdrawn and applicant need not file the
Notice of Appeal or the appeal fee. For example, if the
first submission and the proper fee set forth in 1.17(r)
were filed on the last day of the six-month period for
response to the final rejection, applicant must also file a
petition for three months extension of time with the
appropriate fee in order to avoid abandonment of the
application. In such case, applicant need not file the
Notice of Appeal or the appeal fee if the proper fee set
forth in 1.17(r) was timely paid. However, under the same
fact situation, if applicant failed to submit the proper fee
set forth in 1.17(r), the finality of the previous
rejection would not be withdrawn and the time period for
response would still be running against applicant. In such
case, a Notice of Appeal and appeal fee must also accompany
the papers filed at the six-month period in order to avoid
abandonment of the application. The proper fee set forth in
1.17(r) must be filed prior to the filing of the Appeal
Brief and prior to the abandonment of the application.
As to question (3), if the Notice of Appeal and fee have
once been paid following a first final rejection and
applicant timely files a first submission and the proper fee
set forth in 1.17(r), the finality of the previous final
rejection will be withdrawn and the appeal fee paid could be
applied against any subsequent appeal. If the examiner
issues a non-final rejection in response to applicant's
first submission, a further response from applicant will be
entered and considered as a matter of right. If any
subsequent Office action is made final, applicant may file a
second submission along with the proper fee pursuant to
1.129(a). If the second submission and the proper fee set
forth in 1.17(r) are timely filed in response to the
subsequent final rejection, the finality of the previous
final rejection will be withdrawn. Any submission filed
after a final rejection made in the application subsequent
to the fee under 1.129(a) having been paid twice will be
treated as set forth in 1.116. Applicant may, upon
payment of the appeal fee, appeal a final rejection within
the time allowed for response pursuant to 1.191.
93. Comment: One comment questioned whether the "first
submission" under 1.129(a) has to be the first response
filed after a final rejection or could it include subsequent
responses to the same final rejection.
Response: The "first submission" under 1.129(a) would
include all responses filed prior to and with the payment of
the fee required by 1.129(a) provided the submission and
fee are filed prior to the filing of the Appeal Brief and
prior to abandonment of the application.
94. Comment: One comment suggested that 1.129(a) be
changed to permit the procedure to be available up until the
filing of an Appeal Brief since it is not uncommon to file
an amendment after a Notice of Appeal is filed but before
the filing of an Appeal Brief.
Response: The suggestion has been adopted.
Section 1.129(a) is being amended to indicate that the
submission and the fee set forth in 1.17(r) must be
submitted before the filing of the Appeal Brief and prior to
abandonment of the application.
95. Comment: One comment suggested that the transitional
after-final practice be available at any time after final,
including after the resolution of an appeal unfavorable to
applicant in whole or in part.
Response: The suggestion has not been adopted.
Section 1.129(a) is being amended to indicate that the
submission and the fee set forth in 1.17(r) must be
submitted before the filing of the Appeal Brief and prior to
abandonment of the application. The suggestion to extend
the period to after the resolution of an appeal unfavorable
to applicant in whole or in part has not been adopted
because the suggestion would further unduly extend
prosecution of the application.
96. Comment: One comment stated that if an examiner must
withdraw the finality of the rejection as a result of the
transitional provision, the examiner should be credited with
two counts in order to be compensated for the additional
work.
Response: The examiner credit system is not part of this
rulemaking package. However, as part of the Public Law
103-465 implementation plan, some accommodation will be made
for the extra work performed.
97. Comment: One comment stated that regarding the
transitional after-final practice, the fee should not be
required if the only reason is to have the PTO consider
recently obtained art.
Response: Under current practice, if applicant submits
prior art after final rejection but before the payment of
issue fee, the art will be considered if applicant makes the
required certification and submits a petition with the
required petition fee of $130.00 (see section 609 of the
MPEP). If applicant can make the certification, applicant
would not have to rely on the transitional after-final
procedure to have the prior art considered. In the event
that applicant cannot make the certification, then the
procedure under 1.129(a) is available if applicant wishes
the PTO to consider the prior art without refiling the
application.
98. Comment: One comment suggested that the PTO modify
existing restriction practice to make it more difficult for
examiners to require restriction, for example, by requiring
every restriction requirement to show two-way distinctness
and separate status in the art established by means other
than reference to the PTO's classification system.
Response: The suggestion has not been adopted. However,
the PTO is undertaking a project to reengineer the entire
patent process. This suggestion will be taken under
advisement in that project.
99. Comment: One comment suggested that the pendency
periods required by 1.129(a) and (b) should be 18 months
rather than 2-year and 3-year, respectively.
Response: The pendency periods set forth in the rule which
establish eligibility for the transitional procedures are
set forth in Public Law 103-465.
100. Comment: One comment suggested that 1.129(a) be
amended to permit prosecution to be reopened after a Notice
of Allowance or final rejection upon the filing of a form
requesting that prosecution be reopened and payment of the
necessary fee.
Response: The procedures set forth in 1.129(a) are not
applicable to amendments filed after a Notice of Allowance.
Amendments filed after the mailing of a Notice of Allowance
are governed by 1.312. The procedures set forth in
1.129(a) are applicable to amendments filed after a final
rejection. If applicant submits an amendment after final
and the examiner notifies the applicant in writing that the
amendment is not entered, 1.129(a) permits applicant to
submit a letter prior to abandonment of the application and
prior to the filing of the Appeal Brief, requesting entry of
the prior filed amendment along with the payment of the
appropriate fee set forth in 1.17(r). The letter
requesting entry of the prior filed amendment would be
equivalent to "a form" as suggested in the comment.
101. Comment: One comment suggested that the PTO
liberalize its current practice under 1.116 to make it
easier for amendments or evidence to be entered and
considered after a final rejection.
Response: The suggestion has not been adopted since no
change was proposed to 1.116 in the Notice of Proposed
Rulemaking. However, the suggestion will be taken under
advisement as part of a comprehensive effort being conducted
by the PTO to reengineer the entire patent process. It
should be noted that any change to liberalize the current
practice under 1.116 would necessitate increasing fees.
102. Comment: Several comments suggested that the
transitional restriction provision be modified to state that
no restriction requirement shall be made or maintained in
any application pending for three years on the effective
date of the legislation. The comment stated that if
restriction requirements made prior to April 8, 1995, are
permitted to be maintained then applicants will be forced to
file divisional applications resulting in the automatic loss
of term after June 8, 1995. A heavy penalty will be placed
on the chemical, pharmaceutical and biotechnology
industries, who have less than 4 months to search through
the ancestors of all pending applications and to identify
all restriction requirements and to file divisional
applications before June 8, 1995. The comment further
suggested that the current restriction practice be changed
in view of the implementation of the 20-year term.
Response: The suggestion has not been adopted. The
two-month date set forth in 1.129(b)(1)(i) is from the
Statement of Administrative Action, which is part of Public
Law 103-465. Under section 102 of Public Law 103-465, "the
statement of administrative action approved by the Congress
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 Commissioner does not
have any authority to establish rules which are inconsistent
with the Act. It is noted that in cases where a restriction
requirement was made prior to April 8, 1995, applicant will
have sufficient time to file divisional applications prior
to June 8, 1995, so as to retain the benefit of the 17-year
patent term for those divisional applications.
The PTO is currently reviewing the restriction practice in
view of the implementation of the 20-year patent term. It
is noted that a change in restriction practice without
changes to other fees would have a negative impact on
funding needed to operate the PTO.
103. Comment: Several comments suggested that proposed
exceptions (1) and (2) in 1.129(b) ignore the mandatory
language of section 532(2)(B) of Public Law 103-465 and
should be deleted.
Response: The suggestion has not been adopted. The
exceptions referred to are contained in the Statement of
Administrative Action, which is part of Public Law 103-465.
Under section 102 of Public Law 103-465, "the statement of
administrative action approved by the Congress 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."
104. Comment: One comment asked whether "restriction"
under 1.129(b) apply to election of species under 1.146.
Response: "Restriction" under 1.129(b) applies to both
requirements under 1.142 and elections under 1.146.
105. Comment: Several comments requested that
clarification be made as to what constitutes "actions by the
applicant" in 1.129(b)(1) and specifically, whether a
request for extension of time under 1.136(a) constitutes
such "actions" by the applicant.
Response: Examples of what constitute "actions by the
applicant" in 1.129(b)(1) are: (1) applicant abandons the
application and continues to refile the application such
that no Office action can be issued in the application, and
(2) applicant requests suspension of prosecution under
1.103(a) such that no Office action can be issued in the
application. Extension of time under 1.136(a) would not
constitute such "actions by the applicant" under
1.129(b)(1).
106. Comment: One comment suggested that the one-month
period set forth in 1.129(b) is insufficient to give an
applicant time to file a petition under 1.144 from a
restriction requirement. Several comments suggested that
1.129(b) be amended to permit applicant to challenge the
restriction requirement by way of a petition before being
required to pay the fees set forth in 1.17(s).
Response: Section 1.129(b)(2) is being amended in the final
rule package to indicate that applicant will be given "a
time period" to (1) make an election, if no election has
been previously made, and pay the fee set forth in
1.17(s), (2) confirm an earlier election and pay the fee
set forth in 1.17(s), or (3) file a petition under
1.129(b)(2) traversing the restriction requirement. If
applicant chooses not to pay the fee set forth in 1.17(s),
applicant may file a petition under 1.129(b)(2) requesting
immediate review by the Group Director of the restriction
requirement. No petition fee is required. A petition under
1.129(b)(2) rather than under 1.144 would be more
appropriate under the circumstances since a petition under
1.144 requires the examiner to make the restriction final
before the petition can be considered.
107. Comment: One comment suggested that if applicant
elects not to pay the fee set forth in 1.17(s), applicant
should be allowed to elect the invention to be examined.
Response: The suggestion has been adopted.
Section 1.129(b) is being amended to indicate that if
applicant chooses not to pay the fees for the additional
inventions, applicant must elect the invention to be
examined and the claims directed to the non-elected
inventions for which no fee has been paid will be withdrawn
from consideration.
108. Comment: One comment suggested that the PTO amend the
rules to permit all, or at least several, inventions to be
examined in a single application upon payment of an
appropriate fee.
Response: The suggestion has not been adopted at this time.
However, the PTO is currently undertaking a project to
reengineer the entire patent process. The suggestion will
be taken in advisement in this project.
109. Comment: One comment suggested that PTO follow the
wording of 35 U.S.C. 121 and only require restriction where
an application claims two or more independent and distinct
inventions rather than two or more independent or distinct
inventions.
Response: In making restriction requirements, the PTO has
always followed the wording of 35 U.S.C. 121 to require
restriction if two or more independent and distinct
inventions are claimed in an application rather than
independent or distinct as suggested by the comment. The
term "independent" includes species and related inventions
such as combination/subcombination and process and product.
Restriction is proper if these independent inventions are
patentably distinct (see section 802.01 of the MPEP).
110. Comment: One comment suggested that the standard for
determining whether an application contains independent and
distinct inventions should only be the "unity of invention"
standard used for PCT applications.
Response: The suggestion has not been adopted. The current
restriction practice for 35 U.S.C. 111(a) applications is
governed by 35 U.S.C. 121 and 1.141, 1.142 and 1.146.
The PCT "unity of invention" standard only applies to PCT
applications and applications filed under 35 U.S.C. 371.
The PTO is currently reviewing the restriction practice in
view of the implementation of the 20-year patent term. It
is noted that a change in restriction practice without
changes to other fees would have a negative impact on
funding needed to operate the PTO.
111. Comment: One comment suggested that the PTO apply the
PCT unity of invention standard as interpreted by the EPO
and that 1.475(b) be amended to permit a broad range of
claims in a single application.
Response: The PTO is currently undertaking a project to
reengineer the entire patent process. The suggestion will
be taken under advisement in this project.
112. Comment: One comment suggested that the PTO examiner
should not be permitted to issue a restriction requirement
or an election of species requirement if the ISA and the
IPEA have found that an application complies with the unity
of invention requirement.
Another comment suggested that the PTO consider allowing
applicants to retain all claims in a single application when
the claims are related, e.g., method and apparatus claims.
Another comment suggested that all species be searched
before the first Office action regardless of whether one
species is found to be unpatentable.
Another comment suggested that election of species
requirements be prohibited.
Response: The suggestions have not been adopted. These
issues were not addressed in the Notice of Proposed
Rulemaking. However, the PTO is currently undertaking a
project to reengineer the entire patent process. The
suggestions will be taken under advisement in that project.
113. Comment: One comment suggested that decisions on
whether to issue a restriction requirement be made within
two-three months of the application filing date, and, if the
requirement is traversed, the examiner should determine
within four-five months of the filing date whether to
maintain the requirement. Decisions on petitions to
withdraw a restriction requirement should be decided within
one month.
Response: The suggestion has not been adopted. Current
practice dictates that restriction requirements be made at
the earliest appropriate time in the pendency of a given
application, e.g., in the first Office action. It would be
difficult to issue a restriction requirement within
two-three months of the application filing date as suggested
since a large number of applications are filed with missing
parts and applicants are given a time period to submit the
missing parts. Furthermore, applications must be processed
by the Application Branch and must be screened by Licensing
and Review for national security. Petitions to withdraw a
restriction requirement should be acted on by the Group
Director expeditiously.
114. Comment: One comment argued that the phrases, "so as
to be pending for a period of no longer than 12 months" and
"under no circumstances will the provisional application be
pending after 12 months", in 1.139 were repetitious and
suggested that one or both of the phrases be deleted.
Response: The suggestion has not been adopted. The
statements are included for emphasis.
115. Comment: One comment suggested that 1.139 clearly
state that if the revival petition is filed later than 12
months after filing of the provisional application, then the
revival is for the sole purpose of providing copendency for
a 35 U.S.C. 111(a) application filed during that 12-month
period.
Response: The suggestion has not been adopted. The
proposed language is not necessary.
116. Comment: One comment stated that 35 U.S.C. 154(b) as
contained in Public Law 103-465 does not give the
Commissioner any authority to decide the period of
extension. Therefore, proposed 1.701 is without statutory
basis.
Response: 35 U.S.C. 6(a) gives the Commissioner authority
to establish regulations not inconsistent with law.
Section 1.701 is consistent with 35 U.S.C. 154(b) and
furthermore, the Commissioner has the authority under
35 U.S.C. 154(b)(3)(C) to establish regulations to address
the standards for determining due diligence.
117. Comment: One comment questioned whether patent term
extension under 35 U.S.C. 154(b) is available for patents
issuing: (1) before June 8, 1995, with a 17-year patent
term or a 17/20 year patent term; (2) on or after June 8,
1995, on applications filed before June 8, 1995, with a 17-
year patent term or a 17/20 year patent term.
Response: None of the patents set forth in the examples are
eligible for patent term extension. Under the terms of the
statute, patent term extension is only available for patents
issued on applications filed on or after June 8, 1995.
118. Comment: Several comments questioned whether a patent
issued on a continuing application is entitled to a patent
term extension under 35 U.S.C. 154(b) due to interference,
secrecy order, or appellate review delays occurring in the
examination of the parent application.
Response: If the delay in the parent application
contributed to a delay in the issuance of a patent in the
continuing application, the patent granted on the continuing
application may be eligible for an extension under 35 U.S.C.
154(b).
119. Comment: One comment suggested that the patent term
be extended for a period of time equal to the time necessary
to revive an application improperly abandoned due to PTO
error. Another comment suggested that patent term extension
be available for other PTO delays.
Response: The suggestions have not been adopted.
Section 154(b) of title 35, United States Code, only permits
patent term extension for delays due to interferences,
secrecy orders, and/or successful appeals.
120. Comment: One comment suggested that the period of an
extension granted under 1.701 be printed on the face of
the patent.
Response: The PTO will publish on the face of the patent
any patent term extension that is granted pursuant to
1.701.
121. Comment: One comment suggested that the word
"interference" be inserted before the word "proceedings" in
1.701(a)(1).
Response: The suggestion has been adopted.
122. Comment: One comment stated that the last sentence of
1.701(b) is confusing because it suggests that patent term
extension will be available in cases of terminal disclaimer
and that the extension begins on the terminal disclaimer
date rather than the original expiration date. This
statement is contrary to 35 U.S.C. 154(b)(2) which does not
permit any patent term extension for appellate delay if the
patent is subject to a terminal disclaimer.
Response: In order to reduce confusion, the last sentence
of 1.701(b) is being amended to state that the extension
will run from the expiration date of the patent. The
reference to "terminal disclaimer" is being deleted.
123. Comment: Two comments stated that if an application
involved in an interference proceeding contains uninvolved
claims, those uninvolved claims should not be entitled to
extension of patent term under proposed 1.701 because
applicant could cancel those uninvolved claims from the
application and refile those claims in a continuation
application. It is suggested that if an applicant leaves
conclusively uninvolved claims (where no 1.633(c)(4)
motion is filed) in the application in interference,
applicant does not get the benefit of the extension for any
claim.
Response: The suggestion has not been adopted. The
statute, 35 U.S.C. 154(b), grants patent term extension to a
patent if the issuance of the patent was delayed due to
interference proceeding under 35 U.S.C. 135(a). The statute
does not exclude applications containing uninvolved claims.
The Commissioner does not have the authority to establish
regulations which are inconsistent with the law. Therefore,
an application involved in an interference which contains
uninvolved claims will be entitled to patent term extension
if the issuance of the patent was delayed due to
interference proceeding under 35 U.S.C. 135(a).
124. Comment: One comment asked whether applicant is
entitled to patent term extension regardless of whether an
interference involving applicant's application is ultimately
declared.
One comment asked if the PTO ends the suspension without
declaring an interference, and continued prosecution results
in filing of a continuation or divisional application, are
such subsequent cases entitled to the extension.
Response: An application will not be suspended unless it is
decided that an interference can be declared involving that
application. If prosecution of applicant's application is
suspended due to an interference not involving applicant's
application and an interference involving applicant's
application is later declared, applicant will be entitled to
patent term extension under 1.701(c)(1)(ii) for the
suspension period and under 1.701(c)(1)(i) for the
interference period. However, if prosecution of applicant's
application is suspended due to an interference not
involving applicant's application and if the PTO ends the
suspension of the application without declaring an
interference involving applicant's application, that
application will be entitled to patent term extension under
1.701(c)(1)(ii). If prosecution results in filing of a
continuing application and if the delay in the parent
application contributed to a delay in the issuance of a
patent on the continuing application, the patent granted on
the continuing application may be eligible for an extension
under 35 U.S.C. 154(b).
125. Comment: One comment stated that delays in the
issuance of a patent can exceed the five-year limit provided
for in proposed 1.701(b). Where the delay was not the
fault of the applicant, why should there be this maximum?
Another comment stated that in a biotechnology application,
if suspension of the application results in a declared
interference, the period of delay calculated under
1.701(c)(1)(i) will likely consume most of the five-year
maximum extension. This renders the value of any time
period measured under 1.701(c)(1)(ii) negligible, thus
diminishing the rights of applicant due to the unregulated
suspension powers of the PTO.
Response: The five-year limit for patent term extension set
forth in 1.701(b) is required by statute, 35 U.S.C.
154(b).
126. Comment: One comment suggested that 1.701(c)(1)(i)
be amended to state that an application added after an
interference is declared is entitled to an extension
measured only from the date of redeclaration.
Response: The suggestion has not been adopted. The
language in 1.701(c)(1)(i) is clear that for an
application that is added to an interference, that
application is entitled to an extension measured from the
date of redeclaration of the interference.
127. Comment: One comment stated that 1.701(c)(1)(ii)
does not address the case where a suspended application is
added to the interference without the suspension being
lifted.
Response: Section 1.701(c)(1)(ii) is being amended to
reference the endpoint for the suspension period to the date
of termination of the suspension. Where prosecution of an
application is suspended due to interference proceedings not
involving the application, the suspension is made pursuant
to 1.103(b). When that application is added to an
interference, the suspension pursuant to 1.103(b) will be
automatically lifted. The application is entitled to patent
term extension for the period of suspension pursuant to
1.701(c)(1)(ii) and for the period of interference
pursuant to 1.701(c)(1)(i). Under 1.701(c)(1)(ii), the
period of suspension begins on the date the application is
suspended and ends on the date the suspension under
1.103(b) is terminated, which in this case would be the
same date as the date of redeclaration of the interference.
128. Comment: One comment suggested that the phrase ",if
any," in 1.701(c)(1)(i) and (ii) is unnecessary.
Response: The suggestion has not been adopted. However,
1.701(c)(1)(i) is being amended for clarity by deleting
the phrase "if any" after the first occurrence of
"interference" and by inserting the same phrase after the
phrase "the number of days."
129. Comment: Several comments suggested that the phrase
"was declared or redeclared" in 1.701(c)(1)(i) be changed
to --was first declared--.
Response: The suggestion has not been adopted. The
language of the rule reads "with respect to each
interference in which the application was involved, the
number of days in the period beginning on the date the
interference was declared or redeclared to involve the
application in the interference...." An interference may be
declared as A vs. B and later redeclared as A vs. B vs. C.
Under the rule, the period of extension would be counted,
with respect to applications A and B, from the date the
interference was declared to involve the applications A and
B. With respect to application C, the period of extension
would be counted from the date the interference was
redeclared to involve the application C. No ambiguity is
seen in the language as originally proposed.
130. Comment: One comment suggested that the use of the
phrase "appellate review" in reference to an action under
35 U.S.C. 145 or 146 is incorrect, since an action under
35 U.S.C. 145 or 146 is not considered as an "appellate
review" and suggests that 1.701(a)(3) be amended so that
the introductory phrase reads "Appellate review by the Board
of Patent Appeals and Interferences or review by a Federal
court under 35 U.S.C. 141 or 145,...."
Response: The suggestion has not been adopted. The use of
the phrase "appellate review" in reference to an action
under 35 U.S.C. 145 or 146 is technically incorrect.
However, Public Law 103-465 provides for extension of patent
term for "delay due to appellate review by the Board of
Patent Appeals and Interferences or by a Federal court".
The introductory phrase referred to in the comment uses the
exact language found in the statute.
131. Comment: One comment suggested that 1.701(a) be
amended to specify whether extensions for appellate delays
are available for reissue applications.
Response: The suggestion has not been adopted. Under
35 U.S.C. 251, the term of a reissue patent is "for the
unexpired part of the term of the original patent."
Therefore, patent term extension for appellate delays is not
available for reissue applications.
132. Comment: One comment suggested that 1.701(d) be
deleted.
Response: The suggestion has not been adopted.
Section 1.701(d) sets forth the language found in the
statute, 35 U.S.C. 154(b)(3) and further provides a standard
for determining due diligence.
133. Comment: Several comments suggested that the lack of
due diligence set forth in 1.701(d)(2) be limited to the
acts which occurred during the appellate period (after the
filing of a Notice of Appeal) and not during prosecution.
Response: The suggestion has been adopted. Section
1.701(d) is being amended accordingly.
134. Comment: One comment suggested that the rules be made
clear that a suspension under 1.103 does not
constitute a lack of due diligence under 1.701(d)(2).
Response: The suggestion has not been adopted. A request
for suspension pursuant to 1.103(a) during the appellate
review period will be considered to be prima facie evidence
of lack of due diligence.
135. Comment: Several comments stated that the rules
permit extensions of time and the filing of informal
applications. These acts should not constitute lack of due
diligence since the proposed rule defined the standard for
determining due diligence is whether the applicant exhibited
that degree of timeliness as may reasonably be expected
from, and which is ordinarily exercised by, a person. One
comment suggested that the Office adopt a gross negligence
standard.
Response: The examples of acts that may constitute lack of
due diligence set forth in the Notice of Proposed Rulemaking
(extensions of time, filing of nonresponsive submissions,
and filing of informal applications) are being withdrawn.
The suggestion regarding the adoption of a gross negligence
standard has not been adopted. As set forth in
1.701(d)(2), the standard for determining due diligence is
whether applicant exhibited that degree of timeliness as may
reasonably be expected from, and which is ordinarily
exercised by, a person during the appellate review period.
136. Comment: One comment stated that the PTO list in the
rule all circumstances in which an applicant will be
considered not to have acted with due diligence.
Another comment suggested that objective criteria for
"diligence" be set forth in 1.701(d)(2).
Response: The suggestion has not been adopted. Whether an
action by the applicant constitutes lack of due diligence
will be determined by the facts and circumstances of each
case. Since lack of due diligence is determined on a
case-by-case basis, it would not be possible to list all
circumstances in the rule. Examples of acts which will
constitute prima facie evidence of lack of due diligence
are: (1) abandonment of the application during appellate
review; and (2) suspension of action under 1.103(a) during
appellate review.
137. Comment: One comment suggested that guidance be
provided in the comments to the Notice of Final Rules
identifying in what circumstance is a patent issued
"pursuant to an appellate decision reversing an adverse
determination of patentability."
Several comments questioned whether the reversal of all
rejections on one of several appealed claims would entitle
applicant to an extension under 1.701(a)(3). Two comments
suggested that the rule be redrafted to allow appropriate
extension of term where the Board or a court reverses at
least "in part."
Response: Extension of patent term under 1.701(a)(3) is
applicable if all the rejections of any one claim are
ultimately reversed. The rule is clear and no clarification
is needed.
138. Comment: One comment stated that 1.701 does not
address the situation where applicant appeals with both
allowed and rejected claims. In such case, patent term
extension should be available for any claims that were
allowed prior to appellate review, if the allowed claims
were in the same application, whether or not the decision of
the examiner on the rejected claims is ultimately reversed.
Applicant should not have to refile the allowed claims and
rejected claims in separate cases in order to take advantage
of the patent term extension.
Response: If applicant chooses to keep the allowed claims
with the rejected claims in the application on appeal,
patent term extension pursuant to 35 U.S.C. 154(b)(2) is
only available if a patent was issued pursuant to a decision
reversing an adverse determination of patentability and if
the patent is not subject to a terminal disclaimer due to
the issuance of another patent claiming subject matter that
is not patentably distinct from that under appellate review.
If the appellate review is not successful, applicant will
not be entitled to patent term extension.
139. Comment: One comment questioned whether the phrase
"if the patent is not subject to a terminal disclaimer" in
1.701(a)(3) is intended to be limited to those
applications in which a terminal disclaimer has actually
been filed or encompass those applications in which a double
patenting rejection has been made and a terminal disclaimer
suggested by an examiner.
Response: The calculation of any applicable extension under
1.701 will be made prior to the mailing of the Notice of
Allowance and Issue Fee Due. At that time, any double
patenting rejection would have been resolved and a terminal
disclaimer would have been filed if one was required.
140. Comment: One comment stated that 1.701(d)(1) is
inconsistent with 35 U.S.C. 154(b)(2) and (b)(3), because
the period of extension for appellate review would be
calculated under 1.701(d)(1) by first subtracting the
period of appellate review occurring within three years of
the filing date before the five-year limit is imposed. It
is suggested that 1.701 be modified to be consistent with
35 U.S.C. 154(b)(2) which requires the five-year limit to be
imposed before the subtraction for appellate review
occurring within three years of the filing date.
Response: The suggestion has not been adopted. Section
1.701 is not inconsistent with 35 U.S.C. 154(b)(2) and
(b)(3). The period of extension referred to in
35 U.S.C. 154(b)(2) is defined in 35 U.S.C. 154(b)(3).
Therefore, one must determine the period of extension in
35 U.S.C. 154(b)(3)(A), then reduce that period by the time
determined in 35 U.S.C. 154(b)(3)(B) and (b)(3)(C). Then,
according to 35 U.S.C. 154(b)(2), the resulting time period
may not be more than five years.
141. Comment: One comment suggested that the Commissioner
identify a senior person who is charged with approving all
reductions in extension of patent term rather than leaving
the decision to the examiner or the SPE.
One comment questioned who will make the calculation of the
period of patent term extension under 1.701 and whether
that calculation can be challenged and by whom.
Response: It is contemplated that the period of patent term
extension calculated and any reduction in the extension of
patent term will not be made by an examiner. It is noted
that the period of patent term extension will be identified
in the Notice of Allowance and Issue Fee Due and if
applicant disagrees with the period, applicant may request
further review by way of a petition under 1.181. If an
error is noted after the patent issues, patentee or any
third party may seek correction of the period of patent term
extension granted by filing a request for a Certificate of
Correction pursuant to 1.322.
142. Comment: One comment questioned whether a challenge
to the period of patent term extension calculated by the PTO
under 1.701 would be required to be made within a fixed
period.
Response: No. However, the longer applicant delays filing
a petition under 1.181 challenging the period of extension
calculated by the PTO, the less likely any error will be
corrected before the patent is issued with the error printed
on the patent. If the patent issues with an incorrect
period of extension, applicant should file a request for a
Certificate of Correction pursuant to 1.322 instead of a
petition under 1.181.
143. Comment: One comment suggested that 1.701(d)(2) be
amended to require PTO to notify applicant in writing of any
intent to reduce the term extension for lack of due
diligence, stating the specific basis, and provide applicant
with a reasonable opportunity to respond.
Response: The suggestion has not been adopted. The period
of patent term extension will be identified in the Notice of
Allowance and Issue Fee Due and if applicant disagrees with
the period, applicant may request further review by way of a
petition under 1.181.
144. Comment: One comment suggested that a cover sheet for
use in recording assignments be included in the final rules
package as an addendum.
Response: The suggestion has not been adopted. A sample
cover sheet for use in recording assignments was published
as Appendix B in the Federal Register on July 6, 1992, at
57 FR 29634 and in the Official Gazette on July 28, 1992, at
1140 Off. Gaz. Pat. Office 63 and may be obtained from
Assignment Branch.
Other Considerations
This final rule change is in conformity with the
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601
et seq., Executive Order 12612, and the Paperwork Reduction
Act of 1980, 44 U.S.C. 3501 et seq. This final rule has
been determined not to be significant for the purposes of
E.O. 12866.
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
these final rule changes will not have a significant
economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The
principal impact of these changes is to provide a procedure
for domestic applicants to quickly and inexpensively file a
provisional application. The filing date of the provisional
application will not be used to measure the term of a patent
granted on an application which claims the earlier filing
date of the provisional application.
The Patent and Trademark Office has also determined that
this notice has no Federalism implications affecting the
relationship between the National Government and the States
as outlined in E.O. 12612.
These final rules contain collections of information subject
to the requirements of the Paperwork Reduction Act (Act).
The provisional application has been approved by the Office
of Management and Budget under control numbers
0651-0031 and 0651-0032. The cover sheet is approved under
OMB control number 0651-0037. The cover sheet is necessary
to expedite the processing of a provisional application and
improve quality. Public reporting burden for the collection
of information on the cover sheet is estimated to average 12
minutes per response, including the time for reviewing
instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing
the collection of information. Send comments regarding this
burden estimate or any other aspect of this collection of
information, including suggestions for reducing the burden
to the Office of Assistance Quality and Enhancement
Division, Patent and Trademark Office, Washington, D.C.
20231, and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, Washington, D.C.
20503 (ATTN: Paperwork Reduction Act Projects 0651-0031,
0651-0032, and 0651-0037).
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.
For the reasons set forth in the preamble, 37 CFR Parts 1
and 3 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 1.1 is amended by adding new paragraph (i) to
read as follows:
1.1 All communications to be addressed to Commissioner of
Patents and Trademarks.
* * * * *
(i) The filing of all provisional applications and any
communications relating thereto should be additionally
marked "Box Provisional Patent Application."
* * * * *
3. Section 1.9 is amended by revising paragraph (a) to read
as follows:
1.9 Definitions.
(a)(1) A national application as used in this chapter
means a U.S. application for patent which was either filed
in the Office under 35 U.S.C. 111, or which entered the
national stage from an international application after
compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter
means a U.S. national application for patent filed in the
Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this
chapter means a U.S. national application for patent which
was either filed in the Office under 35 U.S.C. 111(a), or
which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
* * * * *
4. Section 1.12 is amended by revising paragraph (c) to
read as follows:
1.12 Assignment records open to public inspection.
* * * * *
(c) Any request by a member of the public seeking copies
of any assignment records of any pending or abandoned patent
application preserved in secrecy under 1.14, or any
information with respect thereto, must
(1) Be in the form of a petition accompanied by the
petition fee set forth in 1.17(i), or
(2) Include written authority granting access to the
member of the public to the particular assignment records
from the applicant or applicant's assignee or attorney or
agent of record.
* * * * *
5. Section 1.14 is amended by revising paragraph (e) to
read as follows:
1.14 Patent applications preserved in secrecy.
* * * * *
(e) Any request by a member of the public seeking access
to, or copies of, any pending or abandoned application
preserved in secrecy pursuant to paragraphs (a) and (b) of
this section, or any papers relating thereto, must
(1) Be in the form of a petition and be accompanied by
the petition fee set forth in 1.17(i), or
(2) Include written authority granting access to the
member of the public in that particular application from the
applicant or the applicant's assignee or attorney or agent
of record.
* * * * *
6. Section 1.16 is amended by revising paragraphs (a)-(g)
and by adding new paragraphs (k) and (l) to read as follows:
1.16 National application filing fees.
(a) Basic fee for filing each application for an original
patent, except provisional, design or plant applications:
By a small entity ( 1.9(f))..................$365.00
By other than a small entity...................730.00
(b) In addition to the basic filing fee in an original
application, except provisional applications, for filing or
later presentation of each independent claim in excess of 3:
By a small entity ( 1.9(f))..................38.00
By other than a small entity..................76.00
(c) In addition to the basic filing fee in an original
application, except provisional applications, for filing or
later presentation of each claim (whether independent or
dependent) in excess of 20 (Note that 1.75(c) indicates
how multiple dependent claims are considered for fee
calculation purposes.):
By a small entity ( 1.9(f)).....................11.00
By other than a small entity ....................22.00
(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))....................120.00
By other than a small entity....................240.00
(If the additional fees required by paragraphs (b), (c),
and (d) of this section are not paid on filing or on later
presentation of the claims for which the additional fees are
due, they must be paid or the claims canceled by amendment,
prior to the expiration of the time period set for response
by the Office in any notice of fee deficiency.)
(e) Surcharge for filing the basic filing fee or oath or
declaration on a date later than the filing date of the
application, except provisional applications:
By a small entity ( 1.9(f)).....................65.00
By other than a small entity....................130.00
(f) Basic fee for filing each design application:
By a small entity ( 1.9(f))....................150.00
By other than a small entity....................300.00
(g) Basic fee for filing each plant application, except
provisional applications:
By a small entity ( 1.9(f))....................245.00
By other than a small entity....................490.00
* * * * *
(k) Basic fee for filing each provisional application:
By a small entity ( 1.9(f)).....................75.00
By other than a small entity....................150.00
(l) Surcharge for filing the basic filing fee or cover
sheet ( 1.51(a)(2)(i)) 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
* * * * *
7. Section 1.17 is amended by revising paragraphs (h) and
(i), and by adding new paragraphs (q), (r) and (s) to read
as follows:
1.17 Patent application processing fees.
* * * * *
(h) For filing a petition to the Commissioner under a
section listed below which refers to this
paragraph.............................................130.00
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
1.84 - for accepting color drawings or photographs
1.182 - for decision on questions 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 patent
1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in
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, 5.13 and 5.14 - 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
1.53 - to accord a filing date, except in provisional
applications
1.55 - for entry of late priority papers
1.60 - to accord a filing date
1.62 - to accord a filing date
1.97(d)- to consider an information disclosure statement
1.102 - to make 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 interference settlement
agreement
3.81 - for 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
1.48 - for correction of inventorship in a provisional
application
1.53 - to accord a provisional application a filing date
or to convert an application filed under 1.53(b)(1) to a
provisional application
(r) For entry of a submission after final rejection under
1.129(a):
By a small entity ( 1.9(f))....................365.00
By other than a small entity....................730.00
(s) For each additional invention requested to be examined
under 1.129(b):
By a small entity ( 1.9(f))....................365.00
By other than a small entity....................730.00
8. Section 1.21 is amended by revising paragraph (l) to
read as follows:
1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the
following fees for the services indicated:
* * * * *
(l) For processing and retaining any application abandoned
pursuant to 1.53(d)(1) unless the required basic filing
fee has been paid....................................$130.00
* * * * *
9. Section 1.28 is amended by revising paragraph (a) to
read as follows:
1.28 Effect on fees of failure to establish status, or
change status, as a small entity.
(a) 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 verified 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. 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. A nonprovisional application claiming
benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a
prior application may rely on a verified statement filed in
the prior application if the nonprovisional application
includes a reference to the verified statement in the prior
application or includes a copy of the verified statement in
the prior application and status as a small entity is still
proper and desired. 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 verified statement pursuant to 1.27 of this part
unless the Office is notified of a change in status.
* * * * *
10. Section 1.45 paragraph (c) is revised to read as
follows:
1.45 Joint inventors.
* * * * *
(c) If multiple inventors are named in a nonprovisional
application, each named inventor must have made a
contribution, individually or jointly, to the subject matter
of at least one claim of the application and the application
will be considered to be a joint application under 35 U.S.C.
116. If multiple inventors are named in a provisional
application, each named inventor must have made a
contribution, individually or jointly, to the subject matter
disclosed in the provisional application and the provisional
application will be considered to be a joint application
under 35 U.S.C. 116.
11. Section 1.48 is revised to read as follows:
1.48 Correction of inventorship.
(a) If the correct inventor or inventors are not named in
a nonprovisional application through error without any
deceptive intention on the part of the actual inventor or
inventors, the application may be amended to name only the
actual inventor or inventors. Such amendment must be
diligently made and must be accompanied by:
(1) a petition including a statement of facts verified
by the original named inventor or inventors establishing
when the error without deceptive intention was discovered
and how it occurred;
(2) an oath or declaration by each actual inventor or
inventors as required by 1.63;
(3) the fee set forth in 1.17(h); and
(4) the written consent of any assignee. When the
application is involved in an interference, the petition
shall comply with the requirements of this section and shall
be accompanied by a motion under 1.634.
(b) If the correct inventors are named in the
nonprovisional application when filed and the prosecution of
the application results in the amendment or cancellation of
claims so that less than all of the originally named
inventors are the actual inventors of the invention being
claimed in the application, an amendment shall be filed
deleting the names of the person or persons who are not
inventors of the invention being claimed. The amendment
must be diligently made and shall 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(h).
(c) If a nonprovisional application discloses unclaimed
subject matter by an inventor or inventors not named in the
application, the application may be amended pursuant to
paragraph (a) of this section to add claims to the subject
matter and name the correct inventors for the application.
(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 actual inventor
or inventors, the provisional application may be amended to
add the name or names of the actual inventor or inventors.
Such amendment must be accompanied by:
(1) a petition including a statement that the error
occurred without deceptive intention on the part of the
actual inventor or inventors, which statement must be a
verified statement if made by a person not registered to
practice before the Patent and Trademark Office; 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, 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 of facts verified
by the person or persons whose name or names are being
deleted establishing that the error occurred without
deceptive intention;
(2) the fee set forth in 1.17(q); and
(3) the written consent of any assignee.
12. Section 1.51 is amended by revising paragraphs (a) and
(b) 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.
(1) A complete application filed under 1.53(b)(1)
comprises:
(i) A specification, including a claim or claims,
see 1.71 to 1.77;
(ii) An oath or declaration, see 1.63 and 1.68;
(iii) Drawings, when necessary, see 1.81 to 1.85;
and
(iv) The prescribed filing fee, see 1.16.
(2) A complete provisional application filed under
1.53(b)(2) comprises:
(i) A cover sheet identifying:
(A) The application as a provisional application,
(B) The name or names of the inventor or
inventors, (see 1.41),
(C) The residence of each named inventor,
(D) The title of the invention,
(E) The name and registration number of the
attorney or agent (if applicable),
(F) The docket number used by the person filing
the application to identify the application (if applicable),
(G) The correspondence address, and
(H) 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);
(ii) A specification as prescribed by 35 U.S.C. 112,
first paragraph, see 1.71;
(iii) Drawings, when necessary, see 1.81 to 1.85;
and
(iv) The prescribed filing fee, see 1.16.
(b) 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.
* * * * *
13. Section 1.53 heading and paragraphs (a)-(e) are revised
to read as follows:
1.53 Application number, filing date, and completion of
application.
(a) Any application for a patent received in the Patent
and Trademark Office will be assigned an application number
for identification purposes.
(b)(1) The filing date of an application for patent filed
under this section, except for a provisional application, is
the date on which: a specification 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 in the name of the actual
inventor or inventors as required by 1.41. No new matter
may be introduced into an application after its filing date
( 1.118). If all the names of the actual inventor or
inventors are not supplied when the specification and any
required drawing are filed, the application will not be
given a filing date earlier than the date upon which the
names are supplied unless a petition with the fee set forth
in 1.17(i) is filed which sets forth the reasons the delay
in supplying the names should be excused. A continuation or
divisional application (filed under the conditions specified
in 35 U.S.C. 120 or 121 and 1.78(a)) may be filed under
this section, 1.60 or 1.62. A continuation-in-part
application may be filed under this section or 1.62.
(2) The filing date of a provisional application is the
date on which: a specification as prescribed by
35 U.S.C. 112, first paragraph; and any drawing required by
1.81(a), are filed in the Patent and Trademark Office in
the name of the actual inventor or inventors as required by
1.41. No amendment, other than to make the provisional
application comply with all applicable regulations, may be
made to the provisional application after the filing date of
the provisional application. If all the names of the actual
inventor or inventors are not supplied when the
specification and any required drawing are filed, the
provisional application will not be given a filing date
earlier than the date upon which the names are supplied
unless a petition with the fee set forth in 1.17(q) is
filed which sets forth the reasons the delay in supplying
the names should be excused.
(i) A provisional application must also include a
cover sheet identifying the application as a provisional
application. Otherwise, the application will be treated as
an application filed under 1.53(b)(1).
(ii) An application for patent filed under
1.53(b)(1) may be treated as a provisional application and
be accorded the original filing date provided that a
petition requesting the conversion, with the fee set forth
in 1.17(q), is filed prior to the earlier of the
abandonment of the 1.53(b)(1) application, the payment of
the issue fee, the expiration of 12 months after the filing
date of the 1.53(b)(1) application, or the filing of a
request for a statutory invention registration under
1.293. 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 1.53(b)(1).
(iii) A provisional application shall not be
entitled to the right of priority under 1.55 or
35 U.S.C. 119 or 365(a) or to the benefit of an earlier
filing date under 1.78 or 35 U.S.C. 120, 121 or 365(c) 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 1.821-1.825
regarding application disclosures containing nucleotide
and/or amino acid sequences are not mandatory for
provisional applications.
(c) If any application is filed without the specification,
drawing or name, or names, of the actual inventor or
inventors required by paragraph (b)(1) or (b)(2) of this
section, applicant will be so notified and given a time
period within which to submit the omitted specification,
drawing, name, or names, of the actual inventor, or
inventors, in order to obtain a filing date as of the date
of filing of such submission. A copy of the "Notice of
Incomplete Application" form notifying the applicant should
accompany any response thereto submitted to the Office. If
the omission is not corrected within the time period set,
the application will be returned or otherwise disposed of;
the fee, if submitted, will be refunded less the handling
fee set forth in 1.21(n). Any request for review of a
refusal to accord an application a filing date must be by
way of a petition accompanied by the fee set forth in
1.17(i), if the application was filed under 1.53(b)(1),
or by the fee set forth in 1.17(q), if the application was
filed under 1.53(b)(2).
(d)(1) If an application which has been accorded a filing
date pursuant to paragraph (b)(1) of this section does not
include the appropriate filing fee or an oath or declaration
by the applicant, 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 to pay the surcharge as set forth in 1.16(e) in order
to prevent abandonment of the application. A copy of the
"Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. 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
will be disposed of. No copies will be provided or
certified by the Office of an application which has been
disposed of or in which neither the required basic filing
fee nor the processing and retention fee has been paid. The
notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph
(c) 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, oath or
declaration and to pay 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.
(2) If a provisional application which has been
accorded a filing date pursuant to paragraph (b)(2) of this
section does not include the appropriate filing fee or the
cover sheet required by 1.51(a)(2), 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 to pay the surcharge as set forth in 1.16(l) in
order to prevent abandonment of the application. A copy of
the "Notice to File Missing Parts" form mailed to applicant
should accompany any response thereto submitted to the
Office. If the required filing fee is not timely paid, the
application will be disposed of. No copies will be provided
or certified by the Office of an application which has been
disposed of or in which the required basic filing fee has
not been paid. The notification pursuant to this paragraph
may be made simultaneously with any notification pursuant to
paragraph (c) 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 to pay the surcharge as set forth in 1.16(l) in
order to prevent abandonment of the application.
(e)(1) An application for a patent filed under paragraph
(b)(1) of this section will not be placed upon 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.
(2) A provisional application for a patent filed under
paragraph (b)(2) of this section will not be placed upon 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).
* * * * *
14. Section 1.55 is revised 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)-(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
cases, 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 filed 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. The statement must be a
verified statement if made by a person not registered to
practice before the Patent and Trademark Office.
(b) An applicant in a nonprovisional application may under
certain circumstances claim priority on the basis of one or
more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim
the right of priority on the basis of an application for an
inventor's certificate in such a country under 35 U.S.C.
119(d), the applicant when submitting a claim for such right
as specified in paragraph (a) of this section, shall include
an affidavit or declaration. The affidavit or declaration
must include a specific statement that, upon an
investigation, he or she is satisfied that to the best of
his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option
to file an application for either a patent or an inventor's
certificate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.
15. Section 1.59 is revised to read as follows:
1.59 Papers of application with filing date not to be
returned.
Papers in an application which has received a filing date
pursuant to 1.53 will not be returned for any purpose
whatever. If applicants have not preserved copies of the
papers, the Office will furnish copies at the usual cost of
any application in which either the required basic filing
fee ( 1.16) or, if the application was filed under
1.53(b)(1), the processing and retention fee ( 1.21(l))
has been paid. See 1.618 for return of unauthorized and
improper papers in interferences.
16. Section 1.60 is amended by revising the heading and
paragraph (b) to read as follows:
1.60 Continuation or divisional application for invention
disclosed in a prior nonprovisional application.
* * * * *
(b) An applicant may omit signing of the oath or
declaration in a continuation or divisional application
(filed under the conditions specified in 35 U.S.C.120 or 121
and 1.78(a)) if:
(1) the prior application was a nonprovisional
application and a complete application as set forth in
1.51(a)(1);
(2) applicant indicates that the application is being
filed pursuant to this section and files a true copy of the
prior complete application as filed including the
specification (with claims), drawings, oath or declaration
showing the signature or an indication it was signed, and
any amendments referred to in the oath or declaration filed
to complete the prior application;
(3) the inventors named in the continuation or
divisional application are the same or less than all the
inventors named in the prior application; and
(4) the application is filed before the patenting, or
abandonment of, or termination of proceedings on the prior
application. The copy of the prior application must be
accompanied by a statement that the application papers filed
are a true copy of the prior complete application. Such
statement must be by the applicant or applicant's attorney
or agent and must be a verified statement if made by a
person not registered to practice before the Patent and
Trademark Office. Only amendments reducing the number of
claims or adding a reference to the prior application
( 1.78(a)) will be entered before calculating the filing
fee and granting the filing date. If the continuation or
divisional application is filed by less than all the
inventors named in the prior application, a statement must
accompany the application when filed requesting deletion of
the names of the person or persons who are not inventors of
the invention being claimed in the continuation or
divisional application. Except as provided in paragraph (d)
of this section, if a true copy of the prior application as
filed is not filed with the application or if the statement
that the application papers are a true copy is omitted, the
application will not be given a filing date earlier than the
date upon which the copy and statement are filed, unless a
petition with the fee set forth in 1.17(i) is filed which
satisfactorily explains the delay in filing these items.
* * * * *
17. Section 1.62 is amended by revising paragraphs (a) and
(e) to read as follows:
1.62 File wrapper continuing procedure.
(a) A continuation, continuation-in-part, or divisional
application, which uses the specification, drawings and oath
or declaration from a prior nonprovisional application which
is complete as defined by 1.51(a)(1), and which is to be
abandoned, may be filed under this section before the
payment of the issue fee, abandonment of, or termination of
proceedings on the prior application, or after payment of
the issue fee if a petition under 1.313(b)(5) is granted
in the prior application. The filing date of an application
filed under this section is the date on which a request is
filed for an application under this section including
identification of the application number and the names of
the inventors named in the prior complete application. If
the continuation, continuation-in-part, or divisional
application is filed by less than all the inventors named in
the prior application a statement must accompany the
application when filed requesting deletion of the names of
the person or persons who are not inventors of the invention
being claimed in the continuation, continuation-in-part, or
divisional application.
* * * * *
(e) An application filed under this section will utilize
the file wrapper and contents of the prior application to
constitute the new continuation, continuation-in-part, or
divisional application but will be assigned a new
application number. Changes to the prior application must
be made in the form of an amendment to the prior application
as it exists at the time of filing the application under
this section. No copy of the prior application or new
specification is required. The filing of such a copy or
specification will be considered improper, and a filing date
as of the date of deposit of the request for an application
under this section will not be granted to the application
unless a petition with the fee set forth in 1.17(i) is
filed with instructions to cancel the copy or specification.
* * * * *
18. Section 1.63 is amended by revising paragraph (a) to
read as follows:
1.63 Oath or declaration.
(a) An oath or declaration filed under 1.51(a)(1)(ii) as
a part of a nonprovisional 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 and the residence and
country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint
inventor of the invention claimed.
* * * * *
19. 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(d)(1) 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 cases,
the oath or declaration here required may be made on
information and belief by an applicant other than inventor.
* * * * *
20. Section 1.78 is amended by revising paragraphs (a)(1)
and (a)(2) and by adding new paragraphs (a)(3) and (a)(4) 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 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 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) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in
1.53(b)(1), 1.60 or 1.62 and include the basic filing
fee set forth in 1.16; or
(iii) entitled to a filing date as set forth in
1.53(b)(1) and have paid therein the processing and
retention fee set forth in 1.21(l) within the time period
set forth in 1.53(d)(1).
(2) 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. Cross-references to other
related applications may be made when appropriate. (See
1.14(b)).
(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 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(a)(2); or
(ii) entitled to a filing date as set forth in
1.53(b)(2) 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).
* * * * *
21. Section 1.83 is amended by revising paragraphs (a) and
(c) to read as follows:
1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show
every feature of the invention specified in the claims.
However, conventional features disclosed in the description
and claims, where their detailed illustration is not
essential for a proper understanding of the invention,
should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g.,
a labeled rectangular box).
* * * * *
(c) Where the drawings in a nonprovisional application do
not comply with the requirements of paragraphs (a) and (b)
of this section, the examiner shall require such additional
illustration within a time period of not less than two
months from the date of the sending of a notice thereof.
Such corrections are subject to the requirements of
1.81(d).
22. Section 1.97 is amended by revising paragraph (d) to
read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(d) An information disclosure statement shall be
considered by the Office if filed after the mailing date of
either a final action under 1.113 or a notice of allowance
under 1.311, whichever occurs first, but before payment of
the issue fee, provided the statement is accompanied by:
(1) A certification 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).
* * * * *
23. Section 1.101 is amended by revising paragraph (a) to
read as follows:
1.101 Order of examination.
(a) Nonprovisional applications filed in the Patent and
Trademark Office and accepted as complete applications are
assigned for examination to the respective examining groups
having the classes of inventions to which the applications
relate. Nonprovisional applications shall be taken up for
examination by the examiner to whom they have been assigned
in the order in which they have been filed except for those
applications in which examination has been advanced pursuant
to 1.102. See 1.496 for order of examination of
international applications in the national stage.
* * * * *
24. Section 1.102 is amended by revising paragraph (d) to
read as follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on grounds
other than those referred to in paragraph (c) of this
section must be accompanied by the petition fee set forth in
1.17(i).
25. 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
response by the applicant to an Office action is required.
* * * * *
26. A new, undesignated center heading and new section
1.129 are added to Subpart B - National Processing
Provisions to read as follows:
TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination
after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue
or a design patent, that has been pending for 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), is entitled to have a
first submission entered and considered on the merits after
final rejection under the following circumstances: The
Office will consider such a submission, if the first
submission and the fee set forth in 1.17(r) are filed
prior to the filing of an appeal brief and prior to
abandonment of the application. The finality of the final
rejection is automatically withdrawn upon the timely filing
of the submission and payment of the fee set forth in
1.17(r). If a subsequent final rejection is made in the
application, applicant is entitled to have a second
submission entered and considered on the merits after the
subsequent final rejection under the following
circumstances: The Office will consider such a submission,
if the second submission and a second fee set forth in
1.17(r) are filed prior to the filing of an appeal brief
and prior to abandonment of the application. The finality
of the subsequent final rejection is automatically withdrawn
upon the timely filing of the submission and payment of the
second fee set forth in 1.17(r). Any submission filed
after a final rejection made in an application subsequent to
the fee set forth in 1.17(r) having been twice paid will
be treated as set forth in 1.116. A submission as used in
this paragraph includes, but is not limited to, an
information disclosure statement, an amendment to the
written description, claims or drawings and a new
substantive argument or new evidence in support of
patentability.
(b)(1) In an application, other than for reissue or a
design patent, that has been pending for at least three
years as of June 8, 1995, taking into account any reference
made in the application to any earlier filed application
under 35 U.S.C. 120, 121 and 365(c), no requirement for
restriction or for the filing of divisional applications
shall be made or maintained in the application after June 8,
1995, except where:
(i) the requirement was first made in the
application or any earlier filed application under
35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii) the examiner has not made a requirement for
restriction in the present or parent application prior to
April 8, 1995, due to actions by the applicant; or
(iii) the required fee for examination of each
additional invention was not paid.
(2) If the application contains more than one
independent and distinct invention and a requirement for
restriction or for the filing of divisional applications
cannot be made or maintained pursuant to this paragraph,
applicant will be so notified and given a time period to:
(i) elect the invention or inventions to be searched
and examined, if no election has been made prior to the
notice, and pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one which applicant elects;
(ii) confirm an election made prior to the notice and
pay the fee set forth in 1.17(s) for each independent and
distinct invention claimed in the application in addition to
the one invention which applicant previously elected; or
(iii) file a petition under this section traversing
the requirement. If the required petition is filed in a
timely manner, the original time period for electing and
paying the fee set forth in 1.17(s) will be deferred and
any decision on the petition affirming or modifying the
requirement will set a new time period to elect the
invention or inventions to be searched and examined and to
pay the fee set forth in 1.17(s) for each independent and
distinct invention claimed in the application in excess of
one which applicant elects.
(3) The additional inventions for which the required
fee has not been paid will be withdrawn from consideration
under 1.142(b). An applicant who desires examination of
an invention so withdrawn from consideration can file a
divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable
to any application filed after June 8, 1995.
27. Section 1.137 is amended by revising paragraph (c) to
read as follows:
1.137 Revival of abandoned application.
* * * * *
(c) In all applications filed before June 8, 1995, and in
all design applications filed on or after June 8, 1995, any
petition pursuant to paragraph (a) of this section not filed
within six months of the date of abandonment of the
application, must be accompanied by a terminal disclaimer
with fee under 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. The terminal
disclaimer 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.
* * * * *
28. Section 1.139 is added to read as follows:
1.139 Revival of provisional application.
(a) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months
from its filing date. A petition to revive an abandoned
provisional application must be promptly filed after the
applicant is notified of, or otherwise becomes aware of, the
abandonment, and must be accompanied by:
(1) the required response unless it has been previously
filed;
(2) the petition fee as set forth in 1.17(l); and
(3) a showing that the delay was unavoidable. The
showing must be a verified showing if made by a person not
registered to practice before the Patent and Trademark
Office.
(b) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if the delay was unintentional. Under no circumstances
will the provisional application be pending after twelve
months from its filing date. A petition to revive an
abandoned provisional application must be:
(1) accompanied by the required response unless it has
been previously filed;
(2) accompanied by the petition fee as set forth in
1.17(m);
(3) accompanied by a statement that the delay was
unintentional. The statement must be a verified statement
if made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and
(4) filed either:
(i) within one year of the date on which the
provisional application became abandoned; or
(ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the provisional application became abandoned.
(c) Any request for reconsideration or review of a
decision refusing to revive a provisional application upon
petition filed pursuant to paragraphs (a) or (b) of 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.
(d) The time periods set forth in this section cannot be
extended, except that the three-month period set forth in
paragraph (b)(4)(ii) of this section and the time period set
forth in paragraph (c) of this section may be extended under
the provisions of 1.136.
29. Section 1.177 is revised to read as follows:
1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause
several patents to be issued for distinct and separate parts
of the thing patented, upon demand of the applicant, and
upon payment of the required fee for each division. Each
division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the
invention claimed in such division; and the drawing may
represent only such part or parts, subject to the provisions
of 1.83 and 1.84. On filing divisional reissue
applications, they shall be referred to the Commissioner.
Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in 1.17(i), all the
divisions of a reissue will issue simultaneously; if there
is any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless
the Commissioner orders otherwise.
30. 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.
31. Section 1.313 is amended by revising paragraph (a) to
read as follows:
1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further
action at the initiative of the Office or upon petition by
the applicant. Any such petition by the applicant must
include a showing of good and sufficient reasons why
withdrawal of the application is necessary and, if the
reason for the withdrawal is not the fault of the Office,
must be accompanied by the fee set forth in 1.17(i). If
the application is withdrawn from issue, a new notice of
allowance will be sent if the application is again allowed.
Any amendment accompanying a petition to withdraw an
application from issue must comply with the requirements of
1.312.
* * * * *
32. Section 1.314 is revised to read as follows:
1.314 Issuance of patent.
If payment of the issue fee is timely made, the patent
will issue in regular course unless the application is
withdrawn from issue ( 1.313), or issuance of the patent is
deferred. Any petition by the applicant requesting a
deferral of the issuance of a patent must be accompanied by
the fee set forth in 1.17(i) and must include a showing of
good and sufficient reasons why it is necessary to defer
issuance of the patent.
33. Section 1.316 is amended by revising paragraph (d) to
read as follows:
1.316 Application abandoned for failure to pay issue fee.
* * * * *
(d) In all applications filed before June 8, 1995, any
petition pursuant to paragraph (b) of this section not filed
within six months of the date of abandonment of the
application, must be accompanied by a terminal disclaimer
with fee under 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. The terminal
disclaimer 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.
* * * * *
34. Section 1.317 is amended by removing and reserving
paragraph (d).
35. Section 1.666 is amended by revising paragraph (b) to
read as follows: 1.666 Filing of interference settlement agreements.
* * * * *
(b) If any party filing the agreement or understanding
under paragraph (a) of this section so requests, the copy
will be kept separate from the file of the interference, and
made available only to Government agencies on written
request, or to any person upon petition accompanied by the
fee set forth in 1.17(i) and on a showing of good cause.
* * * * *
36. Section 1.701 is added to Subpart F to read as follows:
1.701 Extension of patent term due to prosecution delay.
(a) A patent, other than for designs, issued on an
application filed on or after June 8, 1995, is entitled to
extension of the patent term if the issuance of the patent
was delayed due to:
(1) interference proceedings under 35 U.S.C. 135(a);
and/or
(2) the application being placed under a secrecy order
under 35 U.S.C. 181; and/or
(3) appellate review by the Board of Patent Appeals and
Interferences or by a Federal court under 35 U.S.C. 141 or
145, if the patent was issued pursuant to a decision
reversing an adverse determination of patentability and if
the patent is not subject to a terminal disclaimer due to
the issuance of another patent claiming subject matter that
is not patentably distinct from that under appellate review.
(b) The term of a patent entitled to extension under
paragraph (a) of this section shall be extended for the sum
of the periods of delay calculated under paragraphs (c)(1),
(c)(2), (c)(3) and (d) of this section, to the extent that
these periods are not overlapping, up to a maximum of five
years. The extension will run from the expiration date of
the patent.
(c)(1) The period of delay under paragraph (a)(1) of this
section for an application is the sum of the following
periods, to the extent that the periods are not overlapping:
(i) with respect to each interference in which the
application was involved, the number of days, if any, in the
period beginning on the date the interference was declared
or redeclared to involve the application in the interference
and ending on the date that the interference was terminated
with respect to the application; and
(ii) the number of days, if any, in the period
beginning on the date prosecution in the application was
suspended by the Patent and Trademark Office due to
interference proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the
termination of the suspension.
(2) The period of delay under paragraph (a)(2) of this
section for an application is the sum of the following
periods, to the extent that the periods are not overlapping:
(i) the number of days, if any, the application was
maintained in a sealed condition under 35 U.S.C. 181;
(ii) the number of days, if any, in the period
beginning on the date of mailing of an examiner's answer
under 1.193 in the application under secrecy order and
ending on the date the secrecy order and any renewal thereof
was removed;
(iii) the number of days, if any, in the period
beginning on the date applicant was notified that an
interference would be declared but for the secrecy order and
ending on the date the secrecy order and any renewal thereof
was removed; and
(iv) the number of days, if any, in the period
beginning on the date of notification under 5.3(c) and
ending on the date of mailing of the notice of allowance
under 1.311.
(3) The period of delay under paragraph (a)(3) of this
section is the sum of the number of days, if any, in the
period beginning on the date on which an appeal to the Board
of Patent Appeals and Interferences was filed under
35 U.S.C. 134 and ending on the date of a final decision in
favor of the applicant by the Board of Patent Appeals and
Interferences or by a Federal court in an appeal under
35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(d) The period of delay set forth in paragraph (c)(3)
shall be reduced by:
(1) any time during the period of appellate review that
occurred before three years from the filing date of the
first national application for patent presented for
examination; and
(2) any time during the period of appellate review, as
determined by the Commissioner, during which the applicant
for patent did not act with due diligence. In determining
the due diligence of an applicant, the Commissioner may
examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine
whether the applicant exhibited that degree of timeliness as
may reasonably be expected from, and which is ordinarily
exercised by, a person during a period of appellate review.
PART 3--ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE
37. The authority citation for 37 CFR Part 3 continues to
read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
38. 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 number (e.g., PCT/US90/01234). If an
assignment of a patent application filed under 1.53(b)(1)
or 1.62 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 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.
39. Section 3.81 is amended by revising paragraph (b) to
read as follows:
3.81 Issue of patent to assignee.
* * * * *
(b) If the assignment is submitted for recording after the
date of payment of the issue fee, but prior to issuance of
the patent, the assignee may petition that the patent issue
to the assignee. Any such petition must be accompanied by
the fee set forth in 1.17(i) of this Chapter.
Dated:_________ _______________________________
Bruce A. Lehman
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
NOTE- The following appendix will not appear in the Code of
Federal Regulations.
APPENDIX
The Provisional Application Cover Sheet in Microsoft Power
Point format and The Declaration for Patent Application in Postscript file
format are available here.
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