Final Rules: Recent Changes To Patent Practice And Procedure
The information contained on this page was correct at the time of original publication. Some information may no longer be applicable. Amendments may have been made to the rules of practice since the original date of a publication, there may have been a change in any fees indicated, and certain references to publications may no longer be valid. Wherever there is a reference to a statute or rule, please check carefully whether the statute or rule in force at the date of publication of the information has since been amended. For example, CPA practice only applies to Design applications. CPA practice in utility and plant applications was eliminated July 14, 2003. See Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications ; Final Rule 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003).FINAL RULES: RECENT CHANGES TO PATENT PRACTICE AND PROCEDURE
TRAINING AND IMPLEMENTATION GUIDE and SUPPLEMENT
2/98)
EFFECTIVE DATE: DECEMBER 1, 1997
Change to § 1.53 (d): Changes to Continued
Prosecution Application
Practice; Interim Rule Notice
Federal Register 63
Fed. Reg.
5732 (February
4, 1998).
Official Gazette 1207
Off. Gaz. Pat. Office
83 (February 24, 1998).
Errata Notice:
Changes to Patent Practice and Procedures
; Correction
Federal Register 62
Fed. Reg.
61235
(November 17, 1997).
Official Gazette 1204
Off. Gaz. Pat. Office
90 (November 25, 1997).
The rule package:
Changes to Patent Practice and Procedure
; Final Rule
Federal Register 62
Fed. Reg.
53131
(October 10, 1997).
Official Gazette 1203
Off. Gaz. Pat. Office
63 (October 21, 1997).
NOTE: The Special Program Law Office of the Deputy Assistant Commissioner for Patent Policy and Projects has prepared a Training and Implementation Guide entitled Final Rule: Changes to Patent Practice and Procedure , effective December 1, 1997, and a Supplement (2/98) to aid in analyzing the recently revised rules.
A fillable Adobe PDF format order form is available for purchasing the Guide in paper (looseleaf notebook) or on a CD-ROM.
[Click here for free readers]
SUPPLEMENT (2/98)
TO
TRAINING AND IMPLEMENTATION GUIDE FOR THE
FINAL RULE: CHANGES TO PATENT PRACTICE AND PROCEDURE, effective
DECEMBER 1, 1997
37 CFR 1.53(d) as amended, effective December 1, 1997, provided for the filing of a continuation or divisional application as a continued prosecution application (CPA), but required that the prior application be filed on or after June 8, 1995. See Changes to Patent Practice and Procedure ; Final Rule Notice, 62 Fed Reg. 53131 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21, 1997).
The requirement that the prior application of a CPA be filed on or after June 8, 1995, has been eliminated, and is applicable to all CPAs filed on or after December 1, 1997.
See Changes to Continued Prosecution Application Practice ; Interim Rule Notice, 63 Fed. Reg. 5732 (February 4, 1998); 1207 Off. Gaz. Pat. Office 83 (February 24, 1998).
The Patent and Trademark Office (PTO) has revised the Training and Implementation Guide to update the information contained therein to reflect that the prior application of a CPA may be filed before, as well as on or after, June 8, 1995. In addition, the PTO has revised the filing transmittal forms, and developed some additional questions and answers related to the rule change. Therefore, the PTO is issuing this supplement to the Training and Implementation Guide (notebook) and distributing it to the Examining Corps and notebook purchasers of the Training and Implementation Guide.
The supplemental materials and instructions for their inclusion into the tab sections of the notebook are set forth as follows:
-
Supplement Cover Page
[PDF]
[PowerPoint 7]
-
Errata Notice:
Changes to Patent Practice and Procedure
; Correction, 62
Fed. Reg.
61235 (November 17, 1997) [Text]
-
Change to § 1.53(d):
Changes to Continued Prosecution Application
Practice
; Interim Rule Notice, 63
Fed. Reg.
5732 (February 4, 1998) [PDF]
-
Subject Matter Summary I - Highlights (revised) [PDF]
-
Subject Matter Summary II - Condensed (revised pp. 1-2)
[PDF]
-
Subject Matter Summary III - Detailed (revised pp. 3-6)
[PDF]
-
Rule-by-Rule Summary IV (revised pp. 9-10) [PDF]
- Revised Training Slides [PDF] [PowerPoint 7]
- to be more user friendly
- to remove the newly added Total Pages box, which had caused confusion
- to more clearly identify what is needed for small entity status
- to provide space for the title of the application being filed
- to provide space for additional prior application identifying data
- to contain a signature block (CPA form already contained such a block)
- to state that a CPA can now be filed on any pending prior application
- to clean up other miscellaneous matters
- Utility - PTO/SB/05: [PDF]
- Fee Transmittal Form - PTO/SB/17: [PDF]
- Design - PTO/SB/18: [PDF]
- Plant - PTO/SB/19: [PDF]
- CPA - PTO/SB/29: [PDF]
- Reissue - PTO/SB/50: [PDF]
- Contents - Q&A's [PDF] (Pagination may vary due to printer formatting.)
Finally, the CPA process flow chart referenced below is now obsolete due to the above noted changes to CPA practice.
Training and Implementation Guide for the Final Rule: Changes
to Patent Practice and Procedure, effective December 1,
1997
All files are in PDF unless otherwise noted.
Changes to Patent Practice and Procedure - Final Rule [in HTML] [in Adobe PDF]
Subject Matter Summary I - Highlights (Replaced -- see above)
Subject Matter Summary II - Condensed ) (Partially revised -- see above)
Subject Matter Summary III - Detailed (Partially revised -- see above)
Rule-by-Rule Summary IV (Partially revised -- see above)
Training Slides (Replaced -- see above)
Application Filing Forms (Replaced -- see above)
Questions and Answers (Replaced -- see above)
Selected Form Paragraphs for Examiner Use
CPA Application Processing Flowchart (Obsolete -- see above)
Reissue/Reexam Amendment Handout
Page of text for binder page tab inserts