# Presentation: 446768

## Training Book Slides on the Changes to Patent Practice and Procedure - Final Rule

- jl

- 1

- Rev. 7

**Notes:**
The introductory slides for topics 2 to 5 may identify rules which are not covered in this presentation and for which slides from the master set were not included.

Anyone interested in the omitted material may look to the summaries for such information.

## Introduction to the Patent Practice and Procedure Changes

- Topic    1.	 Application Filing .................6
- Topic    2.	 Deceptive Intent ..................43
- Topic    3.	 Appeal Process ...................51
- Topic    4.	 Time-to-Reply ....................58
- Topic    5.	 Miscellaneous .....................65
- Summaries........................................77

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## Reasons for the Changes

- This rulemaking is the PTO’s response to the National Performance Review’s mandate to reinvent government and reduce regulatory burden on the public.
- The changes in this rulemaking:
- 1) Streamline the processing and examination of applications;
- 2) Reduce procedural burdens on applicants; and
- 3) Simplify and condense the requirements of the rules of practice.

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## Final Rule:  Changes to Patent Practice and Procedure

- Effective Date:  *December 1, 1997*
- Published in the Federal Register
*62 Fed. Reg. 53131*  (*October 10, 1997)*
- Published in the Official Gazette
*1203* *Off. Gaz. Pat. Office 63*   (*October 21, 1997)*
- Errata:
*62 Fed. Reg. 61235  (November 17, 1997)*
*1204 Off. Gaz. Pat. Office 90  (November 25, 1997)*
- Mod: § 1.53(d): *63 Fed. Reg. 5732 (2/4/98); 1207 O.G.83 (2/24/98)*

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- Rev. 7

## Notebook Materials

- 1. Changes to Patent Practice and Procedure - Final Rule   and Index of Final Rule
- 2. Subject Matter Summary I - Highlights
- 3. Subject Matter Summary II - Condensed
- 4. Subject Matter Summary III - Detailed
- 5. Rule-by-Rule Summary IV
- 6. Training Slides
- 7. Application Filing Forms
- 8. Questions and Answers
- 9. Selected Form Paragraphs for Examiner Use
- 10. CPA Application Processing Flowchart
- 11. Reissue/Reexam Amendment Handout

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## Topic 1:Application Filing

- Topic 1:Application Filing

- 3 Major Rules have been revised
- 37 C.F.R. § 1.53 Application Number, filing date and completion of application
- Including Continued Prosecution Application
- 37 C.F.R. § 1.63 Oath or declaration
- 37 C.F.R. § 1.41 Applicant for patent
- 2 Rules deleted: 37 C.F.R. §§ 1.60; 1.62

- 1.	Application Filing

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## Application Filing - 37 C.F.R. § 1.53Major Changes

- Entire rule substantially revised
- _All_ applications will be filed under § 1.53
- Filing under § 1.60 and § 1.62 (FWC) abolished
- Applications similar to § 1.60  filed under §1.53(b)
- with a copy of the prior oath/dec under § 1.63
- with the same or fewer inventors - §1.53(b)(1)
- Applications similar to FWCs (§ 1.62) filed as CPAs under § 1.53(d)

- 1.	Application Filing

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**Notes:**
After this rule package is effective, all applications of any type other than PCT applications, should be filed according to the terms of this Rule 53.
Former paragraphs of Rule 53 were revised, redesignated and amended to accord filing date for nonprovisional & provisional applications without the name(s) of the inventor(s)
Cases under Rule 60 and 62 filed prior to the effective date of this rule will be processed to completion without any adverse affects.
When deleting an inventor under 53(b)(1) a statement from the attorney is needed making such a deletion.

Public Talk
This rule was substantially revised from the current or former version and also from the rule as proposed in the Proposed Rule Package- as the wording was too confusing.

## Application Filing - 37 C.F.R. § 1.53 Paragraph Overview

- § 1.53(c) Provisional Applications
- § 1.53(d) Continued Prosecution Applications - CPAs
- Former FWCs (Rule 62)
- Not for CIPs
- § 1.53(b) Everything else*
- new applications, with new oath/dec
- continuation/divisional applications, with copy of oath/dec
- CIPs, with new oath/dec
- * except PCT applications

- 1.	Application Filing

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**Notes:**
The rule has been simplified and organized in a logical easy-to-follow sequence:

(c) covers the filing of Provisional Applications

(d) covers the filing of all CPA applications (in place of § 1.62 filings)

(b) covers all other filings - including
	1. regular new case filings
	2. continuing case filings with a copy of prior oath/dec
	3. continuations in part
      but NOT PCT case filings.

## Application Filing - 37 C.F.R. § 1.53(b)Dec.'s

- Oath and Declaration Requirements
- Only § 1.53(b) filings require an oath/dec
- Oath/dec may be an orig. or copy (§ 1.63(d))
- copy from a prior application, or
- newly executed for this application
- Oath/dec need not be submitted on filing (§1.53(f))
- Newly executed oath/dec needed for CIP application or a non-continuing application

- 1.	Application Filing

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**Notes:**
Start of Dec’s, Spec’s and Wrecks, the three aspects of the new Application Filing rules.

## Application Filing - 37 C.F.R. § 1.53(b)Spec’s

- Specification Requirements for Non-Continuing (new) Applications
- No change
- Any specification presentation permitted

- 1.	Application Filing

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## Application Filing - 37 C.F.R. § 1.53(b)Spec’s 

**Specification Requirements for Cont/Div cases using a copy of the Oath/dec (§ 1.63(d))**
- Commandment: May not contain new matter
- “True Copy” requirement of Rule 60 dropped
- May be edited, rearranged, reformatted - whatever
- Examiners’ responsibilities concerning the status as a continuing case stay the same
**Specification should include an incorporation-by-reference of prior application **(to avoid inadvertent loss of subject matter)

- 1.	Application Filing

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**Notes:**
Notes
1. May not contain new matter.
2. If it does contain new matter, it is redesignated as a CIP and a new oath or declaration is required.
3. The examiner review remains the same. 
	-  there is no duty for a line by line review of the specification,
	-  that any recognition that there is new matter will not be knowingly ignored and applicant made to redesignate the application as a CIP, and
	- where there is an intervening reference the examiner will carefully check each claim for support in the prior application.

Discussion: 
Applicants should not be required to supply any additional statement that could be used as a means for determining that there is no new matter present.  The fact that reference is made by applicant to the filing of a continuation should be sufficient for the Office (and examiners, even those on the sig review program) not to be required to check further absent an intervening reference.
Note the Transmittal Form has a check box for incorporation by reference of the prior app.

## Application Filing - 37 C.F.R. § 1.53(b)Wreck’s

- Cases designated as Rule 60- Treat as § 1.53(b)
- § 1.53(b) is the default home for filing; unless specifically designated as a CPA, a  § 371 or a provisional application
- Problem cases will end up under this paragraph

- 1.	Application Filing

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**Notes:**
Notes
By “Wrecks” we mean any case that is filed improperly or with problems.

The reference to § 1.60 will treated as a request that the application be handled under § 1.53(b), and it will be so processed.  However, this will not be a filing error or a filing date issue.

## Application Filing - 37 C.F.R. § 1.53(d)CPAs

- Continued Prosecution Applications
- Replace Rule 62 FWC
- Only Basic Requirement
- Cannot include new matter
- Note: Immediate prior application may be filed before, on or after 6/8/95
- See  ___ F.R.___; ___ O.G.____

- 1.	Application Filing

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- Rev. 7

**Notes:**
This is the first of 13 slides that will deal with CPA applications, which are newly created by this rule package.

First, I’d like to make it clear that FWCs will be eliminated in toto as CPAs, continued prosecution applications, will be the new vehicle for enabling a continuation of prosecution.

Note: no new matter in a CPA, so CIPs may not be CPAs.

## How to Recognize a CPA

- Application File Wrapper:
- 	(a) 	Typical Contents Entry -
- 		 _*__*__*#11*__*_*_  _*Request for CPA*_     _*12/15/98*_
- 	(b) Face of File: “CPA” label
- PALM:  “Contents” column of 2952 screen - look for “ACPA”(continuation) or “DCPA” (divisional)
- Form paragraph will be in the first action of CPA
- If Notice of Abandonment is received- CPA was not established!
- Patent will include statement re: CPA & 20 yr. patent term

- CPA

- 1.	Application Filing

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**Notes:**
(a)File Wrapper Contents Entry:
	Part 1) Request for CPA is entered as a separate paper
	Part 2) Paper entitled “Request for CPA”
	Part 3) Date of paper is considered filing date of CPA

(b) The CPA label on the file wrapper face is to be placed on the white PALM label in the blank area below “FOREIGN/PCT APPLICATIONS.”  On the 09? series of file wrappers, the label is to be placed in the blank space above the classification information.

The 2952 PALM screen “Contents” column will reflect the status of the file as a “ACPA” for continuation applications or “DCPA” for divisional applications.  Unless divisional status is specifically requested, all requests will be treated as (default to) continuation status. 
Form paragraph 2.30 is to be used in the CPA first action.

## Application Filing - 37 C.F.R. § 1.53(d)CPAs (cont) 

- CPA Application Attributes
- Uses the file jacket and contents of the prior application
- Uses same application number as prior application
- Prior application is expressly abandoned as of filing date of CPA request

- 1.	Application Filing

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**Notes:**
In creating CPAs we eliminated the problems associated with FWC applications.

First: we eliminated the creation of a new file wrapper, which as used to merely hold or contain the prior application.  Thus we’ll continue to use the existing file wrapper for the CPA.

Second: we eliminated the need for a new application number as there is no need for a new application number if we can continue to use the same file wrapper.

Thus we eliminated unnecessary and time consuming processing steps!

As before for FWCs: the prior application will be abandoned as of the filing of the CPA.

## CPA Filing

- May be filed by fax (§ 1.6(d)(3)) or hand delivered to group
- Certificate of transmission/mailing under § 1.8 does not apply to filing of CPA
- Filing date is date of receipt of complete facsimile transmission

- 1.	Application Filing

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**Notes:**
By keeping the same file wrapper and the same application number, there was no need to go through the mail room or even OIPE for CPA filings.  Thus was created an exception to the normal proscription in § 1.6 to filing new applications by faxing, as we would really like to encourage direct filing in the Groups by either a Fax transmission or by hand delivery.  Recall, the CPA is a one or two page form, and will not overload the fax machine.

By filing and processing in the groups, we eliminate the processing steps in the Mail rooms an in OIPE, saving time and money.

Filing date is date of receipt of complete facsimile transmission (unless Saturday, Sunday or federal holiday)
Certificate of transmission/mailing under 1.8 does not apply to filing of CPA, i.e., CPA must be actually received in PTO or deposited in Express Mail within SSP
Special rule for faxing CPAs: § 1.6(d)(3)
Don’t forget the extension of time if needed.

## CPA Processing in PTO:

- Processing will be performed in Group where prior application assigned
- No new filing receipt issued
- No Office action or interview until filing fees paid.

- 1	Application Filing

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**Notes:**
No new oath/declaration required in CPA (but, see  § 1.67(b) for situations where a supplemental declaration may be required, i.e. where claims are added toward subject matter not embraced by the original claims or statement of the invention.)
Office will not issue new filing receipt for CPA - see §  1.54(b)

## Four CPA Requirements for a Filing Date

- 1) Must file request for CPA on a separate paper
- request for CPA cannot be submitted within papers filed for another purpose
- "conditional" request for a CPA submitted (as a separate paper) with an amendment after final treated as an unconditional request
- 2) Must identify application number of immediately prior application

- 1.	Application Filing

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**Notes:**
For example, the request should not be submitted within the body of an amendment after final.

## CPA Requirements for a Filing Date (cont)

- CPA Requirements for a Filing Date (cont)
- 3) Prior application must be either:
- a complete application
- including a prior CPA 	or
- the national stage of an international application in compliance with 35 U.S.C. 371
- Note: prior application may have been filed before, on or after 6/8/95
- 4) Must be filed before earlier of:
- payment of issue fee on the prior application, unless a petition under  § 1.313(b)(5) granted;
- abandonment of prior application

- 1.	Application Filing

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- Rev. 7

**Notes:**
Complete means that the application (non-provisional) must have an oath/dec, spec, claims and the basic filing fee must have been paid.

CPAs, except Design and Reissues,  will be printed as patents with this Notice: 

This patent issued on a continued prosecution application filed under 37 CFR 1.53(d), and is subject to the twenty-year patent term provisions of  35 U.S.C. 154(a)(2).

## Application Filing - 37 C.F.R. § 1.53(d)CPA (cont)

- If CPA does not meet filing date requirements
- Group will notify applicant, and
- Corrective options will be explained
- Petition to revive
- Petition to convert to § 1.53(b)
- Handled by Office of Petitions

- 1.	Application Filing

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**Notes:**
Notes:
1) If filed too late before issue and it going to be patented
	file a 182 petition with a copy of the prior application 	and a request to convert to a Rule 53(b)

2) Prior case abandoned
	petition to revive parent

## Application Filing - 37 C.F.R. § 1.53(d)CPA (cont)

- CPA Filing Fee
- Sum of:
- basic filing fee and
- any additional claim fees due
- CPA may be filed without filing fee
- A "Notice To File Missing Parts" will be prepared & mailed by group requiring filing fee and surcharge

- 1.	Application Filing

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**Notes:**
any additional  §  1.16 fee due (based on the number of claims remaining in application after entry of (1) any amendment accompanying CPA request and (2)any amendments under  § 1.116 not entered in the prior application which applicant has requested be entered in CPA)
as the Group will be processing the CPA, the Notice to File Missing Parts will be handled in the Group.

## Application Filing - 37 C.F.R. § 1.53(d)CPA (cont)

- Amendments in CPAs
- No new matter may be introduced
- All changes must be made in the form of an amendment to the prior application (§ 1.121)
- New specification filed with CPA will not be considered part of original application papers - treated as substitute specification
- Prior non-entered § 1.116 amendments will be entered only if requested
- Even if IDS not considered in prior case, must be considered by examiner in CPA- No resubmission or request required.

- 1.	Application Filing

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**Notes:**
No new matter may be entered by amendment, including amendments filed with CPA request
IF in spec.-object; 
IF in drawings-refuse entry; 
IF in claims-reject!  (See MPEP 608.04) 
Applicant must request entry of any prior non-entered amendments that she wants to have entered. 

## Application Filing - 37 C.F.R. § 1.53(d)CPA (cont)

- CPA: 35 USC 120 Benefits
- The first sentence of the specification need not, and may not, refer to the prior application.
- The effective filing date is (at least) the filing date of the parent.

- 1.	Application Filing

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**Notes:**
CPA 35 USC 120 BENEFITS
By the Rule 37 CFR §1.53(d)(7), a request for a CPA is a specific reference required by  35 U.S.C. 120 and 37 CFR § 1.78(a)(2).

The file wrapper only refers to the CPA in its table of contents.

## Application Filing - 37 C.F.R. § 1.53(d)CPA (cont)

- CPA Shifting Claimed Invention
- CPA may be filed with amendment adding claims to patentably distinct invention
- Examiner may require restriction/election of species
- If CPA filed as continuation, an election made in the parent application carries over to the CPA  - unless the CPA indicates otherwise

- 1.	Application Filing

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**Notes:**
CPA may be filed with amendment adding claims to patentably distinct invention
CPA is a new application so § 1.145 does not apply 
differs from  § 1.129(a) practice, i.e., entry of claims to patentably distinct invention not a matter of right under  § 1.129(a). 
Election can be shifted by 1) designating the CPA as a divisional;  or 2) indicating a different election applies in the CPA, or presenting claims to a patentably distinct invention in the CPA. Note the relevant question in the Q and A’s.

If claims to a different invention are added in the CPA, a restriction requirement should be given, and the applicant should be given an opportunity to elect.

## Carry-Over Documents CPA (cont) 

- Papers in the prior application that do CARRY OVER to, and will be considered in, a CPA:
- Affidavits/declarations under 37 C.F.R. §§ 1.130-1.132
- Information Disclosure Statements
- Terminal Disclaimers
- Petitions under 37 C.F.R. § 1.48
- Priority claims (foreign and domestic)
- Deposit Account charge authorizations
- Elections
- unless the CPA is a divisional or indicates otherwise
- Ownership submissions under 37 C.F.R. § 3.73(b)

- 1.	Application Filing

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**Notes:**
IDS and §1.48 petitions not acted upon in the prior application will be reviewed in the CPA.

If the Rule 48 petition is moot because the CPA transmittal requests the deletion of the same inventor(s), don’t act on it.An applicant may “indicate otherwise” (in regard to an election made in the prior application) by : 1) indicating that a different election applies in the CPA;  or 2) presenting claims to a patentably distinct invention in the CPA.  Note the relevant question in the Q and A’s.

## Carry-Over Documents CPA (cont)

- Papers in the prior application that do **NOT** carry-over to a CPA
- Small Entity Status
- small entity status must be specifically established in a continuing application, but may be established by payment of the small entity basic filing fee
- Elections
- where the CPA is a divisional or otherwise indicates that the election in the prior application does not carry over

- 1.	Application Filing

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## Application Filing - 37 C.F.R. § 1.63 Oath or Declaration

- Per § 1.63,  the oath/dec is now required to include:
- Full name of each inventor
- Post office addressRequirement for the post office address has been moved from 37 C.F.R. § 1.33(a), which did not state where in the application the post office address had to be provided.

- 1.	Application Filing

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**Notes:**
Now everyone knows where to look for the inventor’s full name and P.O. address, namely in the Oath/Dec.
The requirement for the full name of each inventor has been moved from 37 C.F.R. § 1.41(a).
It is no longer appropriate for the post office address to be stated elsewhere in the application.  It must be in the oath/ dec.

## Application Filing - 37 C.F.R. §  1.63 (d)(1)-(2)Oath or Declaration 

- A newly executed oath or declaration IS NOT required in a continuation or divisional application.
- A copy of the executed oath or declaration from the prior application may be submitted
- _unless_ a person is named as an inventor who was not named as an inventor in the prior application.

- 1.	Application Filing

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## Continuations and Divisionals

- 37 C.F.R.§ 1.63(d) retains benefits of 37 C.F.R.§ 1.60 without its drawbacks
- A copy of the oath/dec from the previous application may be used in a continuation or divisional application

- 1.	Application Filing

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**Notes:**
1) The benefit of 37 C.F.R. § 1.60 is that it permitted the use of a copy of the oath/dec of the prior application.  Its drawback is that it required a “true copy” of the prior complete application.

2) The copy may have:
  application number of the prior application,
  /s/  date,
  no date,
  no signature, if there is an indication that it was signed.

  Almost anything goes.

## Application Filing - 37 C.F.R. § 1.63Oath or Declaration

- When a new oath/dec IS required:
- New applications
- CIPs
- Continuations and divisionals naming a new inventor

- 1.	Application Filing

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**Notes:**
Adding a new inventor does not require an inventorship petition under § 1.48.

## 37 C.F.R. §  1.63(d)(3) (Copy of declaration from prior application)

- 37 C.F.R. §  1.63(d)(3) (Copy of declaration from prior application)

- 	If a petition under § 1.47 was granted in the prior application, a copy of the decision according status under§ 1.47 is required...
- 	**unless** the non-signing inventor(s) subsequently joined in the prior application, in which case only the declaration executed by all of the inventors in the prior application is required.

- 1.	Application Filing

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## Application Filing - 37 C.F.R. §  1.41(a)Inventorship

- The executed oath/dec names the inventorship:
- Inventor’s name is no longer needed for a filing date
- Executed oath/dec sets the names of the inventors
- If no name of an actual inventor is provided with the application papers, an identifier consisting of alphanumeric characters is requested   (e.g., attorney docket number)

- 1.	Application Filing

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**Notes:**
Requirement for identification of full names is moved to § 1.63(a)
§§ 1.41(a)(1) & (a)(2) added to indicate how inventorship is identified in nonprovisional and provisional applications, respectively if an oath is filed, or if not...
§ 1.41(a)(3) added to indicate need for an identifier consisting of alphanumeric characters, e.g., attorney docket number, if no name of an actual inventor is provided in application on filing
amended to state that a patent is applied for in the names of the actual inventors

The cover sheet for a provisional application serves the functions of the oath/dec in a non-provisional application.

## Application Filing - 37 C.F.R. § 1.53(d)Inventorship

- Changes of Inventorship in CPA
- To Delete Inventors:  Append a statement to the CPA request deleting the non-inventor(s).
- To Add Inventors: Submit a petition under 37 C.F.R. § 1.48. If a CPA names additional inventors, they are not added except and until a § 1.48 petition is filed and granted.

- 1.	Application Filing

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**Notes:**
This is how to change the inventors in a CPA; the previous slide showed the subject in more detail for all applications.
If an accompanying statement deletes one or more inventors, the inventorship will be revised as requested.  Examiners should acknowledge the change in the first office action. 
If no statement is filed with the CPA request, any later changes require a § 1.48 petition. 
When there is an unacted-upon § 1.48 petition in the prior application, it will be acted on in the CPA, unless moot (because inventors were already deleted by the statement accompanying the CPA request.)

## Application Filing - 37 C.F.R. §  1.41(a)Inventorship 

- Inventorship in a _nonprovisional_ application is set forth in the executed oath/dec filed under § 1.63 during the pendency of the application:
- IF a signed § 1.63 oath/declaration was not filed during pendency, inventorship will be established from the application papers filed under § 1.53(b)

- 1.	Application Filing

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**Notes:**
Inventorship in nonprovisional identified in:
signed § 1.63 oath/declaration filed during pendency of application (except to delete an inventor as provided for in §§ 1.53(d)(3) for CPAs or when a copy is permitted for continuing cases); 
application papers filed under § 1.53(b), IF signed § 1.63 oath/declaration not filed during pendency of nonprovisional; or
can petition under § 1.41(a)(1) to establish inventorship where case is abandoned and no oath/dec was filed
(under §§ 1.53(d)(3) and 1.63(d), inventorship of continuation/divisional is that inventorship identified in the § 1.63 oath/declaration filed in prior application less any inventor requested to be delete at time of filing continuation/divisional)

## Application Filing - 37 C.F.R. §  1.41(a)Inventorship 

- Inventorship in _provisional_ application identified in:
- Cover sheet; or in the
- Application papers under § 1.53(c), IF the cover sheet was not filed during pendency of the provisional application; or in a
- Petition under § 1.41(a)(2) for change of names or inventors.

- 1.	Application Filing

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## Application Filing Changes: 

- 37 C.F.R. §  1.60 and 1.62 eliminated
- 37 C.F.R. §  1.63(d) provides for the use of a copy of the executed oath/declaration from a prior application in a continuation or divisional (filed under 37 C.F.R. §  1.53(b))
*Replaces practice under 37 C.F.R. §  1.60*
- 37 C.F.R. §  1.53(d) provides for Continued Prosecution Applications (CPAs)
*Replaces practice under 37 C.F.R. §  1.62*

- 1.	Application Filing

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## Application FilingContinuation/Divisional using a copy of the oath/declaration of the prior application

- Former Practice              (37 C.F.R. §  1.60)
- new application number assigned
*true copy of prior application*
*true copy statement*
- continuing data in first sentence of the specification

- New Practice                (37 C.F.R. §  1.53(b))
- new application number assigned
**copy of prior application or new specification and drawings**
- continuing data in first sentence of the specification

- 1.	Application Filing

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## Filing Requirements

- Former 37 C.F.R. §  1.60
- reference to filing under
-    37 C.F.R. §  1.60 (Rule 60)
- true copy of prior application (specification, claims, drawings, signed oath/ declaration)
- true copy statement
- same or fewer than all inventors named in  prior application
- filed prior to patenting, abandonment, or termination of proceeding on prior application

- New 37 C.F.R. §  1.53(b)
**no reference to any rule**
**copy of prior application or new specification, claims, drawings with **signed oath/ declaration of prior application
- same or fewer than all inventors named in  prior application
- filed prior to patenting, abandonment, or termination of proceeding on prior application

- 1.	Application Filing

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## Comparison of new and former sections

- Disadvantages of former 37 C.F.R. §  1.60
- If true copy of prior application or true copy statement omitted, NO filing date - loss of patent term while filing date petition is being decided
- must file any “corrected” specification as a substitute specification (more paper in the application file)

- Advantages of new 37 C.F.R. §  1.53(b)
- Permits the filing of a continuation/divisional using a copy of the oath declaration of the prior application, without the true copy requirement
- no need to reference any specific rule
- one section (37 C.F.R. §  1.53) for filing all applications

- 1.	Application Filing

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## Application FilingContinued Prosecution Application (CPA)

- Former Practice (37 C.F.R. §1.62)
- may  be used to file continuation, divisional, or CIP
- new application number assigned
- request for an FWC must be filed
- file jacket and content of prior application used in new file jacket
- newly executed oath/declaration required for CIP
- continuing data in first sentence of specification

- New Practice (37 C.F.R. §  1.53(d))
- may  be used to file continuation or divisional, but not a CIP
- the immediate prior application may have been filed before, on or after June 8, 1995
- no new application number assigned
- request for a CPA must be filed
- file jacket and content of prior application used for CPA
- no continuing data in first sentence of specification

- 1.	Application Filing

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- Rev. 7

## Filing Requirements

- Former 37 C.F.R. §  1.62
- Request for *FWC*
- must be signed
- must identify prior application
- Must be filed prior to payment of issue fee, abandonment, or termination of proceedings on prior application
- prior application must be complete

- New 37 C.F.R. §  1.53(d)
- Request for **CPA**
- must be signed
- must identify prior application
- Must be filed prior to payment of issue fee, abandonment, or termination of proceedings on prior application
- prior application must be complete **and may have been filed before, on or after June 8, 1995**

- 1.	Application Filing

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- Rev. 7

## Comparison of new and former sections

- Disadvantages of **former** 37 C.F.R. §  1.62
- 	Loss of potential patent term due to following delays:
- If the FWC request is filed with a new (or copy of prior) specification,  NO filing date
- identification of wrong application, NO filing date
- processed by OIPE as a new application

- Advantages of **new** 37 C.F.R. §  1.53(d)
- If the CPA request is filed with a new (or copy of prior) specification, treated as substitute specification, NOT a filing date issue
- identification of wrong application: submitter contacted to determine corrected application number, NOT a filing date issue
- processed by Group as a submission in the prior application (no pre-examination delays)

- 1.	Application Filing

- 42

## Topic 2:Deceptive Intent

- Topic 2:Deceptive Intent

- 37 C.F.R.§ 1.4 Verification of correspondence
- 37 C.F.R.§ 1.48 & 1.324 Correction of inventorship
- 37 C.F.R.§ 1.171 & 1.175 Reissues.
- 37 C.F.R.§ 3.73(b) Establishing right of assignee to prosecute.
- 37 C.F.R.§ 1.28  Small Entity Status

- 2.	 Deceptive Intent

- 43

**Notes:**

Implicit verification for submissions: § 1.4 and 10.18

Corrections of Inventorship:
	In applications - § 1.48
	In patents - § 1.324
Reissues
§ 1.171 - relates to title report requirement to establish the appropriate applicant or assignee
§ 1.175 - deals with the reissue oath/ dec
§ 3.73(b) - establishes the proper assignee to take action in an application independent of the action actually taken

## 37 C.F.R. § 1.4 and 10.18:

- Puts inventors on the same plane as attorneys and agents
- An explicit verification is not required for certain submissions, e.g. small entity statements (§ 1.27), correction of inventorship (§ 1.48), substituted specifications (§ 1.125).
- The verification requirement is retained in certain sections (*e.g.*, 37 C.F.R. § 1.63 oaths, §§ 1.130, 1.131, and 1.132 affidavits).

- 2.	 Deceptive Intent

- 44

**Notes:**
Section 1.4(d)(2) is amended to provide that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b), and that violations of § 10.18(b)(2) may subject the party to sanctions under § 10.18(c).  
This permits the elimination of the verification requirement in 37 C.F.R. 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1.55, 1.102, 1.125, 1.137, 1.377, 1.378. The absence of a required verification has been a source of delay in the prosecution of applications, particularly where such absence is the only defect noted.

Optional Note:
Section 1.4(d)(1)(ii) is also amended to include the phrase "direct or indirect copy" to clarify that the copy of the document(s) constituting the correspondence submitted to the Office may be a copy of a copy (of any generation) of the original document(s), or a direct copy of the original document(s).
To the Bar:
These requirements are based on the philosophy that applicants are telling the truth, rather than that applicants are pressured to not tell the truth.

## Deceptive Intent - 37 C.F.R.§ 1.48  & 1.324

- Correction of inventorship in applications & patents
- Eliminated factual showing requirements
- Eliminated diligence requirements
- Narrowed and changed parties who must submit statements
- 	37 C.F.R.§§ 1.48 and 1.324: statements re: deceptive intent required only from inventors to be added to or deleted from application
- §1.324 additionally requires statement of acquiescence from other original named inventors
- §1.63 oath/dec no longer needed under § 1.324

- 2.	 Deceptive Intent Issues

- 45

**Notes:**
Instead of submitting statements setting forth in detail how the error occurred, the applicant need only submit a statement that the error occurred without deceptive intent.
Deceptive intent issues are appropriately addressed in a court forum.
Easier for applicants to prepare and for examiners to decide -  eliminates contentious issues.
Not yet determined whether § 1.324 should be amended in light of Stark v. Advanced Magnetics,  43 USPQ 2d 1321 (Fed Cir 1997) which requires only inventor to be added (not inventor to be deleted) to address lack of deceptive intent.  PTO rules  1.324 currently requires inventor(s) being deleted to submit a statement addressing lack of deceptive intent, but statute allows for this.  
Of course, a new declaration/oath from all the inventors would be required under §1.48 in addition to the statements re deceptive intent.

## Deceptive Intent - Reissue

- Requirement for title report in 37 C.F.R. § 1.171 is eliminated
- Reissue oath/dec (37 C.F.R. § 1.175) simplified:
-   only one error being corrected need be identified
-         ...instead of all errors
-   only a general statement as to lack of deceptive intent is required
-        ... instead of a detailed showing of facts as to how the errors 	arose or occurred

- 2.	 Deceptive Intent

- 46

**Notes:**
Requirement for a title report in 37C.F.R. § 1.171 is eliminated.  In lieu, 37C.F.R. § 1.172 requires ownership to be established by a 37 C.F.R. § 3.73(b) statement.
This rule completely revised.  Former paragraphs (a) & (b) have been deleted and replaced by new paragraphs (a)-(d).
-No longer necessary to specify each and every change being made in the reissue.
-No longer necessary to spell out in detail the factual scenario surrounding how the errors arose and how they were discovered in order for the PTO to conclude that the errors were without deceptive intention.
As a practical matter, the PTO does not address deceptive intent issues.  Thus requiring applicant to explain and examiners to evaluate such showings is not appropriate.

While the prior practice developed some record, such record is better developed during a court proceeding.

## Supplemental Oath or Declaration: 

- Supplemental Oath or Declaration:
- Only required at allowance
- Should cover all errors corrected after initial declaration
- Need not identify any errors unless the originally identified error no longer remains as basis for reissue

- 2.	 Deceptive Intent

- 47

**Notes:**
Applicants need not file a supplemental reissue oath/declaration with each amendment covering changes made throughout prosecution; only a single supplemental declaration will be required prior to allowance generally stating that all errors being corrected which were not covered by the original or previously submitted oath or declaration arose or occurred without deceptive intention.

Prior to allowance, the examiner will contact the applicant for a supplemental oath/declaration; if applicant cannot provide one in a timely manner, the examiner will issue a final rejection (based on 35 USC 251 and 37 C.F.R. 1.175) requiring that the requisite declaration be submitted.

The supplemental declaration need not identify any specific errors, unless the originally identified error(s) serving as basis for the reissue is no longer being corrected.

## Between publication and when new rules become effective:

- * If there is a petition under § 1.183 to waive 37 C.F.R. § 1.175, send to Petitions Office
- * Evaluate oath/declaration under current standards: if acceptable, then allow; if not, then depending upon timing, send out suspension letter or just wait for effective date.
- After new rules become effective:
- * All pending reissue applications (even if filed under old rules) are _only_** **subject to requirements of new rules

- 2.	 Deceptive Intent

- 48

**Notes:**
Where other non-oath/declaration rejections are being made, rejections based on § 1.175 should be held in abeyance.  However, the examiner may evaluate the oath/declaration based on current requirements (in effect before new rules became effective), and, if found acceptable, notify applicant.

If the application is otherwise allowable, the oath/declaration should be evaluated and, if acceptable, the case allowed.  If unacceptable, prosecution should be suspended until the revised rule is effective.  Applicant should be so notified.

All responses made by the applicants must be evaluated  according to the rules currently in effect.  After the effective date, all reissues and all responses, even if filed under the old rules prior to the effective date, will be subject to treatment and consideration according to the revised rules.

## Deceptive Intent - 37 C.F.R. §  3.73 

- The assignee's ownership interest is established by filing a statement under 37 C.F.R. §  3.73(b) :
- 37 C.F.R. §  3.73(b) no longer requires that an assignee
- specifically state that the evidentiary documents have been reviewed, and
- certify that title is in the assignee seeking to take action

- 2.	 Deceptive Intent Issues

- 49

**Notes:**
This change will eliminate delay where a § 3.73(b) statement lacks these superfluous clauses.

To the Bar
Having a power of attorney granted by the assignee under a § 3.73(b) statement rather than by the inventors avoids conflicts as to whom the attorney or agent is representing.

## Deceptive Intent - 37 C.F.R. §  1.28 (a)(2) 

- Small Entity Status
- 	The payment of the small entity basic statutory filing fee will be treated as the required reference to a small entity statement in a prior application or in a patent in:
- 		- continuing applications, and
- 		- reissue applications

- 2.	 Deceptive Intent Issues

- 50

**Notes:**
1) Works for all priority claims under 35 U.S.C. §§ 119(e), 120, 121 or 365(c)

2) Does not relieve applicant from checking for continued entitlement to small entity status on filing of the continuing application or the reissue application

## Topic 3:Appeal Process

- Topic 3:Appeal Process

- 37 C.F.R. § 1.191 Notice of Appeal
- 37 C.F.R. § 1.193 Examiner's Answer & Reply Brief
- 37 C.F.R. § 1.196 Decision by the Board

- 3.	 Appeal Process

- 51

**Notes:**
These are the three Rules relating to appeals that have been amended.

## Appeal Process - 37 C.F.R. § 1.191 

- No Longer Require a Notice of Appeal to
- be signed
- identify the appealed claims

- 3.	 Appeal Process

- 52

**Notes:**
Reasons why these 2 requirements were deleted:
> 37 C.F.R. § 1.192 requires
a signed appeal brief (37 C.F.R. § 1.33) which will, in effect, ratify any unsigned notice of appeal
the appeal brief identifies the claims appealed (§ 1.192(c)(3) )
Thus the appeal cannot go forward without a signature and the identification of the appealed claims.

> By deleting these 2 requirements we eliminate a source of errors, as well a the “make work” sequence which routinely followed.  That is, the steps of preparing and mailing a Notice of Defective Appeal, as well as the processing of the corrective response, are completely eliminated.

## Appeal Process - 37 C.F.R. § 1.193Examiner’s Answer 

- While § 1.193 precludes New Grounds of rejection in an Examiner’s Answer,
- IF
- 1.  an amendment under §1.116 is submitted, and
- 2.  advisory action indicates the § 1.116 amendment would be entered for appeal purposes, and which individual rejections in final would be used to reject the new or amended claims,
- THEN
- 3.  Appeal brief must address the indicated rejections, and
- 4.  Examiner's Answer may include such rejections
- Prosecution reopened for new ground(s) of rejection.

- 3.	 Appeal Process

- 53

**Notes:**
New grounds of rejection in examiner answers were unfair because the examiner was essentially issuing a first action or new action on appeal.

This eliminates a point of contention between examiners and attorneys and the inevitable controversy over whether a reply brief or an amendment was properly limited to the new grounds of rejection.
When the examiner reopens - the action would be a final action if it would be appropriate for the examiner to make it final, or if not, then a non-final action.

Of course, any non-entered amendments would have to be entered and treated by the Examiner.

## Appeal Process - 37 C.F.R. § 1.193

- Where prosecution is reopened, under § 1.193(b)(2), appellant must:
- file an appropriate reply to the Office action; or
- request reinstatement of the appeal
- request must be accompanied by a supplemental appeal brief
- reinstatement option will avoid need for a final Office action when applicant chooses to go back to the Board of Appeals

- 3.	 Appeal Process

- 54

**Notes:**
Where prosecution is reopened, under § 1.193(b)(2), appellant must:
file a reply under § 1.111 if the Office action is non-final;
file a reply under § 1.113 if the Office action is final; or
request reinstatement of the appeal
request must be accompanied by a supplemental appeal brief
no new amendments, affidavits (§§ 1.130, 1.131 or 1.132) or other evidence are permitted
the supplemental appeal brief may supplement a previously filed appeal brief or reply brief

## Appeal Process - 37 C.F.R. § 1.193

- Timely reply brief _always_ entered--§ 1.193(b)(1)
- New amendments, affidavits, declarations, or exhibits are not entered except as permitted by §§ 1.116 and 1.195.
- Examiner must:
- acknowledge and enter the reply brief; or
- reopen prosecution to respond to the reply brief
- Supplemental examiner’s answer not permitted

- 3.	 Appeal Process

- 55

**Notes:**
Appellant gets the last word; more consistent with court proceedings. The current practice was viewed as unfair by the bar, since the examiner determined entry of papers.

Eliminates an area of contention with the bar: Frequently  the issues degenerated to a contest on side issues involving a lot of time wasted on reviewing and deciding petitions requesting review of decisions denying entry of reply briefs.
This will save time, because it eliminates the burden of reviewing reply briefs for compliance with a hazy requirement.  By acknowledging and indicating the entry of the reply brief the Board is assured that the examiner has seen the reply brief.
Sand bagging by the applicant may result in a reopening of prosecution, which will negatively impact the patent term, thereby limiting the desirability of sand bagging.
If the examiner wants to respond to the reply brief she can; but prosecution will have to be reopened.

## Appeal Process Flowchart

**Appeal Process Flowchart**

- Notice of Appeal &
- Appeal Brief

- Is a new ground
- of rejection necessary?

- Reopen Prosecution

- No

- Yes

- Examiner’s Answer

- Reply Brief (Subject
- to §§ 1.116(c) and 1.195)

- Is a Response to the
- Reply Brief Necessary?

- Yes

- Enter & Acknowledge Reply Brief;
- Forward Application to Board

- No

- Reinstatement of
- Appeal (Must file supplemental brief;
- no new amendments,
- affidavits or other evidence)

- Normal Prosecution (Reply
- under § 1.111 or § 1.113)

- Appellant’s Option 1

- Appellant’s Option 2

- 3.	 Appeal Process

- 56

## Appeal Process - 37 C.F.R. § 1.196

- Decision by Bd. Pat. App. & Int.
- 	Where the Board would have recommended a rejection of  allowed claims under 37 C.F.R. § 1.196(d)...
-    the Board must now expressly reject the claims(s) under
- 	37 C.F.R. § 1.196(b).

- 3.	 Appeal Process

- 57

**Notes:**
37 C.F.R. 1.196(b) now permits the Board to enter a new ground of rejection on any pending (as opposed to solely appealed) claim(s), including allowed claims not on appeal.
Board’s new ground of rejection is binding on the examiner in the same manner as was the recommendation.
Appellant has the option of submitting an amendment and/or a showing of facts to rebut the Board’s new ground of rejection and may have the matter reconsidered by the examiner
Subject matter of previous 37 C.F.R. 1.196(d) deleted and replaced in view of changes to 37 C.F.R. 1.196(b)

## Topic 4:Time to Reply

- Topic 4:Time to Reply

- 37 C.F.R. § 1.135 Abandonment for failure to reply within time period.
- 37 C.F.R. § 1.136 Extensions of time.
- 37 C.F.R. § 1.137 Revival of abandoned application or lapsed patent.

- 4.	 Time-to-Reply

- 58

## Time to Reply - 37 C.F.R. § 1.135(c)

- 	Treatment of bona fide but incomplete replies to non-final Office action.
- 	May be accepted and treated by:
- 		1) Acting on the merits of the reply; or
- 		2) Requiring the omission to be supplied prior to 		     acting on the merits of the reply.
- 			- new _extendible_ time period (not time limit)
- 				 may be given
- 			- remaining time period if sufficient

- 4.	 Time-to-Reply

- 59

**Notes:**
Note that the not-fully-responsive reply has been accepted as adequate to avoid abandonment for failure to reply to the action. 

Major Change: Time period to supply the omission(s) may be extended.
Eliminates problems with old “non-extendible time limit” system.

The 20 year term will encourage prompt attention by the applicant.
Form paragraph 7.95 is being appropriately revised.  The treatment is basically the same but the applicant may extend the period for supplying the omission.

## Time to Reply - 37 C.F.R. § 1.135(c)

- Comparison of Old to New

- _Old_

- _New_

- Non Final
- Off. Action

- Non Final
- Off. Action

- Not-Fully-Resp Reply
- Received.
- *Abandonment Date

- Not-Fully-Resp Reply
- Received.

- Off. Letter

- Off. Action

- *Abandonment
- Date

- Non-response

- [Ap. Files Continuation]

- 4.	 Time-to-Reply

- Time Limit

- Time Period

- Time Period

- Time Period

- 60

**Notes:**
This replaces the practice in which an applicant may be given an opportunity to supply the omission through the setting of a "time limit" of one month that is not extendible.  Under § 1.135(c) as adopted, a one-month shortened statutory time period will generally be set enabling an applicant to petition for extensions of time under § 1.136(a).

Under old rule - continuation lacks copendency
Under new rule - continuation has copendency

## Time to Reply - 37 C.F.R. § 1.135(c)

- Exception:
- Does **not** apply after a **final** Office action, not even if the omission is:
- 1) a lack of a signature; or
- 2) a lack of additional claims fee
- An applicant must supply any omission in a reply to a **final** Office action within the period for reply to the **final** Office action.

- 4.	 Time-to-Reply

- 61

**Notes:**
37 C.F.R. § 1.113(a) provides that the only reply to a final Office action effective to avoid abandonment of an application is:  (1) an amendment under § 1.116 that prima facie places the application in condition for allowance; or (2) a notice of appeal (and appeal fee) under § 1.191.  Thus, the only reply under § 1.113(a) that will ensure that abandonment of the application will be avoided is:  (1) an amendment under § 1.116 that cancels all of the rejected claims; or (2) a notice of appeal (and appeal fee) under § 1.191 (§ 1.113(a)).  

Can still telephone attorney to get complete reply.

MPEP 700 will be appropriately revised.
Practice in current 714.03 - for 2 exceptions - is being eliminated.

## Time to Reply - 37 C.F.R. § 1.136

- The cap is now five months
- Separate and specific petition is no longer needed.
- a petition will be construed whenever possible
- Five Months is possible for
- 1) one month restrictions
- 2) one month periods under § 1.135(c)
- 3) appeal briefs  (up to 7- not subject to stat. period)

- 4.	 Time-to-Reply

- 62

**Notes:**
For example, when a one-month or 30 day period is set for reply to a restriction requirement or for completing a reply under § 1.135(c), that period may be extended up to the six month statutory (35 U.S.C. 133) maximum.  In addition, as the two-month period set in § 1.192(a) for filing an appeal brief is not subject to the six month maximum period specified in 35 U.S.C. 133, the period for filing an appeal brief may be extended up to seven months.

Authorization for the petition is construed from:
- general authorization to change fees under § 1.17
- payment of fee itself

## Time to Reply- 37 C.F.R. § 1.17 Paragraphs

- _Former_	_New_
- 1.17(a)	1.17(a)(1) - reply within 1st month
- 1.17(b)	1.17(a)(2) - reply within 2nd month
- 1.17(c)	1.17(a)(3) - reply within 3rd month
- 1.17(d)	1.17(a)(4) - reply within 4th month
-  ----	1.17(a)(5) - reply within 5th month
- 1.17(e)	1.17(b)     - notice of appeal fee
- 1.17(f)	1.17(c)     - appeal brief fee
- 1.17(g)	1.17(d)     - oral hearing fee

- 4.	 Time-to-Reply

- 63

## Time to Reply - 37 C.F.R. § 1.137

- Abandonment and Revival:
- Removal of one-year cap for filing a petition based on _unintentional_ delay. (37 C.F.R. § 1.137(b))
- Emphasizes that the entire delay must have been unintentional to preclude intentional delay or abuse of the revival procedure (*e.g.*, submarine patents).
- Long abandoned applications will receive greater scrutiny
- Terminal disclaimer required for all applications not subject to 20 year term

- 4.	 Time-to-Reply

- 64

**Notes:**
Note § 137 (a) is the unavoidable paragraph, and § 137(b) is the unintentional paragraph, each with its four requirements for revival of an abandoned application or lapsed patent (for failure to pay all or part of the issue fee.)

Amended to incorporate the provisions of 37 C.F.R. 1.137, 1.139 (provisional applications),  1.155(issue fee- design applications), 1.316(issue fee), and 1.317(balance of issue fee) into a single section. 
Provisions concerning delayed maintenance fee payments are not affected by the Rule change.

Delaying the revival of an abandoned application until the industry or a competitor shows an interest in the invention is the antithesis of an "unavoidable" or "unintentional" delay. 

## Topic 5:Miscellaneous

- 37 C.F.R. § 1.14(a)(2) Access to file
- 37 C.F.R. § 1.59 Petitions to expunge
- 37 C.F.R. § 1.121 Manner of making amendments
- 37 C.F.R. § 1.125 Substitute specification
- 37 C.F.R. § 1.152 Design patent applications
- 37 C.F.R. § 1.291 Protests by the public against 			pending applications

- 5.	 Miscellaneous

- 65

## Miscellaneous- 37 C.F.R. § 1.14(a)(2)

- Access
- 	If a pending application has been incorporated by reference in a U.S. Patent, then a copy of the original disclosure can be supplied without a petition for access, as was the former requirement.
- 	-  written request required, with payment of 	required fee (§ 1.19(b)(2))
- 	-  applicant not notified

- 5.	 Miscellaneous

- 66

## Miscellaneous - 37 C.F.R. § 1.59 

- Expungement
- Will continue practice of not expunging information forming part of the original disclosure from the application file
- Now provided for by 37 C.F.R. § 1.59 rather than under the general 37 C.F.R. § 1.182

- 5.	 Miscellaneous

- 67

**Notes:**
Information sought to be returned to applicant is usually that provided in an IDS or an affidavit, often involving trade secrets.  Often it was submitted to satisfy a § 1.56 duty, but the applicant would like its return if not material.
The rule also covers papers unintentionally submitted or submitted with the wrong application number.

## Miscellaneous - 37 C.F.R. § 1.59

- Petition to Expunge (cont)
- Group determines whether the information is “material to patentability” or “important to a reasonable examiner in deciding whether to allow the application to issue as a patent.”

- 5.	 Miscellaneous

- 68

## Miscellaneous - 37 C.F.R. § 1.121

- Manner of Making Amendments
- Applications other than reissues 37 C.F.R. § 1.121(a)
- (a) (1) 	- spec
- (a) (2) 	- claims
- (a) (3) 	- drawings
- Reissue Applications 37 C.F.R. § 1.121(b)
- (b) (1) 	- spec
- (b) (2) 	- claims
- (b) (3) 	- drawings
- Reexaminations 37 C.F.R. § 1.121(c)

- 5.	 Miscellaneous

- 69

**Notes:**
The manner of making amendments has been condensed to involve fewer rules and formatted in a parallel manner for regular cases, for reissues and for reexams.

Note: 37 C.F.R. §1.121(c) is literally a pointer to 37 C.F.R. §1.530(d) which describes the process of making amendments to Reexam applications.

## Miscellaneous - 37 C.F.R. § 1.121

- No change in substance for applications other than reissues
- Reissue practice made to conform to reexamination
- Disclosure must be amended when required to ensure *substantial* correspondence between the specification (including the claims) and the drawings.

- 5.	 Miscellaneous

- 70

**Notes:**
The addition of the term “substantial” was intended to permit applicant greater latitude than the rigid term for term comparison between the language used on filing and the amended claims.

## Miscellaneous - 37 C.F.R. § 1.121(b)

**Reissues:**
**Specification** is amended only by rewriting *entire* paragraphs showing underlining and bracketing - but entire paragraphs may be deleted by an instruction.
**Claims **are amended only by
- - rewriting the *entire* claim showing underlining and bracketing or
- - request to delete the claim
**Hand entry** of less than five words no longer allowed

- 5.	 Miscellaneous

- 71

**Notes:**
Paragraph (b) (1):  Specification (other than the claims and drawings) in reissue application is only amended by:
rewriting entire paragraph(s) with underlining and brackets to indicate changes from the patent or directing deletion of an entire paragraph
Paragraph (b) (2)(i):  Claim is only amended by:
rewriting entire claim with underlining and brackets to indicate changes from the patent, or
a request to delete the claim
Hand entry by the Office of five or less words in a claim  (former 37 C.F.R. § 1.121(c)) is not permitted.

## Miscellaneous - 37 C.F.R. § 1.121(b)

- Reissues:
- 37 C.F.R. § 1.121**(b)(2)(ii) & (iii):**
- Each amendment submission must include
- - status of all claims
- - support in disclosure for amendatory material, i.e. additions and deletions
- 37 C.F.R. § 1.121**(b)(3):** Amend drawings with new sheets labeling new figures as -new- or -amended-

- 5.	 Miscellaneous

- 72

**Notes:**
Paragraph (b) (2) (ii):  Each claim amendment submission must set forth the status (i.e., pending or canceled) of all patent claims and of all added claims (even those added claims subsequently canceled) as of the date of the submission
Paragraph (b) (2) (iii):  Each claim amendment when originally submitted must be accompanied by an explanation of the support in the disclosure for all amendatory matter in the claim, ie additions and deletions.
Discussion:
If an element is omitted so that the claimed subject matter is broadened, there still must be some description (e.g., an original claim, description in the specification, or a drawing) in the original application which reasonably conveys to one skilled in the art that the applicant had possession of the broadened, claimed subject matter. 
Paragraph (b) (3): Drawings are amended by submitting new sheets of drawings with indication of -new- or -amended- figures

NOTE:  A handout discussing the details of the amendments in reissue and reexamination will be made available to you at the end of this slide show.

## Miscellaneous - 37 C.F.R. § 1.121(b)

- Transition-Reissue Amendments:
- 	Old rules control for amendments filed prior to effective date of Final Rule.

- 5.	 Miscellaneous

- 73

**Notes:**
We will not return amendments submitted under the old rules but not entered or acted on until after the effective date.

## Miscellaneous - 37 C.F.R. § 1.125(Substitute Specification)

-   This section codifies that a substitute specification is permitted as follows:
- 1) it is submitted in clean form in the desired language without changes being indicated;
- 2)  it is accompanied by a statement that it includes no new matter;
- 3) it is accompanied by a “marked up” copy of the specification, for reference purposes only, which indicates all changes from the last amended version.

- 5.	 Miscellaneous

- 74

**Notes:**
This codifies that substitute specifications are permitted.

A substitute specification is not permitted in a reissue application or reexamination proceeding.
The accompanying  “marked up” copy of the specification need not be in true “underline and bracketed” form of 37 CFR 1.121(a), but must indicate changes in any manner clear to the reader.  A word processing “compare” function would be acceptable for this submission.
The “marked up” copy would not be entered into the table of contents, but would be associated with the file in the file wrapper jacket.

## Miscellaneous - 37 C.F.R. § 1.152

- Design Patent Applications
- the prohibition against color drawings and photographs is replaced by a petition procedure   (§ 1.152(a)(2))
- all details of informal drawings must be present in the final drawings unless originally disclaimed

- 5.	 Miscellaneous

- 75

**Notes:**
Concerning Color Drawings
formerly one needed a waiver of the rule under § 1.183-
now a petition is provided for in view of new emerging technologies- like laser light shows, fireworks, holographic designs.

## Miscellaneous - 37 C.F.R. § 1.291(c)

- Protests by the public against pending applications.
- More than 1 prior art submission (protest) by a single party is now permitted
- Timeliness of submission is still a factor

- 5.	 Miscellaneous

- 76

**Notes:**
Additional submissions are limited to prior art; and they must be timely to be considered.
Any protest must be filed prior to mailing of notice of allowance to insure it is considered timely (see § 1.291(a)(1))

## Summaries

- Topic    1.	Application Filing
- Topic    2.	 Deceptive Intent
- Topic    3.	 Appeal Process
- Topic    4.	 Time-to-Reply
- Topic    5.	 Miscellaneous

- Summary

- 77

## Filing of Applications (summary)

- All applications under 35 U.S.C. § 111 filed under 37 C.F.R. § 1.53
- 37 C.F.R. §§ 1.60 and 1.62 eliminated
- Continuations/divisionals may be filed using copy of an oath/dec. from prior application
- P.O. Address must be in oath/dec.
- Names of the inventors not needed for a filing date
- The inventorship is named in the executed oath/dec.

- Summary

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## Filing of Applications (summary)

- Continued Prosecution Application (CPA) under 37 C.F.R. § 1.53(d)
- Immediate prior application may be filed before, on or after  June 8, 1995*
- No C-I-P permitted
- Same application number/file jacket as prior application
- No “first sentence” reference to prior application
- Front of file jacket will not show CPA continuing data
- Will be processed entirely by Group
**May be filed by facsimile**
- *Note: See ____F.R.____; ____ O.G._____

- Summary

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- Rev. 7

## Deceptive Intent (summary)

- Separate verification requirement eliminated in a number of sections
- Requirements for a reissue oath/dec. simplified
- Requirements for a petition to correct inventorship simplified
- The payment of the small entity filing fee in a continuing or reissue application substitutes for a reference to the small entity statement in the prior application or patent

- Summary

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## Appeals (summary)

- No new ground of rejection in an examiner’s answer but permitted to apply individual rejections of final to claims of §1.116 amendment
- Any new ground of rejection on appeal or response to a reply brief must be via reopening of prosecution
- The applicant may request reinstatement of the appeal in reply to reopening of prosecution
- Reply briefs must be admitted if timely
- Supplemental Examiner’s Answer not permitted

- Summary

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## Time Frames (summary)

- Applicants may be given an extendible time period to supply an omission to a *bona fide *but incomplete reply to a non-final action
- Extensions for up to five (5) months now permitted under 37 C.F.R. § 1.136(a))
- Fee authorization or fee itself is a constructive petition under 37 C.F.R. § 1.136(a)
- One year filing period requirement for revival based upon _unintentional_ delay (37 C.F.R. § 1.137(b)) eliminated
- Multiple prior art protests permitted if timely

- Summary

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## Miscellaneous (summary)

- Reissue amendments (37 C.F.R. § 1.121(b)) made the same as reexamination amendments
- Substitute specification permitted if accompanied by a “no new matter” statement
- Color drawings and photographs in design drawings permitted upon petition
- 37 C.F.R. § 1.152 clarifies that all non-disclaimed matter in original drawings is an integral part of the disclosure/claim and cannot be removed
- Petitions to expunge explicitly provided for in   37 C.F.R. § 1.59

- Summary

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## For Further Information Contact

_**Section**__**	**__**	**__**	**__**Legal Advisor(s)**_
- §§ 1.4, 1.33		Robert Bahr
- §§ 1.6, 1.41, 1.53		John Gonzales/ Fred Silverberg/ Robert Bahr
- §§ 1.48, 1.324		Hiram Bernstein/ Jay Lucas
- §§ 1.14, 1.59, 1.63		Karin Tyson/ Jay Lucas
- §§ 1.104, 1.152		Romulo Delmendo
- §§ 1.84, 1.91, 1.121, 1.125	Kenneth Schor/ Larry Anderson
- §§ 1.135, 1.136, 1.137	Robert Bahr
- §§ 1.11, 1.171, 1.172, 1.175	Kenneth Schor/ Joe Narcavage
- §§ 1.191, 1.193, 1.196	Romulo Delmendo
- § 1.291			John Gonzales/ Fred Silverberg
- § 3.73(b)	 		Kenneth Schor/ Hiram Bernstein
- §§ 1.510, 1.530, 1.550	Gerald Dost/ Kenneth Schor

- Summary

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## Final Rule: Changes to the Patent Practice and Procedure

- 				Effective Date:
- 				December 1, 1997
- 				Thank you.

- Summary

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