APPENDIX R      PATENT RULES

Title 37 - Code of Federal Regulations Patents, Trademarks, and
Copyrights

---SECTION---PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

---SECTION---A GENERAL

---SECTION---PATENTS - RULES OF PRACTICE IN PATENT CASES

---SECTION---A General Provisions

---SECTION---GENERAL INFORMATION AND CORRESPONDENCE

---SECTION---1.1 Addresses for correspondence with the Patent and
Trademark Office.

Except for Section  1.1(a)(3) (i) and (ii), all correspondence intended
for the Patent and Trademark Office must be addressed to either
"Commissioner of Patents and Trademarks, Washington, D.C. 20231" or to
specific areas within the Office as set out in paragraphs (a) (1), (2)
and (3)(iii) of this section. When appropriate, correspondence should
also be marked for the attention of a particular office or individual.

Patent correspondence. All correspondence concerning patent matters
processed by organizations reporting to the Assistant Commissioner for
Patents should be addressed to "Assistant Commissioner for Patents,
Washington, D.C. 20231."

Trademark correspondence. All correspondence concerning trademark
matters, except for trademark-related documents sent to the Assignment
Division for recordation and requests for certified and uncertified
copies of trademark application and registration documents, should be
addressed to "Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513." This includes correspondence intended
for the Trademark Trial and Appeal Board.

Office of Solicitor correspondence.

Correspondence relating to pending litigation required by court rule or
order to be served on the Solicitor shall be hand-delivered to the
Office of the Solicitor or shall be mailed to: Office of the Solicitor,
P.O. Box 15667, Arlington, Virginia 22215; or such other address as may
be designated in writing in the litigation. See Section Section 
1.302(c) and 2.145(b)(3) for filing a notice of appeal to the U.S. Court
of Appeals for the Federal Circuit.

Correspondence relating to disciplinary proceedings pending before an
Administrative Law Judge or the Commissioner shall be mailed to: Office
of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.

All other correspondence to the Office of the Solicitor shall be
addressed to: Box 8, Commissioner of Patents and Trademarks, Washington,
D.C. 20231.

Correspondence improperly addressed to a Post Office Box specified in
paragraphs (a)(3) (i) and (ii) of this section will not be filed
elsewhere in the Patent and Trademark Office, and may be returned.

Letters and other communications relating to international applications
during the international stage and prior to the assignment of a national
serial number should be additionally marked "Box PCT."

Requests for reexamination should be additionally marked "Box Reexam."

Payments of maintenance fees in patents and other communications
relating thereto should be additionally marked "Box M. Fee."

Communications relating to interferences and applications or patents
involved in an interference should be additionally marked "BOX
INTERFERENCE."

All applications for extension of patent term and any communications
relating thereto intended for the Patent and Trademark Office should be
additionally marked "Box Patent Ext." When appropriate, the
communication should also be marked to the attention of a particular
individual, as where a decision has been rendered.

[Reserved]

In applications under section 1(b) of the Trademark Act, 15 U.S.C.
1051(b), all statements of use filed under section 1(d) of the Act, and
requests for extensions of time therefor, should be additionally marked
"Box ITU."

The filing of all provisional applications and any communications
relating thereto should be additionally marked "Box Provisional Patent
Application."

NOTE: Sections 1.1 to 1.26 are applicable to trademark cases as well as
to national and international patent cases ex cept for provisions
specifically directed to patent cases. See Section  1.9 for definitions
of "national application'' and "interna tional application.''

[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984,
effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec.12, 1984, effective
Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g)
added, 53 FR 16413, May 9, 1988; para. (h) added, 54 FR 37588, Sept. 11,
1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25,
1995, effective June 8, 1995; para. (a) revised and para. (g) removed
and reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]

---SECTION---1.2 Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted
in writing. The personal attendance of applicants or their attorneys or
agents at the Patent and Trademark Office is unnecessary. The action of
the Patent and Trademark Office will be based exclusively on the written
record in the Office. No attention will be paid to any alleged oral
promise, stipulation, or understanding in relation to which there is
disagreement or doubt.

---SECTION---1.3 Business to be conducted with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct their
business with the Patent and Trademark Office with decorum and courtesy.
Papers presented in violation of this requirement will be submitted to
the Commissioner and will be returned by the Commissioner's direct
order. Complaints against examiners and other employees must be made in
correspondence separate from other papers.

[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]

---SECTION---1.4 Nature of correspondence and signature requirements.

Correspondence with the Patent and Trademark Office comprises:

Correspondence relating to services and facilities of the Office, such
as general inquiries, requests for publications supplied by the Office,
orders for printed copies of patents or trademark registrations, orders
for copies of records, transmission of assignments for recording, and
the like, and

Correspondence in and relating to a particular application or other
proceeding in the Office. See particularly the rules relating to the
filing, processing, or other proceedings of national applications in
subpart B, Section Section  1.31 to 1.378; of international applications
in subpart C, Section Section  1.401 to 1.499; of reexamination of
patents in subpart D, Section Section  1.501 to 1.570; of interferences
in subpart E; Section Section  1.601 to 1.690; of extension of patent
term in subpart F, Section Section  1.710 to 1.785; and of trademark
applications Section Section  2.11 to 2.189.

Since each application file should be complete in itself, a separate
copy of every paper to be filed in an application should be furnished
for each application to which the paper pertains, even though the
contents of the papers filed in two or more applications may be
identical.

Since different matters may be considered by different branches or
sections of the Patent and Trademark Office, each distinct subject,
inquiry, or order should be contained in a separate letter to avoid
confusion and delay in answering letters dealing with different
subjects.

Each piece of correspondence, except as provided in paragraphs (e) and
(f) of this section, filed in a patent or trademark application,
reexamination proceeding, patent or trademark interference proceeding,
patent file or trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark concurrent
use proceeding, which requires a person's signature, must either:

Be an original, that is, have an original signature personally signed in
permanent ink by that person; or

Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Section  1.6(d)), of an original. In the event that a copy
of the original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Patent and
Trademark Office may require submission of the original.

The presentation to the Office (whether by signing, filing, submitting,
or later advocating) of any paper by a party, whether a practitioner or
non-practitioner, constitutes a certification under Section
&nbsp;10.18(b) of this chapter. Violations of Section &nbsp;10.18(b)(2)
of this chapter by a party, whether a practitioner or non-practitioner,
may result in the imposition of sanctions under Section  10.18(c) of
this chapter. Any practitioner violating Section  10.18(b) may also be
subject to disciplinary action. See Section Section  10.18(d) and
10.23(c)(15).

Correspondence requiring person's signature and relating to registration
practice before the Patent and Trademark Office in patent cases,
enrollment and disciplinary investigations, or disciplinary proceedings
must be submitted with an original signature personally signed in
permanent ink by that person.

When a document that is required by statute to be certified must be
filed, a copy, including a photocopy or facsimile transmission, of the
certification is not acceptable.

An applicant who has not made of record a registered attorney or agent
may be required to state whether assistance was received in the
preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of the
specification and amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in such matters, but
does not include merely making drawings by draftsmen or stenographic
services in typing papers.

[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR
2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 48416,
Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov.
28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494,
Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised & para. (g)
added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.5 Identification of application, patent, or registration.

No correspondence relating to an application should be filed prior to
receipt of the application number from the Patent and Trademark Office.
When a letter directed to the Patent and Trademark Office concerns a
previously filed application for a patent, it must identify on the top
page in a conspicuous location, the application number (consisting of
the series code and the serial number; e.g., 07/123,456), or the serial
number and filing date assigned to that application by the Patent and
Trademark Office, or the international application number of the
international application. Any correspondence not containing such
identification will be returned to the sender where a return address is
available. The returned correspondence will be accompanied with a cover
letter which will indicate to the sender that if the returned
correspondence is resubmitted to the Patent and Trademark Office within
two weeks of the mail date on the cover letter, the original date of
receipt of the correspondence will be considered by the Patent and
Trademark Office as the date of receipt of the correspondence.
Applicants may use either the Certificate of Mailing or Transmission
procedure under Section  1.8 or the Express Mail procedure under Section 
1.10 for resubmissions of returned correspondence if they desire to have
the benefit of the date of deposit in the United States Postal Service.
If the returned correspondence is not resubmitted within the two-week
period, the date of receipt of the resubmission will be considered to be
the date of receipt of the correspondence. The two-week period to
resubmit the returned correspondence will not be extended. In addition
to the application number, all letters directed to the Patent and
Trademark Office concerning applications for patent should also state
the name of the applicant, the title of the invention, the date of
filing the same, and, if known, the group art unit or other unit within
the Patent and Trademark Office responsible for considering the letter
and the name of the examiner or other person to which it has been
assigned.

When the letter concerns a patent other than for purposes of paying a
maintenance fee, it should state the number and date of issue of the
patent, the name of the patentee, and the title of the invention. For
letters concerning payment of a maintenance fee in a patent, see the
provisions of Section  1.366(c).

A letter relating to a trademark application should identify it as such
and by the name of the applicant and the serial number and filing date
of the application. A letter relating to a registered trademark should
identify it by the name of the registrant and by the number and date of
the certificate.

A letter relating to a reexamination proceeding should identify it as
such by the number of the patent undergoing reexamination, the
reexamination request control number assigned to such proceeding, and,
if known, the group art unit and name of the examiner to which it been
assigned.

When a paper concerns an interference, it should state the names of the
parties and the number of the interference. The name of the
examiner-in-chief assigned to the interference (Section  1.610) and the
name of the party filing the paper should appear conspicuously on the
first page of the paper.

When a paper concerns a provisional application, it should identify the
application as such and include the application number.

[24 FR 10332, Dec 22, 1959; 46 FR 29181, May 29, 1981; para. (a), 49 FR
552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, Nov.
28, 1988, effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct.
22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 42790, Aug.
19, 1996, effective Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov.
1, 1996, effective Dec. 2, 1996]

---SECTION---1.6 Receipt of correspondence.

Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows:

The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile as provided for in paragraph (a)(3) of this section, no
correspondence is received in the Patent and Trademark Office on
Saturdays, Sundays, or Federal holidays within the District of Columbia.

Correspondence filed in accordance with Section Section  1.10 will be
stamped with the date of deposit as "Express Mail" with the United
States Postal Service.

Correspondence transmitted by facsimile to the Patent and Trademark
Office will be stamped with the date on which the complete transmission
is received in the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia, in
which case the date stamped will be the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.

Patent and Trademark Office Post Office pouch. Mail placed in the Patent
and Trademark Office pouch up to midnight on any day, except Saturdays,
Sundays, and Federal holidays within the District of Columbia, by the
post office at Washington, DC, serving the Patent and Trademark Office,
is considered as having been received in the Patent and Trademark Office
on the day it was so placed in the pouch by the U.S. Postal Service.

Correspondence delivered by hand. In addition to being mailed,
correspondence may be delivered by hand during hours the Office is open
to receive correspondence.

Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
See Section  1.6(a)(3). To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application or other proceeding before the Patent and Trademark
Office. The application number of a patent or trademark application, the
control number of a reexamination proceeding, the interference number of
an interference proceeding, the patent number of a patent, or the
registration number of a trademark should be entered as a part of the
sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and, if submitted, will not be accorded
a date of receipt in the following situations:

Correspondence as specified in Section  1.4(e), requiring an original
signature;

Certified documents as specified in Section  1.4(f);

Correspondence which cannot receive the benefit of the certificate of
mailing or transmission as specified in Section &nbsp;1.8(a)(2)(i)(A)
through (D) and (F), Section &nbsp;1.8(a)(2)(ii)(A), and Section
&nbsp;1.8(a)(2)(iii)(A), except that a continued prosecution application
under Section &nbsp;1.53(d) may be transmitted to the Office by
facsimile;

Drawings submitted under Section Section  1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;

A request for reexamination under Section  1.510;

Correspondence to be filed in a patent application subject to a secrecy
order under Section Section &nbsp;5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;

Requests for cancellation or amendment of a registration under section
7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates of
registration surrendered for cancellation or amendment under section
7(e) of the Trademark Act, 15 U.S.C. 1057(e);

Correspondence to be filed with the Trademark Trial and Appeal Board,
except the notice ofex parte appeal;

Correspondence to be filed in an interference proceeding which consists
of a preliminary statement under Section  1.621; a transcript of a
deposition under Section  1.676 or of interrogatories,
cross-interrogatories, or recorded answers under Section  1.684(c); or
an evidentiary record and exhibits under Section  1. 653.

Interruptions in U.S. Postal Service. If interruptions or emergencies in
the United States Postal Service which have been so designated by the
Commissioner occur, the Patent and Trademark Office will consider as
filed on a particular date in the Office any correspondence which is:

Promptly filed after the ending of the designated interruption or
emergency; and

Accompanied by a statement indicating that such correspondence would
have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.

Facsimile transmission of a patent application under Section
&nbsp;1.53(d). In the event that the Office has no evidence of receipt
of an application under Section  1.53(d) (a continued prosecution
application) transmitted to the Office by facsimile transmission, the
party who transmitted the application under Section  1.53(d) may
petition the Commissioner to accord the application under Section 
1.53(d) a filing date as of the date the application under Section 
1.53(d) is shown to have been transmitted to and received in the Office,

Provided that the party who transmitted such application under Section 
1.53(d):

Informs the Office of the previous transmission of the application under
Section &nbsp;1.53(d) promptly after becoming aware that the Office has
no evidence of receipt of the application under Section  1.53(d);

Supplies an additional copy of the previously transmitted application
under Section  1.53(d); and

Includes a statement which attests on a personal knowledge basis or to
the satisfaction of the Commissioner to the previous transmission of the
application under Section &nbsp;1.53(d) and is accompanied by a copy of
the sending unit's report confirming transmission of the application
under Section  1.53(d) or evidence that came into being after the
complete transmission and within one business day of the complete
transmission of the application under Section &nbsp;1.53(d).

The Office may require additional evidence to determine if the
application under Section &nbsp;1.53(d) was transmitted to and received
in the Office on the date in question.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, Jan.
31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984;
revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a)
amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras.
(d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.7 Times for  taking action; expiration on Saturday,
Sunday, or Federal holiday.
whenever periods of time are specified in this part in days, calendar
days are intended. When the day, or the last day fixed by statute or by
or under this part for taking any action or paying any fee in the Patent
and Trademark Office falls on Saturday, Sunday, or on a Federal holiday
within the District of Columbia, the action may be taken, or the fee
paid, on the next succeeding day which is not a Saturday, Sunday, or a
Federal holiday. See Section  1.304 for time for appeal or for
commencing civil action.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 FR
4285, Jan. 31, 1983]

---SECTION---1.8 Certificate of mailing or transmission.

Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Patent and Trademark Office
within a set period of time will be considered as being timely filed if
the procedure described in this section is followed. The actual date of
receipt will be used for all other purposes.

Correspondence will be considered as being timely filed if:

The correspondence is mailed or transmitted prior to expiration of the
set period of time by being:

Addressed as set out in Section  1.1(a) and deposited with the U.S.
Postal Service with sufficient postage as first class mail; or

Transmitted by facsimile to the Patent and Trademark Office in
accordance with Section  1.6(d); and

The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before the date
indicated.

The procedure described in paragraph (a)(1) of this section does not
apply to, and no benefit will be given to a Certificate of Mailing or
Transmission on, the following:

Relative to Patents and Patent Applications-

The filing of a national patent application specification and drawing or
other correspondence for the purpose of obtaining an application filing
date, including a request for a continued prosecution application under
Section &nbsp;1.53(d);

The filing of correspondence in an interference which an
examiner-in-chief orders to be filed by hand or "Express Mail";

The filing of agreements between parties to an interference under 35
U.S.C. 135(c);

The filing of an international application for patent;

The filing of correspondence in an international application before the
U.S. Receiving Office, the U.S. International Searching Authority, or
the U.S. International Preliminary Examining Authority;

The filing of a copy of the international application and the basic
national fee necessary to enter the national stage, as specified in
Section  1.494(b) or Section  1.495(b).

Relative to Trademark Registrations and Trademark Applications-

The filing of a trademark application.

[Reserved]

[Reserved]

[Reserved]

[Reserved]

[Reserved]

Relative to Disciplinary Proceedings-

Correspondence filed in connection with a disciplinary proceeding under
part 10 of this chapter.

[Reserved]

In the event that correspondence is considered timely filed by being
mailed or transmitted in accordance with paragraph (a) of this section,
but not received in the Patent and Trademark Office, and the application
is held to be abandoned or the proceeding is dismissed, terminated, or
decided with prejudice, the correspondence will be considered timely if
the party who forwarded such correspondence:

Informs the Office of the previous mailing or transmission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;

Supplies an additional copy of the previously mailed or transmitted
correspondence and certificate; and

Includes a statement which attests on a personal knowledge basis or to
the satisfaction of the Commissioner to the previous timely mailing or
transmission. If the correspondence was sent by facsimile transmission,
a copy of the sending unit's report confirming transmission may be used
to support this statement.

The Office may require additional evidence to determine if the
correspondence was timely filed.

[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 47 FR
47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48 FR 2708,
Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR
20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11,
1989, effective Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993,
effective Nov. 22, 1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996,
effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised; 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.9 Definitions.

A national application as used in this chapter means a U.S. application
for patent which was either filed in the Office under 35 U.S.C. 111, or
which entered the national stage from an international application after
compliance with 35 U.S.C. 371.

A provisional application as used in this chapter means a U.S. national
application for patent filed in the Office under 35 U.S.C. 111(b).

A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under 35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.

An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.

An independent inventor as used in this chapter means any inventor who
(1) has not assigned, granted, conveyed, or licensed, and (2) is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person who could not
likewise be classified as an independent inventor if that person had
made the invention, or to any concern which would not qualify as a small
business concern or a nonprofit organization under this section.

A small business concern as used in this chapter means any business
concern meeting the size standards set forth in 13&nbsp;CFR Part 121 to
be eligible for reduced patent fees. Questions related to size standards
for a small business concern may be directed to: Small Business
Administration, Size Standards Staff, 409 Third Street, SW, Washington,
DC 20416.

A nonprofit organization as used in this chapter means (1) a university
or other institution of higher education located in any country; (2) an
organization of the type described in section 501(c)(3) of the Internal
Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation
under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(3) any nonprofit scientific or educational organization qualified under
a nonprofit organization statute of a state of this country (35 U.S.C.
201(i)); or (4) any non-profit organization located in a foreign country
which would qualify as a nonprofit organization under paragraphs (e) (2)
or (3) of this section if it were located in this country.

A small entity as used in this chapter means an independent inventor, a
small business concern, or a non-profit organization eligible for
reduced patent fees.

For definitions in interferences see Section  1.601.

A Federal holiday within the District of Columbia as used in this
chapter means any day, except Saturdays and Sundays, when the Patent and
Trademark Office is officially closed for business for the entire day.

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective Oct.
1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. (d),
49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) amended, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995; para. (h) added, 61 FR
56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (f) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.10 Filing of papers and fees by "Express Mail."

Any correspondence received by the Patent and Trademark Office (Office)
that was delivered by the "Express Mail Post Office to Addressee"
service of the United States Postal Service (USPS) will be considered
filed in the Office on the date of deposit with the USPS. The date of
deposit with the USPS is shown by the "date-in" on the "Express Mail"
mailing label or other official USPS notation. If the USPS deposit date
cannot be determined, the correspondence will be accorded the Office
receipt date as the filing date. See Section  1.6(a).

Correspondence should be deposited directly with an employee of the USPS
to ensure that the person depositing the correspondence receives a
legible copy of the "Express Mail" mailing label with the "date-in"
clearly marked. Persons dealing indirectly with the employees of the
USPS (such as by deposit in an "Express Mail" drop box) do so at the
risk of not receiving a copy of the "Express Mail" mailing label with
the desired "date-in" clearly marked. The paper(s) or fee(s) that
constitute the correspondence should also include the "Express Mail"
mailing label number thereon. See paragraphs (c), (d) and (e) of this
section.

Any person filing correspondence under this section that was received by
the Office and delivered by the "Express Mail Post Office to Addressee"
service of the USPS, who can show that there is a discrepancy between
the filing date accorded by the Office to the correspondence and the
date of deposit as shown by the "date-in" on the "Express Mail" mailing
label or other official USPS notation, may petition the Commissioner to
accord the correspondence a filing date as of the "date-in" on the
"Express Mail" mailing label or other official USPS notation, provided
that:

The petition is filed promptly after the person becomes aware that the
Office has accorded, or will accord, a filing date other than the USPS
deposit date;

The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail;" and

The petition includes a true copy of the "Express Mail" mailing label
showing the "date-in," and of any other official notation by the USPS
relied upon to show the date of deposit.

Any person filing correspondence under this section that was received by
the Office and delivered by the "Express Mail Post Office to Addressee"
service of the USPS, who can show that the "date-in" on the "Express
Mail" mailing label or other official notation entered by the USPS was
incorrectly entered or omitted by the USPS, may petition the
Commissioner to accord the correspondence a filing date as of the date
the correspondence is shown to have been deposited with the USPS,
provided that:

The petition is filed promptly after the person becomes aware that the
Office has accorded, or will accord, a filing date based upon an
incorrect entry by the USPS;

The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail"; and

The petition includes a showing which establishes, to the satisfaction
of the Commissioner, that the requested filing date was the date the
correspondence was deposited in the "Express Mail Post Office to
Addressee" service prior to the last scheduled pickup for that day. Any
showing pursuant to this paragraph must be corroborated by evidence from
the USPS or that came into being after deposit and within one business
day of the deposit of the correspondence in the "Express Mail Post
Office to Addressee" service of the USPS.

Any person mailing correspondence addressed as set out in Section 
1.1(a) to the Office with sufficient postage utilizing the "Express Mail
Post Office to Addressee" service of the USPS but not received by the
Office, may petition the Commissioner to consider such correspondence
filed in the Office on the USPS deposit date, provided that:

The petition is filed promptly after the person becomes aware that the
Office has no evidence of receipt of the correspondence;

The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail";

The petition includes a copy of the originally deposited paper(s) or
fee(s) that constitute the correspondence showing the number of the
"Express Mail" mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing the
"date-in," a copy of any other official notation by the USPS relied upon
to show the date of deposit, and, if the requested filing date is a date
other than the "date-in" on the "Express Mail" mailing label or other
official notation entered by the USPS, a showing pursuant to paragraph
(d)(3) of this section that the requested filing date was the date the
correspondence was deposited in the "Express Mail Post Office to
Addressee" service prior to the last scheduled pickup for that day; and

The petition includes a statement which establishes, to the satisfaction
of the Commissioner, the original deposit of the correspondence and that
the copies of the correspondence, the copy of the "Express Mail" mailing
label, the copy of any returned postcard receipt, and any official
notation entered by the USPS are true copies of the originally mailed
correspondence, original "Express Mail" mailing label, returned postcard
receipt, and official notation entered by the USPS.

The Office may require additional evidence to determine if the
correspondence was deposited as "Express Mail" with the USPS on the date
in question.

[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285,
Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective Apr.
1, 1984; paras. (a) - (c) revised and paras. (d) - (f) added, 61 FR
56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

---SECTION---1.11 Files open to the public.

After a patent has been issued or a statutory invention registration has
been published, the specification, drawings, and all papers relating to
the case in the file of the patent or statutory invention registration
are open to inspection by the public, and copies may be obtained upon
paying the fee therefor. See Section  2.27 for trademark files.

All reissue applications, all applications in which the Office has
accepted a request to open the complete application to inspection by the
public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under Section &nbsp;1.53(d) of reissue
applications, will be announced in the Official Gazette. The
announcement shall include at least the filing date, reissue application
and original patent numbers, title, class and subclass, name of the
inventor, name of the owner of record, name of the attorney or agent of
record, and examining group to which the reissue application is
assigned.

All requests for reexamination for which the fee under Section  1.20(c)
has been paid, will be announced in the Official Gazette. Any
reexaminations at the initiative of the Commissioner pursuant to Section 
1.520 will also be announced in the Official Gazette. The announcement
shall include at least the date of the request, if any, the
reexamination request control number or the Commissioner initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.

All papers or copies thereof relating to a reexamination proceeding
which have been entered of record in the patent or reexamination file
are open to inspection by the general public, and copies may be
furnished upon paying the fee therefor.

The file of any interference involving a patent, a statutory invention
registration, a reissue application, or an application on which a patent
has been issued or which has been published as a statutory invention
registration, is open to inspection by the public, and copies may be
obtained upon paying the fee therefor, if:

The interference has terminated or

An award of priority or judgment has been entered as to all parties and
all counts.

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46 FR 29181, May
29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1,
1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;
paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8,
1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17,
1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---1.12 Assignment records open to public inspection.

Separate assignment records are maintained in the Patent and Trademark
Office for patents and trademarks. The assignment records, relating to
original or reissue patents, including digests and indexes, for
assignments recorded on or after May 1, 1957, and assignment records
relating to pending or abandoned trademark applications and to trademark
registrations, for assignments recorded on or after January 1, 1955, are
open to public inspection at the Patent and Trademark Office, and copies
of those assignment records may be obtained upon request and payment of
the fee set forth in Section  1.19 and Section  2.6 of this chapter.

All records of assignments of patents recorded before May 1, 1957, and
all records of trademark assignments recorded before January 1, 1955,
are maintained by the National Archives and Records Administration
(NARA). The records are open to public inspection. Certified and
uncertified copies of those assignment records are provided by NARA upon
request and payment of the fees required by NARA.

Assignment records, digests, and indexes relating to any pending or
abandoned application are not available to the public. Copies of any
such assignment records and information with respect thereto shall be
obtainable only upon written authority of the applicant or applicant's
assignee or attorney or agent or upon a showing that the person seeking
such information is a bona fide prospective or actual purchaser,
mortgagee, or licensee of such application, unless it shall be necessary
to the proper conduct of business before the Office or as provided by
these rules.

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 Section  1.14, or any information with respect thereto,
must:

Be in the form of a petition accompanied by the petition fee set forth
in Section  1.17(i); or

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.

An order for a copy of an assignment or other document should identify
the reel and frame number where the assignment or document is recorded.
If a document is identified without specifying its correct reel and
frame, an extra charge as set forth in Section  1.21(j) will be made for
the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and
(c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and
(d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1)
and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para.
(a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para.
(c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para.
(c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.13 Copies and certified copies.

Non-certified copies of patents and trademark registrations and of any
records, books, papers, or drawings within the jurisdiction of the
Patent and Trademark Office and open to the public, will be furnished by
the Patent and Trademark Office to any person, and copies of other
records or papers will be furnished to persons entitled thereto, upon
payment of the fee therefor.

Certified copies of the patents and trademark registrations and of any
records, books, papers, or drawings within the jurisdiction of the
Patent and Trademark Office and open to the public or persons entitled
thereto will be authenticated by the seal of the Patent and Trademark
Office and certified by the Commissioner, or in his name attested by an
officer of the Patent and Trademark Office authorized by the
Commissioner, upon payment of the fee for the certified copy.

[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994]

---SECTION---1.14 Patent applications preserved in confidence.

Patent applications are generally preserved in confidence pursuant to
35&nbsp;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.

Status information includes information such as whether the application
is pending, abandoned, or patented, as well as the application number
and filing date (or international filing date or date of entry into the
national stage).

Status information concerning an application may be supplied:

When copies of, or access to, the application may be provided pursuant
to paragraph (a)(3) of this section;

When the application is identified by application number or serial
number and filing date in a published patent document or in a U.S.
application open to public inspection; or

When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.

Status information concerning an application may also be supplied when
the application claims the benefit of the filing date of an application
for which status information may be provided pursuant to paragraph
(a)(1)(i) of this section.

Copies of an application-as-filed may be provided to any person, upon
written request accompanied by the fee set forth in Section  1.19(b)(1),
without notice to the applicant, if the application is incorporated by
reference in a U.S. patent.

Copies of (upon payment of the fee set forth in Section  1.19(b)(2)),
and access to, an application file wrapper and contents may be provided
to any person, upon written request, without notice to the applicant,
when the application file is available and:

It has been determined by the Commissioner to be necessary for the
proper conduct of business before the Office or warranted by other
special circumstances;

The application is open to the public as provided in Section
&nbsp;1.11(b);

Written authority in that application from the applicant, the assignee
of the application, or the attorney or agent of record has been granted;
or

The application is abandoned, but not if the application is in the file
jacket of a pending application under Section &nbsp;1.53(d), and is:

Referred to in a U.S. patent;

Referred to in a U.S. application open to public inspection;

An application which claims the benefit of the filing date of a U.S.
application open to public inspection; or

An application in which the applicant has filed an authorization to lay
open the complete application to the public.

Complete applications (Section &nbsp;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.

Applications for patents which disclose or which appear to disclose, or
which purport to disclose, inventions or discoveries relating to atomic
energy are reported to the Department of Energy, which Department will
be given access to such applications, but such reporting does not
constitute a determination that the subject matter of each application
so reported is in fact useful or an invention or discovery or that such
application in fact discloses subject matter in categories specified by
sections 151(c) and 151(d) of the Atomic Energy Act of 1954, 68 Stat.
919; 42 U.S. C. 2181 (c) and (d).

Any decision of the Board of PatentAppeals andInterferences, or any
decision of the Commissioner on petition, not otherwise open to public
inspection shall be published or made available for public inspection
if: (1) The Commissioner believes the decision involves an
interpretation of patent laws or regulations that would be of important
precedent value; and (2) the applicant, or any party involved in the
interference, does not within two months after being notified of the
intention to make the decision public, object in writing on the ground
that the decision discloses a trade secret or other confidential
information. If a decision discloses such information, the applicant or
party shall identify the deletions in the text of the decision
considered necessary to protect the information. If it is considered the
entire decision must be withheld from the public to protect such
information, the applicant or party must explain why. Applicants or
parties will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of decisions
are made public over their objection. See Section  2.27 for trademark
applications.

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:

Be in the form of a petition and be accompanied by the petition fee set
forth in Section  1.17(i); or

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.

Information as to the filing of an application will be published in the
Official Gazette in accordance with Section  1.47(a) and (b).

Copies of an application file for which the United States acted as the
International Preliminary Examining Authority, or copies of a document
in such an application file, will be furnished in accordance with Patent
Cooperation Treaty (PCT) Rule 94.2 or 94.3, upon payment of the
appropriate fee (Section  1.19(b)(2) or Section  1.19(b)(3)).

NOTE: See Section  1.612(a) for access by an interference party to a
pending or abandoned application.

[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) added,
47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 FR
552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985,
effective May 8, 1985; 53 FR 23733, June 23, 1988; para. (e), 54 FR
6893, Feb. 15, 1989, effective April 17, 1989; para. (b) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e) amended, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b) and (e)
amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a)
revised & para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (g) added, 63 FR 29614, June 1, 1998, effective July 1,
1998]

---SECTION---1.15 Requests for identifiable records.

Requests for records not disclosed to the public as part of the regular
informational activity of the Patent and Trademark Office and which are
not otherwise dealt with in the rules in this part shall be made in
writing, with the envelope and the letter clearly marked "Freedom of
Information Request." Each such request, so marked, should be submitted
by mail addressed to the "Patent and Trademark Office, Freedom of
Information Request Control Desk, Box 8, Washington, D.C. 20231," or
hand-delivered to the Office of the Solicitor, Patent and Trademark
Office, Arlington, Virginia. The request will be processed in accordance
with the procedures set forth in Part 4 of Title 15, Code of Federal
Regulations.

Any person whose request for records has been initially denied in whole
or in part, or has not been timely determined, may submit a written
appeal as provided in Section  4.8 of Title 15, Code of Federal
Regulations.

Procedures applicable in the event of service of process or in
connection with testimony of employees on official matters and
production of official documents of the Patent and Trademark Office in
civil legal proceedings not involving the United States shall be those
established in parts 15 and 15a of Title 15, Code of Federal
Regulations.

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 FR
47685, Nov. 25, 1988, effective Dec. 30, 1988]

---SECTION---FEES AND PAYMENT OF MONEY

---SECTION---1.16 National application filing fees.

Basic fee for filing each application for an original patent, except
provisional, design or plant applications:

By a small entity (Section  1.9(f))          395.00
By other than a small entity                 790.00

In addition to the basic filing fee in an original application, except
provisional applications, for filing or later presentation of each
independent claim in excess of 3:

By a small entity (Section  1.9(f))           41.00
By other than a small entity                  82.00

In addition to the basic filing fee in an original application, except
provisional applications, for filing or later presentation of each claim
(whether independent or dependent) in excess of 20 (Note that Section 
1.75(c) indicates how multiple dependent claims are considered for fee
calculation purposes.):

By a small entity (Section  1.9(f))           11.00
By other than a small entity                  22.00

In addition to the basic filing fee in an original application, except
provisional applications, if the application contains, or is amended to
contain, a multiple dependent claim(s), per application:

By a small entity (Section  1.9(f))          135.00
By other than a small entity                 270.00

Surcharge for filing the basic filing fee or oath or declaration on a
date later than the filing date of the application, except provisional
applications:

By a small entity (Section  1.9(f))           65.00
By other than a small entity                 130.00

Basic fee for filing each design application:

By a small entity (Section  1.9(f))          165.00
By other than a small entity                 330.00

Basic fee for filing each plant application, except provisional
applications:

By a small entity (Section  1.9(f))          270.00
By other than a small entity                 540.00

Basic fee for filing each reissue application:

By a small entity (Section  1.9(f))          395.00
By other than a small entity                 790.00

In addition to the basic filing fee in a reissue application, for filing
or later presentation of each independent claim which is in excess of
the number of independent claims in the original patent:

By a small entity (Section  1.9(f))           41.00
By other than a small entity                  82.00

In addition to the basic filing fee in a reissue application, for filing
or later presentation of each claim (whether independent or dependent)
in excess of 20 and also in excess of the number of claims in the
original patent. (Note that Section  1.75(c) indicates how multiple
dependent claims are considered for fee purposes):

By a small entity (Section  1.9(f))           11.00
By other than a small entity                  22.00

Basic fee for filing each provisional application:

By a small entity (Section  1.9(f))           75.00
By other than a small entity                 150.00

Surcharge for filing the basic filing fee or cover sheet (Section 
1.51(c)(1)) on a date later than the filing date of the provisional
application:

By a small entity (Section  1.9(f))           25.00
By other than a small entity                  50.00

If the additional fees required by paragraphs (b), (c), (d), (i) and (j)
of this section are not paid on filing or on later presentation of the
claims for which the additional fees are due, they must be paid or the
claims canceled by amendment, prior to the expiration of the time period
set for reply by the Office in any notice of fee deficiency.

NOTE: See Section Section  1.445, 1.482 and 1.492 for international
application filing and processing fees.

[Added, 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 50 FR
31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b), (d) -
(i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a)-(j),
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and
(f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a),
(b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1,
1994; paras. (a)-(g) amended and paras. (k) and (l) added, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; paras. (a), (b), (d), & (f)-(i)
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a),
(b), (d), and (f)-(i) amended and para. (m) added, 61 FR 39585, July 30,
1996, effective Oct. 1, 1996; paras. (a), (b), (d), and (f) - (i)
amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d)
& (l) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.17 Patent application processing fees.

Extension fees pursuant to Section &nbsp;1.136(a):

For reply within first month:

By a small entity (Section 1.9(f))         55.00
By other than a small entity              110.00

For reply within second month:

By a small entity (Section 1.9(f))        200.00
By other than a small entity              400.00

For reply within third month:

By a small entity (Section 1.9(f))        475.00
By other than a small entity              950.00

For reply within fourth month:

By a small entity (Section 1.9(f))        755.00
By other than a small entity                   1

For reply within fifth month:

By a small entity (Section 1.9(f))              1
By other than a small entity                    2

For filing a notice of appeal from the examiner to the Board of Patent
Appeals and Interferences:

By a small entity (Section 1.9(f))         155.00
By other than a small entity               310.00

In addition to the fee for filing a notice of appeal, for filing a brief
in support of an appeal:

By a small entity (Section 1.9(f))         155.00

By other than a small entity               310.00

For filing a request for an oral hearing before the Board of Patent
Appeals and Interferences in an appeal under 35&nbsp;U.S.C. 134:

By a small entity (Section 1.9(f))         135.00
By other than a small entity               270.00

[Reserved]

[Reserved]

[Reserved]

For filing a petition to the Commissioner under a section listed below
which refers to this paragraph

130.00

Section 1.182 - for decision on a question not specifically provided
for.

Section 1.183 - to suspend the rules.

Section &nbsp;1.295 - for review of refusal to publish a statutory
invention registration.

Section &nbsp;1.377 - for review of decision refusing to accept and
record payment of a maintenance fee filed prior to expiration of a
patent.

Section &nbsp;1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.

Section &nbsp;1.644(e) - for petition in an interference.

Section &nbsp;1.644(f) - for request for reconsideration of a decision
on petition in an interference.

Section &nbsp;1.666(c) - for late filing of interference settlement
agreement.

Section &nbsp;5.12 - for expedited handling of a foreign filing license.

Section &nbsp;5.15 - for changing the scope of a license.

Section &nbsp;5.25 - for retroactive license.

For filing a petition to the Commissioner under a section listed below
which refers to this paragraph

130.00

---SECTION---1.12 - for access to an assignment record.

Section &nbsp;1.14 - for access to an application.

Section &nbsp;1.41 - to supply the name or names of the inventor or
inventors after the filing date without an oath or declaration as
prescribed by Section &nbsp;1.63, except in provisional applications.

Section &nbsp;1.47 - for filing by other than all the inventors or a
person not the inventor.

Section &nbsp;1.48 - for correction of inventorship, except in
provisional applications.

Section &nbsp;1.53 - to accord a filing date, except in provisional
applications.

Section &nbsp;1.55 - for entry of late priority papers.

Section &nbsp;1.59 - for expungement and return of information.

Section &nbsp;1.84 - for accepting color drawings or photographs.

Section &nbsp;1.91 - for entry of a model or exhibit.

Section &nbsp;1.97(d) - to consider an information disclosure statement.

Section &nbsp;1.102 - to make an application special.

Section &nbsp;1.103 - to suspend action in application.

Section &nbsp;1.177 - for divisional reissues to issue separately.

Section &nbsp;1.312 - for amendment after payment of issue fee.

Section &nbsp;1.313 - to withdraw an application from issue.

Section &nbsp;1.314 - to defer issuance of a patent.

Section &nbsp;1.666(b) - for access to an interference settlement
agreement.

Section &nbsp;3.81 - for a patent to issue to assignee, assignment
submitted after payment of the issue fee.

For filing a petition to institute a public use proceeding under Section 
1.292

1,510.00

For processing an application filed with a specification in a
non-English language (Section  1.52(d))

130.00

For filing a petition:

For the revival of an unavoidably abandoned application under 35 U.S.C.
111, 133, 364, or 371 or

For delayed payment of the issue fee under 35 U.S.C. 151:

By a small entity (Section  1.9(f))

55.00

By other than a small entity

110.00

For filing a petition:

For revival of an unintentionally abandoned application, or

For the unintentionally delayed payment of the fee for issuing a patent:

By a small entity (Section  1.9(f))

660.00

By other than a small entity

1

For requesting publication of a statutory invention registration prior
to the mailing of the first examiner's action pursuant to Section  1.104
- $920.00 reduced by the amount of the application basic filing fee
paid.

For requesting publication of a statutory invention registration after
the mailing of the first examiner's action pursuant to Section  1.104 -
$1,840.00 reduced by the amount of the application basic filing fee
paid.

For submission of an information disclosure statement under Section 
1.97(c)

240.00

For filing a petition to the Commissioner under a section listed below
which refers to this paragraph

50.00

Section &nbsp;1.41 - to supply the name or names of the inventor or
inventors after the filing date without a cover sheet as prescribed by
Section &nbsp;1.51(c)(1) in a provisional application.

Section &nbsp;1.48 - for correction of inventorship in a provisional
application.

Section &nbsp;1.53 - to accord a provisional application a filing date
or to convert a nonprovisional application filed under Section
&nbsp;1.53(b) to a provisional application under Section &nbsp;1.53(c).

For entry of a submission after final rejection under Section  1.129(a):

By a small entity (Section  1.9(f))        395.00
By other than a small entity               790.00

For each additional invention requested to be examined under Section 
1.129(b):

By a small entity (Section  1.9(f))        395.00
By other than a small entity               790.00

[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982 ; para. (h),
48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR
13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724,
Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and
(c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985;50 FR 31824, Aug.
6, 1985, effective Oct. 5, 1985; paras. (a)- (m), 54 FR 6893, Feb. 15,
1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para. (i)(1),
54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56
FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 57 FR
2021, Jan. 17, 1992, effective March 16, 1992; para. (p) added, 57 FR
2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57 FR
29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR 32439,
July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993,
effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736,
Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and
paras. (q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8,
1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug.
11, 1995, effective Oct. 1, 1995; paras. (b) - (g), (j), (m)-(p), (r)
and (s) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996;
paras. (b) - (g), (j), (m) - (p), (r) & (s) amended, 62 FR 40450, July
29, 1997, effective Oct. 1, 1997; paras. (a) - (d), (h), (i) & (q)
revised, paras. (e) - (g) reserved, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para. (q) corrected, 62 FR 61235, Nov. 17, 1997,
effective Dec. 1, 1997]

---SECTION---1.18 Patent issue fees.

Issue fee for issuing each original or reissue patent, except a design
or plant patent:

By a small entity (Section  1.9(f))       660.00
By other than a small entity                   1

Issue fee for issuing a design patent:

By a small entity (Section  1.9(f))        225.00
By other than a small entity               450.00

Issue fee for issuing a plant patent:

By a small entity (Section  1.9(f))        335.00
By other than a small entity               670.00

[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR
31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893, Feb.
15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991,
effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21, 1992,
effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, effective
Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1,
1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996;
amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997]

---SECTION---1.19 Document supply fees.

The Patent and Trademark Office will supply copies of the following
documents upon payment of the fees indicated:

Uncertified copies of patents:

Printed copy of a patent, including a design patent, statutory invention
registration, or defensive publication document, except plant or
statutory invention registration containing color drawing:

Regular service

3.00

Overnight delivery to PTO Box or overnight fax

6.00

Expedited service for copy ordered by expedited mail or fax delivery
service and delivered to the customer within two workdays

25.00

Printed copy of a plant patent in color

15.00

Copy of a utility patent or statutory invention registration containing
color drawing (see Section  1.84(a)(2))

25.00

Certified and uncertified copies of Office documents:

Certified or uncertified copy of patent application as filed:

Regular service

15.00

Expedited regular service

30.00

Certified or uncertified copy of patent-related file wrapper and
contents

150.00

Certified or uncertified copy of Office records, per document except as
otherwise provided in this section

25.00

For assignment records, abstract of title and certification, per patent

25.00

Library service (35 U.S.C. 13): For providing to libraries copies of all
patents issued annually, per annum

50.00

For list of all United States patents and statutory invention
registrations in a subclass

3.00

Uncertified statement as to status of the payment of maintenance fees
due on a patent or expiration of a patent

10.00

Uncertified copy of a non-United States patent document, per document

25.00

To compare and certify copies made from Patent and Trademark Office
records but not prepared by the Patent and Trademark Office, per copy of
document . .

25.00

Additional filing receipts; duplicate; or corrected due to:

applicant error

25.00

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; para.
(b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f)
and (g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984;
paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985;
50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised, 54 FR
6893, Feb. 15, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989,
revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992;
para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras.
(a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018,
Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended,
62 FR 40450, July 29, 1997, effective Oct. 1, 1997]

---SECTION---1.20 Post issuance fees.

For providing a certificate of correction for applicant's mistake
(Section  1.323)

100.00

Petition for correction of inventorship in patent (Section  1.324)

130.00

For filing a request for reexamination (Section  1.510(a))

2,520.00

For filing each statutory disclaimer (Section  1.321):

By a small entity (Section  1.9(f))

55.00

By other than a small entity

110.00

For maintaining an original or reissue patent, except a design or plant
patent, based on an application filed on or after December 12, 1980, in
force beyond four years; the fee is due by three years and six months
after the original grant:

By small entity (Section  1.9(f))

525.00

By other than a small entity

1

For maintaining an original or reissue patent, except a design or plant
patent, based on an application filed on or after December 12, 1980, in
force beyond eight years; the fee is due by seven years and six months
after the original grant:

By a small entity (Section  1.9(f))

1

By other than a small entity

2

For maintaining an original or reissue patent, except a design or plant
patent, based on an application filed on or after December 12, 1980, in
force beyond twelve years; the fee is due by eleven years and six months
after the original grant:

By a small entity (Section  1.9(f))

1

By other than a small entity

3

Surcharge for paying a maintenance fee during the six-month grace period
following the expiration of three years and six months, seven years and
six months, and eleven years and six months after the date of the
original grant of a patent based on an application filed on or after
December 12, 1980:

By a small entity (Section  1.9(f))

65.00

By other than a small entity

130.00

Surcharge for accepting a maintenance fee after expiration of a patent
for non-timely payment of a maintenance fee where the delay in payment
is shown to the satisfaction of the Commissioner to have been -

Unavoidable

700.00

Unintentional

1,640.00

For filing an application for extension of the term of a patent

Application for extension under Section  1.740

1,120.00

Initial application for interim extension under Section  1.790

420.00

Subsequent application for interim extension under Section  1.790

220.00

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov.
1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985,
effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date
Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987;
paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989,
effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective
Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR
43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR
25615, May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g),
(i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1,
1995; paras. (a), (e) - (g), (i)(1), (i)(2), and (j)(1) - (j)(3)
amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (c),
(e) - (g), (i)(1), (i)(2), and (j)(1) - (j)(3) amended, 62 FR 40450,
July 29, 1997, effective Oct. 1, 1997]

---SECTION---1.21 Miscellaneous fees and charges.

The Patent and Trademark Office has established the following fees for
the services indicated:

Registration of attorneys and agents:

For admission to examination for registration to practice:

Application Fee (non-refundable) . . $40.00

Registration examination fee

310.00

On registration to practice

100.00

For reinstatement to practice

40.00

For certificate of good standing as an attorney or agent

10.00

Suitable for framing

20.00

For review of decision of the Director of Enrollment and Discipline
under Section  10.2(c)

130.00

For requesting regrading of an examination under Section  10.7(c ):

Regrading of morning section (PTO Practice and Procedure)

230.00

Regrading of afternoon section (Claim Drafting)

540.00

Deposit accounts:

For establishing a deposit account

10.00

Service charge for each month when the balance at the end of the month
is below $1,000

25.00

Service charge for each month when the balance at the end of the month
is below $300 for restricted subscription deposit accounts used
exclusively for subscription order of patent copies as issued

25.00

Disclosure document: For filing a disclosure document

10.00

Delivery box: Local delivery box rental, per annum

50.00

International type search reports: For preparing an international type
search report of an international type search made at the time of the
first action on the merits in a national patent application

40.00

[Reserved]

Self-service copy charge, per page

0.25

For recording each assignment, agreement, or other paper relating to the
property in a patent or application, per property

40.00

Publication in Official Gazette: For publication in the Official Gazette
of a notice of the availability of an application or a patent for
licensing or sale:

Each application or patent

25.00

Labor charges for services, per hour or fraction thereof

40.00

For items and services that the Commissioner finds may be supplied, for
which fees are not specified by statute or by this part, such charges as
may be determined by the Commissioner with respect to each such item or
service

Actual cost

For processing and retaining any application abandoned pursuant to
Section &nbsp;1.53(f), unless the required basic filing fee (Section 
1.16) has been paid

130.00

For processing each check returned "unpaid" by a bank

50.00

For handling an application in which proceedings are terminated pursuant
to Section  1.53(e)

130.00

Marginal cost, paid in advance, for each hour of terminal session time,
including print time, using Automated Patent System full-text search
capabilities, prorated for the actual time used. The Commissioner may
waive the payment by an individual for access to the Automated Patent
System full-text search capability (APS-Text) upon a showing of need or
hardship and if such waiver is in the public interest

40.00

[Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984;
paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date
Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985;
paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 1989; 54 FR
8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989;
para. (n) added 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990;
paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990;
paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 13,
1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56 FR 65142,
Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6),
(b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct.
1, 1992; para. (p) added, 57 FR 38190, Aug. 21, 1992, effective Oct. 1,
1992; para. (p) deleted, 59 FR 43736, Aug. 25, 1994, effective Oct. 1,
1994; para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct.
1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised, 61 FR 39585, July 30,
1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j)
amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (l)
& (n) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.22 Fees payable in advance.

Patent and trademark fees and charges payable to the Patent and
Trademark Office are required to be paid in advance, that is, at the
time of requesting any action by the Office for which a fee or charge is
payable with the exception that under Section  1.53 applications for
patent may be assigned a filing date without payment of the basic filing
fee.

All patent and trademark fees paid to the Patent and Trademark Office
should be itemized in each individual application, patent, or other
proceeding in such a manner that it is clear for which purpose the fees
are paid.

[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.23 Method of payment.

All payments of money required for Patent and Trademark Office fees,
including fees for the processing of international applications (Section 
1.445), should be made in U.S. specie, Treasury notes, national bank
notes, post office money orders, or by certified check. If sent in any
other form, the Office may delay or cancel the credit until collection
is made. Money orders and checks must be made payable to the
Commissioner of Patents and Trademarks. Remittances from foreign
countries must be payable and immediately negotiable in the United
States for the full amount of the fee required. Money sent by mail to
the Patent and Trademark Office will be at the risk of the sender;
letters containing money should be registered.

[43 FR 20462, May 11, 1978]

---SECTION---1.24 Coupons.

Coupons in denominations of three dollars, for the purchase of patents,
designs, defensive publications, statutory invention registrations, and
trademark registrations are sold by the Patent and Trademark Office for
the convenience of the general public; these coupons may not be used for
any other purpose. The three-dollar coupons are sold individually and in
books of 50 for $150.00. These coupons are good until used; they may be
transferred but cannot be redeemed.

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2708, Jan.
20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985,
effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 56 FR 65142, Dec. 13,
1991, effective Dec. 16, 1991]

---SECTION---1.25 Deposit accounts.

For the convenience of attorneys, and the general public in paying any
fees due, in ordering services offered by the Office, copies of records,
etc. deposit accounts may be established in the Patent and Trademark
Office upon payment of the fee for establishing a deposit account
Section  1.21(b)(1)). A minimum deposit of $1,000 is required for paying
any fee due or in ordering any services offered by the Office. However,
a minimum deposit of $300 may be paid to establish a restricted
subscription deposit account used exclusively for subscription order of
patent copies as issued. At the end of each month, a deposit account
statement will be rendered. A remittance must be made promptly upon
receipt of the statement to cover the value of items or services charged
to the account and thus restore the account to its established normal
deposit value. An amount sufficient to cover all fees, services, copies,
etc., requested must always be on deposit. Charges to accounts with
insufficient funds will not be accepted. A service charge (Section 
1.21(b)(2)) will be assessed for each month that the balance at the end
of the month is below $1,000. For restricted subscription deposit
accounts, a service charge (Section  1.21(b)(3)) will be assessed for
each month that the balance at the end of the month is below $300.

Filing, issue, appeal, international-type search report, international
application processing, petition, and post-issuance fees may be charged
against these accounts if sufficient funds are on deposit to cover such
fees. A general authorization to charge all fees, or only certain fees,
set forth in Section Section  1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual application,
either for the entire pendency of the application or with respect to a
particular paper filed. An authorization to charge to a deposit account
the fee for a request for reexamination pursuant to Section  1.510 and
any other fees required in a reexamination proceeding in a patent may
also be filed with the request for reexamination. An authorization to
charge a fee to a deposit account will not be considered payment of the
fee on the date the authorization to charge the fee is effective as to
the particular fee to be charged unless sufficient funds are present in
the account to cover the fee.

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274, Sept. 17,
1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, effective Oct.
5, 1985]

---SECTION---1.26 Refunds.

Any fee paid by actual mistake or in excess of that required will be
refunded, but a mere change of purpose after the payment of money, as
when a party desires to withdraw an application, an appeal, or a request
for oral hearing, will not entitle a party to demand such a return.
Amounts of twenty-five dollars or less will not be returned unless
specifically requested within a reasonable time, nor will the payer be
notified of such amounts; amounts over twenty-five dollars may be
returned by check or, if requested, by credit to a deposit account.

[Reserved]

If the Commissioner decides not to institute a reexamination proceeding,
a refund of $1,690 will be made to the requester of the proceeding.
Reexamination requesters should indicate whether any refund should be
made by check or by credit to a deposit account.

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 Aug.
6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 1989,
effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991,
effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992,
effective Oct. 1,1992; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.27 Statement of status as small entity.

Any person seeking to establish status as a small entity (Section
&nbsp;1.9(f) of this part) for purposes of paying fees in an application
or a patent must file a statement in the application or patent prior to
or with the first fee paid as a small entity. Such a statement need only
be filed once in an application or patent and remains in effect until
changed.

When establishing status as a small entity pursuant to paragraph (a) of
this section, any statement filed on behalf of an independent inventor
must be signed by the independent inventor except as provided in Section 
1.42, Section  1.43, or Section  1.47 of this part and must state that
the inventor qualifies as an independent inventor in accordance with
Section  1.9(c) of this part. Where there are joint inventors in an
application, each inventor must file a statement establishing status as
an independent inventor in order to qualify as a small entity. Where any
rights have been assigned, granted, conveyed, or licensed, or there is
an obligation to assign, grant, convey, or license, any rights to a
small business concern, a nonprofit organization, or any other
individual, a statement must be filed by the individual, the owner of
the small business concern, or an official of the small business concern
or nonprofit organization empowered to act on behalf of the small
business concern or nonprofit organization identifying their status. For
purposes of a statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35&nbsp;U.S.C. 202(c)(4) does not constitute a license as set forth in
Section  1.9 of this part.

Any statement filed pursuant to paragraph (a) of this section on behalf
of a small business concern must:

Be signed by the owner or an official of the small business concern
empowered to act on behalf of the concern;

State that the concern qualifies as a small business concern as defined
in Section  1.9(d); and

State that the exclusive rights to the invention have been conveyed to
and remain with the small business concern or, if the rights are not
exclusive, that all other rights belong to small entities as defined in
Section  1.9.

Where the rights of the small business concern as a small entity are not
exclusive, a statement must also be filed by the other small entities
having rights stating their status as such. For purposes of a statement
under this paragraph, a license to a Federal agency resulting from a
funding agreement with that agency pursuant to 35&nbsp;U.S.C. 202(c)(4)
does not constitute a license as set forth in Section  1.9 of this part.

Any statement filed pursuant to paragraph (a) of this section on behalf
of a nonprofit organization must:

Be signed by an official of the nonprofit organization empowered to act
on behalf of the organization;

State that the organization qualifies as a nonprofit organization as
defined in Section  1.9(e) of this part specifying under which one of
Section  1.9(e)(1), (2), (3), or (4) of this part the organization
qualifies; and

State that exclusive rights to the invention have been conveyed to and
remain with the organization or if the rights are not exclusive that all
other rights belong to small entities as defined in Section  1.9 of this
part.

Where the rights of the nonprofit organization as a small entity are not
exclusive, a statement must also be filed by the other small entities
having rights stating their status as such. For purposes of a statement
under this paragraph, a license to a Federal agency pursuant to
35&nbsp;U.S.C. 202(c)(4) does not constitute a conveyance of rights as
set forth in this paragraph.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c)
added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553,
Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10,
1997, effective Dec.1, 1997]

---SECTION---1.28 Effect on fees of failure to establish status, or
change status, as a small entity.

The failure to establish status as a small entity (Section Section 
1.9(f) and 1.27 of this part) in any application or patent prior to
paying, or at the time of paying, any fee precludes payment of the fee
in the amount established for small entities. A refund pursuant to
Section  1.26 of this part, based on establishment of small entity
status, of a portion of fees timely paid in full prior to establishing
status as a small entity may only be obtained if a statement under
Section  1.27 and a request for a refund of the excess amount are filed
within two months of the date of the timely payment of the full fee. The
two-month time period is not extendable under Section  1.136. Status as
a small entity is waived for any fee by the failure to establish the
status prior to paying, at the time of paying, or within two months of
the date of payment of, the fee.

Status as a small entity must be specifically established in each
application or patent in which the status is available and desired.
Status as a small entity in one application or patent does not affect
any other application or patent, including applications or patents which
are directly or indirectly dependent upon the application or patent in
which the status has been established. The refiling of an application
under Section  1.53 as a continuation, division, or continuation-in-part
(including a continued prosecution application under Section  1.53(d)),
or the filing of a reissue application requires a new determination as
to continued entitlement to small entity status for the continuing or
reissue application. A nonprovisional application claiming benefit under
35&nbsp;U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a
reissue application may rely on a statement filed in the prior
application or in the patent if the nonprovisional application or the
reissue application includes a reference to the statement in the prior
application or in the patent or includes a copy of the statement in the
prior application or in the patent and status as a small entity is still
proper and desired. The payment of the small entity basic statutory
filing fee will be treated as such a reference for purposes of this
section.

Once status as a small entity has been established in an application or
patent, the status remains in that application or patent without the
filing of a further statement pursuant to Section  1.27 of this part
unless the Office is notified of a change in status.

Once status as a small entity has been established in an application or
patent, fees as a small entity may thereafter be paid in that
application or patent without regard to a change in status until the
issue fee is due or any maintenance fee is due. Notification of any
change in status resulting in loss of entitlement to small entity status
must be filed in the application or patent prior to paying, or at the
time of paying, the earliest of the issue fee or any maintenance fee due
after the date on which status as a small entity is no longer
appropriate pursuant to Section  1.9 of this part. The notification of
change in status may be signed by the applicant, any person authorized
to sign on behalf of the assignee, or an attorney or agent of record or
acting in a representative capacity pursuant to Section  1.34(a) of this
part.

If status as a small entity is established in good faith, and fees as a
small entity are paid in good faith, in any application or patent, and
it is later discovered that such status as a small entity was
established in error or that through error the Office was not notified
of a change in status as required by paragraph (b) of this section, the
error will be excused upon payment of the deficiency between the amount
paid and the amount due. The deficiency is based on the amount of the
fee, for other than a small entity, in effect at the time the deficiency
is paid in full.

Any attempt to fraudulently (i) establish status as a small entity or
(ii) pay fees as a small entity shall be considered as a fraud practiced
or attempted on the Office.

Improperly and with intent to deceive (i) Establishing status as a small
entity, or (ii) Paying fees as a small entity shall be considered as a
fraud practiced or attempted on the Office.

[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. (a),
49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR
2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c) revised,
62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997]

---SECTION---B National Processing Provisions

---SECTION---PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR
AGENT

---SECTION---1.31 Applicants may be represented by a registered attorney
or agent.

An applicant for patent may file and prosecute his or her own case, or
he or she may be represented by a registered attorney, registered agent,
or other individual authorized to practice before the Patent and
Trademark Office in patent cases. See Section Section  10.6 and 10.9 of
this subchapter. The Patent and Trademark Office cannot aid in the
selection of a registered attorney or agent.

[50 FR 5171, Feb. 6,1985, effective Mar. 8, 1985]

---SECTION---1.32 [Reserved]

[Deleted 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]

---SECTION---1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.

The applicant, the assignee(s) of the entire interest (see Section
Section &nbsp;3.71 and 3.73) or an attorney or agent of record (see
Section &nbsp;1.34(b)) may specify a correspondence address to which
communications about the application are to be directed. All notices,
official letters, and other communications in the application will be
directed to the correspondence address or, if no such correspondence
address is specified, to an attorney or agent of record (see Section
&nbsp;1.34(b)), or, if no attorney or agent is of record, to the
applicant, so long as a post office address has been furnished in the
application. Double correspondence with an applicant and an attorney or
agent, or with more than one attorney or agent, will not be undertaken.
If more than one attorney or agent is made of record and a
correspondence address has not been specified, correspondence will be
held with the one last made of record.

Amendments and other papers filed in the application must be signed by:

An attorney or agent of record appointed in compliance with Section 
1.34(b);

A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Section &nbsp;1.34(a);

The assignee of record of the entire interest, if there is an assignee
of record of the entire interest;

An assignee of record of an undivided part interest, and any assignee(s)
of the remaining interest and any applicant retaining an interest, if
there is an assignee of record of an undivided part interest; or

All of the applicants (Section Section  1.42, 1.43 and 1.47) for patent,
unless there is an assignee of record of the entire interest and such
assignee has taken action in the application in accordance with Section
Section  3.71 and 3.73.

All notices, official letters, and other communications for the patent
owner or owners in a reexamination proceeding will be directed to the
attorney or agent of record (see Section  1.34(b)) in the patent file at
the address listed on the register of patent attorneys and agents
maintained pursuant to Section Section  10.5 and 10.11 or, if no
attorney or agent is of record, to the patent owner or owners at the
address or addresses of record. Amendments and other papers filed in a
reexamination proceeding on behalf of the patent owner must be signed by
the patent owner, or if there is more than one owner by all the owners,
or by an attorney or agent of record in the patent file, or by a
registered attorney or agent not of record who acts in a representative
capacity under the provisions of Section  1.34(a). Double correspondence
with the patent owner or owners and the patent owner's attorney or
agent, or with more than one attorney or agent, will not be undertaken.
If more than one attorney or agent is of record and a correspondence
address has not been specified, correspondence will be held with the
last attorney or agent made of record.

A "correspondence address" or change thereto may be filed with the
Patent and Trademark Office during the enforceable life of the patent.
The "correspondence address" will be used in any correspondence relating
to maintenance fees unless a separate "fee address" has been specified.
See Section  1.363 for "fee address" used solely for maintenance fee
purposes.

[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added,
49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR
5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62
FR 53131, Oct. 10 1997, effective Dec. 1, 1997]

---SECTION---1.34 Recognition for representation.

When a registered attorney or agent acting in a representative capacity
appears in person or signs a paper in practice before the Patent and
Trademark Office in a patent case, his or her personal appearance or
signature shall constitute a representation to the Patent and Trademark
Office that under the provisions of this subchapter and the law, he or
she is authorized to represent the particular party in whose behalf he
or she acts. In filing such a paper, the registered attorney or agent
should specify his or her registration number with his or her signature.
Further proof of authority to act in a representative capacity may be
required.

When an attorney or agent shall have filed his or her power of attorney,
or authorization, duly executed by the person or persons entitled to
prosecute an application or a patent involved in a reexamination
proceeding, he or she is a principal attorney of record in the case. A
principal attorney or agent, so appointed, may appoint an associate
attorney or agent who shall also then be of record.

[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985,
effective Mar. 6, 1985]

---SECTION---1.36 Revocation of power of attorney or authorization;
withdrawal of attorney or agent.

A power of attorney or authorization of agent may be revoked at any
stage in the proceedings of a case, and an attorney or agent may
withdraw, upon application to and approval by the Commissioner. An
attorney or agent, except an associate attorney or agent whose address
is the same as that of the principal attorney or agent, will be notified
of the revocation of the power of attorney or authorization, and the
applicant or patent owner will be notified of the withdrawal of the
attorney or agent. An assignment will not of itself operate as a
revocation of a power or authorization previously given, but the
assignee of the entire interest may revoke previous powers and be
represented by an attorney or agent of the assignee's own selection. See
Section  1.613(d) for withdrawal of an attorney or agent of record in an
interference.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

---SECTION---WHO MAY APPLY FOR A PATENT

---SECTION---1.41 Applicant for patent.

A patent is applied for in the name or names of the actual inventor or
inventors.

The inventorship of a nonprovisional application is that inventorship
set forth in the oath or declaration as prescribed by Section  1.63,
except as provided for in Section  1.53(d)(4) and Section  1.63(d). If
an oath or declaration as prescribed by Section &nbsp;1.63 is not filed
during the pendency of a nonprovisional application, the inventorship is
that inventorship set forth in the application papers filed pursuant to
Section  1.53(b), unless a petition under this paragraph accompanied by
the fee set forth in Section &nbsp;1.17(i) is filed supplying or
changing the name or names of the inventor or inventors.

The inventorship of a provisional application is that inventorship set
forth in the cover sheet as prescribed by Section &nbsp;1.51(c)(1). If a
cover sheet as prescribed by Section  1.51(c)(1) is not filed during the
pendency of a provisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
Section  1.53(c), unless a petition under this paragraph accompanied by
the fee set forth in Section  1.17(q) is filed supplying or changing the
name or names of the inventor or inventors.

In a nonprovisional application filed without an oath or declaration as
prescribed by Section  1.63 or a provisional application filed without a
cover sheet as prescribed by Section  1.51(c)(1), the name or names of
person or persons believed to be the actual inventor or inventors should
be provided for identification purposes when the application papers
pursuant to Section  1.53(b) or (c) are filed. If no name of a person
believed to be an actual inventor is so provided, the application should
include an applicant identifier consisting of alphanumeric characters.

Unless the contrary is indicated the word "applicant" when used in these
sections refers to the inventor or joint inventors who are applying for
a patent, or to the person mentioned in Section Section  1.42, 1.43 or
1.47 who is applying for a patent in place of the inventor.

Any person authorized by the applicant may file an application for
patent on behalf of the inventor or inventors, but an oath or
declaration for the application (Section  1.63) can only be made in
accordance with Section  1.64.

A showing may be required from the person filing the application that
the filing was authorized where such authorization comes into question.

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.42 When the inventor is dead.

In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may make the
necessary oath or declaration, and apply for and obtain the patent.
Where the inventor dies during the time intervening between the filing
of the application and the granting of a patent thereon, the letters
patent may be issued to the legal representative upon proper
intervention.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.43 When the inventor is insane or legally incapacitated.

In case an inventor is insane or otherwise legally incapacitated, the
legal representative (guardian, conservator, etc.) of such inventor may
make the necessary oath or declaration, and apply for and obtain the
patent.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.44 Proof of authority.

In the cases mentioned in Section Section  1.42 and 1.43, proof of the
power or authority of the legal representative must be recorded in the
Patent and Trademark Office or filed in the application before the grant
of a patent.

---SECTION---1.45 Joint inventors.

Joint inventors must apply for a patent jointly and each must make the
required oath or declaration: neither of them alone, nor less than the
entire number, can apply for a patent for an invention invented by them
jointly, except as provided in Section  1.47.

Inventors may apply for a patent jointly even though

They did not physically work together or at the same time,

Each inventor did not make the same type or amount of contribution, or

Each inventor did not make a contribution to the subject matter of every
claim of the application.

If multiple inventors are named in a nonprovisional application, each
named inventor must have made a contribution, individually or jointly,
to the subject matter of at least one claim of the application and the
application will be considered to be a joint application under 35 U.S.C.
116. If multiple inventors are named in a provisional application, each
named inventor must have made a contribution, individually or jointly,
to the subject matter disclosed in the provisional application and the
provisional application will be considered to be a joint application
under 35 U.S.C. 116.

[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1,
1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR 9379,
Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.46 Assigned inventions and patents.

In case the whole or a part interest in the invention or in the patent
to be issued is assigned, the application must still be made or
authorized to be made, and an oath or declaration signed, by the
inventor or one of the persons mentioned in Section Section  1.42, 1.43,
or 1.47. However, the patent may be issued to the assignee or jointly to
the inventor and the assignee as provided in Section 3.81.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July
6, 1992, effective Sept. 4, 1992]

---SECTION---1.47 Filing when an inventor refuses to sign or cannot be
reached.

If a joint inventor refuses to join in an application for patent or
cannot be found or reached after diligent effort, the application may be
made by the other inventor on behalf of himself or herself and the
nonsigning inventor. The oath or declaration in such an application must
be accompanied by a petition including proof of the pertinent facts, the
fee set forth in Section  1.17(i) and the last known address of the
nonsigning inventor. The Patent and Trademark Office shall, except in a
continued prosecution application under Section  1.53(d), forward notice
of the filing of the application to the nonsigning inventor at said
address and publish notice of the filing of the application in the
Official Gazette. The nonsigning inventor may subsequently join in the
application on filing an oath or declaration complying with Section 
1.63.

Whenever all of the inventors refuse to execute an application for
patent, or cannot be found or reached after diligent effort, a person to
whom an inventor has assigned or agreed in writing to assign the
invention or who otherwise shows sufficient proprietary interest in the
matter justifying such action may make application for patent on behalf
of and as agent for all the inventors. The oath or declaration in such
an application must be accompanied by a petition including proof of the
pertinent facts, a showing that such action is necessary to preserve the
rights of the parties or to prevent irreparable damage, the fee set
forth in Section  1.17(i), and the last known address of all of the
inventors. The Office shall, except in a continued prosecution
application under Section  1.53(d), forward notice of the filing of the
application to all of the inventors at the addresses stated in the
application and publish notice of the filing of the application in the
Official Gazette. An inventor may subsequently join in the application
on filing an oath or declaration complying with Section  1.63.

[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan.
20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.48 Correction of inventorship in a patent application,
other than a reissue application.

If the inventive entity is set forth in error in an executed Section 
1.63 oath or declaration in an application, other than a reissue
application, and such error arose without any deceptive intention on the
part of the person named as an inventor in error or on the part of the
person who through error was not named as an inventor, the application
may be amended to name only the actual inventor or inventors. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under Section  1.634. Such amendment must be accompanied by:

A petition including a statement from each person being added as an
inventor and from each person being deleted as an inventor that the
error in inventorship occurred without deceptive intention on his or her
part;

An oath or declaration by the actual inventor or inventors as required
by Section  1.63 or as permitted by Section Section  1.42, 1.43 or 1.47;

The fee set forth in Section  1.17(i); and

If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section
&nbsp;3.73(b)).

If the correct inventors are named in a nonprovisional application,
other than a reissue application, and the prosecution of the application
results in the amendment or cancellation of claims so that fewer than
all of the currently named inventors are the actual inventors of the
invention being claimed in the application, an amendment must be filed
deleting the name or names of the person or persons who are not
inventors of the invention being claimed. When the application is
involved in an interference, the amendment must comply with the
requirements of this section and must be accompanied by a motion under
Section  1.634. Such amendment must be accompanied by:

A petition including a statement identifying each named inventor who is
being deleted and acknowledging that the inventor's invention is no
longer being claimed in the application; and

The fee set forth in Section  1.17(i).

If a nonprovisional application, other than a reissue application,
discloses unclaimed subject matter by an inventor or inventors not named
in the application, the application may be amended to add claims to the
subject matter and name the correct inventors for the application. When
the application is involved in an interference, the amendment must
comply with the requirements of this section and must be accompanied by
a motion under Section  1.634. Such amendment must be accompanied by:

A petition including a statement from each person being added as an
inventor that the amendment is necessitated by amendment of the claims
and that the inventorship error occurred without deceptive intention on
his or her part;

An oath or declaration by the actual inventor or inventors as required
by Section  1.63 or as permitted by Section Section  1.42, 1.43 or 1.47;

The fee set forth in Section  1.17(i); and

If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section  3.73(b)).

If the name or names of an inventor or inventors were omitted in a
provisional application through error without any deceptive intention on
the part of the omitted inventor or inventors, the provisional
application may be amended to add the name or names of the omitted
inventor or inventors. Such amendment must be accompanied by:

A petition including a statement that the inventorship error occurred
without deceptive intention on the part of the omitted inventor or
inventors; and

The fee set forth in Section  1.17(q).

If a person or persons were named as an inventor or inventors in a
provisional application through error without any deceptive intention on
the part of such person or persons, an amendment may be filed in the
provisional application deleting the name or names of the person or
persons who were erroneously named. Such amendment must be accompanied
by:

A petition including a statement by the person or persons whose name or
names are being deleted that the inventorship error occurred without
deceptive intention on the part of such person or persons;

The fee set forth in Section  1.17(q); and

If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Section
&nbsp;3.73(b)).

If the correct inventor or inventors are not named on filing a
nonprovisional application under Section  1.53(b) without an executed
oath or declaration under Section  1.63, the later submission of an
executed oath or declaration under Section  1.63 during the pendency of
the application will act to correct the earlier identification of
inventorship.

If the correct inventor or inventors are not named on filing a
provisional application without a cover sheet under Section  1.51(c)(1),
the later submission of a cover sheet under Section  1.51(c)(1) during
the pendency of the application will act to correct the earlier
identification of inventorship.

The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, effective
May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4,
1993; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---THE APPLICATION

---SECTION---1.51 General requisites of an application.

Applications for patents must be made to the Commissioner of Patents and
Trademarks.

A complete application filed under Section &nbsp;1.53(b) comprises:

A specification as prescribed by 35&nbsp;U.S.C. 112, including a claim
or claims, see Section Section &nbsp;1.71 to 1.77;

An oath or declaration, see Section &nbsp;1.63 and Section &nbsp;1.68;

Drawings, when necessary, see Section Section &nbsp;1.81 to 1.85; and

The prescribed filing fee, see Section &nbsp;1.16.

A complete provisional application filed under Section &nbsp;1.53(c)
comprises:

A cover sheet identifying:

The application as a provisional application,

The name or names of the inventor or inventors, (see Section
&nbsp;1.41(a)(2)),

The residence of each named inventor,

The title of the invention,

The name and registration number of the attorney or agent (if
applicable),

The docket number used by the person filing the application to identify
the application (if applicable),

The correspondence address, and

The name of the U.S. Government agency and Government contract number
(if the invention was made by an agency of the U.S. Government or under
a contract with an agency of the U.S. Government);

A specification as prescribed by the first paragraph of 35&nbsp;U.S.C.
112, see Section  1.71;

Drawings, when necessary, see Section Section &nbsp;1.81 to 1.85; and

The prescribed filing fee, see Section  1.16.

Applicants are encouraged to file an information disclosure statement in
nonprovisional applications. See Section &nbsp;1.97 and Section
&nbsp;1.98. No information disclosure statement may be filed in a
provisional application.

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41275, Sept. 17,
1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709, Jan. 20,
1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25,
1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.52 Language, paper, writing, margins.

The application, any amendments or corrections thereto, and the oath or
declaration must be in the English language except as provided for in
Section &nbsp;1.69 and paragraph (d) of this section, or be accompanied
by a translation of the application and a translation of any corrections
or amendments into the English language together with a statement that
the translation is accurate. All papers which are to become a part of
the permanent records of the Patent and Trademark Office must be legibly
written either by a typewriter or mechanical printer in permanent dark
ink or its equivalent in portrait orientation on flexible, strong,
smooth, non-shiny, durable, and white paper. All of the application
papers must be presented in a form having sufficient clarity and
contrast between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic reproduction by use of digital imaging and optical
character recognition. If the papers are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required. See Section &nbsp;1.125 for filing substitute
typewritten or mechanically printed papers constituting a substitute
specification when required by the Office.

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 Section Section &nbsp;1.72(b) and 1.75(h). The
sheets of paper must be the same size and either 21.0&nbsp;cm. by
29.7&nbsp;cm. (DIN size A4) or 21.6&nbsp;cm. by 27.9&nbsp;cm. (8 1/2 by
11&nbsp;inches). Each sheet must include a top margin of at least
2.0&nbsp;cm. (3/4&nbsp;inch), a left side margin of at least
2.5&nbsp;cm. (1&nbsp;inch), a right side margin of at least 2.0&nbsp;cm.
(3/4&nbsp;inch), and a bottom margin of at least 2.0&nbsp;cm.
(3/4&nbsp;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 Section &nbsp;1.84 for drawings.

Any interlineation, erasure, cancellation or other alteration of the
application papers filed should be made on or before the signing of any
accompanying oath or declaration pursuant to Section  1.63 referring to
those application papers and should be dated and initialed or signed by
the applicant on the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under Section  1.67(c). After the signing of the oath or
declaration referring to the application papers, amendments may only be
made in the manner provided by Section  1.121.

An application may be filed in a language other than English. An English
translation of the non-English-language application, a statement that
the translation is accurate, and the fee set forth in Section  1.17(k)
are required to be filed with the application or within such time as may
be set by the Office.

[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41275, Sept. 17,
1982, effective Oct. 1, 1982; para. (c), 48 FR 2709, Jan. 20, 1983,
effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984, effective
Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16,
1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.53 Application number, filing date, and completion of
application.

Application number. Any papers received in the Patent and Trademark
Office which purport to be an application for a patent will be assigned
an application number for identification purposes.

Application filing requirements - Nonprovisional application. The filing
date of an application for patent filed under this section, except for a
provisional application under paragraph (c) of this section or a
continued prosecution application under paragraph (d) of this section,
is the date on which a specification as prescribed by 35&nbsp;U.S.C. 112
containing a description pursuant to Section  1.71 and at least one
claim pursuant to Section  1.75, and any drawing required by Section 
1.81(a) are filed in the Patent and Trademark Office. No new matter may
be introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or
continuation-in-part application, may be filed under the conditions
specified in 35&nbsp;U.S.C. 120, 121 or 365(c) and Section  1.78(a).

A continuation or divisional application that names as inventors the
same or fewer than all of the inventors named in the prior application
may be filed under this paragraph or paragraph (d) of this section.

A continuation-in-part application (which may disclose and claim subject
matter not disclosed in the prior application) or a continuation or
divisional application naming an inventor not named in the prior
application must be filed under this paragraph.

Application filing requirements - Provisional application. The filing
date of a provisional application is the date on which a specification
as prescribed by the first paragraph of 35&nbsp;U.S.C. 112, and any
drawing required by Section &nbsp;1.81(a) are filed in the Patent and
Trademark Office. No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the filing
date of the provisional application.

A provisional application must also include the cover sheet required by
Section  1.51(c)(1) or a cover letter identifying the application as a
provisional application. Otherwise, the application will be treated as
an application filed under paragraph (b) of this section.

An application for patent filed under paragraph (b) of this section may
be converted to a provisional application and be accorded the original
filing date of the application filed under paragraph (b) of this
section,

Provided that a petition requesting the conversion, with the fee set
forth in Section  1.17(q), is filed prior to the earliest of:

Abandonment of the application filed under paragraph (b) of this
section;

Payment of the issue fee on the application filed under paragraph (b) of
this section;

Expiration of twelve months after the filing date of the application
filed under paragraph (b) of this section; or

The filing of a request for a statutory invention registration under
Section  1.293 in the application filed under paragraph (b) of this
section.

The grant of any such petition will not entitle applicant to a refund of
the fees which were properly paid in the application filed under
paragraph (b) of this section.

A provisional application is not entitled to the right of priority under
35&nbsp;U.S.C. 119 or 365(a) or Section &nbsp;1.55, or to the benefit of
an earlier filing date under 35&nbsp;U.S.C. 120, 121 or 365(c) or
Section  1.78 of any other application. No claim for priority under
Section &nbsp;1.78(a)(3) may be made in a design application based on a
provisional application. No request under Section  1.293 for a statutory
invention registration may be filed in a provisional application. The
requirements of Section Section  1.821 through 1.825 regarding
application disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.

Application filing requirements - Continued prosecution (nonprovisional)
application.

A continuation or divisional application (but not a
continuation-in-part) of a prior nonprovisional application may be filed
as a continued prosecution application under this paragraph, provided
that:

The prior nonprovisional application is either:

Complete as defined by Section  1.51(b) ; or

The national stage of an international application in compliance with
35&nbsp;U.S.C. 371; and

The application under this paragraph is filed before the earliest of:

Payment of the issue fee on the prior application, unless a petition
under Section  1.313(b)(5) is granted in the prior application;

Abandonment of the prior application; or

Termination of proceedings on the prior application.

The filing date of a continued prosecution application is the date on
which a request on a separate paper for an application under this
paragraph is filed. An application filed under this paragraph:

Must identify the prior application;

Discloses and claims only subject matter disclosed in the prior
application;

Names as inventors the same inventors named in the prior application on
the date the application under this paragraph was filed, except as
provided in paragraph (d)(4) of this section;

Includes the request for an application under this paragraph, will
utilize the file jacket and contents of the prior application, including
the specification, drawings and oath or declaration from the prior
application, to constitute the new application, and will be assigned the
application number of the prior application for identification purposes;
and

Is a request to expressly abandon the prior application as of the filing
date of the request for an application under this paragraph.

The filing fee for a continued prosecution application filed under this
paragraph is:

The basic filing fee as set forth in Section  1.16; and

Any additional Section &nbsp;1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Section &nbsp;1.116 unentered in the prior application
which applicant has requested to be entered in the continued prosecution
application.

An application filed under this paragraph may be filed by fewer than all
the inventors named in the prior application, provided that the request
for an application under this paragraph when filed is accompanied by a
statement requesting deletion of the name or names of the person or
persons who are not inventors of the invention being claimed in the new
application. No person may be named as an inventor in an application
filed under this paragraph who was not named as an inventor in the prior
application on the date the application under this paragraph was filed,
except by way of a petition under Section  1.48.

Any new change must be made in the form of an amendment to the prior
application as it existed prior to the filing of an application under
this paragraph. No amendment in an application under this paragraph (a
continued prosecution application) may introduce new matter or matter
that would have been new matter in the prior application. Any new
specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Section  1.125.

The filing of a continued prosecution application under this paragraph
will be construed to include a waiver of confidentiality by the
applicant under 35&nbsp;U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Section  1.14 to access
to, copies of, or information concerning either the prior application or
any continuing application filed under the provisions of this paragraph,
may be given similar access to, copies of, or similar information
concerning the other application or applications in the file jacket.

A request for an application under this paragraph is the specific
reference required by 35&nbsp;U.S.C. 120 to every application assigned
the application number identified in such request. No amendment in an
application under this paragraph may delete this specific reference to
any prior application.

In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:

Title of invention;

Name of applicant(s); and

Correspondence address.

Envelopes containing only requests and fees for filing an application
under this paragraph should be marked "Box CPA." Requests for an
application under this paragraph filed by facsimile transmission should
be clearly marked "Box CPA."

Failure to meet filing date requirements.

If an application deposited under paragraph (b), (c), or (d) of this
section does not meet the requirements of such paragraph to be entitled
to a filing date, applicant will be so notified, if a correspondence
address has been provided, and given a time period within which to
correct the filing error.

Any request for review of a notification pursuant to paragraph (e)(1) of
this section, or a notification that the original application papers
lack a portion of the specification or drawing(s), must be by way of a
petition pursuant to this paragraph. Any petition under this paragraph
must be accompanied by the fee set forth in Section  1.17(i) in an
application filed under paragraphs (b) or (d) of this section, and the
fee set forth in Section  1.17(q) in an application filed under
paragraph (c) of this section. In the absence of a timely (Section 
1.181(f)) petition pursuant to this paragraph, the filing date of an
application in which the applicant was notified of a filing error
pursuant to paragraph (e)(1) of this section will be the date the filing
error is corrected.

If an applicant is notified of a filing error pursuant to paragraph
(e)(1) of this section, but fails to correct the filing error within the
given time period or otherwise timely (Section &nbsp;1.181(f)) take
action pursuant to this paragraph, proceedings in the application will
be considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in Section
&nbsp;1.21(n), will be refunded.

Completion of application subsequent to filing - Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to Section  1.63 or Section 
1.175, or, if an application which has been accorded a filing date
pursuant to paragraph (d) of this section does not include the
appropriate filing fee, applicant will be so notified, if a
correspondence address has been provided, and given a period of time
within which to file the fee, oath or declaration, and the surcharge as
set forth in Section  1.16(e) in order to prevent abandonment of the
application. See Section  1.63(d) concerning the submission of a copy of
the oath or declaration from the prior application for a continuation or
divisional application. If the required filing fee is not timely paid,
or if the processing and retention fee set forth in Section  1.21(l) is
not paid within one year of the date of mailing of the notification
required by this paragraph, the application may be disposed of. The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (e) of this section. If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, the oath or
declaration in an application under paragraph (b) of this section, and
the surcharge as set forth in Section  1.16(e) in order to prevent
abandonment of the application; or, if no basic filing fee has been
paid, one year from the filing date to pay the processing and retention
fee set forth in Section &nbsp;1.21(l) to prevent disposal of the
application.

Completion of application subsequent to filing -Provisional application.
If a provisional application which has been accorded a filing date
pursuant to paragraph (c) of this section does not include the
appropriate filing fee or the cover sheet required by Section
&nbsp;1.51(c)(1), applicant will be so notified, if a correspondence
address has been provided, and given a period of time within which to
file the fee, cover sheet, and the surcharge as set forth in Section 
1.16(l) in order to prevent abandonment of the application. If the
required filing fee is not timely paid, the application may be disposed
of. The notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph (e) of this
section. If no correspondence address is included in the application,
applicant has two months from the filing date to file the basic filing
fee, cover sheet, and the surcharge as set forth in Section  1.16(l) in
order to prevent abandonment of the application.

Subsequent treatment of application - Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that certain minor
informalities may be waived subject to subsequent correction whenever
required.

Subsequent treatment of application - Provisional application. A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to
35&nbsp;U.S.C. 111(b)(1).

Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in 35&nbsp;U.S.C. 102(e).

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (d),
49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 31826,
Aug. 6, 1985, effective Oct. 5, 1985; paras. (c) and (d), 53 FR 47808,
Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518,
Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct.
10 ,1997, effective Dec. 1, 1997; para. (d) revised, 63 FR 5734, Feb. 4,
1998, effective Feb. 4, 1998]

---SECTION---1.54 Parts of application to be filed together; filing
receipt.

It is desirable that all parts of the complete application be deposited
in the Office together; otherwise, a letter must accompany each part,
accurately and clearly connecting it with the other parts of the
application. See&nbsp;Section &nbsp;1.53(f) and (g) with regard to
completion of an application.

Applicant will be informed of the application number and filing date by
a filing receipt, unless the application is an application filed under
Section  1.53(d).

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) amended,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.55 Claim for foreign priority.

An applicant in a nonprovisional application may claim the benefit of
the filing date of one or more prior foreign applications under the
conditions specified in 35&nbsp;U.S.C. 119(a) through (d) and 172. The
claim to priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to in the oath
or declaration as required by Section  1.63. The claim for priority and
the certified copy of the foreign application specified in
35&nbsp;U.S.C. 119(b) must be filed in the case of an interference
(Section  1.630), when necessary to overcome the date of a reference
relied upon by the examiner, when specifically required by the examiner,
and in all other situations, before the patent is granted. If the claim
for priority or the certified copy of the foreign application is filed
after the date the issue fee is paid, it must be accompanied by a
petition requesting entry and by the fee set forth in Section  1.17(i).
If the certified copy is not in the English language, a translation need
not be filed except in the case of interference; or when necessary to
overcome the date of a reference relied upon by the examiner; or when
specifically required by the examiner, in which event an English
language translation must be filed together with a statement that the
translation of the certified copy is accurate.

An applicant in a nonprovisional application may under certain
circumstances claim priority on the basis of one or more applications
for an inventor's certificate in a country granting both inventor's
certificates and patents. To claim the right of priority on the basis of
an application for an inventor's certificate in such a country under 35
U.S.C. 119(d), the applicant when submitting a claim for such right as
specified in paragraph (a) of this section, shall include an affidavit
or declaration. The affidavit or declaration must include a specific
statement that, upon an investigation, he or she is satisfied that to
the best of his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option to file an
application for either a patent or an inventor's certificate as to the
subject matter of the identified claim or claims forming the basis for
the claim of priority.

[para. (b), 48 FR 41275, Sept. 17, 1982, effective Oct. 1 1982; 48 FR
2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 49 FR 554, Jan.
4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective
Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, effective
Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 1989, effective Jan. 16,
1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995; para.
(a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.56 Duty to disclose information material to
patentability.

A patent by its very nature is affected with a public interest. The
public interest is best served, and the most effective patent
examination occurs when, at the time an application is being examined,
the Office is aware of and evaluates the teachings of all information
material to patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor and good
faith in dealing with the Office, which includes a duty to disclose to
the Office all information known to that individual to be material to
patentability as defined in this section. The duty to disclose
information exists with respect to each pending claim until the claim is
cancelled or withdrawn from consideration, or the application becomes
abandoned. Information material to the patentability of a claim that is
cancelled or withdrawn from consideration need not be submitted if the
information is not material to the patentability of any claim remaining
under consideration in the application. There is no duty to submit
information which is not material to the patentability of any existing
claim. The duty to disclose all information known to be material to
patentability is deemed to be satisfied if all information known to be
material to patentability of any claim issued in a patent was cited by
the Office or submitted to the Office in the manner prescribed by
Section Section  1.97(b)-(d) and 1.98. However, no patent will be
granted on an application in connection with which fraud on the Office
was practiced or attempted or the duty of disclosure was violated
through bad faith or intentional misconduct. The Office encourages
applicants to carefully examine:

Prior art cited in search reports of a foreign patent office in a
counterpart application, and

The closest information over which individuals associated with the
filing or prosecution of a patent application believe any pending claim
patentably defines, to make sure that any material information contained
therein is disclosed to the Office.

Under this section, information is material to patentability when it is
not cumulative to information already of record or being made of record
in the application, and

It establishes, by itself or in combination with other information, a
prima facie case of unpatentability of a claim; or

It refutes, or is inconsistent with, a position the applicant takes in:

Opposing an argument of unpatentability relied on by the Office, or

Asserting an argument of patentability.

A prima facie case of unpatentability is established when the
information compels a conclusion that a claim is unpatentable under the
preponderance of evidence, burden-of-proof standard, giving each term in
the claim its broadest reasonable construction consistent with the
specification, and before any consideration is given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.

Individuals associated with the filing or prosecution of a patent
application within the meaning of this section are:

Each inventor named in the application;

Each attorney or agent who prepares or prosecutes the application; and

Every other person who is substantively involved in the preparation or
prosecution of the application and who is associated with the inventor,
with the assignee or with anyone to whom there is an obligation to
assign the application.

Individuals other than the attorney, agent or inventor may comply with
this section by disclosing information to the attorney, agent, or
inventor.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19,
1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20, 1983,
effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984,
effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985,
effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective
Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]

---SECTION---1.57 [Reserved]

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.58 Chemical and mathematical formulae and tables.

The specification, including the claims, may contain chemical and
mathematical formulas, but shall not contain drawings or flow diagrams.
The description portion of the specification may contain tables; claims
may contain tables either if necessary to conform to 35 U.S.C. 112 or if
otherwise found to be desirable.

[Reserved]

Chemical and mathematical formulae and tables must be presented in
compliance with Section &nbsp;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&nbsp;cm. (0.08&nbsp;inch) high (e.g.,
elite type). A space at least 0.64&nbsp;cm. (1/4&nbsp;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.

[43 FR 20463, May 11, 1978; para. (b) removed and reserved, para. (c)
amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.59 Expungement of information or copy of papers in
application file.

Information in an application will not be expunged and returned, except
as provided in paragraph (b) of this section. See Section &nbsp;1.618
for return of unauthorized and improper papers in interferences.

Information forming part of the original disclosure (i.e., written
specification including the claims, drawings, and any preliminary
amendment specifically incorporated into an executed oath or declaration
under Section Section &nbsp;1.63 and 1.175) will not be expunged from
the application file.

Information, other than what is excluded by paragraph (a)(2) of this
section, may be requested to be expunged and returned to applicant upon
petition under this paragraph and payment of the petition fee set forth
in Section &nbsp;1.17(i). Any petition to expunge and return information
from an application must establish to the satisfaction of the
Commissioner that the return of the information is appropriate.

Upon request by an applicant and payment of the fee specified in Section
&nbsp;1.19(b), the Office will furnish copies of an application, unless
the application has been disposed of (see Section &nbsp;1.53(e), (f) and
(g)). The Office cannot provide or certify copies of an application that
has been disposed of.

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4,
1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb.
11, 1985; 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.60 [Reserved]

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4,
1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective May 8,
1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989, effective
Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added, 57 FR 56446,
Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.61 [Reserved]

(Editor's note: Substance moved to Section  1.494)

[52 FR 20046, May 28, 1987, effective July 1, 1987]

---SECTION---1.62 [Reserved]

[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48 FR 2710,
Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d), 49 FR
555, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h), 50
FR 9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54 FR
47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) and (e)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (f)
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---OATH OR DECLARATION

---SECTION---1.63 Oath or declaration.

An oath or declaration filed under Section &nbsp;1.51(b)(2) as a part of
an application must:

Be executed in accordance with either Section &nbsp;1.66 or Section
&nbsp;1.68;

Identify the specification to which it is directed;

Identify each inventor by: full name, including the family name, and at
least one given name without abbreviation together with any other given
name or initial, and the residence, post office address and country of
citizenship of each inventor; and

State whether the inventor is a sole or joint inventor of the invention
claimed.

In addition to meeting the requirements of paragraph (a), the oath or
declaration must state that the person making the oath or declaration:

Has reviewed and understands the contents of the specification,
including the claims, as amended by any amendment specifically referred
to in 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; and

Acknowledges the duty to disclose to the Office all information known to
the person to be material to patentability as defined in Section  1.56.

In addition to meeting the requirements of paragraphs (a) and (b) of
this section, the oath or declaration in any application in which a
claim for foreign priority is made pursuant to Section  1.55 must
identify the foreign application for patent or inventor's certificate on
which priority is claimed and 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.

A newly executed oath or declaration is not required under Section 
1.51(b)(2) and Section &nbsp;1.53(f) in a continuation or divisional
application, provided that:

The prior nonprovisional application contained an oath or declaration as
prescribed by paragraphs (a) through (c) of this section;

The continuation or divisional application was filed by all or by fewer
than all of the inventors named in the prior application;

The specification and drawings filed in the continuation or divisional
application contain no matter that would have been new matter in the
prior application; and

A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.

The copy of the executed oath or declaration submitted under this
paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.

Where the executed oath or declaration of which a copy is submitted for
a continuation or divisional application was originally filed in a prior
application accorded status under Section &nbsp;1.47, the copy of the
executed oath or declaration for such prior application must be
accompanied by:

A copy of the decision granting a petition to accord Section &nbsp;1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under Section &nbsp;1.47 of which the
continuation or divisional application claims a benefit under
35&nbsp;U.S.C. 120, 121, or 365(c); and

If one or more inventor(s) or legal representative(s) who refused to
join in the prior application or could not be found or reached has
subsequently joined in the prior application or another application of
which the continuation or divisional application claims a benefit under
35&nbsp;U.S.C. 120, 121, or 365(c), a copy of the subsequently executed
oath(s) or declaration(s) filed by the inventor or legal representative
to join in the application.

Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of agent)
or correspondence address must be identified in the continuation or
divisional application. Otherwise, the Office may not recognize in the
continuation or divisional application the change of power of attorney
(or authorization of agent) or correspondence address during the
prosecution of the prior application.

A newly executed oath or declaration must be filed in a continuation or
divisional application naming an inventor not named in the prior
application.

A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application. The
oath or declaration in any continuation-in-part application must also
state that the person making the oath or declaration acknowledges the
duty to disclose to the Office all information known to the person to be
material to patentability as defined in Section  1.56 which became
available between the filing date of the prior application and the
national or PCT international filing date of the continuation-in-part
application.

[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285,
Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.64 Person making oath or declaration.

The oath or declaration must be made by all of the actual inventors
except as provided for in Section Section  1.42, 1.43, or 1.47.

If the person making the oath or declaration is not the inventor
(Section Section  1.42, 1.43, or 1.47), the oath or declaration shall
state the relationship of the person to the inventor and, upon
information and belief, the facts which the inventor is required to
state.

[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983]

---SECTION---1.66 Officers authorized to administer oaths.

The oath or affirmation may be made before any person within the United
States authorized by law to administer oaths. An oath made in a foreign
country may be made before any diplomatic or consular officer of the
United States authorized to administer oaths, or before any officer
having an official seal and authorized to administer oaths in the
foreign country in which the applicant may be, whose authority shall be
proved by a certificate of a diplomatic or consular officer of the
United States, or by an apostille of an official designated by a foreign
country which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States. The oath shall
be attested in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or affirmation is
made. Such oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where made. When the
person before whom the oath or affirmation is made in this country is
not provided with a seal, his official character shall be established by
competent evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal.

When the oath is taken before an officer in a country foreign to the
United States, any accompanying application papers, except the drawings,
must be attached together with the oath and a ribbon passed one or more
times through all the sheets of the application, except the drawings,
and the ends of said ribbon brought together under the seal before the
latter is affixed and impressed, or each sheet must be impressed with
the official seal of the officer before whom the oath is taken. If the
papers as filed are not properly ribboned or each sheet impressed with
the seal, the case will be accepted for examination, but before it is
allowed, duplicate papers, prepared in compliance with the foregoing
sentence, must be filed.

[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982]

---SECTION---1.67 Supplemental oath or declaration.

A supplemental oath or declaration meeting the requirements of Section 
1.63 may be required to be filed to correct any deficiencies or
inaccuracies present in an earlier filed oath or declaration.

A supplemental oath or declaration meeting the requirements of Section 
1.63 must be filed when a claim is presented for matter originally shown
or described but not substantially embraced in the statement of
invention or claims originally presented or when an oath or declaration
submitted in accordance with Section  1.53(f) after the filing of the
specification and any required drawings specifically and improperly
refers to an amendment which includes new matter. No new matter may be
introduced into a nonprovisional application after its filing date even
if a supplemental oath or declaration is filed. In proper situations,
the oath or declaration here required may be made on information and
belief by an applicant other than the inventor.

A supplemental oath or declaration meeting the requirements of Section 
1.63 must also be filed if the application was altered after the oath or
declaration was signed or if the oath or declaration was signed:

In blank;

Without review thereof by the person making the oath or declaration; or

Without review of the specification, including the claims, as required
by Section  1.63(b)(1).

[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57
FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60
FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.68 Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is
required by any law, rule, or other regulation to be under oath may be
subscribed to by a written declaration. Such declaration may be used in
lieu of the oath otherwise required, if, and only if, the declarant is
on the same document, warned that willful false statements and the like
are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may
jeopardize the validity of the application or any patent issuing
thereon. The declarant must set forth in the body of the declaration
that all statements made of the declarant's own knowledge are true and
that all statements made on information and belief are believed to be
true.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

---SECTION---1.69 Foreign language oaths and declarations.

Whenever an individual making an oath or declaration cannot understand
English, the oath or declaration must be in a language that such
individual can understand and shall state that such individual
understands the content of any documents to which the oath or
declaration relates.

Unless the text of any oath or declaration in a language other than
English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by an English translation together with a
statement that the translation is accurate, except that in the case of
an oath or declaration filed under Section  1.63, the translation may be
filed in the Office no later than two months from the date applicant is
notified to file the translation.

[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 20, 1983,
effective Feb. 27, 1983; para. (b) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.70 [Reserved]

(Editor's note: Substance moved to Section  1.497)

[52 FR 20046, May 28, 1987, effective July 1, 1987]

---SECTION---SPECIFICATION

---SECTION---1.71 Detailed description and specification of the
invention.

The specification must include a written description of the invention or
discovery and of the manner and process of making and using the same,
and is required to be in such full, clear, concise, and exact terms as
to enable any person skilled in the art or science to which the
invention or discovery appertains, or with which it is most nearly
connected, to make and use the same.

The specification must set forth the precise invention for which a
patent is solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe completely a specific
embodiment of the process, machine, manufacture, composition of matter
or improvement invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated by the
inventor of carrying out his invention must be set forth.

In the case of an improvement, the specification must particularly point
out the part or parts of the process, machine, manufacture, or
composition of matter to which the improvement relates, and the
description should be confined to the specific improvement and to such
parts as necessarily cooperate with it or as may be necessary to a
complete understanding or description of it.

A copyright or mask work notice may be placed in a design or utility
patent application adjacent to copyright and mask work material
contained therein. The notice may appear at any appropriate portion of
the patent application disclosure. For notices in drawings, see Section 
1.84(s). The content of the notice must be limited to only those
elements provided for by law. For example, "&copy;1983 John Doe"(17
U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909) would be properly limited
and, under current statutes, legally sufficient notices of copyright and
mask work, respectively. Inclusion of a copyright or mask work notice
will be permitted only if the authorization language set forth in
paragraph (e) of this section is included at the beginning (preferably
as the first paragraph) of the specification.

The authorization shall read as follows:

A portion of the disclosure of this patent document contains material
which is subject to (copyright or mask work) protection. The (copyright
or mask work) owner has no objection to the facsimile reproduction by
any one of the patent document or the patent disclosure, as it appears
in the Patent and Trademark Office patent file or records, but otherwise
reserves all (copyright or mask work) rights whatsoever.

[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989;
para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

---SECTION---1.72 Title and abstract.

The title of the invention, which should be as short and specific as
possible, should appear as a heading on the first page of the
specification, if it does not otherwise appear at the beginning of the
application.

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.

[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978; para. (b)
amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.73 Summary of the invention.

A brief summary of the invention indicating its nature and substance,
which may include a statement of the object of the invention, should
precede the detailed description. Such summary should, when set forth,
be commensurate with the invention as claimed and any object recited
should be that of the invention as claimed.

---SECTION---1.74 Reference to drawings.

When there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to the different views by specifying the numbers
of the figures and to the different parts by use of reference letters or
numerals (preferably the latter).

---SECTION---1.75 Claim(s).

The specification must conclude with a claim particularly pointing out
and distinctly claiming the subject matter which the applicant regards
as his invention or discovery.

More than one claim may be presented provided they differ substantially
from each other and are not unduly multiplied.

One or more claims may be presented in dependent form, referring back to
and further limiting another claim or claims in the same application.
Any dependent claim which refers to more than one other claim ("multiple
dependent claim") shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis for any
other multiple dependent claim. For fee calculation purposes under
Section  1.16, a multiple dependent claim will be considered to be that
number of claims to which direct reference is made therein. For fee
calculation purposes, also, any claim depending from a multiple
dependent claim will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim. In addition
to the other filing fees, any original application which is filed with,
or is amended to include, multiple dependent claims must have paid
therein the fee set forth in Section  1.16(d). Claims in dependent form
shall be construed to include all the limitations of the claim
incorporated by reference into the dependent claim. A multiple dependent
claim shall be construed to incorporate by reference all the limitations
of each of the particular claims in relation to which it is being
considered.

The claim or claims must conform to the invention as set forth in the
remainder of the specification and the terms and phrases used in the
claims must find clear support or antecedent basis in the description so
that the meaning of the terms in the claims may be ascertainable by
reference to the description. (See Section  1.58(a)).

See Section Section  1.141 to 1.146 as to claiming different inventions
in one application.

Where the nature of the case admits, as in the case of an improvement,
any independent claim should contain in the following order:

A preamble comprising a general description of all the elements or steps
of the claimed combination which are conventional or known,

A phrase such as "wherein the improvement comprises," and

Those elements, steps, and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the
new or improved portion.

If there are several claims, they shall be numbered consecutively in
Arabic numerals.

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.

The claim or claims must commence on a separate sheet.

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.

[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR 21995, Oct.
18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41276, Sept. 17,
1982, effective Oct. 1, 1982; para. (g) amended, paras. (h) and (i)
added, 61 FR 42790, Aug. 19, 1996, effective Sept 23, 1996]

---SECTION---1.77 Arrangement of application elements.

The elements of the application, if applicable, should appear in the
following order:

Utility Application Transmittal Form.

Fee Transmittal Form.

Title of the invention; or an introductory portion stating the name,
citizenship, and residence of the applicant, and the title of the
invention.

Cross-reference to related applications.

Statement regarding federally sponsored research or development.

Reference to a "Microfiche appendix." (See Section &nbsp;1.96 (c)). The
total number of microfiche and total number of frames should be
specified.

Background of the invention.

Brief summary of the invention.

Brief description of the several views of the drawing.

Detailed description of the invention.

Claim or claims.

Abstract of the Disclosure.

Drawings.

Executed oath or declaration.

Sequence Listing (See Section Section &nbsp;1.821 through 1.825).

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.

[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras. (h) and
(i), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.78 Claiming benefit of earlier filing date and
cross-references to other applications.

A nonprovisional application may claim an invention disclosed in one or
more prior filed copending nonprovisional applications or copending
international applications designating the United States of America. In
order for a nonprovisional application to claim the benefit of a prior
filed copending nonprovisional application or copending international
application designating the United States of America, each prior
application must name as an inventor at least one inventor named in the
later filed nonprovisional application and disclose the named inventor's
invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of 35&nbsp;U.S.C. 112. In addition, each prior application must be:

An international application entitled to a filing date in accordance
with PCT Article 11 and designating the United States of America; or

Complete as set forth in Section  1.51(b); or

Entitled to a filing date as set forth in Section  1.53(b) or Section 
1.53(d) and include the basic filing fee set forth in Section
&nbsp;1.16; or

Entitled to a filing date as set forth in Section  1.53(b) and have paid
therein the processing and retention fee set forth in Section  1.21(l)
within the time period set forth in Section &nbsp;1.53(f).

Except for a continued prosecution application filed under Section 
1.53(d), any nonprovisional application claiming the benefit of one or
more prior filed copending nonprovisional applications or international
applications designating the United States of America must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date and
indicating the relationship of the applications. The request for a
continued prosecution application under Section  1.53(d) is the specific
reference required by 35&nbsp;U.S.C. 120 to the prior application. The
identification of an application by application number under this
section is the specific reference required by 35&nbsp;U.S.C. 120 to
every application assigned that application number. Cross-references to
other related applications may be made when appropriate (see Section
&nbsp;1.14(a)).

A nonprovisional application other than for a design patent may claim an
invention disclosed in one or more prior filed copending provisional
applications. Since a provisional application can be pending for no more
than twelve months, the last day of pendency may occur on a Saturday,
Sunday, or Federal holiday within the District of Columbia which for
copendency would require the nonprovisional application to be filed on
or prior to the Saturday, Sunday, or Federal holiday. In order for a
nonprovisional application to claim the benefit of one or more prior
filed copending provisional applications, each prior provisional
application must name as an inventor at least one inventor named in the
later filed nonprovisional application and disclose the named inventor's
invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of 35&nbsp;U.S.C. 112. In addition, each prior provisional application
must be:

Complete as set forth in Section  1.51(c); or

Entitled to a filing date as set forth in Section  1.53(c) and include
the basic filing fee set forth in Section &nbsp;1.16(k).

Any nonprovisional application claiming the benefit of one or more prior
filed copending provisional applications must contain or be amended to
contain in the first sentence of the specification following the title a
reference to each such prior provisional application, identifying it as
a provisional application, and including the provisional application
number (consisting of series code and serial number).

Where two or more applications filed by the same applicant contain
conflicting claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient reason
for their retention during pendency in more than one application.

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.

[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), (c) &
(d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar.
21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993, effective Jan.
3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4)
added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c)
revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.79 Reservation clauses not permitted.

A reservation for a future application of subject matter disclosed but
not claimed in a pending application will not be permitted in the
pending application, but an application disclosing unclaimed subject
matter may contain a reference to a later filed application of the same
applicant or owned by a common assignee disclosing and claiming that
subject matter.

---SECTION---THE DRAWINGS

---SECTION---1.81 Drawings required in patent application.

The applicant for a patent is required to furnish a drawing of his or
her invention where necessary for the understanding of the subject
matter sought to be patented; this drawing, or a high quality copy
thereof, must be filed with the application. Since corrections are the
responsibility of the applicant, the original drawing(s) should be
retained by the applicant for any necessary future correction.

Drawings may include illustrations which facilitate an understanding of
the invention (for example, flowsheets in cases of processes, and
diagrammatic views).

Whenever the nature of the subject matter sought to be patented admits
of illustration by a drawing without its being necessary for the
understanding of the subject matter and the applicant has not furnished
such a drawing, the examiner will require its submission within a time
period of not less than two months from the date of the sending of a
notice thereof.

Drawings submitted after the filing date of the application may not be
used to overcome any insufficiency of the specification due to lack of
an enabling disclosure or otherwise inadequate disclosure therein, or to
supplement the original disclosure thereof for the purpose of
interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28, 1988,
effective Jan. 1, 1989]

---SECTION---1.83 Content of drawing.

The drawing in a nonprovisional application must show every feature of
the invention specified in the claims. However, conventional features
disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box).

When the invention consists of an improvement on an old machine the
drawing must when possible exhibit, in one or more views, the improved
portion itself, disconnected from the old structure, and also in another
view, so much only of the old structure as will suffice to show the
connection of the invention therewith.

Where the drawings in a nonprovisional application do not comply with
the requirements of paragraphs (a) and (b) of this section, the examiner
shall require such additional illustration within a time period of not
less than two months from the date of the sending of a notice thereof.
Such corrections are subject to the requirements of Section  1.81(d).

[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978; paras. (a) and
(c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.84 Standards for drawings.

Drawings. There are two acceptable categories for presenting drawings in
utility patent applications:

Black ink. Black and white drawings are normally required. India ink, or
its equivalent that secures solid black lines, must be used for
drawings, or

Color.On rare occasions, color drawings may be necessary as the only
practical medium by which to disclose the subject matter sought to be
patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:

The fee set forth in Section  1.17(i);

Three (3) sets of color drawings; and

The specification must contain the following language as the first
paragraph in that portion of the specification relating to the brief
description of the drawing:

The file of this patent contains at least one drawing executed in color.
Copies of this patent with color drawing(s) will be provided by the
Patent and Trademark Office upon request and payment of the necessary
fee.

If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.

Photographs.

Black and white. Photographs are not ordinarily permitted in utility
patent applications. However, the Office will accept photographs in
utility patent applications only after the granting of a petition filed
under this paragraph which requests that photographs be accepted. Any
such petition must include the following:

The fee set forth in Section  1.17(i); and

Three (3) sets of photographs. Photo graphs must either be developed on
double weight photographic paper or be permanently mounted on bristol
board. The photographs must be of sufficient quality so that all details
in the drawings are reproducible in the printed patent.

Color. Color photographs will be accepted in utility patent applications
if the conditions for accepting color drawings have been satisfied. See
paragraph (a)(2) of this section.

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&nbsp;cm.
(5/8&nbsp;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&nbsp;cm. (5/8&nbsp;inch)
from the top of the sheet.

Graphic forms in drawings. Chemical or mathematical formulae, tables,
and waveforms may be submitted as drawings and are subject to the same
requirements as drawings. Each chemical or mathematical formula must be
labeled as a separate figure, using brackets when necessary, to show
that information is properly integrated. Each group of waveforms must be
presented as a single figure, using a common vertical axis with time
extending along the horizontal axis. Each individual waveform discussed
in the specification must be identified with a separate letter
designation adjacent to the vertical axis.

Type of paper. Drawings submitted to the Office must be made on paper
which is flexible, strong, white, smooth, non-shiny, and durable. All
sheets must be free from cracks, creases, and folds. Only one side of
the sheet shall be used for the drawing. Each sheet must be reasonably
free from erasures and must be free from alterations, overwritings, and
interlineations. Photographs must either be developed on double weight
photographic paper or be permanently mounted on bristol board. See
paragraph (b) of this section for other requirements for photographs.

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:

21.0 cm. by 29.7 cm. (DIN size A4), or

21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).

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&nbsp;cm. (1&nbsp;inch), a left side margin of at
least 2.5&nbsp;cm. (1&nbsp;inch), a right side margin of at least
1.5&nbsp;cm. (5/8&nbsp;inch), and a bottom margin of at least
1.0&nbsp;cm. (3/8&nbsp;inch), thereby leaving a sight no greater than
17.0&nbsp;cm. by 26.2&nbsp;cm. on 21.0&nbsp;cm. by 29.7&nbsp;cm. (DIN
size A4) drawing sheets, and a sight no greater than 17.6&nbsp;cm. by
24.4&nbsp;cm. (6 15/16 by 9 5/8&nbsp;inches) on 21.6&nbsp;cm. by
27.9&nbsp;cm. (8 1/2 by 11&nbsp;inch) drawing sheets.

Views. The drawing must contain as many views as necessary to show the
invention. The views may be plan, elevation, section, or perspective
views. Detail views of portions of elements, on a larger scale if
necessary, may also be used. All views of the drawing must be grouped
together and arranged on the sheet(s) without wasting space, preferably
in an upright position, clearly separated from one another, and must not
be included in the sheets containing the specifications, claims, or
abstract. Views must not be connected by projection lines and must not
contain center lines. Waveforms of electrical signals may be connected
by dashed lines to show the relative timing of the waveforms.

Exploded views. Exploded views, with the separated parts embraced by a
bracket, to show the relationship or order of assembly of various parts
are permissible. When an exploded view is shown in a figure which is on
the same sheet as another figure, the exploded view should be placed in
brackets.

Partial views. When necessary, a view of a large machine or device in
its entirety may be broken into partial views on a single sheet, or
extended over several sheets if there is no loss in facility of
understanding the view. Partial views drawn on separate sheets must
always be capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view should be
included showing the whole formed by the partial views and indicating
the positions of the parts shown. When a portion of a view is enlarged
for magnification purposes, the view and the enlarged view must each be
labeled as separate views.

Where views on two or more sheets form, in effect, a single complete
view, the views on the several sheets must be so arranged that the
complete figure can be assembled without concealing any part of any of
the views appearing on the various sheets.

A very long view may be divided into several parts placed one above the
other on a single sheet. However, the relationship between the different
parts must be clear and unambiguous.

Sectional views. The plane upon which a sectional view is taken should
be indicated on the view from which the section is cut by a broken line.
The ends of the broken line should be designated by Arabic or Roman
numerals corresponding to the view number of the sectional view, and
should have arrows to indicate the direction of sight. Hatching must be
used to indicate section portions of an object, and must be made by
regularly spaced oblique parallel lines spaced sufficiently apart to
enable the lines to be distinguished without difficulty. Hatching should
not impede the clear reading of the reference characters and lead lines.
If it is not possible to place reference characters outside the hatched
area, the hatching may be broken off wherever reference characters are
inserted. Hatching must be at a substantial angle to the surrounding
axes or principal lines, preferably 45. A cross section must be set out
and drawn to show all of the materials as they are shown in the view
from which the cross section was taken. The parts in cross section must
show proper material(s) by hatching with regularly spaced parallel
oblique strokes, the space between strokes being chosen on the basis of
the total area to be hatched. The various parts of a cross section of
the same item should be hatched in the same manner and should accurately
and graphically indicate the nature of the material(s) that is
illustrated in cross section. The hatching of juxtaposed different
elements must be angled in a different way. In the case of large areas,
hatching may be confined to an edging drawn around the entire inside of
the outline of the area to be hatched. Different types of hatching
should have different conventional meanings as regards the nature of a
material seen in cross section.

Alternate position. A moved position may be shown by a broken line
superimposed upon a suitable view if this can be done without crowding;
otherwise, a separate view must be used for this purpose.

Modified forms. Modified forms of construction must be shown in separate
views.

Arrangement of views. One view must not be placed upon another or within
the outline of another. All views on the same sheet should stand in the
same direction and, if possible, stand so that they can be read with the
sheet held in an upright position. If views wider than the width of the
sheet are necessary for the clearest illustration of the invention, the
sheet may be turned on its side so that the top of the sheet, with the
appropriate top margin to be used as the heading space, is on the
right-hand side. Words must appear in a horizontal, left-to-right
fashion when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing standard scientific
convention to denote the axis of abscissas (of X) and the axis of
ordinates (of Y).

View for Official Gazette. One of the views should be suitable for
publication in the Official Gazette as the illustration of the
invention.

Scale.

The scale to which a drawing is made must be large enough to show the
mechanism without crowding when the drawing is reduced in size to
two-thirds in reproduction. Views of portions of the mechanism on a
larger scale should be used when necessary to show details clearly. Two
or more sheets may be used if one does not give sufficient room. The
number of sheets should be kept to a minimum.

When approved by the examiner, the scale of the drawing may be
graphically represented. Indications such as "actual size" or "scale
1/2" on the drawings, are not permitted, since these lose their meaning
with reproduction in a different format.

Elements of the same view must be in proportion to each other, unless a
difference in proportion is indispensable for the clarity of the view.
Instead of showing elements in different proportion, a supplementary
view may be added giving a larger-scale illustration of the element of
the initial view. The enlarged element shown in the second view should
be surrounded by a finely drawn or "dot-dash" circle in the first view
indicating its location without obscuring the view.

Character of lines, numbers, and letters. All drawings must be made by a
process which will give them satisfactory reproduction characteristics.
Every line, number, and letter must be durable, clean, black (except for
color drawings), sufficiently dense and dark, and uniformly thick and
well-defined. The weight of all lines and letters must be heavy enough
to permit adequate reproduction. This requirement applies to all lines
however fine, to shading, and to lines representing cut surfaces in
sectional views. Lines and strokes of different thicknesses may be used
in the same drawing where different thicknesses have a different
meaning.

Shading. The use of shading in views is encouraged if it aids in
understanding the invention and if it does not reduce legibility.
Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be
lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections. See paragraph (h)(3) of this
section. Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the
rest of the drawings. As a substitute for shading, heavy lines on the
shade side of objects can be used except where they superimpose on each
other or obscure reference characters. Light should come from the upper
left corner at an angle of 45. Surface delineations should preferably
be shown by proper shading. Solid black shading areas are not permitted,
except when used to represent bar graphs or color.

Symbols. Graphical drawing symbols may be used for conventional elements
when appropriate. The elements for which such symbols and labeled
representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable.

Legends. Suitable descriptive legends may be used, or may be required by
the Examiner, where necessary for understanding of the drawing, subject
to approval by the Office. They should contain as few words as possible.

Numbers, letters, and reference characters.

Reference characters (numerals are preferred), sheet numbers, and view
numbers must be plain and legible, and must not be used in association
with brackets or inverted commas, or enclosed within outlines, e.g.,
encircled. They must be oriented in the same direction as the view so as
to avoid having to rotate the sheet. Reference characters should be
arranged to follow the profile of the object depicted.

The English alphabet must be used for letters, except where another
alphabet is customarily used, such as the Greek alphabet to indicate
angles, wavelengths, and mathematical formulas.

Numbers, letters, and reference characters must measure at least .32 cm.
(1/8 inch) in height. They should not be placed in the drawing so as to
interfere with its comprehension. Therefore, they should not cross or
mingle with the lines. They should not be placed upon hatched or shaded
surfaces. When necessary, such as indicating a surface or cross section,
a reference character may be underlined and a blank space may be left in
the hatching or shading where the character occurs so that it appears
distinct.

The same part of an invention appearing in more than one view of the
drawing must always be designated by the same reference character, and
the same reference character must never be used to designate different
parts.

Reference characters not mentioned in the description shall not appear
in the drawings. Reference characters mentioned in the description must
appear in the drawings.

Lead lines. Lead lines are those lines between the reference characters
and the details referred to. Such lines may be straight or curved and
should be as short as possible. They must originate in the immediate
proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines are required
for each reference character except for those which indicate the surface
or cross section on which they are placed. Such a reference character
must be underlined to make it clear that a lead line has not been left
out by mistake. Lead lines must be executed in the same way as lines in
the drawing. See paragraph (l) of this section.

Arrows. Arrows may be used at the ends of lines, provided that their
meaning is clear, as follows:

On a lead line, a freestanding arrow to indicate the entire section
towards which it points;

On a lead line, an arrow touching a line to indicate the surface shown
by the line looking along the direction of the arrow; or

To show the direction of movement.

Copyright or Mask Work Notice. A copyright or mask work notice may
appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For example, "
&copy;1983 John Doe" (17 U.S.C. 401) and "*M* John Doe" (17 U.S.C. 909)
would be properly limited and, under current statutes, legally
sufficient notices of copyright and mask work, respectively. Inclusion
of a copyright or mask work notice will be permitted only if the
authorization language set forth in Section  1.71(e) is included at the
beginning (preferably as the first paragraph) of the specification.

Numbering of sheets of drawings. The sheets of drawings should be
numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number and the second
being the total number of sheets of drawings, with no other marking.

Numbering of views.

The different views must be numbered in consecutive Arabic numerals,
starting with 1, independent of the numbering of the sheets and, if
possible, in the order in which they appear on the drawing sheet(s).
Partial views intended to form one complete view, on one or several
sheets, must be identified by the same number followed by a capital
letter. View numbers must be preceded by the abbreviation "FIG." Where
only a single view is used in an application to illustrate the claimed
invention, it must not be numbered and the abbreviation "FIG." must not
appear.

Numbers and letters identifying the views must be simple and clear and
must not be used in association with brackets, circles, or inverted
commas. The view numbers must be larger than the numbers used for
reference characters.

Security markings.Authorized security markings may be placed on the
drawings provided they are outside the sight, preferably centered in the
top margin.

Corrections. Any corrections on drawings submitted to the Office must be
durable and permanent.

Holes. No holes should be made by applicant in the drawing sheets. (See
Section  1.152 for design drawings, Section  1.165 for plant drawings,
and Section  1.174 for reissue drawings.)

[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36 FR 9775, May
28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657, Nov. 6,1980; paras.
(a), (b), (i), (j), and (l) amended, paras. (n), (o), and (p) added, 53
FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719,
July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g), and (x)
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras.
(a)(2)(i), (b), (c) & (g) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.85 Corrections to drawings.

The requirements of Section  1.84 relating to drawings will be strictly
enforced. A drawing not executed in conformity thereto, if suitable for
reproduction, may be admitted for examination but in such case a new
drawing must be furnished.

The Patent and Trademark Office will not release drawings in
applications having a filing date after January 1, 1989, or any drawings
from any applications after January 1, 1991, for purposes of correction.
If corrections are necessary, new corrected drawings must be submitted
within the time set by the Office.

When corrected drawings are required to be submitted at the time of
allowance, the applicant is required to submit acceptable drawings
within three months from the mailing of the "Notice of Allowability."
Within that three-month period, two weeks should be allowed for review
of the drawings by the Drafting Branch. If the Office finds that
correction is necessary, the applicant must submit a new corrected
drawing to the Office within the original three-month period to avoid
the necessity of obtaining an extension of time and paying the extension
fee. Therefore, the applicant should file corrected drawings as soon as
possible following the receipt of the Notice of Allowability. The
provisions with respect to obtaining an extension of time relates only
to the late filing of corrected drawings. The time limit for payment of
the issue fee is a fixed three-month period which cannot be extended as
set forth in 35 U.S.C. 151.

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR 47810, Nov.
28, 1988, effective Jan. 1, 1989]

---SECTION---1.88 [Reserved]

[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

---SECTION---MODELS, EXHIBITS, SPECIMENS

---SECTION---1.91 Models or exhibits not generally admitted as part of
application or patent.

A model or exhibit will not be admitted as part of the record of an
application unless it:

Substantially conforms to the requirements of Section &nbsp;1.52 or
Section &nbsp;1.84;

Is specifically required by the Office; or

Is filed with a petition under this section including:

The petition fee as set forth in Section  1.17(i); and

An explanation of why entry of the model or exhibit in the file record
is necessary to demonstrate patentability.

Notwithstanding the provisions of paragraph (a) of this section, a
model, working model, or other physical exhibit may be required by the
Office if deemed necessary for any purpose in examination of the
application.

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.92 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---1.93 Specimens.

When the invention relates to a composition of matter, the applicant may
be required to furnish specimens of the composition, or of its
ingredients or intermediates, for the purpose of inspection or
experiment.

---SECTION---1.94 Return of models, exhibits or specimens.

Models, exhibits, or specimens in applications which have become
abandoned, and also in other applications on conclusion of the
prosecution, may be returned to the applicant upon demand and at his
expense, unless it is deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may be returned to the
parties at their expense. If not claimed within a reasonable time, they
may be disposed of at the discretion of the Commissioner.

---SECTION---1.95 Copies of exhibits.

Copies of models or other physical exhibits will not ordinarily be
furnished by the Office, and any model or exhibit in an application or
patent shall not be taken from the Office except in the custody of an
employee of the Office specially authorized by the Commissioner.

---SECTION---1.96 Submission of computer program listings.

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.

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.

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 Section  1.84. At least one figure numeral is required on
each sheet of drawing.

Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions of
Section  1.52, at the end of the description but before the claims.

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 amendment must be made by way of submission of substitute sheets.

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
(seeSection  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 Section 
1.77(a)(6). Any amendments thereto must be made by way of revised
microfiche.

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.

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).

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).

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.

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 in formation for the
microfiche, such as 1 of 4, 2 of 4, etc.

Additional requirements which apply specifically to microfiche of filmed
paper copy:

The first frame of each microfiche submitted shall contain a test
target.

The second frame of each microfiche submitted must contain a fully
descriptive title and the inventor's name as filed.

The pages or lines appearing on the microfiche frames should be
consecutively numbered.

Pagination of the microfiche frames shall be from left to right and from
top to bottom.

At a reduction of 24:1, resolution of the original microfilm shall be at
least 120 lines per mm. (5.0 target).

An index, when included, should appear in the last frame (lower-right
hand corner when data is right-reading) of each microfiche.

Microfiche generated by Computer Output Microfilm.

The first frame of each microfiche submitted should contain a resolution
test frame.

The second frame of each microfiche submitted must contain a fully
descriptive title and the inventor's name as filed.

The pages or lines appearing on the microfiche frames should be
consecutively numbered.

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.

An index, when included, should appear on the last frame (lower-right
hand corner when data is right reading) of each microfiche.

[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, Nov. 15, 1989,
effective Jan. 16, 1990; revised, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996]

---SECTION---INFORMATION DISCLOSURE STATEMENT

---SECTION---1.97 Filing of information disclosure statement.

In order for an applicant for a patent or for a reissue of a patent to
have an information disclosure statement in compliance with Section 
1.98 considered by the Office during the pendency of the application, it
must satisfy paragraph (b), (c), or (d) of this section.

An information disclosure statement shall be considered by the Office if
filed by the applicant:

Within three months of the filing date of a national application;

Within three months of the date of entry of the national stage as set
forth in Section  1.491 in an international application; or

Before the mailing date of a first Office action on the merits,

whichever event occurs last.

An information disclosure statement shall be considered by the Office if
filed by the applicant after the period specified in paragraph (b) of
this section, provided that the information disclosure statement is
filed before the mailing date of either a final action under Section 
1.113, or a notice of allowance under Section  1.311, whichever occurs
first, and is accompanied by either:

A statement as specified in paragraph (e) of this section; or

The fee set forth in Section  1.17(p).

An information disclosure statement shall be considered by the Office if
filed by the applicant after the period specified in paragraph (c) of
this section, provided that the information disclosure statement is
filed on or before payment of the issue fee and is accompanied by:

A statement as specified in paragraph (e) of this section;

A petition requesting consideration of the information disclosure
statement; and

The petition fee set forth in Section  1.17(i).

A statement under this section must state either:

That each item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart foreign application not more than three months prior to the
filing of the information disclosure statement; or

That no item of information contained in the information disclosure
statement was cited in a communication from a foreign patent office in a
counterpart foreign application, and, to the knowledge of the person
signing the statement after making reasonable inquiry, no item of
information contained in the information disclosure statement was known
to any individual designated in Section &nbsp;1.56(c) more than three
months prior to the filing of the information disclosure statement.

No extensions of time for filing an information disclosure statement are
permitted under Section  1.136. If a bona fide attempt is made to comply
with Section  1.98, but part of the required content is inadvertently
omitted, additional time may be given to enable full compliance.

An information disclosure statement filed in accordance with section
shall not be construed as a representation that a search has been made.

The filing of an information disclosure statement shall not be construed
to be an admission that the information cited in the statement is, or is
considered to be, material to patentability as defined in Section
1.56(b).

Information disclosure statements, filed before the grant of a patent,
which do not comply with this section and Section 1.98 will be placed in
the file, but will not be considered by the Office.

[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021,
Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.98 Content of information disclosure statement.

Any information disclosure statement filed under Section  1.97 shall
include:

A list of all patents, publications, or other information submitted for
consideration by the Office;

A legible copy of :

Each U.S. and foreign patent;

Each publication or that portion which caused it to be listed; and

All other information or that portion which caused it to be listed,
except that no copy of a U.S. patent application need be included; and

A concise explanation of the relevance, as it is presently understood by
the individual designated in Section 1.56(c) most knowledgeable about
the content of the information, of each patent, publication, or other
information listed that is not in the English language. The concise
explanation may be either separate from the specification or
incorporated therein.

Each U.S. patent listed in an information disclosure statement shall be
identified by patentee, patent number and issue date. Each foreign
patent or published foreign patent application shall be identified by
the country or patent office which issued the patent or published the
application, an appropriate document number, and the publication date
indicated on the patent or published application. Each publication shall
be identified by author (if any), title, relevant pages of the
publication, date and place of publication.

When the disclosures of two or more patents or publications listed in an
information disclosure statement are substantively cumulative, a copy of
one of the patents or publications may be submitted without copies of
the other patents or publications provided that a statement is made that
these other patents or publications are cumulative. If a written
English-language translation of a non-English language document, or
portion thereof, is within the possession, custody or control of, or is
readily available to any individual designated inSection 1.56(c), a copy
of the translation shall accompany the statement.

A copy of any patent, publication or other information listed in an
information disclosure statement is not required to be provided if it
was previously cited by or submitted to the Office in a prior
application, provided that the prior application is properly identified
in the statement and relied upon for an earlier filing date under 35
U.S.C. 120.

[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 20, 1983,
effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar.
16, 1992]

---SECTION---1.99 [Reserved]

[48 FR 2712, Jan. 20, 1983; effective date Feb. 27, 1983; 57 FR 2021,
Jan. 17, 1992, effective Mar. 16, 1992]

---SECTION---EXAMINATION OF APPLICATIONS

---SECTION---1.101 [Reserved]

[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, Jan. 20, 1983,
effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective
May 8, 1985; 52 FR 20046, May 28, 1987, effective July 1, 1987; para.
(a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.102 Advancement of examination.

Applications will not be advanced out of turn for examination or for
further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a showing which, in the
opinion of the Commissioner, will justify so advancing it.

Applications wherein the inventions are deemed of peculiar importance to
some branch of the public service and the head of some department of the
Government requests immediate action for that reason, may be advanced
for examination.

A petition to make an application special may be filed without a fee if
the basis for the petition is the applicant's age or health or that the
invention will materially enhance the quality of the environment or
materially contribute to the development or conservation of energy
resources.

A petition to make an application special on grounds other than those
referred to in paragraph (c) of this section must be accompanied by the
petition fee set forth in Section  1.17(i).

[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 47 FR 41276,
Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 54 FR 6893, Feb. 15,
1989, effective Apr. 17, 1989; para. (d) revised, 60 FR 20195, Apr. 25,
1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.103 Suspension of action.

Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by
the applicant and, if such cause is not the fault of the Office, the
payment of the fee set forth in Section &nbsp;1.17(i). Action will not
be suspended when a reply by the applicant to an Office action is
required.

If action by the Office on an application is suspended when not
requested by the applicant, the applicant shall be notified of the
reasons therefor.

Action by the examiner may be suspended by order of the Commissioner in
the case of applications owned by the United States whenever publication
of the invention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the request of the
appropriate department or agency.

Action on applications in which the Office has accepted a request to
publish a defensive publication will be suspended for the entire
pendency of these applications except for purposes relating to patent
interference proceedings under Subpart E.

[24 FR 10332, Dec. 22, 11959; 33 FR 5624, Apr. 11, 1968; paras. (a) and
(b), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50 FR 9381,
Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 15,
1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 20195, Apr. 25,
1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.104 Nature of examination.

Examiner's action.

On taking up an application for examination or a patent in a
reexamination proceeding, the examiner shall make a thorough study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the claimed invention. The
examination shall be complete with respect both to compliance of the
application or patent under reexamination with the applicable statutes
and rules and to the patentability of the invention as claimed, as well
as with respect to matters of form, unless otherwise indicated.

The applicant, or in the case of a reexamination proceeding, both the
patent owner and the requester, will be notified of the examiner's
action. The reasons for any adverse action or any objection or
requirement will be stated and such information or references will be
given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.

An international-type search will be made in all national applications
filed on and after June 1, 1978.

Any national application may also have an international-type search
report prepared thereon at the time of the national examination on the
merits, upon specific written request therefor and payment of the
international-type search report fee set forth in Section  1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.

Copending applications will be considered by the examiner to be owned
by, or subject to an obligation of assignment to, the same person if:

The application files refer to assignments recorded in the Patent and
Trademark Office in accordance with Part 3 of this chapter which convey
the entire rights in the applications to the same person or
organization; or

Copies of unrecorded assignments which convey the entire rights in the
applications to the same person or organization are filed in each of the
applications; or

An affidavit or declaration by the common owner is filed which states
that there is common ownership and states facts which explain why the
affiant or declarant believes there is common ownership, which affidavit
or declaration may be signed by an official of the corporation or
organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or

Other evidence is submitted which establishes common ownership of the
applications.

Completeness of examiner's action. The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made. However, matters of form need not be
raised by the examiner until a claim is found allowable.

Rejection of claims.

If the invention is not considered patentable, or not considered
patentable as claimed, the claims, or those considered unpatentable will
be rejected.

In rejecting claims for want of novelty or for obviousness, the examiner
must cite the best references at his or her command. When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.

In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.

Subject matter which is developed by another person which qualifies as
prior art only under 35&nbsp;U.S.C. 102(f) or (g) may be used as prior
art under 35&nbsp;U.S.C. 103 against a claimed invention unless the
entire rights to the subject matter and the claimed invention were
commonly owned by the same person or organization or subject to an
obligation of assignment to the same person or organization at the time
the claimed invention was made.

The claims in any original application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:

Which was not covered by claims issued in the patent prior to the date
of publication of the statutory invention registration; and

Which was the same subject matter waived in the statutory invention
registration.

Citation of references.

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.

When a rejection in an application is based on facts within the personal
knowledge of an employee of the Office, the data shall be as specific as
possible, and the reference must be supported, when called for by the
applicant, by the affidavit of such employee, and such affidavit shall
be subject to contradiction or explanation by the affidavits of the
applicant and other persons.

Reasons for allowance. If the examiner believes that the record of the
prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure to file such a statement does not give rise to any
implication that the applicant or patent owner agrees with or acquiesces
in the reasoning of the examiner.

[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para. (d), 47 FR
41276, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e), 50 FR
9381, Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR 29642, July
6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.105 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec.1,
1997]

---SECTION---1.106 [Reserved]

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (c)
added, 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (d) and
(e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and
reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.107 [Reserved]

[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 42790, Aug. 19,
1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.108 [Reserved]

[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.109 [Reserved]

[46 FR 29182, May 29, 1981; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---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
Section Section  1.78(c) and 1.130.

[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---ACTION BY APPLICANT AND FURTHER CONSIDERATION

---SECTION---1.111 Reply by applicant or patent owner.

After the Office action, if adverse in any respect, the applicant or
patent owner, if he or she persists in his or her application for a
patent or reexamination proceeding, must reply thereto and may request
reconsideration or further examination, with or without amendment.

In order to be entitled to reconsideration or further examination, the
applicant or patent owner must reply to the Office action. The reply by
the applicant or patent owner must be reduced to a writing which
distinctly and specifically points out the supposed errors in the
examiner's action and must reply to every ground of objection and
rejection in the prior Office action. The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references. If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims be held in abeyance until allowable
subject matter is indicated. The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action. A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.

In amending in response to a rejection of claims in an application or
patent undergoing reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made. He or she must also show how
the amendments avoid such references or objections. (See Section Section 
1.135 and 1.136 for time for reply.)

[46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.112 Reconsideration before final action.

After reply by applicant or patent owner (Section &nbsp;1.111) to a
non-final action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination. Applicant or patent
owner may reply to such Office action in the same manner provided in
Section &nbsp;1.111, with or without amendment, unless such Office
action indicates that it is made final (Section &nbsp;1.113).

[46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.113 Final rejection or action.

On the second or any subsequent examination or consideration by the
examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim (Section  1.191), or to amendment as specified in
Section &nbsp;1.116. Petition may be taken to the Commissioner in the
case of objections or requirements not involved in the rejection of any
claim (Section &nbsp;1.181). Reply to a final rejection or action must
include cancellation of, or appeal from the rejection of, each rejected
claim. If any claim stands allowed, the reply to a final rejection or
action must comply with any requirements or objections as to form.

In making such final rejection, the examiner shall repeat or state all
grounds of rejection then considered applicable to the claims in the
application, clearly stating the reasons in support thereof.

[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---AMENDMENTS

---SECTION---1.115 [Reserved]

[46 FR 29183, May 29, 1981; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.116 Amendments after final action or appeal.

After a final rejection or other final action (Section &nbsp;1.113),
amendments may be made cancelling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under Section  1.135.

If amendments touching the merits of the application or patent under
reexamination are presented after final rejection, or after appeal has
been taken, or when such amendment might not otherwise be proper, they
may be admitted upon a showing of good and sufficient reasons why they
are necessary and were not earlier presented.

No amendment can be made as a matter of right in appealed cases. After
decision on appeal, amendments can only be made as provided in Section 
1.198, or to carry into effect a recommendation under Section 1.196.

[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981; para. (a)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.117 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---1.118 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; removed and
reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.119 [Reserved]

[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.121 Manner of making amendments.

Amendments in nonprovisional applications, other than reissue
applications: Amendments in nonprovisional applications, excluding
reissue applications, are made by filing a paper, in compliance with
Section &nbsp;1.52, directing that specified amendments be made.

Specification other than the claims. Except as provided in Section 
1.125, amendments to add matter to, or delete matter from, the
specification, other than to the claims, may only be made as follows:

Instructions for insertions: The precise point in the specification must
be indicated where an insertion is to be made, and the matter to be
inserted must be set forth.

Instructions for deletions: The precise point in the specification must
be indicated where a deletion is to be made, and the matter to be
deleted must be set forth or otherwise indicated.

Matter deleted by amendment can be reinstated only by a subsequent
amendment presenting the previously deleted matter as a new insertion.

Claims. Amendments to the claims may only be made as follows:

Instructions for insertions and deletions: A claim may be amended by
specifying only the exact matter to be deleted or inserted by an
amendment and the precise point where the deletion or insertion is to be
made, where the changes are limited to:

Deletions and/or

The addition of no more than five (5) words in any one claim; or

Claim cancellation or rewriting: A claim may be amended by directions to
cancel the claim or by rewriting such claim with underlining below the
matter added and brackets around the matter deleted. The rewriting of a
claim in this form will be construed as directing the deletion of the
previous version of that claim. If a previously rewritten claim is again
rewritten, underlining and bracketing will be applied relative to the
previous version of the claim, with the parenthetical expression "twice
amended," "three times amended," etc., following the original claim
number. The original claim number followed by that parenthetical
expression must be used for the rewritten claim. No interlineations or
deletions of any prior amendment may appear in the currently submitted
version of the claim. A claim canceled by amendment (not deleted and
rewritten) can be reinstated only by a subsequent amendment presenting
the claim as a new claim with a new claim number.

Drawings.

Amendments to the original application drawings are not permitted. Any
change to the application drawings must be by way of a substitute sheet
of drawings for each sheet changed submitted in compliance with Section 
1.84.

Where a change to the drawings is desired, a sketch in permanent ink
showing proposed changes in red, to become part of the record, must be
filed for approval by the examiner and should be in a separate paper.

[Reserved]

The disclosure must be amended, when required by the Office, to correct
inaccuracies of description and definition, and to secure substantial
correspondence between the claims, the remainder of the specification,
and the drawings.

No amendment may introduce new matter into the disclosure of an
application.

Amendments in reissue applications: Amendments in reissue applications
are made by filing a paper, in compliance with Section &nbsp;1.52,
directing that specified amendments be made.

Specification other than the claims. Amendments to the specification,
other than to the claims, may only be made as follows:

Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(b)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

The precise point in the specification must be indicated where the
paragraph to be amended is located.

Underlining below the subject matter added to the patent and brackets
around the subject matter deleted from the patent are to be used to mark
the amendments being made.

Claims. Amendments to the claims may only be made as follows:

(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendment with
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that
a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.

Patent claims must not be renumbered and the numbering of any claims
added to the patent must follow the number of the highest numbered
patent claim.

Underlining below the subject matter added to the patent and brackets
around the subject matter deleted from the patent are to be used to mark
the amendments being made. If a claim is amended pursuant to paragraph
(b)(2)(i)(A) of this section, a parenthetical expression "amended,"
"twice amended," etc., should follow the original claim number.

Each amendment submission must set forth the status (i.e., pending or
cancelled) as of the date of the amendment, of all patent claims and of
all added claims.

Each amendment when originally submitted must be accompanied by an
explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.

Drawings.

Amendments to the original patent drawings are not permitted. Any change
to the patent drawings must be by way of a new sheet of drawings with
the amended figures identified as "amended" and with added figures
identified as "new" for each sheet changed submitted in compliance with
Section  1.84.

Where a change to the drawings is desired, a sketch in permanent ink
showing proposed changes in red, to become part of the record, must be
filed for approval by the examiner and should be in a separate paper.

The disclosure must be amended, when required by the Office, to correct
inaccuracies of description and definition, and to secure substantial
correspondence between the claims, the remainder of the specification,
and the drawings.

No reissue patent shall be granted enlarging the scope of the claims of
the original patent unless applied for within two years from the grant
of the original patent, pursuant to 35&nbsp;U.S.C. 251. No amendment to
the patent may introduce new matter or be made in an expired patent.

All amendments must be made relative to the patent specification,
including the claims, and drawings, which is in effect as of the date of
filing of the reissue application.

Amendments in reexamination proceedings: Any proposed amendment to the
description and claims in patents involved in reexamination proceedings
must be made in accordance with Section &nbsp;1.530(d).

[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981; para. (e), 49
FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.122 [Reserved]

[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.123 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555, Jan. 4,
1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20, 1993,
effective Oct. 1, 1993; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.124 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---1.125 Substitute specification.

If the number or nature of the amendments or the legibility of the
application papers renders it difficult to consider the application, or
to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof, be
rewritten.

A substitute specification, excluding the claims, may be filed at any
point up to payment of the issue fee if it is accompanied by:

A statement that the substitute specification includes no new matter;
and

A marked-up copy of the substitute specification showing the matter
being added to and the matter being deleted from the specification of
record.

A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.

A substitute specification under this section is not permitted in a
reissue application or in a reexamination proceeding.

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.126 Numbering of claims.

The original numbering of the claims must be preserved throughout the
prosecution. When claims are canceled the remaining claims must not be
renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.

[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.127 Petition from refusal to admit amendment.

From the refusal of the primary examiner to admit an amendment, in whole
or in part, a petition will lie to the Commissioner under Section 
1.181.

---SECTION---TRANSITIONAL PROVISIONS

---SECTION---1.129 Transitional procedures for limited examination after
final rejection and restriction practice.

An applicant in an application, other than for reissue or a design
patent, that has been pending for at least two years as of June 8, 1995,
taking into account any reference made in such application to any
earlier filed application under 35 U.S.C. 120, 121 and 365(c), is
entitled to have a first submission entered and considered on the merits
after final rejection under the following circumstances: The Office will
consider such a submission, if the first submission and the fee set
forth in Section  1.17(r) are filed prior to the filing of an appeal
brief and prior to abandonment of the application. The finality of the
final rejection is automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in Section  1.17(r). If a
subsequent final rejection is made in the application, applicant is
entitled to have a second submission entered and considered on the
merits after the subsequent final rejection under the following
circumstances: The Office will consider such a submis sion, if the
second submission and a second fee set forth in Section  1.17(r) are
filed prior to the filing of an appeal brief and prior to abandonment of
the application. The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the second fee set forth in Section  1.17(r). Any submission
filed after a final rejection made in an application subsequent to the
fee set forth in Section  1.17(r) having been twice paid will be treated
as set forth in Section  1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure statement, an
amendment to the written description, claims or drawings and a new
substantive argument or new evidence in support of patentability.

In an application, other than for reissue or a design patent, that has
been pending for at least three years as of June 8, 1995, taking into
account any reference made in the application to any earlier filed
application under 35 U.S.C. 120, 121 and 365(c), no requirement for
restriction or for the filing of divisional applications shall be made
or maintained in the application after June 8, 1995, except where:

The requirement was first made in the application or any earlier filed
application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;

The examiner has not made a requirement for restriction in the present
or parent application prior to April 8, 1995, due to actions by the
applicant; or

The required fee for examination of each additional invention was not
paid.

If the application contains more than one independent and distinct
invention and a requirement for restriction or for the filing of
divisional applications cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a time period to:

Elect the invention or inventions to be searched and examined, if no
election has been made prior to the notice, and pay the fee set forth in
1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects;

Confirm an election made prior to the notice and pay the fee set forth
in Section  1.17(s) for each independent and distinct invention claimed
in the application in addition to the one invention which applicant
previously elected; or

File a petition under this section traversing the requirement. If the
required petition is filed in a timely manner, the original time period
for electing and paying the fee set forth in Section  1.17(s) will be
deferred and any decision on the petition affirming or modifying the
requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
Section  1.17(s) for each independent and distinct invention claimed in
the application in excess of one which applicant elects.

The additional inventions for which the required fee has not been paid
will be withdrawn from consideration under Section  1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under 35 U.S.C. 121.

The provisions of this section shall not be applicable to any
application filed after June 8, 1995.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---AFFIDAVITS OVERCOMING REJECTIONS

---SECTION---1.130 Affidavit or declaration to disqualify commonly owned
patent as prior art.

When any claim of an application or a patent under reexamination is
rejected under 35&nbsp;U.S.C. 103 in view of a U.S. patent which is not
prior art under 35&nbsp;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:

A terminal disclaimer in accordance with Section &nbsp;1.321(c), and

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&nbsp;U.S.C. 104.

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 Section 
1.321(c).

[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.131 Affidavit or declaration of prior invention to
overcome cited patent or publication.

When any claim of an application or a pat ent 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 Section  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 underSection Section  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.

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.

The showing of facts shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence
satisfactorily explained.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (a), 48
FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381,
Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR
23733, June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised and
para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May 31, 1995;
para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---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 Section  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.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---INTERVIEWS

---SECTION---1.133 Interviews.

Interviews with examiners concerning applications and other matters
pending before the Office must be had in the examiners' rooms at such
times, within office hours, as the respective examiners may designate.
Interviews will not be permitted at any other time or place without the
authority of the Commissioner. Interviews for the discussion of the
patentability of pending applications will not be had before the first
official action thereon. Interviews should be arranged for in advance.

In every instance where reconsideration is requested in view of an
interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed
by the applicant. An interview does not remove the necessity for reply
to Office actions as specified in Section Section  1.111 and 1.135.

[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION

---SECTION---1.134 Time period for reply to an Office action.

An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for reply to an Office action.
Unless the applicant is notified in writing that a reply is required in
less than six months, a maximum period of six months is allowed.

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.135 Abandonment for failure to reply within time period.

If an applicant of a patent application fails to reply within the time
period provided under Section  1.134 and Section  1.136, the application
will become abandoned unless an Office action indicates otherwise.

Prosecution of an application to save it from abandonment pursuant to
paragraph (a) of this section must include such complete and proper
reply as the condition of the application may require. The admission of,
or refusal to admit, any amendment after final rejection or any
amendment not responsive to the last action, or any related proceedings,
will not operate to save the application from abandonment.

When reply by the applicant is a bona fide attempt to advance the
application to final action, and is substantially a complete reply to
the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Section  1.134
to supply the omission.

[Paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982, effective Oct.
1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr. 1,
1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.136 Extensions of time.

If an applicant is required to reply within a nonstatutory or shortened
statutory time period, applicant may extend the time period for reply up
to the earlier of the expiration of any maximum period set by statute or
five months after the time period set for reply, if a petition for an
extension of time and the fee set in Section &nbsp;1.17(a) are filed,
unless:

Applicant is notified otherwise in an Office action;

The reply is a reply brief submitted pursuant to Section  1.193(b);

The reply is a request for an oral hearing submitted pursuant to Section 
1.194(b);

The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Section  1.196, Section  1.197 or Section 
1.304; or

The application is involved in an interference declared pursuant to
Section  1.611.

The date on which the petition and the fee have been filed is the date
for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior to
the expiration of the period of extension to avoid abandonment of the
application (Section  1.135), but in no situation may an applicant reply
later than the maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section when the
provisions of this paragraph are available. See Section  1.136(b) for
extensions of time relating to proceedings pursuant to Section Section 
1.193(b), 1.194, 1.196 or 1.197; Section  1.304 for extension of time to
appeal to the U.S. Court of Appeals for the Federal Circuit or to
commence a civil action; Section  1.550(c) for extension of time in
reexamination proceedings; and Section  1.645 for extension of time in
interference proceedings.

A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Section  1.17, or all required extension of time fees
will be treated as a constructive petition for an extension of time in
any concurrent or future reply requiring a petition for an extension of
time under this paragraph for its timely submission. Submission of the
fee set forth in Section  1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.

When a reply cannot be filed within the time period set for such reply
and the provisions of paragraph (a) of this section are not available,
the period for reply will be extended only for sufficient cause and for
a reasonable time specified. Any request for an extension of time under
this paragraph must be filed on or before the day on which such reply is
due, but the mere filing of such a request will not effect any extension
under this paragraph. In no situation can any extension carry the date
on which reply is due beyond the maximum time period set by statute. See
Section  1.304 for extension of time to appeal to the U.S. Court of
Appeals for the Federal Circuit or to commence a civil action; Section 
1.645 for extension of time in interference proceedings; and Section 
1.550(c) for extension of time in reexamination proceedings.

[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 555, Jan. 4,
1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb.
11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20, 1989; para. (a)
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.137 Revival of abandoned application or lapsed patent.

Unavoidable. Where the delay in reply was unavoidable, a petition may be
filed to revive an abandoned application or a lapsed patent pursuant to
this paragraph. A grantable petition pursuant to this paragraph must be
accompanied by:

The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;

The petition fee as set forth in Section  1.17(l);

A showing to the satisfaction of the Commissioner that the entire delay
in filing the required reply from the due date for the reply until the
filing of a grantable petition pursuant to this paragraph was
unavoidable; and

Any terminal disclaimer (and fee as set forth in Section &nbsp;1.20(d))
required pursuant to paragraph (c) of this section.

Unintentional. Where the delay in reply was unintentional, a petition
may be filed to revive an abandoned application or a lapsed patent
pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:

The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;

The petition fee as set forth in Section  1.17(m);

A statement that the entire delay in filing the required reply from the
due date for the reply until the filing of a grantable petition pursuant
to this paragraph was unintentional. The Commissioner may require
additional information where there is a question whether the delay was
unintentional; and

Any terminal disclaimer (and fee as set forth in Section  1.20(d))
required pursuant to paragraph (c) of this section.

In a design application, a utility application filed before June&nbsp;8,
1995, or a plant application filed before June&nbsp;8, 1995, any
petition to revive pursuant to this section must be accompanied by a
terminal disclaimer and fee as set forth in Section  1.321 dedicating to
the public a terminal part of the term of any patent granted thereon
equivalent to the period of abandonment of the application. Any terminal
disclaimer pursuant to this paragraph must also apply to any patent
granted on any continuing application that contains a specific reference
under 35 U.S.C. 120, 121, or 365(c) to the application for which revival
is sought. The provisions of this paragraph do not apply to lapsed
patents.

Any request for reconsideration or review of a decision refusing to
revive an abandoned application or lapsed patent upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such time as set
in the decision. Unless a decision indicates otherwise, this time period
may be extended under the provisions of Section  1.136.

A provisional application, abandoned for failure to timely respond to an
Office requirement, may be revived pursuant to this section so as to be
pending for a period of no longer than twelve months from its filing
date. Under no circumstances will a provisional application be regarded
as pending after twelve months from its filing date.

[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; para. (b) 48 FR
2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (a) - (c), paras.
(d) & (e) added, 58 FR 44277, Aug. 20,1993, effective Sept. 20, 1993;
para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.138 Express abandonment.

An application may be expressly abandoned by filing in the Patent and
Trademark Office a written declaration of abandonment signed by the
applicant and the assignee of record, if any, and identifying the
application. An application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or agent of
record. A registered attorney or agent acting under the provision of
Section  1.34(a), or of record, may also expressly abandon a prior
application as of the filing date granted to a continuing application
when filing such a continuing application. Express abandonment of the
application may not be recognized by the Office unless it is actually
received by appropriate officials in time to act thereon before the date
of issue.

[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985]

---SECTION---1.139 [Reserved]

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and
reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

---SECTION---1.141 Different inventions in one national application.

Two or more independent and distinct inventions may not be claimed in
one nationalapplication, ex cept that more than one species of an
invention, not to exceed a reasonable number, may be specifically
claimed in different claims in one nationalapplication, provided the
application also includes an allowable claim gen eric to all the claimed
species and all the claims to species in excess of one are written in
dependent form (Section 1.75) or otherwise include all the limitations
of the generic claim.

Whereclaims to all three categories, product, process of making,and
process of use, are included in a national application, a three way
requirement for restriction can only be made where the process of making
is distinct from the product. If the process of making and the product
are not distinct, the process of using may be joined with the claims
directed to the product and the process of making the product even
though a showing of distinctness between the product and process of
using the product can be made.

[52 FR 20046, May 28, 1987, effective July 1, 1987]

---SECTION---1.142 Requirement for restriction.

If two or more independent and distinct inventions are claimed in a
single application, the examiner in an Office action will require the
applicant in the reply to that action to elect an invention to which the
claims will be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
Such requirement will normally be made before any action on the merits;
however, it may be made at any time before final action.

Claims to the invention or inventions not elected, if not canceled, are
nevertheless withdrawn from further consideration by the examiner by the
election, subject however to reinstatement in the event the requirement
for restriction is withdrawn or overruled.

[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.143 Reconsideration of requirement.

If the applicant disagrees with the requirement for restriction, he may
request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor. (See Section 1.111). In
requesting reconsideration the applicant must indicate a provisional
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final. The requirement
for restriction will be reconsidered on such a request. If the
requirement is repeated and made final, the examiner will at the same
time act on the claims to the invention elected.

---SECTION---1.144 Petition from requirement for restriction.

After a final requirement for restriction, the applicant, in addition to
making any reply due on the remainder of the action, may petition the
Commissioner to review the requirement. Petition may be deferred until
after final action on or allowance of claims to the invention elected,
but must be filed not later than appeal. A petition will not be
considered if reconsideration of the requirement was not requested (see
Section  1.181).

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.145 Subsequent presentation of claims for different
invention.

If, after an office action on an application, the applicant presents
claims directed to an invention distinct from and independent of the
invention previously claimed, the applicant will be required to restrict
the claims to the invention previously claimed if the amendment is
entered, subject to reconsideration and review as provided in Section
Section 1.143 and 1.144.

---SECTION---1.146 Election of species.

In the first action on an application containing a generic claim to a
generic invention (genus) and claims to more than one patentably
distinct species embraced thereby, the examiner may require the
applicant in the reply to that action to elect a species of his or her
invention to which his or her claim will be restricted if no claim to
the genus is found to be allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the
application.

[43 FR 20465, May 11, 1978; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---DESIGN PATENTS

---SECTION---1.151 Rules applicable.

The rules relating to applications for patents for other inventions or
discoveries are also applicable to applications for patents for designs
except as otherwise provided.

---SECTION---1.152 Design drawings.

The design must be represented by a drawing that complies with the
requirements of Section  1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design.

Appropriate and adequate surface shading should be used to show the
character or contour of the surfaces represented. Solid black surface
shading is not permitted except when used to represent the color black
as well as color contrast. Broken lines may be used to show visible
environmental structure, but may not be used to show hidden planes and
surfaces which cannot be seen through opaque materials. Alternate
positions of a design component, illustrated by full and broken lines in
the same view are not permitted in a design drawing.

Color photographs and color drawings are not permitted in design
applications in the absence of a grantable petition pursuant to Section
&nbsp;1.84(a)(2). Photo graphs and ink drawings are not permitted to be
combined as formal drawings in one application. Photographs submitted in
lieu of ink drawings in design patent applications must comply with
Section &nbsp;1.84(b) and must not disclose environmental structure but
must be limited to the design for the article claimed.

Any detail shown in the ink or color drawings or photographs (formal or
informal) deposited with the original application papers constitutes an
integral part of the disclosed and claimed design, except as otherwise
provided in this paragraph. This detail may include, but is not limited
to, color or contrast, graphic or written indicia, including identifying
indicia of a proprietary nature, surface ornamentation on an article, or
any combination thereof.

When any detail shown in informal drawings or photographs does not
constitute an integral part of the disclosed and claimed design, a
specific disclaimer must appear in the original application papers
either in the specification or directly on the drawings or photographs.
This specific disclaimer in the original application papers will provide
antecedent basis for the omission of the disclaimed detail(s) in
later-filed drawings or photographs.

When informal color drawings or photographs are deposited with the
original application papers without a disclaimer pursuant to paragraph
(b)(1) of this section, formal color drawings or photographs, or a black
and white drawing lined to represent color, will be required.

[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended, 58 FR
38719, July 20, 1993, effective Oct. 1, 1993; revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.153 Title, description and claim, oath or declaration.

The title of the design must designate the particular article. No
description, other than a reference to the drawing, is ordinarily
required. The claim shall be in formal terms to the ornamental design
for the article (specifying name) as shown, or as shown and described.
More than one claim is neither required nor permitted.

The oath or declaration required of the applicant must comply with
Section  1.63.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; para. (b), 48
FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.154 Arrangement of application elements.

The elements of the design application, if applicable, should appear in
the following order:

Design Application Transmittal Form.

Fee Transmittal Form.

Preamble, stating name of the applicant, title of the design, and a
brief description of the nature and intended use of the article in which
the design is embodied.

Cross-reference to related applications.

Statement regarding federally sponsored research or development.

Description of the figure or figures of the drawing.

Feature Description.

A single claim.

Drawings or photographs.

Executed oath or declaration (See Section &nbsp;1.153(b)).

[Reserved]

[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20, 1983,
effective date Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996; para. (a)(3) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.155 Issue of design patents.

If, on examination, it appears that the applicant is entitled to a
design patent under the law, a notice of allowance will be sent to the
applicant, or applicant's attorney or agent, calling for the payment of
the issue fee (Section &nbsp;1.18(b)). If this issue fee is not paid
within three months of the date of the notice of allowance, the
application shall be regarded as abandoned.

[47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) -
(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---PLANT PATENTS

---SECTION---1.161 Rules applicable.

The rules relating to applications for patent for other inventions or
discoveries are also applicable to applications for patents for plants
except as otherwise provided.

---SECTION---1.162 Applicant, oath or declaration.

The applicant for a plant patent must be the person who has invented or
discovered and asexually reproduced the new and distinct variety of
plant for which a patent is sought (or as provided in Section Section
1.42, 1.43, and 1.47). The oath or declaration required of the
applicant, in addition to the averments required by Section  1.63, must
state that he or she has asexually reproduced the plant. Where the plant
is a newly found plant the oath or declaration must also state that it
was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]

---SECTION---1.163 Specification and arrangement of application
elements.

The specification must contain as full and complete a disclosure as
possible of the plant and the characteristics thereof that distinguish
the same over related known varieties, and its antecedents, and must
particularly point out where and in what manner the variety of plant has
been asexually reproduced. In the case of a newly found plant, the
specification must particularly point out the location and character of
the area where the plant was discovered.

Two copies of the specification (including the claim) must be submitted,
but only one signed oath or declaration is required.

The elements of the plant application, if applicable, should appear in
the following order:

Plant Application Transmittal Form.

Fee Transmittal Form.

Title of the invention.

Cross-reference to related applications.

Statement regarding federally sponsored research or development.

Background of the invention.

Brief summary of the invention.

Brief description of the drawing.

Detailed Botanical Description.

A single claim.

Abstract of the Disclosure.

Drawings (in duplicate).

Executed oath or declaration.

Plant color coding sheet.

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.

[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20, 1983,
effective Feb. 27, 1983; paras. (c) and (d) added, 61 FR 42790, Aug. 19,
1996, effective Sept. 23, 1996; para. (b) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.164 Claim.

The claim shall be in formal terms to the new and distinct variety of
the specified plant as described and illustrated, and may also recite
the principal distinguishing characteristics. More than one claim is not
permitted.

---SECTION---1.165 Plant Drawings.

Plant patent drawings should be artistically and competently executed
and must comply with the requirements of Section  1.84. View numbers and
reference characters need not be employed unless required by the
examiner. The drawing must disclose all the distinctive characteristics
of the plant capable of visual representation.

The drawing may be in color and when color is a distinguishing
characteristic of the new variety, the drawing must be in color. Two
copies of color drawings or color photographs must be submitted.

[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277, Sept. 17, 1982,
effective Oct. 1, 1982; paras. (a) and (b) amended, 58 FR 38719, July
20, 1993, effective Oct. 1, 1993]

---SECTION---1.166 Specimens.

The applicant may be required to furnish specimens of the plant, or its
flower or fruit, in a quantity and at a time in its stage of growth as
may be designated, for study and inspection. Such specimens, properly
packed, must be forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such specimens, plants
must be made available for official inspection where grown.

---SECTION---1.167 Examination.

Applications may be submitted by the Patent and Trademark Office to the
Department of Agriculture for study and report.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---REISSUES

---SECTION---1.171 Application for reissue.

An application for reissue must contain the same parts required for an
application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications.

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised, 54 FR
6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989;
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.172 Applicants, assignees.

A reissue oath must be signed and sworn to or declaration made by the
inventor or inventors except as otherwise provided (see&nbsp;Section
Section &nbsp;1.42, 1.43, 1.47), and must be accompanied by the written
consent of all assignees, if any, owning an undivided interest in the
patent, but a reissue oath may be made and sworn to or declaration made
by the assignee of the entire interest if the application does not seek
to enlarge the scope of the claims of the original patent. All assignees
consenting to the reissue must establish their ownership interest in the
patent by filing in the reissue application a submission in accordance
with the provisions of Section &nbsp;3.73(b) of this chapter.

A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983,
effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.173 Specification.

The specification of the reissue application must include the entire
specification and claims of the patent, with the matter to be omitted by
reissue enclosed in square brackets; and any additions made by the
reissue must be underlined, so that the old and the new specifications
and claims may be readily compared. Claims should not be renumbered and
the numbering of claims added by reissue should follow the number of the
highest numbered patent claim. No new matter shall be introduced into
the specification.

---SECTION---1.174 Drawings.

The drawings upon which the original patent was issued may be used in
reissue applications if no changes whatsoever are to be made in the
drawings. In such cases, when the reissue application is filed, the
applicant must submit a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of the original
drawings of the size required for original drawing.

Amendments which can be made in a reissue drawing, that is, changes from
the drawing of the patent, are restricted.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983,
effective Feb. 27, 1983]

---SECTION---1.175 Reissue oath or declaration.

The reissue oath or declaration in addition to complying with the
requirements of Section  1.63, must also state that:

The applicant believes the original patent to be wholly or partly
inoperative or invalid by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent, stating at least one
error being relied upon as the basis for reissue; and

All errors being corrected in the reissue application up to the time of
filing of the oath or declaration under this paragraph arose without any
deceptive intention on the part of the applicant.

For any error corrected, which is not covered by the oath or declaration
submitted under paragraph (a) of this section, applicant must submit a
supplemental oath or declaration stating that every such error arose
without any deceptive intention on the part of the applicant. Any
supplemental oath or declaration required by this paragraph must be
submitted before allowance and may be submitted:

With any amendment prior to allowance; or

In order to overcome a rejection under 35&nbsp;U.S.C. 251 made by the
examiner where it is indicated that the submission of a supplemental
oath or declaration as required by this paragraph will overcome the
rejection.

For any error sought to be corrected after allowance, a supplemental
oath or declaration must accompany the requested correction stating that
the error(s) to be corrected arose without any deceptive intention on
the part of the applicant.

Having once stated an error upon which the reissue is based, as set
forth in paragraph (a)(1), unless all errors previously stated in the
oath or declaration are no longer being corrected, a subsequent oath or
declaration under paragraph (b) of this section need not specifically
identify any other error or errors being corrected.

The oath or declaration required by paragraph (a) of this section may be
submitted under the provisions of Section  1.53(f).

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 34 FR 18857,
Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982, effective July
1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983;
para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.176 Examination of reissue.

An original claim, if re-presented in the reissue application, is
subject to reexamination, and the entire application will be examined in
the same manner as original applications, subject to the rules relating
thereto, excepting that division will not be required. Applications for
reissue will be acted on by the examiner in advance of other
applications, but not sooner than two months after announcement of the
filing of the reissue application has appeared in the Official Gazette.

[42 FR 5595, Jan. 28, 1977]

---SECTION---1.177 Reissue in divisions.

The Commissioner may, in his or her discretion, cause several patents to
be issued for distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the required fee for each
division. Each division of a reissue constitutes the subject of a
separate specification descriptive of the part or parts of the invention
claimed in such division; and the drawing may represent only such part
or parts, subject to the provisions of Section Section  1.83 and 1.84.
On filing divisional reissue applications, they shall be referred to the
Commissioner. Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in Section  1.17(i), all the divisions
of a reissue will issue simultaneously; if there is any controversy as
to one division, the others will be withheld from issue until the
controversy is ended, unless the Commissioner orders otherwise.

[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54
FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17,
1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.178 Original patent.

The application for a reissue must be accompanied by an offer to
surrender the original patent. The application should also be
accompanied by the original patent, or if the original is lost or
inaccessible, by an affidavit or declaration to that effect. The
application may be accepted for examination in the absence of the
original patent or the affidavit or declaration, but one or the other
must be supplied before the case is allowed. If a reissue be refused,
the original patent will be returned to applicant upon his request.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969]

---SECTION---1.179 Notice of reissue application.

When an application for a reissue is filed, there will be placed in the
file of the original patent a notice stating that an application for
reissue has been filed. When the reissue is granted or the reissue
application is otherwise terminated, the fact will be added to the
notice in the file of the original patent.

---SECTION---PETITIONS AND ACTION BY THE COMMISSIONER

---SECTION---1.181 Petition to the Commissioner.

Petition may be taken to the Commissioner: (1) From any action or
requirement of any examiner in theex parteprosecution of an application
which is not subject to appeal to the Board of Patent Appeals and
Interferences or to the court; (2) In cases in which a statute or the
rules specify that the matter is to be determined directly by or
reviewed by the Commissioner; and (3) To invoke the supervisory
authority of the Commissioner in appropriate circumstances. For
petitions in interferences, see Section 1.644.

Any such petition must contain a statement of the facts involved and the
point or points to be reviewed and the action requested. Briefs or
memoranda, if any, in support thereof should accompany or be embodied in
the petition; and where facts are to be proven, the proof in the form of
affidavits or declarations (and exhibits, if any) must accompany the
petition.

When a petition is taken from an action or requirement of an examiner in
the ex parte prosecution of an application, it may be required that
there have been a proper request for reconsideration (Section  1.111)
and a repeated action by the examiner. The examiner may be directed by
the Commissioner to furnish a written statement, within a specified
time, setting forth the reasons for his decision upon the matters
averred in the petition, supplying a copy thereof to the petitioner.

Where a fee is required for a petition to the Commissioner the
appropriate section of this part will so indicate. If any required fee
does not accompany the petition, the petition will be dismissed.

Oral hearing will not be granted except when considered necessary by the
Commissioner.

Except as otherwise provided in these rules, any such petition not filed
within 2 months from the action complained of, may be dismissed as
untimely. The mere filing of a petition will not stay the period for
reply to an Examiner's action which may be running against an
application, nor act as a stay of other proceedings.

The Commissioner may delegate to appropriate Patent and Trademark Office
officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; paras. (d) and
(g), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

---SECTION---1.182 Questions not specifically provided for.

All situations not specifically provided for in the regulations of this
part will be decided in accordance with the merits of each situation by
or under the authority of the Commissioner, subject to such other
requirements as may be imposed, and such decision will be communicated
to the interested parties in writing. Any petition seeking a decision
under this section must be accompanied by the petition fee set forth in
Section  1.17(h).

[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.183 Suspension of rules.

In an extraordinary situation, when justice re quires, any requirement
of the regulations in this part which is not a requirement of the
statutes may be suspended or waived by the Commissioner or the
Commissioner's designee, sua sponte, or on petition of the interested
party, subject to such other requirements as may be imposed. Any
petition under this section must be accompanied by the petition fee set
forth in Section 1.17(h).

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982]

---SECTION---1.184 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES

AUTHORITY: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.

---SECTION---1.191 Appeal to Board of Patent Appeals and Interferences.

Every applicant for a patent or for reissue of a patent, and every owner
of a patent under reexamination, any of whose claims has been twice or
finally (Section  1.113) rejected, may appeal from the decision of the
examiner to the Board of Patent Appeals and Interferences by filing a
notice of appeal and the fee set forth in Section  1.17(b) within the
time period provided under Section Section &nbsp;1.134 and 1.136 for
reply.

The signature requirement of Section &nbsp;1.33 does not apply to a
notice of appeal filed under this section.

An appeal when taken must be taken from the rejection of all claims
under rejection which the applicant or patent owner proposes to contest.
Questions relating to matters not affecting the merits of the invention
may be required to be settled before an appeal can be considered.

The time periods set forth in Section Section 1.191 and 1.192 are
subject to the provisions of Section 1.136 for patent applications and
Section  1.550(c) for reexamination proceedings. The time periods set
forth in Section Section  1.193, 1.194, 1.196 and 1.197 are subject to
the provisions of Section  1.136(b) for patent applications orSection 
1.550(c) for reexamination proceedings. See Section 1.304(a) for
extensions of time for filing a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or for commencing a civil action.

Jurisdiction over the application or patent under reexamination passes
to the Board of Patent Appeals and Interferences upon transmittal of the
file, including all briefs and examiner's answers, to the Board. Prior
to the entry of a decision on the appeal, the Com missioner may sua
sponte order the application remanded to the examiner.

[46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982,
effective Oct. 1, 1982; para. (d), 49 FR 555, Jan. 4, 1984, effective
Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;
paras. (b) and (d) amended, para. (e) added, 54 FR 29553, July 13, 1989,
effective Aug. 20, 1989; para. (d) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; paras. (a) and (b) revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.192 Appellant's brief.

Appellant must, within two months from the date of the notice of appeal
under Section  1.191 or within the time allowed for reply to the action
from which the appeal was taken, if such time is later, file a brief in
triplicate. The brief must be accompanied by the fee set forth in
Section  1.17(c) and must set forth the authorities and arguments on
which appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused consideration by
the Board of Patent Appeals and Interferences, unless good cause is
shown.

On failure to file the brief, accompanied by the requisite fee, within
the time allowed, the appeal shall stand dismissed.

The brief shall contain the following items under appropriate headings
and in the order indicated below unless the brief is filed by an
applicant who is not represented by a registered practitioner:

Real party in interest. A statement identifying the real party in
interest, if the party named in the caption of the brief is not the real
party in interest.

Related appeals and interferences. A statement identifying by number and
filing date all other appeals or interferences known to appellant, the
appellant's legal representative, or assignee which will directly affect
or be directly affected by or have a bearing on the Board's decision in
the pending appeal.

Status of claims. A statement of the status of all the claims, pending
or cancelled, and identifying the claims appealed.

Status of amendments. A statement of the status of any amendment filed
subsequent to final rejection.

Summary of invention. A concise explanation of the invention defined in
the claims involved in the appeal, which shall refer to the
specification by page and line number, and to the drawing, if any, by
reference characters.

Issues. A concise statement of the issues presented for review.

Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide the appeal
as to the ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are believed to be
separately patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are separately
patentable.

Argument. The contentions of appellant with respect to each of the
issues presented for review in paragraph (c)(6) of this section, and the
basis therefor, with citations of the authorities, statutes, and parts
of the record relied on. Each issue should be treated under a separate
heading.

For each rejection under 35 U.S.C. 112, first paragraph, the argument
shall specify the errors in the rejection and how the first paragraph of
35 U.S.C. 112 is complied with, including, as appropriate, how the
specification and drawings, if any,

Describe the subject matter defined by each of the rejected claims,

Enable any person skilled in the art to make and use the subject matter
defined by each of the rejected claims, and

Set forth the best mode contemplated by the inventor of carrying out his
or her invention.

For each rejection under 35 U.S.C. 112, second paragraph, the argument
shall specify the errors in the rejection and how the claims
particularly point out and distinctly claim the subject matter which
applicant regards as the invention.

For each rejection under 35 U.S.C. 102, the argument shall specify the
errors in the rejection and why the rejected claims are patentable under
35 U.S.C. 102, including any specific limitations in the rejected claims
which are not described in the prior art relied upon in the rejection.

For each rejection under 35 U.S.C. 103, the argument shall specify the
errors in the rejection and, if appropriate, the specific limitations in
the rejected claims which are not described in the prior art relied on
in the rejection, and shall explain how such limitations render the
claimed subject matter unobvious over the prior art. If the rejection is
based upon a combination of references, the argument shall explain why
the references, taken as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an explanation of why
features disclosed in one reference may not properly be combined with
features disclosed in another reference. A general argument that all the
limitations are not described in a single reference does not satisfy the
requirements of this paragraph.

For any rejection other than those re ferred to in paragraphs (c)(8)(i)
to (iv) of this section, the argument shall specify the errors in the
rejection and the specific limitations in the rejected claims, if
appropriate, or other reasons, which cause the rejection to be in error.

Appendix. An appendix containing a copy of the claims involved in the
appeal.

If a brief is filed which does not comply with all the requirements of
paragraph (c) of this section, appellant will be notified of the reasons
for non-compliance and provided with a period of one month within which
to file an amended brief. If appellant does not file an amended brief
during the one-month period, or files an amended brief which does not
overcome all the reasons for non-compliance stated in the notification,
the appeal will stand dismissed.

[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, Sept. 17, 1982,
effective Oct. 1, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective
Apr. 1, 1984; 53 FR 23734, June 23, 1988, effective Sept. 12, 1988;
para. (a), (c), and (d) revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; paras. (a)-(c) revised, 60 FR 14488, Mar 17, 1995,
effective Apr. 21, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---1.193 Examiner's answer and reply brief.

The primary examiner may, within such time as may be directed by the
Commissioner, furnish a written statement in answer to appellant's brief
including such explanation of the invention claimed and of the
references and grounds of rejection as may be necessary, supplying a
copy to appellant. If the primary examiner finds that the appeal is not
regular in form or does not relate to an appealable action, the primary
examiner shall so state.

An examiner's answer must not include a new ground of rejection, but if
an amendment under Section  1.116 proposes to add or amend one or more
claims and appellant was advised that the amendment under Section  1.116
would be entered for purposes of appeal and which individual
rejection(s) set forth in the action from which the appeal was taken
would be used to reject the added or amended claim(s), then the appeal
brief must address the rejection(s) of the claim(s) added or amended by
the amendment under Section  1.116 as appellant was so advised and the
examiner's answer may include the rejection(s) of the claim(s) added or
amended by the amendment under Section  1.116 as appellant was so
advised. The filing of an amendment under Section  1.116 which is
entered for purposes of appeal represents appellant's consent that when
so advised any appeal proceed on those claim(s) added or amended by the
amendment under Section  1.116 subject to any rejection set forth in the
action from which the appeal was taken.

Appellant may file a reply brief to an examiner's answer within two
months from the date of such examiner's answer. See Section  1.136(b)
for extensions of time for filing a reply brief in a patent application
and Section  1.550(c) for extensions of time for filing a reply brief in
a reexamination proceeding. The primary examiner must either acknowledge
receipt and entry of the reply brief or withdraw the final rejection and
reopen prosecution to respond to the reply brief. A supplemental
examiner's answer is not permitted, unless the application has been
remanded by the Board of Patent Appeals and Interferences for such
purpose.

Where prosecution is reopened by the primary examiner after an appeal or
reply brief has been filed, appellant must exercise one of the following
two options to avoid abandonment of the application:

File a reply under Section  1.111, if the Office action is not final, or
a reply under Section  1.113, if the Office action is final; or

Request reinstatement of the appeal. If reinstatement of the appeal is
requested, such request must be accompanied by a supplemental appeal
brief, but no new amendments, affidavits (Section Section &nbsp;1.130,
1.131 or 1.132) or other evidence are permitted.

[24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969; para. (c), 47 FR
21752, May 19, 1982, added effective July 1, 1982; para. (b), 50 FR
9382, Mar. 7, 1985, effective May 8, 1985; 53 FR 23735, June 23, 1988,
effective Sept. 12, 1988; para. (c) deleted, 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992; para. (b) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.194 Oral hearing.

An oral hearing should be requested only in those circumstances in which
appellant considers such a hearing necessary or desirable for a proper
presentation of the appeal. An appeal decided without an oral hearing
will receive the same consideration by the Board of Patent Appeals and
Interferences as appeals decided after oral hearing.

If appellant desires an oral hearing, appellant must file, in a separate
paper, a written request for such hearing accompanied by the fee set
forth in Section  1.17(d) within two months from the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in Section  1.17(d), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board. See Section 
1.136(b) for extensions of time for requesting an oral hearing in a
patent application and Section  1.550(c) for extensions of time for
requesting an oral hearing in a reexamination proceeding.

If no request and fee for oral hearing have been timely filed by
appellant, the appeal will be assigned for consideration and decision.
If appellant has requested an oral hearing and has submitted the fee set
forth in Section  1.17(d), a day of hearing will be set, and due notice
thereof given to appellant and to the primary examiner. A hearing will
be held as stated in the notice, and oral argument will be limited to
twenty minutes for appellant and fifteen minutes for the primary
examiner unless otherwise ordered before the hearing begins. If the
Board decides that a hearing is not necessary, the Board will so notify
appellant.

[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 41278, Sept. 17,
1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; para. (b) revised 53 FR 23735, June 23, 1988,
effective Sept. 12, 1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.195 Affidavits or declarations after appeal.

Affidavits, declarations, or exhibits submitted after the case has been
appealed will not be admitted without a showing of good and sufficient
reasons why they were not earlier presented.

[34 FR 18858, Nov. 26, 1969]

---SECTION---1.196 Decision by the Board of Patent Appeals and
Interferences.

The Board of Patent Appeals and Interferences, in its decision, may
affirm or reverse the decision of the examiner in whole or in part on
the grounds and on the claims specified by the examiner or remand the
application to the examiner for further consideration. The affirmance of
the rejection of a claim on any of the grounds specified constitutes a
general affirmance of the decision of the examiner on that claim, except
as to any ground specifically reversed.

Should the Board of Patent Appeals and Interferences have knowledge of
any grounds not involved in the appeal for rejecting any pending claim,
it may include in the decision a statement to that effect with its
reasons for so holding, which statement constitutes a new ground of
rejection of the claim. A new ground of rejection shall not be
considered final for purposes of judicial review. When the Board of
Patent Appeals and Interferences makes a new ground of rejection, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (Section  1.197(c)) as
to the rejected claims:

Submit an appropriate amendment of the claims so rejected or a showing
of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner. The new ground of rejection is binding upon
the examiner unless an amendment or showing of facts not previously of
record be made which, in the opinion of the examiner, overcomes the new
ground of rejection stated in the decision. Should the examiner reject
the claims, appellant may again appeal pursuant to Section Section
&nbsp;1.191 through 1.195 to the Board of Patent Appeals and
Interferences.

Request that the application be reheard under Section  1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. The
request for rehearing must address the new ground of rejection and state
with particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. Where request for such rehearing is
made, the Board of Patent Appeals and Interferences shall rehear the new
ground of rejection and, if necessary, render a new decision which shall
include all grounds of rejection upon which a patent is refused. The
decision on rehearing is deemed to incorporate the earlier decision for
purposes of appeal, except for those portions specifically withdrawn on
rehearing, and is final for the purpose of judicial review, except when
noted otherwise in the decision.

Should the decision of the Board of Patent Appeals and Interferences
include an explicit statement that a claim may be allowed in amended
form, appellant shall have the right to amend in conformity with such
statement which shall be binding on the examiner in the absence of new
references or grounds of rejection.

The Board of Patent Appeals and Interferences may require appellant to
address any matter that is deemed appropriate for a reasoned decision on
the pending appeal. Appellant will be given a non-extendable time period
within which to respond to such a requirement.

Whenever a decision of the Board of Patent Appeals and Interferences
includes or allows a remand, that decision shall not be considered a
final decision. When appropriate, upon conclusion of proceedings on
remand before the examiner, the Board of Patent Appeals and
Interferences may enter an order otherwise making its decision final.

See Section  1.136(b) for extensions of time to take action under this
section in a patent application and Section  1.550(c) for extensions of
time in a reexamination proceeding.

[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981; 49 FR 48416,
Dec. 12, 1984, effective Feb. 12, 1985; para. (b) revised, 53 FR 23735,
June 23, 1988, effective Sept. 12, 1988; paras. (a), (b) & (d) amended,
paras. (e) & (f) added, 54 FR 29552, July 13, 1989, effective Aug. 20,
1989; para. (f) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994; paras. (b) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.197 Action following decision.

After decision by the Board of Patent Appeals and Interferences, the
application will be returned to the examiner, subject to appellant's
right of appeal or other review, for such further action by appellant or
by the examiner, as the condition of the application may require, to
carry into effect the decision.

Appellant may file a single request for rehearing within two months from
the date of the original decision, unless the original decision is so
modified by the decision on rehearing as to become, in effect, a new
decision, and the Board of Patent Appeals and Interferences so states.
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
decision and also state all other grounds upon which rehearing is
sought. See Section  1.136(b) for extensions of time for seeking
rehearing in a patent application and Section &nbsp;1.550(c) for
extensions of time for seeking rehearing in a reexamination proceeding.

Termination of proceedings. Proceedings are considered terminated by the
dismissal of an appeal or the failure to timely file an appeal to the
court or a civil action (Section  1.304) except: (1) Where claims stand
allowed in an application or (2) Where the nature of the decision
requires further action by the examiner. The date of termination of
proceedings is the date on which the appeal is dismissed or the date on
which the time for appeal to the court or review by civil action
(Section  1.304) expires. If an appeal to the court or a civil action
has been filed, proceedings are considered terminated when the appeal or
civil action is terminated. An appeal to the U.S. Court of Appeals for
the Federal Circuit is terminated when the mandate is received by the
Office. A civil action is terminated when the time to appeal the
judgment expires.

[46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982,
effective Oct. 1, 1982; 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984;
paras. (a) and (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;
paras. (b) and (c), 54 FR 29552, July 13, 1989, effective Aug. 20, 1989;
para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
paras. (a) & (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---1.198 Reopening after decision.

Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of Section  1.196 without the
written authority of the Commissioner, and then only for the
consideration of matters not already adjudicated, sufficient cause being
shown.

[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985]

---SECTION---MISCELLANEOUS PROVISIONS

---SECTION---1.248 Service of papers; manner of service; proof of
service in cases other than interferences.

Service of papers must be on the attorney or agent of the party if there
be such or on the party if there is no attorney or agent, and may be
made in any of the following ways:

By delivering a copy of the paper to the person served;

By leaving a copy at the usual place of business of the person served
with someone in his employment;

When the person served has no usual place of business, by leaving a copy
at the person's residence, with some person of suitable age and
discretion who resides there;

Transmission by first class mail. When service is by mail the date of
mailing will be regarded as the date of service;

Whenever it shall be satisfactorily shown to the Commissioner that none
of the above modes of obtaining or serving the paper is practicable,
service may be by notice published in the Official Gazette.

Papers filed in the Patent and Trademark Office which are required to be
served shall contain proof of service. Proof of service may appear on or
be affixed to papers filed. Proof of service shall include the date and
manner of service. In the case of personal service, proof of service
shall also include the name of any person served, certified by the
person who made service. Proof of service may be made by:

An acknowledgement of service by or on behalf of the person served or

A statement signed by the attorney or agent containing the information
required by this section.

See Section  1.646 for service of papers in interferences.

[46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb.
11, 1985]

---SECTION---PROTESTS AND PUBLIC USE PROCEEDINGS

---SECTION---1.291 Protests by the public against pending applications.

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:

The protest is submitted prior to the mailing of a notice of allowance
under Section  1.311; and

The protest is either served upon the applicant in accordance with
Section  1.248, or filed with the Office in duplicate in the event
service is not possible.

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:

A listing of the patents, publications, or other information relied
upon;

A concise explanation of the relevance of each listed item;

A copy of each listed patent or publication or other item of information
in written form or at least the pertinent portions thereof; and

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.

A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a
self-addressed postcard which the member of the public may include with
the protest in order to receive an acknowledgment by the Office that the
protest has been received. In the absence of a request by the Office, an
applicant has no duty to, and need not, reply to a protest. The limited
involvement of the member of the public filing a protest pursuant to
paragraph (a) of this section ends with the filing of the protest, and
no further submission on behalf of the protestor will be considered,
except for additional prior art, or unless such submission raises new
issues which could not have been earlier presented.

[47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a) and (c),
57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b)
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.292 Public use proceedings.

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 Section
Section 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.

The petition and accompanying papers, or a notice that such a petition
has been filed, shall be entered in the application file if:

The petition is accompanied by the fee set forth in Section
&nbsp;1.17(j);

The petition is served on the applicant in accordance with Section
&nbsp;1.248, or filed with the Office in duplicate in the event service
is not possible; and

The petition is submitted prior to the mailing of a notice of allowance
under Section  1.311.

A petition for institution of public use proceedings shall not be filed
by a party to an interference as to an application involved in the
interference. Public use and on sale issues in an interference shall be
raised by a preliminary motion under Section  1.633(a).

[42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279, Sept. 17, 1982;
paras. (a) and (c), 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985;
paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 1996, effective Sept.
23, 1996]

---SECTION---1.293 Statutory invention registration.

An applicant for an original patent may request, at any time during the
pendency of applicant's pending complete application, that the
specification and drawings be published as a statutory invention
registration. Any such request must be signed by (1) the applicant and
any assignee of record or (2) an attorney or agent of record in the
application.

Any request for publication of a statutory invention registration must
include the following parts:

A waiver of the applicant's right to receive a patent on the invention
claimed effective upon the date of publication of the statutory
invention registration;

The required fee for filing a request for publication of a statutory
invention registration as provided for in Section  1.17(n) or (o);

A statement that, in the opinion of the requester, the application to
which the request is directed meets the requirements of 35 U.S.C. 112;
and

A statement that, in the opinion of the requester, the application to
which the request is directed complies with the formal requirements of
this part for printing as a patent.

A waiver filed with a request for a statutory invention registration
will be effective, upon publication of the statutory invention
registration, to waive the inventor's right to receive a patent on the
invention claimed in the statutory invention registration, in any
application for an original patent which is pending on, or filed after,
the date of publication of the statutory invention registration. A
waiver filed with a request for a statutory invention registration will
not affect the rights of any other inventor even if the subject matter
of the statutory invention registration and an application of another
inventor are commonly owned. A waiver filed with a request for a
statutory invention registration will not affect any rights in a patent
to the inventor which issued prior to the date of publication of the
statutory invention registration unless a reissue application is filed
seeking to enlarge the scope of the claims of the patent. See also
Section  1.104(c)(5).

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para. (c)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.294 Examination of request for publication of a statutory
invention registration and patent application to which the request is
directed.

Any request for a statutory invention registration will be examined to
determine if the requirements of Section  1.293 have been met. The
application to which the request is directed will be examined to
determine (1) if the subject matter of the application is appropriate
for publication, (2) if the requirements for publication are met, and
(3) if the requirements of 35 U.S.C. 112 andSection 1.293 of this part
are met.

Applicant will be notified of the results of the examination set forth
in paragraph (a) of this section. If the requirements of Section  1.293
and this section are not met by the request filed, the notification to
applicant will set a period of time within which to comply with the
requirements in order to avoid abandonment of the application. If the
application does not meet the requirements of 35&nbsp;U.S.C. 112, the
notification to applicant will include a rejection under the appropriate
provisions of 35&nbsp;U.S.C. 112. The periods for reply established
pursuant to this section are subject to the extension of time provisions
of Section  1.136. After reply by the applicant, the application will
again be considered for publication of a statutory invention
registration. If the requirements of Section &nbsp;1.293 and this
section are not timely met, the refusal to publish will be made final.
If the requirements of 35&nbsp;U.S.C. 112 are not met, the rejection
pursuant to 35&nbsp;U.S.C. 112 will be made final.

If the examination pursuant to this section results in approval of the
request for a statutory invention registration the applicant will be
notified of the intent to publish a statutory invention registration.

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para. (b)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.295 Review of decision finally refusing to publish a
statutory invention registration.

Any requester who is dissatisfied with the final refusal to publish a
statutory invention registration for reasons other than compliance with
35 U.S.C. 112 may obtain review of the refusal to publish the statutory
invention registration by filing a petition to the Commissioner
accompanied by the fee set forth in Section  1.17(h) within one month or
such other time as is set in the decision refusing publication. Any such
petition should comply with the requirements of Section  1.181(b). The
petition may include a request that the petition fee be refunded if the
final refusal to publish a statutory invention registration for reasons
other than compliance with 35 U.S.C. 112 is determined to result from an
error by the Patent and Trademark Office.

Any requester who is dissatisfied with a decision finally rejecting
claims pursuant to 35 U.S.C. 112 may obtain review of the decision by
filing an appeal to the Board of Patent Appeals and Interferences
pursuant toSection  1.191. If the decision rejecting claims pursuant to
35 U.S.C.112 is reversed, the request for a statutory invention
registration will be approved and the registration published if all of
the other provisions of Section 1.293 and this section are met.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985]

---SECTION---1.296 Withdrawal of request for publication of statutory
invention registration.

A request for a statutory invention registration, which has been filed,
may be withdrawn prior to the date of the notice of the intent to
publish a statutory invention registration issued pursuant to Section
1.294(c) by filing a request to withdraw the request for publication of
a statutory invention registration. The request to withdraw may also
include a request for a refund of any amount paid in excess of the
application filing fee and a handling fee of $130.00 which will be
retained. Any request to withdraw the request for publication of a
statutory invention registration filed on or after the date of the
notice of intent to publish issued pursuant to Section  1.294(c) must be
in the form of a petition pursuant to Section  1.183 accompanied by the
fee set forth in Section  1.17(h).

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; revised, 54 FR
6893, Feb. 15, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13,
1991, effective Dec. 16, 1991]

---SECTION---1.297 Publication of statutory invention registration.

If the request for a statutory invention registration is approved the
statutory invention registration will be published. The statutory
invention registration will be mailed to the requester at the
correspondence address as provided for in Section 1.33(a). A notice of
the publication of each statutory invention registration will be
published in the Official Gazette.

Each statutory invention registration published will include a statement
relating to the attributes of a statutory invention registration. The
statement will read as follows:

A statutory invention registration is not a pat ent. It has the
defensive attributes of a patent but does not have the enforceable
attributes of a patent. No article or advertisement or the like may use
the term patent, or any term suggestive of a patent, when referring to a
statutory invention registra tion. For more specific information on the
rights associated with a statutory invention registration see 35 U.S.C.
157.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6,
1985, effective Oct. 5, 1985]

---SECTION---REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

---SECTION---1.301 Appeal to U.S. Court of Appeals for the Federal
Circuit.

Any applicant or any owner of a patent involved in a reexamination
proceeding dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences, may
appeal to the U.S. Court of Appeals for the Federal Circuit. The
appellant must take the following steps in such an appeal:

In the Patent and Trademark Office file a written notice of appeal
directed to the Commissioner (see Section Section  1.302 and 1.304); and

In the Court, file a copy of the notice of appeal, and pay the fee for
appeal, as provided by the rules of the Court.

[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; 50 FR 9383, Mar. 7, 1985, effective
May 8, 1985; 54 FR 29552, July 13, 1989, effective Aug. 20, 1989]

---SECTION---1.302 Notice of appeal.

When an appeal is taken to the U.S. Court of Appeals for the Federal
Circuit, the appellant shall give notice thereof to the Commissioner
within the time specified in Section 1.304.

In interferences, the notice must be served as provided in Section 
1.646.

A notice of appeal, if mailed to the Office, shall be addressed as
follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC
20231.

[24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381, Oct. 26, 1982,
effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. (c) added,
53 FR 16414, May 8, 1988]

---SECTION---1.303 Civil action under 35 U.S.C. 145, 146, 306.

Any applicant or any owner of a patent involved in a reexamination
proceeding dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party dissatisfied with the decision of the
Board of Patent Appeals and Interferences may, instead of appealing to
the the U.S. Court of Appeals for the Federal Circuit (Section 1.301),
have remedy by civil action under 35 U.S.C. 145 or 146, as appropriate.
Such civil action must be commenced within the time specified in Section
1.304.

If an applicant in an ex parte case or an owner of a patent involved in
a reexamination proceeding has taken an appeal to the U.S. Court of
Appeals for the Federal Circuit, he or she thereby waives his or her
right to proceed under 35 U.S.C. 145.

If any adverse party to an appeal taken to the U.S. Court of Appeals for
the Federal Circuit by a defeated party in an interference proceeding
files notice with the Commissioner within twenty days after the filing
of the defeated party's notice of appeal to the court (Section  1.302),
that he or she elects to have all further proceedings conducted as
provided in 35 U.S.C. 146, the notice of election must be served as
provided in Section  1.646.

[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13,
1989, effective Aug. 20, 1989]

---SECTION---1.304 Time for appeal or civil action.

The time for filing the notice of appeal to the U.S. Court of Appeals
for the Federal Circuit (Section  1.302) or for commencing a civil
action (Section  1.303) is two months from the date of the decision of
the Board of Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed within the time
period provided under Section  1.197(b) or Section  1.658(b), the time
for filing an appeal or commencing a civil action shall expire two
months after action on the request. In interferences, the time for
filing a cross-appeal or cross-action expires:

14 days after service of the notice of appeal or the summons and
complaint; or

Two months after the date of decision of the Board of Patent Appeals and
Interferences, whichever is later.

The time periods set forth in this section are not subject to the
provisions of Section Section  1.136, 1.550(c) or 1.645 (a) or (b).

The Commissioner may extend the time for filing an appeal or commencing
a civil action:

For good cause shown if requested in writing before the expiration of
the period for filing an appeal or commencing a civil action, or

Upon written request after the expiration of the period for filing an
appeal or commencing a civil action upon a showing that the failure to
act was the result of excusable neglect.

The times specified in this section in days are calendar days. The time
specified herein in months are calendar months except that one day shall
be added to any two-month period which includes February 28. If the last
day of the time specified for appeal or commencing a civil action falls
on a Saturday, Sunday or Federal holiday in the District of Columbia,
the time is extended to the next day which is neither a Saturday, Sunday
nor a Federal holiday.

If a defeated party to an interference has taken an appeal to the U.S.
Court of Appeals for the Federal Circuit and an adverse party has filed
notice under 35 U.S.C. 141 electing to have all further proceedings
conducted under 35 U.S.C. 146 (Section  1.303(c)), the time for filing a
civil action thereafter is specified in 35 U.S.C. 141. The time for
filing a cross-action expires 14 days after service of the summons and
complaint.

[41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR 47382, Oct. 26, 1982;
para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a) 49
FR Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 50 FR 9383, Mar.
7, 1985, effective May 8, 1985; 54 FR 29553, July 13, 1989, effective
Aug. 20, 1989; paras. (a) and (c) revised 58 FR 54494, Oct. 22, 1993,
effective Nov. 22, 1993; para. (a)(1) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---ALLOWANCE AND ISSUE OF PATENT

---SECTION---1.311 Notice of Allowance.

If, on examination, it shall appear that the applicant is entitled to a
patent under the law, a notice of allowance will be sent to applicant at
the correspondence address indicated in Section 1.33 calling for the
payment of a specified sum constituting the issue fee (Section 1.18)
which shall be paid within 3 months from the date of the mailing of the
notice of allowance.

An authorization to charge the issue fee (Section  1.18) to a deposit
account may be filed in an individual application, either before or
after mailing of the notice of allowance. Where an authorization to
charge the issue fee to a deposit account has been filed before the
mailing of the notice of allowance, the issue fee will be automatically
charged to the deposit account at the time of mailing the notice of
allowance.

[47 FR 41279, Sept. 17, 1982, effective Oct. 1, 1982]

---SECTION---1.312 Amendments after allowance.

No amendment may be made as a matter of right in an application after
the mailing of the notice of allowance. Any amendment pursuant to this
paragraph filed before the payment of the issue fee may be entered on
the recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the case from issue.

Any amendment pursuant to paragraph (a) of this section filed after the
date the issue fee is paid must be accompanied by a petition including
the fee set forth in Section  1.17(i) and a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented. For reissue applications, see Section  1.175(b), which
requires a supplemental oath or declaration to accompany the amendment.

[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.313 Withdrawal from issue.

Applications may be withdrawn from issue for further action at the
initiative of the Office or upon petition by the applicant. Any such
petition by the applicant must include a showing of good and sufficient
reasons why withdrawal of the application is necessary and, if the
reason for the withdrawal is not the fault of the Office, must be
accompanied by the fee set forth in Section  1.17(i). If the application
is withdrawn from issue, a new notice of allowance will be sent if the
application is again allowed. Any amendment accompanying a petition to
withdraw an application from issue must comply with the requirements of
Section  1.312.

When the issue fee has been paid, the application will not be withdrawn
from issue for any reason except:

A mistake on the part of the Office;

A violation of Section  1.56 or illegality in the application;

Unpatentability of one or more claims;

For interference; or

For abandonment to permit consideration of an information disclosure
statement under Section 1.97 in a continuing application.

[47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 54 FR
6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989;
para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.314 Issuance of patent.

If payment of the issue fee is timely made, the patent will issue in
regular course unless the application is withdrawn from issue (Section 
1.313), or issuance of the patent is deferred. Any petition by the
applicant requesting a deferral of the issuance of a patent must be
accompanied by the fee set forth in Section  1.17(i) and must include a
showing of good and sufficient reasons why it is necessary to defer
issuance of the patent.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54
FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.315 Delivery of patent.

The patent will be delivered or mailed upon issuance to the
correspondence address of record. See Section 1.33(a).

[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---1.316 Application abandoned for failure to pay issue fee.

If the issue fee is not paid within three months from the date of the
notice of allowance, the application will be regarded as abandoned. Such
an abandoned application will not be considered as pending before the
Patent and Trademark Office.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; para. (d) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.317 Lapsed patents; delayed payment of balance of issue
fee.

If the issue fee paid is the amount specified in the notice of
allowance, but a higher amount is required at the time the issue fee is
paid, any remaining balance of the issue fee is to be paid within three
months from the date of notice thereof and, if not paid, the patent will
lapse at the termination of the three-month period.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (a) -
(d) amended, paras. (e) & (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; para. (d) amended, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]

---SECTION---1.318 [Reserved]

[43 FR 20465, May 11, 1978; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---DISCLAIMER

---SECTION---1.321 Statutory disclaimers, including terminal
disclaimers.

A patentee owning the whole or any sectional interest in a patent may
disclaim any complete claim or claims in a patent. In like manner any
patentee may disclaim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted. Such disclaimer is
binding upon the grantee and its successors or assigns. A notice of the
disclaimer is published in the Official Gazette and attached to the
printed copies of the specification. The disclaimer, to be recorded in
the Patent and Trademark Office, must:

Be signed by the patentee, or an attorney or agent of record;

Identify the patent and complete claim or claims, or term being
disclaimed. A disclaimer which is not a disclaimer of a complete claim
or claims, or term will be refused recordation;

State the present extent of patentee's ownership interest in the patent;
and

Be accompanied by the fee set forth inSection 1.20(d).

An applicant or assignee may disclaim or dedicate to the public the
entire term, or any terminal part of the term, of a patent to be
granted. Such terminal disclaimer is binding upon the grantee and its
successors or assigns. The terminal disclaimer, to be recorded in the
Patent and Trademark Office, must:

Be signed:

By the applicant, or

If there is an assignee of record of an undivided part interest, by the
applicant and such assignee, or

If there is an assignee of record of the entire interest, by such
assignee, or

By an attorney or agent of record;

Specify the portion of the term of the patent being disclaimed;

State the present extent of applicant's or assignee's ownership interest
in the patent to be granted; and

Be accompanied by the fee set forth in Section 1.20(d).

A terminal disclaimer, when filed to obviate a judicially created double
patenting rejection in a patent application or in a reexamination
proceeding, must:

Comply with the provisions of paragraphs (b)(2) through (b)(4) of this
section;

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

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.

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR
42790, Aug. 19, 1996, effective Sept. 23, 1996]

---SECTION---CORRECTION OF ERRORS IN PATENT

---SECTION---1.322 Certificate of correction of Office mistake.

A certificate of correction under 35 U.S.C. 254 may be issued at the
request of the patentee or the patentee's assignee. Such certificate
will not be issued at the request or suggestion of anyone not owning an
interest in the patent, nor on motion of the Office, without first
notifying the patentee (including any assignee of record) and affording
the patentee an opportunity to be heard. When the request relates to a
patent involved in an interference, the request shall comply with the
requirements of this section and shall be accompanied by a motion under
Section  1.635.

If the nature of the mistake on the part of the Office is such that a
certificate of correction is deemed inappropriate in form, the
Commissioner may issue a corrected patent in lieu thereof as a more
appropriate form for certificate of correction, without expense to the
patentee.

[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969; para. (a), 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985]

---SECTION---1.323 Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature or of minor
character which was not the fault of the Office, appears in a patent and
a showing is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the fee set forth inSection  1.20(a),
issue a certificate, if the correction does not involve such changes in
the patent as would constitute new matter or would require
reexamination. A request for a certificate of correction of a patent
involved in an interference shall comply with the requirements of this
section and shall be accompanied by a motion under Section 1.635.

[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984, effective Feb.
11, 1985]

---SECTION---1.324 Correction of inventorship in patent.

Whenever through error a person is named in an issued patent as the
inventor, or through error an inventor is not named in an issued patent
and such error arose without any deceptive intention on his or her part,
the Commissioner may, on petition, or on order of a court before which
such matter is called in question, issue a certificate naming only the
actual inventor or inventors. A petition to correct inventorship of a
patent involved in an interference must comply with the requirements of
this section and must be accompanied by a motion under Section  1.634.

Any petition pursuant to paragraph (a) of this section must be
accompanied by:

A statement from each person who is being added as an inventor and from
each person who is being deleted as an inventor that the inventorship
error occurred without any deceptive intention on his or her part;

A statement from the current named inventors who have not submitted a
statement under paragraph (b)(1) of this section either agreeing to the
change of inventorship or stating that they have no disagreement in
regard to the requested change;

A statement from all assignees of the parties submitting a statement
under paragraphs (b)(1) and (b)(2) of this section agreeing to the
change of inventorship in the patent, which statement must comply with
the requirements of Section  3.73(b) of this chapter; and

The fee set forth in Section  1.20(b).

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2713, Jan.
20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, 50 FR
23123, May 31, 1985, effective Feb. 11, 1985; revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]

---SECTION---1.325 Other mistakes not corrected.

Mistakes other than those provided for Section Section in 1.322, 1.323,
1.324, and not affording legal grounds for reissue or for reexamination,
will not be corrected after the date of the patent.

[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 1983]

---SECTION---ARBITRATION AWARDS

---SECTION---1.331 [Reserved]

[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978; 47 FR 41281,
Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4,
1992]

---SECTION---1.332 [Reserved]

[47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992,
effective Sept. 4, 1992]

---SECTION---1.333 [Reserved]

[Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]

---SECTION---1.334 [Reserved]

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 54 FR
6893, Feb. 15, 1989, effective Apr. 17, 1989; deleted, 57 FR 29642, July
6, 1992, effective Sept. 4, 1992]

---SECTION---1.335 Filing of notice of arbitration awards.

Written notice of any award by an arbitrator pursuant to 35 U.S.C. 294
must be filed in the Patent and Trademark Office by the patentee or the
patentee's assignee or licensee. If the award involves more than one
patent a separate notice must be filed for placement in the file of each
patent. The notice must set forth the patent number, the names of the
inventor and patent owner, and the names and addresses of the parties to
the arbitration. The notice must also include a copy of the award.

If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a
court, the party requesting the modification must file in the Patent and
Trademark Office, a notice of the modification for placement in the file
of each patent to which the modification applies. The notice must set
forth the patent number, the names of the inventor and patent owner, and
the names and addresses of the parties to the arbitration. The notice
must also include a copy of the court's order modifying the award.

Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be
unenforceable until any notices required by paragraph (a) or (b) of this
section are filed in the Patent and Trademark Office. If any required
notice is not filed by the party designated in paragraph (a) or (b) of
this section, any party to the arbitration proceeding may file such a
notice.

[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]

---SECTION---AMENDMENT OF RULES

---SECTION---1.351 Amendments to rules will be published.

All amendments to the regulations in this part will be published in the
Official Gazette and in the Federal Register.

---SECTION---1.352 [Reserved]

[Para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---MAINTENANCE FEES

---SECTION---1.362 Time for payment of maintenance fees.

Maintenance fees as set forth inSection Section  1.20(e) through (g) are
required to be paid in all patents based on applications filed on or
after December 12, 1980, except as noted in paragraph (b) of this
section, to maintain a patent in force beyond 4, 8 and 12 years after
the date of grant.

Maintenance fees are not required for any plant patents or for any
design patents. Maintenance fees are not required for a reissue patent
if the patent being reissued did not require maintenance fees.

The application filing dates for purposes of payment of maintenance fees
are as follows:

For an application not claiming benefit of an earlier application, the
actual United States filing date of the application.

For an application claiming benefit of an earlier foreign application
under 35 U.S.C. 119, the United States filing date of the application.

For a continuing (continuation, division, continuation-in-part)
application claiming the benefit of a prior patent application under 35
U.S.C. 120, the actual United States filing date of the continuing
application.

For a reissue application, including a continuing reissue application
claiming the benefit of a reissue application under 35 U.S.C. 120, the
United States filing date of the original non-reissue application on
which the patent reissued is based.

For an international application which has entered the United States as
a Designated Office under 35 U.S.C. 371, the international filing date
granted under Article 11(1) of the Patent Cooperation Treaty which is
considered to be the United States filing date under 35 U.S.C. 363.

Maintenance fees may be paid in patents without surcharge during the
periods extending respectively from:

3 years through 3 years and 6 months after grant for the first
maintenance fee,

7 years through 7 years and 6 months after grant for the second
maintenance fee, and

11 years through 11 years and 6 months after grant for the third
maintenance fee.

Maintenance fees may be paid with the surcharge set forth in Section 
1.20(h) during the respective grace periods after:

3 years and 6 months and through the day of the 4th anniversary of the
grant for the first maintenance fee.

7 years and 6 months and through the day of the 8th anniversary of the
grant for the second maintenance fee, and

11 years and 6 months and through the day of the 12th anniversary of the
grant for the third maintenance fee.

If the last day for paying a maintenance fee without surcharge set forth
in paragraph (d) of this section, or the last day for paying a
maintenance fee with surcharge set forth in paragraph (e) of this
section, falls on a Saturday, Sunday, or a federal holiday within the
District of Columbia, the maintenance fee and any necessary surcharge
may be paid under paragraph (d) or paragraph (e) respectively on the
next succeeding day which is not a Saturday, Sunday, or Federal holiday.

Unless the maintenance fee and any applicable surcharge is paid within
the time periods set forth in paragraphs (d), (e) or (f) of this
section, the patent will expire as of the end of the grace period set
forth in paragraph (e) of this section. A patent which expires for the
failure to pay the maintenance fee will expire at the end of the same
date (anniversary date) the patent was granted in the 4th, 8th, or 12th
year after grant.

The periods specified in Section Section 1.362 (d) and (e) with respect
to a reissue application, including a continu ing reissue application
thereof, are counted from the date of grant of the original non-reissue
application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, added effective Nov. 1, 1984; paras. (a)
and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(c)(4) and (e) revised and para. (h) added, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994]

---SECTION---1.363 Fee address for maintenance fee purposes.

All notices, receipts, refunds, and other communications relating to
payment or refund of maintenance fees will be directed to the
correspondence address used during prosecution of the application as
indicated in Section  1.33(a) unless:

A fee address for purposes of payment of maintenance fees is set forth
when submitting the issue fee, or

A change in the correspondence address for all purposes is filed after
payment of the issue fee, or

A fee address or a change in the "fee address" is filed for purposes of
receiving notices, receipts and other correspondence relating to the
payment of maintenance fees after the payment of the issue fee, in which
instance, the latest such address will be used.

An assignment of a patent application or patent does not result in a
change of the "correspondence address" or "fee address" for maintenance
fee purposes.

[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984]

---SECTION---1.366 Submission of maintenance fees.

The patentee may pay maintenance fees and any necessary surcharges, or
any person or organization may pay maintenance fees and any necessary
surcharges on behalf of a patentee. Authorization by the patentee need
not be filed in the Patent and Trademark Office to pay maintenance fees
and any necessary surcharges on behalf of the patentee.

A maintenance fee and any necessary surcharge submitted for a patent
must be submitted in the amount due on the date the maintenance fee and
any necessary surcharge are paid. A maintenance fee or surcharge may be
paid in the manner set forth in Section  1.23 or by an authorization to
charge a deposit account established pursuant to Section  1.25. Payment
of a maintenance fee and any necessary surcharge or the authorization to
charge a deposit account must be submitted within the periods set forth
in Section &nbsp;1.362(d), (e), or (f). Any payment or authorization of
maintenance fees and surcharges filed at any other time will not be
accepted and will not serve as a payment of the maintenance fee except
insofar as a delayed payment of the maintenance fee is accepted by the
Commissioner in an expired patent pursuant to a petition filed under
Section &nbsp;1.378. Any authorization to charge a deposit account must
authorize the immediate charging of the maintenance fee and any
necessary surcharge to the deposit account. Payment of less than the
required amount, payment in a manner other than that set forth Section 
1.23, or in the filing of an authorization to charge a deposit account
having insufficient funds will not constitute payment of a maintenance
fee or surcharge on a patent. The procedures set forth in Section  1.8
or Section  1.10 may be utilized in paying maintenance fees and any
necessary surcharges.

In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the following:

The patent number; and

The application number of the United States application for the patent
on which the maintenance fee is being paid.

Payment of maintenance fees and any surcharges should identify the fee
being paid for each patent as to whether it is the 3 1/2-, 7 1/2-, or 11
1/2-year fee, whether small entity status is being changed or claimed,
the amount of the maintenance fee and any surcharge being paid, and any
assigned customer number. If the maintenance fee and any necessary
surcharge is being paid on a reissue patent, the payment must identify
the reissue patent by reissue patent number and reissue application
number as required by paragraph (c) of this section and should also
include the original patent number.

Maintenance fee payments and surcharge payments relating thereto must be
submitted separate from any other payments for fees or charges, whether
submitted in the manner set forth in Section  1.23 or by an
authorization to charge a deposit account. If maintenance fee and
surcharge payments for more than one patent are submitted together, they
should be submitted on as few sheets as possible with the patent numbers
listed in increasing patent number order. If the payment submitted is
insufficient to cover the maintenance fees and surcharges for all the
listed patents, the payment will be applied in the order the patents are
listed, beginning at the top of the listing.

Notification of any change in status resulting in loss of entitlement to
small entity status must be filed in a patent prior to paying, or at the
time of paying, the earliest maintenance fee due after the date on which
status as a small entity is no longer appropriate. See Section  1.28(b).

Maintenance fees and surcharges relating thereto will not be refunded
except in accordance with Section Section 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (b)
amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; paras. (b)
- (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.377 Review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of patent.

Any patentee who is dissatisfied with the refusal of the Patent and
Trademark Office to accept and record a maintenance fee which was filed
prior to the expiration of the patent may petition the Commissioner to
accept and record the maintenance fee.

Any petition under this section must be filed within 2 months of the
action complained of, or within such other time as may be set in the
action complained of, and must be accompanied by the fee set forth in
Section  1.17(h). The petition may include a request that the petition
fee be refunded if the refusal to accept and record the maintenance fee
is determined to result from an error by the Patent and Trademark
Office.

Any petition filed under this section must comply with the requirements
of Section  1.181(b) and must be signed by an attorney or agent
registered to practice before the Patent and Trademark Office, or by the
patentee, the assignee, or other party in interest.

[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (c)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.378 Acceptance of delayed payment of maintenance fee in
expired patent to reinstate patent.

The Commissioner may accept the payment of any maintenance fee due on a
patent after expiration of the patent if, upon petition, the delay in
payment of the maintenance fee is shown to the satisfaction of the
Commissioner to have been unavoidable (paragraph (b) of this section) or
unintentional (paragraph (c) of this section) and if the surcharge
required by Section  1.20(i) is paid as a condition of accepting payment
of the maintenance fee. If the Commissioner accepts payment of the
maintenance fee upon petition, the patent shall be considered as not
having expired, but will be subject to the conditions set forth in 35
U.S.C. 41(c)(2).

Any petition to accept an unavoidably delayed payment of a maintenance
fee filed under paragraph (a) of this section must include:

The required maintenance fee set forth in Section  1.20 (e) through (g);

The surcharge set forth in Section  1.20(i)(1); and

A showing that the delay was unavoidable since reasonable care was taken
to ensure that the maintenance fee would be paid timely and that the
petition was filed promptly after the patentee was notified of, or
otherwise became aware of, the expiration of the patent. The showing
must enumerate the steps taken to ensure timely payment of the
maintenance fee, the date and the manner in which patentee became aware
of the expiration of the patent, and the steps taken to file the
petition promptly.

Any petition to accept an unintentionally delayed payment of a
maintenance fee filed under paragraph (a) of this section must be filed
within twenty-four months after the six-month grace period provided in
Section  1.362(e) and must include:

The required maintenance fee set forth in Section  1.20 (e) through (g);

The surcharge set forth in Section  1.20(i)(2); and

A statement that the delay in payment of the maintenance fee was
unintentional.

Any petition under this section must be signed by an attorney or agent
registered to practice before the Patent and Trademark Office, or by the
patentee, the assignee, or other party in interest.

Reconsideration of a decision refusing to accept a maintenance fee upon
petition filed pursuant to paragraph (a) of this section may be obtained
by filing a petition for reconsideration within two months of, or such
other time as set in, the decision refusing to accept the delayed
payment of the maintenance fee. Any such petition for reconsideration
must be accompanied by the petition fee set forth in Section  1.17(h).
After decision on the petition for reconsideration, no further
reconsideration or review of the matter will be undertaken by the
Commissioner. If the delayed payment of the maintenance fee is not
accepted, the maintenance fee and the surcharge set forth in Section 
1.20(i) will be refunded following the decision on the petition for
reconsideration, or after the expiration of the time for filing such a
petition for reconsideration, if none is filed. Any petition fee under
this section will not be refunded unless the refusal to accept and
record the maintenance fee is determined to result from an error by the
Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 1984; para. (a), 50
FR 9383, Mar.7, 1985, effective May 8, 1985; paras. (b) and (c), 53 FR
47810, Nov. 28, 1988, effective Jan. 1, 1989; paras. (a) - (c) and (e),
56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) - (c)
and (e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---C International Processing Provisions

---SECTION---GENERAL INFORMATION

---SECTION---1.401 Definitions of terms under the Patent Cooperation
Treaty.

The abbreviation PCT and the term Treaty mean the Patent Cooperation
Treaty.

International Bureau means the World Intellectual Property Organization
located in Geneva, Switzerland.

Administrative Instructions means that body of instructions for
operating under the Patent Cooperation Treaty referred to in PCT Rule
89.

Request, when capitalized, means that element of the international
application described in PCT Rules 3 and 4.

International application, as used in this subchapter is defined in
Section  1.9(b).

Priority date for the purpose of computing time limits under the Patent
Cooperation Treaty is defined in PCT Art. 2(xi). Note also Section 
1.465.

Demand, when capitalized, means that document filed with the
International Preliminary Examining Authority which requests an
international preliminary examination.

Annexes means amendments made to the claims, description or the drawings
before the International Preliminary Examining Authority.

Other terms and expressions in this subpart C not defined in this
section are to be taken in the sense indicated in PCT Art. 2 and 35
U.S.C. 351.

[43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 1987]

---SECTION---1.412 The United States Receiving Office.

The United States Patent and Trademark Office is a Receiving Office only
for applicants who are residents or nationals of the United States of
America.

The Patent and Trademark Office, when acting as a Receiving Office, will
be identified by the full title "United States Receiving Office" or by
the abbreviation "RO/US."

The major functions of the Receiving Office include:

According of international filing dates to international applications
meeting the requirements of PCT Art. 11(1) and PCT Rule 20;

Assuring that international applications meet the standards for format
and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and
portions of PCT Rules 3 through 11;

Collecting and, when required, transmitting fees due for processing
international applications (PCT Rule 14, 15, 16);

Transmitting the record and search copies to the International Bureau
and International Searching Authority, respectively (PCT Rules 22 and
23); and

Determining compliance with applicable requirements of part 5 of this
chapter.

Reviewing and, unless prescriptions concerning national security prevent
the application from being so transmitted (PCT Rule 19.4), transmitting
the international application to the International Bureau for processing
in its capacity as a Receiving Office:

Where the United States Receiving Office is not the competent Receiving
Office under PCT Rule 19.1 or 19.2 and Section  1.421(a); or

Where the international application is not in English but is in a
language accepted under PCT Rule 12.1(a) by the International Bureau as
a Receiving Office; or

Where there is agreement and authorization in accordance with PCT Rule
19.4(a)(iii).

[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective June 1, 1995;
para. (c)(6) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.413 The United States International Searching Authority.

Pursuant to appointment by the Assembly, the United States Patent and
Trademark Office will act as an International Searching Authority for
international applications filed in the United States Receiving Office
and in other Receiving Offices as may be agreed upon by the
Commissioner, in accordance with agreement between the Patent and
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).

The Patent and Trademark Office, when acting as an International
Searching Authority, will be identified by the full title "United States
International Searching Authority" or by the abbreviation "ISA/US."

The major functions of the International Searching Authority include:

Approving or establishing the title and abstract;

Considering the matter of unity of invention;

Conducting international and international-type searches and preparing
international and international-type search reports (PCT Art. 15, 17 and
18, and PCT Rules 25, 33 to 45 and 47); and

Transmitting the international search report to the applicant and the
International Bureau.

---SECTION---1.414 The United States Patent and Trademark Office as a
Designated Office or Elected Office.

The United States Patent and Trademark Office will act as a Designated
Office or Elected Office for international applications in which the
United States of America has been designated or elected as a State in
which patent protection is desired.

The United States Patent and Trademark Office, when acting as a
Designated Office or Elected Office during international processing will
be identified by the full title "United States Designated Office" or by
the abbreviation "DO/US" or by the full title "United States Elected
Office" or by the abbreviation "EO/US."

The major functions of the United States Designated Office or Elected
Office in respect to international applications in which the United
States of America has been designated or elected, include:

Receiving various notifications throughout the international stage and

Accepting for national stage examination international applications
which satisfy the requirements of 35 U.S.C. 371.

[52 FR 20047, May 28, 1987, effective July 1, 1987]

---SECTION---1.415 The International Bureau.

The International Bureau is the World Intellectual Property Organization
located at Geneva, Switzerland. It is the international
intergovernmental organization which acts as the coordinating body under
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351(h)).

The major functions of the International Bureau include:

Publishing of international applications and the International Gazette;

Transmitting copies of international applications to Designated Offices;

Storing and maintaining record copies; and

Transmitting information to authorities pertinent to the processing of
specific international applications.

---SECTION---1.416 The United States International Preliminary Examining
Authority.

Pursuant to appointment by the Assembly, the United States Patent and
Trademark Office will act as an International Preliminary Examining
Authority for international applications filed in the United States
Receiving Office and in other Receiving Offices as may be agreed upon by
the Commissioner, in accordance with agreement between the Patent and
Trademark Office and the International Bureau.

The United States Patent and Trademark Office, when acting as an
International Preliminary Examining Authority, will be identified by the
full title "United States International Preliminary Examining Authority"
or by the abbreviation "IPEA/US."

The major functions of the International Preliminary Examining Authority
include:

Receiving and checking for defects in the Demand;

Forwarding Demands in accordance with PCT Rule 59.3;

Collecting the handling fee for the International Bureau and the
preliminary examination fee for the United States International
Preliminary Examining Authority;

Informing applicant of receipt of the Demand;

Considering the matter of unity of invention;

Providing an international preliminary examination report which is a
non-binding opinion on the questions of whether the claimed invention
appears: to be novel, to involve an inventive step (to be nonobvious),
and to be industrially applicable; and

Transmitting the international preliminary examination report to
applicant and the International Bureau.

[Added 52 FR 20047, May 28, 1987; para. (c) revised, 63 FR 29614, June
1, 1998, effective July 1998]

---SECTION---1.419 Display of currently valid control number under the
Paperwork Reduction Act.

Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.), the collection of information in this subpart has been reviewed
and approved by the Office of Management and Budget under control number
0651-0021.

Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid Office of Management and Budget control
number. This section constitutes the display required by 44 U.S.C.
3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information
under Office of Management and Budget control number 0651-0021 (see 5
CFR 1320.5(b)(2)(ii)(D)).

[Added, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---WHO MAY FILE AN INTERNATIONAL APPLICATION

---SECTION---1.421 Applicant for international application.

Only residents or nationals of the United States of America may file
international applications in

the United States Receiving Office. If an international application does
not include an applicant who is indicated as being a resident or
national of the United States of America, and at least one applicant:

Has indicated a residence or nationality in a PCT Contracting State, or

Has no residence or nationality indicated, applicant will be so notified
and, if the international application includes a fee amount equivalent
to that required by Section  1.445(a)(5), the international application
will be forwarded for processing to the International Bureau acting as a
Receiving Office. (See also Section  1.412(c)(6)).

Although the United States Receiving Office will accept international
applications filed by any resident or national of the United States of
America for international processing, an international application
designating the United States of America will be accepted by the Patent
and Trademark Office for the national stage only if filed by the
inventor or as provided in Section Section  1.422, 1.423 or 1.425.

International applications which do not designate the United States of
America may be filed by the assignee or owner.

The attorney or agent of the applicant may sign the international
application Request and file the international application for the
applicant if the international application when filed is accompanied by
a separate power of attorney to that attorney or agent from the
applicant. The separate power of attorney from the applicant may be
submitted after filing if sufficient cause is shown for not submitting
it at the time of filing. Note that paragraph (b) of this section
requires that the applicant be the inventor if the United States of
America is designated.

Any indication of different applicants for the purpose of different
Designated Offices must be shown on the Request portion of the
international application.

Changes in the person, name, or address of the applicant of an
international application shall be made in accordance with PCT Rule
92bis.

The wording of PCT Rule 92bis is as follows:

PCT Rule 92bis - Recording of Changes in Certain Indications in the
Request or the Demand

92bisRecording of Changes by the International Bureau

The International Bureau shall, on the request of the applicant or the
receiving Office, record changes in the following indications appearing
in the request or demand:

Person name, residence, nationality or address of the applicant,

Person, name or address of the agent, the common representative or the
inventor.

The International Bureau shall not record the requested change if the
request for recording is received by it after the expiration:

Of the time limit referred to in Article 22(1), where Article 39(1) is
not applicable with respect to any Contracting State;

Of the time limit referred to in Article 39(1)(a), where Article 39(1)
is applicable with respect to at least one Contracting State.

[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989;
para. (a) amended, 60 FR 21438, May 2, 1995, effective June 1, 1995]

---SECTION---1.422 When the inventor is dead.

In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may file an
international application which designates the United States of America.

---SECTION---1.423 When the inventor is insane or legally incapacitated.

In case an inventor is insane or otherwise legally in capacitated, the
legal representative (guardian, conservator, etc.) of such inventor may
file an international application which designates the United States of
America.

---SECTION---1.424 Joint inventors.

Joint inventors must jointly file an international application which
designates the United States of America; the signature of either of them
alone, or less than the entire number will be insufficient for an
invention invented by them jointly, except as provided in Section 
1.425.

---SECTION---1.425 Filing by other than inventor.

Where an international application which designates the United States of
America is filed and where one or more inventors refuse to sign the
Request for the international application or cannot be found or reached
after diligent effort, the Request need not be signed by such inventor
if it is signed by another applicant. Such international application
must be accompanied by a statement explaining to the satisfaction of the
Commissioner the lack of the signature concerned.

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---THE INTERNATIONAL APPLICATION

---SECTION---1.431 International application requirements.

An international application shall contain, as specified in the Treaty
and the Regulations, a Request, a description, one or more claims, an
abstract, and one or more drawings (where required). (PCT Art. 3(2) and
Section 207 of the Administrative Instructions.)

An international filing date will be accorded by the United States
Receiving Office, at the time of receipt of the international
application, provided that:

At least one applicant is a United States resident or national and the
papers filed at the time of receipt of the international application so
indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).

The international application is in the English language (35 U.S.C.
361(c), PCT Art. 11(1)(ii)).

The international application contains at least the following elements
(PCT Art. 11(1)(iii)):

An indication that it is intended as an international application (PCT
Rule 4.2);

The designation of at least one Contracting State of the International
Patent Cooperation Union (Section  1.432);

The name of the applicant, as prescribed (note Section Section
1.421-1.424);

A part which on the face of it appears to be a description; and

A part which on the face of it appears to be a claim.

Payment of the basic portion of the international fee (PCT Rule 15.2)
and the transmittal and search fees (Section  1.445) may be made in full
at the time the international application papers required by paragraph
(b) of this section are deposited or within one month thereafter. The
basic, transmittal, and search fee payable is the basic, transmittal,
and search fee in effect on the receipt date of the international
application.

If the basic, transmittal and search fees are not paid within one month
from the date of receipt of the international application and prior to
the sending of a notice of deficiency, applicant will be notified and
given one month within which to pay the deficient fees plus a late
payment fee equal to the greater of:

Fifty percent of the amount of the deficient fees up to a maximum amount
equal to the basic fee; or

An amount equal to the transmittal fee (PCT Rule 16bis).

The one-month time limit set pursuant to this paragraph to pay deficient
fees may not be extended.

If the payment needed to cover the transmittal fee, the basic fee, the
search fee, one designation fee and the late payment fee pursuant to
paragraph (c) of this section is not timely made in accordance with PCT
Rule 16bis.1(e), the Receiving Office will declare the international
application withdrawn under PCT Article 14(3)(a).

[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR 9383,
Mar. 7, 1985, effective May 8, 1985; para. (d) amended, 52 FR 20047, May
28, 1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended, para. (e)
deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (c)
and (d) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.432 Designation of States and payment of designation and
confirmation fees.

The designation of States including an indication that applicant wishes
to obtain a regional patent, where applicable, shall appear in the
Request upon filing and must be indicated as set forth in PCT Rule 4.9
and section 115 of the Administrative Instructions. Applicant must
specify at least one national or regional designation on filing of the
international application for a filing date to be granted.

If the fees necessary to cover all the national and regional
designations specified in the Request are not paid by the applicant
within one year from the priority date or within one month from the date
of receipt of the international application if that month expires after
the expiration of one year from the priority date, applicant will be
notified and given one month within which to pay the deficient
designation fees plus a late payment fee. The late payment fee shall be
equal to the greater of fifty percent of the amount of the deficient
fees up to a maximum amount equal to the basic fee, or an amount equal
to the transmittal fee (PCT Rule 16bis). The one-month time limit set in
the notification of deficient designation fees may not be extended.
Failure to timely pay at least one designation fee will result in the
withdrawal of the international application.

The one designation fee must be paid:

Within one year from the priority date;

Within one month from the date of receipt of the international
application if that month expires after the expiration of one year from
the priority date; or

With the late payment fee defined in this paragraph within the time set
in the notification of the deficient designation fees or in accordance
with PCT Rule 16bis.1(e).

If after a notification of deficient designation fees the applicant
makes timely payment, but the amount paid is not sufficient to cover the
late payment fee and all designation fees, the Receiving Office will,
after allocating payment for the basic, search, transmittal and late
payment fees, allocate the amount paid in accordance with PCT Rule
16bis.1(c) and withdraw the unpaid designations. The notification of
deficient designation fees pursuant to this paragraph may be made
simultaneously with any notification pursuant to Section  1.431(c).

The amount payable for the designation fee set forth in paragraph (b)
is:

The designation fee in effect on the filing date of the international
application, if such fee is paid in full within one month from the date
of receipt of the international application;

The designation fee in effect on the date such fee is paid in full, if
such fee is paid in full later than one month from the date of receipt
of the international application but within one year from the priority
date;

The designation fee in effect on the date one year from the priority
date, if the fee was due one year from the priority date, and such fee
is paid in full later than one month from the date of receipt of the
international application and later than one year from the priority
date; or

The designation fee in effect on the international filing date, if the
fee was due one month from the international filing date and after one
year from the priority date, and such fee is paid in full later than one
month from the date of receipt of the international application and
later than one year from the priority date.

On filing the international application, in addition to specifying at
least one national or regional designation under PCT Rule 4.9(a),
applicant may also indicate under PCT Rule 4.9(b) that all other
designations permitted under the Treaty are made.

Indication of other designations permitted by the Treaty under PCT Rule
4.9(b) must be made in a statement on the Request that any designation
made under this paragraph is subject to confirmation (PCT Rule 4.9(c))
not later than the expiration of 15 months from the priority date by:

Filing a written notice with the United States Receiving Office
specifying the national and/or regional designations being confirmed;

Paying the designation fee for each designation being confirmed; and

Paying the confirmation fee specified in Section  1.445(a)(4).

Unconfirmed designations will be considered withdrawn. If the amount
submitted is not sufficient to cover the designation fee and the
confirmation fee for each designation being confirmed, the Receiving
Office will allocate the amount paid in accordance with any priority of
designations specified by applicant. If applicant does not specify any
priority of designations, the allocation of the amount paid will be made
in accordance with PCT Rule 16bis.1(c).

[43 FR 20486, May 11, 1978; para. (b) amended 52 FR 20047, May 28, 1987;
paras. (a), (b) amended and para. (c) added, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; paras. (b) and (c) revised, para. (d) added, 63
FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.433 Physical requirements of international application.

The international application and each of the documents that may be
referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) shall
be filed in one copy only.

All sheets of the international application must be on A4 size paper
(21.0 x 29.7 cm.).

Other physical requirements for international applications are set forth
in PCT Rule 11 and sections 201-207 of the Administrative Instructions.

---SECTION---1.434 The request.

The request shall be made on a standardized form (PCT Rules 3 and 4).
Copies of printed Request forms are available from the Patent and
Trademark Office. Letters requesting printed forms should be marked "Box
PCT."

The Check List portion of the Request form should indicate each document
accompanying the international application on filing.

All information, for example, addresses, names of States and dates,
shall be indicated in the Request as required by PCT Rule 4 and
Administrative Instructions 110 and 201.

International applications which designate the United States of America
shall include:

The name, address and signature of the inventor, except as provided by
Section Section  1.421(d), 1.422, 1.423 and 1.425;

A reference to any copending national application or international
application designating the United States of America, if the benefit of
the filing date for the prior copending application is to be claimed.

[Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

---SECTION---1.435 The description.

The application must meet the requirements as to the content and form of
the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204
and 208 of the Administrative Instructions.

In international applications designating the United States the
description must contain upon filing an indication of the best mode
contemplated by the inventor for carrying out the claimed invention.

[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.436 The claims.

The requirements as to the content and format of claims are set forth in
PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The
number of the claims shall be reasonable, considering the nature of the
invention claimed.

---SECTION---1.437 The drawings.

Subject to paragraph (b) of this section, when drawings are necessary
for the understanding of the invention, or are mentioned in the
description, they must be part of an international application as
originally filed in the United States Receiving Office in order to
maintain the international filing date during the national stage (PCT
Art. 7).

Drawings missing from the application upon filing will be accepted if
such drawings are received within 30 days of the date of first receipt
of the incomplete papers. If the missing drawings are received within
the 30-day period, the international filing date shall be the date on
which such drawings are received. If such drawings are not timely
received, all references to drawings in the international application
shall be considered non-existent (PCT Art. 14(2), Administrative
Instruction 310).

The physical requirements for drawings are set forth in PCT Rule 11 and
shall be adhered to.

---SECTION---1.438 The abstract.

Requirements as to the content and form of the abstract are set forth in
PCT Rule 8, and shall be adhered to.

Lack of an abstract upon filing of an international application will not
affect the granting of a filing date. However, failure to furnish an
abstract within one month from the date of the notification by the
Receiving Office will result in the international application being
declared withdrawn.

---SECTION---FEES

---SECTION---1.445 International application filing, processing and
search fees.

The following fees and charges for international applications are
established by the Commissioner under the authority of 35 U.S.C. 376:

A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) - $240.00

A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):

Where a corresponding prior United States National application filed
under 35 U.S.C. 111(a) with the filing fee under Section  1.16(a) has
been filed- 450.00

For all situations not provided for in paragraph (a)(2)(i) of this
section - 700.00

A supplemental search fee when required, per additional invention -
210.00

A confirmation fee (PCT Rule 96) equal to fifty percent of the sum of
designation fees for the national and regional designations being
confirmed (Section  1.432(d)).

A fee equivalent to the transmittal fee in paragraph (a)(1) of this
section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4).

The basic fee and designation fee portion of the international fee shall
be as prescribed in PCT Rule 15.

[43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, Sept. 17, 1982,
effective Oct. 1, 1982; para. (a)(4) - (6), 50 FR 9384, Mar. 7, 1985,
effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5,
1985; para. (a) amended 52 FR 20047, May 28, 1987; paras. (a)(2) and
(3), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective
Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective Dec. 27,
1991; para. (a), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992;
para. (a)(4) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993;
paras. (a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994;
para. (a)(5) added, 60 FR 21438, May 2, 1995, effective June 1, 1995;
para. (a) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995;
para. (a) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996;
para. (a) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997;
para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.446 Refund of international application filing and
processing fees.

Money paid for international application fees, where paid by actual
mistake or in excess, such as a payment not required by law or Treaty
and its Regulations, will be refunded.

[Reserved]

Refund of the supplemental search fees will be made if such refund is
determined to be warranted by the Commissioner or the Commissioner's
designee acting under PCT Rule 40. 2(c).

The international and search fees will be refunded if no international
filing date is accorded or if the application is withdrawn before
transmittal of the record copy to the International Bureau (PCT Rules
15.6 and 16.2). The search fee will be refunded if the application is
withdrawn before transmittal of the search copy to the International
Searching Authority. The transmittal fee will not be refunded.

The handling fee (Section  1.482(b)) will be refunded (PCT Rule 57.6)
only if:

The Demand is withdrawn before the Demand has been sent by the
International Preliminary Examining Authority to the International
Bureau, or

The Demand is considered not to have been submitted (PCT Rule 54.4(a)).

[43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, Sept. 17, 1982,
effective Oct. 1, 1982; para.(b), 50 FR 9384, Mar. 7, 1985, effective
May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para.
(d) amended and para. (e) added, 58 FR 4335, Jan. 14, 1993, effective
May 1, 1993]

---SECTION---PRIORITY

---SECTION---1.451 The priority claim and priority document in an
international application.

The claim for priority must, subject to paragraph (d) of this section,
be made on the Request (PCT Rule 4.10) in a manner complying with
sections 110 and 115 of the Administrative Instructions.

Whenever the priority of an earlier United States national application
is claimed in an international application, the applicant may request in
a letter of transmittal accompanying the international application upon
filing with the United States Receiving Office or in a separate letter
filed in the Receiving Office not later than 16 months after the
priority date, that the Patent and Trademark Office prepare a certified
copy of the national application for transmittal to the International
Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a
certified copy is stated in Section  1.19(b)(1).

If a certified copy of the priority document is not submitted together
with the international application on filing, or, if the priority
application was filed in the United States and a request and appropriate
payment for preparation of such a certified copy do not accompany the
international application on filing or are not filed within 16 months of
the priority date, the certified copy of the priority document must be
furnished by the applicant to the International Bureau or to the United
States Receiving Office within the time limit specified in PCT Rule
17.1(a).

The applicant may correct or add a priority claim in accordance with PCT
Rule 26bis.1.

[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982, effective Oct.
1, 1982; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982;
paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para.
(b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a)
amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a)
revised, para. (d) added, 63 FR 29614, June 1, 1998, effective July 1,
1998]

---SECTION---REPRESENTATION

---SECTION---1.455 Representation in international applications.

Applicants of international applications may be represented by attorneys
or agents registered to practice before the Patent and Trademark Office
or by an applicant appointed as a common representative (PCT Art. 49,
Rules 4.8 and 90 and Section  10.10). If applicants have not appointed
an attorney or agent or one of the applicants to represent them, and
there is more than one applicant, the applicant first named in the
request and who is entitled to file in the U.S. Receiving Office shall
be considered to be the common representative of all the applicants. An
attorney or agent having the right to practice before a national office
with which an international application is filed and for which the
United States is an International Searching Authority or International
Preliminary Examining Authority may be appointed to represent the
applicants in the international application before that authority. An
attorney or agent may appoint an associate attorney or agent who shall
also then be of record (PCT Rule 90.1(d)). The appointment of an
attorney or agent, or of a common representative, revokes any earlier
appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).

Appointment of an agent, attorney or common representative (PCT Rule
4.8) must be effected either in the Request form, signed by all
applicants, or in a separate power of attorney submitted either to the
United States Receiving Office or to the International Bureau.

Powers of attorney and revocations thereof should be submitted to the
United States Receiving Office until the issuance of the international
search report.

The addressee for correspondence will be as indicated in section 108 of
the Administrative Instructions.

[43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985, effective Mar. 8,
1985; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1,
1993]

---SECTION---TRANSMITTAL OF RECORD COPY

---SECTION---1.461 Procedures for transmittal of record copy to the
International Bureau.

Transmittal of the record copy of the international application to the
International Bureau shall be made by the United States Receiving Office
or as provided by PCT Rule 19.4.

[Reserved]

No copy of an international application may be transmitted to the
International Bureau, a foreign Designated Office, or other foreign
authority by the United States Receiving Office or the applicant, unless
the applicable requirements of part 5 of this chapter have been
satisfied.

[43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR 9384, Mar. 7,
1985, effective May 8, 1985; para. (a) revised, 63 FR 29614, June 1,
1998, effective July 1, 1998]

---SECTION---TIMING

---SECTION---1.465 Timing of application processing based on the
priority date.

For the purpose of computing time limits under the Treaty, the priority
date shall be defined as in PCT Art. 2(xi).

When a claimed priority date is corrected or added under PCT Rule
26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not to
have been made under PCT Rule 26bis.2, the priority date for the
purposes of computing any non-expired time limits will be the date of
the earliest valid remaining priority claim of the international
application, or if none, the international filing date.

When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a)
(i) or (iii) are timely submitted, and the date of receipt of such
corrections falls later than one year from the claimed priority date or
dates, the Receiving Office shall proceed under PCT Rule 26bis.2.

[Paras. (b) and (c) revised, 63 FR 29614, June 1, 1998, effective July
1, 1998]

---SECTION---1.468 Delays in meeting time limits.

Delays in meeting time limits during international processing of
international applications may only be excused as provided in PCT Rule
82. For delays in meeting time limits in a national application, see
Section  1.137.

---SECTION---AMENDMENTS

---SECTION---1.471 Corrections and amendments during international
processing.

Except as otherwise provided in this paragraph, all corrections
submitted to the United States Receiving Office or United States
International Searching Authority must be in English, in the form of
replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets. Replacement sheets are
not required for the deletion of lines of text, the correction of simple
typographical errors, and one addition or change of not more than five
words per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make the deletion
or transfer the correction to the international application, provided
that such corrections do not adversely affect the clarity and direct
reproducibility of the application (PCT Rule 26.4). Amendments that do
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.

Amendments of claims submitted to the International Bureau shall be as
prescribed by PCT Rule 46.

[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.472 Changes in person, name, or address of applicants and
inventors.

All requests for a change in person, name or address of applicants and
inventor should be sent to the United States Receiving Office until the
time of issuance of the international search report. Thereafter requests
for such changes should be submitted to the International Bureau.

[43 FR 20466, May 11, 1978; redesignated at 52 FR 20047, May 28, 1987]

---SECTION---UNITY OF INVENTION

---SECTION---1.475 Unity of invention before the International Searching
Authority, the International Preliminary Examining Authority and during
the national stage.

An international and a national stage application shall relate to one
invention only or to a group of inventions so linked as to form a single
general inventive concept ("requirement of unity of invention"). Where a
group of inventions is claimed in an application, the requirement of
unity of invention shall be fulfilled only when there is a technical
relationship among those inventions involving one or more of the same or
corresponding special technical features. The expression "special
technical features" shall mean those technical features that define a
contribution which each of the claimed inventions, considered as a
whole, makes over the prior art.

An international or a national stage application containing claims to
different categories of invention will be considered to have unity of
invention if the claims are drawn only to one of the following
combinations of categories:

A product and a process specially adapted for the manufacture of said
product; or

A product and process of use of said product; or

A product, a process specially adapted for the manufacture of the said
product, and a use of the said product; or

A process and an apparatus or means specifically designed for carrying
out the said process; or

A product, a process specially adapted for the manufacture of the said
product, and an apparatus or means specifically designed for carrying
out the said process.

If an application contains claims to more or less than one of the
combinations of categories of invention set forth in paragraph (b) of
this section, unity of invention might not be present.

If multiple products, processes of manufacture or uses are claimed, the
first invention of the category first mentioned in the claims of the
application and the first recited invention of each of the other
categories related thereto will be considered as the main invention in
the claims, see PCT Article 17(3)(a) and Section  1.476(c).

The determination whether a group of inventions is so linked as to form
a single general inventive concept shall be made without regard to
whether the inventions are claimed in separate claims or as alternatives
within a single claim.

[Added 52 FR 20047, May 28, 1987, effective July 1, 1987; paras. (a) -
(e) amended and para. (f) deleted, 58 FR 4335, Jan. 14, 1993, effective
May 1, 1993]

---SECTION---1.476 Determination of unity of invention before the
International Searching Authority.

Before establishing the international search report, the International
Searching Authority will determine whether the international application
complies with the requirement of unity of invention as set forth in
Section  1.475.

If the International Searching Authority considers that the
international application does not comply with the requirement of unity
of invention, it shall inform the applicant accordingly and invite the
payment of additional fees (note Section  1.445 and PCT Art. 17(3)(a)
and PCT Rule 40). The applicant will be given a time period in
accordance with PCT Rule 40.3 to pay the additional fees due.

In the case of non-compliance with unity of invention and where no
additional fees are paid, the international search will be performed on
the invention first mentioned ("main invention") in the claims.

Lack of unity of invention may be directly evident before considering
the claims in relation to any prior art, or after taking the prior art
into consideration, as where a document discovered during the search
shows the invention claimed in a generic or linking claim lacks novelty
or is clearly obvious, leaving two or more claims joined thereby without
a common inventive concept. In such a case the International Searching
Authority may raise the objection of lack of unity of invention.

[43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 20047, May
28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1,
1993]

---SECTION---1.477 Protest to lack of unity of invention before the
International Searching Authority.

If the applicant disagrees with the holding of lack of unity of
invention by the International Searching Authority, additional fees may
be paid under protest, accompanied by a request for refund and a
statement setting forth reasons for disagreement or why the required
additional fees are considered excessive, or both (PCT Rule 40.2(c)).

Protest under paragraph (a) of this section will be examined by the
Commissioner or the Commissioner's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.

An applicant who desires that a copy of the protest and the decision
thereon accompany the international search report when forwarded to the
Designated Offices may notify the International Searching Authority to
that effect any time prior to the issuance of the international search
report. Thereafter, such notification should be directed to the
International Bureau (PCT Rule 40.2(c)).

[43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 20047, May
28, 1987]

---SECTION---INTERNATIONAL PRELIMINARY EXAMINATION

---SECTION---1.480 Demand for international preliminary examination.

On the filing of a proper Demand in an application for which the United
States International Preliminary Examining Authority is competent and
for which the fees have been paid, the international application shall
be the subject of an international preliminary examination. The
preliminary examination fee (Section  1.482(a)(1)) and the handling fee
(Section  1.482(b)) shall be due at the time of filing the Demand.

The Demand shall be made on a standardized form. Copies of the printed
Demand forms are available from the Patent and Trademark Office. Letters
requesting printed Demand forms should be marked "Box PCT."

If the Demand is made prior to the expiration of the 19th month from the
priority date and the United States of America is elected, the
provisions of Section  1.495 shall apply rather than Section  1.494.

Withdrawal of a proper Demand prior to the start of the international
preliminary examination will entitle applicant to a refund of the
preliminary examination fee minus the amount of the transmittal fee set
forth in Section  1.445(a)(1).

[52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov. 28, 1988,
effective Jan. 1, 1989; para. (b) amended, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; para. (a) revised, 63 FR 29614, June 1, 1998,
effective July 1, 1998]

---SECTION---1.481 Payment of international preliminary examination
fees.

The handling and preliminary examination fees shall be paid within the
time period set in PCT Rule 57.3. The handling fee or preliminary
examination fee payable is the handling fee or preliminary examination
fee in effect on the date of receipt of the Demand except under PCT Rule
59.3(a) where the fee payable is the fee in effect on the date of
arrival of the Demand at the United States International Preliminary
Examining Authority.

If the handling and preliminary fees are not paid within the time period
set in PCT Rule 57.3, applicant will be notified and given one month
within which to pay the deficient fees plus a late payment fee equal to
the greater of:

Fifty percent of the amount of the deficient fees, but not exceeding an
amount equal to double the handling fee; or

An amount equal to the handling fee (PCT Rule 58bis.2).

The one-month time limit set in this paragraph to pay deficient fees may
not be extended.

If the payment needed to cover the handling and preliminary examination
fees, pursuant to paragraph (a) of this section, is not timely made in
accordance with PCT Rule 58bis.1(d), the United States International
Preliminary Examination Authority will declare the Demand to be
considered as if it had not been submitted.

[63 FR 29614, June 1, 1998, effective July 1, 1998]

---SECTION---1.482 International preliminary examination fees.

The following fees and charges for international preliminary examination
are established by the Commissioner under the authority of 35 U.S.C.
376:

A preliminary examination fee is due on filing the Demand:

Where an international search fee as set forth in Section  1.445(a)(2)
has been paid on the international application to the United States
Patent and Trademark Office as an International Searching Authority, a
preliminary examination fee of

490.00

Where the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office, a preliminary examination fee of

750.00

An additional preliminary examination fee when required, per additional
invention:

Where the international Searching Authority for the international
application was the United States Patent and Trademark Office

140.00

Where the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office

260.00

The handling fee is due on filing the Demand.

[52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb. 15, 1989,
effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991,
effective Dec. 27, 1991; paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug.
21, 1992, effective Oct. 1, 1992; paras. (a)(2)(i) and (b) amended, 58
FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1) and
(a)(2)(ii), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras.
(a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018, Aug. 11, 1995,
effective Oct. 1, 1995; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii)
amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras.
(a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended, 62 FR 40450, July 29,
1997, effective Oct. 1, 1997]

---SECTION---1.484 Conduct of international preliminary examination.

An international preliminary examination will be conducted to formulate
a non-binding opinion as to whether the claimed invention has novelty,
involves an inventive step (is non-obvious) and is industrially
applicable.

International preliminary examination will begin promptly upon receipt
of a proper Demand in an application for which the United States
International Preliminary Examining Authority is competent, for which
the fees for international preliminary examination (Section  1.482) have
been paid, and which requests examination based on the application as
filed or as amended by an amendment which has been received by the
United States International Preliminary Examining Authority. Where a
Demand requests examination based on a PCT Article 19 amendment which
has not been received, examination may begin at 20 months without
receipt of the PCT Article 19 amendment. Where a Demand requests
examination based on a PCT Article 34 amendment which has not been
received, applicant will be notified and given a time period within
which to submit the amendment.

Examination will begin after the earliest of:

Receipt of the amendment;

Receipt of applicant's statement that no amendment will be made; or

Expiration of the time period set in the notification.

No international preliminary examination report will be established
prior to issuance of an international search report.

No international preliminary examination will be conducted on inventions
not previously searched by an International Searching Authority.

The International Preliminary Examining Authority will establish a
written opinion if any defect exists or if the claimed invention lacks
novelty, inventive step or industrial applicability and will set a
non-extendable time limit in the written opinion for the applicant to
reply.

If no written opinion under paragraph (d) of this section is necessary,
or after any written opinion and the reply thereto or the expiration of
the time limit for reply to such written opinion, an international
preliminary examination report will be established by the International
Preliminary Examining Authority. One copy will be submitted to the
International Bureau and one copy will be submitted to the applicant.

An applicant will be permitted a personal or telephone interview with
the examiner, which must be conducted during the non-extendable time
limit for reply by the applicant to a written opinion. Additional
interviews may be conducted where the examiner determines that such
additional interviews may be helpful to advancing the international
preliminary examination procedure. A summary of any such personal or
telephone interview must be filed by the applicant as a part of the
reply to the written opinion or, if applicant files no reply, be made of
record in the file by the examiner.

[52 FR 20049, May 28, 1987; para. (b) amended, 58 FR 4335, Jan. 14,
1993, effective May 1, 1993; paras. (d)-(f) revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para. (b) revised, 63 FR 29614, June
1, 1998, effective July 1, 1998]

---SECTION---1.485 Amendments by applicant during international
preliminary examination.

The applicant may make amendments at the time of filing the Demand. The
applicant may also make amendments within the time limit set by the
International Preliminary Examining Authority for reply to any
notification under Section  1.484(b) or to any written opinion. Any such
amendments must:

Be made by submitting a replacement sheet in compliance with PCT Rules
10 and 11.1 to 11.13 for every sheet of the application which differs
from the sheet it replaces unless an entire sheet is cancelled; and

Include a description of how the replacement sheet differs from the
replaced sheet. Amendments that do not comply with PCT Rules 10 and 11.1
to 11.13 may not be entered.

If an amendment cancels an entire sheet of the international
application, that amendment shall be communicated in a letter.

[Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para. (a) revised, 63 FR 29614, June 1, 1998,
effective July 1, 1998]

---SECTION---1.488 Determination of unity of invention before the
International Preliminary Examining Authority.

Before establishing any written opinion or the international preliminary
examination report, the International Preliminary Examining Authority
will determine whether the international application complies with the
requirement of unity of invention as set forth in Section  1.475.

If the International Preliminary Examining Authority considers that the
international application does not comply with the requirement of unity
of invention, it may:

Issue a written opinion and/or an international preliminary examination
report, in respect of the entire international application and indicate
that unity of invention is lacking and specify the reasons therefor
without extending an invitation to restrict or pay additional fees. No
international preliminary examination will be conducted on inventions
not previously searched by an International Searching Authority.

Invite the applicant to restrict the claims or pay additional fees,
pointing out the categories of invention found, within a set time limit
which will not be extended. No international preliminary examination
will be conducted on inventions not previously searched by an
International Searching Authority, or

If applicant fails to restrict the claims or pay additional fees within
the time limit set for reply, the International Preliminary Examining
Authority will issue a written opinion and/or establish an international
preliminary examination report on the main invention and shall indicate
the relevant facts in the said report. In case of any doubt as to which
invention is the main invention, the invention first mentioned in the
claims and previously searched by an International Searching Authority
shall be considered the main invention.

Lack of unity of invention may be directly evident before considering
the claims in relation to any prior art, or after taking the prior art
into consideration, as where a document discovered during the search
shows the invention claimed in a generic or linking claim lacks novelty
or is clearly obvious, leaving two or more claims joined thereby without
a common inventive concept. In such a case the International Preliminary
Examining Authority may raise the objection of lack of unity of
invention.

[52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14,
1993, effective May 1, 1993; para. (b)(3) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.489 P rotest to lack of unity of invention before the
International Preliminary Examining Authority.

If the applicant disagrees with the holding of lack of unity of
invention by the International Preliminary Examining Authority,
additional fees may be paid under protest, accompanied by a request for
refund and a statement setting forth reasons for disagreement or why the
required additional fees are considered excessive, or both.

Protest under paragraph (a) of this section will be examined by the
Commissioner or the Commissioner's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.

An applicant who desires that a copy of the protest and the decision
thereon accompany the international preliminary examination report when
forwarded to the Elected Offices, may notify the International
Preliminary Examining Authority to that effect any time prior to the
issuance of the international preliminary examination report.
Thereafter, such notification should be directed to the International
Bureau.

[Added 52 FR 20050, May 28, 1987, effective July 1, 1987]

---SECTION---NATIONAL STAGE

---SECTION---1.491 Entry into the national stage.

An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C. 371(c)
within the periods set in Section  1.494 or Section  1.495.

[Added, 52 FR 20050, May 28, 1987]

---SECTION---1.492 National stage fees.

The following fees and charges are established for international
applications entering the national stage under 35 U.S.C. 371:

The basic national fee:

Where an international preliminary examination fee as set forth in
Section  1.482 has been paid on the international application to the
United States Patent and Trademark Office:

By a small entity (Section  1.9(f))

360.00

By other than a small entity

720.00

Where no international preliminary examination fee as set forth in
Section  1.482 has been paid to the United States Patent and Trademark
Office, but an international search fee as set forth in Section 
1.445(a)(2) has been paid on the international application to the United
States Patent and Trademark Office as an International Searching
Authority:

By a small entity (Section  1.9(f))

395.00

By other than a small entity

790.00

Where no international preliminary examination fee as set forth in
Section  1.482 has been paid and no international search fee as set
forth in Section  1.445(a)(2) has been paid on the international
application to the United States Patent and Trademark Office:

By a small entity (Section  1.9(f))

535.00

By other than a small entity

1

Where an international preliminary examination fee as set forth in
Section  1.482 has been paid to the United States Patent and Trademark
Office and the international preliminary examination report states that
the criteria of novelty, inventive step (non-obviousness), and
industrial applicability, as defined in PCT Article 33(1) to (4) have
been satisfied for all the claims presented in the application entering
the national stage (see Section  1.496(b)):

By a small entity (Section  1.9(f))

49.00

By other than a small entity

98.00

Where a search report on the international application has been prepared
by the European Patent Office or the Japanese Patent Office:

By a small entity (Section  1.9(f))

465.00

By other than a small entity

930.00

In addition to the basic national fee, for filing or later presentation
of each independent claim in excess of 3:

By a small entity (Section  1.9(f))

41.00

By other than a small entity

82.00

In addition to the basic national fee, for filing or later presentation
of each claim (whether independent or dependent) in excess of 20 (Note
that Section  1.75(c) indicates how multiple dependent claims are
considered for fee calculation purposes.):

By a small entity (Section  1.9(f))

11.00

By other than a small entity

22.00

In addition to the basic national fee, if the application contains, or
is amended to contain, a multiple dependent claim(s), per application:

By a small entity (Section  1.9(f))

135.00

By other than a small entity

270.00

Surcharge for filing the oath or declaration later than 20 months from
the priority date pursuant to Section  1.494(c) or later than 30 months
from the priority date pursuant to Section  1.495(c):

By a small entity (Section  1.9(f))

65.00

By other than a small entity

130.00

For filing an English translation of an international application later
than 20 months after the priority date (Section  1.494(c)) or filing an
English translation of the international application or of any annexes
to the international preliminary examination report later than 30 months
after the priority date (Section Section  1.495(c) and (e))

130.00

If the additional fees required by paragraphs (b), (c), and (d) of this
section are not paid on presentation of the claims for which the
additional fees are due, they must be paid or the claims cancelled by
amendment, prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency.

[52 FR 20050, May 28, 1987, effective July 1, 1987; paras. (a)(1) - (3),
(b), (d)- (f), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para.
(a)(5) added, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
revised, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 1992, effective
Oct. 1, 1992; para. (e) amended, 58 FR 4335, Jan. 14, 1993, effective
May 1, 1993; paras. (a), (b) and (d), 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; paras. (a), (b), & (d) amended, 60 FR 41018,
Aug. 11, 1995, effective, Oct. 1, 1995; paras. (a), (b), & (d) amended,
61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), &
(d) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para.
(g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.494 Entering the national stage in the United States of
America as a Designated Office.

Where the United States of America has not been elected by the
expiration of 19 months from the priority date (see Section  1.495), the
applicant must fulfill the requirements of PCT Article 22 and 35 U.S.C.
371 within the time periods set forth in paragraphs (b) and (c) of this
section in order to prevent the abandonment of the international
application as to the Unites States of America. International
applications for which those requirements are timely fulfilled will
enter the national stage and obtain an examination as to the
patentability of the invention in the United States of America.

To avoid abandonment of the application, the applicant shall furnish to
the United States Patent and Trademark Office not later than the
expiration of 20 months from the priority date:

A copy of the international application, unless it has been previously
communicated by the International Bureau or unless it was originally
filed in the United States Patent and Trademark Office; and

The basic national fee (see Section  1.492(a)). The 20-month time limit
may not be extended.

If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:

A translation of the international application, as filed, into the
English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or

The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
Section  1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Section  1.492(f) is required for acceptance
of an English translation later than the expiration of 20 months after
the priority date. The payment of the surcharge set forth in Section 
1.492(e) is required for acceptance of the oath or declaration of the
inventor later than the expiration of 20 months after the priority date.
A "Sequence Listing" need not be translated if the "Sequence Listing"
complies with PCT Rule 12.1(d) and the description complies with PCT
Rule 5.2(b).

A copy of any amendments to the claims made under PCT Article 19, and a
translation of those amendments into English, if they were made in
another language, must be furnished not later than the expiration of 20
months from the priority date. Amendments under PCT Article 19 which are
not received by the expiration of 20 months from the priority date will
be considered to be cancelled. The 20-month time limit may not be
extended.

Verification of the translation of the international application or any
other document pertaining to an international application may be
required where it is considered necessary, if the international
application or other document was filed in a language other than
English.

The documents and fees submitted under paragraphs (b) and (c) of this
section must be clearly identified as a submission to enter the national
stage under 35 U.S.C. 371, otherwise the submission will be considered
as being made under 35 U.S.C. 111.

An international application becomes abandoned as to the United States
20 months from the priority date if the requirements of paragraph (b) of
this section have not been complied with within 20 months from the
priority date where the United States has been designated but not
elected by the expiration of 19 months from the priority date. If the
requirements of paragraph (b) of this section are complied with within
20 months from the priority date but any required translation of the
international application as filed and/or the oath or declaration are
not timely filed, an international application will become abandoned as
to the United States upon expiration of the time period set pursuant to
paragraph (c) of this section.

[Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and (g) amended and
para. (h) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993;
para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para (c) revised, 63 FR 29614, June 1, 1998, effective, July 1, 1998]

---SECTION---1.495 Entering the national stage in the United States of
America as an Elected Office

Where the United States of America has been elected by the expiration of
19 months from the priority date, the applicant must fulfill the
requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the Unites States of
America. International applications for which those requirements are
timely fulfilled will enter the national stage and obtain an examination
as to the patentability of the invention in the Unites State of America.

To avoid abandonment of the application, the applicant shall furnish to
the United States Patent and Trademark Office not later than the
expiration of 30 months from the priority date:

A copy of the international application, unless it has been previously
communicated by the International Bureau or unless it was originally
filed in the United States Patent and Trademark Office; and

The basic national fee (see Section  1.492(a)). The 30-month time limit
may not be extended.

If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:

A translation of the international application, as filed, into the
English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or

The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see
Section  1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Section  1.492(f) is required for acceptance
of an English translation later than the expiration of 30 months after
the priority date. The payment of the surcharge set forth in Section 
1.492(e) is required for acceptance of the oath or declaration of the
inventor later than the expiration of 30 months after the priority date.

A "Sequence Listing" need not be translated if the "Sequence Listing"
complies with PCT Rule 12.1(d) and the description complies with PCT
Rule 5.2(b).

A copy of any amendments to the claims made under PCT Article 19, and a
translation of those amendments into English, if they were made in
another language, must be furnished not later than the expiration of 30
months from the priority date. Amendments under PCT Article 19 which are
not received by the expiration of 30 months from the priority date will
be considered to be cancelled. The 30-month time limit may not be
extended.

A translation into English of any annexes to the international
preliminary examination report, if the annexes were made in another
language, must be furnished not later than the expiration of 30 months
from the priority date. Translations of the annexes which are not
received by the expiration of 30 months from the priority date may be
submitted within any period set pursuant to paragraph (c) of this
section accompanied by the processing fee set forth in Section 
1.492(f). Annexes for which translations are not timely received will be
considered cancelled. The 30-month time limit may not be extended.

Verification of the translation of the international application or any
other document pertaining to an international application may be
required where it is considered necessary, if the international
application or other document was filed in a language other than
English.

The documents submitted under paragraphs (b) and (c) of this section
must be clearly identified as a submission to enter the national stage
under 35 U.S.C. 371, otherwise the submission will be considered as
being made under 35 U.S.C. 111.

An international application becomes abandoned as to the United States
30 months from the priority date if the requirements of paragraph (b) of
this section have not been complied with within 30 months from the
priority date and the United States has been elected by the expiration
of 19 months from the priority date. If the requirements of paragraph
(b) of this section are complied with within 30 months from the priority
date but any required translation of the international application as
filed and/or the oath or declaration are not timely filed, an
international application will become abandoned as to the United States
upon expiration of the time period set pursuant to paragraph (c) of this
section.

[Added 52 FR 20051, May 28, 1987, effective July 1, 1987; paras. (a)
-(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para (c) revised, 63 FR 29614, June 1, 1998,
effective July 1, 1998]

---SECTION---1.496 Examination of international applications in the
national stage.

International applications which have complied with the requirements of
35 U.S.C. 371(c) will be taken up for action based on the date on which
such requirements were met. However, unless an express request for early
processing has been filed under 35 U.S.C. 371(f), no action may be taken
prior to one month after entry into the national stage.

A national stage application filed under 35 U.S.C. 371 may have paid
therein the basic national fee as set forth in Section  1.492(a)(4) if
it contains, or is amended to contain, at the time of entry into the
national stage, only claims which have been indicated in an
international preliminary examination report prepared by the United
States Patent and Trademark Office as satisfying the criteria of PCT
Article 33(1)-(4) as to novelty, inventive step and industrial
applicability. Such national stage applications in which the basic
national fee as set forth in Section  1.492(a)(4) has been paid may be
amended subsequent to the date of entry into the national stage only to
the extent necessary to eliminate objections as to form or to cancel
rejected claims. Such national stage applications in which the basic
national fee as set forth in Section  1.492(a)(4) has been paid will be
taken up out of order.

[Added 52 FR 20051, May 28, 1987, effective July 1, 1987]

---SECTION---1.497 Oath or declaration under 35 U.S.C. 371(c)(4).

When an applicant of an international application desires to enter the
national stage under 35&nbsp;U.S.C. 371 pursuant to Section Section
&nbsp;1.494 or 1.495, he or she must file an oath or declaration that:

Is executed in accordance with either Section Section &nbsp;1.66 or
1.68;

Identifies the specification to which it is directed;

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.

The oath or declaration must be made by all of the actual inventors
except as provided for in Section Section  1.42, 1.43 or 1.47.

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 Section Section &nbsp;1.42, 1.43 or
1.47, and, upon information and belief, the facts which the inventor
would have been required to state.

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&nbsp;U.S.C. 371(c)(4) and Section Section
&nbsp;1.494(c) or 1.495(c). However, if the oath or declaration does not
also meet the requirements of Section  1.63, a supplemental oath or
declaration in compliance with Section  1.63 will be required in
accordance with Section  1.67.

[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and
(b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996]

---SECTION---1.499 Unity of invention during the national stage.

If the examiner finds that a national stage application lacks unity of
invention under Section  1.475, the examiner may in an Office action
require the applicant in the response to that action to elect the
invention to which the claims shall be restricted. Such requirement may
be made before any action on the merits but may be made at any time
before the final action at the discretion of the examiner. Review of any
such requirement is provided under Section Section  1.143 and 1.144.

[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; amended, 58 FR
4335, Jan. 14, 1993, effective May 1, 1993]

---SECTION---D Reexamination of Patents

---SECTION---CITATION OF PRIOR ART

---SECTION---1.501 Citation of prior art in patent files.

At any time during the period of enforceability of a patent, any person
may cite to the Patent and Trademark Office in writing prior art
consisting of patents or printed publications which that person states
to be pertinent and applicable to the patent and believes to have a
bearing on the patentability of any claim of a particular patent. If the
citation is made by the patent owner, the explanation of pertinency and
applicability may include an explanation of how the claims differ from
the prior art. Citations by the patent owner under Section  1.555 and by
a reexamination requester under either Section  1.510 or Section  1.535
will be entered in the patent file during a reexamination proceeding.
The entry in the patent file of citations submitted after the date of an
order to reexamine pursuant to Section  1.525 by persons other than the
patent owner, or a reexamination requester under either Section  1.510
or Section  1.535, will be delayed until the reexamination proceedings
have been terminated.

If the person making the citation wishes his or her identity to be
excluded from the patent file and kept confidential, the citation papers
must be submitted without any identification of the person making the
submission.

Citation of patents or printed publications by the public in patent
files should either: (1) Reflect that a copy of the same has been mailed
to the patent owner at the address as provided for in Section  1.33(c);
or in the event service is not possible (2) Be filed with the Office in
duplicate.

[46 FR 29185, May 29, 1981, effective July 1, 1981]

---SECTION---REQUEST FOR REEXAMINATION

---SECTION---1.510 Request for reexamination.

Any person may, at any time during the period of enforceability of a
patent, file a request for reexamination by the Patent and Trademark
Office of any claim of the patent on the basis of prior art patents or
printed publications cited under Section  1.501. The request must be
accompanied by the fee for requesting reexamination set in Section 
1.20(c).

Any request for reexamination must include the following parts:

A statement pointing out each substantial new question of patentability
based on prior patents and printed publications.

An identification of every claim for which reexamination is requested,
and a detailed explanation of the pertinency and manner of applying the
cited prior art to every claim for which reexamination is requested. If
appropriate the party requesting reexamination may also point out how
claims distinguish over cited prior art.

A copy of every patent or printed publication relied upon or referred to
in paragraph (b)(1) and (2) of this section accompanied by an English
language translation of all the necessary and pertinent parts of any
non-English language patent or printed publication.

The entire specification (including claims) and drawings of the patent
for which reexamination is requested must be furnished in the form of
cut-up copies of the original patent with only a single column of the
printed patent securely mounted or reproduced in permanent form on one
side of a separate paper. A copy of any disclaimer, certificate of
correction, or reexamination certificate issued in the patent must also
be included.

A certification that a copy of the request filed by a person other than
the patent owner has been served in its entirety on the patent owner at
the address as provided for in Section  1.33(c). The name and address of
the party served must be indicated. If service was not possible, a
duplicate copy must be supplied to the Office.

If the request does not include the fee for requesting reexamination or
all of the parts required by paragraph (b) of this section, the person
identified as requesting reexamination will be so notified and given an
opportunity to complete the request within a specified time. If the fee
for requesting reexamination has been paid but the defect in the request
is not corrected within the specified time, the determination whether or
not to institute reexamination will be made on the request as it then
exists. If the fee for requesting reexamination has not been paid, no
determination will be made and the request will be placed in the patent
file as a citation if it complies with the requirements of Section 
1.501(a).

The filing of the request is: (1) The date on which the request
including the entire fee for requesting reexamination is received in the
Patent and Trademark Office; or (2) The date on which the last portion
of the fee for requesting reexamination is received.

A request filed by the patent owner may include a proposed amendment in
accordance with Section  1.530(d).

If a request is filed by an attorney or agent identifying another party
on whose behalf the request is being filed, the attorney or agent must
have a power of attorney from that party or be acting in a
representative capacity pursuant to Section  1.34(a).

[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a), 47 FR
41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (e) revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.515 Determination of the request for reexamination.

Within three months following the filing date of a request for
reexamination, an examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited
therein, with or without consideration of other patents or printed
publications. The examiner's determination will be based on the claims
in effect at the time of the determination and will become a part of the
official file of the patent and will be given or mailed to the patent
owner at the address as provided for in Section  1.33(c) and to the
person requesting reexamination.

Where no substantial new question of patentability has been found, a
refund of a portion of the fee for requesting reexamination will be made
to the requester in accordance with Section  1.26(c).

The requester may seek review by a petition to the Commissioner under
Section  1.181 within one month of the mailing date of the examiner's
determination refusing reexamination. Any such petition must comply with
Section  1.181(b). If no petition is timely filed or if the decision on
petition affirms that no substantial new question of patentability has
been raised, the determination shall be final and nonappealable.

[46 FR 29185, May 29, 1981, effective July 1, 1981]

---SECTION---1.520 Reexamination at the initiative of the Commissioner.

The Commissioner, at any time during the period of enforceability of a
patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Commissioner or which have been brought to the
Commissioner's attention even though no request for reexamination has
been filed in accordance with Section  1.510. The Commissioner may
initiate reexamination without a request for reexamination pursuant to
Section  1.510. Normally requests from outside the Patent and Trademark
Office that the Commissioner undertake reexamination on his own
initiative will not be considered. Any determination to initiate
reexamination under this section will become a part of the official file
of the patent and will be given or mailed to the patent owner at the
address as provided for in Section  1.33(c).

[46 FR 29186, May 29, 1981, effective July 1, 1981]

---SECTION---REEXAMINATION

---SECTION---1.525 Order to reexamine.

If a substantial new question of patentability is found pursuant to
Section  1.515 or Section  1.520, the determination will include an
order for reexamination of the patent for resolution of the question. If
the order for reexamination resulted from a petition pursuant to Section 
1.515(c), the reexamination will ordinarily be conducted by an examiner
other than the examiner responsible for the initial determination under
Section  1.515(a).

If the order for reexamination of the patent mailed to the patent owner
at the address as provided for in Section  1.33(c) is returned to the
Office undelivered, the notice published in the Official Gazette under
Section  1.11(c) will be considered to be constructive notice and
reexamination will proceed.

[46 FR 29186, May 29, 1981, effective July 1, 1981]

---SECTION---1.530 Statement; amendment by patent owner.

Except as provided in Section  1.510(e), no statement or other response
by the patent owner shall be filed prior to the determinations made in
accordance with Section  1.515 or 1.520. If a premature statement or
other response is filed by the patent owner it will not be acknowledged
or considered in making the determination.

The order for reexamination will set a period of not less than two
months from the date of the order within which the patent owner may file
a statement on the new question of patentability including any proposed
amendments the patent owner wishes to make.

Any statement filed by the patent owner shall clearly point out why the
subject matter as claimed is not anticipated or rendered obvious by the
prior art patents or printed publications, either alone or in any
reasonable combinations. Any statement filed must be served upon the
reexamination requester in accordance with Section  1.248.

Amendments in reexamination proceedings. Amendments in reexamination
proceedings are made by filing a paper, in compliance with paragraph
(d)(5) of this section, directing that specified amendments be made.

Specification other than the claims. Amendments to the specification,
other than to the claims, may only be made as follows:

Amendments must be made by submission of the entire text of a newly
added or rewritten paragraph(s) with markings pursuant to paragraph
(d)(1)(iii) of this section, except that an entire paragraph may be
deleted by a statement deleting the paragraph without presentation of
the text of the paragraph.

The precise point in the specification must be indicated where the
paragraph to be amended is located.

Underlining below the subject matter added to the patent and brackets
around the subject matter deleted from the patent are to be used to mark
the amendments being made.

Claims. Amendments to the claims may only be made as follows:

(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this
section, except that a patent claim or previously proposed new claim
should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.

Patent claims must not be renumbered and the numbering of any new claims
proposed to be added to the patent must follow the number of the highest
numbered patent claim.

Underlining below the subject matter added to the patent and brackets
around the subject matter deleted from the patent are to be used to mark
the amendments being made. If a claim is amended pursuant to paragraph
(d)(2)(i)(A) of this section, a parenthetical expression "amended,"
"twice amended," etc., should follow the original claim number.

Each amendment submission must set forth the status (i.e., pending or
cancelled) as of the date of the amendment, of all patent claims and of
all new claims currently or previously proposed.

Each amendment, when submitted for the first time, must be accompanied
by an explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.

No amendment may enlarge the scope of the claims of the patent or
introduce new matter. No amendment may be proposed for entry in an
expired patent. Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.

Although the Office actions will treat proposed amendments as though
they have been entered, the proposed amendments will not be effective
until the reexamination certificate is issued.

The form of amendments other than to the patent drawings must be in
accordance with the following requirements. All amendments must be in
the English language and must be legibly written either by a typewriter
or mechanical printer in at least 11 point type in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth,
non-shiny, durable, white paper. All amendments must be presented in a
form having sufficient clarity and contrast between the paper and the
writing thereon to permit the direct reproduction of readily legible
copies in any number by use of photographic, electrostatic,
photo-offset, and microfilming processes and electronic reproduction by
use of digital imaging or optical character recognition. If the
amendments are not of the required quality, substitute typewritten or
mechanically printed papers of suitable quality will be required. The
papers, including the drawings, must have each page plainly written on
only one side of a sheet of paper. The sheets of paper must be the same
size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9
cm. (8 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 must be double spaced, or one and
one-half spaced. The pages must be numbered consecutively, starting with
1, the numbers being centrally located, preferably below the text, or
above the text.

Drawings.

The original patent drawing sheets may not be altered. Any proposed
change to the patent drawings must be by way of a new sheet of drawings
with the amended figures identified as "amended" and with added figures
identified as "new" for each sheet change submitted in compliance with
Section  1.84.

Where a change to the drawings is desired, a sketch in permanent ink
showing proposed changes in red, to become part of the record, must be
filed for approval by the examiner and should be in a separate paper.

The disclosure must be amended, when required by the Office, to correct
inaccuracies of description and definition and to secure substantial
correspondence between the claims, the remainder of the specification,
and the drawings.

All amendments to the patent must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the request for reexamination.

[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (d) revised,
para. (e) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.535 Reply by requester.

A reply to the patent owner's statement under Section  1.530 may be
filed by the reexamination requester within two months from the date of
service of the patent owner's statement. Any reply by the requester must
be served upon the patent owner in accordance with Section  1.248. If
the patent owner does not file a statement under Section  1.530, no
reply or other submission from the reexamination requester will be
considered.

[46 FR 29186, May 29, 1981, effective July 1, 1981]

---SECTION---1.540 Consideration of responses.

The failure to timely file or serve the documents set forth in Section 
1.530 or in Section  1.535 may result in their being refused
consideration. No submissions other than the statement pursuant to
Section  1.530 and the reply by the requester pursuant to Section  1.535
will be considered prior to examination.

[46 FR 29186, May 29, 1981, effective July 1, 1981]

---SECTION---1.550 Conduct of reexamination proceedings.

All reexamination proceedings, including any appeals to the Board of
Patent Appeals and Interferences, will be conducted with special
dispatch within the Office. After issuance of the reexamination order
and expiration of the time for submitting any responses thereto, the
examination will be conducted in accordance with Section Section
&nbsp;1.104, 1.110 through 1.113 and 1.116, and will result in the
issuance of a reexamination certificate under Section &nbsp;1.570.

The patent owner will be given at least thirty days to respond to any
Office action. Such response may include further statements in response
to any rejections or proposed amendments or new claims to place the
patent in a condition where all claims, if amended as proposed, would be
patentable.

The time for taking any action by a patent owner in a reexamination
proceeding will be extended only for sufficient cause, and for a
reasonable time specified. Any request for such extension must be filed
on or before the day on which action by the patent owner is due, but in
no case will the mere filing of a request effect any extension. See
Section  1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.

If the patent owner fails to file a timely and appropriate response to
any Office action, the reexamination proceeding will be terminated and
the Commissioner will proceed to issue a certificate under Section 
1.570 in accordance with the last action of the Office.

The reexamination requester will be sent copies of Office actions issued
during the reexamination proceeding. After filing of a request for
reexamination by a third party requester, any document filed by either
the patent owner or the third party requester must be served on the
other party in the reexamination proceeding in the manner provided by
Section  1.248. The document must reflect service or the document may be
refused consideration by the Office.

The active participation of the reexamination requester ends with the
reply pursuant to Section  1.535, and no further submissions on behalf
of the reexamination requester will be acknowledged or considered.
Further, no submissions on behalf of any third parties will be
acknowledged or considered unless such submissions are:

In accordance with Section  1.510; or

Entered in the patent file prior to the date of the order to reexamine
pursuant to Section  1.525.

Submissions by third parties, filed after the date of the order to
reexamine pursuant to Section  1.525, must meet the requirements of and
will be treated in accordance with Section  1.501(a).

[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (c), 49 FR
556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13,
1989, effective Aug. 20, 1989; paras. (a), (b), & (e) revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.552 Scope of reexamination in reexamination proceedings.

Patent claims will be reexamined on the basis of patents or printed
publications.

Amended or new claims presented during a reexamination proceeding must
not enlarge the scope of the claims of the patent and will be examined
on the basis of patents or printed publications and also for compliance
with the requirements of 35 U.S.C. 112 and the new matter prohibition of
35 U.S.C. 132.

Questions other than those indicated in paragraphs (a) and (b) of this
section will not be resolved in a reexamination proceeding. If such
questions are discovered during a reexamination proceeding, the
existence of such questions will be noted by the examiner in an Office
action, in which case the patent owner may desire to consider the
advisability of filing a reissue application to have such questions
considered and resolved.

[46 FR 29186, May 29, 1981, effective July 1, 1981]

---SECTION---1.555 Information material to patentability in
reexamination proceedings.

A patent by its very nature is affected with a public interest. The
public interest is best served, and the most effective reexamination
occurs when, at the time a reexamination proceeding is being conducted,
the Office is aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding. Each individual
associated with the patent owner in a reexamination proceeding has a
duty of candor and good faith in dealing with the Office, which includes
a duty to disclose to the Office all information known to that
individual to be material to patentability in a reexamination
proceeding. The individuals who have a duty to disclose to the Office
all information known to them to be material to patentability in a
reexamination proceeding are the patent owner, each attorney or agent
who represents the patent owner, and every other individual who is
substantively involved on behalf of the patent owner in a reexamination
proceeding. The duty to disclose the information exists with respect to
each claim pending in the reex amination proceeding until the claim is
cancelled. Information material to the patentability of a cancelled
claim need not be submitted if the information is not material to
patentability of any claim remaining under consideration in the
reexamination proceeding. The duty to disclose all information known to
be material to patentability in a reexamination proceeding is deemed to
be satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate
was cited by the Office or submitted to the Office in an information
disclosure statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the Office was
practiced or attempted or the duty of disclosure was violated through
bad faith or intentional misconduct by, or on behalf of, the patent
owner in the reexamination proceeding. Any information disclosure
statement must be filed with the items listed in Section  1.98(a) as
applied to individuals associated with the patent owner in a
reexamination proceeding, and should be filed within two months of the
date of the order for reexamination, or as soon thereafter as possible.

Under this section, information is material to patentability in a
reexamination proceeding when it is not cumulative to information of
record or being made of record in the reexamination proceeding, and

It is a patent or printed publication that establishes, by itself or in
combination with other patents or printed publications, aprima facie
case of unpatentability of a claim; or

It refutes, or is inconsistent with, a position the patent owner takes
in:

Opposing an argument of unpatentability relied on by the Office, or

Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a
reexamination proceeding is established when the information compels a
conclusion that a claim is unpatentable under the preponderance of
evidence, burden-of-proof standard, giving each term in the claim its
broadest reasonable construction consistent with the specification, and
before any consideration is given to evidence which may be submitted in
an attempt to establish a contrary conclusion of patentability.

The responsibility for compliance with this section rests upon the
individuals designated in paragraph (a) of this section and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are discovered during a reexamination proceeding, they will be
noted as unresolved questions in accordance with Section  1.552(c).

[46 FR 29187, May 29, 1981, effective July 1, 1981; 47 FR 21752, May 19,
1982, effective July 1, 1982; paras. (a) and (b), 49 FR 556, Jan. 4,
1984, effective Apr. 1, 1984; revised 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992]

---SECTION---1.560 Interviews in reexamination proceedings.

Interviews in reexamination proceedings pending before the Office
between examiners and the owners of such patents or their attorneys or
agents of record must be had in the Office at such times, within Office
hours, as the respective examiners may designate. Interviews will not be
permitted at any other time or place without the authority of the
Commissioner. Interviews for the discussion of the patentability of
claims in patents involved in reexamination proceedings will not be had
prior to the first official action thereon. Interviews should be
arranged for in advance. Requests that reexamination requesters
participate in interviews with examiners will not be granted.

In every instance of an interview with an examiner, a complete written
statement of the reasons presented at the interview as warranting
favorable action must be filed by the patent owner. An interview does
not remove the necessity for response to Office actions as specified in
Section  1.111.

[46 FR 29187, May 29, 1981, effective July 1, 1981]

---SECTION---1.565 Concurrent office proceedings.

In any reexamination proceeding before the Office, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissue, reexaminations, or litigation and the results of
such proceedings.

If a patent in the process of reexamination is or becomes involved in
litigation or a reissue application for the patent is filed or pending,
the Commissioner shall determine whether or not to stay the
reexamination or reissue proceeding.

If reexamination is ordered while a prior reexamination proceeding is
pending, the reexamination proceedings will be consolidated and result
in the issuance of a single certificate under Section  1.570.

If a reissue application and a reexamination proceeding on which an
order pursuant to Section  1.525 has been mailed are pending
concurrently on a patent, a decision will normally be made to merge the
two proceedings or to stay one of the two proceedings. Where merger of a
reissue application and a reexamination proceeding is ordered, the
merged examination will be conducted in accordance with Section Section 
1.171 through 1.179 and the patent owner will be required to place and
maintain the same claims in the reissue application and the
reexamination proceeding during the pendency of the merged proceeding.
The examiner's actions and any responses by the patent owner in a merged
proceeding will apply to both the reissue application and the
reexamination proceeding and be physically entered into both files. Any
reexamination proceeding merged with a reissue application shall be
terminated by the grant of the reissued patent.

If a patent in the process of reexamination is or becomes involved in an
interference, the Commissioner may stay reexamination or the
interference. The Commissioner will not consider a request to stay an
interference unless a motion (Section  1.635) to stay the interference
has been presented to, and denied by, an examiner-in-chief and the
request is filed within ten (10) days of a decision by an
examiner-in-chief denying the motion for a stay or such other time as
the examiner-in-chief may set.

[46 FR 29187, May 29, 1981, effective July 1, 1981; paras. (b) and (d),
47 FR 21753, May 19, 1982, effective July 1, 1982; paras. (b) & (e), 49
FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective Feb. 11,
1985]

---SECTION---CERTIFICATE

---SECTION---1.570 Issuance of reexamination certificate after
reexamination proceedings.

Upon the conclusion of reexamination proceedings, the Commissioner will
issue a certificate in accordance with 35 U.S.C. 307 setting forth the
results of the reexamination proceeding and the content of the patent
following the reexamination proceeding.

A certificate will be issued in each patent in which a reexamination
proceeding has been ordered under Section  1.525. Any statutory
disclaimer filed by the patent owner will be made part of the
certificate.

The certificate will be mailed on the day of its date to the patent
owner at the address as provided for in Section  1.33(c). A copy of the
certificate will also be mailed to the requester of the reexamination
proceeding.

If a certificate has been issued which cancels all of the claims of the
patent, no further Office proceedings will be conducted with regard to
that patent or any reissue applications or reexamination requests
relating thereto.

If the reexamination proceeding is terminated by the grant of a reissued
patent as provided in Section  1.565(d) the reissued patent will
constitute the reexamination certificate required by this section and 35
U.S.C. 307.

A notice of the issuance of each certificate under this section will be
published in the Official Gazette on its date of issuance.

[46 FR 29187, May 29, 1981, effective July 1, 1981; para. (e), 47 FR
21753, May 19, 1982, effective July 1, 1982]

---SECTION---E Interferences

---SECTION---1.601 Scope of rules, definitions.

This subpart governs the procedure in patent interferences in the Patent
and Trademark Office. This subpart shall be construed to secure the
just, speedy, and inexpensive determination of every interference. For
the meaning of terms in the Federal Rules of Evidence as applied to
interferences, see Section  1.671(c). Unless otherwise clear from the
context, the following definitions apply to this subpart:

Additional discovery is discovery to which a party may be entitled under
Section  1.687 in addition to discovery to which the party is entitled
as a matter of right under Section  1.673(a) and (b).

Affidavit means affidavit, declaration under Section  1.68, or statutory
declaration under 28 U.S.C. Section  1746. A transcript of an ex parte
deposition may be used as an affidavit.

Board means the Board of Patent Appeals and Interferences.

Case-in-chief means that portion of a party's case where the party has
the burden of going forward with evidence.

Case-in-rebuttal means that portion of a party's case where the party
presents evidence in rebuttal to the case-in-chief of another party.

A count defines the interfering subject matter between two or more
applications or between one or more applications and one or more
patents. At the time the interference is initially declared, a count
should be broad enough to encompass all of the claims that are
patentable over the prior art and designated to correspond to the count.
When there is more than one count, each count shall define a separate
patentable invention. Any claim of an application or patent that is
designated to correspond to a count is a claim involved in the
interference within the meaning of 35 U.S.C. 135(a). A claim of a patent
or application that is designated to correspond to a count and is
identical to the count is said to correspond exactly to the count. A
claim of a patent or application that is designated to correspond to a
count but is not identical to the count is said to correspond
substantially to the count. When a count is broader in scope than all
claims which correspond to the count, the count is a phantom count.

The effective filing date of an application is the filing date of an
earlier application, benefit of which is accorded to the application
under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the
filing date of the application. The effective filing date of a patent is
the filing date of an earlier application, benefit of which is accorded
to the patent under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is
accorded, the filing date of the application which issued as the patent.

In the case of an application, filing date means the filing date
assigned to the application. In the case of a patent, "filing date"
means the filing date assigned to the application which issued as the
patent.

An interference is a proceeding instituted in the Patent and Trademark
Office before the Board to determine any question of patentability and
priority of invention between two or more parties claiming the same
patentable invention. An interference may be declared between two or
more pending applications naming different inventors when, in the
opinion of an examiner, the applications contain claims for the same
patentable invention. An interference may be declared between one or
more pending applications and one or more unexpired patents naming
different inventors when, in the opinion of an examiner, any application
and any unexpired patent contain claims for the same patentable
invention.

An interference-in-fact exists when at least one claim of a party that
is designated to correspond to a count and at least one claim of an
opponent that is designated to correspond to the count define the same
patentable invention.

A lead attorney or agent is a registered attorney or agent of record who
is primarily responsible for prosecuting an interference on behalf of a
party and is the attorney or agent whom an administrative patent judge
may contact to set times and take other action in the interference.

A party is an applicant or patentee involved in the interference or a
legal representative or an assignee of record in the Patent and
Trademark Office of an applicant or patentee involved in an
interference. Where acts of a party are normally performed by an
attorney or agent, "party" may be construed to mean the attorney or
agent. An inventor is the individual named as inventor in an application
involved in an interference or the individual named as inventor in a
patent involved in an interference.

A senior party is the party with the earliest effective filing date as
to all counts or, if there is no party with the earliest effective
filing date as to all counts, the party with the earliest filing date. A
junior party is any other party.

Invention "A" is the same patentable invention as an invention "B" when
invention "A" is the same as (35 U.S.C. 102) or is obvious (35 U.S.C.
103) in view of invention "B" assuming invention "B" is prior art with
respect to invention "A". Invention "A" is a separate patentable
invention with respect to invention "B" when invention "A" is new (35
U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of invention "B"
assuming invention "B" is prior art with respect to invention "A".

Sworn means sworn or affirmed.

United States means the United States of America, its territories and
possessions.

A final decision is a decision awarding judgment as to all counts. An
interlocutory order is any other action taken by an administrative
patent judge or the Board in an interference, including the notice
declaring an interference.

NAFTA country means NAFTA country as defined in section 2(4) of the
North American Free Trade Agreement Implementation Act, Pub. L. 103-182,
107 Stat. 2060 (19 U.S.C. 3301).

WTO member country means WTO member country as defined in section 2(10)
of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4813 (19
U.S.C. 3501).

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May
31, 1985; para. (q) added, 58 FR 49432, Sept. 23, 1993, effective Oct.
25, 1993; paras. (f), (g), (j)-(n), and (q) revised, paras. (r) and (s)
added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.602 Interest in applications and patents involved in an
interference.

Unless good cause is shown, an interference shall not be declared or
continued between (1) applications owned by a single party or (2)
applications and an unexpired patent owned by a single party.

The parties, within 20 days after an interference is declared, shall
notify the Board of any and all right, title, and interest in any
application or patent involved or relied upon in the interference unless
the right, title, and interest is set forth in the notice declaring the
interference.

If a change of any right, title, and interest in any application or
patent involved or relied upon in the interference occurs after notice
is given declaring the interference and before the time expires for
seeking judicial review of a final decision of the Board, the parties
shall notify the Board of the change within 20 days after the change.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (c)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.603 Interference between applications; subject matter of
the interference.

Before an interference is declared between two or more applications, the
examiner must be of the opinion that there is interfering subject matter
claimed in the applications which is patentable to each applicant
subject to a judgment in the interference. The interfering subject
matter shall be defined by one or more counts. Each application must
contain, or be amended to contain, at least one claim that is patentable
over the prior art and corresponds to each count. All claims in the
applications which define the same patentable invention as a count shall
be designated to correspond to the count.

[Added, 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.604 Request for interference between applications by an
applicant.

An applicant may seek to have an interference declared with an
application of another by,

Suggesting a proposed count and presenting at least one claim
corresponding to the proposed count or identifying at least one claim in
its application that corresponds to the proposed count,

Identifying the other application and, if known, a claim in the other
application which corresponds to the proposed count, and

Explaining why an interference should be declared.

When an applicant presents a claim known to the applicant to define the
same patentable invention claimed in a pending application of another,
the applicant shall identify that pending application, unless the claim
is presented in response to a suggestion by the examiner. The examiner
shall notify the Commissioner of any instance where it appears an
applicant may have failed to comply with the provisions of this
paragraph.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)(1)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.605 Suggestion of claim to applicant by examiner.

If no claim in an application is drawn to the same patentable invention
claimed in another application or patent, the examiner may suggest that
an applicant present a claim drawn to an invention claimed in another
application or patent for the purpose of an interference with another
application or a patent. The applicant to whom the claim is suggested
shall amend the application by presenting the suggested claim within a
time specified by the examiner, not less than one month. Failure or
refusal of an applicant to timely present the suggested claim shall be
taken without further action as a disclaimer by the applicant of the
invention defined by the suggested claim. At the time the suggested
claim is presented, the applicant may also call the examiner's attention
to other claims already in the application or presented with the
suggested claim and explain why the other claims would be more
appropriate to be designated to correspond to a count in any
interference which may be declared.

The suggestion of a claim by the examiner for the purpose of an
interference will not stay the period for response to any outstanding
Office action. When a suggested claim is timely presented, ex parte
proceedings in the application will be stayed pending a determination of
whether an interference will be declared.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.606 Interference between an application and a patent;
subject matter of the interference.

Before an interference is declared between an application and an
unexpired patent, an examiner must determine that there is interfering
subject matter claimed in the application and the patent which is
patentable to the applicant subject to a judgment in the interference.
The interfering subject matter will be defined by one or more counts.
The application must contain, or be amended to contain, at least one
claim that is patentable over the prior art and corresponds to each
count. The claim in the application need not be, and most often will not
be, identical to a claim in the patent. All claims in the application
and patent which define the same patentable invention as a count shall
be designated to correspond to the count. At the time an interference is
initially declared (Section  1.611), a count shall not be narrower in
scope than any application claim that is patentable over the prior art
and designated to correspond to the count or any patent claim designated
to correspond to the count. Any single patent claim designated to
correspond to the count will be presumed, subject to a motion under
Section  1.633(c), not to contain separate patentable inventions.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.607 Request by applicant for interference with patent.

An applicant may seek to have an interference declared between an
application and an unexpired patent by,

Identifying the patent,

Presenting a proposed count,

Identifying at least one claim in the patent corresponding to the
proposed count,

Presenting at least one claim corresponding to the proposed count or
identifying at least one claim already pending in its application that
corresponds to the proposed count, and, if any claim of the patent or
application identified as corresponding to the proposed count does not
correspond exactly to the proposed count, explaining why each such claim
corresponds to the proposed count, and

Applying the terms of any application claim,

Identified as corresponding to the count, and

Not previously in the application to the disclosure of the application.

Explaining how the requirements of 35 U.S.C. 135(b) are met, if the
claim presented or identified under paragraph (a)(4) of this section was
not present in the application until more than one year after the issue
date of the patent.

When an applicant seeks an interference with a patent, examination of
the application, including any appeal to the Board, shall be conducted
with special dispatch within the Patent and Trademark Office. The
examiner shall determine whether there is interfering subject matter
claimed in the application and the patent which is patentable to the
applicant subject to a judgment in an interference. If the examiner
determines that there is any interfering subject matter, an interference
will be declared. If the examiner determines that there is no
interfering subject matter, the examiner shall state the reasons why an
interference is not being declared and otherwise act on the application.

When an applicant presents a claim which corresponds exactly or
substantially to a claim of a patent, the applicant shall identify the
patent and the number of the patent claim, unless the claim is presented
in response to a suggestion by the examiner. The examiner shall notify
the Commissioner of any instance where an applicant fails to identify
the patent.

A notice that an applicant is seeking to provoke an interference with a
patent will be placed in the file of the patent and a copy of the notice
will be sent to the patentee. The identity of the applicant will not be
disclosed unless an interference is declared. If a final decision is
made not to declare an interference, a notice to that effect will be
placed in the patent file and will be sent to the patentee.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)
amended, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para.
(a)(5)(i) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
para. (a)(4) revised, para. (a)(6) added, 60 FR 14488, Mar. 17, 1995,
effective Apr. 21, 1995]

---SECTION---1.608 Interference between an application and a patent;
prima facie showing by applicant.

When the effective filing date of an application is three months or less
after the effective filing date of a patent, before an interference will
be declared, either the applicant or the applicant's attorney or agent
of record shall file a statement alleging that there is a basis upon
which the applicant is entitled to a judgment relative to the patentee.

When the effective filing date of an application is more than three
months after the effective filing date of a patent, the applicant,
before an interference will be declared, shall file evidence which may
consist of patents or printed publications, other documents, and one or
more affidavits which demonstrate that applicant is prima facie entitled
to a judgment relative to the patentee and an explanation stating with
particularity the basis upon which the applicant is prima facie entitled
to the judgment. Where the basis upon which an applicant is entitled to
judgment relative to a patentee is priority of invention, the evidence
shall include affidavits by the applicant, if possible, and one or more
corroborating witnesses, supported by documentary evidence, if
available, each setting out a factual description of acts and
circumstances performed or observed by the affiant, which collectively
would prima facie entitle the applicant to judgment on priority with
respect to the effective filing date of the patent. To facilitate
preparation of a record (Section  1.653(g)) for final hearing, an
applicant should file affidavits on paper which is 21.8 by 27.9 cm. (8
1/2 x 11 inches). The significance of any printed publication or other
document which is self-authenticating within the meaning of Rule 902 of
the Federal Rules of Evidence or Section  1.671(d) and any patent shall
be discussed in an affidavit or the explanation. Any printed publication
or other document which is not self-authenticating shall be
authenticated and discussed with particularity in an affidavit. Upon a
showing of good cause, an affidavit may be based on information and
belief. If an examiner finds an application to be in condition for
declaration of an interference, the examiner will consider the evidence
and explanation only to the extent of determining whether a basis upon
which the application would be entitled to a judgment relative to the
patentee is alleged and, if a basis is alleged, an interference may be
declared.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.609 Preparation of interference papers by examiner.

When the examiner determines that an interference should be declared,
the examiner shall forward to the Board:

All relevant application and patent files and

A statement identifying:

The proposed count or counts and, if there is more than one count
proposed, explaining why the counts define different patentable
inventions;

The claims of any application or patent which correspond to each count,
explaining why each claim designated as corresponding to a count is
directed to the same patentable invention as the count;

The claims in any application or patent which do not correspond to each
count and explaining why each claim designated as not corresponding to
any count is not directed to the same patentable invention as any count;
and

Whether an applicant or patentee is entitled to the benefit of the
filing date of an earlier application and, if so, sufficient information
to identify the earlier application.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras.
(b)(1)-(b)(3) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.610 Assignment of interference to administrative patent
judge, time period for completing interference.

Each interference will be declared by an administrative patent judge who
may enter all interlocutory orders in the interference, except that only
the Board shall hear oral argument at final hearing, enter a decision
under Section 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter any
other order which terminates the interference.

As necessary, another administrative patent judge may act in place of
the one who declared the interference. At the discretion of the
administrative patent judge assigned to the interference, a panel
consisting of two or more members of the Board may enter interlocutory
orders.

Unless otherwise provided in this subpart, times for taking action by a
party in the interference will be set on a case-by-case basis by the
administrative patent judge assigned to the interference. Times for
taking action shall be set and the administrative patent judge shall
exercise control over the interference such that the pendency of the
interference before the Board does not normally exceed two years.

An administrative patent judge may hold a conference with the parties to
consider simplification of any issues, the necessity or desirability of
amendments to counts, the possibility of obtaining admissions of fact
and genuineness of documents which will avoid unnecessary proof, any
limitations on the number of expert witnesses, the time and place for
conducting a deposition (Section  1.673(g)), and any other matter as may
aid in the disposition of the interference. After a conference, the
administrative patent judge may enter any order which may be
appropriate.

The administrative patent judge may determine a proper course of conduct
in an interference for any situation not specifically covered by this
part.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.611 Declaration of interference.

Notice of declaration of an interference will be sent to each party.

When a notice of declaration is returned to the Patent and Trademark
Office undelivered, or in any other circumstance where appropriate, an
administrative patent judge may send a copy of the notice to a patentee
named in a patent involved in an interference or the patentee's assignee
of record in the Patent and Trademark Office or order publication of an
appropriate notice in the Official Gazette.

The notice of declaration shall specify:

The name and residence of each party involved in the interference;

The name and address of record of any attorney or agent of record in any
application or patent involved in the interference;

The name of any assignee of record in the Patent and Trademark Office;

The identity of any application or patent involved in the interference;

Where a party is accorded the benefit of the filing date of an earlier
application, the identity of the earlier application;

The count or counts and, if there is more than one count, the examiner's
explanation why the counts define different patentable inventions;

The claim or claims of any application or any patent which correspond to
each count;

The examiner's explanation as to why each claim designated as
corresponding to a count is directed to the same patentable invention as
the count and why each claim designated as not corresponding to any
count is not directed to the same patentable invention as any count; and

The order of the parties.

The notice of declaration may also specify the time for:

Filing a preliminary statement as provided in Section  1.621(a);

Serving notice that a preliminary statement has been filed as provided
in Section  1.621(b); and

Filing preliminary motions authorized by Section  1.633.

Notice may be given in the Official Gazette that an interference has
been declared involving a patent.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May
31, 1985; paras. (b), (c)(6), (c)(7), (c)(8), (c)(9) & (d) revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.612 Access to applications.

After an interference is declared, each party shall have access to and
may obtain copies of the files of any application set out in the notice
declaring the interference, except for affidavits filed under Section 
1.131 and any evidence and explanation under Section  1.608 filed
separate from an amendment. A party seeking access to any abandoned or
pending application referred to in the opponent's involved application
or access to any pending application referred to in the opponent's
patent must file a motion under Section  1.635. See Section  1.11(e)
concerning public access to interference files.

After preliminary motions under Section  1.633 are decided (Section 
1.640(b)), each party shall have access to and may obtain copies of any
affidavit filed under Section  1.131 and any evidence and explanation
filed under Section  1.608 in any application set out in the notice
declaring the interference.

Any evidence and explanation filed under Section  1.608 in the file of
any application identified in the notice declaring the interference
shall be served when required by Section  1.617(b).

The parties at any time may agree to exchange copies of papers in the
files of any application identified in the notice declaring the
interference.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23124, May
31, 1985; para. (a) amended, 53 FR 23735, June 23, 1988, effective Sept.
12, 1988; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr.
21, 1995]

---SECTION---1.613 Lead attorney, same attorney representing different
parties in an interference, withdrawal of attorney or agent.

Each party may be required to designate one attorney or agent of record
as the lead attorney or agent.

The same attorney or agent or members of the same firm of attorneys or
agents may not represent two or more parties in an interference except
as may be permitted under this chapter.

An administrative patent judge may make necessary inquiry to determine
whether an attorney or agent should be disqualified from representing a
party in an interference. If an administrative patent judge is of the
opinion that an attorney or agent should be disqualified, the
administrative patent judge shall refer the matter to the Commissioner.
The Commissioner will make a final decision as to whether any attorney
or agent should be disqualified.

No attorney or agent of record in an interference may withdraw as
attorney or agent of record except with the approval of an
administrative patent judge and after reasonable notice to the party on
whose behalf the attorney or agent has appeared. A request to withdraw
as attorney or agent of record in an interference shall be made by
motion (Section  1.635).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (c) &
(d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.614 Jurisdiction over interference.

The Board acquires jurisdiction over an interference when the
interference is declared under Section  1.611.

When the interference is declared the interference is a contested case
within the meaning of 35 U.S.C. 24.

The examiner shall have jurisdiction over any pending application until
the interference is declared. An administrative patent judge may for a
limited purpose restore jurisdiction to the examiner over any
application involved in the interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) &
(c) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.615 Suspension of ex parte prosecution.

When an interference is declared, ex parte prosecution of an application
involved in the interference is suspended. Amendments and other papers
related to the application received during pendency of the interference
will not be entered or considered in the interference without the
consent of an administrative patent judge.

Ex parte prosecution as to specified matters may be continued
concurrently with the interference with the consent of the
administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.616 Sanctions for failure to comply with rules or order
or for taking and maintaining a frivolous position.

An administrative patent judge or the Board may impose an appropriate
sanction against a party who fails to comply with the regulations of
this part or any order entered by an administrative patent judge or the
Board. An appropriate sanction may include among others entry of an
order:

Holding certain facts to have been established in the interference;

Precluding a party from filing a paper;

Precluding a party from presenting or contesting a particular issue;

Precluding a party from requesting, obtaining, or opposing discovery;

Awarding compensatory expenses and/or compensatory attorney fees; or

Granting judgment in the interference.

An administrative patent judge or the Board may impose a sanction,
including a sanction in the form of compensatory expenses and/or
compensatory attorney fees, against a party for taking and maintaining a
frivolous position in papers filed in the interference.

To the extent that an administrative patent judge or the Board has
authorized a party to compel the taking of testimony or the production
of documents or things from an individual or entity located in a NAFTA
country or a WTO member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of invention (Section 
1.671(h)), but the testimony, documents or things have not been produced
for use in the interference to the same extent as such information could
be made available in the United States, the administrative patent judge
or the Board shall draw such adverse inferences as may be appropriate
under the circumstances, or take such other action permitted by statute,
rule, or regulation, in favor of the party that requested the
information in the interference, including imposition of appropriate
sanctions under paragraph (a) of this section.

A party may file a motion (Section  1.635) for entry of an order
imposing sanctions, the drawing of adverse inferences or other action
under paragraph (a), (b) or (c) of this section. Where an administrative
patent judge or the Board on its own initiative determines that a
sanction, adverse inference or other action against a party may be
appropriate under paragraph (a), (b) or (c) of this section, the
administrative patent judge or the Board shall enter an order for the
party to show cause why the sanction, adverse inference or other action
is not appropriate. The Board shall take action in accordance with the
order unless, within 20 days after the date of the order, the party
files a paper which shows good cause why the sanction, adverse inference
or other action would not be appropriate.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.617 Summary judgment against applicant.

An administrative patent judge shall review any evidence filed by an
applicant under Section  1.608(b) to determine if the applicant is prima
facie entitled to a judgment relative to the patentee. If the
administrative patent judge determines that the evidence shows the
applicant is prima facie entitled to a judgment relative to the
patentee, the interference shall proceed in the normal manner under the
regulations of this part. If in the opinion of the administrative patent
judge the evidence fails to show that the applicant is prima facie
entitled to a judgment relative to the patentee, the administrative
patent judge shall, concurrently with the notice declaring the
interference, enter an order stating the reasons for the opinion and
directing the applicant, within a time set in the order, to show cause
why summary judgment should not be entered against the applicant.

The applicant may file a response to the order, which may include an
appropriate preliminary motion under Section  1.633(c), (f) or (g), and
state any reasons why summary judgment should not be entered. Any
request by the applicant for a hearing before the Board shall be made in
the response. Additional evidence shall not be presented by the
applicant or considered by the Board unless the applicant shows good
cause why any additional evidence was not initially presented with the
evidence filed under Section  1.608(b). At the time an applicant files a
response, the applicant shall serve a copy of any evidence filed under
Section  1.608(b) and this paragraph.

If a response is not timely filed by the applicant, the Board shall
enter a final decision granting summary judgment against the applicant.

If a response is timely filed by the applicant, all opponents may file a
statement and may oppose any preliminary motion filed under Section 
1.633(c), (f) or (g) by the applicant within a time set by the
administrative patent judge. The statement may set forth views as to why
summary judgment should be granted against the applicant, but the
statement shall be limited to discussing why all the evidence presented
by the applicant does not overcome the reasons given by the
administrative patent judge for issuing the order to show cause. Except
as required to oppose a motion under Section  1.633(c), (f) or (g) by
the applicant, evidence shall not be filed by any opponent. An opponent
may not request a hearing.

Within a time authorized by the administrative patent judge, an
applicant may file a reply to any statement or opposition filed by any
opponent.

When more than two parties are involved in an interference, all parties
may participate in summary judgment proceedings under this section.

If a response by the applicant is timely filed, the administrative
patent judge or the Board shall decide whether the evidence submitted
under Section  1.608(b) and any additional evidence properly submitted
under paragraphs (b) and (e) of this section shows that the applicant is
prima facie entitled to a judgment relative to the patentee. If the
applicant is not prima facie entitled to a judgment relative to the
patentee, the Board shall enter a final decision granting summary
judgment against the applicant. Otherwise, an interlocutory order shall
be entered authorizing the interference to proceed in the normal manner
under the regulations of this subpart.

Only an applicant who filed evidence under Section  1.608(b) may request
a hearing. If that applicant requests a hearing, the Board may hold a
hearing prior to entry of a decision under paragraph (g) of this
section. The administrative patent judge shall set a date and time for
the hearing. Unless otherwise ordered by the administrative patent judge
or the Board, the applicant and any opponent will each be entitled to no
more than 30 minutes of oral argument at the hearing.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a), (b), (d), (e), (g), & (h) revised, 60 FR
14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.618 Return of unauthorized papers.

An administrative patent judge or the Board shall return to a party any
paper presented by the party when the filing of the paper is not
authorized by, or is not in compliance with the requirements of, this
subpart. Any paper returned will not thereafter be considered in the
interference. A party may be permitted to file a corrected paper under
such conditions as may be deemed appropriate by an administrative patent
judge or the Board.

When presenting a paper in an interference, a party shall not submit
with the paper a copy of a paper previously filed in the interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; amended, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.621 Preliminary statement, time for filing, notice of
filing.

Within the time set for filing preliminary motions under Section  1.633,
each party may file a preliminary statement. The preliminary statement
may be signed by any individual having knowledge of the facts recited
therein or by an attorney or agent of record.

When a party files a preliminary statement, the party shall also
simultaneously file and serve on all opponents in the interference a
notice stating that a preliminary statement has been filed. A copy of
the preliminary statement need not be served until ordered by the
administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.622 Preliminary statement, who made invention, where
invention made.

A party's preliminary statement must identify the inventor who made the
invention defined by each count and must state on behalf of the inventor
the facts required by paragraph (a) of Section Section  1.623, 1.624,
and 1.625 as may be appropriate. When an inventor identified in the
preliminary statement is not an inventor named in the party's
application or patent, the party shall file a motion under Section 
1.634 to correct inventorship.

The preliminary statement shall state whether the invention was made in
the United States, a NAFTA country (and, if so, which NAFTA country), a
WTO member country (and, if so, which WTO member country), or in a place
other than the United States, a NAFTA country, or a WTO member country.
If made in a place other than the United States, a NAFTA country, or a
WTO member country, the preliminary statement shall state whether the
party is entitled to the benefit of 35 U.S.C. 104(a)(2).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.623 Preliminary statement; invention made in United
States, a NAFTA country, or a WTO member country.

When the invention was made in the United States, a NAFTA country, or a
WTO member country, or a party is entitled to the benefit of 35 U.S.C.
104(a)(2), the preliminary statement must state the following facts as
to the invention defined by each count:

The date on which the first drawing of the invention was made.

The date on which the first written description of the invention was
made.

The date on which the invention was first disclosed by the inventor to
another person.

The date on which the invention was first conceived by the inventor.

The date on which the invention was first actually reduced to practice.
If the invention was not actually reduced to practice by or on behalf of
the inventor prior to the party's filing date, the preliminary statement
shall so state.

The date after the inventor's conception of the invention when active
exercise of reasonable diligence toward reducing the invention to
practice began.

If a party intends to prove derivation, the preliminary statement must
also comply with Section  1.625.

When a party alleges under paragraph (a)(1) of this section that a
drawing was made, a copy of the first drawing shall be filed with and
identified in the preliminary statement. When a party alleges under
paragraph (a)(2) of this section that a written description of the
invention was made, a copy of the first written description shall be
filed with and identified in the preliminary statement. See Section 
1.628(b) when a copy of the first drawing or written description cannot
be filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.624 Preliminary statement; invention made in a place
other than the United States, a NAFTA country, or a WTO member country.

When the invention was made in a place other than the United States, a
NAFTA country, or a WTO member country and a party intends to rely on
introduction of the invention into the United States, a NAFTA country,
or a WTO member country, the preliminary statement must state the
following facts as to the invention defined by each count:

The date on which a drawing of the invention was first introduced into
the United States, a NAFTA country, or a WTO member country.

The date on which a written description of the invention was first
introduced into the United States, a NAFTA country, or a WTO member
country.

The date on which the invention was first disclosed to another person in
the United States, a NAFTA country, or a WTO member country.

The date on which the inventor's conception of the invention was first
introduced into the United States, a NAFTA country, or a WTO member
country.

The date on which an actual reduction to practice of the invention was
first introduced into the United States, a NAFTA country, or a WTO
member country. If an actual reduction to practice of the invention was
not introduced into the United States, a NAFTA country, or a WTO member
country, the preliminary amendment shall so state.

The date after introduction of the inventor's conception into the United
States, a NAFTA country, or a WTO member country when active exercise of
reasonable diligence in the United States, a NAFTA country, or a WTO
member country toward reducing the invention to practice began.

If a party intends to prove derivation, the preliminary statement must
also comply with Section  1.625.

When a party alleges under paragraph (a)(1) of this section that a
drawing was introduced into the United States, a NAFTA country, or a WTO
member country, a copy of that drawing shall be filed with and
identified in the preliminary statement. When a party alleges under
paragraph (a)(2) of this section that a written description of the
invention was introduced into the United States, a NAFTA country, or a
WTO member country, a copy of that written description shall be filed
with and identified in the preliminary statement. See Section  1.628(b)
when a copy of the first drawing or first written description introduced
in the United States, a NAFTA country, or a WTO member country cannot be
filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; para. (a) & (c) revised, 60 FR 14488, Mar. 17, 1995,
effective Apr. 21, 1995]

---SECTION---1.625 Preliminary statement; derivation by an opponent

When a party intends to prove derivation by an opponent from the party,
the preliminary statement must state the following as to the invention
defined by each count:

The name of the opponent.

The date on which the first drawing of the invention was made.

The date on which the first written description of the invention was
made.

The date on which the invention was first disclosed by the inventor to
another person.

The date on which the invention was first conceived by the inventor.

The date on which the invention was first communicated to the opponent.

If a party intends to prove priority, the preliminary statement must
also comply with Section  1.623 or Section  1.624.

When a party alleges under paragraph (a)(2) of this section that a
drawing was made, a copy of the first drawing shall be filed with and
identified in the preliminary statement. When a party alleges under
paragraph (a)(3) of this section that a written description of the
invention was made, a copy of the first written description shall be
filed with and identified in the preliminary statement. See Section 
1.628(b) when a first drawing or first written description cannot be
filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; para. (a)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.626 Preliminary statement; earlier application.

When a party does not intend to present evidence to prove a conception
or an actual reduction to practice and the party intends to rely solely
on the filing date of an earlier filed application to prove a
constructive reduction to practice, the preliminary statement may so
state and identify the earlier filed application with particularity.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.627 Preliminary statement; sealing before filing, opening
of statement.

The preliminary statement and copies of any drawing or written
description shall be filed in a sealed envelope bearing only the name of
the party filing the statement and the style (e.g., Jones v. Smith) and
number of the interference. The sealed envelope should contain only the
preliminary statement and copies of any drawing or written description.
If the preliminary statement is filed through the mail, the sealed
envelope should be enclosed in an outer envelope addressed to the
Commissioner of Patents and Trademarks in accordance with Section 
1.1(e).

A preliminary statement may be opened only at the direction of an
administrative patent judge.

[49 FR48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.628 Preliminary statement; correction of error.

A material error arising through inadvertence or mistake in connection
with a preliminary statement or drawings or a written description
submitted therewith or omitted therefrom may be corrected by a motion
(Section  1.635) for leave to file a corrected statement. The motion
shall be supported by an affidavit stating the date the error was first
discovered, shall be accompanied by the corrected statement and shall be
filed as soon as practical after discovery of the error. If filed on or
after the date set by the administrative patent judge for service of
preliminary statements, the motion shall also show that correction of
the error is essential to the interest of justice.

When a party cannot attach a copy of a drawing or a written description
to the party's preliminary statement as required by Section  1.623(c),
Section  1.624(c) or Section  1.625(c), the party shall show good cause
and explain in the preliminary statement why a copy of the drawing or
written description cannot be attached to the preliminary statement and
shall attach to the preliminary statement the earliest drawing or
written description made in or introduced into the United States, a
NAFTA country, or a WTO member country which is available. The party
shall file a motion (Section  1.635) to amend its preliminary statement
promptly after the first drawing, first written description, or drawing
or written description first introduced into the United States, a NAFTA
country, or a WTO member country becomes available. A copy of the
drawing or written description may be obtained, where appropriate, by a
motion (Section  1.635) for additional discovery under Section  1.687 or
during a testimony period.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.629 Effect of preliminary statement.

A party shall be strictly held to any date alleged in the preliminary
statement. Doubts as to definiteness or sufficiency of any allegation in
a preliminary statement or compliance with formal requirements will be
resolved against the party filing the statement by restricting the party
to its effective filing date or to the latest date of a period alleged
in the preliminary statement, as may be appropriate. A party may not
correct a preliminary statement except as provided by Section  1.628.

Evidence which shows that an act alleged in the preliminary statement
occurred prior to the date alleged in the statement shall establish only
that the act occurred as early as the date alleged in the statement.

If a party does not file a preliminary statement, the party:

Shall be restricted to the party's effective filing date and

Will not be permitted to prove that:

The party made the invention prior to the party's filing date or

Any opponent derived the invention from the party.

If a party files a preliminary statement which contains an allegation of
a date of first drawing or first written description and the party does
not file a copy of the first drawing or written description with the
preliminary statement as required by Section  1.623(c), Section 
1.624(c), or Section  1.625(c), the party will be restricted to the
party's effective filing date as to that allegation unless the party
complies with Section  1.628(b). The content of any drawing or written
description submitted with a preliminary statement will not normally be
evaluated or considered by the Board.

A preliminary statement shall not be used as evidence on behalf of the
party filing the statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a),
(c)(1) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.630 Reliance on earlier application.

A party shall not be entitled to rely on the filing date of an earlier
filed application unless the earlier application is identified (Section 
1.611(c)(5)) in the notice declaring the interference or the party files
a preliminary motion under Section  1.633 seeking the benefit of the
filing date of the earlier application.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.631 Access to preliminary statement, service of
preliminary statement.

Unless otherwise ordered by an administrative patent judge, concurrently
with entry of a decision on preliminary motions filed under Section 
1.633 any preliminary statement filed under Section  1.621(a) shall be
opened to inspection by the senior party and any junior party who filed
a preliminary statement. Within a time set by the administrative patent
judge, a party shall serve a copy of its preliminary statement on each
opponent who served a notice under Section  1.621(b).

A junior party who does not file a preliminary statement shall not have
access to the preliminary statement of any other party.

If an interference is terminated before the preliminary statements have
been opened, the preliminary statements will remain sealed and will be
returned to the respective parties who submitted the statements.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.632 Notice of intent to argue abandonment, suppression or
concealment by opponent.

A notice shall be filed by a party who intends to argue that an opponent
has abandoned, suppressed, or concealed an actual reduction to practice
(35 U.S.C. 102(g)). A party will not be permitted to argue abandonment,
suppression, or concealment by an opponent unless the notice is timely
filed. Unless authorized otherwise by an administrative patent judge, a
notice is timely when filed within ten (10) days after the close of the
testimony-in-chief of the opponent.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.633 Preliminary motions.

A party may file the following preliminary motions:

A motion for judgment against an opponent's claim designated to
correspond to a count on the ground that the claim is not patentable to
the opponent. The motion shall separately address each claim alleged to
be unpatentable. In deciding an issue raised in a motion filed under
this paragraph (a), a claim will be construed in light of the
specification of the application or patent in which it appears. A motion
under this paragraph shall not be based on:

Priority of invention by the moving party as against any opponent or

Derivation of the invention by an opponent from the moving party. See
Section  1.637(a).

A motion for judgment on the ground that there is no
interference-in-fact. A motion under this paragraph is proper only if
the interference involves a design application or patent or a plant
application or patent or no claim of a party which corresponds to a
count is identical to any claim of an opponent which corresponds to that
count. See Section  1.637(a). When claims of different parties are
presented in "means plus function" format, it may be possible for the
claims of the different parties not to define the same patentable
invention even though the claims contain the same literal wording.

A motion to redefine the interfering subject matter by (1) adding or
substituting a count, (2) amending an application claim corresponding to
a count or adding a claim in the moving party's application to be
designated to correspond to a count, (3) designating an application or
patent claim to correspond to a count, (4) designating an application or
patent claim as not corresponding to a count, or (5) requiring an
opponent who is an applicant to add a claim and to designate the claim
to correspond to a count. See Section  1.637(a) and (c).

A motion to substitute a different application owned by a party for an
application involved in the interference. See Section  1.637(a) and (d).

A motion to declare an additional interference (1) between an additional
application not involved in the interference and owned by a party and an
opponent's application or patent involved in the interference or (2)
when an interference involves three or more parties, between less than
all applications and any patent involved in the interference. See
Section  1.637 (a) and (e).

A motion to be accorded the benefit of the filing date of an earlier
filed application. See Section  1.637 (a) and (f).

A motion to attack the benefit accorded an opponent in the notice
declaring the interference of the filing date of an earlier filed
application. See Section  1.637 (a) and (g).

When a patent is involved in an interference and the patentee has on
file or files an application for reissue under Section  1.171, a motion
to add the application for reissue to the interference. See Section 
1.637(a) and (h).

When a motion is filed under paragraph (a), (b), or (g) of this section,
an opponent, in addition to opposing the motion, may file a motion to
redefine the interfering subject matter under paragraph (c) of this
section, a motion to substitute a different application under paragraph
(d) of this section, or a motion to add a reissue application to the
interference under paragraph (h) of this section.

When a motion is filed under paragraph (c)(1) of this section an
opponent, in addition to opposing the motion, may file a motion for
benefit under paragraph (f) of this section as to the count to be added
or substituted.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a), (b), (f), (g), & (i) revised, 60 FR 14488,
Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.634 Motion to correct inventorship.

A party may file a motion to (a) amend its application involved in an
interference to correct inventorship as provided by Section  1.48 or (b)
correct inventorship of its patent involved in an interference as
provided in Section  1.324. See Section  1.637(a).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.635 Miscellaneous motions.

A party seeking entry of an order relating to any matter other than a
matter which may be raised under Section Section 1.633 or 1.634 may file
a motion requesting entry of the order. See Section  1.637 (a) and (b).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.636 Motions, time for filing.

A preliminary motion under Section  1.633 (a) through (h) shall be filed
within a time period set by an administrative patent judge.

A preliminary motion under Section  1.633 (i) or (j) shall be filed
within 20 days of the service of the preliminary motion under Section 
1.633 (a), (b), (c)(1), or (g) unless otherwise ordered by an
administrative patent judge.

A motion under Section  1.634 shall be diligently filed after an error
is discovered in the inventorship of an application or patent involved
in an interference unless otherwise ordered by an administrative patent
judge.

A motion under Section  1.635 shall be filed as specified in this
subpart or when appropriate unless otherwise ordered by an
administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.637 Content of motions.

A party filing a motion has the burden of proof to show that it is
entitled to the relief sought in the motion. Each motion shall include a
statement of the precise relief requested, a statement of the material
facts in support of the motion, in numbered paragraphs, and a full
statement of the reasons why the relief requested should be granted. If
a party files a motion for judgment under Section  1.633(a) against an
opponent based on the ground of unpatentability over prior art, and the
dates of the cited prior art are such that the prior art appears to be
applicable to the party, it will be presumed, without regard to the
dates alleged in the preliminary statement of the party, that the cited
prior art is applicable to the party unless there is included with the
motion an explanation, and evidence if appropriate, as to why the prior
art does not apply to the party.

Unless otherwise ordered by an administrative patent judge or the Board,
a motion under Section  1.635 shall contain a certificate by the moving
party stating that the moving party has conferred with all opponents in
an effort in good faith to resolve by agreement the issues raised by the
motion. The certificate shall indicate whether any opponent plans to
oppose the motion. The provisions of this paragraph do not apply to a
motion to suppress evidence (Section  1.656(h)).

A preliminary motion under Section  1.633(c) shall explain why the
interfering subject matter should be redefined.

A preliminary motion seeking to add or substitute a count shall:

Propose each count to be added or substituted.

When the moving party is an applicant, show the patentability to the
applicant of all claims in, or proposed to be added to, the party's
application which correspond to each proposed count and apply the terms
of the claims to the disclosure of the party's application; when
necessary a moving party applicant shall file with the motion an
amendment adding any proposed claim to the application.

Identify all claims in an opponent's application which should be
designated to correspond to each proposed count; if an opponent's
application does not contain such a claim, the moving party shall
propose a claim to be added to the opponent's application. The moving
party shall show the patentability of any proposed claims to the
opponent and apply the terms of the claims to the disclosure of the
opponent's application.

Designate the claims of any patent involved in the interference which
define the same patentable invention as each proposed count.

Show that each proposed count defines a separate patentable invention
from every other count proposed to remain in the interference.

Be accompanied by a motion under Section  1.633(f) requesting the
benefit of the filing date of any earlier filed application, if benefit
of the earlier filed application is desired with respect to a proposed
count.

If an opponent is accorded the benefit of the filing date of an earlier
filed application in the notice of declaration of the interference, show
why the opponent is not also entitled to benefit of the earlier filed
application with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the earlier filed
application with respect to the proposed count.

A preliminary motion seeking to amend an application claim corresponding
to a count or adding a claim to be designated to correspond to a count
shall:

Propose an amended or added claim.

Show that the claim proposed to be amended or added defines the same
patentable invention as the count.

Show the patentability to the applicant of each claim proposed to be
amended or added and apply the terms of the claim proposed to be amended
or added to the disclosure of the application; when necessary a moving
party applicant shall file with the motion a proposed amendment to the
application amending the claim corresponding to the count or adding the
proposed additional claim to the application.

A preliminary motion seeking to designate an application or patent claim
to correspond to a count shall:

Identify the claim and the count.

Show the claim defines the same patentable invention as another claim
whose designation as corresponding to the count the moving party does
not dispute.

A preliminary motion seeking to designate an application or patent claim
as not corresponding to a count shall:

Identify the claim and the count.

Show that the claim does not define the same patentable invention as any
other claim whose designation in the notice declaring the interference
as corresponding to the count the party does not dispute.

A preliminary motion seeking to require an opponent who is an applicant
to add a claim and designate the claim as corresponding to a count
shall:

Propose a claim to be added by the opponent.

Show the patentability to the opponent of the claim and apply the terms
of the claim to the disclosure of the opponent's application.

Identify the count to which the claim shall be designated to correspond.

Show the claim defines the same patentable invention as the count to
which it will be designated to correspond.

A preliminary motion under Section  1.633(d) to substitute a different
application of the moving party shall:

Identify the different application.

Certify that a complete copy of the file of the different application,
except for documents filed under Section  1.131 or Section  1.608, has
been served on all opponents.

Show the patentability to the applicant of all claims in, or proposed to
be added to, the different application which correspond to each count
and apply the terms of the claims to the disclosure of the different
application; when necessary the applicant shall file with the motion an
amendment adding a claim to the different application.

A preliminary motion to declare an additional interference under Section 
1.633(e) shall explain why an additional interference is necessary.

When the preliminary motion seeks an additional interference under
Section  1.633(e)(1), the motion shall:

Identify the additional application.

Certify that a complete copy of the file of the additional application,
except for documents filed under Section  1.131 or Section  1.608, has
been served on all opponents.

Propose a count for the additional interference.

Show the patentability to the applicant of all claims in, or proposed to
be added to, the additional application which correspond to each
proposed count for the additional interference and apply the terms of
the claims to the disclosure of the additional application; when
necessary the applicant shall file with the motion an amendment adding
any claim to the additional application.

When the opponent is an applicant, show the patentability to the
opponent of any claims in, or proposed to be added to, the opponent's
application which correspond to the proposed count and apply the terms
of the claims to the disclosure of the opponent's application.

Identify all claims in the opponent's application or patent which should
be designated to correspond to each proposed count; if the opponent's
application does not contain any such claim, the motion shall propose a
claim to be added to the opponent's application.

Show that each proposed count for the additional interference defines a
separate patentable invention from all counts of the interference in
which the motion is filed.

Be accompanied by a motion under Section  1.633(f) requesting the
benefit of the filing date of an earlier filed application, if benefit
is desired with respect to a proposed count.

If an opponent is accorded the benefit of the filing date of an earlier
filed application in the notice of declaration of the interference, show
why the opponent is not also entitled to benefit of the earlier filed
application with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the earlier filed
application with respect to the proposed count.

When the preliminary motion seeks an additional interference under
Section  1.633(e)(2), the motion shall:

Identify any application or patent to be involved in the additional
interference.

Propose a count for the additional interference.

When the moving party is an applicant, show the patentability to the
applicant of all claims in, or proposed to be added to, the party's
application which correspond to each proposed count and apply the terms
of the claims to the disclosure of the party's application; when
necessary a moving party applicant shall file with the motion an
amendment adding any proposed claim to the application.

Identify all claims in any opponent's application which should be
designated to correspond to each proposed count; if an opponent's
application does not contain such a claim, the moving party shall
propose a claim to be added to the opponent's application. The moving
party shall show the patentability of any proposed claim to the opponent
and apply the terms of the claim to the disclosure of the opponent's
application.

Designate the claims of any patent involved in the interference which
define the same patentable invention as each proposed count.

Show that each proposed count for the additional interference defines a
separate patentable invention from all counts in the interference in
which the motion is filed.

Be accompanied by a motion under Section  1.633(f) requesting the
benefit of the filing date of an earlier filed application, if benefit
is desired with respect to a proposed count.

If an opponent is accorded the benefit of the filing date of an earlier
filed application in the notice of declaration of the interference, show
why the opponent is not also entitled to benefit of the earlier filed
application with respect to the proposed count. Otherwise, the opponent
will be presumed to be entitled to the benefit of the earlier filed
application with respect to the proposed count.

A preliminary motion for benefit under Section  1.633(f) shall:

Identify the earlier application.

When the earlier application is an application filed in the United
States, certify that a complete copy of the file of the earlier
application, except for documents filed under Section  1.131 or Section 
1.608, has been served on all opponents. When the earlier application is
an application filed in a foreign country, certify that a copy of the
application has been served on all opponents. If the earlier filed
application is not in English, the requirements of Section  1.647 must
also be met.

Show that the earlier application constitutes a constructive reduction
to practice of each count.

A preliminary motion to attack benefit under Section  1.633(g) shall
explain, as to each count, why an opponent should not be accorded the
benefit of the filing date of the earlier application.

A preliminary motion to add an application for reissue under Section 
1.633(h) shall:

Identify the application for reissue.

Certify that a complete copy of the file of the application for reissue
has been served on all opponents.

Show the patentability of all claims in, or proposed to be added to, the
application for reissue which correspond to each count and apply the
terms of the claims to the disclosure of the application for reissue;
when necessary a moving applicant for reissue shall file with the motion
an amendment adding any proposed claim to the application for reissue.

Be accompanied by a motion under Section  1.633(f) requesting the
benefit of the filing date of any earlier filed application, if benefit
is desired.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; para. (e)(1)(vi) revised 53 FR 23735, June 23, 1988,
effective Sept. 12, 1988; para. (a) revised, 58 FR 49432, Sept. 23,
1993, effective Oct. 25, 1993; paras. (a), (b), (c)(1)(v), (c)(1)(vi),
(c)(20(ii), (c)(2)(iii), (c)(3)(ii), (c)(4)(ii), (d), (e)(1)(viii),
(e)(2)(vii), (f)(2), & (h)(4) revised, paras. (c)(2)(iv), (c)(3)(iii), &
(d)(4) removed, paras. (c)(1)(vii), (e)(1)(ix), & (e)(2)(viii) added, 60
FR 14488. Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.638 Opposition and reply; time for filing opposition and
reply.

Unless otherwise ordered by an administrative patent judge, any
opposition to any motion shall be filed within 20 days after service of
the motion. An opposition shall identify any material fact set forth in
the motion which is in dispute and include an argument why the relief
requested in the motion should be denied.

Unless otherwise ordered by an administrative patent judge, any reply
shall be filed within 15 days after service of the opposition. A reply
shall be directed only to new points raised in the opposition.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.639 Evidence in support of motion, opposition, or reply.

Except as provided in paragraphs (c) through (g) of this section, proof
of any material fact alleged in a motion, opposition, or reply must be
filed and served with the motion, opposition, or reply unless the proof
relied upon is part of the interference file or the file of any patent
or application involved in the interference or any earlier application
filed in the United States of which a party has been accorded or seeks
to be accorded benefit.

Proof may be in the form of patents, printed publications, and
affidavits. The pages of any affidavits filed under this paragraph
shall, to the extent possible, be given sequential numbers, which shall
also serve as the record page numbers for the affidavits in the event
they are included in the party's record (Section  1.653). Any patents
and printed publications submitted under this paragraph and any exhibits
identified in affidavits submitted under this paragraph shall, to the
extent possible, be given sequential exhibit numbers, which shall also
serve as the exhibit numbers in the event the patents, printed
publications and exhibits are filed with the party's record (Section 
1.653).

If a party believes that additional evidence in the form of testimony
that is unavailable to the party is necessary to support or oppose a
preliminary motion under Section  1.633 or a motion to correct
inventorship under Section  1.634, the party shall describe the nature
of any proposed testimony as specified in paragraphs (d) through (g) of
this section. If the administrative patent judge finds that testimony is
needed to decide the motion, the administrative patent judge may grant
appropriate interlocutory relief and enter an order authorizing the
taking of testimony and deferring a decision on the motion to final
hearing.

When additional evidence in the form of expert-witness testimony is
needed in support of or opposition to a preliminary motion, the moving
party or opponent should:

Identify the person whom it expects to use as an expert;

State the field in which the person is alleged to be an expert; and

State:

The subject matter on which the person is expected to testify;

The facts and opinions to which the person is expected to testify; and

A summary of the grounds and basis for each opinion.

When additional evidence in the form of fact-witness testimony is
necessary, state the facts to which the witness is expected to testify.

If the opponent is to be called, or if evidence in the possession of the
opponent is necessary, explain the evidence sought, what it will show,
and why it is needed.

When inter partes tests are to be performed, describe the tests stating
what they will be expected to show.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (c)
revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras.
(d)-(g) added, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993;
paras. (a)-(d)(1) revised, 60 FR 14488, Mar. 17, 1995, effective Apr.
21, 1995]

---SECTION---1.640 Motions, hearing and decision, redeclaration of
interference, order to show cause.

A hearing on a motion may be held in the discretion of the
administrative patent judge. The administrative patent judge shall set
the date and time for any hearing. The length of oral argument at a
hearing on a motion is a matter within the discretion of the
administrative patent judge. An administrative patent judge may direct
that a hearing take place by telephone.

Unless an administrative patent judge or the Board is of the opinion
that an earlier decision on a preliminary motion would materially
advance the resolution of the interference, decision on a preliminary
motion shall be deferred to final hearing. Motions not deferred to final
hearing will be decided by an administrative patent judge. An
administrative patent judge may consult with an examiner in deciding
motions. An administrative patent judge may take up motions for
decisions in any order, may grant, deny, or dismiss any motion, and may
take such other action which will secure the just, speedy, and
inexpensive determination of the interference. A matter raised by a
party in support of or in opposition to a motion that is deferred to
final hearing will not be entitled to consideration at final hearing
unless the matter is raised in the party's brief at final hearing. If
the administrative patent judge determines that the interference shall
proceed to final hearing on the issue of priority or derivation, a time
shall be set for each party to file a paper identifying any decisions on
motions or on matters raised sua sponte by the administrative patent
judge that the party wishes to have reviewed at final hearing as well as
identifying any deferred motions that the party wishes to have
considered at final hearing. Any evidence that a party wishes to have
considered with respect to the decisions and deferred motions identified
by the party or by an opponent for consideration or review at final
hearing shall be filed or, if appropriate, noticed under Section 
1.671(e) during the testimony-in-chief period of the party.

When appropriate after the time expires for filing replies to
oppositions to preliminary motions, the administrative patent judge will
set a time for filing any amendment to an application involved in the
interference and for filing a supplemental preliminary statement as to
any new counts which may become involved in the interference if a
preliminary motion to amend or substitute a count has been filed.
Failure or refusal of a party to timely present an amendment required by
an administrative patent judge shall be taken without further action as
a disclaimer by that party of the invention involved. A supplemental
preliminary statement shall meet the requirements specified in Section 
1.623, 1.624, 1.625, or 1.626, but need not be filed if a party states
that it intends to rely on a preliminary statement previously filed
under Section  1.621(a). At an appropriate time in the interference, and
when necessary, an order will be entered redeclaring the interference.

After the time expires for filing preliminary motions, a further
preliminary motion under Section  1.633 will not be considered except as
provided by Section  1.645(b).

When a decision on any motion under Section Section  1.633, 1.634, or
1.635 or on any matter raised sua sponte by an administrative patent
judge is entered which does not result in the issuance of an order to
show cause under paragraph (d) of this section, a party may file a
request for reconsideration within 14 days after the date of the
decision. The request for reconsideration shall be filed and served by
hand or Express Mail. The filing of a request for reconsideration will
not stay any time period set by the decision. The request for
reconsideration shall specify with particularity the points believed to
have been misapprehended or overlooked in rendering the decision. No
opposition to a request for reconsideration shall be filed unless
requested by an administrative patent judge or the Board. A decision
ordinarily will not be modified unless an opposition has been requested
by an administrative patent judge or the Board. The request for
reconsideration normally will be acted on by the administrative patent
judge or the panel of the Board which issued the decision.

An administrative patent judge may issue an order to show cause why
judgment should not be entered against a party when:

A decision on a motion or on a matter raised sua sponte by an
administrative patent judge is entered which is dispositive of the
interference against the party as to any count;

The party is a junior party who fails to file a preliminary statement;
or

The party is a junior party whose preliminary statement fails to
overcome the effective filing date of another party.

When an order to show cause is issued under paragraph (d) of this
section, the Board shall enter judgment in accordance with the order
unless, within 20 days after the date of the order, the party against
whom the order issued files a paper which shows good cause why judgment
should not be entered in accordance with the order.

If the order was issued under paragraph (d)(1) of this section, the
paper may:

Request that final hearing be set to review any decision which is the
basis for the order as well as any other decision of the administrative
patent judge that the party wishes to have reviewed by the Board at
final hearing or

Fully explain why judgment should not be entered.

Any opponent may file a response to the paper within 20 days of the date
of service of the paper. If the order was issued under paragraph (d)(1)
of this section and the party's paper includes a request for final
hearing, the opponent's response must identify every decision of the
administrative patent judge that the opponent wishes to have reviewed by
the Board at a final hearing. If the order was issued under paragraph
(d)(1) of this section and the paper does not include a request for
final hearing, the opponent's response may include a request for final
hearing, which must identify every decision of the administrative patent
judge that the opponent wishes to have reviewed by the Board at a final
hearing. Where only the opponent's response includes a request for a
final hearing, the party filing the paper shall, within 14 days from the
date of service of the opponent's response, file a reply identifying any
other decision of the administrative patent judge that the party wishes
to have reviewed by the Board at a final hearing.

The paper or the response should be accompanied by a motion (Section 
1.635) requesting a testimony period if either party wishes to introduce
any evidence to be considered at final hearing (Section  1.671). Any
evidence that a party wishes to have considered with respect to the
decisions and deferred motions identified for consideration or review at
final hearing shall be filed or, if appropriate, noticed under Section 
1.671(e) during the testimony period of the party. A request for a
testimony period shall be construed as including a request for final
hearing.

If the paper contains an explanation of why judgment should not be
entered in accordance with the order, and if no party has requested a
final hearing, the decision that is the basis for the order shall be
reviewed based on the contents of the paper and the response. If the
paper fails to show good cause, the Board shall enter judgment against
the party against whom the order issued.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a)-(e) revised, 60 FR 14488, Mar. 17, 1995,
effective Apr. 21, 1995]

---SECTION---1.641 Unpatentability discovered by administrative patent
judge.

During the pendency of an interference, if the administrative patent
judge becomes aware of a reason why a claim designated to correspond to
a count may not be patentable, the administrative patent judge may enter
an order notifying the parties of the reason and set a time within which
each party may present its views, including any argument and any
supporting evidence, and, in the case of the party whose claim may be
unpatentable, any appropriate preliminary motions under Section Section 
1.633(c), (d) and (h).

If a party timely files a preliminary motion in response to the order of
the administrative patent judge, any opponent may file an opposition
(Section  1.638(a)). If an opponent files an opposition, the party may
reply (Section  1.638(b)).

After considering any timely filed views, including any timely filed
preliminary motions under Section  1.633, oppositions and replies, the
administrative patent judge shall decide how the interference shall
proceed.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.642 Addition of application or patent to interference.

During the pendency of an interference, if the administrative patent
judge becomes aware of an application or a patent not involved in the
interference which claims the same patentable invention as a count in
the interference, the administrative patent judge may add the
application or patent to the interference on such terms as may be fair
to all parties.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised. 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.643 Prosecution of interference by assignee.

An assignee of record in the Patent and Trademark Office of the entire
interest in an application or patent involved in an interference is
entitled to conduct prosecution of the interference to the exclusion of
the inventor.

An assignee of a part interest in an application or patent involved in
an interference may file a motion (Section  1.635) for entry of an order
authorizing it to prosecute the interference. The motion shall show the
inability or refusal of the inventor to prosecute the interference or
other cause why it is in the interest of justice to permit the assignee
of a part interest to prosecute the interference. The administrative
patent judge may allow the assignee of a part interest to prosecute the
interference upon such terms as may be appropriate.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.644 Petitions in interferences.

There is no appeal to the Commissioner in an interference from a
decision of an administrative patent judge or the Board. The
Commissioner will not consider a petition in an interference unless:

The petition is from a decision of an administrative patent judge or the
Board and the administrative patent judge or the Board shall be of the
opinion that the decision involves a controlling question of procedure
or an interpretation of a rule as to which there is a substantial ground
for a difference of opinion and that an immediate decision on petition
by the Commissioner may materially advance the ultimate termination of
the interference;

The petition seeks to invoke the supervisory authority of the
Commissioner and does not relate to the merits of priority of invention
or patentability or the admissibility of evidence under the Federal
Rules of Evidence; or

The petition seeks relief under Section  1.183.

A petition under paragraph (a)(1) of this section filed more than 15
days after the date of the decision of the administrative patent judge
or the Board may be dismissed as untimely. A petition under paragraph
(a)(2) of this section shall not be filed prior to the party's brief for
final hearing (see Section  1.656). Any petition under paragraph (a)(3)
of this section shall be timely if it is filed simultaneously with a
proper motion under Section  1.633, 1.634, or 1.635 when granting the
motion would require waiver of a rule. Any opposition to a petition
under paragraphs (a)(1) or (a)(2) of this section shall be filed within
20 days of the date of service of the petition. Any opposition to a
petition under paragraph (a)(3) of this section shall be filed within 20
days of the date of service of the petition or the date an opposition to
the motion is due, whichever is earlier.

The filing of a petition shall not stay the proceeding unless a stay is
granted in the discretion of the administrative patent judge, the Board,
or the Commissioner.

Any petition must contain a statement of the facts involved, in numbered
paragraphs, and the point or points to be reviewed and the action
requested. The petition will be decided on the basis of the record made
before the administrative patent judge or the Board, and no new evidence
will be considered by the Commissioner in deciding the petition. Copies
of documents already of record in the interference shall not be
submitted with the petition or opposition.

Any petition under paragraph (a) of this section shall be accompanied by
the petition fee set forth in Section  1.17(h).

Any request for reconsideration of a decision by the Commissioner shall
be filed within 14 days of the decision of the Commissioner and must be
accompanied by the fee set forth in Section  1.17(h). No opposition to a
request for reconsideration shall be filed unless requested by the
Commissioner. The decision will not ordinarily be modified unless such
an opposition has been requested by the Commissioner.

Where reasonably possible, service of any petition, opposition, or
request for reconsideration shall be such that delivery is accomplished
within one working day. Service by hand or Express Mail complies with
this paragraph.

An oral hearing on the petition will not be granted except when
considered necessary by the Commissioner.

The Commissioner may delegate to appropriate Patent and Trademark Office
employees the determination of petitions under this section.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a)-(a)(2), (b)-(g) revised, 60 FR 14488, Mar. 17,
1995, effective Apr. 21, 1995]

---SECTION---1.645 Extension of time, late papers, stay of proceedings.

Except to extend the time for filing a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit or for commencing a civil
action, a party may file a motion (Section  1.635) seeking an extension
of time to take action in an interference. See Section  1.304(a) for
extensions of time for filing a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or for commencing a civil action. The
motion shall be filed within sufficient time to actually reach the
administrative patent judge before expiration of the time for taking
action. A moving party should not assume that the motion will be granted
even if there is no objection by any other party. The motion will be
denied unless the moving party shows good cause why an extension should
be granted. The press of other business arising after an administrative
patent judge sets a time for taking action will not normally constitute
good cause. A motion seeking additional time to take testimony because a
party has not been able to procure the testimony of a witness shall set
forth the name of the witness, any steps taken to procure the testimony
of the witness, the dates on which the steps were taken, and the facts
expected to be proved through the witness.

Any paper belatedly filed will not be considered except upon motion
(Section  1.635) which shows good cause why the paper was not timely
filed, or where an administrative patent judge or the Board, sua sponte,
is of the opinion that it would be in the interest of justice to
consider the paper. See Section  1.304(a) for exclusive procedures
relating to belated filing of a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or belated commencement of a civil
action.

The provisions of Section  1.136 do not apply to time periods in
interferences.

An administrative patent judge may stay proceedings in an interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a) and (b), 54 FR 29553, July 13, 1989, effective
Aug. 20, 1989; paras. (a), (b), & (d) revised, 60 FR 14488, Mar. 17,
1995, effective Apr. 21, 1995]

---SECTION---1.646 Service of papers, proof of service.

A copy of every paper filed in the Patent and Trademark Office in an
interference or an application or patent involved in the interference
shall be served upon all other parties except:

Preliminary statements when filed under Section  1.621; preliminary
statements shall be served when service is ordered by an administrative
patent judge.

Certified transcripts and exhibits which accompany the transcripts filed
under Section  1.676; copies of transcripts shall be served as part of a
party's record under Section  1.653(c).

Service shall be on an attorney or agent for a party. If there is no
attorney or agent for the party, service shall be on the party. An
administrative patent judge may order additional service or waive
service where appropriate.

Unless otherwise ordered by an administrative patent judge, or except as
otherwise provided by this subpart, service of a paper shall be made as
follows:

By handing a copy of the paper or causing a copy of the paper to be
handed to the person served.

By leaving a copy of the paper with someone employed by the person at
the person's usual place of business.

When the person served has no usual place of business, by leaving a copy
of the paper at the person's residence with someone of suitable age and
discretion then residing therein.

By mailing a copy of the paper by first class mail; when service is by
first class mail the date of mailing is regarded as the date of service.

By mailing a copy of the paper by Express Mail; when service is by
Express Mail the date of deposit with the U.S. Postal Service is
regarded as the date of service.

When it is shown to the satisfaction of an administrative patent judge
that none of the above methods of obtaining or serving the copy of the
paper was successful, the administrative patent judge may order service
by publication of an appropriate notice in the Official Gazette.

An administrative patent judge may order that a paper be served by hand
or Express Mail.

The due date for serving a paper is the same as the due date for filing
the paper in the Patent and Trademark Office. Proof of service must be
made before a paper will be considered in an interference. Proof of
service may appear on or be affixed to the paper. Proof of service shall
include the date and manner of service. In the case of personal service
under paragraphs (c)(1) through (c)(3) of this section, proof of service
shall include the names of any person served and the person who made the
service. Proof of service may be made by an acknowledgment of service by
or on behalf of the person served or a statement signed by the party or
the party's attorney or agent containing the information required by
this section. A statement of an attorney or agent attached to, or
appearing in, the paper stating the date and manner of service will be
accepted as prima facie proof of service.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; 50 FR 23124,
May 31, 1985; paras. (a)(1)-(c)(1), (c)(4)-(c)(5) revised, para. (c)(6)
added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.647 Translation of document in foreign language.

When a party relies on a document or is required to produce a document
in a language other than English, a translation of the document into
English and an affidavit attesting to the accuracy of the translation
shall be filed with the document.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a)
and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR
46823, Sept. 16, 1991; revised, 60 FR 14488, Mar. 17, 1995, effective
Apr. 21, 1995]

---SECTION---1.651 Setting times for discovery and taking testimony,
parties entitled to take testimony.

At an appropriate stage in an interference, an administrative patent
judge shall set a time for filing motions (Section  1.635) for
additional discovery under Section  1.687(c) and testimony periods for
taking any necessary testimony.

Where appropriate, testimony periods will be set to permit a party to:

Present its case-in-chief and/or case-in-rebuttal and/or

Cross-examine an opponent's case-in-chief and/or a case-in-rebuttal.

A party is not entitled to take testimony to present a case-in-chief
unless:

The administrative patent judge orders the taking of testimony under
Section  1.639(c);

The party alleges in its preliminary statement a date of invention prior
to the effective filing date of the senior party;

A testimony period has been set to permit an opponent to prove a date of
invention prior to the effective filing date of the party and the party
has filed a preliminary statement alleging a date of invention prior to
that date; or

A motion (Section  1.635) is filed showing good cause why a testimony
period should be set.

Testimony, including any testimony to be taken in a place outside the
United States, shall be taken and completed during the testimony periods
set under paragraph (a) of this section. A party seeking to extend the
period for taking testimony must comply with Section Section  1.635 and
1.645(a).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a)
and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR
46823, Sept. 16, 1991; paras. (a) (c)(1)-(c)(3) & (d) revised, 60 FR
14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.652 Judgment for failure to take testimony or file
record.

If a junior party fails to timely take testimony authorized under
Section  1.651, or file a record under Section  1.653(c), an
administrative patent judge, with or without a motion (Section  1.635)
by another party, may issue an order to show cause why judgment should
not be entered against the junior party. When an order is issued under
this section, the Board shall enter judgment in accordance with the
order unless, within 15 days after the date of the order, the junior
party files a paper which shows good cause why judgment should not be
entered in accordance with the order. Any other party may file a
response to the paper within 15 days of the date of service of the
paper. If the party against whom the order was issued fails to show good
cause, the Board shall enter judgment against the party.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.653 Record and exhibits.

Testimony shall consist of affidavits under Section Section  1.672(b),
(c) and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions
under Section Section  1.671(g) and 1.672(a) when a deposition is
authorized by an administrative patent judge, transcripts of depositions
under Section Section  1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed
statements under Section  1.672(h), transcripts of interrogatories,
cross-interrogatories, and recorded answers and copies of written
interrogatories and answers and written requests for admissions and
answers under Section  1.688(a).

An affidavit shall be filed as set forth in Section  1.677. A certified
transcript of a deposition, including a deposition cross-examining an
affiant, shall be filed as set forth in Section Section  1.676, 1.677
and 1.678. An original agreed statement shall be filed as set forth in
Section  1.672(h).

In addition to the items specified in paragraph (b) of this section and
within a time set by an administrative patent judge, each party shall
file three copies and serve one copy of a record consisting of:

An index of the names of the witnesses for the party, giving the pages
of the record where the direct testimony and cross-examination of each
witness begins.

An index of exhibits briefly describing the nature of each exhibit and
giving the page of the record where each exhibit is first identified and
offered into evidence.

The count or counts.

Each affidavit by a witness for the party, transcript, including
transcripts of cross-examination of any affiant who testified for the
party and transcripts of compelled deposition testimony by a witness for
the party, agreed statement relied upon by the party, and transcript of
interrogatories, cross-interrogatories and recorded answers.

[Reserved]

Any evidence from another interference, proceeding, or action relied
upon by the party under Section  1.683.

Each request for an admission and the admission and each written
interrogatory and the answer upon which a party intends to rely under
Section  1.688.

The pages of the record shall be consecutively numbered to the extent
possible.

The name of each witness shall appear at the top of each page of each
affidavit or transcript.

[Reserved]

The record may be produced by standard typographical printing or by any
other process capable of producing a clear black permanent image. All
printed matter except on covers must appear in at least 11 point type on
opaque, unglazed paper. Footnotes may not be printed in type smaller
than 9 point. The page size shall be 21.8 by 27.9 cm. (8 1/2 by 11
inches) (letter size) with printed matter 16.5 by 24.1 cm. (6 1/2 by 9
1/2 inches). The record shall be bound with covers at their left edges
in such manner as to lie flat when open to any page and in one or more
volumes of convenient size (approximately 100 pages per volume is
suggested). When there is more than one volume, the numbers of the pages
contained in each volume shall appear at the top of the cover for each
volume.

[Reserved]

Each party shall file its exhibits with the record specified in
paragraph (c) of this section. Exhibits include documents and things
identified in affidavits or on the record during the taking of oral
depositions as well as official records and publications filed by the
party under Section  1.682(a). One copy of each documentary exhibit
shall be served. Documentary exhibits shall be filed in an envelope or
folder and shall not be bound as part of the record. Physical exhibits,
if not filed by an officer under Section  1.676(d), shall be filed with
the record. Each exhibit shall contain a label which identifies the
party submitting the exhibit and an exhibit number, the style of the
interference (e.g., Jones v. Smith), and the interference number. Where
possible, the label should appear at the bottom right-hand corner of
each documentary exhibit. Upon termination of an interference, an
administrative patent judge may return an exhibit to the party filing
the exhibit. When any exhibit is returned, an order shall be entered
indicating that the exhibit has been returned.

Any testimony, record, or exhibit which does not comply with this
section may be returned under Section  1.618(a).

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a),
(b), (c), (c)(1), (c)(4), (d), (g), & (i) revised, paras. (c)(5) (f) &
(h) removed, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.654 Final hearing.

At an appropriate stage of the interference, the parties will be given
an opportunity to appear before the Board to present oral argument at a
final hearing. An administrative patent judge may set a date and time
for final hearing. Unless otherwise ordered by an administrative patent
judge or the Board, each party will be entitled to no more than 30
minutes of oral argument at final hearing. A party who does not file a
brief for final hearing (Section  1.656(a)) shall not be entitled to
appear at final hearing.

The opening argument of a junior party shall include a fair statement of
the junior party's case and the junior party's position with respect to
the case presented on behalf of any other party. A junior party may
reserve a portion of its time for rebuttal.

A party shall not be entitled to argue that an opponent abandoned,
suppressed, or concealed an actual reduction to practice unless a notice
under Section  1.632 was timely filed.

After final hearing, the interference shall be taken under advisement by
the Board. No further paper shall be filed except under Section 
1.658(b) or as authorized by an administrative patent judge or the
Board. No additional oral argument shall be had unless ordered by the
Board.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) &
(d) revised, 60 FR 14488, Mar. 17, 1995, effective April 21, 1995]

---SECTION---1.655 Matters considered in rendering a final decision.

In rendering a final decision, the Board may consider any properly
raised issue, including priority of invention, derivation by an opponent
from a party who filed a preliminary statement under Section  1.625,
patentability of the invention, admissibility of evidence, any
interlocutory matter deferred to final hearing, and any other matter
necessary to resolve the interference. The Board may also consider
whether entry of any interlocutory order was an abuse of discretion. All
interlocutory orders shall be presumed to have been correct, and the
burden of showing an abuse of discretion shall be on the party attacking
the order. When two or more interlocutory orders involve the same issue,
the last entered order shall be presumed to have been correct.

A party shall not be entitled to raise for consideration at final
hearing any matter which properly could have been raised by a motion
under Section  1.633 or 1.634 unless the matter was properly raised in a
motion that was timely filed by the party under Section  1.633 or 1.634
and the motion was denied or deferred to final hearing, the matter was
properly raised by the party in a timely filed opposition to a motion
under Section  1.633 or 1.634 and the motion was granted over the
opposition or deferred to final hearing, or the party shows good cause
why the issue was not properly raised by a timely filed motion or
opposition. A party that fails to contest, by way of a timely filed
preliminary motion under Section  1.633(c), the designation of a claim
as corresponding to a count, or fails to timely argue the separate
patentability of a particular claim when the ground for unpatentability
is first raised, may not subsequently argue to an administrative patent
judge or the Board the separate patentability of claims designated to
correspond to the count with respect to that ground.

In the interest of justice, the Board may exercise its discretion to
consider an issue even though it would not otherwise be entitled to
consideration under this section.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)
revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; revised,
60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.656 Briefs for final hearing.

Each party shall be entitled to file briefs for final hearing. The
administrative patent judge shall determine the briefs needed and shall
set the time and order for filing briefs.

The opening brief of a junior party shall contain under appropriate
headings and in the order indicated:

A statement of interest indicating the full name of every party
represented by the attorney in the interference and the name of the real
party in interest if the party named in the caption is not the real
party in interest.

A statement of related cases indicating whether the interference was
previously before the Board for final hearing and the name and number of
any related appeal or interference which is pending before, or which has
been decided by, the Board, or which is pending before, or which has
been decided by, the U.S. Court of Appeals for the Federal Circuit or a
district court in a proceeding under 35 U.S.C. 146. A related appeal or
interference is one which will directly affect or be directly affected
by or have a bearing on the Board's decision in the pending
interference.

A table of contents, with page references, and a table of cases
(alphabetically arranged), statutes, and other authorities cited, with
references to the pages of the brief where they are cited.

A statement of the issues presented for decision in the interference.

A statement of the facts, in numbered paragraphs, relevant to the issues
presented for decision with appropriate references to the record.

An argument, which may be preceded by a summary, which shall contain the
contentions of the party with respect to the issues it is raising for
consideration at final hearing, and the reasons therefor, with citations
to the cases, statutes, other authorities, and parts of the record
relied on.

A short conclusion stating the precise relief requested.

An appendix containing a copy of the counts.

The opening brief of the senior party shall conform to the requirements
of paragraph (b) of this section except:

A statement of the issues and of the facts need not be made unless the
party is dissatisfied with the statement in the opening brief of the
junior party and

An appendix containing a copy of the counts need not be included if the
copy of the counts in the opening brief of the junior party is correct.

Unless ordered otherwise by an administrative patent judge, briefs shall
be double-spaced (except for footnotes, which may be single-spaced) and
shall comply with the requirements of Section  1.653(g) for records
except the requirement for binding.

An original and four copies of each brief must be filed.

Any brief which does not comply with the requirements of this section
may be returned under Section  1.618(a).

Any party, separate from its opening brief, but filed concurrently
therewith, may file an original and four copies of concise proposed
findings of fact and conclusions of law. Any proposed findings of fact
shall be in numbered paragraphs and shall be supported by specific
references to the record. Any proposed conclusions of law shall be in
numbered paragraphs and shall be supported by citation of cases,
statutes, or other authority. Any opponent, separate from its opening or
reply brief, but filed concurrently therewith, may file a paper
accepting or objecting to any proposed findings of fact or conclusions
of law; when objecting, a reason must be given. The Board may adopt the
proposed findings of fact and conclusions of law in whole or in part.

If a party wants the Board in rendering its final decision to rule on
the admissibility of any evidence, the party shall file with its opening
brief an original and four copies of a motion (Section  1.635) to
suppress the evidence. The provisions of Section  1.637(b) do not apply
to a motion to suppress under this paragraph. Any objection previously
made to the admissibility of the evidence of an opponent is waived
unless the motion required by this paragraph is filed. A party that
failed to challenge the admissibility of the evidence of an opponent on
a ground that could have been raised in a timely objection under Section 
1.672(c), 1.682(c), 1.683(b) or 1.688(b) may not move under this
paragraph to suppress the evidence on that ground at final hearing. An
original and four copies of an opposition to the motion may be filed
with an opponent's opening brief or reply brief as may be appropriate.

When a junior party fails to timely file an opening brief, an order may
issue requiring the junior party to show cause why the Board should not
treat failure to file the brief as a concession of priority. If the
junior party fails to show good cause within a time period set in the
order, judgment may be entered against the junior party.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a),
(b)(1)-(b)(8), (d), (e), (g), (h), & (i) revised, 60 FR 14488, Mar. 17,
1995, effective Apr. 21, 1995]

---SECTION---1.657 Burden of proof as to date of invention.

A rebuttable presumption shall exist that, as to each count, the
inventors made their invention in the chronological order of their
effective filing dates. The burden of proof shall be upon a party who
contends otherwise.

In an interference involving copending applications or involving a
patent and an application having an effective filing date on or before
the date the patent issued, a junior party shall have the burden of
establishing priority by a preponderance of the evidence.

In an interference involving an application and a patent and where the
effective filing date of the application is after the date the patent
issued, a junior party shall have the burden of establishing priority by
clear and convincing evidence.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.658 Final decision.

After final hearing, the Board shall enter a decision resolving the
issues raised at final hearing. The decision may enter judgment, in
whole or in part, remand the interference to an administrative patent
judge for further proceedings, or take further action not inconsistent
with law. A judgment as to a count shall state whether or not each party
is entitled to a patent containing the claims in the party's patent or
application which correspond to the count. When the Board enters a
decision awarding judgment as to all counts, the decision shall be
regarded as a final decision for the purpose of judicial review (35
U.S.C. 141-144, 146) unless a request for reconsideration under
paragraph (b) of this section is timely filed.

Any request for reconsideration of a decision under paragraph (a) of
this section shall be filed within one month after the date of the
decision. The request for reconsideration shall specify with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision. Any opposition to a request for
reconsideration shall be filed within 14 days of the date of service of
the request for reconsideration. Service of the request for
reconsideration shall be by hand or Express Mail. The Board shall enter
a decision on the request for reconsideration. If the Board shall be of
the opinion that the decision on the request for reconsideration
significantly modifies its original decision under paragraph (a) of this
section, the Board may designate the decision on the request for
reconsideration as a new decision. A decision on reconsideration is a
final decision for the purpose of judicial review (35 U.S.C. 141-144,
146).

A judgment in an interference settles all issues which (1) were raised
and decided in the interference, (2) could have been properly raised and
decided in the interference by a motion under Section  1.633 (a) through
(d) and (f) through (j) or Section  1.634, and (3) could have been
properly raised and decided in an additional interference with a motion
under Section  1.633(e). A losing party who could have properly moved,
but failed to move, under Section  1.633 or 1.634, shall be estopped to
take ex parte or inter partes action in the Patent and Trademark Office
after the interference which is inconsistent with that party's failure
to properly move, except that a losing party shall not be estopped with
respect to any claims which correspond, or properly could have
corresponded, to a count as to which that party was awarded a favorable
judgment.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b),
54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a) & (b)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.659 Recommendation.

Should the Board have knowledge of any ground for rejecting any
application claim not involved in the judgment of the interference, it
may include in its decision a recommended rejection of the claim. Upon
resumption of ex parte prosecution of the application, the examiner
shall be bound by the recommendation and shall enter and maintain the
recommended rejection unless an amendment or showing of facts not
previously of record is filed which, in the opinion of the examiner,
overcomes the recommended rejection.

Should the Board have knowledge of any ground for reexamination of a
patent involved in the interference as to a patent claim not involved in
the judgment of the interference, it may include in its decision a
recommendation to the Commissioner that the patent be reexamined. The
Commissioner will determine whether reexamination will be ordered.

The Board may make any other recommendation to the examiner or the
Commissioner as may be appropriate.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]

---SECTION---1.660 Notice of reexamination, reissue, protest, or
litigation.

When a request for reexamination of a patent involved in an interference
is filed, the patent owner shall notify the Board within 10 days of
receiving notice that the request was filed.

When an application for reissue is filed by a patentee involved in an
interference, the patentee shall notify the Board within 10 days of the
day the application for reissue is filed.

When a protest under Section  1.291 is filed against an application
involved in an interference, the applicant shall notify the Board within
10 days of receiving notice that the protest was filed.

A party in an interference shall notify the Board promptly of any
litigation related to any patent or application involved in an
interference, including any civil action commenced under 35 U.S.C. 146.

The notice required by this section is designed to assist the
administrative patent judge and the Board in efficiently handling
interference cases. Failure of a party to comply with the provisions of
this section may result in sanctions under Section  1.616. Knowledge by,
or notice to, an employee of the Office other than an employee of the
Board, of the existence of the reexamination, application for reissue,
protest, or litigation shall not be sufficient. The notice contemplated
by this section is notice addressed to the administrative patent judge
in charge of the interference in which the application or patent is
involved.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (e)
added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.661 Termination of interference after judgment.

After a final decision is entered by the Board, an interference is
considered terminated when no appeal (35 U.S.C. 141) or other review (35
U.S.C. 146) has been or can be taken or had.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]

---SECTION---1.662 Request for entry of adverse judgment; reissue filed
by patentee.

A party may, at any time during an interference, request and agree to
entry of an adverse judgment. The filing by a party of a written
disclaimer of the invention defined by a count, concession of priority
or unpatentability of the subject matter of a count, abandonment of the
invention defined by a count, or abandonment of the contest as to a
count will be treated as a request for entry of an adverse judgment
against the applicant or patentee as to all claims which correspond to
the count. Abandonment of an application, other than an application for
reissue having a claim of the patent sought to be reissued involved in
the interference, will be treated as a request for entry of an adverse
judgment against the applicant as to all claims corresponding to all
counts. Upon the filing by a party of a request for entry of an adverse
judgment, the Board may enter judgment against the party.

If a patentee involved in an interference files an application for
reissue during the interference and the reissue application does not
include a claim that corresponds to a count, judgment may be entered
against the patentee. A patentee who files an application for reissue
which includes a claim that corresponds to a count shall, in addition to
complying with the provisions of Section  1.660(b), timely file a
preliminary motion under Section  1.633(h) or show good cause why the
motion could not have been timely filed or would not be appropriate.

The filing of a statutory disclaimer under 35 U.S.C. 253 by a patentee
will delete any statutorily disclaimed claims from being involved in the
interference. A statutory disclaimer will not be treated as a request
for entry of an adverse judgment against the patentee unless it results
in the deletion of all patent claims corresponding to a count.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b)
amended, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; paras.
(a) & (e) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.663 Status of claim of defeated applicant after
interference.

Whenever an adverse judgment is entered as to a count against an
applicant from which no appeal (35 U.S.C. 141) or other review (35
U.S.C. 146) has been or can be taken or had, the claims of the
application corresponding to the count stand finally disposed of without
further action by the examiner. Such claims are not open to further ex
parte prosecution.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]

---SECTION---1.664 Action after interference.

After termination of an interference, the examiner will promptly take
such action in any application previously involved in the interference
as may be necessary. Unless entered by order of an administrative patent
judge, amendments presented during the interference shall not be
entered, but may be subsequently presented by the applicant subject to
the provisions of this subpart provided prosecution of the application
is not otherwise closed.

After judgment, the application of any party may be held subject to
further examination, including an interference with another application.

[49 FR 48467, Dec. 12, 1984; 50 FR 23124, May 31, 1985, added effective
Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.665 Second interference.

A second interference between the same parties will not be declared upon
an application not involved in an earlier interference for an invention
defined by a count of the earlier interference. See Section  1.658(c).

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985]

---SECTION---1.666 Filing of interference settlement agreements.

Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the
interference, must be in writing and a true copy thereof must be filed
before the termination of the interference (Section  1.661) as between
the parties to the agreement or understanding.

If any party filing the agreement or understanding under paragraph (a)
of this section so requests, the copy will be kept separate from the
file of the interference, and made available only to Government agencies
on written request, or to any person upon petition accompanied by the
fee set forth in Section  1.17(i) and on a showing of good cause.

Failure to file the copy of the agreement or understanding under
paragraph (a) of this section will render permanently unenforceable such
agreement or understanding and any patent of the parties involved in the
interference or any patent subsequently issued on any application of the
parties so involved. The Commissioner may, however, upon petition
accompanied by the fee set forth in Section  1.17(h) and on a showing of
good cause for failure to file within the time prescribed, permit the
filing of the agreement or understanding during the six month period
subsequent to the termination of the interference as between the parties
to the agreement or understanding.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17,
1989; amended 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995;
paras. (a) & (b) amended, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995]

---SECTION---1.671 Evidence must comply with rules.

Evidence consists of testimony and referenced exhibits, official records
and publications filed under Section  1.682, testimony and referenced
exhibits from another interference, proceeding, or action filed under
Section  1.683, discovery relied upon under Section  1.688, and the
specification (including claims) and drawings of any application or
patent:

Involved in the interference.

To which a party has been accorded benefit in the notice declaring the
interference or by a preliminary motion granted under Section  1.633.

For which a party has sought, but has been denied, benefit by a
preliminary motion under Section  1.633.

For which benefit was rescinded by a preliminary motion granted under
Section  1.633.

Except as otherwise provided in this subpart, the Federal Rules of
Evidence shall apply to interference proceedings. Those portions of the
Federal Rules of Evidence relating to criminal actions, juries, and
other matters not relevant to interferences shall not apply.

Unless the context is otherwise clear, the following terms of the
Federal Rules of Evidence shall be construed as follows:

Courts of the United States, U.S. Magistrate, court, trial court, or
trier of fact means administrative patent judge or Board as may be
appropriate.

Judge means administrative patent judge.

Judicial notice means official notice.

Civil action, civil proceeding, action, or trial mean interference.

Appellate court means United States Court of Appeals for the Federal
Circuit or a United States district court when judicial review is under
35 U.S.C. 146.

Before the hearing in Rule 703 of the Federal Rules of Evidence means
before giving testimony by affidavit or oral deposition.

The trial or hearing in Rules 803(24) and 804(5) of the Federal Rules of
Evidence means the taking of testimony by affidavit or oral deposition.

Certification is not necessary as a condition to admissibility when the
record is a record of the Patent and Trademark Office to which all
parties have access.

A party may not rely on an affidavit (including any exhibits), patent or
printed publication previously submitted by the party under Section 
1.639(b) unless a copy of the affidavit, patent or printed publication
has been served and a written notice is filed prior to the close of the
party's relevant testimony period stating that the party intends to rely
on the affidavit, patent or printed publication. When proper notice is
given under this paragraph, the affidavit, patent or printed publication
shall be deemed as filed under Section  1.640(b), 1.640(e)(3), 1.672(b)
or 1.682(a), as appropriate.

The significance of documentary and other exhibits identified by a
witness in an affidavit or during oral deposition shall be discussed
with particularity by a witness.

A party must file a motion (Section  1.635) seeking permission from an
administrative patent judge prior to compelling testimony or production
of documents or things under 35 U.S.C. 24 or from an opposing party. The
motion shall describe the general nature and the relevance of the
testimony, document, or thing. If permission is granted, the party shall
notice a deposition under Section  1.673 and may proceed to take
testimony.

A party must file a motion (Section  1.635) seeking permission from an
administrative patent judge prior to compelling testimony or production
of documents or things in a foreign country.

In the case of testimony, the motion shall:

Describe the general nature and relevance of the testimony;

Identify the witness by name or title;

Identify the foreign country and explain why the party believes the
witness can be compelled to testify in the foreign country, including a
description of the procedures that will be used to compel the testimony
in the foreign country and an estimate of the time it is expected to
take to obtain the testimony; and

Demonstrate that the party has made reasonable efforts to secure the
agreement of the witness to testify in the United States but has been
unsuccessful in obtaining the agreement, even though the party has
offered to pay the expenses of the witness to travel to and testify in
the United States.

In the case of production of a document or thing, the motion shall:

Describe the general nature and relevance of the document or thing;

Identify the foreign country and explain why the party believes
production of the document or thing can be compelled in the foreign
country, including a description of the procedures that will be used to
compel production of the document or thing in the foreign country and an
estimate of the time it is expected to take to obtain production of the
document or thing; and

Demonstrate that the party has made reasonable efforts to obtain the
agreement of the individual or entity having possession, custody, or
control of the document to produce the document or thing in the United
States but has been unsuccessful in obtaining that agreement, even
though the party has offered to pay the expenses of producing the
document or thing in the United States.

Evidence which is not taken or sought and filed in accordance with this
subpart shall not be admissible.

The weight to be given deposition testimony taken in a foreign country
will be determined in view of all the circumstances, including the laws
of the foreign country governing the testimony. Little, if any, weight
may be given to deposition testimony taken in a foreign country unless
the party taking the testimony proves by clear and convincing evidence,
as a matter of fact, that knowingly giving false testimony in that
country in connection with an interference proceeding in the United
States Patent and Trademark Office is punishable under the laws of that
country and that the punishment in that country for such false testimony
is comparable to or greater than the punishment for perjury committed in
the United States. The administrative patent judge and the Board, in
determining foreign law, may consider any relevant material or source,
including testimony, whether or not submitted by a party or admissible
under the Federal Rules of Evidence.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; paras. (a), (c)(1), (c)(2), (c)(6), (c)(7), (e)-(j)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.672 Manner of taking testimony.

Unless testimony must be compelled under 35 U.S.C. 24, compelled from a
party, or compelled in a foreign country, testimony of a witness shall
be taken by affidavit in accordance with this subpart. Testimony which
must be compelled under 35 U.S.C. 24, compelled from a party, or
compelled in a foreign country shall be taken by oral deposition.

A party presenting testimony of a witness by affidavit shall, within the
time set by the administrative patent judge for serving affidavits, file
a copy of the affidavit or, if appropriate, notice under Section 
1.671(e). If the affidavit relates to a party's case-in-chief, it shall
be filed or noticed no later than the date set by an administrative
patent judge for the party to file affidavits for its case-in-chief. If
the affidavit relates to a party's case-in-rebuttal, it shall be filed
or noticed no later than the date set by an administrative patent judge
for the party to file affidavits for its case-in-rebuttal. A party shall
not be entitled to rely on any document referred to in the affidavit
unless a copy of the document is filed with the affidavit. A party shall
not be entitled to rely on any thing mentioned in the affidavit unless
the opponent is given reasonable access to the thing. A thing is
something other than a document. The pages of affidavits filed under
this paragraph and of any other testimony filed therewith under Section
Section  1.683(a) and 1.688(a) shall, to the extent possible, be given
sequential numbers which shall also serve as the record page numbers for
the affidavits and other testimony in the party's record to be filed
under Section  1.653. Exhibits identified in the affidavits or in any
other testimony filed under Section Section  1.683(a) and 1.688(a) and
any official records and printed publica tions filed under Section 
1.682(a) shall, to the extent possible, be given sequential exhibit
numbers, which shall also serve as the exhibit numbers when the exhibits
are filed with the party's record. The affidavits, testimony filed under
Section Section  1.683(a) and 1.688(a) and exhibits shall be accompanied
by an index of the names of the witnesses, giving the number of the page
where the testimony of each witness begins, and by an index of the
exhibits briefly describing the nature of each exhibit and giving the
number of the page where each exhibit is first identified and offered
into evidence.

If an opponent objects to the admissibility of any evidence contained in
or submitted with an affidavit filed under paragraph (b) of this
section, the opponent must, no later than the date set by the
administrative patent judge for filing objections under this paragraph,
file objections stating with particularity the nature of each objection.
An opponent that fails to object to the admissibility of the evidence
contained in or submitted with an affidavit on a ground that could have
been raised in a timely objection under this paragraph will not be
entitled to move under Section  1.656(h) to suppress the evidence on
that ground. If an opponent timely files objections, the party may,
within 20 days of the due date for filing objections, file one or more
supplemental affidavits, official records or printed publications to
overcome the objections. No objection to the admissibility of the
supplemental evidence shall be made, except as provided by Section 
1.656(h). The pages of supplemental affidavits filed under this
paragraph shall, to the extent possible, be sequentially numbered
beginning with the number following the last page number of the party's
testimony submitted under paragraph (b) of this section. The page
numbers assigned to the supplemental affidavits shall also serve as the
record page numbers for the supplemental affidavits in the party's
record filed under Section  1.653. Additional exhibits identified in
supplemental affidavits and any supplemental official records and
printed publications shall, to the extent possible, be given sequential
numbers beginning with the number following the last number of the
exhibits submitted under paragraph (b) of this section. The exhibit
numbers shall also serve as the exhibit numbers when the exhibits are
filed with the party's record. The supplemental affidavits shall be
accompanied by an index of the names of the witnesses and an index of
exhibits of the type specified in paragraph (b) of this section.

After the time expires for filing objections and supplemental
affidavits, or earlier when appropriate, the administrative patent judge
shall set a time within which any opponent may file a request to
cross-examine an affiant on oral deposition. If any opponent requests
cross-examination of an affiant, the party shall notice a deposition at
a reasonable location within the United States under Section  1.673(e)
for the purpose of cross-examination by any opponent. Any redirect and
recross shall take place at the deposition. At any deposition for the
purpose of cross-examination of a witness, the party shall not be
entitled to rely on any document or thing not mentioned in one or more
of the affidavits filed under paragraphs (b) and (c) of this section,
except to the extent necessary to conduct proper redirect. The party who
gives notice of a deposition shall be responsible for providing a
translator if the witness does not testify in English, for obtaining a
court reporter, and for filing a certified transcript of the deposition
as required by Section  1.676. Within 45 days of the close of the period
for taking cross-examination, the party shall serve (but not file) a
copy of each transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of the transcripts served under this paragraph
shall, to the extent possible, be sequentially numbered beginning with
the number following the last page number of the party's supplemental
affidavits submitted under paragraph (c) of this section. The numbers
assigned to the transcript pages shall also serve as the record page
numbers for the transcripts in the party's record filed under Section 
1.653. Additional exhibits identified in the transcripts, shall, to the
extent possible, be given sequential numbers beginning with the number
following the last number of the exhibits submitted under paragraphs (b)
and (c) of this section. The exhibit numbers assigned to the additional
exhibits shall also serve as the exhibit numbers when those exhibits are
filed with the party's record. The deposition transcripts shall be
accompanied by an index of the names of the witnesses, giving the number
of the page where cross-examination, redirect and recross of each
witness begins, and an index of exhibits of the type specified in
paragraph (b) of this section.

[Reserved]

When a deposition is authorized to be taken within the United States
under this subpart and if the parties agree in writing, the deposition
may be taken in any place within the United States, before any person
authorized to administer oaths, upon any notice, and in any manner, and
when so taken may be used like other depositions.

If the parties agree in writing, the affidavit testimony of any witness
may be submitted without opportunity for cross-examination.

If the parties agree in writing, testimony may be submitted in the form
of an agreed statement setting forth how a particular witness would
testify, if called, or the facts in the case of one or more of the
parties. The agreed statement shall be filed in the Patent and Trademark
Office. See Section  1.653(a).

In an unusual circumstance and upon a showing that testimony cannot be
taken in accordance with the provisions of this subpart, an
administrative patent judge upon motion (Section  1.635) may authorize
testimony to be taken in another manner.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.673 Notice of examination of witness.

A party authorized to take testimony of a witness by deposition shall,
after complying with paragraphs (b) and (g) of this section, file and
serve a single notice of deposition stating the time and place of each
deposition to be taken. Depositions to be taken in the United States may
be noticed for a reasonable time and place in the United States. A
deposition may not be noticed for any other place without approval of an
administrative patent judge. The notice shall specify the name and
address of each witness and the general nature of the testimony to be
given by the witness. If the name of a witness is not known, a general
description sufficient to identify the witness or a particular class or
group to which the witness belongs may be given instead.

Unless the parties agree or an administrative patent judge or the Board
determine otherwise, a party shall serve, but not file, at least three
working days prior to the conference required by paragraph (g) of this
section, if service is made by hand or Express Mail, or at least 14 days
prior to the conference if service is made by any other means, the
following:

A list and copy of each document in the party's possession, custody, or
control and upon which the party intends to rely at any deposition and

A list of and a proffer of reasonable access to things in the party's
possession, custody, or control and upon which the party intends to rely
at any deposition.

A party shall not be permitted to rely on any witness not listed in the
notice, or any document not served or any thing not listed as required
by paragraph (b) of this section:

Unless all opponents agree in writing or on the record to permit the
party to rely on the witness, document or thing, or

Except upon a motion (Section  1.635) promptly filed which is
accompanied by any proposed notice, additional documents, or lists and
which shows good cause why the notice, documents, or lists were not
served in accordance with this section.

Each opponent shall have a full opportunity to attend a deposition and
cross-examine.

A party who has presented testimony by affidavit and is required to
notice depositions for the purpose of cross-examination under Section 
1.672(b), shall, after complying with paragraph (g) of this section,
file and serve a single notice of deposition stating the time and place
of each cross-examination deposition to be taken.

The parties shall not take depositions in more than one place at the
same time or so nearly at the same time that reasonable opportunity to
travel from one place of deposition to another cannot be had.

Before serving a notice of deposition and after complying with paragraph
(b) of this section, a party shall have an oral conference with all
opponents to attempt to agree on a mutually acceptable time and place
for conducting the deposition. A certificate shall appear in the notice
stating that the oral conference took place or explaining why the
conference could not be had. If the parties cannot agree to a mutually
acceptable place and time for conducting the deposition at the
conference, the parties shall contact an administrative patent judge who
shall then designate the time and place for conducting the deposition.

A copy of the notice of deposition shall be attached to the certified
transcript of the deposition filed under Section  1.676(a).

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; paras.
(a)-(e) & (g) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.674 Persons before whom depositions may be taken.

A deposition shall be taken before an officer authorized to administer
oaths by the laws of the United States or of the place where the
examination is held.

Unless the parties agree in writing, the following persons shall not be
competent to serve as an officer:

A relative or employee of a party,

a relative or employee of an attorney or agent of a party, or

a person interested, directly or indirectly, in the interference either
as counsel, attorney, agent, or otherwise.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)
revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.675 Examination of witness, reading and signing
transcript of deposition.

Each witness before giving an oral deposition shall be duly sworn
according to law by the officer before whom the deposition is to be
taken.

The testimony shall be taken in answer to interrogatories with any
questions and answers recorded in their regular order by the officer or
by some other person, who shall be subject to the provisions of Section 
1.674(b), in the presence of the officer unless the presence of the
officer is waived on the record by agreement of all parties.

All objections made at the time of the deposition to the qualifications
of the officer taking the deposition, the manner of taking it, the
evidence presented, the conduct of any party, and any other objection to
the proceeding shall be noted on the record by the officer. Evidence
objected to shall be taken subject to any objection.

Unless the parties agree in writing or waive reading and signature by
the witness on the record at the deposition, when the testimony has been
transcribed a transcript of the deposition shall, unless the witness
refuses to read and/or sign the transcript of the deposition, be read by
the witness and then signed by the witness in the form of:

An affidavit in the presence of any notary or

A declaration.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. (d)
revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995]

---SECTION---1.676 Certification and filing by officer, marking
exhibits.

The officer shall prepare a certified transcript of the deposition by
attaching to a transcript of the deposition a copy of the notice of
deposition, any exhibits to be annexed to the certified transcript, and
a certificate signed and sealed by the officer and showing:

The witness was duly sworn by the officer before commencement of
testimony by the witness.

The transcript is a true record of the testimony given by the witness.

The name of the person by whom the testimony was recorded and, if not
recorded by the officer, whether the testimony was recorded in the
presence of the officer.

The presence or absence of any opponent.

The place where the deposition was taken and the day and hour when the
deposition began and ended.

The officer is not disqualified under Section  1.674.

If the parties waived any of the requirements of paragraph (a) of this
section, the certificate shall so state.

The officer shall note on the certificate the circumstances under which
a witness refuses to sign a transcript.

Unless the parties agree otherwise in writing or on the record at the
deposition, the officer shall securely seal the certified transcript in
an envelope endorsed with the style of the interference (e.g., Smith v.
Jones), the interference number, the name of the witness, and the date
of sealing and shall promptly forward the envelope to BOX INTERFERENCE,
Commissioner of Patents and Trademarks, Washington, D.C. 20231.
Documents and things produced for inspection during the examination of a
witness, shall, upon request of a party, be marked for identification
and annexed to the certified transcript, and may be inspected and copied
by any party, except that if the person producing the documents and
things desires to retain them, the person may: (1) Offer copies to be
marked for identification and annexed to the certified transcript and to
serve thereafter as originals if the person affords to all parties fair
opportunity to verify the copies by comparison with the originals or (2)
Offer the originals to be marked for identification, after giving each
party an opportunity to inspect and copy them, in which event the
documents and things may be used in the same manner as if annexed to the
certified transcript. The exhibits shall then be filed as specified in
Section  1.653(i). If the weight or bulk of a document or thing shall
reasonably prevent the document or thing from being annexed to the
certified transcript, it shall, unless waived on the record at the
deposition of all parties, be authenticated by the officer and forwarded
to the Commissioner in a separate package marked and addressed as
provided in this paragraph.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; para. (a)(4) revised, 60 FR 14488, Mar. 17, 1995,
effective Apr. 21, 1995]

---SECTION---1.677 Form of an affidavit or a transcript of deposition.

An affidavit or a transcript of a deposition must be on opaque,
unglazed, durable paper approximately 21.8 by 27.9 cm. (8 1/2 by 11
inches) in size (letter size). The printed matter shall be double-spaced
on one side of the paper in not smaller than 11 point type with a margin
of 3.8 cm. (1 1/2 inches) on the left-hand side of the page. The pages
of each transcript must be consecutively numbered and the name of the
witness shall appear at the top of each page (Section  1.653(e)). In
transcripts of depositions, the questions propounded to each witness
must be consecutively numbered unless paper with numbered lines is used
and each question must be followed by its answer.

Exhibits must be numbered consecutively to the extent possible and each
must be marked as required by Section  1.653(i).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.678 Time for filing transcript of deposition.

Unless otherwise ordered by an administrative patent judge, a certified
transcript of a deposition must be filed in the Patent and Trademark
Office within one month after the date of deposition. If a party refuses
to file a certified transcript, the administrative patent judge or the
Board may take appropriate action under Section  1.616. If a party
refuses to file a certified transcript, any opponent may move for leave
to file the certified transcript and include a copy of the transcript as
part of the opponent's record.

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.679 Inspection of transcript.

A certified transcript of a deposition filed in the Patent and Trademark
Office may be inspected by any party. The certified transcript may not
be removed from the Patent and Trademark Office unless authorized by an
administrative patent judge upon such terms as may be appropriate.

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.682 Official records and printed publications.

A party may introduce into evidence, if otherwise admissible, an
official record or printed publication not identified in an affidavit or
on the record during an oral deposition of a witness, by filing a copy
of the official record or printed publication or, if appropriate, a
notice under Section  1.671(e). If the official record or printed
publication relates to the party's case-in-chief, it shall be filed or
noticed together with any affidavits filed by the party under Section 
1.672(b) for its case-in-chief or, if the party does not serve any
affidavits under Section  1.672(b) for its case-in-chief, no later than
the date set by an administrative patent judge for the party to file
affidavits under Section  1.672(b) for its case-in-chief. If the
official record or printed publication relates to rebuttal, it shall be
filed or noticed together with any affidavits filed by the party under
Section  1.672(b) for the its case-in-rebuttal or, if the party does not
file any affidavits under Section  1.672(b) for its case-in-rebuttal, no
later than the date set by an administrative patent judge for the party
to file affidavits under Section  1.672(b) for its case-in-rebuttal.
Official records and printed publications filed under this paragraph
shall be assigned sequential exhibit numbers by the party in the manner
set forth in Section  1.672(b). The official record and printed
publications shall be accompanied by a paper which shall:

Identify the official record or printed publication;

Identify the portion thereof to be introduced in evidence; and

Indicate generally the relevance of the portion sought to be introduced
in evidence.

[Reserved]

Unless otherwise ordered by an administrative patent judge, any written
objection by an opponent to the paper or to the admissibility of the
official record or printed publication shall be filed no later than the
date set by the administrative patent judge for the opponent to file
objections under Section  1.672(c) to affidavits submitted by the party
under Section  1.672(b). An opponent who fails to object to the
admissibility of the official record or printed publication on a ground
that could have been raised in a timely objection under this paragraph
will not be entitled to move under Section  1.656(h) to suppress the
evidence on that ground. If an opponent timely files an objection, the
party may respond by filing one or more supplemental affidavits,
official records or printed publications, which must be filed together
with any supplemental evidence filed by the party under Section 
1.672(c) or, if the party does not file any supplemental evidence under
Section  1.672(c), no later than the date set by an administrative
patent judge for the party to file supplemental affidavits under Section 
1.672(c). No objection to the admissibility of the supplemental evidence
shall be made, except as provided by Section  1.656(h). The pages of
supplemental affidavits and the exhibits filed under this section shall
be sequentially numbered by the party in the manner set forth in Section 
1.672(c). The supplemental affidavits and exhibits shall be accompanied
by an index of witnesses and an index of exhibits of the type required
by Section  1.672(b).

Any request by an opponent to cross-examine on oral deposition the
affiant of a supplemental affidavit submitted under paragraph (c) of
this section shall be filed no later than the date set by the
administrative patent judge for the opponent to file a request to
cross-examine an affiant with respect to an affidavit served by the
party under Section  1.672(b) or (c). If any opponent requests
cross-examination of an affiant, the party shall file notice of a
deposition for a reasonable location within the United States under
Section  1.673(e) for the purpose of cross-examination by any opponent.
Any redirect and recross shall take place at the deposition. At any
deposition for the purpose of cross-examination of a witness, the party
shall not be entitled to rely on any document or thing not mentioned in
one or more of the affidavits filed under this paragraph, except to the
extent necessary to conduct proper redirect. The party who gives notice
of a deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter, and
for filing a certified transcript of the deposition as required by
Section  1.676. Within 45 days of the close of the period for taking
cross-examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Section  1.672(d). The deposition transcripts shall
be accompanied by an index of the names of the witnesses, giving the
number of the page where cross-examination, redirect and recross of each
witness begins, and an index of exhibits of the type specified in
Section  1.672(b).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.683 Testimony in another interference, proceeding, or
action.

A party may introduce into evidence, if otherwise admissible, testimony
by affidavit or oral deposition and referenced exhibits from another
interference, proceeding, or action involving the same parties by filing
a copy of the affidavit or a copy of the transcript of the oral
deposition and the referenced exhibits. If the testimony and referenced
exhibits relate to the party's case-in-chief, they shall be filed
together with any affidavits served by the party under Section  1.672(b)
for its case-in-chief or, if the party does not file any affidavits
under Section  1.672(b) for its case-in-chief, no later than the date
set by an administrative patent judge for the party to file affidavits
under Section  1.672(b) for its case-in-chief. If the testimony and
referenced exhibits relate to rebuttal, they shall be filed together
with any affidavits served by the party under Section  1.672(b) for its
case-in-rebuttal or, if the party does not file any affidavits under
Section  1.672(b) for its case-in-rebuttal, no later than the date set
by an administrative patent judge for the party to file affidavits under
Section  1.672(b) for its case-in-rebuttal. Pages of affidavits and
deposition transcripts served under this paragraph and any new exhibits
served therewith shall be assigned sequential numbers by the party in
the manner set forth in Section  1.672(b). The testimony shall be
accompanied by a paper which specifies with particularity the exact
testimony to be used and demonstrates its relevance.

Unless otherwise ordered by an administrative patent judge, any written
objection by an opponent to the paper or the admissibility of the
testimony and referenced exhibits filed under this section shall be
filed no later than the date set by the administrative patent judge for
the opponent to file any objections under Section  1.672(c) to
affidavits submitted by the party under Section  1.672(b). An opponent
who fails to challenge the admissibility of the testimony or referenced
exhibits on a ground that could have been raised in a timely objection
under this paragraph will not be entitled to move under Section 
1.656(h) to suppress the evidence on that ground. If an opponent timely
files an objection, the party may respond with one or more supplemental
affidavits, official records or printed publications, which must be
filed together with any supplemental evidence filed by the party under
Section  1.672(c) or, if the party does not file any supplemental
evidence under Section  1.672(c), no later than the date set by an
administrative patent judge for the party to file supplemental evidence
under Section  1.672(c). No objection to the admissibility of the
evidence contained in or submitted with a supplemental affidavit shall
be made, except as provided by Section  1.656(h). The pages of
supplemental affidavits and the exhibits filed under this section shall
be sequentially numbered by the party in the manner set forth in Section 
1.672(c). The supplemental affidavits and exhibits shall be accompanied
by an index of witnesses and an index of exhibits of the type required
by Section  1.672(b).

Any request by an opponent to cross-examine on oral deposition the
affiant of an affidavit or supplemental affidavit submitted under
paragraph (a) or (b) of this section shall be filed no later than the
date set by the administrative patent judge for the opponent to file a
request to cross-examine an affiant with respect to an affidavit filed
by the party under Section  1.672(b) or (c). If any opponent requests
cross-examination of an affiant, the party shall file a notice of
deposition for a reasonable location within the United States under
Section  1.673(e) for the purpose of cross-examination by any opponent.
Any redirect and recross shall take place at the deposition. At any
deposition for the purpose of cross-examination of a witness, the party
shall not be entitled to rely on any document or thing not mentioned in
one or more of the affidavits filed under this paragraph, except to the
extent necessary to conduct proper redirect. The party who gives notice
of a deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter, and
for filing a certified transcript of the deposition as required by
Section  1.676. Within 45 days of the close of the period for taking
cross-examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Section  1.672(d). The deposition transcripts shall
be accompanied by an index of the names of the witnesses, giving the
number of the page where cross-examination, redirect and recross of each
witness begins, and an index of exhibits of the type specified in
Section  1.672(b).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.684 [Reserved]

---SECTION---1.685 Errors and irregularities in depositions.

An error in a notice for taking a deposition is waived unless a motion
(Section  1.635) to quash the notice is filed as soon as the error is,
or could have been, discovered.

An objection to a qualification of an officer taking a deposition is
waived unless:

The objection is made on the record of the deposition before a witness
begins to testify.

If discovered after the deposition, a motion (Section  1.635) to
suppress the deposition is filed as soon as the objection is, or could
have been, discovered.

An error or irregularity in the manner in which testimony is
transcribed, a certified transcript is signed by a witness, or a
certified transcript is prepared, signed, certified, sealed, endorsed,
forwarded, filed, or otherwise handled by the officer is waived unless a
motion (Section  1.635) to suppress the deposition is filed as soon as
the error of irregularity is, or could have been, discovered.

An objection to the deposition on any grounds, such as the competency of
a witness, admissibility of evidence, manner of taking the deposition,
the form of questions and answers, any oath or affirmation, or conduct
of any party at the deposition, is waived unless an objection is made on
the record at the deposition stating the specific ground of objection.
Any objection which a party wishes considered by the Board at final
hearing shall be included in a motion to suppress under Section 
1.656(h).

Nothing in this section precludes taking notice of plain errors
affecting substantial rights although they were not brought to the
attention of an administrative patent judge or the Board.

[49FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124,
May 31, 1985; amended, 60 FR 14488, Mar. 17, 1995, effective Apr. 21,
1995]

---SECTION---1.687 Additional discovery.

A party is not entitled to discovery except as authorized in this
subpart.

Where appropriate, a party may obtain production of documents and things
during cross-examination of an opponent's witness or during the
testimony period of the party's case-in-rebuttal.

Upon a motion (Section  1.635) brought by a party within the time set by
an administrative patent judge under Section  1.651 or thereafter as
authorized by Section  1.645 and upon a showing that the interest of
justice so requires, an administrative patent judge may order additional
discovery, as to matters under the control of a party within the scope
of the Federal Rules of Civil Procedure, specifying the terms and
conditions of such additional discovery. See Section  1.647 concerning
translations of documents in a foreign language.

The parties may agree to discovery among themselves at any time. In the
absence of an agreement, a motion for additional discovery shall not be
filed except as authorized by this subpart.

[49 FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (d) &
(e) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.688 Use of discovery.

If otherwise admissible, a party may introduce into evidence an answer
to a written request for an admission or an answer to a written
interrogatory obtained by discovery under Section  1.687 by filing a
copy of the request for admission or the written interrogatory and the
answer. If the answer relates to a party's case-in-chief, the answer
shall be served together with any affidavits served by the party under
Section  1.672(b) for its case-in-chief or, if the party does not serve
any affidavits under Section  1.672(b) for its case-in-chief, no later
than the date set by an administrative patent judge for the party to
serve affidavits under Section  1.672(b) for its case-in-chief. If the
answer relates to the party's rebuttal, the answer shall be served
together with any affidavits served by the party under Section  1.672(b)
for its case-in-rebuttal or, if the party does not serve any affidavits
under Section  1.672(b) for its case-in-rebuttal, no later than the date
set by an administrative patent judge for the party to serve affidavits
under Section  1.672(b) for its case-in-rebuttal.

Unless otherwise ordered by an administrative patent judge, any written
objection to the admissibility of an answer shall be filed no later than
the date set by the administrative patent judge for the opponent to file
any objections under Section  1.672(c) to affidavits submitted by the
party under Section  1.672(b). An opponent who fails to challenge the
admissibility of an answer on a ground that could have been raised in a
timely objection under this paragraph will not be entitled to move under
Section  1.656(h) to suppress the evidence on that ground. If an
opponent timely files an objection, the party may respond with one or
more supplemental affidavits, which must be filed together with any
supplemental evidence filed by the party under Section  1.672(c) or, if
the party does not file any supplemental evidence under Section 
1.672(c), no later than the date set by an administrative patent judge
for the party to file supplemental affidavits under Section  1.672(c).
No objection to the admissibility of the evidence contained in or
submitted with a supplemental affidavit shall be made, except as
provided by Section  1.656(h). The pages of supplemental affidavits and
the exhibits filed under this section shall be sequentially numbered by
the party in the manner set forth in Section  1.672(c). The supplemental
affidavits and exhibits shall be accompanied by an index of witnesses
and an index of exhibits of the type required by Section  1.672(b).

Any request by an opponent to cross-examine on oral deposition the
affiant of a supplemental affidavit submitted under paragraph (b) of
this section shall be filed no later than the date set by the
administrative patent judge for the opponent to file a request to
cross-examine an affiant with respect to an affidavit filed by the party
under Section  1.672(b) or (c). If any opponent requests
cross-examination of an affiant, the party shall file a notice of
deposition for a reasonable location within the United States under
Section  1.673(e) for the purpose of cross-examination by any opponent.
Any redirect and recross shall take place at the deposition. At any
deposition for the purpose of cross-examination of a witness, the party
shall not be entitled to rely on any document or thing not mentioned in
one or more of the affidavits filed under this paragraph, except to the
extent necessary to conduct proper redirect. The party who gives notice
of a deposition shall be responsible for providing a translator if the
witness does not testify in English, for obtaining a court reporter, and
for filing a certified transcript of the deposition as required by
Section  1.676. Within 45 days of the close of the period for taking
cross-examination, the party shall serve (but not file) a copy of each
deposition transcript on each opponent together with copies of any
additional documentary exhibits identified by the witness during the
deposition. The pages of deposition transcripts and exhibits served
under this paragraph shall be sequentially numbered by the party in the
manner set forth in Section  1.672(d). The deposition transcripts shall
be accompanied by an index of the names of the witnesses, giving the
number of the page where cross-examination, redirect and recross of each
witness begins, and an index of exhibits of the type specified in
Section  1.672(b).

A party may not rely upon any other matter obtained by discovery unless
it is introduced into evidence under this subpart.

[49 FR 48471, Dec. 12, 1984, added effective Feb.11, 1985; revised, 60
FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---1.690 Arbitration of interferences.

Parties to a patent interference may determine the interference or any
aspect thereof by arbitration. Such arbitration shall be governed by the
provisions of Title 9, United States Code. The parties must notify the
Board in writing of their intention to arbitrate. An agreement to
arbitrate must be in writing, specify the issues to be arbitrated, the
name of the arbitrator or a date not more than thirty (30) days after
the execution of the agreement for the selection of the arbitrator, and
provide that the arbitrator's award shall be binding on the parties and
that judgment thereon can be entered by the Board. A copy of the
agreement must be filed within twenty (20) days after its execution. The
parties shall be solely responsible for the selection of the arbitrator
and the rules for conducting proceedings before the arbitrator. Issues
not disposed of by the arbitration will be resolved in accordance with
the procedures established in this subpart, as determined by the
administrative patent judge.

An arbitration proceeding under this section shall be conducted within
such time as may be authorized on a case-by-case basis by an
administrative patent judge.

An arbitration award will be given no consideration unless it is binding
on the parties, is in writing and states in a clear and definite manner
the issue or issues arbitrated and the disposition of each issue The
award may include a statement of the grounds and reasoning in support
thereof. Unless otherwise ordered by an administrative patent judge, the
parties shall give notice to the Board of an arbitration award by filing
within twenty (20) days from the date of the award a copy of the award
signed by the arbitrator or arbitrators. When an award is timely filed,
the award shall, as to the parties to the arbitration, be dispositive of
the issue or issues to which it relates.

An arbitration award shall not preclude the Office from determining
patentability of any invention involved in the interference.

[Added, 52 FR 13838, Apr. 27, 1987; paras. (a)-(c) revised, 60 FR 14488,
Mar. 17, 1995, effective Apr. 21, 1995]

---SECTION---F Extension of Patent Term

---SECTION---1.701 Extension of patent term due to prosecution delay.

A patent, other than for designs, issued on an application filed on or
after June 8, 1995, is entitled to extension of the patent term if the
issuance of the patent was delayed due to:

Interference proceedings under 35 U.S.C. 135(a); and/or

The application being placed under a secrecy order under 35 U.S.C. 181;
and/or

Appellate review by the Board of Patent Appeals and Interferences or by
a Federal court under 35 U.S.C. 141 or 145, if the patent was issued
pursuant to a decision reversing an adverse determination of
patentability and if the patent is not subject to a terminal disclaimer
due to the issuance of another patent claiming subject matter that is
not patentably distinct from that under appellate review.

The term of a patent entitled to extension under paragraph (a) of this
section shall be extended for the sum of the periods of delay calculated
under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the
extent that these periods are not overlapping, up to a maximum of five
years. The extension will run from the expiration date of the patent.

The period of delay under paragraph (a)(1) of this section for an
application is the sum of the following periods, to the extent that the
periods are not overlapping:

With respect to each interference in which the application was involved,
the number of days, if any, in the period beginning on the date the
interference was declared or redeclared to involve the application in
the interference and ending on the date that the interference was
terminated with respect to the application; and

The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Patent and Trademark
Office due to interference proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the termination of
the suspension.

The period of delay under paragraph (a)(2) of this section for an
application is the sum of the following periods, to the extent that the
periods are not overlapping:

The number of days, if any, the application was maintained in a sealed
condition under 35 U.S.C. 181;

The number of days, if any, in the period beginning on the date of
mailing of an examiner's answer under Section  1.193 in the application
under secrecy order and ending on the date the secrecy order and any
renewal thereof was removed;

The member of days, if any, in the period beginning on the date
applicant was notified that an interference would be declared but for
the secrecy order and ending on the date the secrecy order and any
renewal thereof was removed; and

The number of days, if any, in the period beginning on the date of
notification under Section  5.3(c) and ending on the date of mailing of
the notice of allowance under Section  1.311.

The period of delay under paragraph (a)(3) of this section is the sum of
the number of days, if any, in the period beginning on the date on which
an appeal to the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and ending on the date of a final decision in favor
of the applicant by the Board of Patent Appeals and Interferences or by
a Federal court in an appeal under 35 U.S.C. 141 or a civil action under
35 U.S.C. 145.

The period of delay set forth in paragraph (c)(3) shall be reduced by:

Any time during the period of appellate review that occurred before
three years from the filing of the first national application for patent
presented for examination; and

Any time during the period of appellate review, as determined by the
Commissioner, during which the applicant for patent did not act with due
diligence. In determining the due diligence of an applicant, the
Commissioner may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---1.710 Patents subject to extension of the patent term.

A patent is eligible for extension of the patent term if the patent
claims a product as defined in paragraph (b) of this section, either
alone or in combination with other ingredients that read on a
composition that received permission for commercial marketing or use, or
a method of using such a product, or a method of manufacturing such a
product, and meets all other conditions and requirements of this
subpart.

The term product referred to in paragraph (a) of this section means --
&emsp;

The active ingredient of a new human drug, antibiotic drug, or human
biological product (as those terms are used in the Federal Food, Drug,
and Cosmetic Act and the Public Health Service Act) including any salt
or ester of the active ingredient, as a single entity or in combination
with another active ingredient; or

The active ingredient of a new animal drug or veterinary biological
product (as those terms are used in the Federal Food, Drug, and Cosmetic
Act and the Virus-Serum-Toxin Act) that is not primarily manufactured
using recombinant DNA, recombinant RNA, hybridoma technology, or other
processes including site specific genetic manipulation techniques,
including any salt or ester of the active ingredient, as a single entity
or in combination with another active ingredient; or

Any medical device, food additive, or color additive subject to
regulation under the Federal Food, Drug, and Cosmetic Act.

[Added 52 FR 9394, Mar. 24, 1987, effective May 26, 1987; amended, 54 FR
30375, July 20, 1989, effective Aug. 22, 1989]

---SECTION---1.720 Conditions for extension of patent term.

The term of a patent may be extended if:

The patent claims a product or a method of using or manufacturing a
product as defined in Section  1.710;

The term of the patent has never been previously extended except for any
interim extension issued pursuant to Section l.760;

An application for extension is submitted in compliance with Section 
1.740;

The product has been subject to a regulatory review period as defined in
35 U.S.C. 156(g) before its commercial marketing or use;

The product has received permission for commercial marketing or use and
--

The permission for the commercial marketing or use of the product is the
first received permission for commercial marketing or use under the
provision of law under which the applicable regulatory review occurred,
or

In the case of a patent other than one directed to subject matter within
Section  1.710(b)(2) claiming a method of manufacturing the product that
primarily uses recombinant DNA technology in the manufacture of the
product, the permission for the commercial marketing or use is the first
received permission for the commercial marketing or use of a product
manufactured under the process claimed in the patent, or

In the case of a patent claiming a new animal drug or a veterinary
biological product that is not covered by the claims in any other patent
that has been extended, and has received permission for the commercial
marketing or use in non-food-producing animals and in food-producing
animals, and was not extended on the basis of the regulatory review
period for use in non-food-producing animals, the permission for the
commercial marketing or use of the drug or product after the regulatory
review period for use in food-producing animals is the first permitted
commercial marketing or use of the drug or product for administration to
a food-producing animal.

The application is submitted within the sixty-day period beginning on
the date the product first received permission for commercial marketing
or use under the provisions of law under which the applicable regulatory
review period occurred; or in the case of a patent claiming a method of
manufacturing the product which primarily uses recombinant DNA
technology in the manufacture of the product, the application for
extension is submitted within the sixty-day period beginning on the date
of the first permitted commercial marketing or use of a product
manufactured under the process claimed in the patent; or in the case of
a patent that claims a new animal drug or a veterinary biological
product that is not covered by the claims in any other patent that has
been extended, and said drug or product has received permission for the
commercial marketing or use in non-food-producing animals, the
application for extension is submitted within the sixty-day period
beginning on the date of the first permitted commercial marketing or use
of the drug or product for administration to a food-producing animal;

The term of the patent has not expired before the submission of an
application in compliance with Section  1.741; and

No other patent term has been extended for the same regulatory review
period for the product.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; paras. (e) &
(f) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]

---SECTION---1.730 Applicant for extension of patent term.

Any application for extension of a patent term must be submitted by the
owner of record of the patent or its agent and must comply with the
requirements of Section  1.740.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987]

---SECTION---1.740 Application for extension of patent term.

An application for extension of patent term must be made in writing to
the Commissioner of Patents and Trademarks. A formal application for the
extension of patent term shall include:

A complete identification of the approved product as by appropriate
chemical and generic name, physical structure or characteristics;

A complete identification of the Federal statute including the
applicable provision of law under which the regulatory review occurred;

An identification of the date on which the product received permission
for commercial marketing or use under the provision of law under which
the applicable regulatory review period occurred;

In the case of a drug product, an identification of each active
ingredient in the product and as to each active ingredient, a statement
that it has not been previously approved for commercial marketing or use
under the Federal Food, Drug, and Cosmetic Act, the Public Health
Service Act, or the Virus-Serum-Toxin Act, or a statement of when the
active ingredient was approved for commercial marketing or use (either
alone or in combination with other active ingredients), the use for
which it was approved, and the provision of law under which it was
approved.

A statement that the application is being submitted within the sixty day
period permitted for submission pursuant to Section l.720(f) and an
identification of the date of the last day on which the application
could be submitted;

A complete identification of the patent for which an extension is being
sought by the name of the inventor, the patent number, the date of
issue, and the date of expiration;

A copy of the patent for which an extension is being sought, including
the entire specification (including claims) and drawings;

A copy of any disclaimer, certificate of correction, receipt of
maintenance fee payment, or reexamination certificate issued in the
patent;

A statement that the patent claims the approved product or a method of
using or manufacturing the approved product, and a showing which lists
each applicable patent claim and demonstrates the manner in which each
applicable patent claim reads on the approved product or method of using
or manufacturing the approved product;

A statement, beginning on a new page, of the relevant dates and
information pursuant to 35 U.S.C. 156(g) in order to enable the
Secretary of Health and Human Services or the Secretary of Agriculture,
as appropriate, to determine the applicable regulatory review period as
follows:

For a patent claiming a human drug, antibiotic, or human biological
product, the effective date of the investigational new drug (IND)
application and the IND number; the date on which a new drug application
(NDA) or a Product License Application (PLA) was initially submitted and
the NDA or PLA number and the date on which the NDA was approved or the
Product License issued;

For a patent claiming a new animal drug, the date a major health or
environmental effects test on the drug was initiated and any available
substantiation of the date or the date of an exemption under subsection
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act became
effective for such animal drug; the date on which a new animal drug
application (NADA) was initially submitted and the NADA number; and the
date on which the NADA was approved;

For a patent claiming a veterinary biological product, the date the
authority to prepare an experimental biological product under the
Virus-Serum-Toxin Act became effective; the date an application for a
license was submitted under the Virus-Serum-Toxin Act; and the date the
license issued;

For a patent claiming a food or color additive, the date a major health
or environmental effects test on the additive was initiated and any
available substantiation of that date; the date on which a petition for
product approval under the Federal Food, Drug, and Cosmetic Act was
initially submitted and the petition number; and the date on which the
FDA published a Federal Register notice listing the additive for use;

For a patent claiming a medical device, the effective date of the
investigational device exemption (IDE) and the IDE number, if
applicable, or the date on which the applicant began the first clinical
investigation involving the device if no IDE was submitted and any
available substantiation of that date; the date on which the application
for product approval or notice of completion of a product development
protocol under section 515 of the Federal Food, Drug, and Cosmetic Act
was initially submitted and the number of the application or protocol;
and the date on which the application was approved or the protocol
declared to be completed.

A brief description beginning on a new page of the significant
activities undertaken by the marketing applicant during the applicable
regulatory review period with respect to the approved product and the
significant dates applicable to such activities;

A statement beginning on a new page that in the opinion of the applicant
the patent is eligible for the extension and a statement as to the
length of extension claimed, including how the length of extension was
determined;

A statement that applicant acknowledges a duty to disclose to the Commissioner of Patents and
Trademarks and the Secretary of Health and Human Services or the
Secretary of Agriculture any information which is material to the
determination of entitlement to the extension sought (see Section 
1.765);

The prescribed fee for receiving and acting upon the application for
extension (see Section  1.20(j));

The name, address, and telephone number of the person to whom inquiries
and correspondence relating to the application for patent term extension
are to be directed;

A duplicate of the application papers, certified as such; and

An oath or declaration as set forth in paragraph (b) of this section.

Any oath or declaration submitted in compliance with paragraph (a) of
this section must be signed by the owner of record of the patent or its
agent, specifically identify the papers and the patent for which an
extension is sought and aver that the person signing the oath or
declaration:

Is the owner, an official of a corporate owner authorized to obligate
the corporation, or a patent attorney or agent authorized to practice
before the Patent and Trademark Office and who has general authority
from the owner to act on behalf of the owner in patent matters.

Has reviewed and understands the contents of the application being
submitted pursuant to this section;

Believes the patent is subject to extension pursuant to Section  1.710;

Believes an extension of the length claimed is justified under 35 U.S.C.
156 and the applicable regulations; and

Believes the patent for which the extension is being sought meets the
conditions for extension of the term of a patent as set forth in Section 
1.720.

If any application for extension of patent term submitted pursuant to
this section is held to be informal, applicant may seek to have that
holding reviewed by filing a petition with the required fee, as
necessary, pursuant to Section  1.181, Section l.182 or Section l.183,
as appropriate, within such time as may be set in the notice that the
application has been held to be informal, or if no time is set, within
one month of the date on which the application was held informal. The
time periods set forth herein are subject to the provisions of 37 CFR
1.136.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; para. (a)
amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para.
(a)(14), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]

---SECTION---1.741 Filing date of application.

The filing date of an application for extension of a patent term is the
date on which a complete application is received in the Patent and
Trademark Office or filed pursuant to the "Certificate of Mailing or
Transmission" procedures of 37 CFR 1.8 or "Express Mail" provisions of
37 CFR 1.10. A complete application shall include:

An identification of the approved product;

An identification of each Federal statute under which regulatory review
occurred;

An identification of the patent for which an extension is being sought;

An identification of each claim of the patent which claims the approved
product or a method of using or manufacturing the approved product;

Sufficient information to enable the Commissioner to determine under 35
U.S.C. 156 subsections (a) and (b) the eligibility of a patent for
extension and the rights that will be derived from the extension and
information to enable the Commissioner and the Secretary of Health and
Human Services or the Secretary of Agriculture to determine the length
of the regulatory review period; and

A brief description of the activities undertaken by the marketing
applicant during the applicable regulatory review period with respect to
the approved product and the significant dates applicable to such
activities.

If any application submitted pursuant to this section is held to be
incomplete, applicant may seek to have this holding reviewed under
Section  1.181.

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; para. (a)
amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a)
amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a)
correcting amendment, 61 FR 64027, Dec. 3, 1996]

---SECTION---1.750 Determination of eligibility for extension of patent
term.

A determination as to whether a patent is eligible for extension may be
made by the Commissioner solely on the basis of the representations
contained in the application for extension filed in compliance with
Section  1.740 or Section  1.790. This determination may be delegated to
appropriate Patent and Trademark Office officials and may be made at any
time before the certificate of extension is issued. The Commissioner or
other appropriate officials may require from applicant further
information or make such independent inquiries as desired before a final
determination is made on whether a patent is eligible for extension. In
an application for extension filed in compliance with Section  1.740, a
notice will be mailed to applicant containing the determination as to
the eligibility of the patent for extension and the period of time of
the extension, if any. This notice shall constitute the final
determination as to the eligibility and any period of extension of the
patent. A single request for reconsideration of a final determination
may be made if filed by the applicant within such time as may be set in
the notice of final determination or, if no time is set, within one
month from the date of the final determination. The time periods set
forth herein are subject to the provisions of Section  1.136.

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; revised, 60 FR
25615, May 12, 1995, effective July 11, 1995]

---SECTION---1.760 Interim extension of patent term under 35 U.S.C.
156(e)(2).

An applicant who has filed a formal application for extension in
compliance with Section  1.740 may request one or more interim
extensions for periods of up to one year each pending a final
determination on the application pursuant to Section  1.750. Any such
request should be filed at least three months prior to the expiration
date of the patent. The Commissioner may issue interim extensions,
without a request by the applicant, for periods of up to one year each
until a final determination is made. The patent owner or agent will be
notified when an interim extension is granted and notice of the
extension will be published in the Official Gazette of the Patent and
Trademark Office. The notice will be recorded in the official file of
the patent and will be considered as part of the original patent. In no
event will the interim extensions granted under this section be longer
than the maximum period of extension to which the applicant would be
eligible.

[Added, 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; heading
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]

---SECTION---1.765 Duty of disclosure in patent term extension
proceedings.

A duty of candor and good faith toward the Patent and Trademark Office
and the Secretary of Health and Human Services or the Secretary of
Agriculture rests on the patent owner or its agent, on each attorney or
agent who represents the patent owner and on every other individual who
is substantively involved on behalf of the patent owner in a patent term
extension proceeding. All such individuals who are aware, or become
aware, of material information adverse to a determination of entitlement
to the extension sought, which has not been previously made of record in
the patent term extension proceeding must bring such information to the
attention of the Office or the Secretary, as appropriate, in accordance
with paragraph (b) of this section, as soon as it is practical to do so
after the individual becomes aware of the information. Information is
material where there is a substantial likelihood that the Office or the
Secretary would consider it important in determinations to be made in
the patent term extension proceeding.

Disclosures pursuant to this section must be accompanied by a copy of
each written document which is being disclosed. The disclosure must be
made to the Office or the Secretary, as appropriate, unless the
disclosure is material to determinations to be made by both the Office
and the Secretary, in which case duplicate copies, certified as such,
must be filed in the Office and with the Secretary. Disclosures pursuant
to this section may be made to the Office or the Secretary, as
appropriate, through an attorney or agent having responsibility on
behalf of the patent owner or its agent for the patent term extension
proceeding or through a patent owner acting on his or her own behalf.
Disclosure to such an attorney, agent or patent owner shall satisfy the
duty of any other individual. Such an attorney, agent or patent owner
has no duty to transmit information which is not material to the
determination of entitlement to the extension sought.

No patent will be determined eligible for extension and no extension
will be issued if it is determined that fraud on the Office or the
Secretary was practiced or attempted or the duty of disclosure was
violated through bad faith or gross negligence in connection with the
patent term extension proceeding. If it is established by clear and
convincing evidence that any fraud was practiced or attempted on the
Office or the Secretary in connection with the patent term extension
proceeding or that there was any violation of the duty of disclosure
through bad faith or gross negligence in connection with the patent term
extension proceeding, a final determination will be made pursuant to
Section  1.750 that the patent is not eligible for extension.

The duty of disclosure pursuant to this section rests on the individuals
identified in paragraph (a) of this section and no submission on behalf
of third parties, in the form of protests or otherwise, will be
considered by the Office. Any such submissions by third parties to the
Office will be returned to the party making the submission, or otherwise
disposed of, without consideration by the Office.

[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 1987, para. (a)
amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a)
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]

---SECTION---1.770 Express withdrawal of application for extension of
patent term.

An application for extension of patent term may be expressly withdrawn
before a determination is made pursuant to Section &nbsp;1.750 by filing
in the Office, in duplicate, a written declaration of withdrawal signed
by the owner of record of the patent or its agent. An application may
not be expressly withdrawn after the date permitted for reply to the
final determination on the application. An express withdrawal pursuant
to this section is effective when acknowledged in writing by the Office.
The filing of an express withdrawal pursuant to this section and its
acceptance by the Office does not entitle applicant to a refund of the
filing fee (Section &nbsp;1.20(j)) or any portion thereof.

[Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987; 56 FR 65142,
Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---1.775 Calculation of patent term extension for a human
drug, antibiotic drug, or human biological product.

If a determination is made pursuant to Section  1.750 that a patent for
a human drug, antibiotic drug, or human biological product is eligible
for extension, the term shall be extended by the time as calculated in
days in the manner indicated by this section. The patent term extension
will run from the original expiration date of the patent or any earlier
date set by terminal disclaimer (Section  1.321).

The term of the patent for a human drug, antibiotic drug or human
biological product will be extended by the length of the regulatory
review period for the product as determined by the Secretary of Health
and Human Services, reduced as appropriate pursuant to paragraphs (d)(1)
through (d)(6) of this section.

The length of the regulatory review period for a human drug, antibiotic
drug or human biological product will be determined by the Secretary of
Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it is the sum
of --

The number of days in the period beginning on the date an exemption
under subsection (i) of section 505 or subsection (d) of section 507 of
the Federal Food, Drug, and Cosmetic Act became effective for the
approved product and ending on the date an application was initially
submitted for such product under those sections or under section 351 of
the Public Health Service Act; and

The number of days in the period beginning on the date the application
was initially submitted for the approved product under section 351 of
the Public Health Service Act, subsection (b) of section 505 or section
507 of the Federal Food, Drug, and Cosmetic Act and ending on the date
such application was approved under such section.

The term of the patent as extended for a human drug, antibiotic drug or
human biological product will be determined by-

Subtracting from the number of days determined by the Secretary of
Health and Human Services to be in the regulatory review period:

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section which were on and before the date on which the patent
issued;

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section during which it is determined under 35 U.S.C. 156(d)(2)(B)
by the Secretary of Health and Human Services that applicant did not act
with due diligence;

One-half the number of days remaining in the period defined by paragraph
(c)(1) of this section after that period is reduced in accordance with
para graphs (d)(1)(i) and (ii) of this section; half days will be
ignored for purposes of subtraction;

By adding the number of days determined in paragraph (d)(1) of this
section to the original term of the patent as shortened by any terminal
disclaimer;

By adding 14 years to the date of approval of the application under
section 351 of the Public Health Service Act, or subsection (b) of
section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;

By comparing the dates for the ends of the periods obtained pursuant to
paragraphs (d)(2) and (d)(3) of this section with each other and
selecting the earlier date;

If the original patent was issued after September 24, 1984,

By adding 5 years to the original expiration date of the patent or any
earlier date set by terminal disclaimer; and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(5)(i) of this section with each other and selecting the earlier
date;

If the original patent was issued before September 24, 1984, and

If no request was submitted for an exemption under subsection (i) of
section 505 or subsection (d) of section 507 of the Federal Food, Drug,
and Cosmetic Act before September 24, 1984, by-

Adding 5 years to the original expiration date of the patent or earlier
date set by terminal disclaimer; and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or

If a request was submitted for an exemption under subsection (i) of
section 505 or subsection (d) of section 507 of the Federal Food, Drug,
or Cosmetic Act before September 24, 1984 and the commercial marketing
or use of the product was not approved before September 24, 1984, by -

Adding 2 years to the original expiration date of the patent or earlier
date set by terminal disclaimer, and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
filing date.

[Added, 52 FR 9397, Mar. 24 1987, effective May 26, 1987]

---SECTION---1.776 Calculation of patent term extension for a food
additive or color additive.

If a determination is made pursuant to Section  1.750 that a patent for
a food additive or color additive is eligible for extension, the term
shall be extended by the time as calculated in days in the manner
indicated by this section. The patent term extension will run from the
original expiration date of the patent or earlier date set by terminal
disclaimer (Section  1.321).

The term of the patent for a food additive or color additive will be
extended by the length of the regulatory review period for the product
as determined by the Secretary of Health and Human Services, reduced as
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this
section.

The length of the regulatory review period for a food additive or color
additive will be determined by the Secretary of Health and Human
Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of -

The number of days in the period beginning on the date a major health or
environmental effects test on the additive was initiated and ending on
the date a petition was initially submitted with respect to the approved
product under the Federal Food, Drug, and Cosmetic Act requesting the
issuance of a regulation for use of the product; and

The number of days in the period beginning on the date a petition was
initially submitted with respect to the approved product under the
Federal Food, Drug and Cosmetic Act requesting the issuance of a
regulation for use of the product, and ending on the date such
regulation became effective or, if objections were filed to such
regulation, ending on the date such objections were resolved and
commercial marketing was permitted or, if commercial marketing was
permitted and later revoked pending further proceedings as a result of
such objections, ending on the date such proceedings were finally
resolved and commercial marketing was permitted.

The term of the patent as extended for a food additive or color additive
will be determined by

Subtracting from the number of days determined by the Secretary of
Health and Human Services to be in the regulatory review period:

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section which were on and before the date on which the patent
issued;

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section during which it is determined under 35 U.S.C. 156(d)(2)(B)
by the Secretary of Health and Human Services that applicant did not act
with due diligence;

The number of days equal to one-half the number of days remaining in the
period defined by paragraph (c)(1) of this section after that period is
reduced in accordance with paragraphs (d)(1) (i) and (ii) of this
section; half days will be ignored for purposes of subtraction;

By adding the number of days determined in paragraph (d)(1) of this
section to the original term of the patent as shortened by any terminal
disclaimer;

By adding 14 years to the date a regulation for use of the product
became effective or, if objections were filed to such regulation, to the
date such objections were resolved and commercial marketing was
permitted or, if commercial marketing was permitted and later revoked
pending further proceedings as a result of such objections, to the date
such proceedings were finally resolved and commercial marketing was
permitted;

By comparing the dates for the ends of the periods obtained pursuant to
paragraphs (d)(2) and (d)(3) of this section with each other and
selecting the earlier date;

If the original patent was issued after September 24, 1984,

By adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(5)(i) of this section with each other and selecting the earlier
date;

If the original patent was issued before September 24, 1984, and

If no major health or environmental effects test was initiated and no
petition for a regulation or application for registration was submitted
before September 24, 1984, by

Adding 5 years to the original expiration date of the patent or earlier
date set by terminal disclaimer, and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or

If a major health or environmental effects test was initiated or a
petition for a regulation or application for registration was submitted
by September 24, 1984, and the commercial marketing or use of the
product was not approved before September 24, 1984, by --

Adding 2 years to the original expiration date of the patent or earlier
date set by terminal disclaimer, and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.

[Added, 52 FR 9397, Mar. 24, 1987, effective May 26, 1987]

---SECTION---1.777 Calculation of patent term extension for a medical
device.

If a determination is made pursuant to Section  1.750 that a patent for
a medical device is eligible for extension, the term shall be extended
by the time as calculated in days in the manner indicated by this
section. The patent term extension will run from the original expiration
date of the patent or earlier date as set by terminal disclaimer
(Section  1.321).

The term of the patent for a medical device will be extended by the
length of the regulatory review period for the product as determined by
the Secretary of Health and Human Services, reduced as appropriate
pursuant to paragraphs (d)(1) through (d)(6) of this section.

The length of the regulatory review period for a medical device will be
determined by the Secretary of Health and Human Services. Under 35
U.S.C. 156(g)(3)(B), it is the sum of

The number of days in the period beginning on the date a clinical
investigation on humans involving the device was begun and ending on the
date an application was initially submitted with respect to the device
under section 515 of the Federal Food, Drug, and Cosmetic Act; and

The number of days in the period beginning on the date the application
was initially submitted with respect to the device under section 515 of
the Federal Food, Drug, and Cosmetic Act, and ending on the date such
application was approved under such Act or the period beginning on the
date a notice of completion of a product development protocol was
initially submitted under section 515(f)(5) of the Act and ending on the
date the protocol was declared completed under section 515(f)(6) of the
Act.

The term of the patent as extended for a medical device will be
determined by --

Subtracting from the number of days determined by the Secretary of
Health and Human Services to be in the regulatory review period pursuant
to paragraph (c) of this section:

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section which were on and before the date on which the patent
issued;

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section during which it is determined under 35 U.S.C. 156(d)(2)(B)
by the Secretary of Health and Human Services that applicant did not act
with due diligence;

One-half the number of days remaining in the period defined by paragraph
(c)(1) of this section after that period is reduced in accordance with
paragraphs (d)(1) (i) and (ii) of this section; half days will be
ignored for purposes of subtraction;

By adding the number of days determined in paragraph (d)(1) of this
section to the original term of the patent as shortened by any terminal
disclaimer;

By adding 14 years to the date of approval of the application under
section 515 of the Federal Food, Drug, and Cosmetic Act or the date a
product development protocol was declared completed under section
515(f)(6) of the Act;

By comparing the dates for the ends of the periods obtained pursuant to
paragraphs (d)(2) and (d)(3) of this section with each other and
selecting the earlier date;

If the original patent was issued after September 24, 1984,

By adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(5)(i) of this section with each other and selecting the earlier
date;

If the original patent was issued before September 24, 1984, and

If no clinical investigation on humans involving the device was begun or
no product development protocol was submitted under section 515(f)(5) of
the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by
--

Adding 5 years to the original expiration date of the patent or earlier
date set by terminal disclaimer and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or

If a clinical investigation on humans involving the device was begun or
a product development protocol was submitted under section 515(f)(5) of
the Federal Food, Drug, and Cosmetic Act before September 24, 1984 and
the commercial marketing or use of the product was not approved before
September 24, 1984, by

Adding 2 years to the original expiration date of the patent or earlier
date set by terminal disclaimer, and

By comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.

[Added, 52 FR 9398, Mar. 24 1987, effective May 26, 1987]

---SECTION---1.778 Calculation of patent term extension for an animal
drug product.

If a determination is made pursuant to Section  1.750 that a patent for
an animal drug is eligible for extension, the term shall be extended by
the time as calculated in days in the manner indicated by this section.
The patent term extension will run from the original expiration date of
the patent or any earlier date set by terminal disclaimer (Section 
1.321).

The term of the patent for an animal drug will be extended by the length
of the regulatory review period for the drug as determined by the
Secretary of Health and Human Services, reduced as appropriate pursuant
to paragraphs (d)(1) through (d)(6) of this section.

The length of the regulatory review period for an animal drug will be
determined by the Secretary of Health and Human Services. Under 35
U.S.C. 156(g)(4)(B), it is the sum of --

The number of days in the period beginning on the earlier of the date a
major health or environmental effects test on the drug was initiated or
the date an exemption under subsection (j) of section 512 of the Federal
Food, Drug, and Cosmetic Act became effective for the approved animal
drug and ending on the date an application was initially submitted for
such animal drug under section 512 of the Federal Food, Drug, and
Cosmetic Act; and

The number of days in the period beginning on the date the application
was initially submitted for the approved animal drug under subsection
(b) of section 512 of the Federal Food, Drug, and Cosmetic Act and
ending on the date such application was approved under such section.

The term of the patent as extended for an animal drug will be determined
by --

Subtracting from the number of days determined by the Secretary of
Health and Human Services to be in the regulatory review period:

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section that were on and before the date on which the patent
issued;

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section during which it is determined under 35 U.S.C. 156(d)(2)(B)
by the Secretary of Health and Human Services that applicant did not act
with due diligence;

One-half the number of days remaining in the period defined by paragraph
(c)(1) of this section after that period is reduced in accordance with
paragraphs (d)(1)(i) and (ii) of this section; half days will be ignored
for purposes of subtraction;

By adding the number of days determined in paragraph (d)(1) of this
section to the original term of the patent as shortened by any terminal
disclaimer;

By adding 14 years to the date of approval of the application under
section 512 of the Federal Food, Drug, and Cosmetic Act;

By comparing the dates for the ends of the periods obtained pursuant to
paragraphs (d)(2) and (d)(3) of this section with each other and
selecting the earlier date;

If the original patent was issued after November 16, 1988, by -

Adding 5 years to the original expiration date of the patent or any
earlier date set by terminal disclaimer; and

Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i)
of this section with each other and selecting the earlier date;

If the original patent was issued before November 16, 1988, and

If no major health or environmental effects test on the drug was
initiated and no request was submitted for an exemption under subsection
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before
November 16, 1988, by -

Adding 5 years to the original expiration date of the patent or earlier
date set by terminal disclaimer; and

Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or

If a major health or environmental effects test was initiated or a
request for an exemption under subsection (j) of section 512 of the
Federal Food, Drug, and Cosmetic Act was submitted before November 16,
1988, and the application for commercial marketing or use of the animal
drug was not approved before November 16, 1988, by -

Adding 3 years to the original expiration date of the patent or earlier
date set by terminal disclaimer, and

Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.

[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]

---SECTION---1.779 Calculation of patent term extension for a veterinary
biological product.

If a determination is made pursuant to Section  1.750 that a patent for
a veterinary biological product is eligible for extension, the term
shall be extended by the time as calculated in days in the manner
indicated by this section. The patent term extension will run from the
original expiration date of the patent or any earlier date set by
terminal disclaimer (Section  1.321).

The term of the patent for a veterinary biological product will be
extended by the length of the regulatory review period for the product
as determined by the Secretary of Agriculture, reduced as appropriate
pursuant to paragraphs (d)(1) through (d)(6) of this section.

The length of the regulatory review period for a veterinary biological
product will be determined by the Secretary of Agriculture. Under 35
U.S.C. 156(g)(5)(B), it is the sum of -

The number of days in the period beginning on the date the authority to
prepare an experimental biological product under the Virus-Serum-Toxin
Act became effective and ending on the date an application for a license
was submitted under the Virus-Serum-Toxin Act; and

The number of days in the period beginning on the date an application
for a license was initially submitted for approval under the
Virus-Serum-Toxin Act and ending on the date such license was issued.

The term of the patent as extended for a veterinary biological product
will be determined by -

Subtracting from the number of days determined by the Secretary of
Agriculture to be in the regulatory review period:

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section that were on and before the date on which the patent
issued;

The number of days in the periods of paragraphs (c)(1) and (c)(2) of
this section during which it is determined under 35 U.S.C. 156(d)(2)(B)
by the Secretary of Agriculture that applicant did not act with due
diligence;

One-half the number of days remaining in the period defined by paragraph
(c)(1) of this section after that period is reduced in accordance with
paragraphs (d)(1)(i) and (ii) of this section; half days will be ignored
for purposes of subtraction;

By adding the number of days determined in paragraph (d)(1) of this
section to the original term of the patent as shortened by any terminal
disclaimer;

By adding 14 years to the date of the issuance of a license under the
Virus-Serum-Toxin Act;

By comparing the dates for the ends of the periods obtained pursuant to
paragraphs (d)(2) and (d)(3) of this section with each other and
selecting the earlier date;

If the original patent was issued after November 16, 1988, by --

Adding 5 years to the original expiration date of the patent or any
earlier date set by terminal disclaimer; and

Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i)
of this section with each other and selecting the earlier date;

If the original patent was issued before November 16, 1988, and

If no request for the authority to prepare an experimental biological
product under the Virus-Serum-Toxin Act was submitted before November
16, 1988, by --

Adding 5 years to the original expiration date of the patent or earlier
date set by terminal disclaimer; and

Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or

If a request for the authority to prepare an experimental biological
product under the Virus-Serum-Toxin Act was submitted before November
16, 1988, and the commercial marketing or use of the product was not
approved before November 16, 1988, by --

Adding 3 years to the original expiration date of the patent or earlier
date set by terminal disclaimer; and

Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.

[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]

---SECTION---1.780 Certificate of extension of patent term.

If a determination is made pursuant to Section  1.750 that a patent is
eligible for extension and that the term of the patent is to be
extended, a certificate of extension, under seal, or certificate of
interim extension under 35 U.S.C. 156(d)(5) will be issued to the
applicant for the extension of the patent term. Such certificate will be
recorded in the official file of the patent and will be considered as
part of the original patent. Notification of the issuance of the
certificate of extension will be published in the Official Gazette of
the Patent and Trademark Office. Notification of the issuance of the
certificate of interim extension under 35 U.S.C. 156(d)(5), including
the identity of the product currently under regulatory review, will be
published in the Official Gazette of the Patent and Trademark Office and
in the Federal Register. No certificate of extension will be issued if
the term of the patent cannot be extended, even though the patent is
otherwise determined to be eligible for extension. In such situations
the final determination made pursuant to Section  1.750 will indicate
that no certificate will issue.

[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (a)
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]

---SECTION---1.785 Multiple applications for extension of term of the
same patent or of different patents for the same regulatory review
period for a product.

Only one patent may be extended for a regulatory review period for any
product Section  1.720 (h)). If more than one application for extension
of the same patent is filed, the certificate of extension of patent
term, if appropriate, will be issued based upon the first filed
application for extension.

If more than one application for extension is filed by a single
applicant which seeks the extension of the term of two or more patents
based upon the same regulatory review period, and the patents are
otherwise eligible for extension pursuant to the requirements of this
subpart, in the absence of an election by the applicant, the certificate
of extension of patent term, if appropriate, will be issued upon the
application for extension of the patent term having the earliest date of
issuance of those patents for which extension is sought.

If an application for extension is filed which seeks the extension of
the term of a patent based upon the same regulatory review period as
that relied upon in one or more applications for extension pursuant to
the requirements of this subpart, the certificate of extension of patent
term will be issued on the application only if the patent owner or its
agent is the holder of the regulatory approval granted with respect to
the regulatory review period.

An application for extension shall be considered complete and formal
regardless of whether it contains the identification of the holder of
the regulatory approval granted with respect to the regulatory review
period. When an application contains such information, or is amended to
contain such information, it will be considered in determining whether
an application is eligible for an extension under this section. A
request may be made of any applicant to supply such information within a
non-extendable period of not less than one month whenever multiple
applications for extension of more than one patent are received and rely
upon the same regulatory review period. Failure to provide such
information within the period for reply set shall be regarded as
conclusively establishing that the applicant is not the holder of the
regulatory approval.

Determinations made under this section shall be included in the notice
of final determination of eligibility for extension of the patent term
pursuant to Section  1.750 and shall be regarded as part of that
determination.

[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (b)
amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; revised,
60 FR 25615, May 12, 1995, effective July 11, 1995; para. (d) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.790 Interim extension of patent term under 35 U.S.C.
156(d)(5)

An owner of record of a patent or its agent who reasonably expects that
the applicable regulatory review period described in paragraph
(1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of
subsection (g) that began for a product that is the subject of such
patent may extend beyond the expiration of the patent term in effect may
submit one or more applications for interim extensions for periods of up
to one year each. The initial application for interim extension must be
filed during the period beginning 6 months and ending 15 days before the
patent term is due to expire. Each subsequent application for interim
extension must be filed during the period beginning 60 days before and
ending 30 days before the expiration of the preceding interim extension.
In no event will the interim extensions granted under this section be
longer than the maximum period of extension to which the applicant would
be entitled under 35 U.S.C. 156(c).

A complete application for interim extension under this section shall
include all of the information required for a formal application under
Section  1.740 and a complete application under Section  1.741. Sections
(a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of Section  1.740 and
Section  1.741 shall be read in the context of a product currently
undergoing regulatory review. Sections (a)(3) and (a)(5) of Section 
1.740 are not applicable to an application for interim extension under
this section.

The content of each subsequent interim extension application may be
limited to a request for a subsequent interim extension along with a
statement that the regulatory review period has not been completed along
with any materials or information required under Section Section  1.740
and 1.741 that are not present in the preceding interim extension
application.

[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]

---SECTION---1.791 Termination of interim extension granted prior to
regulatory approval of a product for commercial marketing or use.

Any interim extension granted under 35 U.S.C. 156(d)(5) terminates at
the end of the 60-day period beginning on the date on which the product
involved receives permission for commercial marketing or use. If within
that 60-day period the patent owner or its agent files an application
for extension under Section Section  1.740 and 1.741 including any
additional information required under 35 U.S.C. 156(d)(1) not contained
in the application for interim extension, the patent shall be further
extended in accordance with the provisions of 35 U.S.C. 156.

[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]

---SECTION---G Biotechnology Invention Disclosures

---SECTION---DEPOSIT OF BIOLOGICAL MATERIAL

---SECTION---1.801 Biological material.

For the purposes of these regulations pertaining to the deposit of
biological material for purposes of patents for inventions under 35
U.S.C. 101, the term biological material shall include material that is
capable of self-replication either directly or indirectly.
Representative examples include bacteria, fungi including yeast, algae,
protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses,
plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles
and other non-living material existing in and reproducible from a living
cell may be deposited by deposit of the host cell capable of reproducing
the non-living material.

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.802 Need or opportunity to make a deposit.

Where an invention is, or relies on, a biological material, the
disclosure may include reference to a deposit of such biological
material.

Biological material need not be deposited unless access to such material
is necessary for the satisfaction of the statutory requirements for
patentability under 35 U.S.C. 112. If a deposit is necessary, it shall
be acceptable if made in accordance with these regulations. Biological
material need not be deposited, inter alia, if it is known and readily
available to the public or can be made or isolated without undue
experimentation. Once deposited in a depository complying with these
regulations, a biological material will be considered to be readily
available even though some requirement of law or regulation of the
United States or of the country in which the depository institution is
located permits access to the material only under conditions imposed for
safety, public health or similar reasons.

The reference to a biological material in a specification disclosure or
the actual deposit of such material by an applicant or patent owner does
not create any presumption that such material is necessary to satisfy 35
U.S.C. 112 or that deposit in accordance with these regulations is or
was required.

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.803 Acceptable depository.

A deposit shall be recognized for the purposes of these regulations if
made in

Any International Depositary Authority (IDA) as established under the
Budapest Treaty on the International Recognition of the Deposit of
Micro-organisms for the Purposes of Patent Procedure, or

Any other depository recognized to be suitable by the Office.
Suitability will be determined by the Commissioner on the basis of the
administrative and technical competence, and agreement of the depository
to comply with the terms and conditions applicable to deposits for
patent purposes. The Commissioner may seek the advice of impartial
consultants on the suitability of a depository. The depository must:

Have a continuous existence;

Exist independent of the control of the depositor;

Possess the staff and facilities sufficient to examine the viability of
a deposit and store the deposit in a manner which ensures that it is
kept viable and uncontaminated;

Provide for sufficient safety measures to minimize the risk of losing
biological material deposited with it;

Be impartial and objective;

Furnish samples of the deposited material in an expeditious and proper
manner; and

Promptly notify depositors of its inability to furnish samples, and the
reasons why.

A depository seeking status under paragraph (a)(2) of this section must
direct a communication to the Commissioner which shall:

Indicate the name and address of the depository to which the
communication relates;

Contain detailed information as to the capacity of the depository to
comply with the requirements of paragraph (a)(2) of this section,
including information on its legal status, scientific standing, staff,
and facilities;

Indicate that the depository intends to be available, for the purposes
of deposit, to any depositor under these same conditions;

Where the depository intends to accept for deposit only certain kinds of
biological material, specify such kinds;

Indicate the amount of any fees that the depository will, upon acquiring
the status of suitable depository under paragraph (a)(2) of this
section, charge for storage, viability statements and furnishings of
samples of the deposit.

A depository having status under paragraph (a)(2) of this section
limited to certain kinds of biological material may extend such status
to additional kinds of biological material by directing a communication
to the Commissioner in accordance with paragraph (b) of this section. If
a previous communication under paragraph (b) of this section is of
record, items in common with the previous communication may be
incorporated by reference.

Once a depository is recognized to be suitable by the Commissioner or
has defaulted or discontinued its performance under this section, notice
thereof will be published in the Official Gazette of the Patent and
Trademark Office.

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.804 Time of making an original deposit.

Whenever a biological material is specifically identified in an
application for patent as filed, an original deposit thereof may be made
at any time before filing the application for patent or, subject to
Section  1.809, during pendency of the application for patent.

When the original deposit is made after the effective filing date of an
application for patent, the applicant must promptly submit a statement
from a person in a position to corroborate the fact, stating that the
biological material which is deposited is a biological material
specifically identified in the application as filed.

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (b)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.805 Replacement or supplement of deposit.

A depositor, after receiving notice during the pendency of an
application for patent, application for reissue patent or reexamination
proceeding, that the depository possessing a deposit either cannot
furnish samples thereof or can furnish samples thereof but the deposit
has become contaminated or has lost its capability to function as
described in the specification, shall notify the Office in writing, in
each application for patent or patent affected. In such a case, or where
the Office otherwise learns, during the pendency of an application for
patent, application for reissue patent or reexamination proceeding, that
the depository possessing a deposit either cannot furnish samples
thereof or can furnish samples thereof but the deposit has become
contaminated or has lost its capability to function as described in the
specification, the need for making a replacement or supplemental deposit
will be governed by the same considerations governing the need for
making an original deposit under the provisions set forth in Section 
1.802(b). A replacement or supplemental deposit made during the pendency
of an application for patent shall not be accepted unless it meets the
requirements for making an original deposit under these regulations,
including the requirement set forth under Section  1.804(b). A
replacement or supplemental deposit made in connection with a patent,
whether or not made during the pendency of an application for reissue
patent or a reexamination proceeding or both, shall not be accepted
unless a certificate of correction under Section  1.323 is requested by
the patent owner which meets the terms of paragraphs (b) and (c) of this
section.

A request for certificate of correction under this section shall not be
granted unless the certificate identifies:

The accession number for the replacement or supplemental deposit;

The date of the deposit; and

The name and address of the depository.

A request for a certificate of correction under this section shall not
be granted unless the request is made promptly after the replacement or
supplemental deposit has been made and the request:

Includes a statement of the reason for making the replacement or
supplemental deposit;

Includes a statement from a person in a position to corroborate the
fact, and stating that the replacement or supplemental deposit is of a
biological material which is identical to that originally deposited;

Includes a showing that the patent owner acted diligently --

In the case of a replacement deposit, in making the deposit after
receiving notice that samples could no longer be furnished from an
earlier deposit; or

In the case of a supplemental deposit, in making the deposit after
receiving notice that the earlier deposit had become contaminated or had
lost its capability to function as described in the specification;

Includes a statement that the term of the replacement or supplemental
deposit expires no earlier than the term of the deposit being replaced
or supplemented; and

Otherwise establishes compliance with these regulations.

A depositor's failure to replace a deposit, or in the case of a patent,
to diligently replace a deposit and promptly thereafter request a
certificate of correction which meets the terms of paragraphs (b) and
(c) of this section, after being notified that the depository possessing
the deposit cannot furnish samples thereof, shall cause the application
or patent involved to be treated in any Office proceeding as if no
deposit were made.

In the event a deposit is replaced according to these regulations, the
Office will apply a rebuttable presumption of identity between the
original and the replacement deposit where a patent making reference to
the deposit is relied upon during any Office proceeding.

A replacement or supplemental deposit made during the pendency of an
application for patent may be made for any reason.

In no case is a replacement or supplemental deposit of a biological
material necessary where the biological material, in accordance with
Section  1.802(b), need not be deposited.

No replacement deposit of a biological material is necessary where a
depository can furnish samples thereof but the depository for national
security, health or environmental safety reasons is unable to provide
samples to requesters outside of the jurisdiction where the depository
is located.

The Office will not recognize in any Office proceeding a replacement
deposit of a biological material made by a patent owner where the
depository could furnish samples of the deposit being replaced.

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (c)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---1.806 Term of deposit.

A deposit made before or during pendency of an application for patent
shall be made for a term of at least thirty (30) years and at least five
(5) years after the most recent request for the furnishing of a sample
of the deposit was received by the depository. In any case, samples must
be stored under agreements that would make them available beyond the
enforceable life of the patent for which the deposit was made.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.807 Viability of deposit.

A deposit of biological material that is capable of self-replication
either directly or indirectly must be viable at the time of deposit and
during the term of deposit. Viability may be tested by the depository.
The test must conclude only that the deposited material is capable of
reproduction. No evidence is necessarily required regarding the ability
of the deposited material to perform any function described in the
patent application.

A viability statement for each deposit of a biological material defined
in paragraph (a) of this section not made under the Budapest Treaty on
the International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure must be filed in the application and must
contain:

The name and address of the depository;

The name and address of the depositor;

The date of deposit;

The identity of the deposit and the accession number given by the
depository;

The date of the viability test;

The procedures used to obtain a sample if the test is not done by the
depository; and

A statement that the deposit is capable of reproduction.

If a viability test indicates that the deposit is not viable upon
receipt, or the examiner cannot, for scientific or other valid reasons,
accept the statement of viability received from the applicant, the
examiner shall proceed as if no deposit has been made. The examiner will
accept the conclusion set forth in a viability statement issued by a
depository recognized under Section  1.803(a).

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.808 Furnishing of samples.

A deposit must be made under conditions that assure that:

Access to the deposit will be available during pendency of the patent
application making reference to the deposit to one determined by the
Commissioner to be entitled thereto under Section  1.14 and 35 U.S.C.
122, and

Subject to paragraph (b) of this section, all restrictions imposed by
the depositor on the availability to the public of the deposited
material will be irrevocably removed upon the granting of the patent.

The depositor may contract with the depository to require that samples
of a deposited biological material shall be furnished only if a request
for a sample, during the term of the patent:

Is in writing or other tangible form and dated;

Contains the name and address of the requesting party and the accession
number of the deposit; and

Is communicated in writing by the depository to the depositor along with
the date on which the sample was furnished and the name and address of
the party to whom the sample was furnished.

Upon request made to the Office, the Office will certify whether a
deposit has been stated to have been made under conditions which make it
available to the public as of the issue date of the patent grant
provided the request contains:

The name and address of the depository;

The accession number given to the deposit;

The patent number and issue date of the patent referring to the deposit;
and

The name and address of the requesting party.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---1.809 Examination procedures.

The examiner shall determine pursuant to Section  1.104 in each
application for patent, application for reissue patent or reexamination
proceeding if a deposit is needed, and if needed, if a deposit actually
made is acceptable for patent purposes. If a deposit is needed and has
not been made or replaced or supplemented in accordance with these
regulations, the examiner, where appropriate, shall reject the affected
claims under the appropriate provision of 35 U.S.C. 112, explaining why
a deposit is needed and/or why a deposit actually made cannot be
accepted.

The applicant for patent or patent owner shall respond to a rejection
under paragraph (a) of this section by --

In the case of an applicant for patent, making an acceptable original or
replacement or supplemental deposit or assuring the Office in writing
that an acceptable deposit will be made on or before the date of payment
of the issue fee, or, in the case of a patent owner, requesting a
certificate of correction of the patent which meets the terms of
paragraphs (b) and (c) of Section  1.805, or

Arguing why a deposit is not needed under the circumstances of the
application or patent considered and/or why a deposit actually made
should be accepted. Other replies to the examiner's action shall be
considered nonresponsive. The rejection will be repeated until either
paragraph (b)(1) of this section is satisfied or the examiner is
convinced that a deposit is not needed.

If an application for patent is otherwise in condition for allowance
except for a needed deposit and the Office has received a written
assurance that an acceptable deposit will be made on or before payment
of the issue fee, the Office will mail to the applicant a Notice of
Allowance and Issue Fee Due together with a requirement that the needed
deposit be made within three months. The period for satisfying this
requirement is extendable under Section  1.136. Failure to make the
needed deposit in accordance with this requirement will result in
abandonment of the application for failure to prosecute.

For each deposit made pursuant to these regulations, the specification
shall contain:

The accession number for the deposit;

The date of the deposit;

A description of the deposited biological material sufficient to
specifically identify it and to permit examination; and

The name and address of the depository.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]

---SECTION---APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO
ACID SEQUENCES

---SECTION---1.821 Nucleotide and/or amino acid sequence disclosures in
patent applications.

Nucleotide and/or amino acid sequences as used in Section Section  1.821
through 1.825 are interpreted to mean an unbranched sequence of four or
more amino acids or an unbranched sequence of ten or more nucleotides.
Branched sequences are specifically excluded from this definition.
Sequences with fewer than four specifically defined nucleotides or amino
acids are specifically excluded from this section. "Specifically
defined" means those amino acids other than "Xaa" and those nucleotide
bases other than "n" defined in accordance with the World Intellectual
Property Organization (WIPO) Handbook on Industrial Property Information
and Documentation, Standard ST.25: Standard for the Presentation of
Nucleotide and Amino Acid Sequence Listings in Patent Applications
(1998), including Tables 1 through 6 in Appendix 2, herein incorporated
by reference. (Hereinafter "WIPO Standard ST.25 (1998)''). This
incorporation by reference was approved by the Director of the Federal
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of
WIPO Standard ST.25 (1998) may be obtained from the World Intellectual
Property Organization; 34 chemin des Colombettes; 1211 Geneva 20
Switzerland. Copies of ST.25 may be inspected at the Patent Search Room;
Crystal Plaza 3, Lobby Level; 2021 South Clark Place; Arlington, VA
22202. Copies may also be inspected at the Office of the Federal
Register, 800 North Capitol Street, NW, Suite 700, Washington, DC.
Nucleotides and amino acids are further defined as follows:

Nucleotides: Nucleotides are intended to embrace only those nucleotides
that can be represented using the symbols set forth in WIPO Standard
ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., methylated
bases, may be described as set forth in WIPO Standard ST.25 (1998),
Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide
sequence.

Amino acids: Amino acids are those L-amino acids commonly found in
naturally occurring proteins and are listed in WIPO Standard ST.25
(1998), Appendix 2, Table 3. Those amino acid sequences containing
D-amino acids are not intended to be embraced by this definition. Any
amino acid sequence that contains post-translationally modified amino
acids may be described as the amino acid sequence that is initially
translated using the symbols shown in WIPO Standard ST.25 (1998),
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or
glycosylations, being described as set forth in WIPO Standard ST.25
(1998), Appendix 2, Table 4, but these modifications shall not be shown
explicitly in the amino acid sequence. Any peptide or protein that can
be expressed as a sequence using the symbols in WIPO Standard ST.25
(1998), Appendix 2, Table 3 in conjunction with a description in the
Feature section to describe, for example, modified linkages, cross links
and end caps, non-peptidyl bonds, etc., is embraced by this definition.

Patent applications which contain disclosures of nucleotide and/or amino
acid sequences, in accordance with the definition in paragraph (a) of
this section, shall, with regard to the manner in which the nucleotide
and/or amino acid sequences are presented and described, conform
exclusively to the requirements of Section Section  1.821 through 1.825.

Patent applications which contain disclosures of nucleotide and/or amino
acid sequences must contain, as a separate part of the disclosure, a
paper copy disclosing the nucleotide and/or amino acid sequences and
associated information using the symbols and format in accordance with
the requirements of Section Section  1.822 and 1.823. This paper copy is
hereinafter referred to as the "Sequence Listing." Each sequence
disclosed must appear separately in the "Sequence Listing." Each
sequence set forth in the "Sequence Listing" shall be assigned a
separate sequence identifier. The sequence identifiers shall begin with
1 and increase sequentially by integers. If no sequence is present for a
sequence identifier, the code "000" shall be used in place of the
sequence. The response for the numeric identifier <<160> shall include
the total number of SEQ ID NOs, whether followed by a sequence or by the
code "000."

Where the description or claims of a patent application discuss a
sequence that is set forth in the "Sequence Listing" in accordance with
paragraph (c) of this section, reference must be made to the sequence by
use of the sequence identifier, preceded by "SEQ ID NO:" in the text of
the description or claims, even if the sequence is also embedded in the
text of the description or claims of the patent application.

A copy of the "Sequence Listing" referred to in paragraph (c) of this
section must also be submitted in computer readable form in accordance
with the requirements of Section  1.824. The computer readable form is a
copy of the "Sequence Listing" and will not necessarily be retained as a
part of the patent application file. If the computer readable form of a
new application is to be identical with the computer readable form of
another application of the applicant on file in the Patent and Trademark
Office, reference may be made to the other application and computer
readable form in lieu of filing a duplicate computer readable form in
the new application if the computer readable form in the other
application was compliant with all of the requirements of these rules.
The new application shall be accompanied by a letter making such
reference to the other application and computer readable form, both of
which shall be completely identified. In the new application, applicant
must also request the use of the compliant computer readable "Sequence
Listing" that is already on file for the other application and must
state that the paper copy of the "Sequence Listing" in the new
application is identical to the computer readable copy filed for the
other application.

In addition to the paper copy required by paragraph (c) of this section
and the computer readable form required by paragraph (e) of this
section, a statement that the content of the paper and computer readable
copies are the same must be submitted with the computer readable form,
e.g., a statement that "the information recorded in computer readable
form is identical to the written sequence listing."

If any of the requirements of paragraphs (b) through (f) of this section
are not satisfied at the time of filing under 35 U.S.C. 111(a) or at the
time of entering the national stage under 35 U.S.C. 371, applicant will
be notified and given a period of time within which to comply with such
requirements in order to prevent abandonment of the application. Any
submission in reply to a requirement under this paragraph must be
accompanied by a statement that the submission includes no new matter.

If any of the requirements of paragraphs (b) through (f) of this section
are not satisfied at the time of filing an international application
under the Patent Cooperation Treaty (PCT), which application is to be
searched by the United States International Searching Authority or
examined by the United States International Preliminary Examining
Authority, applicant will be sent a notice necessitating compliance with
the requirements within a prescribed time period. Any submission in
reply to a requirement under this paragraph must be accompanied by a
statement that the submission does not include matter which goes beyond
the disclosure in the international application as filed. If applicant
fails to timely provide the required computer readable form, the United
States International Searching Authority shall search only to the extent
that a meaningful search can be performed without the computer readable
form and the United States International Preliminary Examining Authority
shall examine only to the extent that a meaningful examination can be
performed without the computer readable form.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; para. (h)
amended, 58 FR 9335, Jan. 14, 1993, effective May 1, 1993; revised, 63
FR 29620, June 1, 1998, effective July 1, 1998]

---SECTION---1.822 Symbols and format to be used for nucleotide and/or
amino acid sequence data.

The symbols and format to be used for nucleotide and/or amino acid
sequence data shall conform to the requirements of paragraphs (b)
through (e) of this section.

The code for representing the nucleotide and/or amino acid sequence
characters shall conform to the code set forth in the tables in WIPO
Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation by
reference was approved by the Director of the Federal Register in
accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25 may
be obtained from the World Intellectual Property Organization; 34 chemin
des Colombettes; 1211 Geneva 20 Switzerland. Copies of ST.25 may be
inspected at the Patent Search Room; Crystal Plaza 3, Lobby Level; 2021
South Clark Place; Arlington, VA 22202. Copies may also be inspected at
the Office of the Federal Register, 800 North Capitol Street, NW, Suite
700, Washington, DC. No code other than that specified in these sections
shall be used in nucleotide and amino acid sequences. A modified base or
modified or unusual amino acid may be presented in a given sequence as
the corresponding unmodified base or amino acid if the modified base or
modified or unusual amino acid is one of those listed in WIPO Standard
ST.25 (1998), Appendix 2, Tables 2 and 4, and the modification is also
set forth in the Feature section. Otherwise, each occurrence of a base
or amino acid not appearing in WIPO Standard ST.25 (1998), Appendix 2,
Tables 1 and 3, shall be listed in a given sequence as "n" or "Xaa,"
respectively, with further information, as appropriate, given in the
Feature section, preferably by including one or more feature keys listed
in WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6.

Format representation of nucleotides. (1) A nucleotide sequence shall be
listed using the lower-case letter for representing the one-letter code
for the nucleotide bases set forth in WIPO Standard ST.25 (1998),
Appendix 2, Table 1.

The bases in a nucleotide sequence (including introns) shall be listed
in groups of 10 bases except in the coding parts of the sequence.
Leftover bases, fewer than 10 in number, at the end of noncoding parts
of a sequence shall be grouped together and separated from adjacent
groups of 10 or 3 bases by a space.

The bases in the coding parts of a nucleotide sequence shall be listed
as triplets (codons). The amino acids corresponding to the codons in the
coding parts of a nucleotide sequence shall be typed immediately below
the corresponding codons. Where a codon spans an intron, the amino acid
symbolshall be typed below the portion of the codon containing two
nucleotides.

A nucleotide sequence shall be listed with a maximum of 16 codons or 60
bases per line, with a space provided between each codon or group of 10
bases.

A nucleotide sequence shall be presented, only by a single strand, in
the 5 to 3 direction, from left to right.

The enumeration of nucleotide bases shall start at the first base of the
sequence with number 1. The enumeration shall be continuous through the
whole sequence in the direction 5 to 3. The enumeration shall be marked
in the right margin, next to the line containing the one-letter codes
for the bases, and giving the number of the last base of that line.

For those nucleotide sequences that are circular in configuration, the
enumeration method set forth in paragraph (c)(6) of this section remains
applicable with the exception that the designation of the first base of
the nucleotide sequence may be made at the option of the applicant.

Representation of amino acids. (1) The amino acids in a protein or
peptide sequence shall be listed using the three-letter abbreviation
with the first letter as an upper case character, as in WIPO Standard
ST.25 (1998), Appendix 2, Table 3.

A protein or peptide sequence shall be listed with a maximum of 16 amino
acids per line, with a space provided between each amino acid.

An amino acid sequence shall be presented in the amino to carboxy
direction, from left to right, and the amino and carboxy groups shall
not be presented in the sequence.

The enumeration of amino acids may start at the first amino acid of the
first mature protein, with the number 1. When presented, the amino acids
preceding the mature protein, e.g., pre-sequences, pro-sequences,
pre-pro-sequences and signal sequences, shall have negative numbers,
counting backwards starting with the amino acid next to number 1.
Otherwise, the enumeration of amino acids shall start at the first amino
acid at the amino terminal as number 1. It shall be marked below the
sequence every 5 amino acids. The enumeration method for amino acid
sequences that is set forth in this section remains applicable for amino
acid sequences that are circular in configuration, with the exception
that the designation of the first amino acid of the sequence may be made
at the option of the applicant.

An amino acid sequence that contains internal terminator symbols (e.g.,
"Ter", "*", or ".", etc.) may not be represented as a single amino acid
sequence, but shall be presented as separate amino acid sequences.

A sequence with a gap or gaps shall be presented as a plurality of
separate sequences, with separate sequence identifiers, with the number
of separate sequences being equal in number to the number of continuous
strings of sequence data. A sequence that is made up of one or more
noncontiguous segments of a larger sequence or segments from different
sequences shall be presented as a separate sequence.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR
29620, June 1, 1998, effective, July 1, 1998]

---SECTION---1.823 Requirements for nucleotide and/or amino acid
sequences as part of the application papers.

The "Sequence Listing'' required by Section  1.821(c), setting forth the
nucleotide and/or amino acid sequences and associated information in
accordance with paragraph (b) of this section, must begin on a new page
and must be titled "Sequence Listing''. The "Sequence Listing''
preferably should be numbered independently of the numbering of the
remainder of the application. Each page of the "Sequence Listing''
should contain no more than 66 lines and each line should contain no
more than 72 characters. A fixed-width font should be used exclusively
throughout the "Sequence Listing.''

The "Sequence Listing'' shall, except as otherwise indicated, include
the actual nucleotide and/or amino acid sequence, the numeric
identifiers and their accompanying information as shown in the following
table. The numeric identifier shall be used only in the "Sequence
Listing.'' The order and presentation of the items of information in the
"Sequence Listing'' shall conform to the arrangement given below. Each
item of information shall begin on a new line and shall begin with the
numeric identifier enclosed in angle brackets as shown. The submission
of those items of information designated with an "M'' is mandatory. The
submission of those items of information designated with an "O'' is
optional. Numeric identifiers <<110> through <<170> shall only be set
forth at the beginning of the "Sequence Listing.'' The following table
illustrates the numeric identifiers.

Numeric Identifier

Definition

Comments and format

Mandatory (M) or Optional (O)

<<110> ......

Applicant............................

Preferably max. of 10 names; one name per line; preferable format:
Surname, Other Names and/or Initials.

M.

<<120> ......

Title of Invention...............

........................................................................
.....

M.

<<130> ......

File Reference...................

Personal file reference..............................

M when filed prior to assignment or appl. number

<<140> ......

Current Application Number.

Specify as: US 07/999,999 or PCT/US96/99999.

M, if available.

<<141> ......

Current Filing Date...........

Specify as: yyyy-mm-dd.........................

M, if available.

<<150> ......

Prior Application Number.

Specify as: US 07/999,999 or PCT/US96/99999.

M, if applicable include priority documents under 35 USC 119 and 120

<<151> ......

Prior Application Filing Date.

Specify as: yyyy-mm-dd ........................

M, if applicable

<<160> ......

Number of SEQ ID NOs.

Count includes total number of SEQ ID
NOs.................................................................

M.

<<170> ......

Software.............................

Name of software used to create the Sequence Listing.

O.

<<210> ......

SEQ ID NO:#:..................

Response shall be an integer representing the SEQ ID NO shown.

M.

<<211> ......

Length.................................

Respond with an integer expressing the number of bases or amino acid
residues.

M.

<<212> ......

Type...................................

Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a
nucleotide sequence contains both DNA and RNA fragments, the type shall
be "DNA.'' In addition, the combined DNA/ RNA molecule shall be further
described in the <<220> to <<223> feature section.

M.

<<213> ......

Organism..........................

Scientific name, i.e. Genus/ species, Unknown or Artificial Sequence. In
addition, the "Unknown'' or "Artificial Sequence'' organisms shall be
further described in the <<220> to <<223> feature section.

M.

<<220> ......

Feature..............................

Leave blank after <<220>. <<221-223> provide for a description of points
of biological significance in the sequence..

M, under the following conditions: if "n,'' "Xaa,'' or a modified or
unusual L-amino acid or modified base was used in a sequence; if
ORGANISM is "Artificial Sequence'' or "Unknown'; if molecule is combined
DNA/RNA''

<<221> ......

Name/Key..........................

Provide appropriate identifier for feature, preferably from WIPO
Standard ST.25 (1998), Appendix 2, Tables 5 and 6.

M, under the following conditions: if "n,'' "Xaa,'' or a modified or
unusual L-amino acid or modified base was used in a sequence.

Numeric Identifier

Definition

Comments and format

Mandatory (M) or Optional (O)

<<222> ......

Location..............................

Specify location within sequence; where appropriate state number of
first and last bases/amino acids in feature.

M, under the following conditions: if "n,'' "Xaa,'' or a modified or
unusual L-amino acid or modified base was used in a sequence.

<<223> ......

Other Information............

Other relevant information; four lines
maximum.......................................................

M, under the following conditions: if "n,'' "Xaa,'' or a modified or
unusual L-amino acid or modified base was used in a sequence; if
ORGANISM is "Artificial Sequence'' or "Unknown''; if molecule is
combined DNA/RNA.

<<300>....

Publication Information....

Leave blank after <<300>

O.

<<301>

Authors...............................

Preferably max of ten named authors of publication; specify one name per
line; preferable format: Surname, Other Names and/or Initials.

O.

<<302>

Title.....................................

........................................................................
....

O.

<<303>

Journal..............................

........................................................................
....

O.

<<304>

Volume ...............................

........................................................................
....

O.

<<305>

Issue ..................................

........................................................................
....

O.

<<306>

Pages .................................

........................................................................
....

O.

<<307>

Date..............

Journal date on which data published; specify as yyyy- mm-dd, MMM-yyyy
or Season- yyyy.

O.

<<308>

Database Accession Number.

Accession number assigned by database including database name.

O.

<<309>

Database Entry Date........

Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy.

O.

<<310>

Patent Document Number.

Document number; for patent- type citations only. Specify as, for
example, US 07/ 999,999.

O.

<<311>

Patent Filing Date..............

Document filing date, for patent-type citations only; specify as
yyyy-mm-dd.

O.

<<312>

Publication Date................

Document publication date, for patent-type citations only; specify as
yyyy-mm-dd.

O.

<<313>

Relevant Residues............

FROM (position) TO (position).................

O.

<<400>

Sequence............................

SEQ ID NO should follow the numeric identifier and should appear on the
line preceding the actual sequence.

M.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR
29620, June 1, 1998, effective July 1, 1998]

---SECTION---1.824 Form and format for nucleotide and/or amino acid
sequence submissions in computer readable form.

The computer readable form required by Section  1.821(e) shall meet the
following specifications:

The computer readable form shall contain a single "Sequence Listing" as
either a diskette, series of diskettes, or other permissible media
outlined in paragraph (c) of this section.

The "Sequence Listing" in paragraph (a) (l) of this section shall be
submitted in American Standard Code for Information Interchange (ASCII)
text. No other formats shall be allowed.

The computer readable form may be created by any means, such as word
processors, nucleotide/amino acid sequence editors or other custom
computer programs; however, it shall conform to all specifications
detailed in this section.

File compression is acceptable when using diskette media, so long as the
compressed file is in a self-extracting format that will decompress on
one of the systems described in paragraph (b) of this section.

Page numbering shall not appear within the computer readable form
version of the "Sequence Listing" file.

All computer readable forms shall have a label permanently affixed
thereto on which has been hand-printed or typed: the name of the
applicant, the title of the invention, the date on which the data were
recorded on the computer readable form, the operating system used, a
reference number, and an application serial number and filing date, if
known.

Computer readable form submissions must meet these format requirements:

Computer: IBM PC/XT/AT, or compatibles, or Apple Macintosh;

Operating System: MS-DOS, Unix or Macintosh;

Line Terminator: ASCII Carriage Return plus ASCII Line Feed;

Pagination: Continuous file (no "hard page break" codes permitted);

Computer readable form files submitted may be in any of the following
media:

Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25
inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.

Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits
per inch, 9 track; Format: Unix tar command; specify blocking factor
(not "block size"); Line Terminator: ASCII Carriage Return plus ASCII
Line Feed.

8mm Data Cartridge: Format: Unix tar command; specify blocking factor
(not "block size"); Line Terminator: ASCII Carriage Return plus ASCII
Line Feed.

CD-ROM: Format: ISO 9660 or High Sierra Format

Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.

Computer readable forms that are submitted to the Office will not be
returned to the applicant.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR
29620, June 1, 1998, effective July 1, 1998]

---SECTION---1.825 Amendments to or replacement of sequence listing and
computer readable copy thereof .

Any amendment to the paper copy of the "Sequence Listing" (Section 
1.821(c)) must be made by the submission of substitute sheets.
Amendments must be accompanied by a statement that indicates support for
the amendment in the application, as filed, and a statement that the
substitute sheets include no new matter.

Any amendment to the paper copy of the "Sequence Listing," in accordance
with paragraph (a) of this section, must be accompanied by a substitute
copy of the computer readable form (Section  1.821(e)) including all
previously submitted data with the amendment incorporated therein,
accompanied by a statement that the copy in computer readable form is
the same as the substitute copy of the "Sequence Listing.''

Any appropriate amendments to the "Sequence Listing" in a patent; e.g.,
by reason of reissue or certificate of correction, must comply with the
requirements of paragraphs (a) and (b) of this section.

If, upon receipt, the computer readable form is found to be damaged or
unreadable, applicant must provide, within such time as set by the
Commissioner, a substitute copy of the data in computer readable form
accompanied by a statement that the substitute data is identical to that
originally filed.

[Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; revised, 63 FR
29620, June 1, 1998, effective July 1, 1998]

---SECTION---A Appendix A to Subpart G to Part 1 - Sample Sequence
Listing

<<110> John Smith

Smith, Jane

<<120> Example of a Sequence Listing

<<130> 01-00001

<<140> US 08/999,999

<<141> 1998-02-28

<<150> EP 91000000

<<151> 1997-12-31

<<160> 2

<<170> PatentIn ver. 2.0

<<210> 1

<<211> 403

<<212> DNA

<<213> Paramecium aurelia

<<220>

<<221> CDS

<<222> 341..394

<<300>

<<301> Doe, Richard

<<302> Isolation and Characterization of a Gene Encoding a

Protease from Paramecium sp.

<<303> Journal of Fictional Genes

<<304> 1

<<305> 4

<<306> 1 - 7

<<307> 1988-06-20

<<400> 1

ctactctact ctactctcat ctactatctt ctttggatct ctgagtctgc ctgagtggta 60

ctcttgagtc ctggagatct ctcctctcac atgtgatcgt cgagactgac cgatagatcg 120

ctgactgact ctgagatagt cgagcccgta cgagacccgt cgagggtgac agagagtggg 180

cgcgtgcgcg cagagcgccg cgccggtgcg cgcgcgagtg cgcggtgggc cgcgcgaggg 240

ctttcgcggc agcggcggcg ctttccggcg cgcgcccgtc cgcccctaga cctgagaggt 300

cttctcttcc ctcctcttca ctagagaggt ctatatatac atg gtt tca atg ttc 355

Met Val Ser Met Phe

1 5

agc ttg tct ttc aaa tgg cct gga ttt tgt ttg ttt gtt tgtttgctc 403

Ser Leu Ser Phe Lys Trp Pro Gly Phe Cys Leu Phe Val

10 15

<<210> 2

<<211> 2

<<212> PRT

<<213> Paramecium aurelia

<<400> 2

Met Cal Ser Met Phe Ser Leu Ser Phe Lys Trp Pro Gly Phe Cys Leu

1 5 10 15

Phe Val

---SECTION---ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

---SECTION---3.1 Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, an international
application that designates the United States of America, or an
application to register a trademark unless otherwise indicated.

Assignmentmeans a transfer by a party of all or part of its right, title
and interest in a patent or patent application, or a transfer of its
entire right, title and interest in a registered mark or a mark for
which an application to register has been filed.

Document means a document which a party requests to be recorded in the
Office pursuant to Section  3.11 and which affects some interest in an
application, patent, or registration.

Office means the Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office
pursuant to Section  3.11.

Registration means a trademark registration issued by the Office.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---DOCUMENTS ELIGIBLE FOR RECORDING

---SECTION---3.11 Documents which will be recorded.

Assignments of applications, patents, and registrations, accompanied by
completed cover sheets as specified in Section Section &nbsp;3.28 and
3.31, will be recorded in the Office. Other documents, accompanied by
completed cover sheets as specified in Section Section &nbsp;3.28 and
3.31, affecting title to applications, patents, or registrations, will
be recorded as provided in this part or at the discretion of the
Commissioner.

Executive Order 9424 of February 18, 1944 (9 FR 1959, 3&nbsp;CFR
1943-1948 Comp., p. 303) requires the several departments and other
executive agencies of the Government, including Government-owned or
Government-controlled corporations, to forward promptly to the
Commissioner of Patents and Trademarks for recording all licenses,
assignments, or other interests of the Government in or under patents or
patent applications. Assignments and other documents affecting title to
patents or patent applications and documents not affecting title to
patents or patent applications required by Executive Order 9424 to be
filed will be recorded as provided in this part.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.16 Assignability of trademarks prior to filing of use
statements.

No application to register a mark under 15 U.S.C. 1051(b) is assignable
prior to the filing of the verified statement of use under 15 U.S.C.
1051(d) except to a successor to the business of the applicant, or
portion thereof, to which the mark pertains, if that business is ongoing
and existing.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---REQUIREMENTS FOR RECORDING

---SECTION---3.21 Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/123,456).
An assignment relating to an international patent application which
designates the United States of America must identify the international
application by the international application number (e.g.,
PCT/US90/01234). If an assignment of a patent application filed under
Section  1.53(b) is executed concurrently with, or subsequent to, the
execution of the patent application, but before the patent application
is filed, it must identify the patent application by its date of
execution, name of each inventor, and title of the invention so that
there can be no mistake as to the patent application intended. If an
assignment of a provisional application under Section  1.53(c) is
executed before the provisional application is filed, it must identify
the provisional application by name of each inventor and title of the
invention so that there can be no mistake as to the provisional
application intended.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; amended, 60
FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.24 Formal requirements for documents and cover sheets.

The document and cover sheet must be legible. Either the original
document or a true copy of the original document, may be submitted for
recording. Only one side of each page shall be used. The paper used
should be flexible, strong white, non-shiny, durable, and preferably no
larger than 21.6 x 33.1 cm. (8 1/2 x 14 inches) with a 2.5 cm.
(one-inch) margin on all sides.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---3.26 English language requirement.

The Office will accept and record non-English language documents only if
accompanied by an English translation signed by the individual making
the translation.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.27 Mailing address for submitting documents to be
recorded.

Except as provided in paragraph (b) of this section, documents and cover
sheets to be recorded should be addressed to the Commissioner of Patents
and Trademarks, Box Assignment, Washington, D.C. 20231, unless they are
filed together with new applications or with a petition under Section 
3.81(b).

A document required by Executive Order 9424 to be filed which does not
affect title and is so identified in the cover sheet (see Section 
3.31(c)(2)) must be addressed and mailed to the Commissioner of Patents
and Trademarks, Box Government Interest, Washington, D.C. 20231.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.28 Requests for recording.

Each document submitted to the Office for recording must be accompanied
by at least one cover sheet as specified in Section 3.31 referring
either to those patent applications and patents, or to those trademark
applications and registrations, against which the document is to be
recorded. If a document to be recorded includes interests in, or
transactions involving, both patents and trademarks, separate patent and
trademark cover sheets must be submitted. Only one set of documents and
cover sheets to be recorded should be filed. If a document to be
recorded is not accompanied by a completed cover sheet, the document and
any incomplete cover sheet will be returned pursuant to Section  3.51
for proper completion of a cover sheet and resubmission of the document
and a completed cover sheet.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---COVER SHEET REQUIREMENTS

---SECTION---3.31 Cover sheet content.

Each patent or trademark cover sheet required by Section  3.28 must
contain:

The name of the party conveying the interest;

The name and address of the party receiving the interest;

A description of the interest conveyed or transaction to be recorded;

Each application number, patent number or registration number against
which the document is to be recorded, or an indication that the document
is filed together with a patent application;

The name and address of the party to whom correspondence concerning the
request to record the document should be mailed;

The number of applications, patents, or registrations identified in the
cover sheet and the total fee;

The date the document was executed;

An indication that the assignee of a trademark application or
registration who is not domiciled in the United States has designated a
domestic representative (see Section 3.61); and

A statement by the party submitting the document that to the best of the
person's knowledge and belief, the information contained on the cover
sheet is true and correct and any copy submitted is a true copy of the
original document; and

The signature of the party submitting the document.

A cover sheet may not refer to both patents and trademarks.

Each patent cover sheet required by Section  3.28 seeking to record a
governmental interest as provided by Section &nbsp;3.11(b) must:

Indicate that the document is to be recorded on the Governmental
Register, and, if applicable, that the document is to be recorded on the
Secret Register (see Section  3.58); and

Indicate, if applicable, that the document to be recorded is not a
document affecting title (see Section &nbsp;3.41(b)).

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (c)
added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.34 Correction of cover sheet errors.

An error in a cover sheet recorded pursuant to Section 3.11 will be
corrected only if:

The error is apparent when the cover sheet is compared with the recorded
document to which it pertains and

A corrected cover sheet is filed for recordation.

The corrected cover sheet must be accompanied by the originally recorded
document or a copy of the originally recorded document and by the
recording fee as set forth in Section 3.41.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---FEES

---SECTION---3.41 Recording fees.

All requests to record documents must be accompanied by the appropriate
fee. Except as provided in paragraph (b) of this section, a fee is
required for each application, patent and registration against which the
document is recorded as identified in the cover sheet. The recording fee
is set in Section &nbsp;1.21(h) of this chapter for patents and in
Section &nbsp;2.6(q) of this chapter for trademarks.

No fee is required for each patent application and patent against which
a document required by Executive Order 9424 is to be filed if:

The document does not affect title and is so identified in the cover
sheet (see Section  3.31(c)(2)); and

The document and cover sheet are mailed to the Office in compliance with
Section  3.27(b).

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---DATE AND EFFECT OF RECORDING

---SECTION---3.51 Recording date.

The date of recording of a document is the date the document meeting the
requirements for recording set forth in this part is filed in the
Office. A document which does not comply with the identification
requirements of Section  3.21 will not be recorded. Documents not
meeting the other requirements for recording, for example, a document
submitted without a completed cover sheet or without the required fee,
will be returned for correction to the sender where a correspondence
address is available. The returned papers, stamped with the original
date of receipt by the Office, will be accompanied by a letter which
will indicate that if the returned papers are corrected and resubmitted
to the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The procedure set forth in Section  1.8 or
Section  1.10 of this chapter may be used for resubmissions of returned
papers to have the benefit of the date of deposit in the United States
Postal Service. If the returned papers are not corrected and resubmitted
within the specified period, the date of filing of the corrected papers
will be considered to be the date of recording of the document. The
specified period to resubmit the returned papers will not be extended.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---3.54 Effect of recording.

The recording of a document pursuant to Section 3.11 is not a
determination by the Office of the validity of the document or the
effect that document has on the title to an application, a patent, or a
registration. When necessary, the Office will determine what effect a
document has, including whether a party has the authority to take an
action in a matter pending before the Office.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---3.56 Conditional assignments.

Assignments which are made conditional on the performance of certain
acts or events, such as the payment of money or other condition
subsequent, if recorded in the Office, are regarded as absolute
assignments for Office purposes until cancelled with the written consent
of all parties or by the decree of a court of competent jurisdiction.
The Office does not determine whether such conditions have been
fulfilled.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---3.58 Governmental registers.

The Office will maintain a Departmental Register to record governmental
interests required to be recorded by Executive Order 9424. This
Departmental Register will not be open to public inspection but will be
available for examination and inspection by duly authorized
representatives of the Government. Governmental interests recorded on
the Departmental Register will be available for public inspection as
provided in Section  1.12.

The Office will maintain a Secret Register to record governmental
interests required to be recorded by Executive Order 9424. Any
instrument to be recorded will be placed on this Secret Register at the
request of the department or agency submitting the same. No information
will be given concerning any instrument in such record or register, and
no examination or inspection thereof or of the index thereto will be
permitted, except on the written authority of the head of the department
or agency which submitted the instrument and requested secrecy, and the
approval of such authority by the Commissioner of Patents and
Trademarks. No instrument or record other than the one specified may be
examined, and the examination must take place in the presence of a
designated official of the Patent and Trademark Office. When the
department or agency which submitted an instrument no longer requires
secrecy with respect to that instrument, it must be recorded anew in the
Departmental Register.

[Added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---DOMESTIC REPRESENTATIVE

---SECTION---3.61 Domestic representative.

If the assignee of a trademark application or registration is not
domiciled in the United States, the assignee must designate, in writing
to the Office, a domestic representative. An assignee of a patent
application or patent may designate a domestic representative if the
assignee is not residing in the United States. The designation shall
state the name and address of a person residing within the United States
on whom may be served process or notice of proceedings affecting the
application, patent or registration or rights thereunder.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---ACTION TAKEN BY ASSIGNEE

---SECTION---3.71 Prosecution by assignee.

The assignee of record of the entire right, title and interest in an
application for patent is entitled to conduct the prosecution of the
patent application to the exclusion of the named inventor or previous
assignee. The assignee of a registered trademark or a trademark for
which an application to register has been filed is entitled to conduct
the prosecution of the trademark application or registration to the
exclusion of the original applicant or previous assignee.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]

---SECTION---3.73 Establishing right of assignee to take action.

The inventor is presumed to be the owner of a patent application, and
any patent that may issue therefrom, unless there is an assignment. The
original applicant is presumed to be the owner of a trademark
application unless there is an assignment.

When an assignee seeks to take action in a matter before the Office with
respect to a patent application, trademark application, patent,
registration, or reexamination proceeding, the assignee must establish
its ownership of the property to the satisfaction of the Commissioner.
Ownership is established by submitting to the Office, in the Office file
related to the matter in which action is sought to be taken, documentary
evidence of a chain of title from the original owner to the assignee
(e.g., copy of an executed assignment submitted for recording) or by
specifying (e.g., reel and frame number) where such evidence is recorded
in the Office. The submission establishing ownership must be signed by a
party authorized to act on behalf of the assignee. Documents submitted
to establish ownership may be required to be recorded as a condition to
permitting the assignee to take action in a matter pending before the
Office.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (b)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---ISSUANCE TO ASSIGNEE

---SECTION---3.81 Issue of patent to assignee.

For a patent application, if an assignment of the entire right, title,
and interest is recorded before the issue fee is paid, the patent may
issue in the name of the assignee. If the assignee holds an undivided
part interest, the patent may issue jointly to the inventor and the
assignee. At the time the issue fee is paid, the name of the assignee
must be provided if the patent is to issue solely or jointly to that
assignee.

If the assignment is submitted for recording after the date of payment
of the issue fee, but prior to issuance of the patent, the assignee may
petition that the patent issue to the assignee. Any such petition must
be accompanied by the fee set forth inSection  1.17(i) of this chapter.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; amended, 60
FR 20195, Apr. 25, 1995, effective June 8, 1995]

---SECTION---3.85 Issue of registration to assignee.

The certificate of registration may be issued to the assignee of the
applicant, or in a new name of the applicant, provided that the party
files a written request in the trademark application by the time the
application is being prepared for issuance of the certificate of
registration, and the appropriate document is recorded in the Office. If
the assignment or name change document has not been recorded in the
Office, then the written request must state that the document has been
filed for recordation. The address of the assignee must be made of
record in the application file.

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
---SECTION---SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES

---SECTION---SECRECY ORDERS

---SECTION---5.1 Correspondence.

All correspondence in connection with this part, including petitions,
must be addressed to "Assistant Commissioner for Patents (Attention
Licensing and Review), Washington, DC 20231."

[43 FR 20470, May 11, 1978; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---5.2 Secrecy order.

When notified by the chief officer of a defense agency that publication
or disclosure of the invention by the granting of a patent would be
detrimental to the national security, an order that the invention be
kept secret will be issued by the Commissioner of Patents and
Trademarks.

Any request for compensation as provided in 35&nbsp;U.S.C. 183 must not
be made to the Patent and Trademark Office, but directly to the
department or agency which caused the secrecy order to be issued.

[24 FR 10381, Dec. 22, 1959; para. (b) revised, paras. (c) and (d)
removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.3 Prosecution of application under secrecy orders;
withholding patent.

Unless specifically ordered otherwise, action on the application by the
Office and prosecution by the applicant will proceed during the time an
application is under secrecy order to the point indicated in this
section:

National applications under secrecy order which come to a final
rejection must be appealed or otherwise prosecuted to avoid abandonment.
Appeals in such cases must be completed by the applicant but unless
otherwise specifically ordered by the Commissioner will not be set for
hearing until the secrecy order is removed.

An interference will not be declared involving national applications
under secrecy order. However, if an applicant whose application is under
secrecy order seeks to provoke an interference with an issued patent, a
notice of that fact will be placed in the file wrapper of the patent.
(See Section  1.607(d)).

When the national application is found to be in condition for allowance
except for the secrecy order the applicant and the agency which caused
the secrecy order to be issued will be notified. This notice (which is
not a notice of allowance under Section &nbsp;1.311 of this chapter)
does not require reply by the applicant and places the national
application in a condition of suspension until the secrecy order is
removed. When the secrecy order is removed the Patent and Trademark
Office will issue a notice of allowance under Section &nbsp;1.311 of
this chapter, or take such other action as may then be warranted.

International applications under secrecy order will not be mailed,
delivered, or otherwise transmitted to the international authorities or
the applicant. International applications under secrecy order will be
processed up to the point where, if it were not for the secrecy order,
record and search copies would be transmitted to the international
authorities or the applicant.

[43 FR 20470, May 11, 1978; amended 43 FR 28479, June 30, 1978; para.
(b) amended 53 FR 23736, June 23, 1988, effective Sept. 12, 1988; para.
(c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.4 Petition for rescission of secrecy order.

A petition for rescission or removal of a secrecy order may be filed by,
or on behalf of, any principal affected thereby. Such petition may be in
letter form, and it must be in duplicate.

The petition must recite any and all facts that purport to render the
order ineffectual or futile if this is the basis of the petition. When
prior publications or patents are alleged the petition must give
complete data as to such publications or patents and should be
accompanied by copies thereof.

The petition must identify any contract between the Government and any
of the principals under which the subject matter of the application or
any significant part thereof was developed or to which the subject
matter is otherwise related. If there is no such contract, the petition
must so state.

Appeal to the Secretary of Commerce, as provided by 35&nbsp;U.S.C. 181,
from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied. Appeal must be
taken within sixty days from the date of the denial, and the party
appealing, as well as the department or agency which caused the order to
be issued, will be notified of the time and place of hearing.

[24 FR 10381, Dec. 22, 1959; paras. (a) and (d) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.5 Permit to disclose or modification of secrecy order.

Consent to disclosure, or to the filing of an application abroad, as
provided in 35 U.S.C. 182, shall be made by a "permit" or "modification"
of the secrecy order.

Petitions for a permit or modification must fully recite the reason or
purpose for the proposed disclosure. Where any proposed disclosee is
known to be cleared by a defense agency to receive classified
information, adequate explanation of such clearance should be made in
the petition including the name of the agency or department granting the
clearance and the date and degree thereof. The petition must be filed in
duplicate.

In a petition for modification of a secrecy order to permit filing
abroad, all countries in which it is proposed to file must be made
known, as well as all attorneys, agents and others to whom the material
will be consigned prior to being lodged in the foreign patent office.
The petition should include a statement vouching for the loyalty and
integrity of the proposed disclosees and where their clearance status in
this or the foreign country is known all details should be given.

Consent to the disclosure of subject matter from one application under
secrecy order may be deemed to be consent to the disclosure of common
subject matter in other applications under secrecy order so long as the
subject matter is not taken out of context in a manner disclosing
material beyond the modification granted in the first application.

Organizations requiring consent for disclosure of applications under
secrecy order to persons or organizations in connection with repeated
routine operation may petition for such consent in the form of a general
permit. To be successful such petitions must ordinarily recite the
security clearance status of the disclosees as sufficient for the
highest classification of material that may be involved.

[24 FR 10381, Dec. 22, 1959; paras. (b) and (e) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.6 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---5.7 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---5.8 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---LICENSES FOR FOREIGN EXPORTING AND FILING

---SECTION---5.11 License for filing in a foreign country an application
on an invention made in the United States or for transmitting
international application.

A license from the Commissioner of Patents and Trademarks under 35
U.S.C. 184 is required before filing any application for patent
including any modifications, amendments, or supplements thereto or
divisions thereof or for the registration of a utility model, industrial
design, or model, in a foreign patent office or any foreign patent
agency or any international agency other than the United States
Receiving Office, if the invention was made in the United States and:

An application on the invention has been filed in the United States less
than six months prior to the date on which the application is to be
filed, or

No application on the invention has been filed in the United States.

The license from the Commissioner of Patents and Trademarks referred to
in paragraph (a) would also authorize the export of technical data
abroad for purposes relating to the preparation, filing or possible
filing and prosecution of a foreign patent application without
separately complying with the regulations contained in 22&nbsp;CFR parts
121 through 130 (International Traffic in Arms Regulations of the
Department of State), 15&nbsp;CFR part 779 (Regulations of the Office of
Export Administration, International Trade Administration, Department of
Commerce) and 10&nbsp;CFR part 810 (Foreign Atomic Energy Programs of
the Department of Energy).

Where technical data in the form of a patent application, or in any
form, is being exported for purposes related to the preparation, filing
or possible filing and prosecution of a foreign patent application,
without the license from the Commissioner of Patents and Trademarks
referred to in paragraphs (a) or (b) of this section, or on an invention
not made in the United States, the export regulations contained in
22&nbsp;CFR parts 120 through 130 (International Traffic in Arms
Regulations of the Department of State), 15&nbsp;CFR parts 768-799
(Export Administration Regulations of the Department of Commerce) and
10&nbsp;CFR part 810 (Assistance to Foreign Atomic Energy Activities
Regulations of the Department of Energy) must be complied with unless a
license is not required because a United States application was on file
at the time of export for at least six months without a secrecy order
under Section  5.2 being placed thereon. The term "exported" means
export as it is defined in 22&nbsp;CFR part 120, 15&nbsp;CFR part 779
and activities covered by 10&nbsp;CFR part 810.

If a secrecy order has been issued under Section 5.2, an application
cannot be exported to, or filed in, a foreign country (including an
international agency in a foreign country), except in accordance with
Section 5.5.

No license pursuant to paragraph (a) of this section is required:

If the invention was not made in the United States, or

If the corresponding United States application is not subject to a
secrecy order under Section  5.2, and was filed at least six months
prior to the date on which the application is filed in a foreign
country, or

For subsequent modifications, amendments and supplements containing
additional subject matter to, or divisions of, a foreign patent
application if:

A license is not, or was not, required under paragraph (e)(2) of this
section for the foreign patent application;

The corresponding United States application was not required to be made
available for inspection under 35&nbsp;U.S.C. 181; and

Such modifications, amendments, and supplements do not, or did not,
change the general nature of the invention in a manner which would
require any corresponding United States application to be or have been
available for inspection under 35&nbsp;U.S.C. 181.

A license pursuant to paragraph (a) of this section can be revoked at
any time upon written notification by the Patent and Trademark Office.
An authorization to file a foreign patent application resulting from the
passage of six months from the date of filing of a United States patent
application may be revoked by the imposition of a secrecy order.

[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 1924, Jan. 18,
1991, effective Feb. 19, 1991; paras. (b), (c), and (e)(3) revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.12 Petition for license.

Filing of an application for patent for inventions made in the United
States will be considered to include a petition for license under 35
U.S.C. 184 for the subject matter of the application. The filing receipt
will indicate if a license is granted. If the initial automatic petition
is not granted, a subsequent petition may be filed under paragraph (b)
of this section.

Petitions for license should be presented in letter form, and must
include the petitioner's address and full instructions for delivery of
the requested license when it is to be delivered to other than the
petitioner. If expedited handling of the petition under this paragraph
is sought, the petition must also include the fee set forth in Section 
1.17(h).

[48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, Apr. 4, 1984; para. (b)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.13 Petition for license; no corresponding application.

If no corresponding national or international application has been filed
in the United States, the petition for license under Section
&nbsp;5.12(b) must also be accompanied by a legible copy of the material
upon which a license is desired. This copy will be retained as a measure
of the license granted.

[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.14 Petition for license; corresponding U.S. application.

When there is a corresponding United States application on file, a
petition for license under Section  5.12(b) must also identify this
application by application number, filing date, inventor, and title, but
a copy of the material upon which the license is desired is not
required. The subject matter licensed will be measured by the disclosure
of the United States application.

Two or more United States applications should not be referred to in the
same petition for license unless they are to be combined in the foreign
or international application, in which event the petition should so
state and the identification of each United States application should be
in separate paragraphs.

Where the application to be filed or exported abroad contains matter not
disclosed in the United States application or applications, including
the case where the combining of two or more United States applications
introduces subject matter not disclosed in any of them, a copy of the
application as it is to be filed in the foreign country or international
application which is to be transmitted to a foreign international or
national agency for filing in the Receiving Office, must be furnished
with the petition. If however, all new matter in the foreign or
international application to be filed is readily identifiable, the new
matter may be submitted in detail and the remainder by reference to the
pertinent United States application or applications.

[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984; para. (a)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.15 Scope of license.

Applications or other materials reviewed pursuant to Section Section 
5.12 through 5.14, which were not required to be made available for
inspection by defense agencies under 35&nbsp;U.S.C. 181, will be
eligible for a license of the scope provided in this paragraph. This
license permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
patent application, if such changes to the application do not alter the
general nature of the invention in a manner which would require the
United States application to have been made available for inspection
under 35&nbsp;U.S.C. 181. Grant of this license authorizing the export
and filing of an application in a foreign country or the transmitting of
an international application to any foreign patent agency or
international patent agency when the subject matter of the foreign or
international application corresponds to that of the domestic
application. This license includes authority:

To export and file all duplicate and formal application papers in
foreign countries or with international agencies;

To make amendments, modifications, and supplements, including divisions,
changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and

To take any action in the prosecution of the foreign or international
application provided that the adding of subject matter or taking of any
action under paragraphs (a)(1) or (2) of this section does not change
the general nature of the invention disclosed in the application in a
manner which would require such application to have been made available
for inspection under 35&nbsp;U.S.C. 181 by including technical data
pertaining to:

Defense services or articles designated in the United States Munitions
List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22&nbsp;CFR parts 121 through 130; or

Restricted Data, sensitive nuclear technology or technology useful in
the production or utilization of special nuclear material or atomic
energy, dissemination of which is subject to restrictions of the Atomic
Energy Act of 1954, as amended, and the Nuclear Non-Proliferation Act of
1978, as implemented by the regulations for Unclassified Activities in
Foreign Atomic Energy Programs, 10&nbsp;CFR part 810, in effect at the
time of foreign filing.

Applications or other materials which were required to be made available
for inspection under 35&nbsp;U.S.C. 181 will be eligible for a license
of the scope provided in this paragraph. Grant of this license
authorizes the export and filing of an application in a foreign country
or the transmitting of an international application to any foreign
patent agency or international patent agency. Further, this license
includes authority to export and file all duplicate and formal papers in
foreign countries or with foreign and international patent agencies and
to make amendments, modifications, and supplements to, file divisions
of, and take any action in the prosecution of the foreign or
international application, provided subject matter additional to that
covered by the license is not involved.

A license granted under Section  5.12(b) pursuant to Section  5.13 or
Section  5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Section &nbsp;1.17(h)), may also be filed to change
a license having the scope indicated in paragraph (b) of this section to
a license having the scope indicated in paragraph (a) of this section.
No such petition will be granted if the copy of the material filed
pursuant to Section  5.13 or any corresponding United States application
was required to be made available for inspection under 35&nbsp;U.S.C.
181. The change in the scope of a license will be effective as of the
date of the grant of the petition.

In those cases in which no license is required to file the foreign
application or transmit the international application, no license is
required to file papers in connection with the prosecution of the
foreign or international application not involving the disclosure of
additional subject matter.

Any paper filed abroad or transmitted to an international patent agency
following the filing of a foreign or international application which
changes the general nature of the subject matter disclosed at the time
of filing in a manner which would require such application to have been
made available for inspection under 35&nbsp;U.S.C. 181 or which involves
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii)
of this section must be separately licensed in the same manner as a
foreign or international application. Further, if no license has been
granted under Section &nbsp;5.12(a) on filing the corresponding United
States application, any paper filed abroad or with an international
patent agency which involves the disclosure of additional subject matter
must be licensed in the same manner as a foreign or international
application.

Licenses separately granted in connection with two or more United States
applications may be exercised by combining or dividing the disclosures,
as desired, provided:

Subject matter which changes the general nature of the subject matter
disclosed at the time of filing or which involves subject matter listed
in paragraphs (a)(3) (i) or (ii) of this section is not introduced and,

In the case where at least one of the licenses was obtained under
Section 5.12(b), additional subject matter is not introduced.

A license does not apply to acts done before the license was granted.
See Section 5.25 for petitions for retroactive licenses.

[49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and (f), 56 FR 1924,
Jan. 18, 1991, effective Feb. 19, 1991; paras. (a)-(c) and (e) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---5.16 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---5.17 [Reserved]

[49 FR 13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]

---SECTION---5.18 Arms, ammunition, and implements of war.

The exportation of technical data relating to arms, ammunition, and
implements of war generally is subject to the International Traffic in
Arms Regulations of the Department of State (22&nbsp;CFR parts 120
through 130); the articles designated as arms, ammunitions, and
implements of war are enumerated in the U.S. Munitions List (22&nbsp;CFR
part 121). However, if a patent applicant complies with regulations
issued by the Commissioner of Patents and Trademarks under
35&nbsp;U.S.C. 184, no separate approval from the Department of State is
required unless the applicant seeks to export technical data exceeding
that used to support a patent application in a foreign country. This
exemption from Department of State regulations is applicable regardless
of whether a license from the Commissioner is required by the provisions
of Section Section  5.11 and 5.12 (22&nbsp;CFR part 125).

When a patent application containing subject matter on the Munitions
List (22&nbsp;CFR part 121) is subject to a secrecy order under Section 
5.2 and a petition is made under Section  5.5 for a modification of the
secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22&nbsp;CFR part 125).

[35 FR 6430., Apr. 22, 1970; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---5.19 Export of technical data.

Under regulations (15&nbsp;CFR 770.10(j)) established by the Department
of Commerce, a license is not required in any case to file a patent
application or part thereof in a foreign country if the foreign filing
is in accordance with the regulations (Section Section 5.11 through
5.25) of the Patent and Trademark Office.

An export license is not required for data contained in a patent
application prepared wholly from foreign-origin technical data where
such application is being sent to the foreign inventor to be executed
and returned to the United States for subsequent filing in the U.S.
Patent and Trademark Office (15&nbsp;CFR 779A.3(e)).

[45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 54504, Oct. 22,
1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---5.20 Export of technical data relating to sensitive nuclear
technology.

Under regulations (10&nbsp;CFR 810.7) established by the United States
Department of Energy, an application filed in accordance with the
regulations (Section Section &nbsp;5.11 through 5.25) of the Patent and
Trademark Office and eligible for foreign filing under 35&nbsp;U.S.C.
184, is considered to be information available to the public in
published form and a generally authorized activity for the purposes of
the Department of Energy regulations.

[49 FR 13463, Apr. 4, 1984; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---5.25 Petition for retroactive license.

A petition for retroactive license under 35 U.S.C. 184 shall be
presented in accordance withSection 5.13 or Section 5.14(a), and shall
include:

A listing of each of the foreign countries in which the unlicensed
patent application material was filed,

The dates on which the material was filed in each country,

A verified statement (oath or declaration) containing:

An averment that the subject matter in question was not under a secrecy
order at the time it was filed abroad, and that it is not currently
under a secrecy order,

A showing that the license has been diligently sought after discovery of
the proscribed foreign filing, and

An explanation of why the material was filed abroad through error and
without deceptive intent without the required license under Section 
5.11 first having been obtained, and

The required fee (Section 1.17(h)).

The above explanation must include a showing of facts rather than a mere
allegation of action through error and without deceptive intent. The
showing of facts as to the nature of the error should include statements
by those persons having personal knowledge of the acts regarding filing
in a foreign country and should be accompanied by copies of any
necessary supporting documents such as letters of transmittal or
instructions for filing. The acts which are alleged to constitute error
without deceptive intent should cover the period leading up to and
including each of the proscribed foreign filings.

If a petition for a retroactive license is denied, a time period of not
less than thirty days shall be set, during which the petition may be
renewed. Failure to renew the petition within the set time period will
result in a final denial of the petition. A final denial of a petition
stands unless a petition is filed under Section 1.181 within two months
of the date of the denial. If the petition for a retroactive license is
denied with respect to the invention of a pending application and no
petition under Section 1.181 has been filed, a final rejection of the
application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 18, 1991,
effective Feb. 19, 1991; para. (c) removed, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---GENERAL

---SECTION---5.31 [Reserved]

[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 1984;
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---5.32 [Reserved]

[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463, Apr. 4, 1984;
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]

---SECTION---5.33 [Reserved]

[49 FR 13463, Apr. 4, 1984; amended, 61 FR 56439, Nov. 1, 1996,
effective Dec. 2, 1996; removed and reserved, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997] ---SECTION---[RESERVED]

[Part 7 removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997]

---SECTION---Index A

Abandoned applications:

Abandonment by failure to reply  1.135

Abandonment during interference  1.662(a)

Abandonment for failure to pay issue fee  1.155, 1.316

Destruction after 20 yrs. unless marked for preservation  1.14(b)

Express abandonment  1.138

Processing and retention fee  1.21(1)

Referred to in issued patents  1.14

Revival of  1.137

When open to public inspection  1.14

Abandonment of application. (See Abandoned applications.)

Abstract of the disclosure  1.72, 1.77, 1.163

Access to pending applications (limited)  1.14

Action by applicant  1.111 - 1.138

Address for notice to Commissioner of appeal to Fed. Cir.  1.302(c)

Address of applicant in oath/declaration  1.63

Address of Solicitor's Office  1.1(a)

Address of the Patent and Trademark Office  1.1

Box CPA  1.53(d)(9)

Box Interference  1.1(e)

Box M. Fee  1.1(d)

Box Patent Ext  1.1(f)

Box PCT  1.1(b)

Box Provisional Patent Application  1.1(i)

Box Reexam  1.1(c)

Administrator or executor, may make application and receive patent  1.42

Proof of authority  1.44

Admission to practice. (See Attorneys and agents.)

Affidavit (See also Oath in patent application):

After appeal  1.195

To disqualify commonly owned patent as prior art  1.130

To overcome cited patent or publication  1.131

Traversing grounds of rejection  1.132

Agents. (See Attorneys and agents.)

Allowance and issue of patent:

Amendment after allowance  1.312

Application abandoned for nonpayment of issue fee  1.155, 1.316

Deferral of issuance  1.314

Delayed payment of issue fee  1.137

Delivery of patent  1.315

Issuance of patent  1.155, 1.314

Notice of allowance  1.155, 1.311

(Allowance and issue of patent):

Patent to issue upon payment of issue fee  1.311, 1.314

Patent to lapse if issue fee is not paid in full  1.317

Reasons for  1.104

Withdrawal from issue  1.313

Allowed claims, rejection of by Board of Patent Appeals and
Interferences  1.196

Amendment:

Adding or substituting claims  1.121

After appeal  1.116

After decision on appeal, based on new rejection of Board of Patent
Appeals and Interferences  1.196

After final action  1.116

After final action (transitional procedures)  1.129

After notice of allowance  1.312

By patent owner  1.530

Copying claim of another application for interference  1.603

Copying claim of issued patent  1.606, 1.607

Deletions and insertions  1.121

Drawings  1.121

Involving a departure from original invention  1.121

Manner of making  1.121

May be required  1.121

Not covered by original oath  1.67

Numbering of claims  1.126

Of amendments  1.121

Of claims  1.121

Of disclosure  1.121

Of drawing  1.121

Of specification  1.121

Paper and writing  1.52

Petition from refusal to admit  1.127

Proposed during interference  1.615

Provisional application  1.53(c)

Reissue  1.121(b), 1.173, 1.174

Requisites of  1.33, 1.111, 1.116, 1.121, 1.125

Right to amend  1.111, 1.116, 1.127

Signature to  1.33

Substitute specification  1.125

Time for  1.134

To accompany motion to amend interference  1.633

To applications in interference  1.633

To correct inaccuracies  1.121

To correspond to original drawing or specification  1.121

To preliminary statement in interference  1.628

To reissues.  1.173, 1.174

To save from abandonment  1.135

Amino acid sequences. (See Nucleotide and/or amino acid sequences.)

Appeal to Board of Patent Appeals and Interferences:

Action following decision  1.197

Affidavits after appeal  1.195

Brief  1.192

Clarification of the record  1.196

Decision by Board  1.196

Examiner's answer  1.193

Fees  1.17

Hearing of  1.194

New grounds for refusing a patent  1.196

Notice of appeal  1.191

Rehearing  1.196, 1.197

Reinstatement of appeal  1.193

Rejection by Board  1.196

Reopening after decision  1.198

Reopening of prosecution after appeal  1.193

Reply brief  1.193

Appeal to Court of Appeals for the Federal Circuit:

Fee provided by rules of court  1.301

From Board of Patent Appeals and Interferences  1.301

Notice and reasons of appeal  1.302

Time for  1.302, 1.304

Applicant for patent  1.41 - 1.48

Address in oath or declaration  1.63

Change  1.48

Correspondence address  1.33

Deceased or insane inventor  1.42, 1.43

Executor or administrator  1.42

Informed of application number  1.54

Joint changed to sole  1.48

Letters for, sent to attorney or agent  1.33

May be represented by an attorney or agent  1.31

Personal attendance unnecessary  1.2

Required to conduct business with decorum and courtesy  1.3

Required to report assistance received  1.4

Sole changed to joint  1.48

Sole changed to another sole  1.48

Application for patent (See also Abandoned applications, Claims,
Drawing, Examination of application, Provisional applications, Reissues,
Specification):

Access to  1.14

Acknowledgment of filing  1.54

Alteration after execution  1.52, 1.67

Alteration before execution  1.52

Application number and filing date  1.54

Arrangement  1.77

Confidentiality of applications  1.14

Continuation or division, reexecute not required  1.63

Continued prosecution application  1.53(d)

Filed by facsimile  1.6, 1.8

(Application for patent):

Copies of, furnished to applicants  1.59

Cross-references of related applications  1.78

Deceased or insane inventor  1.42, 1.43

Declaration  1.68

Duty of disclosure  1.56

Examined only when complete  1.53

Execution in blank  1.67

Filed by other than inventor  1.42, 1.43, 1.47

Filing date  1.53

Filing requirements  1.53

Foreign language oath or declaration  1.69

Formulas and tables  1.58

General requisite  1.51

Identification required in letters concerning  1.5

Incomplete papers not filed for examination  1.53

Interlineations, etc., to be indicated  1.52

Language, paper, writing, margin  1.52

Later filing of oath and filing fee  1.53

Missing pages when application filed  1.53(e)

Must be made by actual inventor, with exceptions  1.41, 1.46

Names of all inventors required  1.41, 1.63

Non-English language  1.52

Owned by Government  1.103

Papers having filing date not to be returned  1.59

Parts filed separately  1.54

Parts of application desirably filed together  1.54

Parts of complete application  1.51

Processing fees  1.17

Provisional application  1.9, 1.51, 1.53

Relating to atomic energy  1.14

Reservation for future application not permitted  1.79

Retention fee  1.53(f)

Secrecy order  5.2-5.5

Tables and formulas  1.58

To contain but one invention unless connected  1.141

To whom made  1.51

Two or more by same party with conflicting claims  1.78

Application number  1.5(a), 1.53, 1.54

Arbitration award filing  1.335

Arbitration in interference  1.690

Assignee:

Correspondence held with assignee of entire interest  3.71, 3.73

Establishing ownership  3.73(b)

If of entire interest, patent may issue to assignee  1.46, 3.81

If of undivided part interest, correspondence will be held with inventor 
1.33

(Assignee):

If of undivided part interest, must consent to application for reissue
of patent  1.171, 1.172

If of undivided part interest, patent may issue jointly  1.46, 3.81

May conduct prosecution of application  3.71, 3.73

May take action in interference  1.643

Assignments and recording:

Abstracts of title, fee for  1.19(b)

Conditional assignments  3.56

Cover sheet required  3.28, 3.31

Corrections  3.34

Date of receipt is date of record  3.51

Definitions  1.332

Effect of recording  3.54

Fees  1.21(h)

Formal requirements  3.21-3.28

If recorded before payment of issue fee, patent may issue to assignee 
3.81

Must be recorded in Patent and Trademark Office to issue patent to
assignee  3.81

Must identify patent or application  3.21

Orders for copies of  1.12

Patent may issue to assignee  3.81

Recording of assignments  3.11

Records open to public inspection  1.12

Requirements for recording  3.21-3.41

What will be accepted for recording  3.11

Atomic energy applications reported to Department of Energy  1.14

Attorneys and agents:

Acting in representative capacity  1.33, 1.34

Assignment will not operate as a revocation of power  1.36

Associate  1.34

Certificate of good standing  1.21(a)

Fee on admission  1.21(a)

General powers not recognized  1.34

Office cannot aid in selection of  1.31

Personal interviews with examiners  1.133

Power of attorney or authorization of agent  1.34

Representative capacity  1.33, 1.34

Representing conflicting parties  1.613

Required to conduct business with decorum and courtesy  1.3

Revocation of power  1.36

Signature and certificate of attorney  1.4, 10.18

Withdrawal of  1.36

Authorization of agents. (See Attorneys and agents.)

Award in arbitration  1.335

---SECTION---Index B

Balance in deposit account  1.25

Basic filing fee  1.16

Benefit of earlier application  1.78

Bill in equity. (See Civil action.)

Biological material. (See Deposit of biological material.)

Board of Patent Appeals and Interferences. (See Appeal to Board of
Patent Appeals and Interferences.)

Box CPA  1.53(d)

Box PCT  1.1(b)

Box Reexam  1.1(c)

Briefs:

At final hearing in interference  1.656

In petitions to Commissioner  1.181

On appeal to Board  1.192

Business to be conducted with decorum and courtesy  1.3

Business to be transacted in writing  1.2

---SECTION---Index C

Certificate of correction  1.322, 1.323

Fees  1.20

Mistakes not corrected  1.325

Certificate of mailing (First Class) or transmission  1.8

Certificate, Reexamination  1.570

Certification effect of signature  1.4(d), 10.18

Certified copies of records, papers, etc.  1.4(f), 1.13

Fee for certification  1.19(b)

Chemical and mathematical formulae and tables  1.58

Citation of prior art in patent  1.501

Citation of references  1.104

Civil action  1.303, 1.304

Claims (See also Examination of applications):

Amendment of  1.121

Conflicting, same applicant or owner  1.78

Date of invention of  1.110

Dependent  1.75

Design patent  1.153

May be in dependent form  1.75

More than one permitted  1.75

Multiple dependent  1.75

Must conform to invention and specification  1.75

Notice of rejection of  1.104

Numbering of  1.126

Part of complete application  1.51

Plant patent.  1.164

Rejection of  1.104

Required  1.75

Separate sheet required for commencement of  1.52(b)

Twice or finally rejected before appeal  1.191

Color drawing  1.84(a)(2)

Commissioner of Patents and Trademarks (See also Petition to
Commissioner):

Address of  1.1

Cases decided by Board reopened only by  1.198

Initiates reexamination  1.520

Reissue in divisions referred to  1.177

Return of papers in violation of rule  1.3

Common ownership, statement by assignee may be required  1.78(c)

Complaints against examiners, how presented  1.3

Composition of matter, specimens of ingredients may be required  1.93

Computer program listings  1.96

Concurrent office proceedings  1.565

Conduct of reexamination proceedings  1.550

Conflicting claims, same applicant or owner in two or more applications 
1.78

Continued prosecution application  1.53(d)

Continuing application for invention disclosed and claimed in prior
application  1.53, 1.63

Control number, display of  1.419

Copies of patents, records, etc.  1.11, 1.12, 1.13

Copies of records, fees  1.19(b), 1.59

Copyright notice in specification  1.71(d)

Copyright notice on drawings  1.84(s)

Correction, certificate of  1.322, 1.323

Correction of inventorship  1.48, 1.324

Correspondence:

Address, only one recognized  1.33(c)

Address for all communications to the Office  1.1

Business with the Office to be transacted by  1.2

Discourteous communications returned  1.3

Double, with different parties in interest not allowed  1.33

Facsimile transmission  1.6(d)

Held with attorney or agent  1.33

Identification of application or patent in letter relating to  1.5

May be held exclusively with assignee of entire interest  3.81

Nature of  1.4

Patent owners in reexamination  1.33(c)

Receipt of letters and papers  1.6

Resumed with principal, if power or authorization is revoked  1.36

Rules for conducting in general  1.1-1.8

Separate letter for each subject of inquiry  1.4

Signature requirement  1.4(d)

When no attorney or agent  1.33

With attorney or agent after power or authorization is filed  1.33

Coupons sold by the Office  1.24

Court of Appeals for the Federal Circuit, appeal to. (See Appeal to
Court of Appeals for the Federal Circuit.)

---SECTION---Index D

Date of invention of subject matter of individual claims  1.110

Day for taking any action or paying any fee falling on Saturday, Sunday,
or Federal holiday  1.7

Death or insanity of inventor  1.42, 1.43

Decision by the Board of Patent Appeals and Interferences  1.196

Action following decision  1.197

Declaration (See also Oath in patent application):

Foreign language  1.69

In lieu of oath  1.68

In patent application  1.68

Definitions:

Federal holiday within the District of Columbia  1.9

Independent inventor  1.9

National and international applications  1.9

Nonprofit organization  1.9

Service of process  15 CFR Part 15

Small business concern  1.9

Small entity  1.9

Terms under Patent Cooperation Treaty  1.401

Testimony by employees  15 CFR Part 15a

Delivery of patent  1.315

Deposit accounts  1.25

Fees  1.21(b)

Deposit of biological material:

Acceptable depository  1.803

Biological material  1.801

Examination procedures  1.809

Furnishing of samples  1.808

Need or opportunity to make a deposit  1.802

Replacement or supplemental deposit  1.805

Term of deposit  1.806

Time of making original deposit  1.804

Viability of deposit  1.807

Deposit of computer program listings  1.96

Depositions (See also Testimony in interferences):

Certificate of officer to accompany  1.676

Formalities to be observed in preparing  1.677

Person before whom taken  1.674

To be sealed up, addressed, and forwarded to the Commissioner  1.676

When transcript must be filed  1.678

Description of invention. (See Specification.)

Design Patent Applications:

Arrangement of application elements  1.154

Claim  1.153

Drawing  1.152

(Design Patent Applications):

Filing fee  1.16(f)

Issue  1.155

Issue fee  1.18(b)

Oath  1.153

Rules applicable  1.151

Title, description and claim  1.153

Determination of request for reexamination  1.515

Disclaimer, statutory:

During interference  1.662(a)

Fee  1.20(d)

Requirements of  1.321

Terminal  1.321

Disclosure, amendments to add new matter not permitted  1.121

Disclosure document fee  1.21(c)

Discovery in interferences  1.672-1.688

Division. (See Restriction of application.)

Division of patent on reissue  1.177

Document supply fees  1.19

Drawing:

Amendment of  1.121

Arrangement of views  1.84(i)

Arrows  1.84(r)

Character of lines  1.84(l)

Color  1.84(a)(2)

Content of drawing  1.83

Copyright notice  1.84(s)

Correction  1.84(w), 1.85(c), 1.121

Cost of copies of  1.19

Design application  1.152

Figure for Official Gazette  1.84(j)

Filed with application  1.81

Graphics  1.84(d)

Hatching and shading  1.84(m)

Holes  1.84(x)

Identification  1.84(c)

If of an improvement, must show connection with old structure  1.83

Informal drawings  1.85

Ink  1.84(a)(1)

Lead lines  1.84(q)

Legends  1.84(o)

Letters  1.84(p)

Location of names  1.84(c)

Mask work notice  1.84(s)

Must be described in and referred to specification  1.74

Must show every feature of the invention  1.83

No return or release  1.85(b)

Numbering of sheets  1.84(t)

Numbering of views  1.84(u)

(Drawing):

Numbers  1.84(p)

Original may be used with application for reissue  1.174

Original should be retained by applicant  1.81(a)

Paper  1.84(e)

Part of application papers  1.52

Photographs  1.84(b)

Plant patent application  1.81, 1.165

Printed and published by Office when patented  1.84

Reference characters  1.74, 1.84(p)

Reissue  1.174

Release not permitted  1.85(b)

Required by law when necessary for understanding  1.81

Scale  1.84(k)

Security markings  1.84(v)

Shading  1.84(m)

Size of sheet and margins  1.84(f),(g)

Specific rules relating to preparation of drawings will be enforced 
1.85

Standards for drawings  1.84

Symbols  1.84(n)

Views  1.84(h)

When necessary, part of complete application  1.51

Duty of disclosure  1.56, 1.555

Patent term extension  1.765

---SECTION---Index E

Election of species  1.146

Employee testimony. (See Testimony by Office employees.)

Establishing small entity status  1.27, 1.28

Evidence. (See Testimony in interferences.)

Examination of applications:

Advancement of examination  1.102

As to form  1.104

Citation of references  1.104

Completeness of examiner's action  1.104

Examiner's action  1.104

International-type search  1.104

Nature of examination  1.104

Reasons for allowance  1.104

Reexamination after rejection if requested  1.111

Reexamination of original claims upon reissue  1.176

Reissue  1.176

Rejection of claims  1.104

Suspension of  1.103

Examination of papers by attorney or agent not permitted without
authorization  1.34

Examiners:

Answers on appeal  1.193

Complaints against  1.3

Interviews with  1.133

Executors  1.42, 1.44

Exhibits. (See Models and exhibits.)

Export of technical data  5.19, 5.20

Express abandonment  1.138

"Express Mail"  1.6, 1.10

Date of receipt of  1.6

Petition in regard to  1.10

Expungement  1.59

Extension of patent term due to prosecution delay (35 U.S.C. 154)  1.701

Extension of patent term due to regulatory review period (35 U.S.C.
156):

Applicant for  1.730

Application for  1.740

Calculation of term:

Animal drug product  1.778

Food or color additive  1.776

Human drug product  1.775

Medical device  1.777

Veterinary biological product  1.779

Certificate  1.780

Conditions for  1.720

Determination of eligibility  1.750

Duty of disclosure  1.765

Filing date of application  1.741

Interim extension under 35 U.S.C. 156(d)(5) . . . . . . . . . .1.790

Interim extension under 35 U.S.C. 156(e)(2)  1.760

Multiple applications  1.785

Patents subject to  1.710

Termination of interim extension granted under 35 U.S.C. 156(d)(5) . . .
. . . . . . . . . . . . . . . . . . . . . 1.791

Withdrawal of application  1.770

Extension of time  1.136

Fees  1.17

Interference proceedings  1.645

Reexamination proceedings  1.550(c)

---SECTION---Index F

Facsimile transmission  1.6(d), 1.8

Federal holiday within the District of Columbia  1.9(h)

Federal Register, publication of rules in  1.351

Fees and payment of money:

Coupons  1.24

Deposit accounts  1.25

Extension of time  1.17

Fee on appeal to the Court of Appeals for the Federal Circuit provided
by rules of court  1.301

Fees in case of petitions  1.181

(Fees and payment of money):

Fees payable in advance  1.22

Foreign filing license petition  1.17(h)

For international-type search report  1.21(e)

Method of payment  1.23

Money by mail at risk of sender  1.23

Money paid by mistake  1.26

Petitions  1.17

Reexamination request  1.20(c)

Refunds  1.26

Relating to international applications  1.445, 1.481

Schedule of fees and charges  1.16-1.21

Files and papers of abandoned applications, disposition  1.14

Files open to the public  1.11

Filing date of application  1.53

Filing fee part of complete application  1.51

Filing fees  1.16

Filing in Post Office  1.10

Filing of interference settlement agreements  1.666

Final rejection:

Appeal from  1.191

Response to  1.113, 1.116

When and how given  1.113

First Class Mail (includes Priority Mail and Express Mail)  1.8

Foreign application  1.55

License to file  5.11-5.25

Foreign country:

Taking oath in  1.66

Taking testimony in  1.671

Foreign mask work protection Part 150

Evaluation of request  150.4

Definition  150.1

Duration of proclamation  150.5

Initiation of evaluation  150.2

Mailing address  150.6

Submission of requests  150.3

Foreign patent rights acquired by government  101.1-101.11

Licensing  102.1-102.6

Formulas and tables in patent applications.  1.58

Fraud practiced or attempted on Office  1.56

---SECTION---Index G

Gazette. (See Official Gazette .)

General authorization to charge deposit account  1.25, 1.136

General information and correspondence  1.1-1.8

Government acquisition of foreign patent rights Part 501

Government employee invention Part 501

Government interest in patent, recording of  3.11, 3.27, 3.31, 3.41,
3.58

Governmental registers  3.58

Guardian of insane person may apply for patent  1.43

---SECTION---Index H

Hearings:

Before the Board of Patents Appeals and Interferences  1.194

Fee for appeal hearing  1.17

In disciplinary proceedings  10.144

Of motions in interferences  1.640

Holiday, time for action expiring on  1.6, 1.7

---SECTION---Index I

Identification of application, patent or registration  1.5

Independent inventor:

Definition  1.9

Status statement  1.27

Information disclosure statement:

At time of filing application  1.51

Content of  1.98

Not permitted in provisional applications  1.51

Reexamination  1.555

To comply with duty of disclosure  1.97

Information, Public  1.15

Insane inventor, application by guardian of  1.43

Interferences (See also Depositions, Motions in interferences, Notice,
Preliminary statement in interferences, Testimony in interferences):

Abandonment of the contest  1.662

Access to applications  1.612

Access to preliminary statement  1.631

Action by examiner after interference  1.664

Action if statutory bar appears  1.641, 1.659

Addition of new party by administrative patent judge.  1.642

Amendment during  1.615, 1.633, 1.634, 1.637

Appeal to the Court of Appeals for the Federal Circuit.  1.301, 1.302

Applicant requests  1.604

Arbitration  1.690

Briefs at final hearing  1.656

Burden of proof  1.657

Civil action  1.303

Claims copied from patent  1.606, 1.607

Claims of defeated parties stand finally disposed of  1.633

Concession of priority  1.662

Conflicting parties having same attorney  1.613

Copying claims from patent  1.606, 1.607

Correspondence  1.5(e)

(Interferences):

Declaration of interference  1.611

Definition  1.601

Disclaimer to avoid interference  1.662(a)

Discovery  1.671, 1.688

Dissolution of  1.633

Dissolution on motion of judge  1.641

Extension of time  1.645

Failure of junior party to take testimony  1.652

Failure to prepare for  1.603-1.606

Final decision  1.658

Final hearing  1.654

Final hearing briefs  1.656

Identifying claim from patent  1.607(a)(3), 1.637(e)(1)(vi)

In what cases declared  1.601, 1.602

Inspection of cases of opposing parties  1.612

Interference with a patent  1.606-1.608

Junior party fails to overcome filing date of senior party  1.640

Jurisdiction of interference  1.614

Manner of service of papers  1.646

Matters considered in rendering final decision  1.655

Motions  1.633-1.638

NAFTA Country  1.601(r)

Nonpatentability argued at final hearing  1.655

Notice and access to applications of opposing parties  1.612

Notice of intent to argue abandonment  1.632

Notice of reexamination, reissue, protest, or litigation  1.660

Notice to file civil action  1.303

Notices and statements  1.611

Order to show cause, judgment on the record  1.640

Ownership of applications or patents involved  1.602

Petitions  1.644

Preliminary statement  1.621-1.631

Preparation for  1.603-1.609

Presumption as to order of invention  1.657

Prosecution by assignee  1.643

Recommendation by Board of Patent Appeals and Interferences  1.659

Records and exhibits  1.653

Records of, when open to public  1.11

Reissue filed by patentee during  1.662

Requests by applicants  1.604

Requests for findings of fact and conclusions of law  1.656

Return of unauthorized papers  1.618

Review of decision by civil action  1.303

(Interferences):

Same party  1.602

Sanctions for failure to comply with rules of order  1.616

Sanctions for taking and maintaining a frivolous position  1.616

Second interference between same parties  1.665

Secrecy order cases  5.3(b)

Service of papers  1.646

Statement of, from examiner to Board  1.609

Status of claims of defeated applicant after interference  1.663

Statutory disclaimer by patentee during  1.662

Suggestion of claims for interference  1.605

Summary judgment  1.617

Suspension of ex parte prosecution  1.615

Termination of interference  1.661

Testimony copies  1.653

Time period for completion  1.610

Times for discovery and taking testimony  1.651

Translation of document in foreign language  1.647

International application. (See Patent Cooperation Treaty.)

International Preliminary Examining Authority  1.416

Interview summary  1.133

Interviews with examiner  1.133, 1.560

Inventor (See also Applicant for patent, Oath in patent application):

Death or insanity of  1.42, 1.43

Refuses to sign application  1.47

To make application  1.41

Unavailable  1.47

Inventor's certificate priority benefit  1.55

Inventorship and date of invention of the subject matter of individual
claims  1.110

Issue fee  1.18

Issue of patent. (See Allowance and issue of patent.)

---SECTION---Index J

Joinder of inventions in one application  1.141

Joint inventors  1.45, 1.47, 1.324

Joint patent to inventor and assignee  1.46, 3.81

Jurisdiction:

After decision by Board of Patent Appeals and Interferences  1.197,
1.198

After notice of allowance  1.312

Of contested case  1.614

---SECTION---Index L

Lapsed patents  1.317

Legal representative of deceased or incapacitated inventor  1.42-1.43

Legibility of papers  1.52

Letters to the Office. (See Correspondence.)

Library service fee  1.19(c)

License and assignment of government interest in patent  3.11, 3.27,
3.31, 3.41

License for foreign filing  5.11-5.15

List of U.S. patents classified in a subclass, cost of  1.19(d)

Local delivery box rental  1.21(d)

---SECTION---Index M

Maintenance fees  1.20

Acceptance of delayed payment of  1.378

Fee address for  1.363

Review of decision refusing to accept  1.377

Submission of  1.366

Time for payment of  1.362

Mask work notice in specification  1.71(s)

Mask work notice on drawing  1.84(s)

Mask work protection, foreign Part 150

Microfiche deposit  1.96

Microorganisms. (See Deposit of biological material.)

Minimum balance in deposit accounts  1.25

Misjoinder of inventor  1.48, 1.324

Missing pages when application filed  1.53(e)

Mistake in patent, certificate thereof issued  1.322, 1.323

Models and exhibits:

Copies of  1.95

If not claimed within reasonable time, may be disposed of by
Commissioner  1.94

If on examination model found necessary request therefor will be made 
1.91

In contested cases  1.676

May be required  1.91

Model not generally admitted in application or patent  1.91

Not to be taken from the Office except in custody of sworn employee 
1.95

Return of  1.94

Working model may be required  1.91

Money. (See Fees and payment of money.)

Motions in interference  1.633-1.637

To take testimony in foreign country  1.671

---SECTION---Index N

Name of applicant.  1.41

New matter inadmissible in application  1.121

New matter inadmissible in reexamination  1.530(d), 1.552(b)

New matter inadmissible in reissue  1.173

Non-English language specification fee  1.17(k)

Nonprofit organization:

Definition  1.9

Status statement  1.27

Notice:

Of allowance of application  1.311

Of appeal to the Court of Appeals for the Federal Circuit  1.301, 1.302

Of arbitration award  1.335

Of defective reexamination request  1.510(c)

Of interference  1.611

Of oral hearings before the Board of Patent Appeals and Interferences 
1.194

Of rejection of an application  1.104

Of taking testimony  1.673

Of use of official records as evidence  1.682

To conflicting parties with same attorney or agent  1.613

To parties in interference cases  1.611

Nucleotide and/or amino acid sequences:

Amendments to  1.825

Disclosure in patent applications  1.821

Form and format for computer readable form  1.824

Format for sequence data  1.822

Replacement of  1.825

Requirements  1.823

Symbols  1.822

---SECTION---Index O

Oath in patent application. (See also Declaration):

Apostilles  1.66

Before whom taken in foreign countries  1.66

Before whom taken in United States  1.66

By administrator or executor  1.42, 1.63

By guardian of insane person  1.43, 1.63

Certificate of Officer administering  1.66

Continuation-in-part  1.63(e)

Declaration  1.68

Foreign language  1.69

International application  1.497

Inventor's Certificate  1.63

Made by inventor  1.41, 1.63

Officers authorized to administer oaths  1.66

Part of complete application  1.51

Person making  1.64

Plant patent application  1.162

Requirements of  1.63

Ribboned to other papers  1.66

Sealed  1.66

Signature to  1.63

(Oath in patent application):

Supplemental oath for matter disclosed but not originally claimed  1.67

To acknowledge duty of disclosure  1.63

When taken abroad to seal all papers  1.66

Oath or declaration in reissue application  1.175

Oath or declaration

Plant patent application  1.162

When international application enters national stage  1.497

Object of the invention  1.73

Office action time for reply  1.134

Office fees. (See Fees and payment of money.)

Official action, based exclusively upon the written record  1.2

Official business, should be transacted in writing  1.2

Official Gazette:

Amendments to rules published in  1.351

Notice of filing application to nonsigning inventor  1.47

One view of drawing published in  1.84

Reexamination order published in if returned undelivered  1.525(b)

Service of notices in  1.646

Oral statements  1.2

Order to reexamine  1.525

---SECTION---Index P

Papers (requirements to become part of Office permanent records)  1.52

Papers not received on Saturday, Sunday, or holidays  1.6

Patent application. (See Application for patent and Provisional patent
applications.)

Patent attorneys and agents. (See Attorneys and agents.)

Patent Cooperation Treaty:

Amendments and corrections during international processing  1.471

Amendments during international preliminary examination  1.485

Applicant for international application  1.421

Changes in person, name or address, where filed  1.421(f), 1.472

Conduct of international preliminary examination  1.484

Definition of terms  1.401

Delays in meeting time limits  1.468

Demand for international preliminary examination  1.480

(Patent Cooperation Treaty):

Designation of States  1.432

Entry into national stage  1.491

As a designated office  1.494

As an elected office  1.495

Examination at national stage  1.496

Fees:

Designation fees  1.432

Due on filing of international application.  1.431(c)

Failure to pay results in withdrawal of application  1.431(d), 1.432

Filing, processing and search fees  1.445

International preliminary examination  1.481, 1.482

National stage  1.492

Refunds  1.446

Filing by other than inventor  1.425

International application requirements  1.431

Abstract  1.438

Claims  1.436

Description  1.435

Drawings  1.437

Physical requirements  .1.433

Request.  1.434

International Bureau  1.415

International Preliminary Examining Authority  1.416

Inventor deceased  1.422

Inventor insane or legally incapacitated  1.423

Inventors, joint  1.424

National stage examination  1.496

Oath or declaration at national stage  1.497

Priority, claim for  1.451

Record copy to International Bureau, transmittal procedures  1.461

Representation by attorney or agent  1.455

Time limits for processing applications  1.465, 1.468

United States as:

Designated Office  1.414, 1.497

International Searching Authority  1.413

Receiving Office  1.412

Unity of invention:

Before International Searching Authority  1.475, 1.476

Before International Preliminary Examining Authority  1.487, 1.488

National stage  1.475, 1.499

Protest to lack of  1.477, 1.489

Patent policy, government  100.1-100.11

Patentee notified of interference  1.602

Patents (See also Allowance and issue of patent):

Available for license or sale, publication of notice  1.21(i)

Certified copies of  1.13

(Patents):

Copying claims of  1.606, 1.607

Correction of errors in  1.171, 1.322, 1.323, 1.324

Delivery of  1.315

Disclaimer  1.321

Identification required in letters concerning  1.5

Lapsed, for nonpayment of issue fee  1.317

Obtainable by civil action  1.303

Price of copies  1.19

Records of, open to public  1.11

Reissuing of, when defective  1.171-1.179

Payment of fees  1.23

Personal attendance unnecessary  1.2

Petition for reissue  1.171, 1.172

Petition to Commissioner:

Fees  1.17

For delayed payment of issue fee  1.137

For expungement and return of papers  1.59

For extension of time  1.136

For license for foreign filing  5.12

For the revival of an abandoned application  1.137

From formal objections or requirements  1.113, 1.181

From requirement for restriction  1.129, 1.144

General requirements  1.181

In interferences  1.644

In reexamination  1.515(c)

On refusal of examiner to admit amendment  1.127

Questions not specifically provided for  1.182

Suspension of rules  1.183

To exercise supervisory authority  1.181

To make special  1.102

Upon objection that appeal is informal.  1.193

Photographs  1.84(b), 1.152

Plant patent applications:

Applicant  1.162

Claim  1.164

Declaration  1.162

Description  1.162

Drawings  1.165

Examination  1.167

Fee for copies  1.19

Filing fee  1.16(g)

Issue fee  1.18(c)

Oath  1.162

Rules applicable  1.161

Specification  1.163

Specimens  1.166

Post issuance fees  1.20

Post Office receipt as filing date  1.10

Postal emergency or interruption  1.6(e)

Power of attorney. (See Attorneys or agents.)

Preliminary Examining Authority, International  1.416

Preliminary statement in interferences:

Access to  1.631

Contents to  1.622-1.627

Contents of, invention made in other than United States, a NAFTA
country, or a WTO member country  1.624

Correction of statement on motion  1.628

Effect of statement  1.629

Failure to file  1.639, 1.640

In case of motion to amend interference  1.633

May be amended if defective  1.628

Reliance on prior application  1.626, 1.630

Requirement for  1.621

Sealed before filing.  1.627

Service on opposing parties  1.621

Subsequent testimony alleging prior dates excluded  1.629

When opened to inspection  1.631

Preserved in confidence, applications  1.12, 1.14

Exceptions (status, access or copies available)  1.14

Printing testimony  1.653

Prior art citation in patent  1.501

Prior art may be made of record in patent file  1.501

Prior art statement:

Content of  1.98

In reexamination  1.555

To comply with duty of disclosure.  1.97

Prior invention, affidavit or declaration of to overcome reference 
1.130, 1.131

Priority, right of, under treaty or law  1.55

Processing and retention fee  1.21(l), 1.53(f)

Proclamation as to protection of foreign mask works Part 150

Protests to grants of patent  1.291

Provisional patent applications:

Claiming the benefit of  1.78

Converting a nonprovisional to a provisional  1.53(c)

Filing date  1.53(c)

Filing fee  1.16(k)

General requisites  1.51(c)

Later filing of fee and cover sheet  1.53(g)

Names of all inventors required  1.41

No right of priority  1.53(c)

No examination  1.53(i)

Papers concerning, should identify provisional application as such, by
application number  1.5(f)

Parts of complete provisional application  1.51(c)

Processing fees  1.17

Revival of  1.137

When abandoned  1.53(i)

Public Information  1.15

Public use proceedings  1.292

Fee  1.17(j)

Publication of reexamination certificate  1.570(f)

---SECTION---Index R

Reasons for allowance  1.104

Reconsideration of Office action  1.112

Recording of assignments. (See Assignments and recording.)

Records of the Patent and Trademark Office  1.11-1.15

Records used as evidence in interference  1.682

Reexamination:

Amendments, manner of making  1.530(d)

Announcement in O.G  1.11(c)

Appeal to Board  1.191

Appeal to C.A.F.C.  1.301

Certificate  1.570

Civil action  1.303

Concurrent office proceedings  1.565

Conduct of proceedings.  1.550

Correspondence address  1.33(c)

Decision of request  1.515

Duty of disclosure  1.555

Examiner's action.  1.104

Fee  1.20(c)

Fee charged to deposit account  1.25

Fee refund  1.26

Identification in letter  1.5(d)

Initiated by Commissioner  1.520

Interference  1.565

Interviews  1.560

Open to public  1.11(d)

Order  1.525

Reconsideration  1.112

Refund of fee  1.26

Reply by requester  1.535

Reply to action  1.111

Request  1.510

Response consideration  1.540

Scope  1.552

Service  1.248

Statement of patent owner  1.530

Reference characters in drawings  1.74, 1.84(p)

References cited on examination  1.104

Refund of money paid by mistake  1.26

Register of Government interest in patents  3.58

Rehearing:

On appeal to Board  1.197

Request for, time for appeal after action on  1.304

Reissues:

Applicants, assignees  1.172

Application for reissue  1.171

(Reissues):

Application made and sworn to by inventor, if living  1.172

Declaration  1.175

Drawings  1.174

Examination of reissue  1.176

Filed during interference  1.662(b)

Filed during reexamination  1.565

Filing fee  1.16

Filing of announcement in Official Gazette  1.11

Grounds for and requirements  1.171-1.179

Issue fee  1.18(a)

Loss of original patent  1.178

Notice of reissue application  1.179

Oath  1.175

Open to public  1.11

Original claims subject to reexamination  1.176

Original patent surrendered  1.178

Reissue in divisions  1.177

Specification  1.173

Take precedence in order of examination  1.176

To contain no new matter  1.173

What must accompany application  1.171, 1.172

When in interference  1.660

Rejection:

After two rejections appeal may be taken from examiner to Board  1.191

Applicant will be notified of rejection with reasons and references 
1.104

Based on commonly owned prior art, how overcome  1.130

Examiner may rely on admissions by applicant or patent owner, or facts
within examiner's knowledge  1.104

Final  1.113

Formal objections  1.104

On account of invention shown by others but not claimed, how overcome 
1.131

References will be cited.  1.104

Requisites of notice of  1.104

Reply brief  1.193

Reply by requester  1.535

Reply to Office action:

Abandonment for failure to  1.135

By applicant or patent owner  1.111

Substantially complete  1.135

Time for  1.134

Representative capacity  1.34(a)

Request for reconsideration  1.112

Request for reexamination  1.510

Reservation clauses not permitted  1.79

Restriction of application.  1.141-1.146

Claims to nonelected invention withdrawn  1.142

(Restriction of application):

Constructive election  1.145

Petition from requirements for  1.129, 1.144

Provisional election  1.143

Reconsideration of requirement  1.143

Requirement for  1.142

Subsequent presentation of claims for different invention  1.145

Retention fee  1.21(l), 1.53(f)

Return of correspondence  1.5(a)

Return of papers having a filing date  1.59

Revival of abandoned application  1.137

Unavoidable abandonment fee  1.17(l)

Unintentional abandonment fee  1.17(m)

Revocation of power of attorney or authorization of agent  1.36

Rules of Practice:

Amendments to rules will be published  1.351

---SECTION---Index S

Saturday, when last day falls on  1.7

Scope of reexamination proceedings  1.552

Secrecy order  5.2-5.5

Sequences:

Amendments to sequence listing and computer readable copy  1.825

Disclosure requirements  1.821, 1.823

Sequence data, symbols and format  1.822

Submissions in computer readable form  1.824

Serial number of application  1.5

Service of notices:

For taking testimony  1.673

In interference cases  1.611

Of appeal to the U.S. Court of Appeals for the Federal Circuit  1.301

Service of papers  1.248

Service of process  15 CFR Part 15

Shortened period for reply  1.134

Signature:

Implicit certifications  1.4(d), 10.18

Of attorney or agent  10.18

To amendments, etc.  1.33

To express abandonment  1.138

To oath  1.63

To reissue oath or declaration  1.172

When copy is acceptable  1.4

Small business concern:

Definition  1.9

Status statement  1.27

Small entity:

Definition  1.9

License to Federal agency  1.27

(Small entity):

Statement  1.27

Statement in parent application  1.28

Status establishment  1.27, 1.28

Status update  1.28

Solicitor's address  1.1(a)

Species of invention claimed  1.141, 1.146

Specification (See also Application for patent, Claims):

Abstract  1.72

Amendments to  1.121, 1.125

Arrangement of  1.77, 1.154, 1.163

Best mode  1.71

Claim  1.75

Contents of  1.71-1.75

Copyright notice  1.71(d)

Cross-references to other applications  1.78

Description of the invention  1.71

If defective, reissue to correct  1.171-1.179

Mask work notice  1.71(d)

Must conclude with specific and distinct claim  1.75

Must point out new improvements specifically  1.71

Must refer by figures to drawings  1.74

Must set forth the precise invention  1.71

Not returned after completion  1.59

Object of the invention  1.73

Order of arrangement in framing  1.77

Paper, writing, margins  1.52

Part of complete application  1.51

Reference to drawings  1.74

Requirements of  1.71-1.75

Reservation clauses not permitted  1.79

Substitute  1.125

Summary of the invention  1.73

Title of the invention  1.72

To be rewritten, if necessary  1.125

Specimens. (See Models and exhibits.)

Specimens of composition of matter to be furnished when required  1.93

Specimens of plants  1.166

Statement of status as small entity  1.27

Statutory disclaimer fee  1.20(d)

Statutory invention registrations  1.293

Examination.  1.294

Publication of  1.297

Review of decision finally refusing to publish  1.295

Withdrawal of request for publication of  1.296

Sufficient funds in deposit account  1.25

Suit in equity. (See Civil action.)

Summary of invention  1.73

Sunday, when last day falls on  1.7

Supervisory authority, petition to Commissioner to exercise  1.181

Supplemental oath for amendment presenting claims for matter disclosed
but not originally claimed  1.67

Surcharge for oath or basic filing fee filed after filing date  1.16(e),
1.53(f)

Suspension of action  1.103

Suspension of ex parte prosecution during interference  1.615

Suspension of rules  1.183

Symbols for drawings  1.84(n)

Symbols for nucleotide and/or amino acid sequence data  1.822

---SECTION---Index T

Tables in patent applications  1.58

Terminal disclaimer  1.321

Testimony by Office employees  15 CFR Part 15a

Testimony in interferences:

Additional time for taking  1.645

Assignment of times for taking  1.651

Certification and filing by officer  1.676

Copies of  1.653

Depositions must be filed  1.678

Discovery  1.687

Effect of errors and irregularities in deposition  1.685

Evidence must comply with rules  1.671

Examination of witnesses  1.675

Failure to take  1.652

Form of deposition  1.677

Formal objections to  1.685

Formalities in preparing depositions  1.674-1.677

In foreign countries  1.671

Inspection of testimony  1.679

Manner of taking testimony of witnesses  1.672

Motion to extend time for taking  1.645

Not considered if not taken and filed in compliance with rules  1.671

Notice of examination of witnesses  1.673

Notice of intent to use records  1.671(e), 1.682

Objections noted in depositions  1.675

Objections to formal matters  1.685

Official records and printed publications  1.682

Officer's certificate  1.676

Persons before whom depositions may be taken  1.674

Printing of  1.653

Service of notice  1.673

Stipulations or agreements concerning  1.672

Taken by depositions  1.672

Testimony taken in another interference or action, use of  1.683

Time for taking  1.651

To be inspected by parties to the case only  1.679

(Testimony in interferences):

Weight of deposition testimony taken in a foreign country  1.671(j)

Time expiring on Saturday, Sunday, or holiday  1.7

Time for payment of issue fee  1.311

Time for reply by applicant  1.134, 1.135, 1.136

Time for reply to Office action  1.134, 1.136

Time for response by patent owner  1.530

Time for response by requester  1.535

Time, periods of  1.7

Timely filing of correspondence  1.8, 1.10

Title of invention  1.72

Title reports, fee for  1.19(b)(4)

Transitional procedures  1.129

---SECTION---Index U

Unavoidable abandonment  1.137

Unintentional abandonment  1.137

United States as

Designated Office  1.414, 1.497

Elected Office  1.414

International Preliminary Examining Authority  1.416

International Searching Authority  1.413

Receiving Office  1.412

Unsigned continuation or divisional application  1.53, 1.63

Use of file of parent application  1.53(d)

---SECTION---Index W

Waiver of confidentiality  1.53(d)(6)

Withdrawal from issue  1.313

Withdrawal of attorney or agent  1.36

Withdrawal of request for statutory invention registration  1.296

---SECTION---PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

---SECTION---REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK
OFFICE

---SECTION---10.1 Definitions.

This part governs solely the practice of patent, trademark, and other
law before the Patent and Trademark Office. Nothing in this part shall
be construed to preempt the authority of each State to regulate the
practice of law, except to the extent necessary for the Patent and
Trademark Office to accomplish its federal objectives. Unless otherwise
clear from the context, the following definitions apply to this part:

Affidavit means affidavit, declaration under 35 U.S.C. 25 (see Section 
1.68 and Section  2.20 of this subchapter), or statutory declaration
under 28 U.S.C. 1746.

Application includes an application for a design, plant, or utility
patent, an application to reissue any patent, and an application to
register a trademark.

Attorney or lawyer means an individual who is a member in good standing
of the bar of any United States court or the highest court of any State.
A "non-lawyer" is a person who is not an attorney or lawyer.

Canonis defined in Section  10.20(a).

Confidence is defined in Section  10.57(a).

Differing interests include every interest that may adversely affect
either the judgment or the loyalty of a practitioner to a client,
whether it be a conflicting, inconsistent, diverse, or other interest.

Director means the Director of Enrollment and Discipline.

Disciplinary Rule is defined in Section  10.20(b).

Employee of a tribunal includes all employees of courts, the Office, and
other adjudicatory bodies.

Giving information within the meaning of Section  10.23(c) (2) includes
making (1) a written statement or representation or (2) an oral
statement or representation.

Law firm includes a professional legal corporation or a partnership.

Legal counsel means practitioner.

Legal profession includes the individuals who are lawfully engaged in
practice of patent, trademark, and other law before the Office.

Legal service means any legal service which may lawfully be performed by
a practitioner before the Office.

Legal System includes the Office and courts and adjudicatory bodies
which review matters on which the Office has acted.

Office means Patent and Trademark Office.

Person includes a corporation, an association, a trust, a partnership,
and any other organization or legal entity.

Practitioner means (1) an attorney or agent registered to practice
before the Office in patent cases or (2) an individual authorized under
5 U.S.C. 500(b) or otherwise as provided by this subchapter, to practice
before the Office in trademark cases or other non-patent cases. A
"suspended or excluded practitioner" is a practitioner who is suspended
or excluded under Section  10.156. A "non-practitioner" is an individual
who is not a practitioner.

A proceeding before the Office includes an application, a reexamination,
a protest, a public use proceeding, a patent interference, an inter
partes trademark proceeding, or any other proceeding which is pending
before the Office.

Professional legal corporation means a corporation authorized by law to
practice law for profit.

Registration means registration to practice before the Office in patent
cases.

Respondent is defined in Section 10.134(a)(1).

Secret is defined in Section 10.57(a).

Solicit is defined in Section 10.33.

Stateincludes the District of Columbia, Puerto Rico, and other federal
territories and possessions.

Tribunal includes courts, the Office, and other adjudicatory bodies.

United States means the United States of America, its territories and
possessions.

[Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.2 Director of Enrollment and Discipline.

Appointment.The Commissioner shall appoint a Director of Enrollment and
Discipline. In the event of the absence of the Director or a vacancy in
the Office of the Director, the Commissioner may designate an employee
of the Office to serve as acting Director of Enrollment and Discipline.
The Director and any acting Director shall be an active member in good
standing of the bar of a State.

Duties. The Director shall:

Receive and act upon applications for registration, prepare and grade
the examination provided for in Section 10.7(b), maintain the register
provided for in Section 10.5, and perform such other duties in
connection with enrollment and recognition of attorneys and agents as
may be necessary.

Conduct investigations into possible violations by practitioners of
Disciplinary Rules, with the consent of the Committee on Discipline
initiate disciplinary proceedings under Section  10.132(b), and perform
such other duties in connection with investigations and disciplinary
proceedings as may be necessary.

Review of Director's decision. Any final decision of the Director
refusing to register an individual under Section  10.6, recognize an
individual under Section  10.9 or Section  10.14(c), or reinstate a
suspended or excluded petitioner under Section  10.160, may be reviewed
by petition to the Commissioner upon payment of the fee set forth in
Section  1.21(a)(5). A petition filed more than 30 days after the date
of the decision of the Director may be dismissed as untimely. Any
petition shall contain (1) a statement of the facts involved and the
points to be reviewed and (2) the action requested. Briefs or memoranda,
if any, in support of the petition shall accompany or be embodied
therein. The petition will be decided on the basis of the record made
before the Director and no new evidence will be considered by the
Commissioner in deciding the petition. Copies of documents already of
record before the Director shall not be submitted with the petition. An
oral hearing on the petition will not be granted except when considered
necessary by the Commissioner.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.3 Committee on Enrollment.

The Commissioner may establish a Committee on Enrollment composed of one
or more employees of the Office.

The Committee on Enrollment shall, as necessary, advise the Director in
connection with the Director's duties under Section 10.2(b)(1).

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.4 Committee on Discipline.

The Commissioner shall appoint a Committee on Discipline. The Committee
on Discipline shall consist of at least three employees of the Office,
none of whom reports directly or indirectly to the Director or the
Solicitor. Each member of the Committee on Discipline shall be a member
in good standing of the bar of a State.

The Committee on Discipline shall meet at the request of the Director
and after reviewing evidence presented by the Director shall, by
majority vote, determine whether there is probable cause to bring
charges under Section 10.132 against a practitioner. When charges are
brought against a practitioner, no member of the Committee on
Discipline, employee under the direction of the Director, or associate
solicitor or assistant solicitor in the Office of Solicitor shall
participate in rendering a decision on the charges.

No discovery shall be authorized of, and no member of the Committee on
Discipline shall be required to testify about, deliberations of the
Committee on Discipline.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.5 Register of attorneys and agents in patent cases.

A register of attorneys and agents is kept in the Office on which are
entered the names of all individuals recognized as entitled to represent
applicants before the Office in the preparation and prosecution of
applications for patent. Registration in the Office under the provisions
of this part shall only entitle the individuals registered to practice
before the Office in patent cases.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.6 Registration of attorneys and agents.

Attorneys. Any citizen of the United States who is an attorney and who
fulfills the requirements of this part may be registered as a patent
attorney to practice before the Office. When appropriate, any alien who
is an attorney, who lawfully resides in the United States, and who
fulfills the requirements of this part may be registered as a patent
attorney to practice before the Office, provided: Registration is not
inconsistent with the terms upon which the alien was admitted to, and
resides in, the United States and further provided: The alien may remain
registered only (1) if the alien continues to lawfully reside in the
United States and registration does not become inconsistent with the
terms upon which the alien continues to lawfully reside in the United
States or (2) if the alien ceases to reside in the United States, the
alien is qualified to be registered under paragraph (c) of this section.
See also Section  10.9(b).

Agents. Any citizen of the United States who is not an attorney and who
fulfills the requirements of this part may be registered as a patent
agent to practice before the Office. When appropriate, any alien who is
not an attorney, who lawfully resides in the United States, and who
fulfills the requirements of this part may be registered as a patent
agent to practice before the Office, provided: Registration is not
inconsistent with the terms upon which the alien was admitted to, and
resides in, the United States, and further provided: The alien may
remain registered only (1) if the alien continues to lawfully reside in
the United States and registration does not become inconsistent with the
terms upon which the alien continues to lawfully reside in the United
States or (2) if the alien ceases to reside in the United States, the
alien is qualified to be registered under paragraph (c) of this section.
See also Section  10.9(b).

NOTE: All individuals registered prior to November 15, 1938, were
registered as attorneys, whether they were attorneys or not, and such
registrations have not been changed.

Foreigners. Any foreigner not a resident of the United States who shall
file proof to the satisfaction of the Director that he or she is
registered and in good standing before the patent office of the country
in which he or she resides and practices and who is possessed of the
qualifications stated in Section 10.7, may be registered as a patent
agent to practice before the Office for the limited purpose of
presenting and prosecuting patent applications of applicants located in
such country, provided: The patent office of such country allows
substantially reciprocal privileges to those admitted to practice before
the United States Patent and Trademark Office. Registration as a patent
agent under this paragraph shall con tinue only during the period that
the conditions specified in this paragraph obtain.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; paras. (d) &
(e) removed 53 FR 38948, Oct. 4, 1988, effective Nov. 4, 1988]

---SECTION---10.7 Requirements for registration.

No individual will be registered to practice before the Office unless he
or she shall:

Apply to the Commissioner in writing on a form supplied by the Director
and furnish all requested information and material and

Establish to the satisfaction of the Director that he or she is:

Of good moral character and repute;

Possessed of the legal, scientific, and technical qualifications
necessary to enable him or her to render applicants valuable service;
and

Is otherwise competent to advise and assist applicants for patents in
the presentation and prosecution of their applications before the
Office.

In order that the Director may determine whether an individual seeking
to have his or her name placed upon the register has the qualifications
specified in paragraph (a) of this section, satisfactory proof of good
moral character and repute and of sufficient basic training in
scientific and technical matters must be submitted to the Director.
Except as provided in this paragraph, each applicant for registration
must take and pass an examination which is held from time to time. Each
application for admission to take the examination for registration must
be accompanied by the fee set forth in Section  1.21(a)(1) of this
subchapter. The taking of an examination may be waived in the case of
any individual who has actively served for at least four years in the
patent examining corps of the Office. The examination will not be
administered as a mere academic exercise.

Within two months from the date an applicant is notified that heor she failed an examination, the applicant may request regrading of the
examination upon payment of the fee set forth in Section  1.21(a)(6).
Any applicant requesting regrading shall particularly point out the
errors which the applicant believed occurred in the grading of his or
her examination.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.8 Oath and registration fee.

Before an individual may have his or her name entered on the register of
attorneys and agents, the individual must, after his or her application
is approved, subscribe and swear to an oath or make a declaration
prescribed by the Commissioner and pay the registration fee set forth in
Section  1.21(a)(2) of this subchapter.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.9 Limited recognition in patent cases.

Any individual not registered under Section  10.6 may, upon a showing of
circumstances which render it necessary or justifiable, be given limited
recognition by the Director to prosecute as attorney or agent a
specified application or specified applications, but limited recognition
under this paragraph shall not extend further than the application or
applications specified.

When registration of a resident alien under paragraphs (a) or (b) of
Section  10.6 is not appropriate, the resident alien may be given
limited recognition as may be appropriate under paragraph (a) of this
section.

An individual not registered under Section  10.6 may, if appointed by
applicant to do so, prosecute an international application only before
the U.S. International Searching Authority and the U.S. International
Preliminary Examining Authority, provided: The individual has the right
to practice before the national office with which the international
application is filed (PCT Art. 49, Rule 90 and Section  1.455) or before
the International Bureau when acting as Receiving Office pursuant to PCT
Rules 83.1bisand 90.1.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985; para. (c)
added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c)
amended, 60 FR 21438, May 2, 1995, effective June 1, 1995]

---SECTION---10.10 Restrictions on practice in patent cases.

Only practitioners who are registered under Section  10.6 or individuals
given limited recognition under Section  10.9 will be permitted to
prosecute patent applications of others before the Office.

No individual who has served in the patent examining corps of the Office
may practice before the Office after termination of his or her service,
unless he or she signs a written undertaking,

Not to prosecute or aid in any manner in the prosecution of any patent
application pending in any patent examining group during his or her
period of service therein and

Not to prepare or prosecute or to assist in any manner in the
preparation or prosecution of any patent application of another (i)
assigned to such group for examination and (ii) filed within two years
after the date he or she left such group, without written authorization
of the Director. Associated and related classes in other patent
examining groups may be required to be included in the undertaking or
designated classes may be excluded from the undertaking. When an
application for registration is made after resignation from the Office,
the applicant will not be registered if he or she has prepared or
prosecuted or assisted in the preparation or prosecution of any patent
application as indicated in the paragraph. Knowingly preparing or
prosecuting or providing assistance in the preparation or prosecution of
any patent application contrary to the provisions of this paragraph
shall constitute misconduct under Section  10.23(c)(13) of this part.

A practitioner who is an employee of the Office cannot prosecute or aid
in any manner in the prosecution of any patent application before the
Office.

Practice before the Office by Government employees is subject to any
applicable conflict of interest laws, regulations or codes of
professional responsibility.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; revised 53 FR
38950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 41278, Oct.
20, 1988]

---SECTION---10.11 Removing names from the register.

Registered attorneys and agents shall notify the Director of any change
of address. Any notification to the Director of any change of address
shall be separate from any notice of change of address filed in
individual applications.

A letter may be addressed to any individual on the register, at the
address of which separate notice was last received by the Director, for
the purpose of ascertaining whether such individual desires to remain on
the register. The name of any individual failing to reply and give any
information requested by the Director within a time limit specified will
be removed from the register and the names of individuals so removed
will be published in the Official Gazette. The name of any individual so
removed may be reinstated on the register as may be appropriate and upon
payment of the fee set forth in Section  1.21(a)(3) of this subchapter.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.12 - 10.13 [Reserved]

---SECTION---10.14 Individuals who may practice before the Office in
trademark and other non-patent cases.

Attorneys. Any individual who is an attorney may represent others before
the Office in trademark and other non-patent cases. An attorney is not
required to apply for registration or recognition to practice before the
Office in trademark and other non-patent cases.

Non-lawyers. Individuals who are not attorneys are not recognized to
practice before the Office in trademark and other non-patent cases,
except that individuals not attorneys who were recognized to practice
before the Office in trademark cases under this chapter prior to January
1, 1957, will be recognized as agents to continue practice before the
Office in trademark cases.

Foreigners. Any foreign attorney or agent not a resident of the United
States who shall prove to the satisfaction of the Director that he or
she is registered or in good standing before the patent or trademark
office of the country in which he or she resides and practices, may be
recognized for the limited purpose of representing parties located in
such country before the Office in the presentation and prosecution of
trademark cases, provided: The patent or trademark office of such
country allows substantially reciprocal privileges to those permitted to
practice in trademark cases before the United States Patent and
Trademark Office. Recognition under this paragraph shall continue only
during the period that the conditions specified in this paragraph
obtain.

Recognition of any individual under this section shall not be construed
as sanctioning or authorizing the performance of any act regarded in the
jurisdiction where performed as the unauthorized practice of law.

No individual other than those specified in paragraphs (a), (b), and (c)
of this section will be permitted to practice before the Office in
trademark cases. Any individual may appear in a trademark or other
non-patent case in his or her own behalf. Any individual may appear in a
trademark case for (1) a firm of which he or she is a member or (2) a
corporation or association of which he or she is an officer and which he
or she is authorized to represent, if such firm, corporation, or
association is a party to a trademark proceeding pending before the
Office.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.15 Refusal to recognize a practitioner.

Any practitioner authorized to appear before the Office may be suspended
or excluded in accordance with the provisions of this part. Any
practitioner who is suspended or excluded under this subpart or removed
under Section  10.11(b) shall not be entitled to practice before the
Office.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.16 - 10.17 [Reserved]

---SECTION---10.18 Signature and certificate for correspondence filed in
the Patent and Trademark Office.

For all documents filed in the Office in patent, trademark, and other
non-patent matters, except for correspondence that is required to be
signed by the applicant or party, each piece of correspondence filed by
a practitioner in the Patent and Trademark Office must bear a signature,
personally signed by such practitioner, in compliance with Section 
1.4(d)(1) of this chapter.

By presenting to the Office (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper, whether a
practitioner or non-practitioner, is certifying that--

All statements made therein of the party's own knowledge are true, all
statements made therein on information and belief are believed to be
true, and all statements made therein are made with the knowledge that
whoever, in any matter within the jurisdiction of the Patent and
Trademark Office, knowingly and willfully falsifies, conceals, or covers
up by any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or uses
any false writing or document knowing the same to contain any false,
fictitious or fraudulent statement or entry, shall be subject to the
penalties set forth under 18&nbsp;U.S.C. 1001, and that violations of
this paragraph may jeopardize the validity of the application or
document, or the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom; and

To the best of the party's knowledge, information and belief, formed
after an inquiry reasonable under the circumstances, that --

The paper is not being presented for any improper purpose, such as to
harass someone or to cause unnecessary delay or needless increase in the
cost of prosecution before the Office;

The claims and other legal contentions therein are warranted by existing
law or by a nonfrivolous argument for the extension, modification, or
reversal of existing law or the establishment of new law;

The allegations and other factual contentions have evidentiary support
or, if specifically so identified, are likely to have evidentiary
support after a reasonable opportunity for further investigation or
discovery; and

The denials of factual contentions are warranted on the evidence, or if
specifically so identified, are reasonably based on a lack of
information or belief.

Violations of paragraph (b)(1) of this section by a practitioner or
non-practitioner may jeopardize the validity of the application or
document, or the validity or enforceability of any patent, trademark
registration, or certificate resulting therefrom. Violations of any of
paragraphs (b)(2)(i) through (iv) of this section are, after notice and
reasonable opportunity to respond, subject to such sanctions as deemed
appropriate by the Commissioner, or the Commissioner's designee, which
may include, but are not limited to, any combination of --

Holding certain facts to have been established;

Returning papers;

Precluding a party from filing a paper, or presenting or contesting an
issue;

Imposing a monetary sanction;

Requiring a terminal disclaimer for the period of the delay; or

Terminating the proceedings in the Patent and Trademark Office.

Any practitioner violating the provisions of this section may also be
subject to disciplinary action. See Section  10.23(c)(15).

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; para. (a)
revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; paras. (a)
& (b) revised, paras. (c) & (d) added, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]

---SECTION---10.19 [Reserved]

---SECTION---PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL
RESPONSIBILITY

---SECTION---10.20 Canons and Disciplinary Rules.

Canons are set out in Section Section  10.21, 10.30, 10.46, 10.56,
10.61, 10.76, 10.83, 10.100, and 10.110. Canons are statements of
axiomatic norms, expressing in general terms the standards of
professional conduct expected of practitioners in their relationships
with the public, with the legal system, and with the legal profession.

Disciplinary Rules are set out in Section Section  10.22-10.24,
10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85,
10.87-10.89, 10.92, 10.93, 10.101-10.103, 10.111, and 10.112.
Disciplinary Rules are mandatory in character and state the minimum
level of conduct below which no practitioner can fall without being
subjected to disciplinary action.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.21 Canon 1.

A practitioner should assist in maintaining the integrity and competence
of the legal profession.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.22 Maintaining integrity and competence of the legal
profession.

A practitioner is subject to discipline if the practitioner has made a
materially false statement in, or if the practitioner has deliberately
failed to disclose a material fact requested in connection with, the
practitioner's application for registration or membership in the bar of
any United States court or any State court or his or her authority to
otherwise practice before the Office in trademark and other non-patent
cases.

A practitioner shall not further the application for registration or
membership in the bar of any United States court, State court, or
administrative agency of another person known by the practitioner to be
unqualified in respect to character, education, or other relevant
attribute.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.23 Misconduct.

A practitioner shall not engage in disreputable or gross misconduct.

A practitioner shall not:

Violate a Disciplinary Rule.

Circumvent a Disciplinary Rule through actions of another.

Engage in illegal conduct involving moral turpitude.

Engage in conduct involving dishonesty, fraud, deceit, or
misrepresentation.

Engage in conduct that is prejudicial to the administration of justice.

Engage in any other conduct that adversely reflects on the
practitioner's fitness to practice before the Office.

Conduct which constitutes a violation of paragraphs (a) and (b) of this
section includes, but is not limited to:

Conviction of a criminal offense involving moral turpitude, dishonesty,
or breach of trust.

Knowingly giving false or misleading information or knowingly
participating in a material way in giving false or misleading
information, to:

A client in connection with any immediate, prospective, or pending
business before the Office.

The Office or any employee of the Office.

Misappropriation of, or failure to properly or timely remit, funds
received by a practitioner or the practitioner's firm from a client to
pay a fee which the client is required by law to pay to the Office.

Directly or indirectly improperly influencing, attempting to improperly
influence, offering or agreeing to improperly influence, or attempting
to offer or agree to improperly influence an official action of any
employee of the Office by:

Use of threats, false accusations, duress, or coercion,

An offer of any special inducement or promise of advantage, or

Improperly bestowing of any gift, favor, or thing of value.

Suspension or disbarment from practice as an attorney or agent on
ethical grounds by any duly constituted authority of a State or the
United States or, in the case of a practitioner who resides in a foreign
country or is registered under Section  10.6(c), by any duly constituted
authority of:

A State,

The United States, or

The country in which the practitioner resides.

Knowingly aiding or abetting a practitioner suspended or excluded from
practice before the Office in engaging in unauthorized practice before
the Office under Section  10.158.

Knowingly withholding from the Office information identifying a patent
or patent application of another from which one or more claims have been
copied. See Section Section  1.604(b) and 1.607(c) of this subchapter.

Failing to inform a client or former client or failing to timely notify
the Office of an inability to notify a client or former client of
correspondence received from the Office or the client's or former
client's opponent in an inter partes proceeding before the Office when
the correspondence (i) could have a significant effect on a matter
pending before the Office, (ii) is received by the practitioner on
behalf of a client or former client and (iii) is correspondence of which
a reasonable practitioner would believe under the circumstances the
client or former client should be notified.

Knowingly misusing a "Certificate of Mailing or Transmission" under
Section  1.8 of this chapter.

Knowingly violating or causing to be violated the requirements of
Section  1.56 or Section  1.555 of this subchapter.

Knowingly filing or causing to be filed an application containing any
material alteration made in the application papers after the signing of
the accompanying oath or declaration without identifying the alteration
at the time of filing the application papers.

Knowingly filing, or causing to be filed, a frivolous complaint alleging
a violation by a practitioner of the Patent and Trademark Office Code of
Professional Responsibility.

Knowingly preparing or prosecuting or providing assistance in the
preparation or prosecution of a patent application in violation of an
undertaking signed under Section  10.10(b).

Knowingly failing to advise the Director in writing of any change which
would preclude continued registration under Section  10.6.

Signing a paper filed in the Office in violation of the provisions of
Section  10.18 or making a scandalous or indecent statement in a paper
filed in the Office.

Willfully refusing to reveal or report knowledge or evidence to the
Director contrary to Section  10.24 or paragraph (b) of Section  10.131.

Representing before the Office in a patent case either a joint venture
comprising an inventor and an invention developer or an inventor
referred to the registered practitioner by an invention developer when
(i) the registered practitioner knows, or has been advised by the
Office, that a formal complaint filed by a Federal or State agency,
based on any violation of any law relating to securities, unfair methods
of competition, unfair or deceptive acts or practices, mail fraud, or
other civil or criminal conduct, is pending before a Federal or State
court or Federal or State agency, or has been resolved unfavorably by
such court or agency, against the invention developer in connection with
invention development services and (ii) the registered practitioner
fails to fully advise the inventor of the existence of the pending
complaint or unfavorable resolution thereof prior to undertaking or
continuing representation of the joint venture or inventor. "Invention
developer" means any person, and any agent, employee, officer, partner,
or independent contractor thereof, who is not a registered practitioner
and who advertises invention development services in media of general
circulation or who enters into contracts for invention development
services with customers as a result of such advertisement. "Invention
development services" means acts of invention development required or
promised to be performed, or actually performed, or both, by an
invention developer for a customer. "Invention development" means the
evaluation, perfection, marketing, brokering, or promotion of an
invention on behalf of a customer by an invention developer, including a
patent search, preparation of a patent application, or any other act
done by an invention developer for consideration toward the end of
procuring or attempting to procure a license, buyer, or patent for an
invention. "Customer" means any individual who has made an invention and
who enters into a contract for invention development services with an
invention developer with respect to the invention by which the inventor
becomes obligated to pay the invention developer less than $5,000 (not
to include any additional sums which the invention developer is to
receive as a result of successful development of the invention).
"Contract for invention development services" means a contract for
invention development services with an invention developer with respect
to an invention made by a customer by which the inventor becomes
obligated to pay the invention developer less than $5,000 (not to
include any additional sums which the invention developer is to receive
as a result of successful development of the invention).

In the absence of information sufficient to establish a reasonable
belief that fraud or inequitable conduct has occurred, alleging before a
tribunal that anyone has committed a fraud on the Office or engaged in
inequitable conduct in a proceeding before the Office.

Action by an employee of the Office contrary to the provisions set forth
in Section  10.10(c).

Knowing practice by a Government employee contrary to applicable Federal
conflict of interest laws, or regulations of the Department, agency, or
commission employing said individual.

A practitioner who acts with reckless indifference to whether a
representation is true or false is chargeable with knowledge of its
falsity. Deceitful statements of half-truths or concealment of material
facts shall be deemed actual fraud within the meaning of this part.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR
25073, June 17, 1985; 50 FR 25980, June 24, 1985; paras. (c)(13), (19) &
(20), 53 FR 38950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR
41278, Oct. 20, 1988; paras. (c)(10) & (c)(11), 57 FR 2021, Jan. 17,
1992, effective Mar. 16, 1992; para. (c)(9) amended, 58 FR 54494, Oct.
22, 1993, effective Nov. 22, 1993; para. (c)(9) amended, 61 FR 56439,
Nov. 1, 1996, effective Dec 2, 1996; para. (c)(15) amended, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]

---SECTION---10.24 Disclosure of information to authorities.

A practitioner possessing unprivileged knowledge of a violation of a
Disciplinary Rule shall report such knowledge to the Director.

A practitioner possessing unprivileged knowledge or evidence concerning
another practitioner, employee of the Office, or a judge shall reveal
fully such knowledge or evidence upon proper request of a tribunal or
other authority empowered to investigate or act upon the conduct of
practitioners, employees of the Office, or judges.

[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.25 - 10.29 [Reserved]

---SECTION---10.30 Canon 2.

A practitioner should assist the legal profession in fulfilling its duty
to make legal counsel available.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.31 Communications concerning a practitioner's services.

No practitioner shall with respect to any prospective business before
the Office, by word, circular, letter, or advertising, with intent to
defraud in any manner, deceive, mislead, or threaten any prospective
applicant or other person having immediate or prospective business
before the Office.

A practitioner may not use the name of a Member of either House of
Congress or of an individual in the service of the United States in
advertising the practitioner's practice before the Office.

Unless authorized under Section  10.14(b), a non-lawyer practitioner
shall not hold himself or herself out as authorized to practice before
the Office in trademark cases.

Unless a practitioner is an attorney, the practitioner shall not hold
himself or herself out:

To be an attorney or lawyer or

As authorized to practice before the Office in non-patent and trademark
cases.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.32 Advertising.

Subject to Section  10.31, a practitioner may advertise services through
public media, including a telephone directory, legal directory,
newspaper, or other periodical, radio, or television, or through written
communications not involving solicitation as defined by Section  10.33.

A practitioner shall not give anything of value to a person for
recommending the practitioner's services, except that a practitioner may
pay the reasonable cost of advertising or written communication
permitted by this section and may pay the usual charges of a
not-for-profit lawyer referral service or other legal service
organization.

Any communication made pursuant to this section shall include the name
of at least one practitioner responsible for its content.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.33 Direct contact with prospective clients.

A practitioner may not solicit professional employment from a
prospective client with whom the practitioner has no family or prior
professional relationship, by mail, in-person, or otherwise, when a
significant motive for the practitioner's doing so is the practitioner's
pecuniary gain under circumstances evidencing undue influence,
intimidation, or overreaching. The term "solicit" includes contact in
person, by telephone or telegraph, by letter or other writing, or by
other communication directed to a specific recipient, but does not
include letters addressed or advertising circulars distributed generally
to persons not specifically known to need legal services of the kind
provided by the practitioner in a particular matter, but who are so
situated that they might in general find such services useful.

[Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 1985]

---SECTION---10.34 Communication of fields of practice.

A registered practitioner may state or imply that the practitioner is a
specialist as follows:

A registered practitioner who is an attorney may use the designation
"Patents," "Patent Attorney," "Patent Lawyer," "Registered Patent
Attorney," or a substantially similar designation.

A registered practitioner who is not an attorney may use the designation
"Patents," "Patent Agent," "Registered Patent Agent," or a substantially
similar designation, except that any practitioner who was registered
prior to November 15, 1938, may refer to himself or herself as a "patent
attorney."

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.35 Firm names and letterheads.

A practitioner shall not use a firm name, letterhead, or other
professional designation that violates Section  10.31. A trade name may
be used by a practitioner in private practice if it does not imply a
current connection with a government agency or with a public or
charitable legal services organization and is not otherwise in violation
of Section  10.31.

Practitioners may state or imply that they practice in a partnership or
other organization only when that is the fact.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.36 Fees for legal services.

A practitioner shall not enter into an agreement for, charge, or collect
an illegal or clearly excessive fee.

A fee is clearly excessive when, after a review of the facts, a
practitioner of ordinary prudence would be left with a definite and firm
conviction that the fee is in excess of a reasonable fee. Factors to be
considered as guides in determining the reasonableness of a fee include
the following:

The time and labor required, the novelty and difficulty of the questions
involved, and the skill requisite to perform the legal service properly.

The likelihood, if apparent to the client, that the acceptance of the
particular employment will preclude other employment by the
practitioner.

The fee customarily charged for similar legal services.

The amount involved and the results obtained.

The time limitations imposed by the client or by the circumstances.

The nature and length of the professional relationship with the client.

The experience, reputation, and ability of the practitioner or
practitioners performing the services.

Whether the fee is fixed or contingent.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.37 Division of fees among practitioners.

A practitioner shall not divide a fee for legal services with another
practitioner who is not a partner in or associate of the practitioner's
law firm or law office, unless:

The client consents to employment of the other practitioner after a full
disclosure that a division of fees will be made.

The division is made in proportion to the services performed and
responsibility assumed by each.

The total fee of the practitioners does not clearly exceed reasonable
compensation for all legal services rendered to the client.

This section does not prohibit payment to a former partner or associate
pursuant to a separation or retirement agreement.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.38 Agreements restricting the practice of a
practitioner.

A practitioner shall not be a party to or participate in a partnership
or employment agreement with another practitioner that restricts the
right of a practitioner to practice before the Office after the
termination of a relationship created by the agreement, except as a
condition to payment of retirement benefits.

In connection with the settlement of a controversy or suit, a
practitioner shall not enter into an agreement that restricts the
practitioner's right to practice before the Office.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.39 Acceptance of employment.

A practitioner shall not accept employment on behalf of a person if the
practitioner knows or it is obvious that such person wishes to:

Bring a legal action, commence a proceeding before the Office, conduct a
defense, assert a position in any proceeding pending before the Office,
or otherwise have steps taken for the person, merely for the purpose of
harassing or maliciously injuring any other person.

Present a claim or defense in litigation or any proceeding before the
Office that it is not warranted under existing law, unless it can be
supported by good faith argument for an extension, modification, or
reversal of existing law.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.40 Withdrawal from employment.

A practitioner shall not withdraw from employment in a proceeding before
the Office without permission from the Office (see Section Section  1.36
and 2.19 of this subchapter). In any event, a practitioner shall not
withdraw from employment until the practitioner has taken reasonable
steps to avoid foreseeable prejudice to the rights of the client,
including giving due notice to his or her client, allowing time for
employment of another practitioner, delivering to the client all papers
and property to which the client is entitled, and complying with
applicable laws and rules. A practitioner who withdraws from employment
shall refund promptly any part of a fee paid in advance that has not
been earned.

Mandatory withdrawal. A practitioner representing a client before the
Office shall withdraw from employment if:

The practitioner knows or it is obvious that the client is bringing a
legal action, commencing a proceeding before the Office, conducting a
defense, or asserting a position in litigation or any proceeding pending
before the Office, or is otherwise having steps taken for the client,
merely for the purpose of harassing or maliciously injuring any person;

The practitioner knows or it is obvious that the practitioner's
continued employment will result in violation of a Disciplinary Rule;

The practitioner's mental or physical condition renders it unreasonably
difficult for the practitioner to carry out the employment effectively;
or

The practitioner is discharged by the client.

Permissive withdrawal. If paragraph (b) of this section is not
applicable, a practitioner may not request permission to withdraw in
matters pending before the Office unless such request or such withdrawal
is because:

The petitioner's client:

Insists upon presenting a claim or defense that is not warranted under
existing law and cannot be supported by good faith argument for an
extension, modification, or reversal of existing law;

Personally seeks to pursue an illegal course of conduct;

Insists that the practitioner pursue a course of conduct that is illegal
or that is prohibited under a Disciplinary Rule;

By other conduct renders it unreasonably difficult for the practitioner
to carry out the employment effectively;

Insists, in a matter not pending before a tribunal, that the
practitioner engage in conduct that is contrary to the judgment and
advice of the practitioner but not prohibited under the Disciplinary
Rule; or

Has failed to pay one or more bills rendered by the practitioner for an
unreasonable period of time or has failed to honor an agreement to pay a
retainer in advance of the performance of legal services.

The practitioner's continued employment is likely to result in a
violation of a Disciplinary Rule;

The practitioner's inability to work with co-counsel indicates that the
best interests of the client likely will be served by withdrawal;

The practitioner's mental or physical condition renders it difficult for
the practitioner to carry out the employment effectively;

The practitioner's client knowingly and freely assents to termination of
the employment; or

The practitioner believes in good faith, in a proceeding pending before
the Office, that the Office will find the existence of other good cause
for withdrawal.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.41 - 10.45 [Reserved]

---SECTION---10.46 Canon 3.

A practitioner should assist in preventing the unauthorized practice of
law.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.47 Aiding unauthorized practice of law.

A practitioner shall not aid a non-practitioner in the unauthorized
practice of law before the Office.

A practitioner shall not aid a suspended or excluded practitioner in the
practice of law before the Office.

A practitioner shall not aid a non-lawyer in the unauthorized practice
of law.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.48 Sharing legal fees.

A practitioner or a firm of practitioners shall not share legal fees
with a non-practitioner except that:

An agreement by a practitioner with the practitioner's firm, partner, or
associate may provide for the payment of money, over a reasonable period
of time after the practitioner's death, to the practitioner's estate or
to one or more specified persons.

A practitioner who undertakes to complete unfinished legal business of a
deceased practitioner may pay to the estate of the deceased practitioner
that proportion of the total compensation which fairly represents the
services rendered by the deceased practitioner.

A practitioner or firm of practitioners may include non-practitioner
employees in a compensation or retirement plan, even though the plan is
based in whole or in part on a profit-sharing arrangement, providing
such plan does not circumvent another Disciplinary Rule.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985; para. (b)
revised, 58 FR 54511, Oct. 22, 1993, effective June 3, 1994]

---SECTION---10.49 Forming a partnership with a non- practitioner.

A practitioner shall not form a partnership with a nonpractitioner if
any of the activities of the partnership consist of the practice of
patent, trademark, or other law before the Office.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.50 - 10.55 [Reserved]

---SECTION---10.56 Canon 4.

A practitioner should preserve the confidences and secrets of a client.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.57 Preservation of confidences and secrets of a client.

"Confidence" refers to information protected by the attorney-client or
agent-client privilege under applicable law. "Secret" refers to other
information gained in the professional relationship that the client has
requested be held inviolate or the disclosure of which would be
embarrassing or would be likely to be detrimental to the client.

Except when permitted under paragraph (c) of this section, a
practitioner shall not knowingly:

Reveal a confidence or secret of a client.

Use a confidence or secret of a client to the dis advantage of the
client.

Use a confidence or secret of a client for the advantage of the
practitioner or of a third person, unless the client consents after full
disclosure.

A practitioner may reveal:

Confidences or secrets with the consent of the client affected but only
after a full disclosure to the client.

Confidences or secrets when permitted under Disciplinary Rules or
required by law or court order.

The intention of a client to commit a crime and the information
necessary to prevent the crime.

Confidences or secrets necessary to establish or collect the
practitioner's fee or to defend the practitioner or the practitioner's
employees or associates against an accusation of wrongful conduct.

A practitioner shall exercise reasonable care to prevent the
practitioner's employees, associates, and others whose services are
utilized by the practitioner from disclosing or using confidences or
secrets of a client, except that a practitioner may reveal the
information allowed by paragraph (c) of this section through an
employee.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.58 - 10.60 [Reserved]

---SECTION---10.61 Canon 5.

A practitioner should exercise independent professional judgment on
behalf of a client.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.62 Refusing employment when the interest of the p
ractitioner may impair the practi tioner's independent professional
judgment.

Except with the consent of a client after full dis closure, a
practitioner shall not accept employment if the exercise of the
practitioner's professional judgment on behalf of the client will be or
reasonably may be affected by the practitioner's own financial,
business, property, or personal interests.

A practitioner shall not accept employment in a proceeding before the
Office if the practitioner knows or it is obvious that the practitioner
or another practitioner in the practitioner's firm ought to sign an
affidavit to be filed in the Office or be called as a witness, except
that the practitioner may undertake the employment and the practitioner
or another practitioner in the practitioner's firm may testify:

If the testimony will relate solely to an uncontested matter.

If the testimony will relate solely to a matter of formality and there
is no reason to believe that substantial evidence will be offered in
opposition to the testimony.

If the testimony will relate solely to the nature and value of legal
services rendered in the case by the practitioner or the practitioner's
firm to the client.

As to any matter, if refusal would work a substantial hardship on the
client because of the distinctive value of the practitioner or the
practitioner's firm as counsel in the particular case.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.63 Withdrawal when the practitioner becomes a witness.

If, after undertaking employment in a proceeding in the Office, a
practitioner learns or it is obvious that the practitioner or another
practitioner in the practitioner's firm ought to sign an affidavit to be
filed in the Office or be called as a witness on behalf of a
practitioner's client, the practitioner shall withdraw from the conduct
of the proceeding and the practitioner's firm, if any, shall not
continue representation in the proceeding, except that the practitioner
may continue the representation and the practitioner or another
practitioner in the practitioner's firm may testify in the circumstances
enumerated in paragraphs (1) through (4) of Section  10.62(b).

If, after undertaking employment in a proceeding before the Office, a
practitioner learns or it is obvious that the practitioner or another
practitioner in the practitioner's firm may be asked to sign an
affidavit to be filed in the Office or be called as a witness other than
on behalf of the practitioner's client, the practitioner may continue
the representation until it is apparent that the practitioner's
affidavit or testimony is or may be prejudicial to the practitioner's
client.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.64 Avoiding acquisition of interest in litigation or
proceeding before the Office.

A practitioner shall not acquire a proprietary interest in the subject
matter of a proceeding before the Office which the practitioner is
conducting for a client, except that the practitioner may:

Acquire a lien granted by law to secure the practitioner's fee or
expenses; or

Contract with a client for a reasonable contingent fee; or

In a patent case, take an interest in the patent as part or all of his
or her fee.

While representing a client in connection with a contemplated or pending
proceeding before the Office, a practitioner shall not advance or
guarantee financial assistance to a client, except that a practitioner
may advance or guarantee the expenses of going forward in a proceeding
before the Office including fees required by law to be paid to the
Office, expenses of investigation, expenses of medical examination, and
costs of obtaining and presenting evidence, provided the client remains
ultimately liable for such expenses. A practitioner may, however,
advance any fee required to prevent or remedy an abandonment of a
client's application by reason of an act or omission attributable to the
practitioner and not to the client, whether or not the client is
ultimately liable for such fee.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.65 Limiting business relations with a client.

A practitioner shall not enter into a business transaction with a client
if they have differing interests therein and if the client expects the
practitioner to exercise professional judgment therein for the
protection of the client, unless the client has consented after full
disclosure.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.66 Refusing to accept or continue employment if the
interests of another client may impair the independent professional
judgment of the practitioner.

A practitioner shall decline proffered employment if the exercise of the
practitioner's independent professional judgment in behalf of a client
will be or is likely to be adversely affected by the acceptance of the
proffered employment, or if it would be likely to involve the
practitioner in representing differing interests, except to the extent
permitted under paragraph (c) of this section.

A practitioner shall not continue multiple employment if the exercise of
the practitioner's independent professional judgment in behalf of a
client will be or is likely to be adversely affected by the
practitioner's representation of another client, or if it would be
likely to involve the practitioner in representing differing interests,
except to the extent permitted under paragraph (c) of this section.

In the situations covered by paragraphs (a) and (b) of this section, a
practitioner may represent multiple clients if it is obvious that the
practitioner can adequately represent the interest of each and if each
consents to the representation after full disclosure of the possible
effect of such representation on the exercise of the practitioner's
independent professional judgment on behalf of each.

If a practitioner is required to decline employment or to withdraw from
employment under a Disciplinary Rule, no partner, or associate, or any
other practitioner affiliated with the practitioner or the
practitioner's firm, may accept or continue such employment unless
otherwise ordered by the Director or Commissioner.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.67 Settling similar claims of clients.

A practitioner who represents two or more clients shall not make or
participate in the making of an aggregate settlement of the claims of or
against the practitioner's clients, unless each client has consented to
the settlement after being advised of the existence and nature of all
the claims involved in the proposed settlement, of the total amount of
the settlement, and of the participation of each person in the
settlement.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.68 Avoiding influence by others than the client.

Except with the consent of the practitioner's client after full
disclosure, a practitioner shall not:

Accept compensation from one other than the practitioner's client for
the practitioner's legal services to or for the client.

Accept from one other than the practitioner's client any thing of value
related to the practitioner's representation of or the practitioner's
employment by the client.

A practitioner shall not permit a person who recommends, employs, or
pays the practitioner to render legal services for another, to direct or
regulate the practitioner's professional judgment in rendering such
legal services.

A practitioner shall not practice with or in the form of a professional
corporation or association authorized to practice law for a profit, if a
non-practitioner has the right to direct or control the professional
judgment of a practitioner.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.69 - 10.75 [Reserved]

---SECTION---10.76 Canon 6.

A practitioner should represent a client competently.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.77 Failing to act competently.

A practitioner shall not:

Handle a legal matter which the practitioner knows or should know that
the practitioner is not competent to handle, without associating with
the practitioner another practitioner who is competent to handle it.

Handle a legal matter without preparation adequate in the circumstances.

Neglect a legal matter entrusted to the practitioner.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.78 Limiting liability to client.

A practitioner shall not attempt to exonerate himself or herself from,
or limit his or her liability to, a client for his or her personal
malpractice.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.79 - 10.82 [Reserved]

---SECTION---10.83 Canon 7.

A practitioner should represent a client zealously within the bounds of
the law.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.84 Representing a client zealously.

A practitioner shall not intentionally:

Fail to seek the lawful objectives of a client through reasonable
available means permitted by law and the Disciplinary Rules, except as
provided by paragraph (b) of this section. A practitioner does not
violate the provisions of this section, however, by acceding to
reasonable requests of opposing counsel which do not prejudice the
rights of the client, by being punctual in fulfilling all professional
commitments, by avoiding offensive tactics, or by treating with courtesy
and consideration all persons involved in the legal process.

Fail to carry out a contract of employment entered into with a client
for professional services, but a practitioner may withdraw as permitted
under Section Section  10.40, 10.63, and 10.66.

Prejudice or damage a client during the course of a professional
relationship, except as required under this part.

In representation of a client, a practitioner may:

Where permissible, exercise professional judgment to waive or fail to
assert a right or position of the client.

Refuse to aid or participate in conduct that the practitioner believes
to be unlawful, even though there is some support for an argument that
the conduct is legal.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.85 Representing a client within the bounds of the law.

In representation of a client, a practitioner shall not:

Initiate or defend any proceeding before the Office, assert a position,
conduct a defense, delay a trial or proceeding before the Office, or
take other action on behalf of the practitioner's client when the
practitioner knows or when it is obvious that such action would serve
merely to harass or maliciously injure another.

Knowingly advance a claim or defense that is unwarranted under existing
law, except that a practitioner may advance such claim or defense if it
can be supported by good faith argument for an extension, modification,
or reversal of existing law.

Conceal or knowingly fail to disclose that which the practitioner is
required by law to reveal.

Knowingly use perjured testimony or false evidence.

Knowingly make a false statement of law or fact.

Participate in the creation or preservation of evidence when the
practitioner knows or it is obvious that the evidence is false.

Counsel or assist a client in conduct that the practitioner knows to be
illegal or fraudulent.

Knowingly engage in other illegal conduct or conduct contrary to a
Disciplinary Rule.

A practitioner who receives information clearly establishing that:

A client has, in the course of the representation, perpetrated a fraud
upon a person or tribunal shall promptly call upon the client to rectify
the same, and if the client refuses or is unable to do so the
practitioner shall reveal the fraud to the affected person or tribunal.

A person other than a client has perpetrated a fraud upon a tribunal
shall promptly reveal the fraud to the tribunal.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.86 [Reserved]

---SECTION---10.87 Communicating with one of adverse interest.

During the course of representation of a client, a practitioner shall
not:

Communicate or cause another to communicate on the subject of the
representation with a party the practitioner knows to be represented by
another practitioner in that matter unless the practitioner has the
prior consent of the other practitioner representing such other party or
is authorized by law to do so. It is not improper, however, for a
practitioner to encourage a client to meet with an opposing party for
settlement discussions.

Give advice to a person who is not represented by a practitioner other
than the advice to secure counsel, if the interests of such person are
or have a reasonable possibility of being in conflict with the interests
of the practitioner's client.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.88 Threatening criminal prosecution.

A practitioner shall not present, participate in presenting, or threaten
to present criminal charges solely to obtain an advantage in any
prospective or pending proceeding before the Office.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.89 Conduct in proceedings.

A practitioner shall not disregard or advise a client to disregard any
provision of this Subchapter or a decision of the Office made in the
course of a proceeding before the Office, but the practitioner may take
appropriate steps in good faith to test the validity of such provision
or decision.

In presenting a matter to the Office, a practitioner shall disclose:

Controlling legal authority known to the practitioner to be directly
adverse to the position of the client and which is not disclosed by
opposing counsel or an employee of the Office.

Unless privileged or irrelevant, the identities of the client the
practitioner represents and of the persons who employed the
practitioner.

In appearing in a professional capacity before a tribunal, a
practitioner shall not:

State or allude to any matter that the practitioner has no reasonable
basis to believe is relevant to the case or that will not be supported
by admissible evidence.

Ask any question that the practitioner has no reasonable basis to
believe is relevant to the case and that is intended to degrade a
witness or other person.

Assert the practitioner's personal knowledge of the facts in issue,
except when testifying as a witness.

Assert the practitioner's personal opinion as to the justness of a
cause, as to the credibility of a witness, as to the culpability of a
civil litigant, or as to the guilt or innocence of an accused; but the
practitioner may argue, on the practitioner's analysis of the evidence,
for any position or conclusion with respect to the matters stated
herein.

Engage in undignified or discourteous conduct before the Office (see
Section  1.3 of the subchapter).

Intentionally or habitually violate any provision of this subchapter or
established rule of evidence.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.90 - 10.91 [Reserved]

---SECTION---10.92 Contact with witnesses.

A practitioner shall not suppress any evidence that the practitioner or
the practitioner's client has a legal obligation to reveal or produce.

A practitioner shall not advise or cause a person to be secreted or to
leave the jurisdiction of a tribunal for the purpose of making the
person unavailable as a witness therein.

A practitioner shall not pay, offer to pay, or acquiesce in payment of
compensation to a witness contingent upon the content of the witness'
affidavit, testimony or the outcome of the case. But a practitioner may
advance, guarantee, or acquiesce in the payment of:

Expenses reasonably incurred by a witness in attending, testifying, or
making an affidavit.

Reasonable compensation to a witness for the witness' loss of time in
attending, testifying, or making an affidavit.

A reasonable fee for the professional services of an expert witness.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.93 Contact with officials.

A practitioner shall not give or lend anything of value to a judge,
official, or employee of a tribunal under circumstances which might give
the appearance that the gift or loan is made to influence official
action.

In an adversary proceeding, including any inter partes proceeding before
the Office, a practitioner shall not communicate, or cause another to
communicate, as to the merits of the cause with a judge, official, or
Office employee before whom the proceeding is pending, except:

In the course of official proceedings in the cause.

In writing if the practitioner promptly delivers a copy of the writing
to opposing counsel or to the adverse party if the adverse party is not
represented by a practitioner.

Orally upon adequate notice to opposing counsel or to the adverse party
if the adverse party is not represented by a practitioner.

As otherwise authorized by law.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.94 - 10.99 [Reserved]

---SECTION---10.100 Canon 8.

A practitioner should assist in improving the legal system.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.101 Action as a public official.

A practitioner who holds public office shall not:

Use the practitioner's public position to obtain, or attempt to obtain,
a special advantage in legislative matters for the practitioner or for a
client under circumstances where the practitioner knows or it is obvious
that such action is not in the public interest.

Use the practitioner's public position to influence, or attempt to
influence, a tribunal to act in favor of the practitioner or of a
client.

Accept any thing of value from any person when the practitioner knows or
it is obvious that the offer is for the purpose of influencing the
practitioner's action as a public official.

A practitioner who is an officer or employee of the United States shall
not practice before the Office in patent cases except as provided in
Section  10.10(c) and (d).

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985; para. (b)
amended, 54 FR 6520, Feb. 13, 1989]

---SECTION---10.102 Statements concerning officials.

A practitioner shall not knowingly make false statements of fact
concerning the qualifications of a candidate for election or appointment
to a judicial office or to a position in the Office.

A practitioner shall not knowingly make false accusations against a
judge, other adjudicatory officer, or employee of the Office.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.103 Practitioner candidate for judicial office.

A practitioner who is a candidate for judicial office shall comply with
applicable provisions of law.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.104 - 10.109 [Reserved]

---SECTION---10.110 Canon 9.

A practitioner should avoid even the appearance of professional
impropriety.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.111 Avoiding even the appearance of impropriety.

A practitioner shall not accept private employment in a matter upon the
merits of which he or she has acted in a judicial capacity.

A practitioner shall not accept private employment in a matter in which
he or she had personal responsibility while a public employee.

A practitioner shall not state or imply that the practitioner is able to
influence improperly or upon irrelevant grounds any tribunal,
legislative body, or public official.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.112 Preserving identity of funds and property of client.

All funds of clients paid to a practitioner or a practitioner's firm,
other than advances for costs and ex penses, shall be deposited in one
or more identifiable bank accounts maintained in the United States or,
in the case of a practitioner having an office in a foreign country or
registered under Section  10.6(c), in the United States or the foreign
country.

No funds belonging to the practitioner or the practitioner's firm shall
be deposited in the bank accounts required by paragraph (a) of this
section except as follows:

Funds reasonably sufficient to pay bank charges may be deposited
therein.

Funds belonging in part to a client and in part presently or potentially
to the practitioner or the practitioner's firm must be deposited
therein, but the portion belonging to the practitioner or the
practitioner's firm may be withdrawn when due unless the right of the
practitioner or the practitioner's firm to receive it is disputed by the
client, in which event the disputed portion shall not be withdrawn until
the dispute is finally resolved.

A practitioner shall:

Promptly notify a client of the receipt of the client's funds,
securities, or other properties.

Identify and label securities and properties of a client promptly upon
receipt and place them in a safe deposit box or other place of
safekeeping as soon as practicable.

Maintain complete records of all funds, securities, and other properties
of a client coming into the possession of the practitioner and render
appropriate accounts to the client regarding the funds, securities, or
other properties.

Promptly pay or deliver to the client as requested by a client the
funds, securities, or other properties in the possession of the
practitioner which the client is entitled to receive.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.113 - 10.129 [Reserved]

---SECTION---INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS

---SECTION---10.130 Reprimand, suspension or exclusion.

The Commissioner may, after notice and opportunity for a hearing, (1)
reprimand or (2) suspend or exclude, either generally or in any
particular case, any individual, attorney, or agent shown to be
incompetent or disreputable, who is guilty of gross misconduct, or who
violates a Disciplinary Rule.

Petitions to disqualify a practitioner in ex parte or inter partes cases
in the Office are not governed bySection Section  10.130 through 10.170
and will be handled on a case-by-case basis under such conditions as the
Commissioner deems appropriate.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.131 Investigations.

The Director is authorized to investigate possible violations of
Disciplinary Rules by practitioners. See Section 10.2(b)(2).

Practitioners shall report and reveal to the Director any knowledge or
evidence required by Section 10.24. A practitioner shall cooperate with
the Director in connection with any investigation under paragraph (a) of
this section and with officials of the Office in connection with any
disciplinary proceeding instituted under Section 10.132(b).

Any nonpractitioner possessing knowledge or information concerning a
violation of a Disciplinary Rule by a practitioner may report the
violation to the Director. The Director may require that the report be
presented in the form of an affidavit.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.132 Initiating a disciplinary proceeding; reference to
an administrative law judge.

If after conducting an investigation underSection 10.131(a) the Director
is of the opinion that a practitioner has violated a Disciplinary Rule,
the Director shall, after complying where necessary with the provisions
of 5 U.S.C. 558(c), call a meeting of the Committee on Discipline. The
Committee on Discipline shall then determine as specified in Section
10.4(b) whether a disciplinary proceeding shall be instituted under
paragraph (b) of this section.

If the Committee on Discipline determines that probable cause exists to
believe that a practitioner has violated a Disciplinary Rule, the
Director shall institute a disciplinary proceeding by filing a complaint
underSection  10.134. The complaint shall be filed in the Office of the
Director. A disciplinary proceeding may result in:

A reprimand, or

Suspension or exclusion of a practitioner from practice before the
Office.

Upon the filing of a complaint under Section 10.134, the Commissioner
will refer the disciplinary proceeding to an administrative law judge.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.133 Conference between Director and practitioner;
resignation.

General. The Director may confer with a practitioner concerning possible
violations by the practitioner of a Disciplinary Rule whether or not a
disciplinary proceeding has been instituted.

Resignation.Any practitioner who is the subject of an investigation
under Section 10.131 or against whom a complaint has been filed under
Section 10.134 may resign from practice before the Office only by
submitting with the Director an affidavit stating his or her desire to
resign.

If filed prior to the date set by the administrative law judge for a
hearing, the affidavit shall state that:

The resignation is freely and voluntarily proffered;

The practitioner is not acting under duress or coercion from the Office;

The practitioner is fully aware of the implications of filing the
resignation;

The practitioner is aware (i) of a pending investigation or (ii) of
charges arising from the complaint alleging that he or she is guilty of
a violation of the Patent and Trademark Office Code of Professional
Responsibility, the nature of which shall be set forth by the
practitioner to the satisfaction of the Director;

The practitioner acknowledges that, if and when he or she applies for
reinstatement under Section 10.160, the Director will conclusively
presume, for the limited purpose of determining the application for
reinstatement, that:

The facts upon which the complaint is based are true and

The practitioner could not have successfully defended himself or herself
against (A) charges predicated on the violation under investigation or
(B) charges set out in the complaint filed against the practitioner.

If filed on or after the date set by the administrative law judge for a
hearing, the affidavit shall make the statements required by paragraphs
(b) (1) through (4) of this section and shall state that:

The practitioner acknowledges the facts upon which the complaint is
based are true; and

The resignation is being submitted because the practitioner could not
successfully defend himself or herself against (i) charges predicated on
the violation under investigation or (ii) charges set out in the
complaint.

When an affidavit under paragraphs (b) or (c) of this section is
received while an investigation is pending, the Commissioner shall enter
an order excluding the practitioner "on consent." When an affidavit
under paragraphs (b) or (c) of this section is received after a
complaint under Section 10.134 has been filed, the Director shall notify
the administrative law judge. The administrative law judge shall enter
an order transferring the disciplinary proceeding to the Commissioner
and the Commissioner shall enter an order excluding the practitioner "on
consent."

Any practitioner who resigns from practice before the Office under this
section and who intends to reapply for admission to practice before the
Office must comply with the provisions of Section 10.158.

Settlement. Before or after a complaint is filed under Section 10.134, a
settlement conference may occur between the Director and a practitioner
for the purpose of settling any disciplinary matter. If an offer of
settlement is made by the Director or the practitioner and is not
accepted by the other, no reference to the offer of settlement or its
refusal shall be admissible in evidence in the disciplinary proceeding
unless both the Director and the practitioner agree in writing.

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.134 Complaint.

A complaint instituting a disciplinary proceeding shall:

Name the practitioner, who may then be referred to as the "respondent."

Give a plain and concise description of the alleged violations of the
Disciplinary Rules by the practitioner.

State the place and time for filing an answer by the respondent.

State that a decision by default may be entered against the respondent
if an answer is not timely filed.

Be signed by the Director.

A complaint will be deemed sufficient if it fairly informs the
respondent of any violation of the Disciplinary Rules which form the
basis for the disciplinary proceeding so that the respondent is able to
adequately prepare a defense.

[Added 50 FR 5182, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.135 Service of complaint.

A complaint may be served on a respondent in any of the following
methods:

By handing a copy of the complaint personally to the respondent, in
which case the individual handing the complaint to the respondent shall
file an affidavit with the Director indicating the time and place the
complaint was handed to the respondent.

By mailing a copy of the complaint by "Express Mail" or first-class mail
to:

A registered practitioner at the address for which separate notice was
last received by the Director or

A nonregistered practitioner at the last address for the respondent
known to the Director.

By any method mutually agreeable to the Director and the respondent.

If a complaint served by mail under paragraph (a)(2) of this section is
returned by the U.S. Postal Service, the Director shall mail a second
copy of the complaint to the respondent. If the second copy of the
complaint is also returned by the U.S. Postal Service, the Director
shall serve the respondent by publishing an appropriate notice in the
Official Gazette for four consecutive weeks, in which case the time for
answer shall be at least thirty days from the fourth publication of the
notice.

If a respondent is a registered practitioner, the Director may serve
simultaneously with the complaint a letter under Section 10.11(b). The
Director may require the respondent to answer the Section 10.11(b)
letter within a period of not less than 15 days. An answer to theSection
10.11(b) letter shall constitute proof of service. If the respondent
fails to answer the Section  10.11(b) letter, his or her name will be
removed from the register as provided by Section  10.11(b).

If the respondent is represented by an attorney under Section 
10.140(a), a copy of the complaint shall also be served on the attorney.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.136 Answer to complaint.

Time for answer. An answer to a complaint shall be filed within a time
set in the complaint which shall be not less than thirty days.

With whom filed. The answer shall be filed in writing with the
administrative law judge. The time for filing an answer may be extended
once for a period of no more than thirty days by the administrative law
judge upon a showing of good cause provided a motion requesting an
extension of time is filed within thirty days after the date the
complaint is filed by the Director. A copy of the answer shall be served
on the Director.

Content. The respondent shall include in the answer a statement of the
facts which constitute the grounds of defense and shall specifically
admit or deny each allegation set forth in the complaint. The respondent
shall not deny a material allegation in the complaint which the
respondent knows to be true or state that respondent is without
sufficient information to form a belief as to the truth of an allegation
when in fact the respondent possesses that information. The respondent
shall also state affirmatively special matters of defense.

Failure to deny allegations in complaint. Every allegation in the
complaint which is not denied by a respondent in the answer is deemed to
be admitted and may be considered proven. No further evidence in respect
of that allegation need be received by the administrative law judge at
any hearing. Failure to timely file an answer will constitute an
admission of the allegations in the complaint.

Reply by the Director. No reply to an answer is required by the Director
and any affirmative defense in the answer shall be deemed to be denied.
The Director may, however, file a reply if he or she chooses or if
ordered by the administrative law judge.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR
25073, June 17, 1985]

---SECTION---10.137 Supplemental complaint.

False statements in an answer may be made the basis of a supplemental
complaint.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.138 Contested case.

Upon the filing of an answer by the respondent, a disciplinary
proceeding shall be regarded as a contested case within the meaning of
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24
shall not be admitted into the record or considered unless leave to
proceed under 35 U.S.C. 24 was previously authorized by the
administrative law judge.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.139 Administrative law judge; appointment;
responsibilities; review of interlocutory orders; stays.

Appointment. An administrative law judge, appointed under 5 U.S.C. 3105,
shall conduct disciplinary proceedings as provided by this part.

Responsibilities. The administrative law judge shall have authority to:

Administer oaths and affirmations;

Make rulings upon motions and other requests;

Rule upon offers of proof, receive relevant evidence, and examine
witnesses;

Authorize the taking of a deposition of a witness in lieu of personal
appearance of the witness before the administrative law judge;

Determine the time and place of any hearing and regulate its course and
conduct;

Hold or provide for the holding of conferences to settle or simplify the
issues;

Receive and consider oral or written arguments on facts or law;

Adopt procedures and modify procedures from time to time as occasion
requires for the orderly disposition of proceedings;

Make initial decisions under Section  10.154; and

Perform acts and take measures as necessary to promote the efficient and
timely conduct of any disciplinary proceeding.

Time for making initial decision. The administrative law judge shall set
times and exercise control over a disciplinary proceeding such that an
initial decision under Section  10.154 is normally issued within six
months of the date a complaint is filed. The administrative law judge
may, however, issue an initial decision more than six months after a
complaint is filed if in his or her opinion there exist unusual
circumstances which preclude issuance of an initial decision within six
months of the filing of the complaint.

Review of interlocutory orders. An interlocutory order of an
administrative law judge will not be reviewed by the Commissioner
except:

When the administrative law judge shall be of the opinion (i) that the
interlocutory order involves a controlling question of procedure or law
as to which there is a substantial ground for a difference of opinion
and (ii) that an immediate decision by the Commissioner may materially
advance the ultimate termination of the disciplinary proceeding or

In an extraordinary situation where justice requires review.

Stays pending review of interlocutory order. If the Director or a
respondent seeks review of an interlocutory order of an administrative
law judge under paragraph (b)(2) of this section, any time period set
for taking action by the administrative law judge shall not be stayed
unless ordered by the Commissioner or the administrative law judge.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR
25073, June 17, 1985]

---SECTION---10.140 Representative for Director or respondent.

A respondent may be represented before the Office in connection with an
investigation or disciplinary proceeding by an attorney. The attorney
shall file a written declaration that he or she is an attorney within
the meaning of Section 10.1(c) and shall state:

The address to which the attorney wants correspondence related to the
investigation or disciplinary proceeding sent and

A telephone number where the attorney may be reached during normal
business hours.

The Commissioner shall designate at least two associate solicitors in
the Office of the Solicitor to act as representatives for the Director
in disciplinary proceedings. In prosecuting disciplinary proceedings,
the designated associate solicitors shall not involve the Solicitor or
the Deputy Solicitor. The Solicitor and the Deputy Solicitor shall
remain insulated from the investigation and prosecution of all
disciplinary proceedings in order that they shall be available as
counsel to the Commissioner in deciding disciplinary proceedings.

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.141 Filing of papers.

The provisions of Section  1.8 of this subchapter do not apply to
disciplinary proceedings.

All papers filed after the complaint and prior to entry of an initial
decision by the administrative law judge shall be filed with the
administrative law judge at an address or place designated by the
administrative law judge. All papers filed after entry of an initial
decision by the administrative law judge shall be filed with the
Director. The Director shall promptly forward to the Commissioner any
paper which requires action under this part by the Commissioner.

The administrative law judge or the Director may provide for filing
papers and other matters by hand or by "Express Mail."

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.142 Service of papers.

All papers other than a complaint shall be served on a respondent
represented by an attorney by:

Delivering a copy of the paper to the office of the attorney; or

Mailing a copy of the paper by first-class mail or "Express Mail" to the
attorney at the address provided by the attorney under Section
10.140(a)(1); or

Any other method mutually agreeable to the attorney and a representative
for the Director.

All papers other than a complaint shall be served on a respondent who is
not represented by an attorney by:

Delivering a copy of the paper to the respondent; or

Mailing a copy of the paper by first-class mail or "Express Mail" to the
respondent at the address to which a complaint may be served or such
other address as may be designated in writing by the respondent; or

Any other method mutually agreeable to the respondent and a
representative of the Director.

A respondent shall serve on the representative for the Director one copy
of each paper filed with the ad ministrative law judge or the Director.
A paper may be served on the representative for the Director by:

Delivering a copy of the paper to the representative; or

Mailing a copy of the paper by first-class mail or "Express Mail" to an
address designated in writing by the representative; or

Any other method mutually agreeable to the respondent and the
representative.

Each paper filed in a disciplinary proceeding shall contain therein a
certificate of service indicating:

The date of which service was made and

The method by which service was made.

The administrative law judge or the Commissioner may require that a
paper be served by hand or by "Express Mail."

Service by mail is completed when the paper mailed in the United States
is placed into the custody of the U.S. Postal Service.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.143 Motions.

Motions may be filed with the administrative law judge. The
administrative law judge will determine on a case-by-case basis the time
period for response to a motion and whether replies to responses will be
authorized. No motion shall be filed with the administrative law judge
unless such motion is supported by a written statement by the moving
party that the moving party or attorney for the moving party has
conferred with the opposing party or attorney for the opposing party in
an effort in good faith to resolve by agreement the issues raised by the
motion and has been unable to reach agreement. If issues raised by a
motion are resolved by the parties prior to a decision on the motion by
the administrative law judge, the parties shall promptly notify the
administrative law judge.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.144 Hearings.

The administrative law judge shall preside at hearings in disciplinary
proceedings. Hearings will be stenographically recorded and transcribed
and the testimony of witnesses will be received under oath or
affirmation. The administrative law judge shall conduct hearings in
accordance with 5 U.S.C. 556. A copy of the transcript of the hearing
shall become part of the record. A copy of the transcript shall be
provided to the Director and the respondent at the expense of the
Office.

If the respondent to a disciplinary proceeding fails to appear at the
hearing after a notice of hearing has been given by the administrative
law judge, the administrative law judge may deem the respondent to have
waived the right to a hearing and may proceed with the hearing in the
absence of the respondent.

A hearing under this section will not be open to the public except that
the Director may grant a request by a respondent to open his or her
hearing to the public and make the record of the disciplinary proceeding
available for public inspection, provided, Agreement is reached in
advance to exclude from public disclosure information which is
privileged or confidential under applicable laws or regulations. If a
disciplinary proceeding results in disciplinary action against a
practitioner, and subject to Section  10.159(c), the record of the
entire disciplinary proceeding, including any settlement agreement, will
be available for public inspection.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.145 Proof; variance; amendment of pleadings.

In case of a variance between the evidence and the allegations in a
complaint, answer, or reply, if any, the administrative law judge may
order or authorize amendment of the complaint, answer, or reply to
conform to the evidence. Any party who would otherwise be prejudiced by
the amendment will be given reasonable opportunity to meet the
allegations in the complaint, answer, or reply, as amended, and the
administrative law judge shall make findings on any issue presented by
the complaint, answer, or reply as amended.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.146 - 10.148 [Reserved]

---SECTION---10.149 Burden of proof.

In a disciplinary proceeding, the Director shall have the burden of
proving his or her case by clear and convincing evidence and a
respondent shall have the burden of proving any affirmative defense by
clear and convincing evidence.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.150 Evidence.

Rules of evidence. The rules of evidence prevailing in courts of law and
equity are not controlling in hearings in disciplinary proceedings.
However, the ad ministrative law judge shall exclude evidence which is
irrelevant, immaterial, or unduly repetitious.

Depositions. Depositions of witnesses taken pursuant to Section  10.151
may be admitted as evidence.

Government documents. Official documents, records, and papers of the
Office are admissible without extrinsic evidence of authenticity. These
documents, records, and papers may be evidenced by a copy certified as
correct by an employee of the Office.

Exhibits. If any document, record, or other paper is introduced in
evidence as an exhibit, the administrative law judge may authorize the
withdrawal of the exhibit subject to any conditions the administrative
law judge deems appropriate.

Objections. Objections to evidence will be in short form, stating the
grounds of objection. Objections and rulings on objections will be a
part of the record. No exception to the ruling is necessary to preserve
the rights of the parties.

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.151 Depositions.

Depositions for use at the hearing in lieu of personal appearance of a
witness before the administrative law judge may be taken by respondent
or the Director upon a showing of good cause and with the approval of,
and under such conditions as may be deemed appropriate by, the
administrative law judge. Depositions may be taken upon oral or written
questions, upon not less than ten days written notice to the other
party, before any officer authorized to administer an oath or
affirmation in the place where the deposition is to be taken. The
requirement of ten days notice may be waived by the parties and
depositions may then be taken of a witness at a time and place mutually
agreed to by the parties. When a deposition is taken upon written
questions, copies of the written questions will be served upon the other
party with the notice and copies of any written cross-questions will be
served by hand or "Express Mail" not less than five days before the date
of the taking of the deposition unless the parties mutually agree
otherwise. A party on whose behalf a deposition is taken shall file a
copy of a transcript of the deposition signed by a court reporter with
the administrative law judge and shall serve one copy upon the opposing
party. Expenses for a court reporter and preparing, serving, and filing
depositions shall be borne by the party at whose instance the deposition
is taken.

When the Director and the respondent agree in writing, a deposition of
any witness who will appear voluntarily may be taken under such terms
and conditions as may be mutually agreeable to the Director and the
respondent. The deposition shall not be filed with the administrative
law judge and may not be admitted in evidence before the administrative
law judge unless he or she orders the deposition admitted in evidence.
The admissibility of the deposition shall lie within the discretion of
the administrative law judge who may reject the deposition on any
reasonable basis including the fact that demeanor is involved and that
the witness should have been called to appear personally before the
administrative law judge.

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.152 Discovery.

Discovery shall not be authorized except as follows:

After an answer is filed under Section  10.136 and when a party
establishes in a clear and convincing manner that discovery is necessary
and relevant, the administrative law judge, under such conditions as he
or she deems appropriate, may order an opposing party to:

Answer a reasonable number of written requests for admission or
interrogatories;

Produce for inspection and copying a reasonable number of documents; and

Produce for inspection a reasonable number of things other than
documents.

Discovery shall not be authorized under paragraph (a) of this section of
any matter which:

Will be used by another party solely for impeachment or
cross-examination;

Is not available to the party under 35 U.S.C. Section 122;

Relates to any disciplinary proceeding commenced in the Patent and
Trademark Office prior to March 8, 1985;

Relates to experts except as the administrative law judge may require
under paragraph (e) of this section.

Is privileged; or

Relates to mental impressions, conclusions, opinions, or legal theories
of any attorney or other representative of a party.

The administrative law judge may deny discovery requested under
paragraph (a) of this section if the discovery sought:

Will unduly delay the disciplinary proceeding;

Will place an undue burden on the party required to produce the
discovery sought; or

Is available (i) generally to the public, (ii) equally to the parties;
or (iii) to the party seeking the discovery through another source.

Prior to authorizing discovery under paragraph (a) of this section, the
administrative law judge shall require the party seeking discovery to
file a motion (Section  10.143) and explain in detail for each request
made how the discovery sought is necessary and relevant to an issue
actually raised in the complaint or the answer.

The administrative law judge may require parties to file and serve,
prior to any hearing, a pre-hearing statement which contains:

A list (together with a copy) of all proposed exhibits to be used in
connection with a party's case-in-chief,

A list of proposed witnesses,

As to each proposed expert witness:

An identification of the field in which the individual will be qualified
as an expert;

A statement as to the subject matter on which the expert is expected to
testify; and

A statement of the substance of the facts and opinions to which the
expert is expected to testify,

The identity of government employees who have investigated the case, and

Copies of memoranda reflecting respondent's own statements to
administrative representatives.

After a witness testifies for a party, if the opposing party requests,
the party may be required to produce, prior to cross-examination, any
written statement made by the witness.

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.153 Proposed findings and conclusions; post- hearing
memorandum.

Except in cases when the respondent has failed to answer the complaint,
the administrative law judge, prior to making an initial decision, shall
afford the parties a reasonable opportunity to submit proposed findings
and conclusions and a post-hearing memorandum in support of the proposed
findings and conclusions.

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.154 Initial decision of administrative law judge.

The administrative law judge shall make an initial decision in the case.
The decision will include (1) a statement of findings and conclusions,
as well as the reasons or basis therefor with appropriate references to
the record, upon all the material issues of fact, law, or discretion
presented on the record, and (2) an order of suspension or exclusion
from practice, an order of reprimand, or an order dismissing the
complaint. The administrative law judge shall file the decision with the
Director and shall transmit a copy to the representative of the Director
and to the respondent. In the absence of an appeal to the Commissioner,
the decision of the administrative law judge will, without further
proceedings, become the decision of the Commissioner of Patents and
Trademarks thirty (30) days from the date of the decision of the
administrative law judge.

The initial decision of the administrative law judge shall explain the
reason for any penalty or reprimand, suspension or exclusion. In
determining any penalty, the following should normally be considered:

The public interest;

The seriousness of the violation of the Disciplinary Rule;

The deterrent effects deemed necessary;

The integrity of the legal profession; and

Any extenuating circumstances.

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR
25073, June 17, 1985]

---SECTION---10.155 Appeal to the Commissioner.

Within thirty (30) days from the date of the initial decision of the
administrative law judge under Section  10.154, either party may appeal
to the Commissioner. If an appeal is taken, the time for filing a
cross-appeal expires 14 days after the date of service of the appeal
pursuant to Section  10.142 or 30 days after the date of the initial
decision of the administrative law judge, whichever is later. An appeal
or cross-appeal by the respondent will be filed and served with the
Director in duplicate and will include exceptions to the decisions of
the administrative law judge and supporting reasons for those
exceptions. If the Director files the appeal or cross-appeal, the
Director shall serve on the other party a copy of the appeal or
cross-appeal. The other party to an appeal or cross-appeal may file a
reply brief. A respondent's reply brief shall be filed and served in
duplicate with the Director. The time for filing any reply brief expires
thirty (30) days after the date of service pursuant to Section  10.142
of an appeal, cross-appeal or copy thereof. If the Director files a
reply brief, the Director shall serve on the other party a copy of the
reply brief. Upon the filing of an appeal, cross-appeal, if any, and
reply briefs, if any, the Director shall transmit the entire record to
the Commissioner.

The appeal will be decided by the Commissioner on the record made before
the administrative law judge.

The Commissioner may order reopening of a disciplinary proceeding in
accordance with the principles which govern the granting of new trials.
Any request to reopen a disciplinary proceeding on the basis of newly
discovered evidence must demonstrate that the newly discovered evidence
could not have been discovered by due diligence.

In the absence of an appeal by the Director, failure by the respondent
to appeal under the provisions of this section shall be deemed to be
both acceptance by the respondent of the initial decision and waiver by
the respondent of the right to further administrative or judicial
review.

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 1985; para. (d)
added, 54 FR 26026, June 21, 1989, effective Aug. 1, 1989; para. (a)
amended, 60 FR 64125, Dec. 14, 1995, effective Jan. 16, 1996]

---SECTION---10.156 Decision of the Commissioner.

An appeal from an initial decision of the administrative law judge shall
be decided by the Commissioner. The Commissioner may affirm, reverse, or
modify the initial decision or remand the matter to the administrative
law judge for such further proceedings as the Commissioner may deem
appropriate. Subject to paragraph (c) of this section, a decision by the
Commissioner does not become a final agency action in a disciplinary
proceeding until 20 days after it is entered. In making a final
decision, the Commissioner shall review the record or those portions of
the record as may be cited by the parties in order to limit the issues.
The Commissioner shall transmit a copy of the final decision to the
Director and to the respondent.

A final decision of the Commissioner may dismiss a disciplinary
proceeding, reprimand a practitioner, or may suspend or exclude the
practitioner from practice before the Office.

A single request for reconsideration or modification of the
Commissioner's decision may be made by the respondent or the Director if
filed within 20 days from the date of entry of the decision. Such a
request shall have the effect of staying the effective date of the
decision. The decision by the Commissioner on the request is a final
agency action in a disciplinary proceeding and is effective on its date
of entry.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985; para. (a)
amended and para. (c) added, 54 FR 6660, Feb. 14, 1989]

---SECTION---10.157 Review of Commissioner's final decision.

Review of the Commissioner's final decision in a disciplinary case may
be had, subject to Section  10.155(d), by a petition filed in the United
States District Court for the District of Columbia. See 35 U.S.C. 32 and
Local Rule 213 of the United States District Court for the District of
Columbia.

The Commissioner may stay a final decision pending review of the
Commissioner's final decision.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985; amended 53 FR
13120, Apr. 21, 1988; para. (a) amended, 54 FR 26026, June 21, 1989,
effective Aug. 1, 1989]

---SECTION---10.158 Suspended or excluded practitioner.

A practitioner who is suspended or excluded from practice before the
Office underSection  10.156(b) shall not engage in unauthorized practice
of patent, trademark and other non patent law before the Office.

Unless otherwise ordered by the Commissioner, any practitioner who is
suspended or excluded from practice before the Office under Section
10.156(b) shall:

Within 30 days of entry of the order of suspension or exclusion, notify
all bars of which he or she is a member and all clients of the
practitioner for whom he or she is handling matters before the Office in
separate written communications of the suspension or exclusion and shall
file a copy of each written communication with the Director.

Within 30 days of entry of the order of suspension or exclusion,
surrender a client's active Office case files to (i) the client or (ii)
another practitioner designated by the client.

Not hold himself or herself out as authorized to practice law before the
Office.

Promptly take any necessary and appropriate steps to remove from any
telephone, legal, or other directory any advertisement, statement, or
representation which would reasonably suggest that the practitioner is
authorized to practice patent, trademark, or other non-patent law before
the Office, and within 30 days of taking those steps, file with the
Director an affidavit describing the precise nature of the steps taken.

Not advertise the practitioner's availability or ability to perform or
render legal services for any person having immediate, prospective, or
pending business before the Office.

Not render legal advice or services to any person having immediate,
prospective, or pending business before the Office as to that business.

Promptly take steps to change any sign identifying a practitioner's or
the practitioner's firm's office and the practitioner's or the
practitioner's firm's stationery to delete therefrom any advertisement,
statement, or representation which would reasonably suggest that the
practitioner is authorized to practice law before the Office.

Within 30 days, return to any client any unearned funds, including any
unearned retainer fee, and any securities and property of the client.

A practitioner who is suspended or excluded from practice before the
Office and who aids another practitioner in any way in the other
practitioner's practice of law before the Office, may, under the direct
supervision of the other practitioner, act as a paralegal for the other
practitioner or perform other services for the other practitioner which
are normally performed by lay-persons, provided:

The practitioner who is suspended or excluded is:

A salaried employee of:

The other practitioner;

The other practitioner's law firm; or

A client-employer who employs the other practitioner as a salaried
employee;

The other practitioner assumes full professional responsibility to any
client and the Office for any work performed by the suspended or
excluded practitioner for the other practitioner;

The suspended or excluded practitioner, in connection with any
immediate, prospective, or pending business before the Office, does not:

Communicate directly in writing, orally, or otherwise with a client of
the other practitioner;

Render any legal advice or any legal services to a client of the other
practitioner; or

Meet in person or in the presence of the other practitioner with:

Any Office official in connection with the prosecution of any patent,
trademark, or other case;

Any client of the other practitioner, the other practitioner's law firm,
or the client-employer of the other practitioner;

Any witness or potential witness which the other practitioner, the other
practitioner's law firm, or the other practitioner's client-employer may
or intends to call as a witness in any proceeding before the Office. The
term "witness" includes individuals who will testify orally in a
proceeding before, or sign an affidavit or any other document to be
filed in, the Office.

When a suspended or excluded practitioner acts as a paralegal or
performs services under paragraph (c) of this section, the suspended or
excluded practitioner shall not thereafter be reinstated to practice
before the Office unless:

The suspended or excluded practitioner shall have filed with the
Director an affidavit which (i) explains in detail the precise nature of
all paralegal or other services performed by the suspended or excluded
practitioner and (ii) shows by clear and convincing evidence that the
suspended or excluded practitioner has complied with the provisions of
this section and all Disciplinary Rules, and

The other practitioner shall have filed with the Director a written
statement which (i) shows that the other practitioner has read the
affidavit required by subparagraph (d)(1) of this section and that the
other practitioner believes every statement in the affidavit to be true
and (ii) states why the other practitioner believes that the suspended
or excluded practitioner has complied with paragraph (c) of this
section.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.159 Notice of suspension or exclusion.

Upon issuance of a final decision reprimanding a practitioner or
suspending or excluding a practitioner from practice before the Office,
the Director shall give notice of the final decision to appropriate
employees of the Office and to interested departments, agencies, and
courts of the United States. The Director shall also give notice to
appropriate authorities of any State in which a practitioner is known to
be a member of the bar and any appropriate bar association.

The Director shall cause to be published in the OfficialGazette the name
of any practitioner suspended or excluded from practice. Unless
otherwise ordered by the Commissioner, the Director shall publish in the
Official Gazette the name of any practitioner reprimanded by the
Commissioner.

The Director shall maintain records, which shall be available for public
inspection, of every disciplinary proceeding where practitioner is
reprimanded, suspended, or excluded unless the Commissioner orders that
the proceeding be kept confidential.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.160 Petitioner for reinstatement.

A petition for reinstatement of a practitioner suspended for a period of
less than five years will not be considered until the period of
suspension has passed.

A petition for reinstatement of a practitioner excluded from practice
will not be considered until five years after the effective date of the
exclusion.

An individual who has resigned under Section 10.133 or who has been
suspended or excluded may file a petition for reinstatement. The
Director may grant a petition for reinstatement when the individual
makes a clear and convincing showing that the individual will conduct
himself or herself in accordance with the regulations of this part and
that granting a petition for reinstatement is not contrary to the public
interest. As a condition to reinstatement, the Director may require the
individual to:

Meet the requirements of Section 10.7, including taking and passing an
examination under Section 10.7(b) and

Pay all or a portion of the costs and expenses, not to exceed $1,500, of
the disciplinary proceeding which led to suspension or exclusion.

Any suspended or excluded practitioner who has violated the provisions
of Section 10.158 during his or her period of suspension or exclusion
shall not be entitled to reinstatement until such time as the Director
is satisfied that a period of suspension equal in time to that ordered
by the Commissioner or exclusion for five years has passed during which
the suspended or excluded practitioner has complied with the provisions
of Section  10.158.

Proceedings on any petition for reinstatement shall be open to the
public. Before reinstating any suspended or excluded practitioner, the
Director shall publish in the OfficialGazette a notice of the suspended
or excluded practitioner's petition for reinstatement and shall permit
the public a reasonable opportunity to comment or submit evidence with
respect to the petition for reinstatement.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.161 Savings clause.

A disciplinary proceeding based on conduct engaged in prior to the
effective date of these regulations may be instituted subsequent to such
effective date, if such conduct would continue to justify suspension or
exclusion under the provisions of this part.

No practitioner shall be subject to a disciplinary proceeding under this
part based on conduct engaged in before the effective date hereof if
such conduct would not have been subject to disciplinary action before
such effective date.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---10.162 - 10.169 [Reserved]

---SECTION---10.170 Suspension of rules.

In an extraordinary situation, when justice requires, any requirement of
the regulations of this part which is not a requirement of the statutes
may be suspended or waived by the Commissioner or the Commissioner's
designee,sua sponte, or on petition of any party, including the Director
orthe Director's representative, subject to such other requirements as
may be imposed.

Any petition under this section will not stay a disciplinary proceeding
unless ordered by the Commissioner or an administrative law judge.

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 1985]

---SECTION---Index
---SECTION---Index A

Address change  10.11

Advertising  10.31, 10.32

Agents, registration of  10.6

Agreements restricting practice  10.38

Aliens  10.6, 10.9

Applicant for patent, representation of  1.31, 10.10

Applicant for trademark, representation of  .2.11

Attorneys, recognition of to practice in trademark cases  10.14

Attorneys, registration of to practice in patent cases  10.6, 10.7

---SECTION---Index B

Breach of trust  10.23

Business transactions or relations with client  10.65

---SECTION---Index C

Candidate for judicial office  10.103

Canons and disciplinary rules  10.20 - 10.112

Certificate of mailing  1.8, 10.23, 10.141

Certification effect of signature  10.18

Circumventing a disciplinary rule, amendment  10.23

Code of Professional Responsibility  10.20 - 10.112

Coercion, Use of  10.23

Committee on Discipline  10.4

Committee on Enrollment  10.3

Communicating with person having adverse interest  10.67

Communications concerning practitioner's service  10.31

Compensation for legal services  10.68

Competence  10.76, 10.77

Complaint instituting disciplinary proceedings  10.134

Concealment of material information  10.23

Conduct in proceeding before Office  10.89

Conduct prejudicial to the administration of justice  10.23

Conflict of interest  10.66

Conviction of criminal offense  10.23

---SECTION---Index D

Deceit  10.23

Decisions of the Commissioner  10.156, 10.157

Definitions:

Affidavit  10.1

Agent  10.6

(Definitions):

Application  10.1

Canon  10.20

Confidence  10.57

Differing interests  10.1

Director of Enrollment and Discipline  10.1

Disciplinary rule  10.20

Employee of a tribunal  10.1

Excessive legal fees  10.36

Excluded practitioner  10.1

Giving information  10.1

Invention development services  10.23

Law firm  10.1

Lawyer  10.1

Legal counsel  10.1

Legal profession  10.1

Legal service  10.1

Legal system  10.1

Non-practitioner  10.1

Office  10.1

Person  10.1

Practitioner  10.1

Proceeding before the Office  10.1

Professional legal corporation  10.1

Registration  10.1

Respondent  10.134

Secret  10.33, 10.57

State  10.1

Suspended practitioner  10.1

Tribunal  10.1

United States  10.1

Designation as registered attorney or agent  10.34

Direct contact with prospective clients  10.33

Director of Enrollment and Discipline:

Appointment  10.2

Duties  10.2

Review of decisions of the Director  10.2

Disbarment from practice on ethical grounds  10.130

Discharge of attorney or agent by client  10.40

Disciplinary proceedings and investigations:

Administrative Law Judge  10.139

Administrative Procedures Act  10.132, 10.144

Review of interlocutory orders by Administrative Law Judge  10.139

Amendment of complaint  10.145

Amendment of pleadings  10.145

Answer to complaint  10.136

Appeal of initial decision of Administrative Law Judge  10.155

Burden of proof  10.149

Certificate of mailing  1.8, 10.141

Complaint  10.134

Contested case  10.138

(Disciplinary proceedings and investigations):

Deliberations of Committee on Discipline  10.4

Discovery (see also Discovery in Disciplinary Proceedings)  10.152

Exception to ruling  10.150

Filing papers after complaint filed  10.141

Hearings before Administrative Law Judge  10.144

Initial decision of Administrative Law Judge  10.139, 10.154

Initiating disciplinary proceeding  10.132

Investigations of violations of disciplinary rules  10.131

Notice of suspension or exclusion of practitioner  10.159

Objections to evidence  10.150

Post hearing memorandum  10.153

Pre-hearing statement  10.153

Reinstatement of suspended or excluded practitioner  10.160

Reprimand of registered attorney or agent  10.130, 10.132

Resignation of practitioner  10.133

Review of Commissioner's final decision  10.157

Review of decision denying reinstatement of practitioner  10.2

Savings clause  10.161

Service of complaint  10.135

Settlement of complaint  10.133

Stay pending review of interlocutory order  10.139

Supplemental complaint  10.137

Disciplinary rule violation

Disclosure of  10.23, 10.24, 10.84, 10.85, 10.131

Discourteous conduct  10.89

Discovery in disciplinary proceedings:

Copying of documents  10.152

Cross-examination  10.152

Deliberations of committee on enrollment  10.4

Depositions  10.151

Evidence  10.150, 10.152

Impeachment  10.152

Inspection of documents  10.152

Interrogatories  10.152

Motions filed with Administrative Law Judge  10.143, 10.152

Privileged information  10.152

Undue delay in proceedings  10.152

Division of legal fees  10.37

Duress, use of  10.23

Duty to make counsel available  10.30

---SECTION---Index E

Employment:

Acceptance  10.39

(Employment):

Failure to carry out contract  10.84

Refusing employment  10.62, 10.63, 10.66

Withdrawal from employment  10.40, 10.63, 10.66

Exception to ruling  10.151

Excessive legal fees  10.36

Exclusion of practitioner  10.130, 10.132, 10.158

---SECTION---Index F

Failure to disclose material fact with regard to registration  10.22

Failure to notify client  10.23

False accusations  10.23

False statements concerning officials  10.102

Favors, improperly bestowing  10.23

Fees:

In general  1.21

Petition to review decision of Director of Enrollment and Discipline 
10.2

Registration  10.8

Registration examination  10.7

Reinstatement  10.11

Request regrade of examination  10.6

Fees for legal services  10.36

Firm name, use of  10.35

Fitness to practice before the Office  10.23

Foreigners  10.6, 10.9, 10.14

Former Patent and Trademark Office employees  10.7, 10.10, 10.23

Fraud or inequitable conduct  10.23, 10.85

Frivolous complaint  10.23

Funds of client, preserving identity of  10.112

---SECTION---Index G

Gift, improperly bestowing  10.23

Government employees, registration of to practice in patent cases  10.10

---SECTION---Index I

Illegal conduct involving moral turpitude  10.23

Illegal fees for services  10.36

Improper alteration of patent application  10.23

Improper execution of oath or declaration  10.23

Improper influence  10.23

Improper signature  10.18, 10.23

Improperly bestowing thing of value  10.23

Incompetence  10.77, 10.78

Indecent statement, making of .  10.23

Independent professional judgment, exercise of  10.61, 10.62, 10.66,
10.68

Individual unqualified in respect to character, education, etc.  10.7,
10.22

Influence by others than client  10.68

Information precluding registration, failure to disclose  10.22

Initial decision of Administrative Law Judge  10.139, 10.154

Integrity and competence of the legal profession, maintaining of  10.22

Interest in litigation or proceeding before Office, acquiring of  10.64

Investigation of violations of disciplinary rules  10.131

---SECTION---Index J

Joint venture  10.23

Judicial office, candidate for  10.103

---SECTION---Index L

Legal fees:

Division of  10.37

Failure to pay  10.40

Sharing of  10.48

Legal system, assistance in improving the  10.100

Letterheads, use of  10.35

Limited recognition to practice in patent cases  10.9

---SECTION---Index M

Malpractice, limiting client's liability  10.78

Materially false statements in application for registration  10.22

Misappropriation of funds  10.23

Misconduct  10.23

Misrepresentations  10.22, 10.23

Multiple employment  10.66

---SECTION---Index N

Neglecting legal matters  10.77

Non-practitioner, formation of partnership with  10.49

Notice of suspension or exclusion  10.159

---SECTION---Index O

Oath requirement  10.8

Officials, contact with  10.93

---SECTION---Index P 

Petitions:

Fees in general  1.21

Regrade of examination  10.7(c)

(Petitions):

Reinstatement  10.160

Review decision of Commissioner  10.157

Review decision of Director of Enrollment and Discipline  10.2

Suspension of rules  10.170

Preserve secrets and confidence of client  10.56, 10.57

Pro se applicant  1.31, 2.11

Professional impropriety, avoiding appearance of  10.110, 10.111

Promise of advantage, offer of  10.23

Property of client  10.112

Proprietary interest in subject matter  10.64

Publication in Official Gazette  10.11, 10.159, 10.160

---SECTION---Index R

Recognition to practice before the Patent and Trademark Office:

Agents  10.6, 10.7, 10.14

Aliens  10.6, 10.7, 10.14

Attorneys  10.6, 10.7, 10.14

Change of address, requirement to notify Director  10.11

Contents of petition for reinstatement of:

person not suspended or excluded  10.2

suspended or excluded practitioner  10.160

Examination of registration in patent cases  10.7

Examination fee  10.7

Foreigners  10.6, 10.9, 10.14

Former Patent and Trademark Office employees  10.7, 10.10, 10.23

Government employees  10.10, 10.23

Limited recognition in patent cases  10.9

Non-lawyers, recognition in trademark cases  10.10

Patent cases  10.6 - 10.10

Recognition for representation  1.34, 2.17, 10.14

Recognition to practice  10.6 - 10.18

Refusal to recognize practitioner  10.15

Register of attorneys and agents in patent cases  10.5

Registration fee  10.8

Registration number  1.34

Removal of attorneys and agents from the register  10.11

Representation by registered attorney or agent in patent cases  1.31

Request for regrade of examination  10.6

Requirements for registration  10.7

Review of Director's decision refusing registration  10.2

Trademark cases  10.14

Unauthorized representation by an agent  10.10, 10.31

Records, property and funds of client, maintaining of  10.112

Reinstatement after removal from the register  10.2, 10.11

Reinstatement of suspended or excluded non-practitioner  10.160

Representing client within bounds of the law  10.85

Reprimand of registered attorney or agent  10.130, 10.132

Resignation  10.133

Revocation of power of attorney in trademark case  2.19

---SECTION---Index S

Scandalous statements, making of  10.23

Secrets and confidence, preservation of clients  10.56, 10.57

Settlement of claims of clients  10.67

Sharing legal fees  10.48

Signature and certificate of practitioner  10.18

Solicitation  10.32, 10.33

Statement concerning officials, making false  10.102

Suspension of practitioner  10.23, 10.130, 10.132, 10.158

Suspension of rules  10.170

---SECTION---Index T

Threats of criminal prosecution  10.88

Threats, use of  10.23

---SECTION---Index U

Unauthorized practice  10.14, 10.23, 10.31, 10.46, 10.47

Undignified conduct  10.89

---SECTION---Index V

Violating duty of candor and good faith  10.23

Violation of disciplinary rule, misconduct  10.23

---SECTION---Index W

Withdrawal from employment  10.40

Withdrawal material information  10.22, 10.23

Witnesses  10.63, 10.92

---SECTION---Index Z

Zealously representing the client  10.83, 10.84

---SECTION----[Reserved]

[Part 15 removed and reserved, 61 FR 42807, Aug. 19, 1996]

---SECTION---- [Reserved]

[Part 15a removed and reserved, 61 FR 42807, Aug. 19, 1996]

---SECTION---C PROTECTION OF FOREIGN MASK WORKS

---SECTION---REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17
U.S.C. 902(a)(2)

Authority: 35 U.S.C. 6; E.O. 12504, 50 FR 4049, 3 CFR 1985 Comp. p. 335.

---SECTION---150.1 Definitions.

Commissioner means Assistant Secretary and Commissioner of Patents and
Trademarks.

Foreign government means the duly-constituted executive of a foreign
nation, or an international or regional intergovernmental organization
which has been empowered by its member states to request issuance of
Presidential proclamations on their behalf under this part.

Interim order means an order issued by the Secretary of Commerce under
17 U.S.C. 914.

Mask work means a series of related images, however fixed or encoded -

Having or representing the predetermined, three-dimensional pattern of
metallic, insulating, or semiconductor material present or removed from
the layers of a semiconductor chip product; and

In which series the relation of the images to one another is that each
image has the pattern of the surface of one form of the semiconductor
chip product.

Presidential proclamation means an action by the President extending to
foreign nationals, domiciliaries and sovereign authorities the privilege
of applying for registrations for mask works pursuant to 17 U.S.C. 902.

Request means a request by a foreign government for the issuance of a
Presidential proclamation.

Proceeding means a proceeding to issue an interim order extending
protection to foreign nationals, domiciliaries and sovereign authorities
under 17 U.S.C. Chapter 9.

Secretary means the Secretary of Commerce.

[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988]

---SECTION---150.2 Initiation of evaluation.

The Commissioner independently or as directed by the Secretary, may
initiate an evaluation of the propriety of recommending the issuance,
revision, suspension or revocation of a section 902 proclamation.

The Commissioner shall initiate an evaluation of the propriety of
recommending the issuance of a section 902 proclamation upon receipt of
a request from a foreign government.

[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988]

---SECTION---150.3 Submission of requests.

Requests for the issuance of a section 902 proclamation shall be
submitted by foreign governments for review by the Commissioner.

Requests for issuance of a proclamation shall include:

A copy of the foreign law or legal rulings that provide protection for
U.S. mask works which provide a basis for the request.

A copy of any regulations or administrative orders implementing the
protection.

A copy of any laws, regulations, or administrative orders establishing
or regulating the registration (if any) of mask works.

Any other relevant laws, regulations, or administrative orders.

All copies of laws, legal rulings, regulations, or administrative orders
submitted must be in unedited, full-text form, and if possible, must be
reproduced from the original document.

All material submitted must be in the original language, and if not in
English, must be accompanied by a certified English translation.

[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988]

---SECTION---150.4 Evaluation.

Upon submission of a request by a foreign government for the issuance of
a section 902 proclamation, if an interim order under section 914 has
not been issued, the Commissioner may initiate a section 914 proceeding
if additional information is required.

If an interim order under section 914 has been issued, the information
obtained during the section 914 proceeding will be used in evaluating
the request for a section 902 proclamation.

After the Commissioner receives the request of a foreign government for
a section 902 proclamation, or after a determination is made by the
Commissioner to initiate independently an evaluation pursuant to Section 
150.2(a) of this part, a notice will be published in the Federal
Register to request relevant and material comments on the adequacy and
effectiveness of the protection afforded U.S. mask works under the
system of law described in the notice. Comments should include detailed
explanations of any alleged deficiencies in the foreign law or any
alleged deficiencies in its implementation. If the alleged deficiencies
include problems in administration such as registration, the respondent
should include as specifically as possible full detailed explanations,
including dates for and the nature of any alleged problems. Comments
shall be submitted to the Commissioner within sixty (60) days of the
publication of the Federal Register notice.

The Commissioner shall notify the Register of Copyrights and the
Committee on the Judiciary of the Senate and the House of
Representatives of the initiation of an evaluation under these
regulations.

If the written comments submitted by any party present relevant and
material reasons why a proclamation should not issue, the Commissioner
will:

Contact the party raising the issue for verification and any needed
additional information;

Contact the requesting foreign government to determine if the issues
raised by the party can be resolved; and,

If the issues are resolved, continue with the evaluation; or,

If the issues cannot be resolved on this basis, hold a public hearing to
gather additional information.

The comments, the section 902 request, information obtained from a
section 914 proceeding, if any, and information obtained in a hearing
held pursuant to paragraph (e)(ii) of this section, if any, will be
evaluated by the Commissioner.

The Commissioner will forward the information to the Secretary, together
with an evaluation and a draft recommendation.

The Secretary will forward a recommendation regarding the issuance of a
section 902 proclamation to the President.

[Added, 53 FR 24448, June 29, 1988, effective August 1, 1988]

---SECTION---150.5 Duration of proclamation.

The recommendation for the issuance of a proclamation may include terms
and conditions regarding the duration of the proclamation.

Requests for the revision, suspension or revocation of a proclamation
may be submitted by any interested party. Requests for revision,
suspension or revocation of a proclamation will be considered in
substantially the same manner as requests for the issuance of a section
902 proclamation.

[Added 53 FR 24448, June 29, 1988, effective August 1, 1988]

---SECTION---150.6 Mailing address.

Requests and all correspondence pursuant to these guidelines shall be
addressed to: Commissioner of Patents and Trademarks, Box 4, Washington,
D.C. 20231.

[Added 53 FR 24448, June 29, 1988, effective August 1, 1988]