BILLING CODE 3510-16
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No: 950620162-6014-02]
RIN 0651-AA75
            Miscellaneous Changes in Patent Practice
AGENCY:  Patent and Trademark Office, Commerce.
ACTION:  Final Rule.
SUMMARY:  The Patent and Trademark Office (Office) is amending
the rules of practice in patent cases to implement a number of
miscellaneous changes proposed in the rulemaking entitled
"Changes to Implement 18-Month Publication of Patent
Applications" (Notice of Proposed Rulemaking), published in the
Federal Register at 60 FR 42352 (August 15, 1995), and in the
Patent and Trademark Office Official Gazette 1177 Off. Gaz. Pat.
Office 61 (August 15, 1995), that are not directly related to the
18-month publication of patent applications.  While the proposed
rule changes in the Notice of Proposed Rulemaking were designed
primarily to implement the changes in practice related to the
publication of patent applications provided for in H.R. 1733,
these miscellaneous proposed changes clarify current rules of
practice, without regard to the publication of patent
applications.
DATES:  Effective Date:  September 23, 1996.
Applicability Date: Sections 1.52(a) and (b), 1.58, 1.72(b),
1.75(g), (h) and (i), 1.77, 1.84(c), (f), (g) and (x), 1.96,
1.154, and 1.163 of 37 CFR apply to applications filed on or
after September 23, 1996.
FOR FURTHER INFORMATION CONTACT:  Stephen G. Kunin by telephone
at (703) 305-8850, by facsimile at (703) 305-8825, by electronic
mail at rbahr@uspto.gov, or Jeffrey V. Nase by telephone at
(703) 305-9285, or by mail marked to the attention of Stephen G.
Kunin, addressed to the Assistant Commissioner for Patents,
Washington, D.C. 20231.  For copies of the forms discussed in
this final rule package, contact the Customer Service Center of
the Office of Initial Patent Examination at (703) 308-1214.
SUPPLEMENTARY INFORMATION
This final rule package is designed to implement the
miscellaneous changes set forth in the proposed rulemaking
entitled "Changes to Implement 18-Month Publication of Patent
Applications" (Notice of Proposed Rulemaking) that are not
directly related to 18-month publication of patent applications
and that are considered desirable even in the absence of an 18-
month publication system.
The Notice of Proposed Rulemaking indicated that, in addition to
implementing the 18-month publication of patent applications, the
Office also proposed to: (1) clarify which applications claiming
the benefit of prior applications, or which prior applications
for which a benefit is claimed in a later application, will be
preserved in confidence; (2) amend the rules pertaining to the
format and standards for application papers and drawings to
improve the standardization of patent applications; (3) provide
for those instances in which inventions of a pending application
or patent under reexamination and inventions of a patent held by
a single party are not identical, but not patentably distinct;
(4) clarify the practice for the delivery or mailing of patents;
(5) expedite the entry of international applications into the
national stage; and (6) amend a number of rules for consistency
and clarity.  The Notice of Proposed Rulemaking stated that these
proposed rule changes may be adopted as final rules even in the
absence of an 18-month publication system, and advised interested
persons to comment on any proposed rule change, regardless of
whether H.R. 1733 is enacted.
To avoid delays in the implementation of rule changes considered
desirable even in the absence of an 18-month publication system,
this final rule package provides for changes to 37 CFR
 1.12(c), 1.14, 1.52(a) and (b), 1.54, 1.58, 1.62(e) and (f),
1.72(b), 1.75(g), 1.77, 1.78(a) and (c), 1.84(c), (f), (g) and
(x), 1.96, 1.97, 1.107, 1.110, 1.131, 1.132, 1.154, 1.163, 1.291,
1.292, 1.315, 1.321 and 1.497, and adds new  1.5(f), 1.75(h)
and (i), and 1.130, all of which are based upon the changes
proposed in the Notice of Proposed Rulemaking.
Implementation of 18-month publication held in abeyance pending
Congressional action on H.R. 1733
The Notice of Proposed Rulemaking also proposed changes to 37 CFR
 1.4, 1.5(a), 1.9, 1.11, 1.12(a) and (b), 1.13, 1.16, 1.17,
1.18, 1.19, 1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a),
1.84(j), 1.85, 1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495,
1.701, 1.808, 3.31, 5.1, new  1.5(g), 1.306 through 1.308 and
5.9, and further changes to  1.14, 1.54, 1.62, 1.107, 1.131,
1.132, 1.291 and 1.292 to implement the 18-month publication of
patent applications as contained in H.R. 1733 and provide
procedures for the treatment of national security classified
applications.  The adoption of changes to these rules is held in
abeyance pending Congressional action on H.R. 1733.
The proposed rule changes in the Notice of Proposed Rulemaking to
provide new procedures for the treatment of national security
classified applications are also being held in abeyance.  These
proposed rule changes are separable from the implementation of 18-
month publication; however, they are sufficiently related to the
implementation of 18-month publication that they are also being
held in abeyance pending Congressional action on H.R. 1733.
In the event that H.R. 1733 is enacted, a final rule package to
implement this legislation will be published.  Final rules to
implement 18-month publication of patent applications based upon
the Notice of Proposed Rulemaking and the comments received in
response to the Notice of Proposed Rulemaking may be adopted
without either an additional public hearing or an additional
proposal being published for comment.
Implementation of the miscellaneous changes proposed in the
Notice of Proposed Rulemaking
The following paragraphs of this section include:  (1) a
discussion of the rules being added or amended in this final rule
package, (2) the reasons for those additions and amendments, and
(3) an analysis of the comments received in response to the
Notice of Proposed Rulemaking.
Changes to proposed rules:  These final rules contain a number of
changes to the text of the rules as proposed for comment.  The
significant changes are discussed below.  Familiarity with the
Notice of Proposed Rulemaking is assumed.
Sections 1.14(a) and (b) have been re-written for clarity.
Section 1.14(a)(1) provides that patent applications are
generally preserved in confidence.  Section 1.14(a)(2) sets forth
the circumstances under which status information concerning an
application may be supplied, and  1.14(a)(3) sets forth the
circumstances under which access to, or copies of, an application
may be provided.  Section 1.14(b) provides that abandoned
applications may be destroyed after 20 years from their filing
date.  The reference to paragraph (b) in  1.14(e) has been
deleted for consistency with the changes to paragraphs (a) and
(b) of  1.14.
Section 1.52(a) is being changed to provide that all papers which
are to become a part of the permanent records of the Patent and
Trademark Office must be legibly "written either by a typewriter
or mechanical printer in permanent dark ink or its equivalent,"
rather than "typed in permanent dark ink."  This change will
permit the filing of papers printed by any computer operated
printer, such as a laser printer which uses toner rather than
ink, and will avoid a conflict between  1.52(a) and Patent
Cooperation Treaty (PCT) Rule 11.9.  The phrase "when required by
the Office" was also added to  1.52(a).
Section 1.52(b) is being changed to provide that:  (1) the
application papers must be plainly written with each page printed
on only one side of a sheet of paper, with the claim or claims
commencing on a separate sheet and the abstract commencing on a
separate sheet; (2) the lines of the specification, and any
amendments to the specification, must be 1 1/2 or double spaced;
and (3) the pages of the specification including claims and
abstract must be numbered consecutively, starting with 1, the
numbers being centrally located above or preferably, below, the
text.  This change will clarify:  (1) the separate sheet
requirement for both the claims and abstract, (2) that the lines
of the papers not comprising the specification and amendments
thereto need not be 1 1/2 or double spaced, and (3) that the
specification, and not the transmittal sheets or other forms,
must be numbered.
Section 1.58 is being changed to provide that chemical and
mathematical formulae and tables must be presented in compliance
with  1.52(a) and (b), except that chemical and mathematical
formulae or tables may be placed in a landscape orientation if
they cannot be presented satisfactorily in a portrait
orientation.  This replaces the requirement that "[t]o facilitate
camera copying when printing, the width of formulas and tables as
presented should be limited normally to 12.7 cm. (5 inches) so
that it may appear as a single column in the printed patent."
However, chemical and mathematical formulae and tables must still
otherwise comply with  1.52(a) and (b).  This change will avoid
a conflict between  1.58 and PCT Rule 11.10(d).  Section 1.58 is
also being changed to require "0.21 cm." rather than "2.1 mm." to
ensure consistency.
Section 1.72 is being changed to provide that the abstract must
commence on a separate sheet, preferably following the claims.
This change will avoid renumbering pages of a specification
submitted in the arrangement set forth in  1.77 when filing the
application as an international application.
Section 1.75(h) is being changed to provide that the claim or
claims must commence on a separate sheet.  This change will
clarify that  1.75 requires that the claim or claims commence or
begin on a separate sheet, rather than requiring that all of the
claims must be on a single separate sheet or that each claim must
be on a separate sheet.
Section 1.77 is being changed to position the abstract as element
"(12)" following the claims, rather than element "(3)" prior to
the first page of the specification to conform to  1.72.
Section 1.78(a)(2) is being changed to replace the reference to
 1.14(b) with a reference to  1.14(a).
Section 1.78(c) is being changed to replace the phrase "[w]here
an application or a patent under reexamination and an application
or a patent" with the phrase "[w]here an application or a patent
under reexamination and at least one other application," since
conflicting claims between an application or a patent under
reexamination and a patent will be provided for in new  1.130.
Section 1.78(c) is also being changed to delete the sentence
"[i]n addition to making said statement, the assignee may also
explain why an interference should or should not be declared,"
since the Office will not, unless good cause is shown, declare or
continue an interference when the application(s) and patent are
owned by a single party.
Section 1.78(d) is removed.  The provisions of  1.78(d), as
proposed, are in new  1.130(b), since  1.130 provides for
conflicting claims between an application or a patent under
reexamination and a patent.
Section 1.84(x) is being changed from "[n]o holes should be
provided in the drawings sheets" to "[n]o holes should be made by
the applicant in the drawing sheets" to clarify that the
application papers, including drawings, should be submitted by
the applicant without holes provided therein, but that the Office
will drill holes through the application papers during the pre-
examination processing of the application.
Section 1.96(b) is being changed to provide that a listing
submitted as part of the specification "must be direct printouts
(i.e., not copies) from the computer's printer" for clarity.
Section 1.96(c) is being changed to substitute a reference to
36 CFR Part 1230 (Micrographics) for the enumerated American
National Standards Institute (ANSI) and National Micrographics
Association (NMA) standards.  As 36 CFR Part 1230 sets forth the
micrographic requirements for government records, it is
appropriate to reference this provision, rather than promulgate
separate standards for micrographics employed in patent
applications.
Section 1.97 is being changed to delete any reference to a
reexamination proceeding or a patent owner.  The submission of an
information disclosure statement during a reexamination
proceeding is governed by  1.555(a).
Section 1.97(a) is being changed from "[i]n order for an
applicant for patent or for reissue of a patent to have
information considered by the Office during the pendency of a
patent application, an information disclosure statement in
compliance with  1.98 should be filed in accordance with this
section" to "[i]n order for an applicant for a patent or for a
reissue of a patent to have an information disclosure statement
in compliance with  1.98 considered by the Office during the
pendency of the application, it must satisfy paragraph (b), (c),
or (d) of this section" for clarity.  Sections 1.97(c) and (d)
are also being changed to clarify the conditions in  1.97(c)
under which a certification as specified in  1.97(e) or the fee
set forth in  1.17(p) is required, and the conditions in
 1.97(d) under which a certification as specified in  1.97(e),
a petition, and the petition fee set forth in  1.17(i) are
required.
Section 1.110 is amended to change the reference to  1.78(d) to
a reference to  1.130 for consistency.
The proposed addition of a new  1.131(a)(3) is being withdrawn
in this final rule package.  This proposed change, as well as the
provisions of former  1.78(d), has been re-written as a new
 1.130.  New  1.130(a) will provide a procedure for the
disqualification of a commonly owned patent claiming a patentably
indistinct but not identical invention.  New  1.130(b) will
include the provisions of former  1.78(d).
Section 1.131(a) is being changed to replace the phrase "U.S.
patent to another" with "U.S. patent to another or others."
Section 1.154(a)(7) is being changed to add "[f]eature" prior to
"[d]escription," and  1.154(a)(8) is being changed to add "a
single" prior to "claim."
Section 1.163 is being changed to position the abstract as
element "(11)" following the claims, rather than element "(3)"
prior to the first page of the specification.  This change will
parallel the change to  1.77.  In addition,  1.163(c)(10) is
being changed to add "a single" prior to "claim."
Section 1.497(b)(2) is being changed to provide that "[i]f the
person making the oath or declaration is not the inventor, the
oath or declaration shall state the relationship of the person to
the inventor, the facts required by  1.42, 1.43 or 1.47, and,
upon information and belief, the facts which the inventor would
have been required to state" to better set forth the requirements
of an oath or declaration by a person who is not the inventor.
Section 1.497(c) is being changed to delete the initial phrase
"[t]he oath or declaration must comply with the requirements of
 1.63; however," since it is unnecessary.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1 is amended as
follows:
Section 1.5(f) is added to provide that a paper concerning a
provisional application must identify the application as such and
by the application number.
Section 1.12 is amended to revise paragraph (c) to read
"preserved in confidence under  1.14" for consistency with
 1.14.
Section 1.14 is amended to revise the title and paragraphs (a)
and (e) to read "preserved in confidence" for consistency with
the language in 35 U.S.C. 122.
Section 1.14(a) is amended to add a paragraph (a)(1) to provide
that patent applications are generally preserved in confidence
pursuant to 35 U.S.C. 122, and that no information will be given
concerning the filing, pendency, or subject matter of any
application for patent, and no access will be given to, or copies
furnished of, any application or papers relating thereto, except
as set forth in  1.14.
Section 1.14(a) is also amended to add a paragraph (a)(2) to
provide that status may be supplied:  (1) concerning an
application or any application claiming the benefit of the filing
date of the application, if the application has been identified
by application number or serial number and filing date in a
published patent document; (2) concerning the national stage
application or any application claiming the benefit of the filing
date of a published international application, if the United
States of America has been indicated as a Designated State in the
international application; or (3) when it has been determined by
the Commissioner to be necessary for the proper conduct of
business before the Office.  Status information includes
information such as whether the application is pending,
abandoned, or patented, as well as the application number and
filing date.  The inclusion of applications claiming the benefit
of the filing date of applications so identified is to avoid
misleading the public in instances in which the application
identified as set forth in  1.14(a)(2) is abandoned, but an
application claiming the benefit of the filing date of the
identified application (e.g., a continuing application) is
pending.
Section 1.14(a) is also amended to add a new paragraph (a)(3) to
provide that access to, or copies of, an application may be
provided:  (1) when the application is open to the public as
provided in  1.11(b); (2) when written authority in that
application from the applicant, the assignee of the application,
or the attorney or agent of record has been granted; (3) when it
has been determined by the Commissioner to be necessary for the
proper conduct of business before the Office, or (4) to any
person on written request, without notice to the applicant, when
the application is abandoned and available and is:  (a) referred
to in a U.S. patent, (b) referred to in an application open to
public inspection, (c) an application which claims the benefit of
the filing date of an application open to public inspection, or
(d) an application in which the applicant has filed an
authorization to lay open the complete application to the public.
Section 1.14(b) is amended to provide that complete applications
( 1.51(a)) which are abandoned may be destroyed and hence may
not be available for access or copies as permitted by paragraph
(a)(3)(iv) of this section after 20 years from their filing date,
except those to which particular attention has been called and
which have been marked for preservation.  The sentence in
 1.14(b) concerning the non-return of abandoned applications is
deleted as duplicative of the provision in  1.59, which provides
that papers in an application which has received a filing date
will not be returned, and is unrelated to the preservation of
applications in confidence under  1.14.
Section 1.52(a) is amended to provide that all papers which are
to become a part of the permanent records of the Office must be
legibly written by a typewriter or mechanical printer in
permanent dark ink or its equivalent in portrait orientation on
flexible, strong, smooth, non-shiny, durable and white paper.
Section 1.52(a) is further amended to provide that the
application papers must be presented in a form having sufficient
clarity and contrast between the paper and the writing thereon to
permit electronic reproduction by use of digital imaging and
optical character recognition, as well as the direct photocopy
reproduction currently provided for.  Section 1.52(a) is further
amended to provide that substitute typewritten or mechanically
printed papers "will" be required if the original application
papers are not of the required quality.  As any substitute
typewritten or mechanically printed papers containing the subject
matter of the originally filed application papers would
constitute a substitute specification, the provisions of  1.125
governing the entry of a substitute specification would be
applicable, and  1.52(a) is amended to include a specific
reference to  1.125.
Section 1.52(b) is amended to provide that the claim or claims
must commence on a separate sheet and the abstract must commence
on a separate sheet.  Section 1.72(b) provides that the abstract
must commence on a separate sheet, and  1.75(h) provides that
the claim or claims must commence on a separate sheet.  Section
1.52(b) is amended to provide that the sheets of paper must all
be the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or
21.6 cm. by 27.9 cm. (8 1/2 by 11 inches), with a top margin of
at least 2.0 cm. (3/4 inch), a left side margin of at least
2.5 cm. (1 inch), a right side margin of at least 2.0 cm.
(3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch),
and that no holes should be made in the submitted paper sheets.
Section 1.52(b) is further amended to provide that the lines of
the specification, and any amendments to the specification,
"must" be 1 1/2 or double spaced, and that the pages of the
specification "must" be numbered consecutively, starting with
page one, with the numbers being centrally located above or below
the text.  Finally,  1.52(b) is amended to specifically
reference drawings to clarify that drawings are part of the
application papers, but that the standards for drawings are set
forth in  1.84.
The proposed changes to  1.52(a) and (b), 1.58, 1.72(b),
1.75(g), (h), and (i), 1.77, 1.84(c), (f), (g), and (x), 1.96,
1.154, and 1.163 pertaining to the format and standards for
application papers and drawings in the Notice of Proposed
Rulemaking are considered desirable, regardless of whether H.R.
1733 is enacted.
While the vast majority of applications currently comply with
 1.52(a) and (b), 1.58, 1.72(b), 1.75(h), 1.84(c), (f), (g),
and (x), and 1.96 as adopted in this final rule, those
applications which do not comply with  1.52(a) and (b), 1.58,
1.84(c), (f), (g), and (x), and 1.96 as adopted in this final
rule (e.g., applications containing hand-written papers) create
an inordinate administrative burden on the Office during the
initial processing, examination, and publishing of the
application as a patent.  In addition, the Office plans to
replace or augment the current microfilming process with
electronic data capture of at least the technical content (i.e.,
the specification, abstract, claims and drawings) of the
application-as-filed for internal Office use, regardless of
whether H.R. 1733 is enacted.  Therefore, the Office will no
longer permit these relatively few applicants to submit
application papers and drawings that do not meet the standards
set forth in  1.52(a) and (b), 1.58, 1.84(c), (f), (g), and
(x), and 1.96 as adopted in this final rule.
The application format set forth in  1.75(g) and (i), 1.77,
1.154, and 1.163 as adopted in this final rule merely expresses
the Office's preferences for format of utility, design and plant
applications.  They do not set forth mandatory requirements for
application papers and drawings.
Section 1.54(b) is amended to change "application serial number"
to "application number" for consistency with  1.5(a).
Section 1.58(b) is removed and is reserved as unnecessary in view
of the amendments to  1.52(a) and (b).
Section 1.58(c) is amended to provide that chemical and
mathematical formulae and tables must be presented in compliance
with  1.52(a) and (b), except that chemical and mathematical
formulae or tables may be placed in a landscape orientation if
they cannot be presented satisfactorily in a portrait
orientation.  Section 1.58(c) is further amended to delete the
following sentences to conform to the writing and paper size and
orientation limitations in  1.52(a) and (b):  (1) "[t]o
facilitate camera copying when printing, the width of formulas
and tables as presented should be limited normally to 12.7 cm.
(5 inches) so that it may appear as a single column in the
printed patent"; (2) "[i]f it is not possible to limit the width
of a formula or table to 5 inches (12.7 cm.), it is permissible
to present the formula or table with a maximum width of 10
3/4 inches (27.3 cm.) and to place it sideways on the sheet"; and
(3) "[h]and lettering must be neat, clean, and have a minimum
character height of 0.08 inch (2.1 mm.)."  Section 1.58(c) is
further amended to insert "chosen" between "must be" and "from a
block (nonscript) type font."  Section 1.58(c) is further amended
to provide metric dimensions with English equivalents in
parentheticals, rather than vice versa.
Section 1.62(e) is amended to change "application serial number"
to "application number" for consistency with  1.5(a).
Section 1.62(f) is amended to change "secrecy" to "confidence" as
is found in 35 U.S.C. 122 and  1.14, and change "37 CFR 1.14" to
" 1.14" for consistency.
Section 1.72(b) is amended to provide that the abstract must
"commence," rather than "be set forth," on a separate sheet.
This change will conform the "separate sheet" requirement for the
abstract with that for the claims.
Section 1.75 is amended to include an amendment to paragraph (g),
and would add two new paragraphs.  Section 1.75(g) is amended to
add the phrase "[t]he least restrictive claim should be presented
as claim number 1" to the beginning of the paragraph.  Section
1.75(h) is added to provide that the claim or claims must
commence on a separate sheet.  Section 1.75(i) is added to
provide that where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated by a
line indentation.
Section 1.77 is amended to provide that the elements of the
application, if applicable, should appear in the following order:
(1) Utility Application Transmittal Form; (2) Fee Transmittal
Form; (3) title of the invention; or an introductory portion
stating the name, citizenship, and residence of the applicant,
and the title of the invention; (4) cross-reference to related
applications; (5) statement regarding federally sponsored
research or development; (6) reference to a "Microfiche appendix;
(7) background of the invention; (8), brief summary of the
invention; (9) brief description of the several views of the
drawing; (10) detailed description of the invention; (11) claim
or claims; (12) abstract of the disclosure; (13) drawings;
(14) executed oath or declaration; and (15) sequence listing.
The phrase "if applicable" is inserted in the heading, rather
than associated with any particular listed element, to clarify
that  1.77 does not per se require that an application include
all of the listed elements, but merely provides that any listed
element included in the application should appear in the order
set forth in  1.77.  Section 1.77 is further amended to provide
that the (1) title of the invention; (2) cross-reference to
related applications; (3) statement regarding federally sponsored
research or development; (4) background of the invention;
(5) brief summary of the invention; (6) brief description of the
several views of the drawing; (7) detailed description of the
invention; (8) claim or claims; (9) abstract of the disclosure;
and (10) sequence listing, should appear in upper case, without
underlining or bold type, as section headings, and if no text
follows the section heading, the phrase "Not Applicable" should
follow the section heading.  Finally,  1.77 is amended to change
the reference to  1.96(b) in  1.77(a)(6) to  1.96(c) for
consistency with  1.96.
Section 1.78(a)(2) is amended to replace the reference to
 1.14(b) with a reference to  1.14(a) for consistency with
 1.14(a) and (b) as amended.
Section 1.78(c) is amended to change "two or more applications,
or an application and a patent" to "an application or a patent
under reexamination and at least one other application" such that
the provisions of  1.78(c) will also be applicable to a patent
under reexamination.  Section 1.78(c) is also amended to correct
"inventors and owned by the same party contain conflicting
claims" to read "inventors are owned by the same party and
contain conflicting claims."  Section 1.78(c) is also amended to
delete the sentence "[i]n addition to making said statement, the
assignee may also explain why an interference should or should
not be declared."
Section 1.78(d) is removed.  The provisions of former  1.78(d),
as proposed, are in new  1.130(b).
Section 1.84(c) is amended to provide that a reference to the
application number, or, if an application number has not been
assigned, the inventor's name, may be included in the left-hand
corner of the drawing sheet, provided that reference appears
within 1.5 cm. (9/16 inch) from the top of the sheet.
Section 1.84(f) is amended to provide that the size of all
drawing sheets in an application must be either 21.0 cm. by
29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by
11 inches) to conform to the requirement in  1.52(b) concerning
papers in an application.
Section 1.84(g) is amended to delete the margin requirements for
the sheet sizes that are no longer acceptable in view of the
changes to  1.84(f).  Section 1.84(g) is further amended to
provide that the sheets should have scan targets (cross-hairs) on
two catercorner margin corners.  Finally,  1.84(g) is amended to
increase the bottom and side margins such that each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side
margin of at least 2.5 cm. (1 inch), a right side margin of at
least 1.5 cm. (9/16 inch), and a bottom margin of at least
1.0 cm. (3/8 inch), thereby leaving a sight no greater than
17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4)
drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm.
(6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by
11 inch) drawing sheets.
Section 1.84(x) is amended to delete the provisions indicating
the proper location for holes in a drawing sheet, and provide
that no holes should be provided in the drawing sheets.
Section 1.96 is amended to designate the text preceding current
paragraph (a) as paragraph (a) "General," and would redesignate
current paragraphs (a) and (b) as paragraphs (b) and (c),
respectively.  New  1.96(a) is further amended to insert a
period between "specification" and "[a] computer," to change
"these rules" to "this section," and to change "may be submitted
in patent applications in the following forms" to "may be
submitted in patent applications as set forth in paragraphs (b)
and (c) of this section."
New  1.96(b) is further amended to:  (1) change the sentences
"[t]he listing may be submitted as part of the specification in
the form of computer printout sheets (commonly 14 by 11 inches in
size) for use as 'camera ready copy' when a patent is
subsequently printed" and "[s]uch computer printout sheets must
be original copies from the computer with dark solid black
letters not less than 0.21 cm. high, on white, unshaded and
unlined paper, the printing on each sheet must be limited to an
area 9 inches high by 13 inches wide, and the sheets should be
submitted in a protective cover" to "[a]ny listing submitted as
part of the specification must be direct printouts (i.e., not
copies) from the computer's printer with dark solid black letters
not less than 0.21 cm. high, on white, unshaded and unlined
paper, and the sheets should be submitted in a protective cover";
(2) delete the sentence "[w]hen printed in patents, such computer
printout sheets will appear at the end of the description but
before the claims and will usually be reduced about 1/2 in size
with two printout sheets being printed as one patent
specification page"; and (3) delete the phrase "if the copy is to
be used for camera ready copy."  New  1.96(b)(1) provides that
the requirements of  1.84 apply to computer program listings
submitted as sheets of drawings, and new  1.96(b)(2) provides
that the requirements of  1.52 apply to computer program
listings submitted as part of the specification.
New  1.96(c) is amended to:  (1) change the references to
 1.77(c)(2) in  1.96(c) to  1.77(a)(6) for consistency with
 1.77; (2) change "may" and "should" to "must"; (3) delete the
sentence "[a]ll computer program listings submitted on paper will
be printed as part of the patent"; (4) relocate the phrase
"except as modified or clarified below" in subsection (c)(2);
(5) change the phrase "computer-generated information submitted
as an appendix to an application for patent shall be in the form
of microfiche in accordance with the standards" to
"computer-generated information submitted as a 'microfiche
appendix' to an application shall be in accordance with the
standards" for clarity; (6) change the references to the specific
American National Standards Institute (ANSI) or National
Micrographics Association (NMA) standards with 36 CFR Part 1230;
(7) change "serial number" to "application number"; and
(8) provide metric dimensions with English equivalents in
parentheticals, rather than vice versa.
Section 1.97(a) is amended to include the phrase "for an
applicant for patent or for reissue of a patent."  Paragraphs (a)-
(d) are amended to include the phrase "by the applicant" to
clarify that  1.97 is not available for any third party seeking
to have information considered in a pending application.  Any
third party seeking to have information considered in a pending
application must proceed under  1.291 or 1.292.  As discussed
supra,  1.97(a), (c) and (d) are also being amended for
clarity.  Section 1.97(c) is further amended to correct the
phrase "certification as specified in paragraph (3) of this
section" to read "certification as specified in paragraph (e) of
this section."
Section 1.107 is amended to delete the phrase "and the classes of
inventions."
Section 1.110 is amended to change the reference to  1.78(d) to
a reference to  1.130 for consistency with the removal of
 1.78(d), and the location of the provisions of former  1.78(d)
in  1.130(b).
A new paragraph (a)(3) in  1.131 was proposed in the Notice of
Proposed Rulemaking to permit a showing of prior invention in a
pending application or patent under reexamination to avoid a
rejection under 35 U.S.C. 103 based upon a patent which qualifies
as prior art only under 35 U.S.C. 102(a) or (e), where the
application or patent under reexamination and the patent upon
which the rejection is based are both owned by a single party, so
long as the invention claimed in the pending application or
patent under reexamination and in the other patent are not
identical as set forth in 35 U.S.C. 102.  Upon further study, it
is considered appropriate to disqualify such patents, and provide
for the obviation of judicially created double patenting
rejections in an application or a patent under reexamination by
the filing of a terminal disclaimer in accordance with
 1.321(c), in a separate  1.130.
New  1.130(a) provides that when any claim of an application or
a patent under reexamination is rejected under 35 U.S.C. 103 on a
U.S. patent to another or others which is not prior art under
35 U.S.C. 102(b), and the inventions defined by the claims in the
application or patent under reexamination and by the claims in
the patent are patentably indistinct but not identical as set
forth in 35 U.S.C. 101, and the inventions are owned by the same
party, the applicant or owner of the patent under reexamination
may disqualify the patent as prior art.  Section 1.130(a)
specifically provides that the patent can be disqualified as
prior art by submission of:  (1) a terminal disclaimer in
accordance with  1.321(c), and (2) an oath or declaration
stating that the application or patent under reexamination and
the patent are currently owned by the same party, and that the
inventor named in the application or patent under reexamination
is the prior inventor under 35 U.S.C. 104.
Where inventions defined by the rejected claims in the
application or a patent under reexamination and by the claims in
the patent upon which the rejection is based are patentably
distinct, the rejection may be overcome pursuant to  1.131.
Since  1.130 applies only when inventions defined by the claims
in an application or a patent under reexamination and by the
claims in the patent are patentably indistinct,  1.130 expressly
provides that an oath or declaration submitted pursuant to
 1.130 to disqualify a patent must be accompanied by a terminal
disclaimer in accordance with  1.321(c).
As the conflict between two pending applications can be avoided
by filing a continuation-in-part application merging the
conflicting inventions into a single application,  1.130 is
limited to rejections based upon a patent.
New  1.130(b) includes the provisions of former  1.78(d), as
proposed in the Notice of Proposed Rulemaking.  Former  1.78(d)
was proposed to be amended to change "obviousness-type double
patenting rejection" to "non-statutory double patenting
rejections" as current examining procedures authorize non-
obviousness-type double patenting rejections, as well as
obviousness-type double patenting rejections (See section 804(II)
of the Manual of Patent Examining Procedure (MPEP)), and either
may be obviated by filing a terminal disclaimer in accordance
with  1.321(c).  The phrase "non-statutory double patenting
rejection," however, is being replaced with "judicially created
double patenting rejection" to better set forth the legal basis
for the rejection.
Section 1.78(d) was also proposed to be amended to change each
instance of "application" to "application or a patent under
reexamination" for consistency with  1.321 and to clarify that
double patenting is a proper consideration in reexamination (Ex
parte Obiaya, 227 USPQ 58, 60-61 (Bd. Pat. App. & Inter. 1985)),
and that a judicially created double patenting rejection in a
patent under reexamination may be obviated by filing a terminal
disclaimer in accordance with  1.321(c).
New  1.130(b) specifically provides that where an application or
a patent under reexamination claims an invention which is not
patentably distinct from an invention claimed in a commonly owned
patent with the same or a different inventive entity, a double
patenting rejection will be made in the application or a patent
under reexamination, and that a judicially created double
patenting rejection may be obviated by filing a terminal
disclaimer in accordance with  1.321(c).
Section 1.131 is amended to change "U.S. patent to another" to
"U.S. patent to another or others" to parallel the language in
35 U.S.C. 102(a), as well as 35 U.S.C. 102(e).
Section 1.132 is amended to change "domestic patent" to "U.S.
patent," and "does not claim the invention" to "does not claim
the same patentable invention, as defined in  1.601(n)" for
consistency with  1.131.
Section 1.154 is amended to provide that the elements of a design
application, if applicable, should appear in the following order:
(1) Design Application Transmittal Form; (2) Fee Transmittal
Form; (3) preamble, stating name of the applicant and title of
the design; (4) cross-reference to related applications;
(5) statement regarding federally sponsored research or
development; (6) description of the figure or figures of the
drawing; (7) feature description; (8) a single claim;
(9) drawings or photographs; and (10) executed oath or
declaration.  The phrase "[t]he following order of arrangement
should be observed in framing design specifications" is changed
to "[t]he elements of the design application, if applicable,
should appear in the following order" to clarify that  1.154
does not per se require that an application include all of the
listed elements, but merely provides that any listed element
included in the application should appear in the order set forth
in  1.154.  This amendment to  1.154, however, does not modify
the current requirement that an application for a design patent
have but a single claim.
A new  1.163(c) is added to provide that the elements of a plant
application, if applicable, should appear in the following order:
(1) Plant Application Transmittal Form; (2) Fee Transmittal Form;
(3) title of the invention; (4) cross-reference to related
applications; (5) statement regarding federally sponsored
research or development; (6) background of the invention;
(7) brief summary of the invention; (8) brief description of the
drawing; (9) detailed botanical description; (10) a single claim;
(11) abstract of the disclosure; (12) drawings (in duplicate);
(13) executed oath or declaration; and (14) Plant Color Coding
Sheet.  The phrase "if applicable" is included in the heading,
rather than associated with any particular listed element, to
clarify that  1.163 does not per se require that an application
include all of the listed elements, but merely provides that any
listed element included in the application should appear in the
order set forth in  1.163.  This amendment to  1.163, however,
does not modify the current requirement that an application for a
plant patent have but a single claim.
A new  1.163(d) is added to define a plant color coding sheet.
A plant color coding sheet is a sheet that specifies a color
coding system as designated in a color dictionary, and lists
every plant structure to which color is a distinguishing feature
and the corresponding color code which best represents that plant
structure.  The plant color coding sheet will provide a means for
applicants to uniformly convey detailed color characteristics of
the plant.  Providing this information in a systematic manner
will facilitate the examination of the application.
Section 1.291 is amended to provide that a protest must be filed
prior to the mailing of a Notice of Allowance to be considered
timely.  As a protest cannot be considered subsequent to issuance
of the application as a patent,  1.291(b) is amended to provide
that the protest will be considered if the application is still
pending when the protest and application file are provided to the
examiner (i.e., that the application was pending at the time the
protest was filed would be immaterial to its ultimate
consideration).  Finally, the sentences "[p]rotests raising fraud
or other inequitable conduct issues will be entered in the
application file, generally without comment on those issues" and
"[p]rotests which do not adequately identify a pending patent
application will be disposed of and will not be considered by the
Office" in  1.291 are changed to "[p]rotests raising fraud or
other inequitable conduct issues will be entered in the
application file, generally without comment on those issues" and
"[p]rotests which do not adequately identify a pending patent
application will be returned to the protestor and will not be
further considered by the Office," respectively, and are located
in paragraph (b).  The Office will acknowledge protests prior to
their entry into the application file or return to the protestor,
as appropriate.
Section 1.292 is amended to delete the phrase "is filed by one
having information of the pendency of an application" as
unnecessary, and would move the requirement for the fee set forth
in  1.17(j) from paragraph (a) to paragraph (b) where the
conditions for entry of a petition for the institution of public
use proceedings are set forth.  Section 1.292 is amended to
further require that any petition be served on the applicant in
accordance with  1.248, or be filed with the Office in duplicate
in the event that service on the applicant is not possible.
Finally,  1.292 is amended to provide that a petition to
institute public use proceedings to be considered timely must be
filed prior to the mailing of a Notice of Allowance.
Section 1.315 is amended to change "the attorney or agent of
record, if there be one; or if the attorney or agent so request,
to the patentee or assignee of an interest therein; or, if there
be no attorney or agent, to the patentee or to the assignee of
the entire interest, if he so request" to "the correspondence
address of record.  See  1.33(a)."  This change is to simplify
 1.315, and because patents are currently mailed to the patentee
at the correspondence address of record.
Section 1.321(c) is amended to change "double patenting
rejection" to "judicially created double patenting rejection" for
consistency with  1.78(c) and to clarify that the filing of a
terminal disclaimer is ineffective to overcome a statutory double
patenting rejection.
Section 1.497(a) is amended to provide that an applicant in an
international application must file an oath or declaration that:
(1) is executed in accordance with either  1.66 or 1.68,
(2) identifies the specification to which it is directed,
(3) identifies each inventor and the country of citizenship of
each inventor, and (4) states that the person making the oath or
declaration believes the named inventor or inventors to be the
original and first inventor or inventors of the subject matter
which is claimed and for which a patent is sought, rather than an
oath or declaration in accordance with  1.63, to enter the
national stage pursuant to  1.494 or 1.495.  Currently, the
failure to file an oath or declaration in strict compliance with
 1.63 results in non-compliance with  1.497, and thus 35 U.S.C.
371, which in turn delays the entry of the international
application into the national stage.  To expedite the entry of
international applications into the national stage,  1.497(a) is
amended to require only an oath or declaration that is properly
executed, identifies the specification to which it is directed,
and, as required by 35 U.S.C. 115, identifies each inventor and
the country of citizenship of each inventor and states that the
person making the oath or declaration believes the named inventor
or inventors to be the original and first inventor or inventors
of the subject matter which is claimed and for which a patent is
sought.
Section 1.497(b) is subdivided into paragraphs (b)(1) and (b)(2).
Section 1.497(b)(1) is amended to provide that the oath or
declaration must be made by all of the actual inventors except as
provided for in  1.42, 1.43 or 1.47.  Section 1.497(b)(2) is
amended to change "[i]f the international application was made as
provided in  1.422, 1.423 or 1.425, the applicant shall state
his or her relationship to the inventor and, upon information and
belief, the facts which the inventor is required by  1.63 to
state" to "[i]f the person making the oath or declaration is not
the inventor, the oath or declaration shall state the
relationship of the person to the inventor, the facts required by
 1.42, 1.43 or 1.47, and, upon information and belief, the
facts which the inventor would have been required to state."
Section 1.497(c) is added to provide that the oath or declaration
must comply with the requirements of  1.63.  Section 1.497(c)
further provides that in instances where the oath or declaration
does not comply with  1.63, but meets the requirements of
 1.497(a) and (b), the oath or declaration will be accepted as
complying with 35 U.S.C. 371(c)(4) and  1.494(c) or 1.495(c),
thus permitting the application to enter the national stage and
the assignment of dates under 35 U.S.C. 102(e) and 371(c).  A
supplemental oath or declaration in compliance with  1.63,
however, will be required in accordance with  1.67.
Response to Comments
Two hundred and forty-two written comments were received in
response to the Notice of Proposed Rulemaking.  A public hearing
was held on September 19, 1995.  Eight persons testified at the
public hearing.
The written comments, and the testimony at the public hearing,
have been analyzed.  In the event that H.R. 1733 is enacted, the
comments directed to the proposed changes to the rules of
practice to implement the 18-month publication of patent
applications will be considered and addressed in the final rule
package to implement 18-month publication.  Responses to the
comments germane to the changes in this final rule package
follow.
     Comment :  One comment suggested that, in the absence of an
     18-month publication system, the proposed rules relating to
     application format and standardization of applications be
     republished to give the public an opportunity to comment on
     the desirability of these changes in the absence of an 18-
     month publication system.
Response:  The Notice of Proposed Rulemaking specifically stated
that the proposed rules relating to application format and
standardization of applications may be adopted as final rules
even in the absence of an 18-month publication system, and
specifically advised interested members of the public to comment
on the advisability of the proposed rules relating to application
format and standardization of applications, regardless of the
legislative action on H.R. 1733.  Thus, the public was given an
opportunity to comment on the desirability of these changes in
the absence of an 18-month publication system.  Because the
standardization of applications is generally favored and will
substantially improve the Office's ability to efficiently and
effectively process applications, delaying their adoption as
final rules is not justified.
     Comment :  One comment stated that the Office has the
     authority to require that applications be submitted in
     computer-readable form, and in fact requires sequence
     listings to be submitted in such form.  The comment
     suggested that the cost of electronically scanning
     application papers, as well as errors in scanning the
     application papers, can be avoided by requiring applicants
     to provide the specification in computer-readable form.
     Another comment stated that the Office has the authority to
     permit electronic filing, and electronic filing should be
     permitted.  Several other comments indicated that scanning
     an application into a data base, rather than permitting
     applicants to provide a copy of the application on an
     electronic medium, is more costly, and is further more
     likely to introduce errors that could render text searching
     unreliable.  And, several comments suggested that the
     scanning and typesetting costs associated with the current
     publication process for issued patents could be reduced by
     the acceptance of electronic media in place of or in
     addition to the paper medium currently provided for in the
     rules of practice.  These comments further suggested that
     the Office should establish fees that reflect the reduced
     cost to the Office when a copy of an application is provided
     on an electronic medium (i.e., should establish reduced fees
     for those who submit a copy of their application on an
     electronic medium), which fee structure would provide an
     incentive to supply a copy of an application on an
     electronic medium.
Response:  As discussed in the Notice of Proposed Rulemaking,
while the Office is considering the legislative and regulatory
changes that would be necessary to permit purely electronic
filing of application papers, it does not currently have in place
an automated system for the acceptance and processing of
application papers in electronic form, other than for sequence
listings.  Moreover, the Office does not currently have the
statutory authority to rebate statutory patent filing fees to
reflect any reduced cost to the Office due to the submission of a
copy of an application on an electronic medium.  The Office will
give the comments further consideration as it designs and
develops the Patent Application Management (PAM) system.
     Comment :  Several comments noted that  1.52(a) and (b)
     impose a standard on applicants not currently observed by
     the Office, and questioned whether papers in the application
     file prepared by the Office will comply with  1.52(a) and
     (b).
Response:  Sections 1.52(a) and (b) apply to the application
papers, and amendments or corrections thereto.  As such,
 1.52(a) and (b) do not apply to those papers in the
application file prepared by the Office, since they do not become
part of the printed patent.
     Comment :  One comment noted that proposed  1.52 appears to
     be neutral with regard to numbering the lines (e.g., a line
     number every five lines) of the specification, and suggested
     that line numbering is a beneficial practice which should be
     permitted, and even encouraged.
Response:  Section 1.52 neither requires nor prohibits line
numbering.  Applicants are encouraged, but not required, to
number the lines of the specification.  The Office will give the
suggestion further study and consideration in future rulemaking.
     Comment :  One comment noted that when paragraphs are
     separated by a blank line only (i.e., no indentation) and
     end between pages, it is not possible to tell that a
     paragraph break occurred.  The comment suggested that the
     application format requirements should additionally require
     an indentation at the beginning of each new paragraph.
Response:  It is desirable that a specification include an
indentation at the beginning of a new paragraph.  This
requirement, however, was not proposed for comment in the Notice
of Proposed Rulemaking.  In addition, PCT Rule 11 does not
require that the beginning of each new paragraph in the
specification be indented.
     Comment :  One comment noted that  1.52(a) would prohibit
     handwriting or hand-printing on papers which are to become
     permanent Office records.  The comment questioned whether
     this requirement would also apply to papers issued in the
     Office.  The comment suggested revising Office practice to
     prohibit an examiner from handwriting comments on official
     papers (e.g., advisory actions or interview summary records)
     because:  (1) the handwriting is not always decipherable,
     and (2) the handwriting as it comes through on the carbon
     copies furnished to applicants is frequently too light at
     least in part to be decipherable.
Response:  The Office's goal is to create a readable
administrative record of the prosecution of every application.
The Office is currently designing, testing and implementing
electronic forms and Office action writing software to avoid or
minimize the need for hand-writing/printing in Office
communications.  Any applicant receiving an Office communication
in which the handwriting is not decipherable, or does not
adequately appear on the carbon copies to be decipherable, should
request a legible copy of such communication from the Office.
     Comment :  Several comments noted that the limitations in
      1.52(a) and (b) regarding "typed" and "ink" appear to
     exclude computer and laser printers, as well as commercially
     or mechanically printed papers such as declaration forms.
     Another comment noted that the limitations in  1.52(a) and
     (b) regarding "typed" and "ink" are more restrictive than
     PCT Rule 11.9(a) and (d).
Response:  The phrase "printed" was proposed to be deleted since
it could be read to mean that hand-printing is acceptable.
Section 1.52(a) will require, in part, that "[a]ll papers which
are to become a part of the permanent records of the Patent and
Trademark Office must be legibly written either by a typewriter
or mechanical printer in permanent dark ink or its equivalent in
portrait orientation on flexible, strong, smooth, non-shiny,
durable, and white paper."  This will clarify that papers printed
by a computer-operated laser, or any mechanical printer are
acceptable, but that hand-printed papers are not.  This change
will also avoid inconsistencies with the requirements of PCT Rule
11.9.
     Comment :  One comment noted that the proposed changes to
      1.52(a) did not include any limitations regarding
     permissible type fonts.  The comment questioned, since the
     purpose of the proposed rule change was to permit optical
     character recognition (OCR) scanning of the application
     papers, whether script fonts would be permissible.
Response:  Section 1.52(a) does not include any express
prohibition against the use of script fonts.  Nevertheless,
 1.52(a) requires that "the application papers must be presented
in a form having sufficient clarity and contrast between the
paper and the writing thereon to permit . . . electronic
reproduction by use of digital imaging and optical character
recognition."  Any application papers, including application
papers containing a script font, that are not in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit electronic reproduction by use of digital
imaging and optical character recognition will be objected to as
not in compliance with  1.52(a).  Therefore, the Office cautions
applicants not to submit application papers having script fonts.
     Comment :  One comment noted that  1.52(b) would require
     that all papers (including drawings per proposed  1.84) be
     limited to either DIN size A4 or 8 1/2 by 11 inches, which
     would eliminate the currently allowed paper sizes of 8 1/2
     by 13 or 14 inches.  The comment questioned whether this
     would also apply to the official papers issued by the
     Office, noting that the Office currently issues papers
     having a paper size mix of 8 1/2 by 11, 13, and 14 inches,
     which presents problems for applicants.  The comment
     suggested that the Office should not issue papers of a size
     not permitted in  1.52.
Response:  The Office is currently in the process of
standardizing to either 21.0 cm. by 29.7 cm. (DIN size A4) or
21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
     Comment :  One comment suggested that the Office should not
     issue papers with writing on the back side in accordance
     with  1.52(b).
Response:  The Office currently includes informational language
on the back side of certain forms.  The alternatives to issuing
such forms with writing on the back side are:  (1) not providing
this information to applicants, (2) reducing the print size to
permit all of the information to be located on the front of the
form, or (3) routinely providing multiple page forms.  Since none
of the alternatives are preferable to simply including
informational language on the back side of certain forms, the
Office will continue to include information language on the back
of papers issued by the Office, until it fully transforms all of
its forms to electronically generated forms.
     Comment :  One comment questioned whether the phrase "claims
     on a separate sheet" in  1.52(b) means that:  (1) all of
     the claims must appear on a single separate sheet, (2) each
     claim must appear on a separate sheet, or (3) the claims
     (claim 1) must begin or commence on a separate sheet.  The
     comment suggested the PCT wording that the claims shall
     commence on a separate sheet if the rule is intended to
     require that the claims (claim 1) must begin or commence on
     a separate sheet.
Response:  The phrase has been changed to "the claim or claims
commencing on a separate sheet" to clarify that the claims must
begin or commence on a separate sheet to parallel PCT
requirements.  Thus,  1.52(b) and 1.75(h) require that the
claims (claim 1) must begin or commence on a separate sheet.
Sections 1.52(b) and 1.75(h) do not require that all of the
claims be set forth on a single sheet, or that each claim be set
forth on a separate sheet.
     Comment :  One comment questioned whether the phrase
     "abstract and claims on a separate sheet" in  1.52(b) means
     that the abstract is to be on one separate sheet, and the
     claims are to be (or commence) on another separate sheet.
Response:  The phrase has been changed to "the claim or claims
commencing on a separate sheet and abstract commencing on a
separate sheet" to clarify that the claims must commence on one
separate sheet and the abstract must commence on another separate
sheet.
     Comment :  One comment noted that the requirement in
      1.52(b), as proposed, will require that the lines in the
     oath or declaration, as well as quotations from the rules,
     the MPEP, and court decisions in subsequently filed
     amendments, be 1 1/2 or double spaced, and is inconsistent
     with the forms included for comment with the Notice of
     Proposed Rulemaking.
Response:  Section 1.52(b) has been changed to require, inter
alia, that "[t]he lines of the specification, and any amendments
to the specification, must be 1 1/2 or double spaced."  The
requirement for 1 1/2 or double spacing will not apply to oaths
or declarations, pre-printed forms, or all of the statements in
the "Remarks" section of an amendment.  Applicants are
nevertheless requested to submit papers with lines 1 1/2 or
double spaced, except in standardized forms or where single-
spacing may be stylistically necessary (e.g., block quotations).
     Comment :  One comment questioned whether the requirement in
      1.52(b), as proposed, that papers have lines 1 1/2 or
     double spaced will apply to Office actions.  The comment
     suggested that not placing block quotations from the
     statutes and regulations in single spacing will decrease the
     readability of Office actions.
Response:  As discussed supra,  1.52(a) and (b) are designed to
facilitate patent printing and do not apply to Office actions.
Section 1.52(b) has been changed to require, inter alia, that
"[t]he lines of the specification, and any amendments to the
specification, must be 1 1/2 or double spaced."  Therefore, the
requirement for 1 1/2 or double spaced lines will not apply to
Office actions.
     Comment :  Several comments objected to the requirement that
     tables be in portrait orientation as inconsistent with PCT
     rules, and as causing tables to be split over multiple
     pages.
Response:  The suggestions are adopted.  Section 1.58 will state
that "[c]hemical and mathematical formulae and tables must be
presented in compliance with  1.52(a) and (b), except that
chemical and mathematical formulae or tables may be placed in a
landscape orientation if they cannot be presented satisfactorily
in a portrait orientation," rather than "[t]o facilitate camera
copying when printing, the width of formulae and tables as
presented should be limited normally to 12.7 cm. (5 inches) so
that it may appear as a single column in the printed patent."
     Comment :  One comment stated that  1.72 is contrary to PCT
     Rule 11.4(a), and will require renumbering of the
     application pages for later filing of that application in
     the European Patent Office (EPO) or under the PCT.
Response:  Section 1.72, as proposed in the Notice of Proposed
Rulemaking, provided that the abstract be "preferably prior to
the first page of the specification," and, as such, merely
expressed the Office's preference for the location of the
abstract as prior to the first page of the specification.
Nevertheless, to avoid the undesirable result of requiring an
applicant who submitted an application in the format set forth in
 1.77 to renumber the specification pages for filing that
application in the EPO or under the PCT,  1.72 is changed to
state that the preferable location of the abstract is following
the claims.
     Comment :  One comment stated that requiring that the rarely
     used section headings (e.g., statement regarding federally
     sponsored research and development) be followed by the
     phrase "not-applicable" is confusing.
Response:  Section 1.77 is permissive rather than mandatory.  As
such, any applicant finding the format suggested therein to be
confusing is at liberty to simply include those section headings
applicable to the particular application.  The use of each
section heading, even when the section is "not-applicable," is
desirable in that it apprises the Office that the section at
issue has been considered and deemed inapplicable.  Simply not
providing a section heading is ambiguous as to whether the
applicant considers the section inapplicable or has not
considered whether the section is applicable to the application.
In addition, the use of such section headings will be of greater
benefit when the Office implements procedures to permit the
electronic filing of patent applications.
     Comment :  One comment stated that the requirements set
     forth in  1.77 are in addition to those required by the
     PCT.  The comment argued that the Office cannot require
     international applications entering the national stage under
     35 U.S.C. 371 to comply with these requirements.
Response:  As discussed supra,  1.77 merely expresses the
Office's preference for the arrangement of the application
elements.  The Office may advise an applicant that the
application does not comply with the format set forth in  1.77,
and suggest this format for the applicant's consideration;
however, the Office will not require any application to comply
with the format set forth in  1.77.  Therefore, there is no
conflict between  1.77 and the PCT.
     Comment :  One comment noted that  1.154 and 1.163 apply
     to design and plant applications, and, as such, they are not
     in conflict with PCT Rules.  The comment suggested that it
     would, however, be preferable that all types of U.S.
     applications maintain the same order of application
     elements, and that this order be the order set forth by the
     PCT Rules.
Response:  As discussed supra, the arrangement of the elements of
an application set forth in  1.77 is not mandatory, and, as
such,  1.77 is not in conflict with the PCT or PCT Rules.
Section 1.77 merely expresses the Office's preference for the
arrangement of the elements of an application.  The Office's
preference for the format of design applications ( 1.154) and
plant applications ( 1.163) is the same as the Office's
preference for utility applications ( 1.77).
     Comment :  One comment stated that in the absence of
     statutory requirements for the application elements proposed
     in  1.77, 1.154, and 1.163, the rule should clearly state
     that these application elements or arrangements are
     preferred but not mandatory.
Response:  Sections 1.77, 1.154, and 1.163 employ the phrase
"should" rather than "must," which is the language of a precatory
statement.  Therefore,  1.77, 1.154, and 1.163 currently state
that these application elements or arrangements are preferred,
but are not mandatory.
     Comment :  One comment questioned whether the Application
     Transmittal Form, and Fee Transmittal Form set forth in
      1.77 should be numbered pages 1 and 2 pursuant to  1.52,
     and further questioned where the drawings and oath or
     declaration are to be numbered.
Response:  Section 1.52 has been changed to provide that the
pages of the specification, not the application, should be
consecutively numbered beginning with page 1.  The Application
Transmittal Form, and Fee Transmittal Form set forth in  1.77
are not part of the specification.  As such, they should not be
numbered as pages 1 and 2, respectively.  Likewise, the drawings
and oath or declaration are not part of the specification, and
need not be numbered.
     Comment :  One comment stated that the failure to include
     the phrase "not applicable" by all of the application
     elements not required by statute or regulation rendered it
     unclear as to whether the Office would object to the lack of
     an application element for which the phrase "not applicable"
     is not included.
Response:  The Office anticipates that an applicant choosing to
use the Transmittal forms provided by the Office will arrange his
or her application in the format suggested by the Office.  The
patent statutes and regulations set forth the requirements for a
complete application, as well as the requirements for obtaining a
filing date in an application.  Applications are examined for
compliance with the patent statutes and regulations, not for
consistency with any particular transmittal form.
     Comment :  One comment noted, in regard to  1.84(c), that
     the drawings of an international application, which are
     often used for processing in the Office, will have the World
     Organization (WO) publication number and International
     Bureau (IB) publication date on the top of the drawing.
Response:  The WO publication number and IB publication date
placed on the top of the drawing of an international application
is not objectionable under  1.84(c).
     Comment :  One comment stated that the scan target points
     conflict with PCT Rule 11.6(e).  As such, the scan target
     points would have to be removed from applications to be
     filed as an international application.  The comment further
     stated that these target points are unnecessary in view of
     the paper size and margin requirements.
Response:  Section 1.84(g) states that drawings "should," and not
"must," have scan target points printed on two catercorner margin
corners.  Thus,  1.84(g) merely expresses the Office's
preference for scan target points on the drawings for filming and
printing purposes, which are considered desirable due to the
different sights on 21.0 cm. by 29.7 cm. (DIN size A4) and
21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.  An
applicant wishing to provide scan target points on drawings that
will later be filed in the EPO may simply copy the drawings to be
filed in the EPO, place the scan target points only on the Office
copy of the drawings, and submit the copy of the drawings
containing the scan target points to the Office.  Likewise,
applicants filing drawings that were previously filed in the EPO
should simply add scan target points only to the copy of the
drawings to be filed in the Office.  Nevertheless, as  1.84(g)
merely expresses a preference for scan target points for Office
filming and printing purposes, an applicant intending to later
file the application in the EPO, or any applicant, is at liberty
to not include such scan target points on the drawings.  The
Office will not object to the absence of scan target points on
any drawings filed in the Office.  Therefore,  1.84(g) does not
include a requirement in excess of, or inconsistent, with PCT
Rules.
     Comment :  One comment stated that the term "catercorner" is
     slang, and suggested that it be replaced in  1.84(g) with a
     phrase such as "diagonally opposite."
Response:  The term "catercorner" is not slang.  While there are
a number of acceptable English phrases to denote diagonally
opposite, the term "catercorner" was selected to avoid using a
multiple word phrase where a single word will suffice.
     Comment :  One comment stated that the language proposed to
     be added to  1.97 regarding a reexamination or patent owner
     is inconsistent with  1.533 and suggested that it be
     deleted.
Response:  The suggestion is adopted.
     Comment :  One comment stated that  1.131 does not specify
     whether the phrase "application" includes provisional
     applications.  The comment suggested that  1.131 be amended
     to state "unless the date of such patent or publication is
     more than one year prior to the earliest date on which the
     inventor's or patent owner's application or provisional
     application from which that application claims priority
     therefrom was filed in this country."
Response:  The proposed change to  1.131 is not adopted.  It is
well established that the filing date of any abandoned
application co-pending with and referred to in a patent is the
effective date of the patent with respect to the common subject
matter disclosed in the patent and abandoned application.  See In
re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948).  Section 1.131
does not make a specific reference to nonprovisional applications
for which a benefit is claimed under 35 U.S.C. 120; however, it
is understood that the effective date of any patent sought to be
antedated pursuant to  1.131 is the earliest filing date of any
application to which the patent is entitled to under 35 U.S.C.
120 with respect to the common subject matter disclosed in the
patent and the application.  The provisions of title 35, except
for 35 U.S.C. 115, 131, 135 and 157, apply to provisional
applications.  35 U.S.C. 111(b)(8).  It is therefore likewise
unnecessary to specifically reference provisional applications in
 1.131.
     Comment :  Several comments objected to  1.291 and 1.292
     as pre-grant opposition, especially in view of the pre-grant
     publication of pending applications that would be provided
     for in H.R. 1733, if enacted, and the expanded reexamination
     that would be provided for in H.R. 1732, if enacted.  The
     comments either suggested that the protest and public use
     proceeding provisions of  1.291 and 1.292 be severely
     limited or abolished.
Response:  The changes to  1.291 and 1.292 place greater
obligations on third parties seeking to use these sections.  As
such, this rule change does not add to any third party's ability
to participate in the prosecution of a pending application.
Nevertheless, as neither H.R. 1732 nor H.R. 1733 has presently
been enacted, analysis of whether modification of  1.291 and
1.292 in addition to that proposed in the Notice of Proposed
Rulemaking is desirable in a pre-grant publication or expanded
reexamination system is held in abeyance pending enactment of
H.R. 1733 or 1732.
     Comment :  One comment noted that any standardization of
     patent applications should not include pre-printed forms
     taking eleven hours to complete.  The comment further
     suggested that word-processor versions of any collection of
     information, rather than pre-printed forms, would be of
     greater assistance to members of the public.
Response:  Initially, the Notice of Proposed Rulemaking indicated
that the initial patent application (e.g., the specification,
drawings, as well as the standard forms), not merely the proposed
standardized forms, is a collection of information estimated to
average eleven hours to complete.  The Notice of Proposed
Rulemaking stated that the public reporting burden for these
collections of information is estimated to average:  (1) twelve
minutes per response for the Fee Transmittal form, (2) twelve
minutes per response for the Utility Patent Application
Transmittal form, (3) twelve minutes per response for the Design
Patent Application Transmittal form, (4) twelve minutes per
response for the Plant Patent Application Transmittal form,
(5) twelve minutes per response for the Plant Color Coding Sheet,
(6) twenty-four minutes per response for the Declaration form,
and (7) twenty-four minutes per response for the Plant Patent
Application Declaration.  Nevertheless, the final rules do not
require the use of any standardized form.  The Office publishes
standardized forms only as an aid to practitioners and
applicants.
     Comment :  One comment questioned whether use of the
     standardized versions of the various forms would be
     required.  Another comment stated that the Office has no
     authority to require the use of the published forms in the
     absence of statutory authority.
Response:  Use of the forms included for comment with the Notice
of Proposed Rulemaking is not mandatory.  That is, an applicant
need not use the standardized versions of the Fee Transmittal
form, Utility Patent Application Transmittal form, Design Patent
Application Transmittal form, Plant Patent Application
Transmittal form, Plant Color Coding Sheet, Declaration form and
Plant Patent Application Declaration form, and need not use any
fee transmittal form, application transmittal form, or plant
color coding sheet.  These forms were created to assist
applicants in filing a patent application and to help ensure the
filing of a complete application accompanied by the appropriate
fees, thereby avoiding unnecessary delays in the examination of
the application.
     Comment :  One comment stated that the Office should not
     require the use of mandated forms, and if the Office
     requires the use of mandated forms, the Office should revise
     the forms to render them readily reproducible by
     conventional software, and should arrange for versions of
     these forms in various formats to be distributed by the
     Internet, bulletin board, or floppy disk.  Another comment
     suggested that the Office should make its form or templates
     available for electronic copying.
Response:  Copies of the standard forms provided by the Office
may be obtained by contacting the Customer Service Center of the
Office of Initial Patent Examination at (703) 308-1214.  Also,
many standardized forms have been loaded on the Office's Internet
Website and may be electronically copied via the Internet through
anonymous file transfer protocol (ftp) (address: ftp.uspto.gov).
Nevertheless, use of the forms included for comment with the
Notice of Proposed Rulemaking is not mandatory.
     Comment :  One comment questioned why there is a box with an
     instruction to type a plus sign in the box at the very top
     of the standardized forms.
Response:  As discussed supra, the Office plans to replace or
augment the current microfilming process with an electronic data
base which captures at least the technical content of the
application-as-filed for internal Office use.  Typing a plus sign
(+) into this box will facilitate the image scanner in aligning
the remaining typing on the form during the scanning process.
     Comment :  One comment questioned:  (1) why the application
     transmittal forms do not have a place for applicant to
     indicate the type of new utility application being
     transmitted (e.g., a provisional, original, continuation,
     division, continuation-in-part, reissue), and (2) how the
     Office official will obtain this information for entry in
     the official use "application type" box.
Response:  The Utility Patent Application Transmittal form sets
forth instructions for filing utility applications under  1.53
in the arrangement set forth in  1.77.  All non-reissue,
nonprovisional utility applications (i.e., original,
continuation, divisional, and continuation-in-part applications)
filed under  1.53 should be submitted using the Utility Patent
Application Transmittal form.  The Design Patent Application
Transmittal form sets forth instructions for filing design
applications in the arrangement set forth in  1.154.  All non-
reissue design applications should be submitted using the Design
Patent Application Transmittal form.  The Plant Patent
Application Transmittal form sets forth instructions for filing
plant applications in the arrangement set forth in  1.163.  All
non-reissue, nonprovisional plant applications should be
submitted using the Plant Patent Application Transmittal form.
A Reissue Patent Application Transmittal form is also available,
and all applications for the reissue of a patent should be
submitted using the Reissue Patent Application Transmittal form.
The cover sheet provided for in  1.53(b)(2)(i) for a provisional
application functions as a transmittal sheet for a provisional
application.  As such, the standardized Provisional Application
Cover Sheet is the transmittal form for a provisional
application.  The provisional application cover sheet was
published in the rulemaking entitled "Changes to Implement 20-
Year Patent Term and Provisional Applications," in the Federal
Register at 60 FR 20230-31 (April 25, 1995), and in the Patent
and Trademark Office Official Gazette at 1174 Off. Gaz. Pat
Office 45-46 (May 2, 1995).
To provide a place on the Application Transmittal form for claims
under 35 U.S.C. 119, 120, or 121 would require the use of an
unacceptably smaller font on the Application Transmittal form.
The Declaration forms provide a place for stating claims under
35 U.S.C. 119, 120 or 121.  The inclusion on filing of an
executed or unexecuted Declaration form containing this
information would assist the Office in ascertaining whether the
application is an original, continuation, divisional, or
continuation-in-part application.  In addition, in the event that
H.R. 1733 is enacted, and the proposed changes to  1.55(a) and
1.78(a)(2) are adopted substantially as proposed, the routine
inclusion of claims for priority under 35 U.S.C. 119, 120, or 121
in an executed or unexecuted declaration form accompanying the
application papers would be an excellent mechanism for avoiding
an inadvertent failure to timely submit a claim for priority
under 35 U.S.C. 119, 120, or 121.
     Comment :  One comment noted that the heading "DECLARATION"
     does not state the types of applications with which the
     declaration form could be used.  The comment questioned
     whether it is intended to be used with any type of
     nonprovisional application except plant applications for
     which a separate form is proposed.
Response:  The declaration form containing the heading
"DECLARATION" is intended to be used with any type of
nonprovisional application except plant applications, for which a
separate Plant Declaration form is provided.
     Comment :  One comment suggested that in the foreign
     priority claim section of the Declaration form, the last
     line, the phrase "having a filing date before that of the
     application on which priority is claimed" should be changed
     to "for which priority is not claimed," to cover those
     foreign applications which have a filing date after that of
     the application on which priority is claimed and the benefit
     of which applicant does not want to claim.  The comment also
     indicated that, frequently, an application is filed after
     the Convention Year.
Response:  The suggestion is not adopted.  Section 1.63(c)
requires that an oath or declaration in any application in which
a claim for priority is made pursuant to  1.55 identify ... "any
foreign application having a filing date before that of the
application on which priority is claimed, by specifying the
application number, country, day, month, and year of its filing."
Thus, the language in the Declaration form aids applicants in
submitting a declaration in compliance with  1.63(c).  Any
foreign application having a filing date before that of the
application on which priority is claimed is, by definition, a
foreign application for which priority is not claimed.
     Comment :  One comment suggested that in the foreign
     priority claim section, the right hand columns, the heading
     should be corrected to "Certified Copy Attached" since the
     Office does not routinely want uncertified copies.
Response:  The suggestion is adopted.  The Declaration form has
been modified accordingly.
     Comment :  One comment noted that the Fee Calculation and
     Application Transmittal are currently on a single
     sheet/form, where the proposed forms provide a separate
     sheet/form for each.  The comment also noted that the
     current Declaration form is a single sheet, where the
     proposed Declaration form contains multiple sheets.
Response:  The Office currently receives application
transmittals, fee calculations/transmittals and declarations in a
variety of forms and in a multitude of formats.  The proposed
forms were developed as a result of an analysis of the current
practices and requirements of applicants, as well as the Office's
plans to scan application data from these forms into an
electronic data base.  The Fee Transmittal form was created to
aid applicants in submitting the fees due on filing a new patent
application, as well as the fees that may be due throughout the
prosecution of the application.  The Application Transmittal
serves to both aid applicants in filing a complete application,
and simplify the pre-examination processing of the application.
To permit the inclusion of additional fee calculation and
application transmittal information on the standardized forms,
and to provide a Fee Transmittal form for use throughout the
prosecution of the application, a separate Fee Transmittal form
and Application Transmittal form were developed.  A multi-page
Declaration form is necessary to accommodate the Office's plans
to scan application data from this Declaration form into an
electronic data base.
     Comment :  One comment indicated that the meaning or purpose
     of "suffix" in the inventor signature block is unclear, and
     requested an explanation as to whether it refers to "Jr." or
     "II," or whether it is a place to put the mother's name for
     those inventors whose family name is followed by their
     mother's name.
Response:  The field on the Declaration form labeled (inventor)
"suffix" is intended to provide the applicant with an option to
indicate family position relative to age.  Examples of an
inventor's suffix are:  Jr., Sr., and III.  This information is
tracked by the Office and is necessary to print patents which
accurately reflect bibliographic information about the inventor.
The use of this field and the data expected will be clarified and
specified in the form instructions.
     Comment :  One comment questioned the meaning or purpose of
     "Applicant Authority" in the last line of the inventor data
     block.
Response:  The phrase "Applicant Authority" indicates the
authority that the applicant has in executing the application
(e.g., inventor, executor ( 1.42), assignee ( 1.47(b)).  This
field is an optional field for the applicant to complete.  The
electronic versions of the proposed standard declaration forms
would provide the applicant with directions and a list of valid
codes that correspond with a specific identification of the
authority the applicant retains (e.g., the Authority Code for an
executor will be "04").
     Comment :  One comment stated that due to the spacing and
     small fonts on the fee transmittal form, this sheet cannot
     be used with a conventional word processor.
Response:  To accommodate all the fee descriptions on a one-page
fee transmittal it was necessary to use smaller fonts in the
form's design.  These fonts are available in Word and
WordPerfect.  An electronic version of the fee transmittal will
be available from the Office soon.
     Comment :  One comment stated that the "one form fits all"
     mentality of the fee transmittal form should be reconsidered
     since certain fees are submitted only once during the
     prosecution of an application.
Response:  The proposed standard one-page fee form is primarily
to facilitate and simplify the fee payment process.  The one-page
fee transmittal is intended to aid applicants in providing
complete fee information to the Office for each application and
paper submission.  This will enable the Office to more
efficiently process and record fee payments, which will avoid
delays in the prosecution of an application.
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 1995, 44 U.S.C.
3501 et seq.  It has been determined that this final rule is not
significant for the purposes of Executive Order 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 this rule change
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 effect of this rule change is to simplify
and clarify the rules governing the form of patent application
papers.
The Office has also determined that this notice has no Federalism
implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
Notwithstanding any other provision of law, no person is required
to respond to nor shall any person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that
collection of information displays a currently valid OMB control
number.
This final rule package contains a collection of information
subject to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et
seq.  This collection of information is currently approved by the
Office of Management and Budget under Control No. 0651-0032.
This collection of information includes the initial patent
application filing, the Fee Transmittal form, the Utility Patent
Application Transmittal form, the Design Patent Application
Transmittal form, the Plant Patent Application Transmittal form,
the Plant Color Coding Sheet, the Declaration form, and the Plant
Patent Application Declaration form.  The above-mentioned forms
will reduce the burden and uncertainty associated with the
submission of an application and related information, and enhance
the Office's ability to use standardized automation techniques
(optical character recognition, etc.) to record and process
information concerning applications.  The public reporting burden
for these collections of information is estimated to average:
(1) ten hours per response for the specification and drawings of
an application, (2) twelve minutes per response for the Fee
Transmittal form, (3) twelve minutes per response for the Utility
Patent Application Transmittal form, (4) twelve minutes per
response for the Design Patent Application Transmittal form,
(5) twelve minutes per response for the Plant Patent Application
Transmittal form, (6) twelve minutes per response for the Plant
Color Coding Sheet, (7) twenty-four minutes per response for the
Declaration form, and (8) twenty-four minutes per response for
the Plant Patent Application Declaration.  These estimates
include the time for reviewing instructions, searching existing
data sources, gathering and maintaining the data needed, and
completing and reviewing the collections of information.
Send comments regarding this burden estimate or any other aspect
of this collection of information, including suggestions for
reducing this burden to the Office of System Quality and
Enhancement, Data Administration Division, Patent and Trademark
Office, Washington, D.C. 20231, and to the Office of Information
and Regulatory Affairs, Office of Management and Budget,
Washington, DC 20503 (ATTN:  Paperwork Reduction Act Project 0651-
0032).
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.
For the reasons set forth in the preamble, 37 CFR Part 1 is
amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
.    The authority citation for 37 CFR Part 1 continues to read
as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
.    Section 1.5 is amended by adding paragraph (f) to read as
follows:
 1.5 Identification of application, patent or registration.
*  *  *  *  *
     (f) When a paper concerns a provisional application, it
should identify the application as such and include the
application number.
.    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 confidence 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.
*  *  *  *  *
.    Section 1.14 is amended by revising the section heading and
paragraphs (a), (b), and (e) to read as follows:
 1.14 Patent applications preserved in confidence.
     (a)(1) Patent applications are generally preserved in
confidence pursuant to 35 U.S.C. 122.  No information will be
given concerning the filing, pendency, or subject matter of any
application for patent, and no access will be given to, or copies
furnished of, any application or papers relating thereto, except
as set forth in this section.
     (2) Status information, which includes information such as
whether the application is pending, abandoned, or patented, as
well as the application number and filing date, may be supplied:
     (i)   Concerning an application or any application claiming
the benefit of the filing date of the application, if the
application has been identified by application number or serial
number and filing date in a published patent document,
     (ii)  Concerning the national stage application or any
application claiming the benefit of the filing date of a
published international application, if the United States of
America has been indicated as a Designated State in the
international application, or
     (iii) When it has been determined by the Commissioner to be
necessary for the proper conduct of business before the Office.
     (3) Access to, or copies of, an application may be provided:
     (i)   When the application is open to the public as provided
in  1.11(b),
     (ii)  When written authority in that application from the
applicant, the assignee of the application, or the attorney or
agent of record has been granted,
     (iii) When it has been determined by the Commissioner to be
necessary for the proper conduct of business before the Office,
or
     (iv)  To any person on written request, without notice to
the applicant, when the application is abandoned and available
and is:
     (A) Referred to in a U.S. patent,
     (B) Referred to in an application open to public inspection,     (C) An application
which claims the benefit of the filing date of an application open to public inspection,
or
     (D) An application in which the applicant has filed an
authorization to lay open the complete application to the public.     (b) Complete
applications ( 1.51(a)) which are abandoned may be destroyed and hence may not be
available for access or copies as permitted by paragraph (a)(3)(iv) of this section after
20 years from their filing date, except those to which particular attention has been
called and which have been marked for preservation.
*  *  *  *  *
     (e) Any request by a member of the public seeking access to,
or copies of, any pending or abandoned application preserved in
confidence pursuant to paragraph (a) 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.
*  *  *  *  *
.    Section 1.52 is amended by revising paragraphs (a) and (b)
to read as follows:
 1.52 Language, paper, writing, margins.
     (a) The application, any amendments or corrections thereto,
and the oath or declaration must be in the English language
except as provided for in  1.69 and paragraph (d) of this
section, or be accompanied by a verified translation of the
application and a translation of any corrections or amendments
into the English language.  All papers which are to become a part
of the permanent records of the Patent and Trademark Office must
be legibly written either by a typewriter or mechanical printer
in permanent dark ink or its equivalent in portrait orientation
on flexible, strong, smooth, non-shiny, durable, and white paper.
All of the application papers must be presented in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic
reproduction by use of digital imaging and optical character
recognition.  If the papers are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required.  See  1.125 for filing substitute
typewritten or mechanically printed papers constituting a
substitute specification when required by the Office.
     (b) Except for drawings, the application papers
(specification, including claims, abstract, oath or declaration,
and papers as provided for in this part and also papers
subsequently filed, must have each page plainly written on only
one side of a sheet of paper, with the claim or claims commencing
on a separate sheet and the abstract commencing on a separate
sheet.  See  1.72(b) and 1.75(h).  The sheets of paper must be
the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or
21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).  Each sheet must
include a top margin of at least 2.0 cm. (3/4 inch), a left side
margin of at least 2.5 cm. (1 inch), a right side margin of at
least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm.
(3/4 inch), and no holes should be made in the sheets as
submitted.  The lines of the specification, and any amendments to
the specification, must be 1 1/2 or double spaced.  The pages of
the specification including claims and abstract must be numbered
consecutively, starting with 1, the numbers being centrally
located above or preferably, below, the text.  See  1.84 for
drawings.
*  *  *  *  *
.    Section 1.54 is amended by revising paragraph (b) to read as
follows:
 1.54 Parts of application to be filed together; filing receipt.
*  *  *  *  *
     (b) Applicant will be informed of the application number and
filing date by a filing receipt.
.    Section 1.58 is amended by removing and reserving paragraph
(b) and revising the section heading and paragraph (c) to read as
follows:
 1.58 Chemical and mathematical formulae and tables.
*  *  *  *  *
     (b) [Reserved]
     (c) Chemical and mathematical formulae and tables must be
presented in compliance with  1.52(a) and (b), except that
chemical and mathematical formulae or tables may be placed in a
landscape orientation if they cannot be presented satisfactorily
in a portrait orientation.  Typewritten characters used in such
formulae and tables must be chosen from a block (nonscript) type
font or lettering style having capital letters which are at least
0.21 cm. (0.08 inch) high (e.g., elite type).  A space at least
0.64 cm. (1/4 inch) high should be provided between complex
formulae and tables and the text.  Tables should have the lines
and columns of data closely spaced to conserve space, consistent
with a high degree of legibility.
.    Section 1.62 is amended by revising paragraphs (e) and (f)
to read as follows:
 1.62 File wrapper continuing procedure.
*  *  *  *  *
     (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.
     (f) The filing of an application under this section will be
construed to include a waiver of confidence by the applicant
under 35 U.S.C. 122 to the extent that any member of the public
who is entitled under the provisions of  1.14 to access to, or
information concerning either the prior application or any
continuing application filed under the provisions of this section
may be given similar access to, or similar information
concerning, the other application(s) in the file wrapper.
*  *  *  *  *
.    Section 1.72 is amended by revising paragraph (b) to read as
follows:
 1.72 Title and abstract.
*  *  *  *  *
     (b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably
following the claims, under the heading "Abstract of the
Disclosure."  The purpose of the abstract is to enable the Patent
and Trademark Office and the public generally to determine
quickly from a cursory inspection the nature and gist of the
technical disclosure.  The abstract shall not be used for
interpreting the scope of the claims.
.    Section 1.75 is amended by revising paragraph (g) and adding
paragraphs (h) and (i) to read as follows:
 1.75 Claim(s).
*  *  *  *  *
     (g) The least restrictive claim should be presented as claim
number 1, and all dependent claims should be grouped together
with the claim or claims to which they refer to the extent
practicable.
     (h) The claim or claims must commence on a separate sheet.
     (i) Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated by a
line indentation.
.    Section 1.77 is revised to read as follows:
 1.77 Arrangement of application elements.
     (a) The elements of the application, if applicable, should
appear in the following order:
     (1)  Utility Application Transmittal Form.
     (2)  Fee Transmittal Form.
     (3)  Title of the invention; or an introductory portion
stating the name, citizenship, and residence of the applicant,
and the title of the invention.
     (4)  Cross-reference to related applications.
     (5)  Statement regarding federally sponsored research or
development.
     (6)  Reference to a "Microfiche appendix."  (See  1.96
(c)).  The total number of microfiche and total number of frames
should be specified.
     (7)  Background of the invention.
     (8)  Brief summary of the invention.
     (9)  Brief description of the several views of the drawing.
     (10) Detailed description of the invention.
     (11) Claim or claims.
     (12) Abstract of the Disclosure.
     (13) Drawings.
     (14) Executed oath or declaration.
     (15) Sequence Listing (See  1.821 through 1.825).
     (b) The elements set forth in paragraphs (a)(3) through
(a)(5), (a)(7) through (a)(12) and (a)(15) of this section should
appear in upper case, without underlining or bold type, as
section headings.  If no text follows the section heading, the
phrase "Not Applicable" should follow the section heading.
.    Section 1.78 is amended by removing paragraph (d) and
revising paragraphs (a)(2) and (c) to read as follows:
 1.78 Claiming benefit of earlier filing date and cross
references to other applications.
(a) *  *  *  *  *
     (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(a)).
*  *  *  *  *
     (c) Where an application or a patent under reexamination and
at least one other application naming different inventors are
owned by the same party and contain conflicting claims, and there
is no statement of record indicating that the claimed inventions
were commonly owned or subject to an obligation of assignment to
the same person at the time the later invention was made, the
assignee may be called upon to state whether the claimed
inventions were commonly owned or subject to an obligation of
assignment to the same person at the time the later invention was
made, and if not, indicate which named inventor is the prior
inventor.
.    Section 1.84 is amended by revising paragraphs (c), (f)-(g),
and (x) to read as follows:
 1.84 Standards for drawings.
*  *  *  *  *
     (c) Identification of drawings.  Identifying indicia, if
provided, should include the application number or the title of
the invention, inventor's name, docket number (if any), and the
name and telephone number of a person to call if the Office is
unable to match the drawings to the proper application.  This
information should be placed on the back of each sheet of
drawings a minimum distance of 1.5 cm. (5/8 inch) down from the
top of the page.  In addition, a reference to the application
number, or, if an application number has not been assigned, the
inventor's name, may be included in the left-hand corner,
provided that the reference appears within 1.5 cm. (9/16 inch)
from the top of the sheet.
*  *  *  *  *
     (f) Size of paper.  All drawing sheets in an application
must be the same size.  One of the shorter sides of the sheet is
regarded as its top.  The size of the sheets on which drawings
are made must be:
     (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
     (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
     (g) Margins.  The sheets must not contain frames around the
sight; i.e., the usable surface, but should have scan target
points, i.e., cross-hairs, printed on two catercorner margin
corners.  Each sheet must include a top margin of at least
2.5 cm. (1 inch), a left side margin of at least 2.5 cm.
(1 inch), a right side margin of at least 1.5 cm. (9/16 inch),
and a bottom margin of at least 1.0 cm. (3/8 inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm.
by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater
than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm.
by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
*  *  *  *  *
     (x) Holes.  No holes should be made by applicant in the
drawing sheets.  (See  1.152 for design drawings,  1.165 for
plant drawings, and  1.174 for reissue drawings.)
.    Section 1.96 is revised to read as follows:
 1.96 Submission of computer program listings.
     (a) General.  Descriptions of the operation and general
content of computer program listings should appear in the
description portion of the specification.  A computer program
listing for the purpose of this section is defined as a printout
that lists in appropriate sequence the instructions, routines,
and other contents of a program for a computer.  The program
listing may be either in machine or machine-independent (object
or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the
flow of work in a computer, or control or monitor events.
Computer program listings may be submitted in patent applications
as set forth in paragraphs (b) and (c) of this section.
     (b) Material which will be printed in the patent.  If the
computer program listing is contained on ten printout pages or
less, it must be submitted either as drawings or as part of the
specification.
     (1) Drawings.  If the listing is submitted as drawings, it
must be submitted in the manner and complying with the
requirements for drawings as provided in  1.84.  At least one
figure numeral is required on each sheet of drawing.
     (2) Specification.
     (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the
provisions of  1.52, at the end of the description but before
the claims.
     (ii) Any listing submitted as part of the specification must
be direct printouts (i.e., not copies) from the computer's
printer with dark solid black letters not less than 0.21 cm.
high, on white, unshaded and unlined paper, and the sheets should
be submitted in a protective cover.  Any amendments must be made
by way of submission of substitute sheets.
     (c) As an appendix which will not be printed.  If a computer
program listing printout is eleven or more pages long, applicants
must submit such listing in the form of microfiche, referred to
in the specification (see  1.77(a)(6)).  Such microfiche filed
with a patent application is to be referred to as a "microfiche
appendix."  The "microfiche appendix" will not be part of the
printed patent.  Reference in the application to the "microfiche
appendix" must be made at the beginning of the specification at
the location indicated in  1.77(a)(6).  Any amendments thereto
must be made by way of revised microfiche.
     (1) Availability of appendix.  Such computer program
listings on microfiche will be available to the public for
inspection, and microfiche copies thereof will be available for
purchase with the file wrapper and contents, after a patent based
on such application is granted or the application is otherwise
made publicly available.
     (2) Submission requirements.  Except as modified or
clarified in this paragraph (c)(2), computer-generated
information submitted as a "microfiche appendix" to an
application shall be in accordance with the standards set forth
in 36 CFR Part 1230 (Micrographics).
     (i)   Film submitted shall be a first generation (camera
film) negative appearing microfiche (with emulsion on the back
side of the film when viewed with the images right-reading).
     (ii)  Reduction ratio of microfiche submitted should be 24:1
or a similar ratio where variation from said ratio is required in
order to fit the documents into the image area of the microfiche
format used.
     (iii) At least the left-most third (50 mm. x 12 mm.) of the
header or title area of each microfiche submitted shall be clear
or positive appearing so that the Patent and Trademark Office can
apply an application number and filing date thereto in an
eye-readable form.  The middle portion of the header shall be
used by applicant to apply an eye-readable application
identification such as the title and/or the first inventor's
name.  The attorney's docket number may be included.  The final
right-hand portion of the microfiche shall contain sequence
information for the microfiche, such as 1 of 4, 2 of 4, etc.
     (iv)  Additional requirements which apply specifically to
microfiche of filmed paper copy:
     (A) The first frame of each microfiche submitted shall
contain a test target.
     (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.
     (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.
     (D) Pagination of the microfiche frames shall be from left
to right and from top to bottom.
     (E) At a reduction of 24:1, resolution of the original
microfilm shall be at least 120 lines per mm. (5.0 target).
     (F) An index, when included, should appear in the last frame
(lower right-hand corner when data is right-reading) of each
microfiche.
     (v)   Microfiche generated by Computer Output Microfilm.
     (A) The first frame of each microfiche submitted should
contain a resolution test frame.
     (B) The second frame of each microfiche submitted must
contain a fully descriptive title and the inventor's name as
filed.
     (C) The pages or lines appearing on the microfiche frames
should be consecutively numbered.
     (D) It is preferred that pagination of the microfiche frames
be from left to right and top to bottom but the alternative,
i.e., from top to bottom and from left to right, is also
acceptable.
     (E) An index, when included, should appear on the last frame
(lower right-hand corner when data is right-reading) of each
microfiche.
.    Section 1.97 is amended by revising paragraphs (a) through
(d) to read as follows:
 1.97 Filing of information disclosure statement.
     (a) In order for an applicant for a patent or for a reissue
of a patent to have an information disclosure statement in
compliance with  1.98 considered by the Office during the
pendency of the application, it must satisfy paragraph (b), (c),
or (d) of this section.
     (b) An information disclosure statement shall be considered
by the Office if filed by the applicant:
     (1) Within three months of the filing date of a national
application;
     (2) Within three months of the date of entry of the national
stage as set forth in  1.491 in an international application; or
     (3) Before the mailing date of a first Office action on the
merits, whichever event occurs last.
     (c) An information disclosure statement shall be considered
by the Office if filed by the applicant after the period
specified in paragraph (b) of this section, provided that the
statement is accompanied by either a certification as specified
in paragraph (e) of this section or the fee set forth in
 1.17(p), and is filed before the mailing date of either:
     (1) A final action under  1.113; or
     (2) A notice of allowance under  1.311, whichever occurs
first.
     (d) An information disclosure statement shall be considered
by the Office if filed by the applicant after the period
specified in paragraph (c) of this section, provided that the
statement is filed on or before payment of the issue fee and 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).
*  *  *  *  *
.    Section 1.107 is amended by revising paragraph (a) to read
as follows:
 1.107 Citation of references.
     (a) If domestic patents are cited by the examiner, their
numbers and dates, and the names of the patentees must be stated.
If foreign published applications or patents are cited, their
nationality or country, numbers and dates, and the names of the
patentees must be stated, and such other data must be furnished
as may be necessary to enable the applicant, or in the case of a
reexamination proceeding, the patent owner, to identify the
published applications or patents cited.  In citing foreign
published applications or patents, in case only a part of the
document is involved, the particular pages and sheets containing
the parts relied upon must be identified.  If printed
publications are cited, the author (if any), title, date, pages
or plates, and place of publication, or place where a copy can be
found, shall be given.
*  *  *  *  *
.    Section 1.110 is revised to read as follows:
 1.110 Inventorship and date of invention of the subject matter
of individual claims.
     When more than one inventor is named in an application or
patent, the Patent and Trademark Office, when necessary for
purposes of an Office proceeding, may require an applicant,
patentee, or owner to identify the inventive entity of the
subject matter of each claim in the application or patent.  Where
appropriate, the invention dates of the subject matter of each
claim and the ownership of the subject matter on the date of
invention may be required of the applicant, patentee or owner.
See also  1.78(c) and 1.130.
.    A new  1.130 is added after the undesignated center heading
"Affidavits Overcoming Rejections" to read as follows:
 1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.
     (a) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 in view of a U.S.
patent which is not prior art under 35 U.S.C. 102(b), and the
inventions defined by the claims in the application or patent
under reexamination and by the claims in the patent are not
identical but are not patentably distinct, and the inventions are
owned by the same party, the applicant or owner of the patent
under reexamination may disqualify the patent as prior art.  The
patent can be disqualified as prior art by submission of:
     (1) A terminal disclaimer in accordance with  1.321(c), and
     (2) An oath or declaration stating that the application or
patent under reexamination and the patent are currently owned by
the same party, and that the inventor named in the application or
patent under reexamination is the prior inventor under 35 U.S.C.
104.
     (b) When an application or a patent under reexamination
claims an invention which is not patentably distinct from an
invention claimed in a commonly owned patent with the same or a
different inventive entity, a double patenting rejection will be
made in the application or a patent under reexamination.  A
judicially created double patenting rejection may be obviated by
filing a terminal disclaimer in accordance with  1.321(c).
.    Section 1.131 is amended by revising paragraph (a) to read
as follows:
 1.131 Affidavit or declaration of prior invention to overcome
cited patent or publication.
     (a)(1) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 102(a) or (e), or
35 U.S.C. 103 based on a U.S. patent to another or others which
is prior art under 35 U.S.C. 102(a) or (e) and which
substantially shows or describes but does not claim the same
patentable invention, as defined in  1.601(n), or on reference
to a foreign patent or to a printed publication, the inventor of
the subject matter of the rejected claim, the owner of the patent
under reexamination, or the party qualified under  1.42, 1.43,
or 1.47, may submit an appropriate oath or declaration to
overcome the patent or publication.  The oath or declaration must
include facts showing a completion of the invention in this
country or in a NAFTA or WTO member country before the filing
date of the application on which the U.S. patent issued, or
before the date of the foreign patent, or before the date of the
printed publication.  When an appropriate oath or declaration is
made, the patent or publication cited shall not bar the grant of
a patent to the inventor or the confirmation of the patentability
of the claims of the patent, unless the date of such patent or
printed publication is more than one year prior to the date on
which the inventor's or patent owner's application was filed in
this country.
     (2) A date of completion of the invention may not be
established under this section before December 8, 1993, in a
NAFTA country, or before January 1, 1996, in a WTO member country
other than a NAFTA country.
*  *  *  *  *
.    Section 1.132 is revised to read as follows:
 1.132 Affidavits or declarations traversing grounds of
rejection.
     When any claim of an application or a patent under
reexamination is rejected on reference to a U.S. patent which
substantially shows or describes but does not claim the same
patentable invention, as defined in  1.601(n), on reference to a
foreign patent, on reference to a printed publication, or on
reference to facts within the personal knowledge of an employee
of the Office, or when rejected upon a mode or capability of
operation attributed to a reference, or because the alleged
invention is held to be inoperative, lacking in utility,
frivolous, or injurious to public health or morals, affidavits or
declarations traversing these references or objections may be
received.
.    Section 1.154 is revised to read as follows:
 1.154 Arrangement of specification.
     (a) The elements of the design application, if applicable,
should appear in the following order:
     (1)  Design Application Transmittal Form.
     (2)  Fee Transmittal Form.
     (3)  Preamble, stating name of the applicant and title of
the design.
     (4)  Cross-reference to related applications.
     (5)  Statement regarding federally sponsored research or
development.
     (6)  Description of the figure or figures of the drawing.
     (7)  Feature Description.
     (8)  A single claim.
     (9)  Drawings or photographs.
     (10) Executed oath or declaration (See  1.153(b)).
     (b) [Reserved]
.    Section 1.163 is amended by adding new paragraphs (c) and
(d) to read as follows:
 1.163 Specification.
*  *  *  *  *
     (c) The elements of the plant application, if applicable,
should appear in the following order:
     (1)  Plant Application Transmittal Form.
     (2)  Fee Transmittal Form.
     (3)  Title of the invention.
     (4)  Cross-reference to related applications.
     (5)  Statement regarding federally sponsored research or
development.
     (6)  Background of the invention.
     (7)  Brief summary of the invention.
     (8)  Brief description of the drawing.
     (9)  Detailed Botanical Description.
     (10) A single claim.
     (11) Abstract of the Disclosure.
     (12) Drawings (in duplicate).
     (13) Executed oath or declaration.
     (14) Plant color coding sheet.
     (d) A plant color coding sheet as used in this section means
a sheet that specifies a color coding system as designated in a
color dictionary, and lists every plant structure to which color
is a distinguishing feature and the corresponding color code
which best represents that plant structure.
.    Section 1.291 is amended by revising paragraphs (a) and (b)
to read as follows:
 1.291 Protests by the public against pending applications.
     (a) Protests by a member of the public against pending
applications will be referred to the examiner having charge of
the subject matter involved.  A protest specifically identifying
the application to which the protest is directed will be entered
in the application file if:
     (1) The protest is submitted prior to the mailing of a
notice of allowance under  1.311; and
     (2) The protest is either served upon the applicant in
accordance with  1.248, or filed with the Office in duplicate in
the event service is not possible.
     (b) Protests raising fraud or other inequitable conduct
issues will be entered in the application file, generally without
comment on those issues.  Protests which do not adequately
identify a pending patent application will be returned to the
protestor and will not be further considered by the Office.  A
protest submitted in accordance with the second sentence of
paragraph (a) of this section will be considered by the Office if
the application is still pending when the protest and application
file are brought before the examiner and it includes:
     (1) A listing of the patents, publications, or other
information relied upon;
     (2) A concise explanation of the relevance of each listed
item;
     (3) A copy of each listed patent or publication or other
item of information in written form or at least the pertinent
portions thereof; and
     (4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication,
or other item of information in written form relied upon.
*  *  *  *  *
.    Section 1.292 is amended by revising paragraphs (a) and (b)
to read as follows:
 1.292 Public use proceedings.
     (a) When a petition for the institution of public use
proceedings, supported by affidavits or declarations is found, on
reference to the examiner, to make a prima facie showing that the
invention claimed in an application believed to be on file had
been in public use or on sale more than one year before the
filing of the application, a hearing may be had before the
Commissioner to determine whether a public use proceeding should
be instituted.  If instituted, the Commissioner may designate an
appropriate official to conduct the public use proceeding,
including the setting of times for taking testimony, which shall
be taken as provided by  1.671 through 1.685.  The petitioner
will be heard in the proceedings but after decision therein will
not be heard further in the prosecution of the application for
patent.
     (b) The petition and accompanying papers, or a notice that
such a petition has been filed, shall be entered in the
application file if:
     (1) The petition is accompanied by the fee set forth in
 1.17(j);
     (2) The petition is served on the applicant in accordance
with  1.248, or filed with the Office in duplicate in the event
service is not possible; and
     (3) The petition is submitted prior to the mailing of a
notice of allowance under  1.311.
*  *  *  *  *
.    Section 1.315 is revised to read as follows:
 1.315 Delivery of patent.
     The patent will be delivered or mailed upon issuance to the
correspondence address of record.  See  1.33(a).
.    Section 1.321 is amended by revising paragraph (c) to read
as follows:
 1.321 Statutory disclaimers, including terminal disclaimers.
*  *  *  *  *
     (c) A terminal disclaimer, when filed to obviate a
judicially created double patenting rejection in a patent
application or in a reexamination proceeding, must:
     (1) Comply with the provisions of paragraphs (b)(2) through
(b)(4) of this section;
     (2) Be signed in accordance with paragraph (b)(1) of this
section if filed in a patent application or in accordance with
paragraph (a)(1) of this section if filed in a reexamination
proceeding; and
     (3) Include a provision that any patent granted on that
application or any patent subject to the reexamination proceeding
shall be enforceable only for and during such period that said
patent is commonly owned with the application or patent which
formed the basis for the rejection.
.    Section 1.497 is revised to read as follows:
 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
     (a) When an applicant of an international application
desires to enter the national stage under 35 U.S.C. 371 pursuant
to  1.494 or 1.495, he or she must file an oath or declaration
that:
     (1) Is executed in accordance with either  1.66 or 1.68;
     (2) Identifies the specification to which it is directed;
     (3) Identifies each inventor and the country of citizenship
of each inventor; and
     (4) States that the person making the oath or declaration
believes the named inventor or inventors to be the original and
first inventor or inventors of the subject matter which is
claimed and for which a patent is sought.
     (b) (1) The oath or declaration must be made by all of the
actual inventors except as provided for in  1.42, 1.43 or 1.47.
     (2) If the person making the oath or declaration is not the
inventor, the oath or declaration shall state the relationship of
the person to the inventor, the facts required by  1.42, 1.43
or 1.47, and, upon information and belief, the facts which the
inventor would have been required to state.
     (c) If the oath or declaration meets the requirements of
paragraphs (a) and (b) of this section, the oath or declaration
will be accepted as complying with 35 U.S.C. 371(c)(4) and
 1.494(c) or 1.495(c).  However, if the oath or declaration
does not also meet the requirements of  1.63, a supplemental
oath or declaration in compliance with  1.63 will be required in
accordance with  1.67.
Date:___________      ______________________________________
                      Bruce A. Lehman
                      Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks