[Federal Register: September 23, 1996 (Volume 61, Number 185)] [Proposed 
Rules] PRIVATE                 
[Page 49819-49868]
[[Page 49819]]
_________________________________________________________________ 
Part II

Department of Commerce
_________________________________________________________________

Patent and Trademark Office 
_______________________________________________________________________ 

37 CFR Part 1, et al.

1996 Changes to Patent Practice and Procedure; Proposed Rule 

[[Page 49820]]

DEPARTMENT OF COMMERCE

Patent and Trademark Office 
37 CFR Parts 1, 3, 5, and 7

[Docket No. 960606163-6163-01]
RIN 0651-AA80
 
1996 Changes to Patent Practice and Procedure 
AGENCY: Patent and Trademark Office, Commerce. 
ACTION: Notice of proposed rulemaking.

----------------------------------------------------------------------- 
SUMMARY: The Patent and Trademark Office (Office) is proposing to amend  the 
rules of practice in patent cases to simplify the requirements of  the rules, 
rearrange portions of the rules for better context, and  eliminate unnecessary 
rules or portions thereof as part of a  government-wide effort to reduce the 
regulatory burden on the American  public. The procedure for filing of 
continuation and divisional  applications would be simplified. Another type of 
simplification being  proposed that would affect several rules is the 
acceptance of a  statement that errors were made without deceptive intent, 
unaccompanied  by any further showing of facts and circumstances. The naming 
of  inventors would no longer be required on filing of the application in  
order to obtain a filing date, which would eliminate the need for  certain 
petitions to correct inventorship.

DATES: Written comments must be received on or before November 22,  1996, to 
ensure consideration.
    Comments will be available for public inspection after receipt and  will 
be available on the Internet (address: regreform@.uspto.gov).  Commentators 
should note that since their comments will be made  publicly available, 
information that is not desired to be made public,  such as the address and 
phone number of the commentator, should not be  included in the comments. A 
public hearing will not be conducted. 
ADDRESSES: Comments should be sent by mail message over the Internet  
addressed to regreform@.uspto.gov.
    Comments may also be submitted by mail addressed to: Box Comments-- 
Patents, Assistant Commissioner for Patents, Washington, DC 20231,  Attention: 
Jeffrey V. Nase or by FAX to (703) 308-6916. Although  comments may be 
submitted by mail or FAX, the Office prefers to receive  comments via the 
Internet. Where comments are submitted by mail, the  Office would appreciate 
the comments to be electronically filed on a  DOS formatted 3\1/4\ inch disk 
along with a paper copy of the comments.     The comments will be available 
for public inspection in Suite 520,  of One Crystal Park, 2011 Crystal Drive, 
Arlington, Virginia. 
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, by telephone at  (703) 
305-9285 or by mail addressed to: Box Comments--Patents,  Assistant 
Commissioner for Patents, Washington, DC 20231 marked to the  attention of Mr. 
Bernstein or by FAX to (703) 308-6916.

SUPPLEMENTARY INFORMATION: This proposed rule change seeks to implement  
President Clinton's program of reducing the regulatory burden on the  American 
public, which program is supported by the Office as published  in the Official 
Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19,  20 and 22. The 
proposed changes are directed towards: (1)  Simplification of procedures for 
filing continuation and divisional  applications, establishing lack of 
deceptive intent in reissues,  petition practice, and in the filing of papers 
correcting improperly  requested small entity status; (2) elimination of 
unnecessary  requirements, such as certain types of petitions to correct  
inventorship under Sec. 1.48; (3) removal of rules and portions thereof  that 
merely represent instructions as to the internal affairs of the  Office more 
appropriate for inclusion in the Manual of Patent Examining  Procedure (MPEP); 
(4) rearrangement of portions of rules to improve  their context; and (5) 
clarification of rules to aid in understanding  of the requirements that they 
set forth.
    The Office is particularly interested in comments as to whether the  
proposed rules if adopted should be applied to already pending reissue  oaths 
or declarations under the new proposed standards of Sec. 1.175 as  it is to be 
amended under the final rule and already pending petitions  and papers under 
Secs. 1.28(c)(2), 1.48 and 1.324 as they are to be  amended under the final 
rule for such papers submitted prior to the  effective date of any final rule 
change, i.e., should the advantages  proposed by these suggested rule changes 
that are incorporated into the  final rule be applied retroactively to papers 
submitted prior to the  effective date of the final rule.

Discussion of Specific Rules

    If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7  are 
amended as proposed:
    Section 1.4(d) paragraphs (1) and (2) would be amended to place the  
current subject matter of both paragraphs into paragraphs (d)(1) (i)  and (ii) 
with a clarifying reference in paragraph (d)(1)(ii) to the  submission of a 
copy of a copy.
    Paragraph (d)(2) of Sec. 1.4 would be amended so that the  certifications 
set forth in the rule would be automatically made upon  presenting any paper 
to the Office by the party presenting the paper  and in an added paragraph 
(d)(3)(ii) identifying by the statute, 18  U.S.C. 1001 that sets forth the 
required standards of conduct.  Sanctions would be set forth in a Sec. 
1.4(d)(3)(i) for violation of  the certifications in Sec. 1.4(d)(2) and for 
violations of the  standards of conduct in Sec. 1.4(d)(3)(ii).
    The proposed amendments to Sec. 1.4(d) would support proposed  amendments 
to Secs. 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69,  1.102, 1.125, 
1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will  be reviewed at a 
later date in connection with other matters), 3.26,  and 5.4 that would delete 
the requirement for verification (MPEP 602)  of statements of facts by 
applicants and other parties who are not  registered to practice before the 
Office. The absence of a required  verification has been a source of delay in 
the prosecution of  applications, particularly where such absence is the only 
defect noted.  The proposed change to Sec. 1.4(d) would automatically 
incorporate  required averments thereby eliminating the necessity for a 
separate  verification for each statement of facts that is to be presented,  
except for those instances where the verification requirement is  retained. 
Similarly, the proposed amendments to Sec. 1.4(d) would  support a proposed 
amendment to Secs. 1.97 (Secs. 1.637 and 1.673 will  be reviewed at a later 
date in connection with other matters) that  would change the requirements for 
certifications to requirements for  statements. The oath or declaration under 
Secs. 1.63 and affidavits  under Secs. 1.131 and 1.132 would not be affected. 
The requirement in  Sec. 5.25(a)(3) for a verified statement would be 
maintained, as the  required explanation must include a showing of facts 
(evidence), not  mere allegations, which will be weighed by the official 
deciding the  petition for retroactive license. The statements in Secs. 
1.494(e) and  1.495(f) that verification of translations of documents filed in 
a  language other than English may be required would be maintained, as  such 
requirements are made rarely and only when deemed necessary (when  persons 
persist in translations which appear on their face to be  inaccurate, for 
example). The requirements for certification of service  on parties in Secs. 
1.248, 1.510, 1.637 and 10.142 would be maintained. 
[[Page 49821]]

    Section 1.4 would also have a new paragraph (g) related to an  applicant 
who has not made of record a registered attorney or agent  being required to 
state whether assistance was received in the  preparation or prosecution of a 
patent application. This is proposed to  be transferred from Sec. 1.33(b) for 
consistent contextual purposes.     Section 1.6 paragraph (e)(2) would be 
amended to remove the  requirement that the statement be verified in 
accordance with the  proposed change to Sec. 1.4(d)(2).
    Section 1.8 paragraph (b)(3) would be amended to remove the  requirement 
that the statement be verified in accordance with the  proposed change to Sec. 
1.4(d)(2).
    Section 1.10 would be amended to remove the requirement for a  statement 
that is verified. See comments to Sec. 1.4(d). It is also  proposed to clarify 
the section by substitution of ``averring to the  fact'' with ``stating.''
    Section 1.14 would have the title and paragraphs (a) and (e)  amended to 
replace the term ``secrecy'' by ``confidence'' to conform to  the usage in 35 
U.S.C. 122. Paragraph (a) of Sec. 1.14 would have a  reference to serial 
number changed to application number. Section 1.14  would also be amended to 
have paragraph (f) added to recognize the  proposed change to Sec. 1.47 (a) 
and (b) that are also exceptions to  maintaining pending applications in 
confidence by providing public  notice of the prospective issuance of a 
pending application to  nonsigning inventors.
    Section 1.17 (and Sec. 1.136(a)) would add a recitation to an  extension 
of time fee payment for a reply filed within a fifth month  after a 
nonstatutory or shortened statutory period for reply was set.  Section 1.17(a) 
is specifically proposed to be subdivided into  paragraphs (a)(1) through 
(a)(5), with paragraphs (a)(1) through (a)(4)  setting forth the amounts for 
one-month through four-month extension  fees proposed in Revision of Patent 
Fees for Fiscal Year 1997, 1186  Off. Gaz. Pat. Office 14 (May 7, 1996); 61 FR 
19224 (May 1, 1996).  Paragraph (a)(5) would provide the small and other than 
small entity  amounts for the newly proposed fifth-month extension fee. 
Sections 1.17  (b), (c) and (d) are proposed to be removed as unnecessary in 
view of  proposed Sec. 1.17 (a)(1) through (a)(5).
    Fee levels, as proposed by the Revision of Patent Fees for Fiscal  Year 
1997, were used in establishing the fifth-month extension of time  fees for 
large and small entities for paragraph (a)(5) of Sec. 1.17. A  shortened 
statutory period for reply of one month may be set, thereby  allowing a fifth 
month for reply within the six-month statutory period  for response. Section 
1.17(a) is being amended to recognize the  availability of a fifth-month 
extension of time when a one-month or a  thirty-day shortened statutory period 
is set (e.g., in a written  requirement for restriction). The addition of a 
fifth-month would then  also become available for replies with nonstatutory 
periods of time  set, such as for replies to Notices to File Missing Parts of 
 Applications.
    Section 1.17(i), as proposed, would: add a petition fee under  Sec. 1.59 
for expungement and return of papers, delete the references  to petitions 
under Secs. 1.60 and 1.62 to accord a filing date in view  of the proposed 
deletion of Secs. 1.60 and 1.62, and to change  ``divisional reissues'' to 
``multiple reissue applications.'' Moreover,  Sec. 1.17, as well as Secs. 
1.103, 1.112, 1.113, 1.133, 1.134, 1.135,  1.136, 1.142, 1.144, 1.146, 1.191, 
1.192, 1.291, 1.294, 1.484, 1.485,  1.488, 1.494, 1.495, 1.530, 1.550, 1.560, 
(1.605, 1.617, 1.640, and  1.652 will be reviewed at a later date in 
connection with other  matters), 1.770, 1.785, (1.821 will be reviewed at a 
later date in  connection with other matters), and 5.3, would replace the 
phrases  ``response'' and ``respond'' with ``reply'' for consistency with  
Sec. 1.111.
    Section 1.21(n), as proposed, would delete the reference to an  improper 
application under Secs. 1.60 or 1.62 in view of the proposed  deletion of 
Secs. 1.60 and 1.62.
    Section 1.26(a) is proposed to be amended to better track the  statutory 
language of 35 U.S.C. 42(d) by deleting ``[m]oney'' and  ``actual,'' adding 
``fee'' and adding back language relating to refunds  of fees paid that were 
not ``required'' that was inadvertently dropped  in the July 1, 1993, 
publication of title 37 CFR, and from subsequent  publications.
    Section 1.27 (a) through (d) would be amended to remove the  requirement 
that a statement filed thereunder be ``verified.'' See  comments relating to 
Sec. 1.4(d). Section 1.27(b) is proposed to be  amended for clarification with 
the movement of a clause relating to  ``any verified statement'' within a 
sentence.
    Section 1.28(a) would be amended to remove the requirement for a  
statement that is ``verified.'' See comments relating to Sec. 1.4(d).     
Section 1.28(a) would also be amended to provide that a new small  entity 
statement would not be required for reissue or continued  prosecution (Sec. 
1.53(b)(3)) applications where small entity status is  still proper and 
reliance is had on a reference to a small entity  statement filed in a prior 
application or patent or a copy thereof is  supplied.
    Section 1.28(a) would be further amended to state that the payment  of a 
small entity basic statutory filing fee in a nonprovisional  continuing 
application, which claims benefit under 35 U.S.C. 119(e),  120, 121, or 365(c) 
of a prior application or in a continuing  prosecution application, or in a 
reissue application, wherein the prior  application or the patent has small 
entity status, will substitute for  the reference in the continuing or reissue 
application to the small  entity statement in the prior application or in the 
patent, thereby  establishing small entity status in such nonprovisional 
application.     Section 1.28(a) is also amended to require a new 
determination of  continued entitlement to small entity status for continued 
prosecution  applications filed under Sec. 1.53(b)(3) and to clarify that the 
 refiling of applications as continuations, divisions and continuation- 
in-part applications and the filing of reissue applications also  require a 
new determination of continued entitlement to small entity  status prior to 
reliance on small entity status in a prior application  or patent.
    Section 1.28(c) would have the requirement removed for a statement  of 
facts explaining how an error in payment of small entity fees  occurred in 
good faith and how and when the error was discovered. A fee  deficiency 
payment based on the difference between fees originally paid  as a small 
entity and the current large entity amount at the time of  full payment of the 
fee deficiency will be deemed to constitute a  belief by the party submitting 
the deficiency payment that small entity  status was established in good faith 
and that the original payment of  small entity fees was made in good faith. 
Any paper submitted under  Sec. 1.28(c) will be placed in the appropriate file 
without review  after the processing of any check or the charging of any fee 
deficiency  payment specifically authorized.
    Section 1.33 would no longer provide that the required residence  and post 
office address of the applicant can appear elsewhere than in  the oath or 
declaration under Sec. 1.63. Section 1.63(a)(3) would be  amended to require 
that the post office address as well as the  residence be identified therein 
and not elsewhere. Permitting the  residence to be elsewhere in the 
application other than the oath or  declaration, as in current Sec. 1.33(a), 
is inconsistent with current  Sec. 1.63(c) that states the residence must 
appear in the oath or  declaration. The requirement for placement of the post 
office address  is proposed to be made equivalent to the requirement for the 
residence  to

[[Page 49822]]

eliminate confusion between the two, which often are the same  destination and 
are usually provided in the oath or declaration. The  reference in Sec. 
1.33(a) to the assignee providing a correspondence  address has been moved 
within Sec. 1.33(a) for clarification. Other  clarifying language including a 
reference to Sec. 1.34(b), use of the  terms ``provided,'' ``furnished'' 
rather than ``notified,'' and  ``application'' rather than ``case,'' while 
``of which the Office''  would be deleted.
    Section 1.33(b) would be removed and the subject matter transferred  to 
new Sec. 1.4(g).
    Section 1.41(a) (and Sec. 1.53) would no longer require that a  patent be 
applied for in the name of the actual inventors for an  application for patent 
to receive a filing date. The requirement for  use of full names would be 
moved to Sec. 1.63(a) for better context.  The requirement for naming of the 
inventor or inventors would be  replaced with only a request that such names 
or an identifying name be  submitted on filing of the application. The use of 
very short  identifiers should be avoided to prevent confusion. Without 
supplying  at least an identifying name that is specific the Office may have 
no  ability or only a delayed ability to match any papers submitted after  
filing of the application and before issuance of an identifying  Application 
number with the application file. Any identifier used that  is not an 
inventor's name must be specific, alphanumeric characters of  reasonable 
length, and must be presented in such a manner that it is  clear to 
application processing personnel what the identifier is and  where it is to be 
found. It is strongly suggested that applications  filed without an executed 
oath or declaration under Sec. 1.63 or 1.175  continue to use an inventor's 
name for identification purposes. Failure  to apprise the Office of the 
application identifier being used will  result in applicants having to 
resubmit papers that could not be  matched with the application and proof of 
the earlier receipt of such  papers where submission was time dependent.
    Paragraph (a) of Sec. 1.41 would also be amended to recite that the  
actual inventor or inventors of an application are set forth in an  executed 
Sec. 1.63 oath or declaration to correspond to the proposed  change in Sec. 
1.53(b)(1)(iii). Hence, the recitation of the  inventorship in an application 
submitted under Sec. 1.53(d) without an  executed oath or declaration for 
purposes of identification may be  changed merely by the later submission of 
an oath or declaration  executed by a different inventive entity without 
recourse to a petition  under Sec. 1.48.
    Section 1.47 would be amended to provide for publication in the  Official 
Gazette of a notice of filing for all applications submitted  under this 
section rather than only when notice to the nonsigning  inventor(s) is 
returned to the Office undelivered or when the address  of the nonsigning 
inventor(s) is unknown. The information to be  published includes: The 
Application number, filing date, invention  title and inventors identifying 
the missing inventor.
    Section 1.47 would also be amended for clarification purposes. A  
reference to an ``omitted inventor'' in Sec. 1.47(a) would be replaced  with 
``nonsigning inventor.'' Statements in Secs. 1.47 (a) and (b) that  a patent 
will be granted upon a satisfactory showing to the  Commissioner would be 
deleted as unnecessary. Section 1.47(b) is  proposed to be amended to clarify 
that it applies only where none of  the inventors are willing or can be found 
to sign the Declaration by  substitution of ``an inventor'' by ``all the 
inventors.'' The use of  ``must state'' in regard to the last known address 
would be deleted as  redundant in view of the explicit requirement for such 
address in the  rule. The sentence in Sec. 1.47(b) referring to the filing of 
the  assignment, written agreement to assign or other evidence of  proprietary 
interest would be deleted as redundant in view of the  requirement appearing 
earlier in Sec. 1.47(b) calling for ``proof of  pertinent facts.''
    Section 1.48 for inventorship corrections in an application  (Sec. 1.324, 
for inventorship corrections in a patent, and Sec. 1.175,  for reissue 
declarations) would no longer require factual showings to  establish a lack of 
deceptive intent. All that will be needed is a  statement to that effect.
    Section 1.48 would be amended in its title to clarify that the  section is 
related to patent applications as opposed to patents.     Section 1.48(a) 
would not require correction of the inventorship if  the inventorship or other 
identification under Sec. 1.41 was set forth  in error on filing of the 
application. Section 1.48(a) is proposed to  be amended to apply only to 
correction of inventor or inventors from  that named in an originally filed 
executed oath or declaration and not  to the naming of inventors or others for 
identification purposes as is  currently proposed under Sec. 1.41. The 
statement to be submitted would  be required only from the person named in 
error as an inventor or from  the person who through error was not named as an 
inventor rather than  from all the original named inventors so as to comply 
with 35 U.S.C.  116. The present requirement that any amendment of the 
inventorship  under Sec. 1.48(a) be ``diligently'' made would be removed. The 
 applicability of a rejection under 35 U.S.C. 102(f)/(g) against an  
application with the wrong inventorship set forth therein and any  patent that 
would issue thereon is deemed to provide sufficient  motivation for prompt 
correction of the inventorship without the need  for a separate requirement 
for diligence.
    A clarifying reference to Sec. 1.634 would be added in Sec. 1.48(a)  for 
instances when inventorship correction is necessary during an  interference 
and has been moved from Sec. 1.48(a)(4) for improved  contextual purposes.
    The Sec. 1.48(a)(1) statement would require a statement only as to  the 
lack of deceptive intent rather than a statement of facts to  establish how 
the inventorship error was discovered and how it  occurred, since the latter 
is proposed to be deleted. Additionally, the  persons from whom a statement is 
required now includes any person not  named in error as an inventor but limits 
statements from the original  named inventors to only those persons named in 
error as inventors  rather than all persons originally named as inventors 
including those  correctly named. The paragraph would be amended to remove the 
 requirement that the statement be verified in accordance with the  proposed 
change to Sec. 1.4(d)(2).
    Section 1.48(a)(2) would be amended for clarification purposes to  
indicate the availability of Secs. 1.42, 1.43 or 1.47 in meeting the  
requirement for an executed oath or declaration under Sec. 1.63 from  each 
actual inventor. Section 1.47 would only be applicable to the  person to be 
added as an inventor (inventors named in an application  transmittal letter 
can be deleted without petition). For those persons  already having submitted 
an executed oath or declaration under  Sec. 1.63, a petition under Sec. 1.183, 
requesting waiver of  reexecution of an oath or declaration, may be an 
appropriate remedy.  The requirement for an oath or declaration is maintained 
in  Sec. 1.48(a) notwithstanding its replacement in Sec. 1.324 for issued  
patents by a statement of agreement or lack of disagreement with the  
requested change in view of the need to satisfy the duty of disclosure  
requirement in a pending application that is set forth in a Sec. 1.63  oath or 
declaration.
    Section 1.48(a)(4) would be amended to include a citation to  Sec. 3.73(b) 
to clarify the requirements for submitting a written  consent of assignee, 
which is subject to the requirement under  Sec. 3.73(b), and to delete the 
reference to an application involved in  an interference, which is being moved 
to

[[Page 49823]]

Sec. 1.48(a). Section 1.48(a)(4) would also be amended to clarify that  the 
assignee required to submit its written consent is only the  existing assignee 
of the original named inventors at the time the  petition is filed and not any 
party that would become an assignee based  on the grant of the inventorship 
correction.
    Section 1.48(b) would also be amended to remove the requirement  that a 
petition thereunder be diligently filed. The applicability of a  rejection 
under 35 U.S.C. 102(f)/(g) against an application with the  wrong inventorship 
set forth therein and any patent that would issue  thereon is deemed to 
provide sufficient motivation for prompt  correction of the inventorship 
without the need for a separate  requirement for diligence.
    Section 1.48(b) would have a clarifying reference to Sec. 1.634  added for 
instances when inventorship correction is necessary during an  interference.
    Section 1.48(c) would be amended so that a petition thereunder no  longer 
need meet the current requirements of Sec. 1.48(a), which are  also proposed 
to be changed. A statement from each inventor being added  that the 
inventorship amendment is necessitated by amendment of the  claims and that 
the error occurred without deceptive intent would be  required under Sec. 
1.48(c)(1) rather than the previous requirement of  a statement from each 
original named inventor. The previous  requirements under Sec. 1.48(a) for an 
oath or declaration, the written  consent of an assignee and the written 
consent of any assignee are  retained, but are now separately set forth in 
Secs. 1.48(c)(2) through  (c)(4). The particular circumstances of a petition 
under this  paragraph, adding an inventor due to an amendment of the claims 
that  incorporates material attributable to the inventor to be added, is seen 
 to be indicative of a lack of deceptive intent in the original naming  of 
inventors. Accordingly, all that must be averred to is that an  amendment of 
the claims has necessitated correction of the inventorship  and that the 
inventorship error existing in view of the claim amendment  occurred without 
deceptive intent. The current requirement for  diligence in filing the 
petition based on an amendment to the claims  would not be retained as 
applicants have the right, prior to final  rejection or allowance, to 
determine when particular subject matter is  to be claimed. Applicants should 
note that any petition under Sec. 1.48  submitted after allowance is subject 
to the requirements of Sec. 1.312,  and a petition submitted after final 
rejection is not entered as a  matter of right. The statement of facts must be 
a verified statement if  made by a person not registered to practice before 
the Patent and  Trademark Office.
    Section 1.48(c)(2) would clarify the availability of Secs. 1.42,  1.43 and 
1.47 in meeting the requirement for an executed oath or  declaration under 
Sec. 1.63. Section 1.47 would only be applicable to  the person to be added as 
an inventor. For those persons already having  an executed oath or declaration 
under Sec. 1.63 a petition under  Sec. 1.183, requesting waiver of reexecution 
of an oath or declaration,  may be an appropriate remedy.
    Section 1.48(c)(4) would clarify that the assignee required to  submit its 
written consent is only the existing assignee of the  original named inventors 
at the time the petition is filed and not any  party that would become an 
assignee based on the grant of the  inventorship correction. A citation to 
Sec. 3.73(b) would be presented.     Section 1.48(d) would be amended by 
addition of ``their part'' to  replace ``the part of the actual inventor or 
inventors'' and of  ``omitted'' to replace ``actual'' to require statements 
from the  inventors to be added rather than from all the actual inventors so 
as  to comply with 35 U.S.C 116. Section 1.48(d)(1) would also be clarified  
to identify the error to be addressed is the inventorship error. It is  not 
expected that the party filing a provisional application will  normally need 
to correct an error in inventorship under this paragraph  by adding an 
inventor therein except when necessary under Sec. 1.78 to  establish an 
overlap of inventorship with a continuing application.  Automatic correction 
of the inventorship is not possible as is the case  for nonprovisional 
applications when an executed oath or declaration  under Sec. 1.63 with the 
correct inventorship is later filed; since an  oath or declaration is not to 
be submitted in provisional applications,  Sec. 1.51(a)(2).
    Section 1.48(d)(1) would be amended to remove the requirement that  the 
statement be verified in accordance with the proposed change to  Sec. 
1.4(d)(2).
    Section 1.48(e)(1) would be amended to replace a requirement in  
provisional applications that the required statement be one ``of  facts'' 
directed towards ``establishing that the error'' being  corrected ``occurred 
without deceptive intention,'' thereby requiring  only a statement that the 
inventorship error occurred without deceptive  intent. Paragraph (e)(1) would 
also be amended to remove the  requirement that the statement be verified in 
accordance with the  proposed change to Sec. 1.4(d)(2). It is not expected 
that the party  filing a provisional application would need to file a petition 
under  this paragraph since the application will go abandoned by operation of 
 law, Sec. 1.53(e)(2), and the need to delete an inventor will not  affect the 
overlap of inventorship needed to claim priority under  Sec. 1.78(a)(3) for 
any continuing application.
    Section 1.48(e)(3) would be amended to clarify that the assignee  required 
to submit its written consent is only the prior existing  assignee before 
correction of the inventorship is granted and not any  party that would become 
an assignee based on the grant of the  inventorship correction and a reference 
to Sec. 3.73(b) would be added.     Section 1.48(f) would be added to provide 
that the later filing of  an executed oath or declaration would act to correct 
the inventorship  without a specific petition for such correction and would be 
used to  issue a filing receipt and process the application notwithstanding 
any  inventorship or other identification name earlier presented.     Section 
1.48(g) would be added to specifically recognize that the  Office may require 
such other information as may be deemed appropriate  under the particular 
circumstances surrounding a correction of the  inventorship.
    Section 1.51(c) covering the use of an authorization to charge a  deposit 
account is proposed to be removed as unnecessary in view of  Sec. 1.25(b).
    Section 1.52 paragraphs (a) and (d) would be amended to remove the  
requirement that the translation be verified in accordance with the  proposed 
change to Sec. 1.4(d)(2). Paragraphs (a) and (d) of this  section would also 
be amended to clarify the need for a statement that  the translation being 
offered is an accurate translation, as is also  proposed in Sec. 1.69 
paragraph (b).
    Section 1.53(b)(1), as proposed, would remove: (1) The phrase ``in  the 
name of the actual inventor or inventors as required by  Sec. 1.41,'' and (2) 
the sentence ``[i]f all the names of the actual  inventor or inventors are not 
supplied when the specification and any  required drawing are filed, the 
application will not be given a filing  date earlier than the date upon which 
the names are supplied unless a  petition with the fee set forth in Sec. 
1.17(i) is filed which sets  forth the reasons the delay in supplying the 
names should be excused.''  These proposed changes are consistent with the 
proposed change to  Sec. 1.41. Section 1.53(b)(1) (and Sec. 1.41(a)) would no 
longer  require that a patent be applied for in the name of the actual  
inventors for an application for patent to receive a filing date.     Section 
1.53(b)(1), as proposed, would change (1) ``[a]  continuation or

[[Page 49824]]

divisional application (filed under the conditions specified in 35  U.S.C. 
120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this  section, Sec. 
1.60 or Sec. 1.62'' and (2) ``[a] continuation-in-part  application may also 
be filed under this section or Sec. 1.62'' to (1)  [a] continuation or 
divisional application (filed under the conditions  specified in 35 U.S.C. 
120, 121 or 365(c) and Sec. 1.78(a)) may be  filed under this paragraph or 
paragraph (b)(3) of this section'' and  (2) ``[a] continuation-in-part 
application must be filed under this  paragraph, respectively. Upon the 
deletion of Secs. 1.60 and 1.62, any  continuation-in-part applications must 
be filed under Sec. 1.53(b)(1),  but a continuation or divisional application 
may be filed under  Secs. 1.53(b)(1) or (b)(3).
    Section 1.53(b)(1), as proposed, would also add a new paragraph  (b)(1)(i) 
expressly providing that any continuation or divisional  application may be 
filed by all or by less than all of the inventors  named in a prior 
application, and that a newly executed oath or  declaration is not required 
pursuant to Secs. 1.51(a)(1)(ii) and  1.53(d) in a continuation or divisional 
application filed by all or by  less than all of the inventors named in a 
prior application, provided  that one of the following is submitted: (1) A 
copy of the executed oath  or declaration filed to complete (Sec. 1.51(a)(1)) 
the most immediate  prior national application for which priority is claimed 
under 35  U.S.C. 120, 121 or 365(c), or (2) a copy of an unexecuted oath or  
declaration, and a statement that the copy is a true copy of the oath  or 
declaration that was subsequently executed and filed to complete  (Sec. 
1.51(a)(1)) the most immediate prior national application for  which priority 
is claimed under 35 U.S.C. 120, 121 or 365(c). The  phrase ``most immediate 
prior national application'' is proposed rather  than ``prior application'' to 
accommodate those situations in which the  prior application was filed under 
current Secs. 1.60 or 1.62, or where  the prior application was itself a 
continuation or divisional  application and filed with a copy of the executed 
oath or declaration  from a prior application pursuant to Sec. 1.53(b)(1)(i). 
As is  currently the situation under Secs. 1.60 and 1.62, the applicant's duty 
 of candor and good faith including compliance with the duty of  disclosure 
requirements of Sec. 1.56 is continuous and applies to the  continuation, 
divisional or continued prosecution (Sec. 1.53(b)(3))  application, 
notwithstanding the lack of a newly executed oath or  declaration. Therefore, 
applicants should be informed of the intent to  file a continuation, 
divisional or continued prosecution application  with a copy of the proposed 
claimed supplied. New Sec. 1.53(b)(1)(i),  as proposed, would also reference 
Sec. 1.53(d) for the filing of a  continuation or divisional application 
without the concomitant  submission of a newly executed oath or declaration or 
a copy of the  oath or declaration for the most immediate prior national 
application  for which priority is claimed under 35 U.S.C. 120, 121 or 365(c). 
    Section 1.53(b)(1), as proposed, would also add a new paragraph  
(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath  or 
declaration for the most immediate prior national application for  which 
priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be  accompanied by 
a statement from applicant, counsel for applicant or  other authorized party 
requesting the deletion of the names of the  person or persons who are not 
inventors in the continuation or  divisional application. Where the 
continuation or divisional  application and copy of the oath or declaration 
from the prior  application is filed without a statement from an authorized 
party  requesting deletion of the names of any person or persons named in the 
 prior application, the continuation or divisional application will be  
treated as naming as inventors the person or persons named in the prior  
application, taking into account any petition for correction of  inventorship 
pursuant to Sec. 1.48 in the prior application that has  been granted prior to 
the filing of the continuation or divisional  application. For situations 
where an inventor or inventors are to be  added in a continuation or 
divisional application see paragraph (ii)  under this section.
    The statement requesting the deletion of the names of the person or  
persons who are not inventors in the continuation or divisional  application 
must be signed by person(s) authorized pursuant to  Sec. 1.33(a) to sign an 
amendment in the continuation or divisional  application. That is, such a 
statement must be signed by: (1) All of  the inventors in the continuation or 
divisional application (see MPEP  714.01(a)), (2) the assignee of record of 
the entire interest in the  continuation or divisional application in 
compliance with Sec. 3.73(b)  (see MPEP 324), (3) an attorney or agent of 
record, or (4) a registered  attorney or agent acting in a representative 
capacity pursuant to  Sec. 1.34(a).
    Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B)  
providing that where the power of attorney or correspondence address  was 
changed during the prosecution of the prior application, the change  in power 
of attorney or correspondence address must be identified in  the continuation 
or divisional application.
    Section 1.53(b)(1), as proposed, would add a new paragraph (ii)  providing 
that a newly executed oath or declaration must be filed in a  continuation or 
divisional application naming an inventor not named in  the prior application. 
For situations where an inventor or inventors  are to be added in a 
continuation or divisional application the Office  will not require a petition 
pursuant to Sec. 1.48, but will require  only the newly executed oath or 
declaration naming the correct  inventorship in the continuation or divisional 
application under  Sec. 1.53. For deletion of inventors in a continuation or 
divisional  application see Sec. 1.53(b)(1)(i) and (b)(3). New Sec. 
1.53(b)(1)(ii),  as proposed, would also provide that a newly executed oath or 
 declaration must be filed in a continuation-in-part application, which  
application may name all, more, or less than all of the inventors named  in 
the prior application.
    Section 1.53(b)(1)(iii), as proposed, would clarify that the  inventorship 
is not set forth in an application until an executed oath  or declaration is 
submitted therein in accordance with the proposed  change to Sec. 1.41(a). 
Where the inventorship was voluntarily set  forth on filing an application 
without an executed oath or declaration  pursuant to Sec. 1.53(d) for purposes 
of identification, the actual  inventorship of the application will be 
controlled by the later  submission of an executed oath or declaration which 
may change what was  originally identified as the inventorship without 
recourse to a  petition under Sec. 1.48 in accordance with the proposed change 
to  Sec. 1.41(a).
    Section 1.53(b)(2), as proposed, would remove the phrase ``in the  name of 
the actual inventor or inventors as required by Sec. 1.41'' and  the sentence 
``[i]f all the names of the actual inventor or inventors  are not supplied 
when the specification and any required drawing are  filed, the provisional 
application will not be given a filing date  earlier than the date upon which 
the names are supplied unless a  petition with the fee set forth in Sec. 
1.17(q) is filed which sets  forth the reasons the delay in supplying the 
names should be excused.''  Section 1.53(b)(2) (and Sec. 1.41(a)) would no 
longer require that a  patent be applied for in the name of the actual 
inventors for an  application for patent to receive a filing date.     Section 
1.53(b)(2)(ii), as proposed, would change the phrase  ``treated as'' to 
``converted to'' for clarity.

[[Page 49825]]

    Section 1.53(b)(3) is proposed to be added to provide for the  filing of a 
continued prosecution application.
    Section 532 of the Uruguay Round Agreement Act (Pub. L. 103-465,  section 
532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide  that the term of 
patent protection begins on the date of patent grant  and ends on the date 20 
years from the filing date of the application.  As any delay in the 
prosecution of the application will reduce the term  of patent protection, 
reducing unnecessary delays in the prosecution of  applications is a mutual 
interest of patent applicants and the Office.     An applicant in a 
nonprovisional application filed on or after June  8, 1995, must file a 
continuing application to obtain further  examination subsequent to a final 
rejection or other final action. The  current continuing practice under Secs. 
1.60 and 1.62 of processing an  application filed thereunder with a new 
application number and filing  date delays the examination of such continuing 
applications. Therefore,  the Office proposes to eliminate this delay by: (1) 
Not assigning a new  application number to an application filed under Sec. 
1.53(b) (3), and  (2) not processing the application filed under Sec. 
1.53(b)(3) with a  filing date of the request for an application under Sec. 
1.53(b)(3).  Rather, a continued prosecution application would retain the  
application number and the filing date of the prior application to  which it 
relates for identification purposes thereby allowing  examination to proceed 
without the delays that would be caused by the  current need to assign to 
applications filed under Secs. 1.60 and 1.62  a new application number and 
filing date as of the date the Rule 60 or  62 application was requested 
(submitted).
    Section 1.53(b)(3), as proposed, would specifically provide that:  (1) In 
a complete nonprovisional application (Sec. 1.51(a)(1)) filed on  or after 
June 8, 1995, a continuation or divisional application that  discloses and 
claims only subject matter disclosed in that prior  complete application and 
names as inventors the same or less than all  the inventors named in that 
prior complete application may be filed  under this paragraph, and (2) the 
filing date of the continued  prosecution application, such as for continuity 
purposes under 35  U.S.C. 120 and Sec. 1.78, is the date on which a request 
for an  application under this paragraph, including identification of the 
prior  application number is filed.
    The specific reference to the prior application required by 35  U.S.C. 120 
and Sec. 1.78(a)(2) will be satisfied by a sentence that the  continued 
prosecution application is a continuation or divisional, as  appropriate, of 
prior application number ##/###,###, filed ##/##/##,  now abandoned, 
notwithstanding that the so identified application  number and filing date are 
also the application number and filing date  assigned to the continued 
prosecution application under this paragraph.  Where the continued prosecution 
application derives from a chain of  Sec. 1.53(b)(3) applications assigned a 
common application number and  filing date, a sentence that the application is 
a continuation or  divisional, as appropriate, of the common application 
number and filing  date will constitute a specific reference (35 U.S.C. 120 
and  Sec. 1.78(a)(2)) to each application assigned that application number  
and filing date. Since Sec. 1.53(b)(3) is proposed to be limited to  
continuations and divisionals, the actual filing date of the request  for an 
application under Sec. 1.53(b)(3) will be relevant only to the  copendency 
requirement of 35 U.S.C. 120 and Sec. 1.78 and patent term  vis-a-vis Pub. L. 
103-465. Nevertheless, Sec. 1.53(b)(3) is proposed to  be limited to a 
continuation or divisional of a complete application  filed on or after June 
8, 1995, so as to avoid any dispute as to  whether the application is subject 
to 20-year patent term as set forth  in Pub. L. 103-465. That is, any 
continuation or divisional of an  application filed prior to June 8, 1995, as 
well as any continuation- in-part, must be filed under Sec. 1.53(b)(1).
    Section 1.53(b)(3)(i)(A), as proposed, would provide that an  application 
under Sec. 1.53(b)(3) (a continued prosecution application)  will use the 
specification, drawings and oath or declaration from the  prior complete 
application and will be assigned its application number  for identification 
purposes.
    Section 1.53(b)(3)(i)(B), as proposed, would provide that the  filing of a 
request for a continued prosecution application is a  request to expressly 
abandon the prior application as of the filing  date granted the application 
under Sec. 1.53(b)(3).
    Section 1.53(b)(3)(i)(C), as proposed, would provide that a  continued 
prosecution application must be filed before the payment of  the issue fee, 
abandonment of, or termination of proceedings on the  prior application with 
the filing date of a request for a continued  prosecution application being 
the date on which a request for a  continued prosecution application including 
identification of the  application number of the prior complete application is 
filed.     Section 1.53(b)(3)(ii) (A) and (B), as proposed, would provide that 
 filing fee for a continued prosecution application is the statutory  basic 
filing fee as set forth in Sec. 1.16 and any additional 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  section and entry of 
any amendments under Sec. 1.116 unentered in the  prior application which 
applicant has requested to be entered in the  new application.
    In instances in which a continued prosecution application is  submitted 
without the basic statutory filing fee or any additional  claims fee due, the 
Office will continue to mail a ``Notice of Missing  Parts'' under Sec. 
1.53(d)(1) and give the applicant a period of time  within which to file the 
fee and to pay the surcharge under  Sec. 1.16(e) to prevent abandonment of the 
application (see  Sec. 1.53(d)(1)). Thus, the filing of a continued 
prosecution  application without the basic statutory filing fee or any 
additional  claims fee due will result in a delay in the initial processing of 
the  application. An applicant, however, may eliminate or limit this delay  by 
either filing the request for a continued prosecution application  with the 
appropriate filing fee or not delaying the submission of the  appropriate 
filing fee until the mailing of or expiration of the period  for response to 
the ``Notice of Missing Parts.''
    Section 1.53(b)(3)(iii), as proposed, would provide that if a  continued 
prosecution application is filed by less than all the  inventors named in the 
prior application, a statement must accompany  the application when filed 
requesting deletion of the names of the  person or persons who are not 
inventors of the invention being claimed  in the continued prosecution 
application. Where an application is filed  under Sec. 1.53(b)(3) without a 
statement requesting deletion of the  names of any person or persons named in 
the prior application, the  application will be treated as naming as inventors 
the person or  persons named in the prior application, taking into account any 
grant  of a petition correcting inventorship in the prior application pursuant 
 to Sec. 1.48. To correct the inventorship in the continued prosecution  
application, the Office will not require a petition pursuant to  Sec. 1.48 as 
the application is to be filed without a newly executed  oath or declaration, 
but will require only a newly executed oath or  declaration naming the correct 
inventorship in the continued 
[[Page 49826]]

prosecution application, which is similar to the requirements for  correction 
of the inventorship in applications filed under  Sec. 1.53(b)(1) without a 
newly executed oath or declaration.     Section 1.53(b)(3)(iv), as proposed, 
would require that any new  change be made in the form of an amendment to the 
prior application,  and would provide that any new specification filed with 
the request for  an application under Sec. 1.53(b)(3) would not be considered 
part of  the original application papers, but would be treated as a substitute 
 specification in accordance with Sec. 1.125. In the event that  legislation 
mandating the 18-month publication of patent applications  (e.g., H.R. 1733) 
is enacted, it will be necessary to amend proposed  Sec. 1.53(b)(3)(iii) to 
require a substitute specification in  compliance with Sec. 1.125 and drawings 
including only those changes to  the prior application during the prosecution 
of the prior application.     Section 1.53(b)(3)(v), as proposed, would 
provide that the filing  of a continued prosecution application will be 
construed to include a  waiver of confidence by the applicant under 35 U.S.C. 
122 to the extent  that any member of the public who is entitled under the 
provisions of  Sec. 1.14 to access to, or information concerning either the 
prior  application or any application filed under the provisions of  Sec. 
1.53(b)(3) may be given similar access to, or similar information  concerning, 
the other application(s) in the file wrapper.
    Section 1.53(b)(3)(vi) (A) through (D), as proposed, would provide  that 
the applicant is urged to furnish in the request for an  application under 
Sec. 1.53(b)(3) the following information relating to  the prior application 
to the best of his or her ability: (A) Title as  originally filed and as last 
amended, (B) name of applicant as  originally filed and as last amended, (C) 
current correspondence  address of applicant, and (D) identification of prior 
foreign  application and any priority claim under 35 U.S.C. 119.
    Section 1.53(b)(3)(vii), as proposed, would provide that envelopes  
containing only requests and fees for filing an application under  Sec. 
1.53(b)(3) should be marked ``Box CPA.''
    Section 1.53(c), as proposed, would replace its current language  with 
three paragraphs treating: (1) Applications found to be improper  or 
incomplete, (2) any requests for review of a notification that an  application 
has been found to be improper or incomplete, and (3)  termination of 
proceedings in an application for failure to timely  correct a filing error or 
seek review of a notification that an  application has been found to be 
improper or incomplete.
    Section 1.53(c)(1), as proposed, would specifically provide that  ``[i]f 
any application filed under paragraph (b) of this section is  found to be 
incomplete or improper, applicant will be so notified and  given a time period 
within which to correct the filing error.''     Section 1.53(c)(2), as 
proposed, would specifically provide that  ``[a]ny request for review of a 
notification pursuant to paragraph  (c)(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,'' 
``[a]ny petition under  this paragraph must be accompanied by the fee set 
forth in Sec. 1.17(i)  in an application filed under paragraphs (b)(1) or 
(b)(3) of this  section, and the fee set forth in Sec. 1.17(q) in an 
application filed  under paragraph (b)(2) of this section,'' and ``[i]n the 
absence of a  timely (Sec. 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 (c)(1) of this section will be the date the  
filing error is corrected.''
    Section 1.53(c)(3), as proposed, would specifically provide that  ``[i]f 
an applicant is notified of a filing error pursuant to paragraph  (c)(1) of 
this section, but fails to correct the filing error within  the given time 
period or otherwise timely (Sec. 1.181(f)) take action  pursuant to paragraph 
(c)(2) of this section, proceedings in the  application will be considered 
terminated'' and ``[w]here proceedings  in an application are terminated 
pursuant to this paragraph, the  application may be returned or otherwise 
disposed of, and any filing  fees, less the handling fee set forth in Sec. 
1.21(n), will be  refunded.'' Section 1.53(c)(3), as proposed would not 
provide that  proceedings in the application will be considered terminated for 
 failure to timely respond to a notification that the original  application 
papers lack a portion of the specification or drawing(s).  Thus, the failure 
to timely seek review of a notification that the  original application papers 
lack a portion of the specification or  drawing(s) will not result in 
termination of proceedings in (or  abandonment of) the application, but will 
simply result in such portion  of the specification or drawing(s) not being 
considered part of the  original disclosure of the application.
    Section 1.53(d)(1), as proposed, would change ``paragraph (b)(1) of  this 
section'' to ``paragraphs (b)(1) or (b)(3) of this section,'' such  that Sec. 
1.53(d)(1) would be applicable to applications filed under  Secs. 1.53 (b)(1) 
and (b)(3), where Sec. 1.53(d)(2) would be applicable  to applications filed 
under Sec. 1.53(b)(2) (i.e., provisional  applications). While Sec. 1.53(d)(1) 
addresses both the filing fee and  the oath or declaration, the oath or 
declaration of an application  under Sec. 1.53(b)(3) will be the oath or 
declaration of the prior  complete (Sec. 1.51(a)(1)) application. As such, an 
oath or declaration  will not be required under Sec. 1.53(d)(1) for a proper 
application  under Sec. 1.53(b)(3).
    Section 1.53(d)(1), as proposed, would be further amended to add  the 
phrases ``including a continuation, divisional, or continuation-in- part 
application'' and ``pursuant to Secs. 1.63 or 1.175, which may be  a copy of 
the executed oath or declaration filed to complete  (Sec. 1.51(a)(1)) the most 
immediate prior national application for  which priority is claimed under 35 
U.S.C. 120, 121 or 365(c), or a copy  of an unexecuted oath or declaration, 
and a statement that the copy is  a true copy of the oath or declaration that 
was subsequently executed  and filed to complete (Sec. 1.51(a)(1)) the most 
immediate prior  national application for which priority is claimed under 35 
U.S.C. 120,  121 or 365(c), in a continuation or divisional application'' for 
 clarity and consistency with Sec. 1.53(b)(1). A reference to submission  of a 
copy of a Notice to File Missing Parts would be removed.     Section 1.54(b), 
as proposed, would add the phrase ``unless the  application is an application 
filed under Sec. 1.53(b)(3).'' To  minimize application processing delays in 
applications filed under  Sec. 1.53(b)(3), as proposed, such applications will 
not be processed  by the Office of Initial Patent Examination as new 
applications.     Section 1.55 paragraph (a) would be amended to remove the  
requirement that the statement be verified in accordance with the  proposed 
change to Sec. 1.4(d)(2).
    Section 1.59 would be amended: By revising the title to indicate  that 
expungement of information from an application file would come  under this 
section, by revising the existing paragraph and designating  it as paragraph 
(a)(1), and by adding paragraphs (a)(2), (b) and (c).  Paragraph (a)(1) would 
retain the general prohibition on the return of  information submitted in an 
application which has a filing date. The  portion of the paragraph relating to 
the Office furnishing copies of  application papers has been shifted to new 
paragraph (c). Paragraph  (a)(2) would make explicit that information, forming 
part of the  original disclosure, i.e., written

[[Page 49827]]

specification, drawings, claims and any preliminary amendment  specifically 
incorporated into an executed oath or declaration under  Secs. 1.63 and 1.175, 
will not be expunged from the application file.     Paragraph (b) of Sec. 1.59 
would provide an exception to the  general prohibition of paragraph (a) on the 
expungement and return of  information and would allow for such when it is 
established to the  satisfaction of the Commissioner that the requested 
expungement and  return is appropriate.
    Paragraph (b) of Sec. 1.59 is intended to cover the current  practice set 
forth in MPEP 724.05 where the submitted information has  initially been 
identified as trade secret, proprietary, and/or subject  to a protective order 
and where applicant may file a petition for its  expungement and return that 
will be granted upon a determination by the  examiner that the information is 
not material to patentability. Any  such petition should be submitted in 
response to an Office action  closing prosecution so that the examiner can 
make a determination of  materiality based on a closed record. Any petition 
submitted earlier  than close of prosecution may be returned unacted upon. In 
the event  pending legislation for pre-grant publication of applications, 
which  provides public access to the application file, is enacted, then the  
timing of petition submissions under this section will be reconsidered.  A 
result of the proposed amendment to this section would be to have a  petition 
to expunge decided under the instant rule by the examiner who  determines the 
materiality of the information to be expunged rather  than by the Office of 
Petitions under Sec. 1.182, which prior to  rendering a decision on the 
petition consults with the examiner on  materiality of the information at 
issue.
    Paragraph (b) of Sec. 1.59 is also intended to cover information  that was 
unintentionally submitted in an application, provided that:  (i) The Office 
can effect such return prior to the issuance of any  patent on the application 
in issue, (ii) that it is stated that the  information submitted was 
unintentionally submitted and the failure to  obtain its return would cause 
irreparable harm to the party who  submitted the information or to the party 
in interest on whose behalf  the information was submitted, (iii) the 
information has not otherwise  been made public, (iv) there is a commitment on 
the part of the  petitioner to retain such information for the period of any 
patent with  regard to which such information is submitted, and (v) it is  
established to the satisfaction of the Commissioner that the  information to 
be returned is not material information under Sec. 1.56.  Requests to return 
information that have not been clearly identified as  information that may be 
later subject to such request by marking and  placement in a separate sealed 
envelope or container shall be treated  on a case-by-case basis. It should be 
noted that the Office intends to  start electronic scanning of all papers 
filed in an application, and  the practicality of expungement from the 
electronic file created by a  scanning procedure is not as yet determinable. 
Applicants should also  note that unidentified information that is a trade 
secret, proprietary,  or subject to a protective order that is submitted in an 
Information  Disclosure Statement may inadvertently be placed in an Office 
prior art  search file by the examiner due to the lack of such identification 
and  may not be retrievable.
    Paragraph (b) of Sec. 1.59 is also intended to cover the situation  where 
an unintended heading has been placed on papers so that they are  present in 
an incorrect application file. In such situation, a petition  should request 
return of the papers rather than transfer of the papers  to the correct 
application file. The grant of such a petition will be  governed by the 
factors enumerated above in regard to the unintentional  submission of 
information. Where the Office can determine the correct  application file that 
the papers were actually intended for, based on  identifying information in 
the heading of the papers, e.g., Application  number, filing date, title of 
invention and inventor(s) name(s), the  Office will transfer the papers to the 
correct application file for  which they were intended without need of a 
petition.
    Added paragraph (c) of Sec. 1.59 retains the practice that copies  of 
application papers will be furnished by the Office upon request and  payment 
of the cost for supplying such copies.
    Section 1.60 is proposed to be removed and reserved.
    In the notice of proposed rulemaking entitled ``Changes to  Implement 
20-Year Patent Term and Provisional Application'' (20-Year  Term Notice of 
Proposed Rulemaking) published in the Federal Register  at 59 FR 63951 
(December 12, 1994), and in the Patent and Trademark  Office Official Gazette 
at 1170 Off. Gaz. Pat. Office 377 (January 3,  1995), Sec. 1.60 was proposed 
to be removed due to the rule change to  Sec. 1.4(d), which permits the filing 
of a copy of an oath or  declaration. The proposed removal of Sec. 1.60 in the 
20-Year Term  Notice of Proposed Rulemaking, however, was withdrawn in the 
final rule  to permit further study.
    A continuation or divisional application may be filed under 35  U.S.C. 
111(a) using the procedures set forth in Sec. 1.53, by providing  a copy of 
the prior application, including a copy of the oath or  declaration in such 
prior application, as filed. The patent statutes  and rules of practice do not 
require that an oath or declaration  include a recent date of execution, and 
the Examining Corps has been  directed not to object to an oath or declaration 
as lacking either a  recent date of execution or any date of execution. This 
change in  examining practice will appear in the next revision of the MPEP. As 
 discussed supra, the applicant's duty of candor and good faith  including 
compliance with the duty of disclosure requirements of  Sec. 1.56 is 
continuous and applies to the continuing application.     Sections 1.60(b)(4) 
and 1.62(a) currently permit the filing of a  continuation or divisional 
application by all or by less than all of  the inventors named in a prior 
application without a newly executed  oath or declaration. To continue this 
practice, Sec. 1.53 is proposed  to be amended to provide that any 
continuation or divisional  application may be filed by all or by less than 
all of the inventors  named in a prior application, but where a newly executed 
oath or  declaration is not submitted for a continuation or divisional  
application filed by less than all the inventors named in the prior  
application, the copy of the oath or declaration for the most immediate  prior 
national application for which priority is claimed under 35  U.S.C. 120, 121 
or 365(c) must be accompanied by a statement requesting  the deletion of the 
names of the person or persons who are not  inventors in the continuation or 
divisional application. A newly  executed oath or declaration will continue to 
be required in a  continuation or divisional application naming an inventor 
not named in  the prior application, or a continuation-in-part application.   
  Section 1.60 is now unnecessary due to: (1) The rule change to  Sec. 1.4(d), 
(2) the proposed addition of Sec. 1.53(b)(1)(i) to  expressly permit the 
filing of either a newly executed oath or  declaration, or a copy of the 
executed oath or declaration filed to  complete pursuant to Sec. 1.51(a)(1) 
the most immediate prior national  application for which priority is claimed 
under 35 U.S.C. 120, 121 or  365(c), in a continuation or divisional 
application, (3) the proposed  addition of Sec. 1.53(b)(1)(i) to permit the 
filing of a continuation  or divisional application by all or by less than all 
the inventors 
[[Page 49828]]

named in a prior application, using a copy of the executed oath or  
declaration filed to complete the prior application, and (4) the  proposed 
addition of Sec. 1.53(b)(3) to permit the filing of a  continued prosecution 
application.
    A new application containing a copy of an oath or declaration under  Sec. 
1.63 referring to an attached specification is indistinguishable  from a 
continuation or divisional application containing a copy of an  oath or 
declaration from a prior application submitted pursuant to  Sec. 
1.53(b)(1)(i), as proposed. Unless an application is submitted  with a 
statement that the application is a continuation or divisional  application 
(Sec. 1.78(a)(2)), the Office will process such a new  application without 
requiring a new oath or declaration. Applicants are  advised to clearly 
designate any continuation or divisional application  as such to avoid the 
issuance of a filing receipt that does not  indicate that the application is a 
continuation or division.     Section 1.62 is proposed to be removed and 
reserved.
    In the proposed rulemaking entitled ``Changes to Implement 18-Month  
Publication of Patent Applications'' (18-Month Publication Notice of  Proposed 
Rulemaking) published in the Federal Register at 60 FR 42352  (August 15, 
1995), and in the Patent and Trademark Office Official  Gazette at 1177 Off. 
Gaz. Pat. Office 61 (August 15, 1995),  Sec. 1.62(e) was proposed to be 
amended to require a substitute  specification in compliance with Sec. 1.125 
and drawings where the  application filed under Sec. 1.62 is a 
continuation-in-part  application. The 18-Month Publication Notice of Proposed 
Rulemaking  proposed to digital image and/or optical character recognition 
(OCR)  scan application material into an electronic data base, which data base 
 would be used to publish the application (e.g., for producing copies of  the 
technical contents of the application-as-filed). The 18-Month  Publication 
Notice of Proposed Rulemaking indicated that as  applications filed prior to 
the implementation of 18-month publication  will not have been image- or 
OCR-scanned into the electronic data base,  the technical contents of an 
application filed under Sec. 1.62 in which  the prior application was itself 
filed prior to the implementation of  18-month publication will not be 
contained in the electronic data base.     The solution proposed in the 
18-Month Publication Notice of  Proposed Rulemaking was for the Office to 
obtain the microfiche copy of  the prior application for applications under 
Sec. 1.62 which do not add  additional disclosure (i.e., continuation or 
divisional applications)  and image or OCR scan it into the electronic data 
base, and to amend  Sec. 1.62 to provide that, where the application adds 
additional  disclosure (i.e., is a continuation-in-part application), a 
substitute  specification in compliance with Sec. 1.125 and drawings will be  
required.
    The proposal in the 18-Month Publication Notice of Proposed  Rulemaking to 
obtain the microfiche copy of prior continuation or  divisional applications 
is now considered unfeasible. A number of  applications filed under Sec. 1.62 
derive from a chain of applications  filed under Sec. 1.62. The information 
pertaining to such an  application's chain of prior applications contained 
within the Patent  Application Location and Monitoring (PALM) system is not 
sufficiently  comprehensive to readily and reliably indicate the prior 
application  that contains a specification and drawings, and is not 
sufficiently  reliable to avoid the occasional inclusion of an unrelated 
application  in the chain of prior applications. This could result in the  
inadvertent publication of the specification and drawings of the wrong  
application.
    In addition, the microfiche copy of the prior application may be a  
microfiche of sheets of specification and/or drawings on 8\1/2\ by 14- inch 
paper, which paper size is not technically useable by the  equipment which 
will be employed for pre-grant publication of patent  applications. Attempts 
to reduce such sheets of specification and/or  drawings to a paper size 
processible by pre-grant publication equipment  results in electronic files 
which contain illegible text and figures.  Moreover, the microfilming process 
under pre-grant publication differs  from the previous microfilming process, 
and as such, the microfiche  copy of such a prior application is sufficiently 
dissimilar from the  microfiche copy of an application under pre-grant 
publication that it  causes accurate technical date capture difficulties.
    In the event that legislation mandating the 18-month publication of  
patent application is enacted, it will be necessary to require a  substitute 
specification in compliance with Sec. 1.125 and drawings  including any 
changes to the prior application during the prosecution  of the prior 
application or pursuant to Sec. 1.62(e) to continue  Sec. 1.62 practice.
    Section 1.62 is now unnecessary due to: (1) The rule change to  Sec. 
1.4(d), (2) the proposed change to Sec. 1.53(b)(1) to expressly  permit the 
filing of either a newly executed oath or declaration, or a  copy of the 
executed oath or declaration filed to complete pursuant to  Sec. 1.51(a)(1) 
the most immediate prior national application for which  priority is claimed 
under 35 U.S.C. 120, 121 or 365(c), in a  continuation or divisional 
application, (3) the proposed change to  Sec. 1.53(b)(1) to permit the filing 
of a continuation or divisional  application by all or by less than all the 
inventors named in a prior  application, using a copy of the executed oath or 
declaration filed to  complete the prior application, and (4) the proposed 
addition of  Sec. 1.53(b)(3) to permit the filing of a continued prosecution  
application.
    The Office currently receives a number of petitions requesting that  an 
application filed under Secs. 1.60 and 1.62 be accepted even though  at the 
time of filing of the application, the application did not  comply with all 
the requirements of Secs. 1.60 or 1.62 due to  inadvertent error on the part 
of the applicant. The examination of  these improper applications under Secs. 
1.60 and 1.62 is delayed until  a petition to accept the application is filed 
and granted. The large  majority of the applications filed under Sec. 1.60, 
however, complied  at the time of filing with the requirements of Sec. 
1.53(b)(1), and the  copy of the oath or declaration from the prior 
application is now  acceptable as the oath or declaration for the application, 
regardless  of whether the application is an application under Sec. 1.53 or  
Sec. 1.60. The removal of Sec. 1.60 and simplification of Sec. 1.62  will 
reduce the number of these types of petitions and will simplify  the 
procedures for filing an application for both the Office and patent  
practitioners.
    It is anticipated that, subsequent to the removal of Secs. 1.60 and  1.62, 
applications purporting to be applications filed under Secs. 1.60  or 1.62 
will be filed until the deletion of Secs. 1.60 and 1.62 become  well known 
among patent practitioners. Applications purporting to be an  application 
filed under Sec. 1.60 will simply be treated as a new  application filed under 
Sec. 1.53 (i.e., the reference to Sec. 1.60  will simply be ignored).
    Applications purporting to be an application filed under Sec. 1.62  will 
be treated as continued prosecution applications under  Sec. 1.53(b)(3), and 
those applications that do not meet the  requirements of Sec. 1.53(b)(3) 
(e.g., continuation-in-part  applications or continuations or divisional of 
applications filed  before June 8, 1995) will be treated as improper continued 
prosecution  applications under Sec. 1.53(b)(3). Such improper applications 
under  Sec. 1.53(b)(3) may be corrected by

[[Page 49829]]

way of petition under Sec. 1.53(b)(c) (and $130 fee pursuant to  Sec. 
1.17(i)).
    Such a Sec. 1.53(c) petition in a continuation or divisional  application 
will be granted on the condition that the applicant file:  (1) The $130 
petition fee, and (2) a true copy of the complete  application designated as 
the prior application in the purported  Sec. 1.62 application papers as filed, 
or, if the prior application was  an application filed under Sec. 1.62, a true 
copy of its most immediate  parent application which contained a specification 
and drawings as  filed. Such a Sec. 1.53(c) petition in a continuation-in-part 
 application will be granted on condition that the applicant file: (1)  The 
$130 petition fee, and (2) a true copy of the complete application  designated 
as the prior application in the purported Sec. 1.62  application papers as 
filed, or, if the prior application was an  application filed under Sec. 1.62, 
a true copy of its most immediate  parent application which contained a 
specification and drawings as  filed, and any amendments submitted during the 
prosecution of the prior  application.
    Section 1.63(a)(3) is proposed to be amended by requiring the post  office 
address to appear in the oath or declaration and having the  requirement from 
Sec. 1.41(a) for the full names of the inventors  placed therein.
    Section 1.69, paragraph (b), would be amended to remove the  requirement 
that the translation be verified in accordance with the  proposed change to 
Sec. 1.4(d)(2). Paragraph (b) of this section is  also being amended to 
clarify the need for a statement that the  translation being offered is an 
accurate translation, as is proposed  for Sec. 1.52, paragraph (a) and (d).
    Section 1.78(a)(1)(ii), as proposed, would remove the references to  Secs. 
1.60 and 62 in view of the proposed deletion of Secs. 1.60 and  62.
    Section 1.84, paragraph (b), is proposed to be amended by removing  
references to the filing of black and white photographs in design  
applications as unnecessary in view of the reference in Sec. 1.152 to  Sec. 
1.84(b).
    Section 1.91 is proposed to be amended for clarification purposes  by 
additionally reciting ``Exhibits'' as well as models. The section is  proposed 
to be amended to state that 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. This language is moved  from Sec. 1.92.
    Section 1.92 is proposed to be removed and reserved and the  language, as 
stated above, transferred to Sec. 1.91 for improved  contextual purposes.
    Section 1.97 (c) through (e) are proposed to be amended by  replacement of 
``certification'' by ``statement,'' see comments  relating to Sec. 1.4(d), and 
by clarifying the current use of  ``statement'' by the terms ``information 
disclosure.'' Section  1.97(e)(2) is further amended to replace ``or'' by 
``and'' to require  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 that no item of information  
contained in the information disclosure statement to the knowledge of  the 
person signing the statement, after making reasonable inquiry, was  known to 
any individual designated in Sec. 1.56(c) more than three  months prior to the 
filing of the information disclosure statement. The  use of ``and'' rather 
than ``or'' is in keeping with the intent of the  rule as expressed in the 
MPEP 609, page 600-91, that the conjunction be  conjunctive rather than 
disjunctive. The mere absence of an item of  information from a foreign patent 
office communication was clearly not  intended to represent an opportunity to 
delay the submission of the  item when known more than three months prior to 
the filing of an  information disclosure statement to an individual having a 
duty of  disclosure under Sec. 1.56.
    Section 1.101 is proposed to be removed and reserved as relating to  
internal Office instructions.
    Section 1.102, paragraph (a), would be amended to remove the  requirement 
that the showing be verified in accordance with the  proposed change to Sec. 
1.4(d)(2).
    Section 1.103, paragraph (a), would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.104 is proposed to be removed and reserved as relating to  
internal Office instructions (the material of paragraph (c) would be  present 
in the MPEP).
    Section 1.105 is proposed to be removed and reserved as relating to  
internal Office instructions.
    Section 1.108 is proposed to be removed and reserved as relating to  
internal Office instructions.
    Section 1.111(b) is proposed to be amended to explicitly recognize  that a 
reply must be reduced to a writing which must point out the  specific 
distinctions believed to render the claims, including any  newly presented 
claims, patentable. It is noted that an examiner's  amendment reducing a 
telephone interview to writing would comply with  Sec. 1.2.
    In Sec. 1.112 it is proposed to remove as being unnecessary the  statement 
that ``any amendments after a second Office action must  ordinarily be 
restricted to the rejection, objections or requirements  made in the office 
action'' to reflect actual practice wherein an  unrestricted right of entry 
exists prior to a final rejection and that  an application or patent under 
reexamination be considered repeatedly  unless a final action is rendered. It 
is proposed to amend the section  for clarification purposes by addition of a 
reference to 
reconsideration ``before final action.''
    Section 1.113(a), as proposed, would add ``by the examiner'' after  
``examination or consideration,'' change ``objections to form'' to  
``objections as to form'' for clarity, and would replace ``response''  with 
``reply'' in accordance with the proposed change to Sec. 1.111.     Section 
1.113(b), as proposed, would change ``clearly stating the  reasons therefor'' 
to ``clearly stating the reasons in support  thereof'' for clarity.
    A new Sec. 1.113(c) would be added to provide that the first action  in an 
application will not be made final. See comments to Secs. 1.116  and 1.191.
    Section 1.115 is proposed to be replaced by new Sec. 1.115 that  would 
contain material to be deleted from Secs. 1.117 through 1.119,  1.123 and 
1.124. No change in substance is contemplated with the  material of deleted 
sections being rearranged and edited for clarity  and contextual purposes in 
the new section. The reference to  ``application'' is intended to include 
reissue applications.     Section 1.116(a), as proposed, would limit 
amendments after a final  rejection or other final action (Sec. 1.113) to 
those amendments  cancelling claims or complying with any requirement of form 
set forth  in a previous Office action, and would replace the phrase ``any  
proceedings relative thereto'' with ``any related proceedings'' for  clarity.
    Section 1.116(b), as proposed, would provide that any amendment not  in 
compliance with Sec. 1.116(a) must be submitted with a request for  an 
application under Sec. 1.53(b)(3) to ensure consideration of the  amendment.
    Under Sec. 1.116, as proposed, amendments after final rejection or  other 
final action would be limited to cancelling claims or complying  with any 
requirement of form expressly set forth in a previous Office  action. 
Currently, amendments after final which concern the merits of  an application 
may, upon a showing of good and sufficient reasons why  they are necessary and 
were not earlier presented, be entered and  amendments after final which 
present rejected claims

[[Page 49830]]

in better form for consideration on appeal may be entered. This  procedure 
causes delays in the ultimate issuance of the application as  a patent, since 
applicants will await a ruling on whether such  amendment will be entered 
prior to deciding whether to obtain the entry  of such amendment through the 
filing of a continuing application. In  addition, the expedited handling of 
numerous amendments after final,  and the expedited consideration of whether 
there is an adequate showing  of good and sufficient reasons why an amendment 
after final concerning  the merits of an application is necessary and not 
earlier presented, or  whether an amendment after final presents rejected 
claims in better  form for consideration on appeal, places a significant 
burden on Office  resources.
    Section 1.113(c), as proposed, would eliminate first action final  
practice, and, as such, would eliminate the necessity to submit an  amendment 
after final simply to avoid a first action final in a  continuing application. 
In view of this safeguard, and the delay and  burden of the current practice 
for the treatment of amendments after  final, Sec. 1.116 is proposed to be 
amended to limit those amendments  that may be presented as a matter of right 
after a final rejection or  other final action. Put simply, the proposed 
elimination of first  action final practice by the Office is the quid pro quo 
for the  proposed strict limitation of after final practice. Persons 
submitting  comments objecting to this proposed limitation of after final 
practice  should frame such comments in the context that the proposed 
elimination  of first action final practice by the Office is coupled to the 
proposed  limitation of after final practice.
    Section 1.116, as proposed, would not affect the authority of an  examiner 
to enter in an application under final an amendment that  places the 
application in condition for allowance, but does not  strictly meet the 
requirements of Sec. 1.116(a). That is, in instances  in which the applicant 
and examiner agree on an amendment that would  place the application in 
condition for allowance, the examiner would  retain the authority to enter the 
amendment, notwithstanding the  requirements of Sec. 1.116(a). Where, however, 
the applicant and the  examiner do not agree on whether an amendment would 
place an  application in condition for allowance, and the amendment does not 
meet  the requirements of Sec. 1.116(a), the applicant could not require the  
examiner to consider the amendment as a matter of right.
    Section 1.117 is proposed to be removed and reserved as the subject  
matter was transferred to proposed Sec. 1.115.
    Section 1.118 is proposed to be removed and reserved and its  subject 
matter transferred to proposed Sec. 1.115.
    Section 1.119 is proposed to be removed and reserved and its  subject 
matter transferred to proposed Sec. 1.115.
    Section 1.121 paragraphs (a) through (f) are proposed to be  replaced with 
paragraphs (a) through (c), which separately treat  amendments in non-reissue 
applications (paragraph (a)), amendments in  reissue applications (paragraph 
(b)) and amendments in reexamination  proceedings (paragraph (c)). Paragraphs 
(a) and (b) each separately  treat amendment of the specification (paragraphs 
(a)(1) and (b)(1)) and  of the claims (paragraphs (a)(2) and (b)(2)). In 
comparing amendment  practice to the specificat'ion for non-reissue and 
reissue  applications: When making an amendment to the specification of a non- 
reissue application a copy of all previous amendments would not be  required, 
whereas for reissue applications a copy of all previous  amendments to the 
patent specification would be required. In comparing  amendment practice to 
the claims for non-reissue and reissue  applications: When making an amendment 
to the claims of a non-reissue  application or when new claims are added, a 
copy of all pending claims,  including original claims that have never been 
amended, would be  required, whereas for reissue applications a copy of only 
claims that  are being amended or added would be required.
    Paragraph (a) of Sec. 1.121 would relate to amendments in non- reissue 
applications and retains a reference to Sec. 1.52. Paragraph  (a)(1) would 
relate to the manner of making amendments in the  specification other than in 
the claims. Paragraph (a)(1)(i) would  require the precise point to be 
indicated where an amendment is made.  Paragraph (a)(1)(ii) would allow 
amendments that are deletions only to  be done by a direction to cancel rather 
than presenting the  sentence(s), paragraph(s) and/or page(s) with brackets. 
This should be  compared to cancellation of material from the patent 
specification in a  reissue application (paragraph (b)((1)((ii)) or in a 
reexamination  proceedings (Sec. 1.530(d)(1)(ii)--by way of a copy of the 
rewritten  material). Paragraph (a)(1)(iii) would require all other 
amendments,  such as additions or deletions mixed with additions, to be made 
by  submission of a copy of the rewritten sentence(s), paragraph(s) and/or  
page(s) to permit the examiner to more readily recognize the changes  that are 
being made. Current practice does not require the marking of  an amendment to 
the specification in non-reissue applications. A change  in one sentence, 
paragraph or page that results in only format changes  to other pages not 
being amended are not to be submitted. Paragraph  (a)(1)(iv) would identify 
the type of markings required by paragraph  (a)(1)(iii), single underlining 
for added material and single brackets  for material deleted. The marking 
would also be required to be applied  in reference to the material as 
previously rewritten and not as  originally presented if that differed from 
the previous presentation.     Paragraph (a)(2) of Sec. 1.121 would relate to 
the manner of making  amendments in the claims of a non-reissue application. 
Paragraph  (a)(2)(i)(A) would permit cancellation of a claim by a direction to 
do  so or by simply omitting a copy of the claim when a complete copy of  all 
pending claims are presented pursuant to paragraph (a)(2)(ii) of  this 
section. Paragraph (a)(2)(i)(B) would permit amendment of a  previously 
submitted claim, other than mere cancellation by submission  of a copy of the 
claim completely rewritten with markings pursuant to  paragraph (a)(2)(iii) of 
this section rather than continuing to permit  requests that the Office 
hand-enter changes of five or less words,  Sec. 1.121(c)(2). Such rewriting 
would be construed as a direction that  the rewritten claim be a replacement 
for the previously submitted  claim. Paragraph (a)(2)(i)(C) sets forth that a 
new claim may only be  added by the submission of a clean copy of the new 
claim.
    Paragraph (a)(2)(ii) of Sec. 1.121 would require that when a  previously 
submitted claim is amended, or when a new claim is added,  applicant must 
submit a separate copy of all pending claims to include  all newly rewritten 
claims, all newly added claims, all previously  rewritten claims that are 
still pending and any unamended claims that  are still pending. This would 
enable the examiner to more quickly  identify the claims that must be reviewed 
for the next Office action  and would enable the printer to have a current 
version of the allowed  claims for printing should the application be allowed. 
Compare with  amendment of claims in reissue applications wherein only a copy 
of an  amended patent claim or added claim is required, paragraph (b)(2)(i)(A) 
 of this section, but not of previous claims (patent and added claims)  that 
are not currently being amended. Current practice does not require  a complete 
copy of all pending claims but only those claims being  amended or added.

[[Page 49831]]

    Paragraph (a)(2)(iii) of Sec. 1.121 would identify the type of  marking 
required by paragraph (a)(2)(i)(B), single underlining for  added material and 
single brackets for material deleted.
    Paragraph (a)(2)(iv) of Sec. 1.121 would provide that the failure  to 
submit a copy of any previously submitted claim would be construed  as a 
direction to cancel that claim.
    Paragraph (a)(3) of Sec. 1.121 would clarify that amendments to the  
original application drawings for non-reissue applications are not  permitted 
and are to be made by way of a substitute sheet for each  original drawing 
sheet that is to be amended.
    Paragraph (a)(4) of Sec. 1.121 would require that any amendment  presented 
in a substitute specification must be presented under the  provision of this 
section either prior to or concurrent with the  submission of the substitute 
specification.
    Paragraph (b) of Sec. 1.121 would apply to amendments in reissue  
applications. Paragraph (b)(1) of Sec. 1.121 would relate to the manner  of 
making amendments to the specification other than in the claims in  reissue 
applications. Paragraph (b)(1)(i) would require the precise  point to be 
indicated where an amendment is made. Paragraph (b)(1)(ii)  would require that 
all amendments including deletions be made by  submission of a copy of the 
rewritten paragraph(s) with markings. A  change in one sentence, paragraph or 
page that results in only format  changes to other pages not being amended are 
not to be submitted.  Compare to amendments to the specification other than in 
the claims of  non-reissue applications wherein deletions are permitted, 
paragraph  (a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that 
each  amendment to the specification must include all amendments to the  
specification relative to the patent as of the date of the submission.  
Compare to amendments to the specification other than claims in  nonreissue 
applications wherein previous amendments to the  specification are not 
required to accompany the current amendment to  the specification, paragraph 
(a)(1)(iii). Paragraph (b)(1)(iv) would  define the marking set forth in 
paragraph (b)(1)(ii) of section.     Paragraph (b)(2) of Sec. 1.121 would 
relate to the manner of making  amendments to the claims in reissue 
applications. Paragraph  (b)(2)(i)(A) of Sec. 1.121 would require the entire 
text of each patent  claim that is being amended and of each added claim 
rather than  continuing to permit requests that the Office hand-enter changes 
of  five or less words, Sec. 1.121(c)(2), but not of all pending claims,  such 
as patent claims that have not been amended. Compare paragraph  (a)(2)((ii). 
Additionally, provision would be made for the cancellation  of a patent claim 
by a direction to cancel without the need for marking  by brackets. Paragraph 
(b)(2)(i)(B) would require that patent claims  not be renumbered. Paragraph 
(b)(2)(i)(C) would identify the type of  marking required by paragraph 
(b)(2)(i)(A), single underlining for  added material and single brackets for 
material deleted.
    Paragraph (b)(2)(ii) of Sec. 1.121 would require that each  amendment 
submission set forth the status of all patent claims and all  added claims as 
of the date of the submission, as not all claims (non- amended claims) are to 
be presented with each submission, paragraph  (b)(2)(iv). The absence of 
submission of the claim status would result  in an incomplete response, 35 
U.S.C. 135.
    Paragraph (b)(2)(iii) of Sec. 1.121 would require that each claim  
amendment be accompanied by an explanation of the support in the  disclosure 
of the patent for the amendment. The absence of an  explanation would result 
in an incomplete response, 35 U.S.C. 135.     Paragraph (b)(2)(iv) of Sec. 
1.121 would require that each  submission of an amendment to any claim (patent 
claim or added claim)  requires copies of all amendments to the claims as of 
the date of the  submission. A copy of a previous amendment would not meet the 
 requirement of this section in that all amendments must be represented,  as 
only the last amendment will be used for printing.
    Paragraph (b)(2)(v) of Sec. 1.121 would provide that the failure to  
submit a copy of any added claim would be construed as a direction to  cancel 
that claim.
    Paragraph (b)(2)(vi) of Sec. 1.121 would clarify that: (1) No  reissue 
patent would be granted enlarging the scope of the claims  unless applied for 
within two years from the grant of the original  patent (additional broadening 
outside the two-year limit is appropriate  as long as some broadening occurred 
within the two-year period), and  (2) no amendment may introduce new matter or 
be made in an expired  patent.
    Paragraph (b)(3) of Sec. 1.121 clarify that amendments to the  patent 
drawings are not permitted and that any change must be by way of  a new sheet 
of drawings with the amended figures being identified as  ``amended'' and with 
added figures identified as ``new'' for each sheet  that has changed.
    Paragraph (c) of Sec. 1.121 would clarify that amendments in  
reexamination proceedings are to be made in accordance with Sec. 1.530.     
Section 1.121 as applied both to non-reissue and reissue  applications does 
not provide for replacement pages whereby a new page  would be physically 
substituted for a currently existing page. However,  an applicant can direct 
that Page ______ be cancelled and the following  inserted in its place. The 
wide availability of word processing should  enable applicants to more easily 
submit updated material providing  greater accuracy and thereby eliminating 
the need for the Office to  hand-enter amendments. To that end, Sec. 1.125 is 
proposed to be  amended to provide that a substitute specification may be 
submitted at  any point up to payment of the issue fee as a matter of right.  
   The proposed changes to Sec. 1.121 relate in part to the method of  
presenting amendments in reissue and reexamination proceedings, that  would 
more closely parallel each other. The Office seeks guidance on  the usefulness 
of bringing reissue and reexamination proceedings in  closer harmony. 
Currently, both practitioners and Office personnel must  retain a working 
knowledge of these infrequently used but vital avenues  for review of an 
issued patent. The Office has identified the following  areas for possible 
harmonization and would like comments as to the  appropriateness of these 
areas, identification of other suitable areas  for consideration and specific 
means to achieve harmonization in the  identified areas, e.g., whether a 
concept or practice in one area  should be applied to the other area or a new 
practice for both should  be started:

--Procedures for amending claims and the specification, Sec. 1.121 --To 
utilize a reissue certificate (similar to a reexamination  certificate) 
attached to a copy of the original patent as the reissued  patent. This 
procedure would eliminate the need to reprint the entire  reissued patent.
--Whether the special dispatch provisions of re-examination should be  applied 
to reissue applications.

    Section 1.122 is proposed to be removed and reserved as  representing 
internal Office instruction.
    Section 1.123 is proposed to be removed and reserved and its  subject 
matter transferred to proposed Sec. 1.115 for better context.     Section 
1.124 is proposed to be removed and reserved and its  subject matter 
transferred to proposed Sec. 1.115 for better context.     Section 1.125 is 
proposed to be amended by addition of paragraphs  (a)

[[Page 49832]]

through (d). Paragraph (a) would retain the current practice that a  
substitute specification may be required by the examiner and would be  
clarified to note that if the legibility of the application papers  shall 
render it difficult to consider the case, the Office may require  a substitute 
specification.
    Paragraph (b) of Sec. 1.125 would provide for the right of filing a  
substitute specification in an application other than a reissue  application, 
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 does 
not introduce any amendments unless they have  been submitted in accordance 
with the requirements of Sec. 1.121(a)  either prior to or concurrent with the 
submission of the substitute  specification. In view of the proposed continued 
prosecution  application under Sec. 1.53(b)(3) and the need to submit 
sentence,  paragraph, and/or page changes under Sec. 1.121(a), liberalization 
of  the substitute specification requirements is desirable. The requirement  
for a lack of new matter statement being verified would be deleted. See  
comments to Sec. 1.4(d).
    Paragraph (c) of Sec. 1.125 would clarify that a substitute  specification 
is to be submitted without markings as to amended  material.
    Paragraph (d) of Sec. 1.125 would not permit a substitute  specification 
in reissue or reexamination proceedings as markings for  changes from the 
patent are required therein.     Section 1.133, paragraph (b), would be 
amended by replacement of  ``response'' with ``reply'' in accordance with the 
proposed change to  Sec. 1.111.
    Section 1.134 would be amended by replacement of ``response'' with  
``reply'' in accordance with the proposed change to Sec. 1.111.     Section 
1.135, paragraphs (a) and (c), would be amended by  replacement of 
``response'' with ``reply'' in accordance with the  proposed change to Sec. 
1.111. Paragraph (b) is proposed to be amended  to clarify that the admission 
of or refusal to admit any amendment  after final rejection, and not just an 
amendment not responsive to the  last Office action, shall not operate to save 
the application from  abandonment.
    Section 1.135, paragraph (c), is proposed to be amended to provide  that a 
new ``time period'' under Sec. 1.134 may be given if a reply to  a non-final 
Office action is substantially complete but consideration  of some matter or 
compliance with some requirement has been  inadvertently omitted. This would 
replace the current practice whereby  applicant may be given an opportunity to 
supply the omission through  the setting of a ``time limit'' of one month that 
is not currently  extendable. Generally, a new one month shortened statutory 
time period  would be utilized enabling an applicant to petition for 
extensions of  time under Sec. 1.136(a). Where 35 U.S.C. 133 requires a period 
longer  than one month, i.e., actions mailed in the month of February, a  
shortened statutory period of 30 days will be set. The setting of a  time 
period for reply under Sec. 1.134 rather than a time limit would  result in 
the date of abandonment (when no further reply is filed)  being the expiration 
of the new time period rather than, at present,  the date of expiration of the 
period of reply set in the original  Office action for which an incomplete 
reply was filed. Thus, the  proposed amendment to paragraph (c) of Sec. 1.135 
would permit the  refiling of a continuing application as an alternative to 
completing  the reply, whereas the current rule only permits an applicant to  
complete the reply that was held to be incomplete.
    Section 1.135, paragraph (c), is also proposed to be amended to  remove an 
unnecessary reference to consideration of the question of  abandonment and to 
clarify that the reply for which applicant may be  given a new time period to 
reply to must be a ``non-final'' Office  action.
    Section 1.136, paragraph (a)(1), is proposed to be amended to  recite the 
availability of a maximum of five (5) rather than four (4)  months as an 
extension of time when only a one (1) month or 30 day  shortened statutory 
period or a non-statutory period for reply is set.  Paragraph (a)(1) is would 
also be amended by replacement of ``respond''  with ``reply'' in accordance 
with the proposed change to Sec. 1.111.     Section 1.136, paragraph (a)(2), 
would be amended by replacement of  ``respond'' with ``reply'' in accordance 
with the proposed change to  Sec. 1.111 and other clarification changes.
    Section 1.136 is proposed to be amended by addition of paragraph  (a)(3) 
that would now provide for the filing in an application a  general 
authorization to treat any reply requiring a petition for an  extension of 
time for its timely submission as containing a request  therefor for the 
appropriate length of time. The authorization may be  filed at any time prior 
to or with the submission of a reply that would  require an extension of time 
for its timely submission, including  submission with the application papers. 
Currently, the mere presence of  a general authorization, submitted prior to 
or with a reply requiring  an extension of time, to charge all required fees 
does not amount to a  petition for an extension of time for that reply (MPEP 
201.06 and  714.17) and under the proposed amended rule the submission of a 
reply  requiring an extension of time for its timely submission would not be  
treated as an inherent petition for an extension of time absent an  
authorization for all necessary extensions of time. The Office will  continue 
to treat all petitions for an extension of time as requesting  the appropriate 
extension period notwithstanding an inadvertent  reference to a shorter period 
for extension and will liberally  interpret comparable papers as petitions for 
an extension of time.  Applicants are advised to file general authorizations 
for payment of  fees and petitions for extensions of times as separate papers 
rather  than as sentences buried in papers directed to other matters (such as 
 an application transmittal letter). The use of individual papers  directed 
only to an extension of time or to a general authorization for  payment of 
fees would permit the Office to more readily identify the  presence of such 
items and list them individually on the application  file jacket thereby 
providing ready future identification of these  authorizations.
    Clarifying language is proposed for Sec. 1.136(a)(3) to reflect  current 
practice that general authorizations to charge fees are  effective to meet the 
requirement for the extension of time fee for  responses filed concurrent or 
subsequent to the authorization. However,  a general authorization to charge 
additional fees does not represent a  petition for an extension of time, which 
petition must be separately  requested.
    Section 1.137 is proposed to be amended by moving language  presently 
codified, elsewhere to, inter alia, incorporate revival of  abandoned 
applications and lapsed patents for the failure: (1) To  timely reply to an 
Office requirement in a provisional application  (Sec. 1.139), (2) to timely 
pay the issue fee for a design application  (Sec. 1.155 paragraphs (b)-(f)), 
(3) to timely pay the issue fee for a  utility or plant application (Sec. 
1.316 paragraphs (b)-(f)), or to  timely pay the full amount of the issue fee 
(Sec. 1.317 paragraphs (b)- (f)) (lapsed patents). Cites in parentheses 
reference where subject  matter is contained in current rules.
    Section 1.137(a), as proposed, would further move into paragraph  (a)(3) 
the requirement that a petition thereunder be ``promptly filed  after the 
applicant is notified of, or otherwise becomes aware of, the  abandonment.'' 
35 U.S.C. 133 requires that ``it be shown * * * that  such delay was 
unavoidable.'' This

[[Page 49833]]

requirement is regarded as requiring not only a showing that the delay  which 
resulted in the abandonment of the application was unavoidable,  but also a 
showing of unavoidable delay from the time an applicant  becomes aware of the 
abandonment of the application until the filing of  a petition to revive. See 
In re Application of Takao 17 USPQ2d 1155  (Comm'r Pat. 1990). The burden of 
continuing the process of presenting  a grantable petition in a timely manner 
likewise remains with the  applicant until the applicant is informed that the 
petition is granted.  Id. An applicant seeking to revive an ``unavoidably'' 
abandoned  application is expected to cause a petition under Sec. 1.137(a) to 
be  filed without delay (i.e., promptly upon becoming notified, or  otherwise 
becoming aware, of the abandonment of the application). As  such, the 
placement of the requirement that a petition pursuant to  Sec. 1.137(a) be 
filed promptly upon becoming notified, or otherwise  becoming aware, of the 
abandonment of the application is appropriately  located in paragraph (a)(3), 
since Sec. 1.137(a)(3) includes the  requirement for a showing of unavoidable 
delay.
    The requirement that an applicant seeking to revive an application  as 
``unavoidably'' abandoned ``promptly'' file a petition under  Sec. 1.137 is 
regarded as a requirement that a petition pursuant to  Sec. 1.137(a) be filed 
without delay upon the applicant or his or her  representative being notified 
of, or otherwise becoming aware of, the  abandonment. Thus, under the current 
and proposed practice, the failure  to file a petition under Sec. 1.137(a) 
within three months of the date  the applicant or his or her representative is 
notified of, or otherwise  becomes aware of, the abandonment would generally 
be regarded as a  failure to ``promptly'' file a petition pursuant to Sec. 
1.137.     Providing a time period based upon the date of abandonment during  
which a petition pursuant to Sec. 1.137(b) must be filed to be timely,  but 
providing no comparable time period within which a petition  pursuant to Sec. 
1.137(a) must be filed to be timely, results in the  misapplication of Sec. 
1.137 on the part of practitioners, which in  turn results in an inordinate 
administrative burden to the Office. The  Office is proposing to either: (1) 
Eliminate the time period  requirement for filing a petition pursuant to Sec. 
1.137(b), or (2)  provide comparable time period requirements for filing 
either a  petition pursuant to Sec. 1.137(a) and/or Sec. 1.137(b), which time 
 period will be based upon the date of the first Office notification  that the 
application had become abandoned or that the patent had  lapsed. Interested 
persons are advised to comment on each of these  proposals, since, depending 
upon further consideration by the Office  and the comments received in 
response to this notice of proposed  rulemaking, either proposal may be 
adopted in the final rule.     Providing the period of ``within one year of 
the date on which the  application became abandoned'' as the period during 
which a petition  under Sec. 1.137(b) may be timely filed has had the 
undesirable effect  of inducing applicants, or their representatives, to delay 
the filing  of a petition under Sec. 1.137(b) until the end of this one year  
period. This deliberate delay in filing a petition under Sec. 1.137(b),  or 
use of this one year period as an extension of time, is considered  an abuse 
of Sec. 1.137(b). See In re Application of S., 8 USPQ2d 1630,  1632 (Comm'r 
Pats 1988). In addition, Sec. 1.137(b) was recently  amended to require that 
any petition thereunder include a statement  that the delay (i.e., the entire 
delay), and not merely the  abandonment, was unintentional. See Final Rule, 
``Changes in Procedures  for Revival of Patent Applications and Reinstatement 
of Patents,''  published in the Federal Register at 58 FR 44277 (August 20, 
1993) and  in the Patent and Trademark Office Official Gazette at 1154 Off. 
Gaz.  Pat Office 4 (September 14, 1993). As such, any intentional delay in  
filing a petition under Sec. 1.137(b) is prohibited by the current  terms of 
the rule.
    Under current rules, in instances in which an applicant, or his or  her 
representative, intentionally delays the filing of a petition under  Sec. 
1.137(b) until the end of this one year period, but files a  petition under 
Sec. 1.137(b) within this one year period, the petition  is timely under Sec. 
1.137(b)(4), but the statement that ``the delay  was unintentional'' is not 
appropriate.
    In instances in which the filing of a petition under Sec. 1.137(b)  is 
intentionally delayed until the end of this one year period, and the  
applicant, or his or her representative, miscalculates the actual date  of 
abandonment, or otherwise misdockets the end of this one year  period, the 
statement that ``the delay was unintentional'' is likewise  not appropriate, 
but the petition is also barred by the terms of the  rule. In addition, 
subsequent petitions under Sec. 1.137(a) are,  regardless of the original 
cause of the abandonment, barred due to the  applicant's failure to cause a 
petition under Sec. 1.137(a) to be  ``promptly filed after the applicant is 
notified of, or otherwise  becomes aware of, the abandonment.'' See 
Application of S., 8 USPQ2d at  1632.
    Where the applicant deliberately permits an application to become  
abandoned (e.g., due to a conclusion that the claims are unpatentable  (e.g., 
that a rejection in an Office action cannot be overcome), or  that the 
invention lacks sufficient commercial value to justify  continued 
prosecution), the abandonment of such application is  considered a 
deliberately chosen course of action, and the resulting  delay cannot be 
considered ``unintentional'' within the meaning of 37  CFR 1.137(b). See In re 
Application of G., 11 USPQ2d 1378, 1380 (Comm'r  Pat. 1989). Likewise, where 
the applicant deliberately chooses not to  either seek or persist in seeking 
the revival of an abandoned  application, the resulting delay in seeking 
revival of the application  cannot be considered ``unintentional'' within the 
meaning of 37 CFR  1.137. The correctness or propriety of the rejection, or 
other  objection, requirement, or decision, by the Office, the appropriateness 
 of the applicant's decision to abandon the application or to not seek  or 
persist in seeking revival, or the discovery of new information or  evidence, 
or other change in circumstances subsequent to the  abandonment or decision 
not to seek or persist in seeking revival, are  immaterial to such intentional 
delay caused by the deliberate course of  action chosen by the applicant.
    The intentional abandonment of an application, or an intentional  delay in 
seeking either the withdrawal of a holding of abandonment in  or the revival 
of an abandoned application, precludes a finding of  unavoidable or 
unintentional delay pursuant to Sec. 1.137. See In re  Maldague, 10 USPQ2d 
1477, 1478 (Comm'r Pat. 1988).

Proposed Elimination of the Time Period Requirement for Filing a  Petition 
Pursuant to Sec. 1.137(b)

    Under this proposal, an intentional delay in the filing of a  petition 
under Sec. 1.137(b) will not result in an untimely petition  pursuant to Sec. 
1.137(b). The statement that ``the delay was  unintentional,'' however, will 
continue to be inappropriate. That is,  where there is an intentional delay in 
the filing of a petition under  Sec. 1.137(b), the statement that ``the delay 
was unintentional'' will  continue to be inappropriate (i.e., the applicant, 
or his or her  representative cannot properly make this statement, and thus 
cannot  properly request revival of the application), but Sec. 1.137(b) would 
 no longer include an additional time period requirement. It is  anticipated 
that the effects of prosecution delay due to abandonment on  patent term under 
Public Law 103-465, and the proposed 
[[Page 49834]]

changes to Sec. 1.137(c), will eliminate any incentive to intentionally  delay 
the revival of an abandoned application.
    An applicant, assignee, or his or her representative, desiring the  
revival of an application that has inadvertently or unintentionally  become 
abandoned is expected to act without intentional delay in  seeking revival of 
the application. The Office does not question  whether there has been an 
intentional or otherwise impermissible delay  when a petition pursuant to Sec. 
1.137 is filed within three months of  the date the applicant is first 
notified by the Office that the  application is abandoned. Where, however, 
there is a greater delay  between the date the applicant is first notified by 
the Office that the  application is abandoned and the filing of a petition 
pursuant to  Sec. 1.137(b), the Office may raise the question as to whether 
the  delay was unintentional, and may require more than a mere statement  that 
the delay was unintentional. The Office may question whether the  delay was 
unintentional in instances in which an applicant fails to  timely seek 
reconsideration of a decision refusing to revive an  abandoned application 
(see Sec. 1.137(d)).
    Regardless of whether the time period requirement in Sec. 1.137(b)  is 
eliminated, applicants seeking revival of an abandoned application  are 
advised to file a petition pursuant to Sec. 1.137 within three  months of 
first notification that the application is abandoned to avoid  the question of 
intentional delay being raised by the Office or third  parties seeking to 
challenge any patent issuing from the application.     While this proposal 
would permit revival pursuant to Sec. 1.137(b)  without regard to the period 
of abandonment, Sec. 1.137(a) currently  permits revival pursuant thereto 
without regard to the period of  abandonment. In addition, the Office 
currently entertains petitions  pursuant to Sec. 1.183, albeit under strictly 
limited conditions, to  waive the time period requirement in Sec. 1.137(b). 
Since an  application may currently be revived pursuant to Sec. 1.137 without 
 regard to the period of abandonment, any current reliance upon the  period of 
abandonment to ensure that the application will never issue  as a patent is 
misplaced. Thus, the proposed elimination of the time  period requirement in 
Sec. 1.137(b) would not significantly decrease  the relationship between the 
period of abandonment of an application  and the likelihood that such 
application would ever issue as a patent.     In the event that the proposed 
elimination of the time period  requirement for filing a petition pursuant to 
Sec. 1.137(b) is adopted,  public comment is also requested on the application 
of this rule change  to applications that were abandoned prior to the 
effective date of this  rule change. This provision could be made effective as 
to petitions  filed on or after the effective date of the rule change, which 
would  permit the revival pursuant to Sec. 1.137(b) of applications abandoned 
 for extended periods of time, provided that the entire delay was  
unintentional. This provision could also be made effective as to  applications 
abandoned on or after the effective date, with the  provisions of current Sec. 
1.137(b) being applied to applications  abandoned prior to the effective date 
of the rule change. This  provision could also be made effective as to 
applications abandoned  within and/or having a petition to revive filed within 
a specified  period preceding the effective date of the rule change.

Proposed Comparable Time Period Requirements Each of Secs. 1.137 (a)  and (b) 
Based Upon the Date of the First Office Notification That the  Application Had 
Become Abandoned or That the Patent Had Lapsed 
    The Office is also considering amending each of Secs. 1.137 (a) and  (b) 
to include an express requirement that a petition thereunder be  filed within 
a time certain. Specifically, the Office is also  considering amending Sec. 
1.137(a) to include the express requirement  that a petition thereunder be 
filed within three months of the date of  the first Office notification that 
the application had become abandoned  or that the patent had lapsed and 
amending Sec. 1.137(b) to include the  requirement that a petition thereunder 
be filed within three months of  the date of the first Office notification 
that the application had  become abandoned or that the patent had lapsed, or 
within three months  of the date of the first decision on a timely petition 
pursuant to  Sec. 1.137(a).
    The ``promptly filed'' requirement in Sec. 1.137(a) is the subject  of 
various interpretations by applicants seeking revival pursuant to  Sec. 
1.137(a). To avoid misunderstandings as to the timeliness with  which the 
Office expects an applicant seeking revival pursuant to  Sec. 1.137(a) to file 
a petition thereunder, the Office is considering  amending Sec. 1.137(a) to 
include the express requirement that a  petition thereunder be filed within a 
time certain. Providing a period  during which a timely petition pursuant to 
Sec. 1.137 (a) and/or (b)  may be filed based upon the date of the first 
Office notification that  the application had become abandoned or that the 
patent had lapsed,  rather than the date of abandonment or patent lapse, is 
considered a  better measure of timeliness. In addition, providing such a 
period will  reduce uncertainty as to the expiration of the period during 
which a  timely petition pursuant to Sec. 1.137(b), as well as Sec. 1.137(a), 
 may be filed.
    Therefore, the Office is also considering basing the period during  which 
a timely petition under Sec. 1.137 (b), as well as Sec. 1.137(a),  may be 
filed on the date of notification of the abandonment, rather  than the date of 
abandonment, and considers that a period of within  three months of the date 
of the first Office notification that the  application had become abandoned or 
that the patent had lapsed to be  the appropriate period.
    Under the appropriate circumstances, petitions under Sec. 1.183 to  waive 
any time period requirement in Secs. 1.137(a) and/or (b) would be  available. 
Waiver of any requirement of Sec. 1.137 will, in accordance  with Sec. 1.183, 
be strictly limited to an ``extraordinary situation''  in which ``justice 
requires'' such waiver.
    Section 1.137(a)(1), as proposed, would replace the phrase ``a  proposed 
response to continue prosecution of that application, or the  filing of a 
continuing application, unless either has been previously  filed'' with 
``accompanied by the required reply, unless previously  filed. In a 
nonprovisional application abandoned for failure to  prosecute, the proposed 
reply requirement may be met by the filing of a  continuing application. In an 
abandoned application or a lapsed patent,  for failure to pay any portion of 
the required issue fee, the proposed  reply must be the issue fee or any 
outstanding balance thereof.''     Section 1.137(b)(1), as proposed, would 
likewise replace the phrase  ``Accompanied by a proposed response to continue 
prosecution of that  application, or filing of a continuing application, 
unless either has  been previously filed'' with ``accompanied by the required 
reply,  unless previously filed. In a nonprovisional application abandoned for 
 failure to prosecute, the proposed reply requirement may be met by the  
filing of a continuing application. In an abandoned application or a  lapsed 
patent, for failure to pay any portion of the required issue  fee, the 
proposed reply must be the issue fee or any outstanding  balance thereof.''
    While the revival of applications abandoned for failure to timely  
prosecute and for failure to timely pay the issue fee are proposed to  be 
incorporated together in Sec. 1.137, the statutory provisions for  the revival 
of an application abandoned for failure to timely prosecute  and for failure 
to

[[Page 49835]]

timely submit the issue fee are mutually exclusive. See Brenner v.  Ebbert, 
398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied 393 U.S.  926, 159 USPQ 
799 (1968). 35 U.S.C. 151 authorizes the acceptance of a  delayed payment of 
the issue fee, if the issue fee ``is submitted * * *  and the delay in payment 
is shown to have been unavoidable.'' 35 U.S.C.  41(a)(7) likewise authorizes 
the acceptance of an ``unintentionally  delayed payment of the fee for issuing 
each patent.'' Thus, 35 U.S.C.  41(a)(7) and 151 each require payment of the 
issue fee as a condition  of reviving an application abandoned or patent 
lapsed for failure to  pay the issue fee. Therefore, the filing of a 
continuing application  without payment of the issue fee or any outstanding 
balance thereof is  not an acceptable proposed reply in an application 
abandoned or patent  lapsed for failure to pay any portion of the required 
issue fee.     The Notice of Allowance requires the timely payment of the 
issue  fee in effect on the date of its mailing to avoid abandonment of the  
application. In instances in which there is an increase in the issue  fee by 
the time of payment of the issue fee required in the Notice of  Allowance, the 
Office will mail a notice requiring payment of the  balance of the issue fee 
then in effect. The phrase ``for failure to  pay any portion of the required 
issue fee'' applies to those instances  in which the applicant fails to pay 
either the issue fee required in  the Notice of Allowance or the balance of 
the issue fee required in a  subsequent notice. In such instances, the 
proposed reply must be the  issue fee then in effect, if no portion of the 
issue fee was previously  submitted, or any outstanding balance of the issue 
fee then in effect,  if a portion of the issue fee was previously submitted.
    These proposed changes to Secs. 1.137 (a)(1) and (b)(1) are  necessary to 
incorporate into Sec. 1.137 the revival of abandoned  applications and lapsed 
patents for the failure to timely reply to an  Office requirement in a 
provisional application, to timely pay the  issue fee, or to timely pay the 
full amount of the issue fee.     Sections 1.137 (a) and (b), as proposed, 
would each include a new  paragraph, paragraphs (a)(4) and (b)(4), 
respectively, providing that  any petition thereunder must be accompanied by 
any terminal disclaimer  (and fee as set forth in Sec. 1.20(d)) required 
pursuant to  Sec. 1.137(c), to include in Secs. 1.137 (a) and (b) an explicit 
 reference to the terminal disclaimer requirement in Sec. 1.137(c).     
Section 1.137(c), as proposed, would change the phrase ``any  petition 
pursuant to paragraph (a) of this section'' to ``any petition  pursuant to 
this section.'' As the period for the timely filing of a  petition under Sec. 
1.137(b) would no longer be based upon the period  of abandonment, 
administrative convenience no longer justifies not  requiring, for all design 
applications and all other nonprovisional  utility applications filed prior to 
June 8, 1995, a terminal disclaimer  under Sec. 1.137(c) for all petitions 
pursuant to Sec. 1.137.     In addition, the phrase ``not filed within six 
months of the date  of abandonment of the application'' is proposed to be 
removed from  Sec. 1.137(c). The only justification for the current six month 
 limitation on the terminal disclaimer requirement in Sec. 1.137(c) is  
administrative convenience in treating a petition pursuant to  Sec. 1.137(a) 
filed within six months of the date of abandonment. Since  the date of 
abandonment is miscalculated in a significant number of  instances, this 
provision of Sec. 1.137(c) leads to errors in  determining when a terminal 
disclaimer is required pursuant to  Sec. 1.137(c), and thus leads to delays in 
continuing prosecution of  the abandoned application. In any event, 
administrative convenience is  no longer considered an adequate justification 
for the effective  different treatment that would result by operation of Pub. 
L. 103-465  of: (1) Applications filed on or after June 8, 1995, except for 
design  applications, and (2) applications filed prior to June 8, 1995 and all 
 design applications.
    Section 1.137(d), as proposed, would change ``application'' to  
``abandoned application or lapsed patent'' to incorporate into  Sec. 1.137 the 
revival of lapsed patents.
    Section 1.137(e), as proposed, would provide that the time periods  set 
forth in Sec. 1.137 may be extended under the provisions of  Sec. 1.136.
    Section 1.137(f), as proposed, will expressly provide that a  provisional 
application, abandoned for failure to timely reply to an  Office requirement, 
may be revived pursuant to Sec. 1.137 (a) or (b) so  as to be pending for a 
period of no longer than twelve months from its  filing date. In accordance 
with 35 U.S.C. 111(b)(5), Sec. 1.137(f), as  proposed, will clearly indicate 
that ``[u]nder no circumstances will a  provisional application be regarded as 
pending after twelve months from  its filing date.'' Sections 1.139 (a) and 
(b) each currently provide  that a provisional application may be revived so 
as to be pending for a  period of no longer than twelve months from its filing 
date, and that  under no circumstances will a provisional application be 
regarded as  pending after twelve months from its filing date.
    Section 1.139 is proposed to be removed and reserved and its  subject 
matter added to Sec. 1.137.
    Section 1.142 would be amended by replacement of ``response'' with  
``reply'' in accordance with the proposed change to Sec. 1.111.     Section 
1.144 is proposed to be amended for clarification purposes.     Section 1.146 
is proposed to be amended for clarification purposes.     Section 1.152 is 
proposed to be amended by removing the prohibition  against color drawings and 
color photographs in design applications.  Section 1.152 would be amended to 
permit the use of color photographs  and color drawings in design applications 
subject to the petition  requirements of Sec. 1.84(a)(2) inasmuch as color may 
be an integral  element of the ornamental design. While pen and ink drawings 
may be  lined for color, a clear showing of the configuration of the design 
may  be obscured by this drafting method. New technologies, such as  
holographic designs, fireworks and laser light displays may not be  accurately 
disclosed without the use of color.
    The term ``article'' of Sec. 1.152 would be replaced by the term  
``design'' as 35 U.S.C. 171 requires that the claim be directed to the  
``design for an article'' not the article, per se. Therefore, to comply  with 
the requirements of 35 U.S.C. 112, first paragraph, it is only  necessary that 
the design as embodied in the article be fully disclosed  and not the article 
itself. The term ``must'' would be replaced by the  term ``should'' to allow 
for latitude in the illustration of articles  whose configuration may be 
understood without surface shading.  Clarification language would be added to 
note that the use of solid  black surfaces would be permitted for 
representation of the color black  as well as color contrast and that 
photographs and ink drawings must  not be combined as formal drawings in one 
application.
    Section 1.154 paragraph (a) would be amended to clarify that a  voluntary 
submission (see comments under Sec. 1.152 relating to  substitution of 
``design'' for ``article'') may and should be made of  ``a brief description 
of the nature and intended use of the article in  which the design is 
embodied.'' It is current practice for design  examiners, in appropriate 
cases, to inquire as to the nature and  intended use of the article in which a 
claimed design is embodied. The  submission of such description will allow for 
a more accurate initial  classification, and aid in providing a proper and 
complete search at  the time of the first action on the merits. In those

[[Page 49836]]

instances where this feature description is necessary to establish a  clear 
understanding of the article in which the design is embodied,  provision of 
the feature description would help in reducing pendency by  eliminating the 
necessity for time consuming correspondence.  Specifically, requests for 
information prior to first action would be  avoided. Absent an amendment 
requesting deletion of the description it  would be printed on any patent that 
would issue.     Sections 1.155 (b) through (f) are proposed to be removed in 
view  of the proposed amendments to Sec. 1.137.
    Section 1.163 is proposed to be amended to remove an unnecessary  and 
outmoded reference to a ``legible carbon copy of the original''  specification 
for plant applications.
    Section 1.165 is proposed to be amended by removing a reference to  the 
artistic and competent execution of plant patent drawings which is  
unnecessary in view of the reference to Sec. 1.84.
    Section 1.167 is proposed to be amended by removing and reserving  
paragraph (b) as unnecessary in view of Sec. 1.132.
    Section 1.171 would no longer require an order for a title report  in 
reissue applications as the requirement for a certification on  behalf of all 
the assignees under concomitantly amended Sec. 1.172(a)  obviates the need for 
a title report and fee therefor. Section 1.171 is  also proposed to be amended 
by deletion of the requirement for an offer  to surrender the patent, which 
offer is seen to be redundant in view of  Sec. 1.178.
    Section 1.172 is proposed to be amended to require that all  assignees 
establish their ownership interest by submission of evidence  of the chain of 
title or by specifying where such evidence is recorded  in the Office.
    Section 1.175 relating to the content of the reissue oath or  declaration 
(MPEP 1414), as well as Secs. 1.48 and 1.324 relating to  correction of 
inventorship in an application and in a patent,  respectively, are proposed to 
be amended to remove the requirement for  a showing of a lack of deceptive 
intent based on facts and  circumstances. As the Office no longer investigates 
fraud and  inequitable conduct issues and a reissue applicant's statement of a 
 lack of deceptive intent is normally accepted on its face (See MPEP  1448), 
the current requirement in Sec. 1.175(a)(5) that it be shown how  the error(s) 
being relied upon arose or occurred without deceptive  intent on the part of 
the applicant appears to be unduly burdensome  upon applicants and the Office, 
and is proposed to be deleted. This  would apply to the initially identified 
error(s), under paragraph (a),  and any subsequently identified error(s) under 
paragraph (b). An  initial reissue oath or declaration would be required to be 
filed  pursuant to Sec. 1.175(a) limited to identification of the cause(s) of 
 the reissue, and stating generally that all errors being corrected in  the 
reissue application at the time of filing of the oath or  declaration arose 
without deceptive intent. The current practice under  Sec. 1.175(a)(3) and 
(a)(5) of specifically identifying all errors  being corrected at the time of 
filing the initial oath or declaration  would not be retained.
    Paragraph (b)(1) of Sec. 1.175 would require a supplemental reissue  oath 
or declaration for errors corrected that were not covered by an  earlier 
presented reissue oath or declaration, such as the initial oath  or 
declaration pursuant to paragraph (a) of this section or one  submitted 
subsequent thereto (a supplemental oath or declaration under  this paragraph), 
stating generally that all errors being corrected  which are not covered by an 
earlier presented oath or declaration  pursuant to paragraphs (a) and (b) of 
this section arose without any  deceptive intention on the part of the 
applicant. A supplemental oath  or declaration that refers to all errors that 
are being corrected,  including errors covered by a reissue oath or 
declaration submitted  pursuant to paragraph (a) of this section, would be 
acceptable. The  specific requirement for a supplemental reissue oath or 
declaration to  cover errors sought to be corrected subsequent to the filing 
of an  initial reissue oath or declaration is not a new practice, but merely  
recognition of a current requirement for a supplemental reissue oath or  
declaration when additional errors are to be corrected. However, the  current 
practice of specifically identifying all supplemental errors  being corrected 
in a supplemental reissue oath or declaration would not  be retained.
    A supplemental oath or declaration under paragraph (b)(1) would be  
required to be submitted prior to allowance. The supplemental oath or  
declaration may be submitted with any amendment prior to allowance,  paragraph 
(b)(1)(i), or in order to overcome a rejection under 35  U.S.C. 251 made by 
the examiner where there are errors sought to be  corrected that are not 
covered by a previously filed reissue oath or  declaration, paragraph 
(b)(1)(ii). Any such rejection by the examiner  will include a statement that 
the rejection may be overcome by  submission of a supplemental oath or 
declaration, which oath or  declaration states that the errors in issue arose 
without any deceptive  intent on the part of the applicant. A supplemental 
oath or declaration  under paragraph (b) would only be required for errors 
sought to be  corrected during prosecution of the reissue application. Where 
an  Office action contains only a rejection under 35 U.S.C. 251 and  indicates 
that a supplemental oath or declaration under this paragraph  would overcome 
the rejection, applicants are encouraged to authorize  the payment of the 
issue fee at the time the supplemental reissue oath  or declaration is 
submitted in view of the clear likelihood that the  reissue application will 
be allowed on the next Office action. Such  authorization will reduce the 
delays in the Office awaiting receipt of  the issue fee. Where there are no 
errors to be corrected over those  already covered by an oath or declaration 
submitted under paragraphs  (a) and (b)(1) of this section, e.g., the 
application is allowed on  first action, or where a supplemental oath or 
declaration has been  submitted prior to allowance and no further errors have 
been corrected,  a supplemental oath or declaration under this paragraph, or 
additional  supplemental oath or declaration under paragraph (b)(1), would not 
be  required.
    Paragraph (b)(2) would provide that for any error sought to be  corrected 
after allowance, e.g., under Sec. 1.312, a supplemental oath  or declaration 
must accompany the requested correction stating that the  error(s) to be 
corrected arose without any deceptive intent on the part  of the applicant.
    The quotes around lack of deceptive intent in Sec. 1.175(a)(6)  would be 
removed as the exact language would not be required. Section  1.175(a)(7), 
referencing Sec. 1.56, is proposed to be removed as  unnecessary in view of 
the reference to Sec. 1.56 in Sec. 1.63 that is  also referred to by Sec. 
1.175(a). Section 1.175(b) noting the ability  of applicant to file affidavits 
or declarations of others and the  ability of the examiner to require 
additional information would be  deleted as unnecessary in view of Sec. 1.132 
and 35 U.S.C 132. A  reference to Sec. 1.53(b) would be inserted in newly 
proposed  Sec. 1.175(c) to clarify that the initial oath or declaration under 
 Sec. 1.175(a) including those requirements under Sec. 1.63 need not be  
submitted (with the specification, drawing and claims) in order to  obtain a 
filing date.
    37 CFR 1.176 would be amended to permit the Office to require  restriction 
between claims added in a reissue application and the  original patent claims, 
where the claims added in the reissue  application are separate and distinct 
from the original patent claims. 
[[Page 49837]]

This change is provided to deal with the added examination burden which  
results when new inventions are added via the reissue application. The  Office 
would continue to not require restriction between original  claims of the 
patent, i.e., between claims that were in the patent  prior to filing the 
reissue application. In order for restriction to be  required between the 
original patent claims and the newly added claims,  the newly added claims 
must be separate and distinct from the original  patent claims. Restriction 
between multiple inventions in the newly  added claims would also be possible 
provided the newly added claims are  drawn towards separate and distinct 
inventions.
    Section 1.177 is proposed to be amended to discontinue the current  
practice that copending reissue applications must be issued  simultaneously 
unless ordered otherwise by the Commissioner pursuant to  petition.
    Section 1.177 is proposed to be further amended by creating  paragraphs 
(a) through (d) to clarify when multiple reissue patents may  be issued and 
the conditions that applicant must comply with in order  to have the 
Commissioner exercise his or her discretion and authorize  issuance of 
multiple reissue patents. The Commissioner has discretion  pursuant 35 U.S.C. 
251 to permit the issuance of multiple reissue  patents for distinct and 
separate parts of the thing patented. The  Commissioner will exercise his or 
her statutory discretion under the  limited conditions set forth in paragraph 
(a) of this section. Absent  compliance with the provisions of paragraph (a) 
of this section, as  defined by paragraphs (b) and (c) of this section, the 
Commissioner  will not exercise his or her discretion under the statute and 
will not  permit the issuance of multiple reissue applications, as is set 
forth  in paragraph (d) of this section.
    The conditions for the Commissioner to exercise his or her  discretion and 
permit multiple reissue patents to be issued for  distinct and separate parts 
of the thing patented set forth in  paragraph (a) of this section are as 
follows: (1) Copending reissue  applications for distinct and separate parts 
of the thing patented have  been filed, (2) Applicant has filed in each 
copending reissue  application a timely demand by way of petition for multiple 
reissue  patents, (3) The required filing and issue fees for each copending  
reissue application have been paid, and (4) The petition for multiple  reissue 
patents is granted prior to issuance of a reissue patent on any  of the 
copending reissue applications.
    Paragraph (b) of Sec. 1.177 would set forth the requirements of the  
petition provided for in paragraph (a)(2) of this section, which  requirements 
are: (1) A request for the issuance of multiple reissue  patents for distinct 
and separate parts of the thing patented, (2) The  petition fee pursuant to 
Sec. 1.17(i), (3) An identification of the  other copending reissue 
application(s), (4) A statement that the  inventions as claimed in the 
copending reissue applications are  distinct and separate parts of the thing 
patented, and (5) A showing  sufficient to establish to the satisfaction of 
the Commissioner that  the claimed subject matter of the thing patented is in 
fact being  divided into distinct and separate parts.
    The ``distinct and separate parts of the thing patented'' means two  
things: (1) That the thing patented is being proposed to be divided  into 
separate parts, i.e., the claims in the original patent are being  separated 
into different reissue applications, and (2) that the divided  claims are 
distinct as set forth in MPEP 802.01.
    Items (4) and (5) are intended to cover those situations where the  
Commissioner can and has determined, based on material and/or  information 
supplied by applicant, or otherwise, that the subject  matter of the thing 
patented is in fact being separated into parts that  are distinct.
    The Commissioner intends to delegate the authority for decisions on  the 
petitions required under this section to the Group Directors of the  groups 
where the copending reissue applications are pending.     Paragraph (c) of 
Sec. 1.177 would define the timeliness  requirements for submission of the 
petitions set forth in paragraph  (a)(1) of this section. When the copending 
reissue applications are  filed at the same time, the petitions must be filed 
no later than the  earliest submission of the reissue oath or declaration 
under  Sec. 1.175(a) for any of the copending reissue applications. When the  
copending reissue applications are filed at different times, the  petitions 
must be filed no later than the earliest of: (1) Payment of  the issue fee for 
any of the copending reissue applications, or (2)  submission of the reissue 
oath or declaration under Sec. 1.175 in the  later filed copending reissue 
application.
    Paragraph (d) of Sec. 1.177 sets forth that the Commissioner will  not 
permit multiple reissue patents to be issued if the requirements of  this 
section are not met.
    It is contemplated that where the requirements of paragraphs (a)  and (b) 
of Sec. 1.177 are capable of being perfected, the Office will  give a 
one-month time period for perfection, with extensions of time  available under 
Sec. 1.136(a). Where a first copending reissue  application has issued, 
however, perfection would not be possible. It  is not the intent of the 
Commissioner to provide any possibility of  review by way of appeal to the 
Board of Patent Appeals and  Interferences from his or her determination that 
the requirements of  this section have not been complied with. Review of 
determinations on  questions as to whether it has been established that the 
copending  reissue applications are for distinct and separate parts of the 
thing  patented will be by way of petition under Sec. 1.181(a)(3) and  
subsequently to court as to whether the Commissioner, or his or her  
designate, has properly exercised the discretion provided by 35 U.S.C.  251 as 
is now proposed to be implemented in Sec. 1.177.
    The proposed changes are not intended to affect the type of errors  that 
are or are not appropriate for correction under 35 U.S.C. 251,  e.g., a patent 
granted on elected claims will not be considered to be  partially inoperative 
by reason of claiming less than they had a right  to claim and applicant's 
failure to timely file a divisional  application is not considered to be the 
type of error that can be  corrected by a reissue. MPEP 1402 and 1450.
    Section 1.177 is also proposed to be clarified by a new more  descriptive 
title in view of the substantive amendments and a reference  to the statutory 
authority.
    Section 1.181 is proposed to be amended by removing paragraphs (d),  (e) 
and (g) as unnecessary and at most representing internal  instructions.
    Section 1.182 is proposed to be amended by providing that a  petition 
under the section may be granted ``subject to such other  requirements as may 
be imposed'' by the Commissioner, language similar  to that appearing for 
petitions under Sec. 1.183. The section would  have removed as unnecessary a 
statement that a decision on a petition  thereunder will be communicated to 
interested parties in writing.     Section 1.184 is proposed to be removed and 
reserved as  representing internal instructions.
    Section 1.191 would be amended, to provide for an appeal only after  the 
claims of an applicant or a patent owner of a patent under  reexamination are 
twice rejected, by deletion of appeal after having  received a final 
rejection. The reference to a final rejection is  deemed unnecessary in view 
of the proposed amendment to Sec. 1.113 by  addition of paragraph (c) 
prohibiting a first action final rejection.  An appeal

[[Page 49838]]

would not then be appropriate in any application including reissue and  
continued prosecution (Sec. 1.53(b)(3)) applications or in a patent  under 
reexamination unless that application or that patent under  reexamination in 
which an appeal is filed has been twice rejected,  particularly in view of the 
elimination of first action final  rejections. A second rejection need not be 
a final rejection for an  appeal to be taken as is currently the practice. 
However, an applicant  or patent owner of a patent under reexamination would 
not be able to  appeal after a first action rejection in a continuation, 
divisional or  continued prosecution application as no first action would be a 
final  rejection and the only basis to appeal would be that the claims of an  
applicant or patent owner of a patent under reexamination have been  twice 
rejected in the same application or the same patent under  reexamination.
    Section 1.191, paragraph (a), would be amended for conformance with  the 
language of 35 U.S.C. 134 by replacement of ``the claims of which  have'' by 
``whose claims have.'' Section 1.191 would also be amended by  replacement of 
``response'' with ``reply'' in accordance with the  proposed change to Sec. 
1.111.
    Sections 1.192, 1.193, 1.194, 1.196, and 1.197 are proposed to be  amended 
to change ``the appellant'' to ``appellant'' for consistency.  Paragraph (a) 
of Sec. 1.192 would be amended by replacement of  ``response'' with ``reply'' 
in accordance with the proposed change to  Sec. 1.111.
    Section 1.193 would be amended in its title by addition of ``and  
substitute brief'' to more accurately reflect the section's contents.  Section 
1.193 would also be amended, by revision of paragraph (a) into  paragraphs 
(a)(1) and (a)(2) and revision of paragraph (b) into  paragraphs (b)(1) and 
(b)(2). Paragraph (a)(1) would retain the subject  matter of current paragraph 
(a). Paragraph (a)(2) would specifically  prohibit the inclusion of a new 
ground of rejection in an examiner's  answer.
    Paragraph (b)(1) would remove the current discretion under existing  
paragraph (b) of this section of the examiner to enter a new ground of  
rejection in an examiner's answer responding to an appeal in  conformance with 
proposed paragraph (a)(2). Paragraph (b)(1) would  require the examiner to 
reopen prosecution to enter any new ground of  rejection. Reopening of 
prosecution would require entering of any  previously submitted paper that has 
been refused entry.
    Paragraph (b)(1) of Sec. 1.193 would also provide appellant with a  right 
to file a substitute appeal brief in compliance with Sec. 1.192  in reply to 
an examiner's answer where the right to file a substitute  appeal brief would 
not be dependent upon a new point of argument being  present in the examiner's 
answer. The current practice of permitting  reply briefs based solely on a 
finding of a new point of argument, as  set forth in current paragraph (b), 
would be eliminated thereby  preventing present controversies as to whether a 
new point of argument  has been made by the primary examiner. Appellant would 
be assured of  having the last submission prior to review by the Board. Upon 
receipt  of a substitute appeal brief the examiner would either acknowledge 
its  receipt and entry or reopen prosecution to respond to any new issues  
raised in the substitute appeal brief. Should the Board desire to  remand the 
appeal to the primary examiner for comment on the latest  submission by 
appellant or to clarify an examiner's answer, MPEP  1211,1211.01, and 1212, 
appellant would be entitled to submit a  substitute appeal brief in response 
to the reply by the examiner to the  Board's inquiry, which reply would be by 
way of a substitute examiner's  answer. The use of substitute appeal briefs 
and substitute examiner's  answers is intended to provide the Board with a 
single most current  paper from each party.
    Paragraph (b)(2) of Sec. 1.193 would provide that if appellant  desires 
that the appeal process be reinstated in reply to the  examiner's reopening of 
prosecution under paragraph (b)(1) of this  section, appellant would be able 
to file a new appeal brief under  Sec. 1.192 and a request to reinstate the 
appeal. Amendments,  affidavits or other new evidence would not be entered if 
submitted with  a request to reinstate the appeal. Reinstatement of the appeal 
would  constitute a new notice of appeal but no additional appeal fees would  
be required, since such fees have been previously paid. The intent of  the 
rule change is to give appellant (rather than the examiner) the  option to 
continue the appeal if desired (particularly under a 20 year  term), or to 
continue prosecution before the examiner in the face of a  new ground of 
rejection. Should an appeal brief be elected as the  response to the examiner 
reopening prosecution based on a new ground of  rejection under paragraph 
(b)(1) of this section, the examiner may  under paragraph (a)(1) of this 
section issue an examiner's answer.     Section 1.194, paragraph (b), is 
proposed to be amended to provide  that a request for an oral hearing must be 
filed in a separate paper.     Section 1.194, paragraph (c), is proposed to be 
amended to provide  that appellant will be notified when a requested oral 
hearing is  unnecessary, e.g., a remand is required.
    Section 1.196, paragraphs (b) and (d), are proposed to be combined  by 
amending paragraph (b) to specifically provide in paragraph (b) for  a new 
ground of rejection for both appealed claims and for allowed  claims present 
in an application containing claims that have been  appealed rather than the 
current practice under paragraph (d) of  recommending a rejection of allowed 
claims that is binding on the  examiner. The effect of an explicit rejection 
of an allowed claim by  the Board of Patent Appeals and Interferences is not 
seen to differ  from a recommendation of a rejection and would serve to 
advance the  prosecution of the application by having the rejection made at an 
 earlier date by the Board of Patent Appeals and Interferences rather  than 
waiting for the application to be forwarded and acted upon by the  examiner. 
The current practice, that the examiner is not bound by the  rejection should 
appellant elect to proceed under paragraph (b)(1) and  an amendment or showing 
of facts not previously of record in the  opinion of the examiner overcomes 
the new ground of rejection, is not  proposed to be changed. A period of two 
months would now explicitly be  set forth for a reply to a decision by the 
Board of Patent Appeals and  Interferences containing a new ground of 
rejection pursuant to  Sec. 1.196(b), which would alter the one month now set 
forth for  replies to recommended rejections of previously allowed claims. 
MPEP  1214.01, page 1200-28. Extensions of time would continue to be governed 
 by Sec. 1.196(f) and Sec. 1.136(b) (and not by Sec. 1.136(a)).     The last 
sentence of paragraph (b)(2) of Sec. 1.196 would be  amended to clarify that 
appellants do not have to both appeal and file  request for reconsideration 
where only a reconsideration of a portion  of the decision is sought in that a 
decision on a request for  reconsideration will incorporate the earlier 
decision for purposes of  appeal of the earlier decision for which only a 
partial request for  reconsideration may have been filed. Additionally it is 
clarified that  decisions on reconsideration are final unless noted otherwise 
in the  decision in that under some circumstances it may not be appropriate to 
 make a decision on reconsideration final as is currently automatically  
provided for.
    Section 1.196 would have a new paragraph (d) providing the Board of  
Patent Appeals and Interferences with explicit authority to have an  appellant

[[Page 49839]]

clarify the record in addition to what is already provided by way of  remand 
to the examiner, MPEP 1211, and appellant's compliance with the  requirements 
of an appeal brief, Sec. 1.192(d). Paragraph (d)(1) would  provide that an 
appellant may be required to address any matter that is  deemed appropriate 
for a reasoned decision on the pending appeal. Such  matters would include:
    (1) The applicability of particular case law that has not been  previously 
identified as relevant to an issue in the appeal,     (2) The applicability of 
prior art that has not been made of  record, and
    (3) The availability of particular test data that would be  persuasive in 
rebutting a ground of rejection.
    Paragraph (d)(2) would provide that appellant would be given a time  limit 
within which to reply to any inquiry under paragraph (d)(1) of  this section. 
Time limits, unlike time periods for reply, are not  extendable under Sec. 
1.136(a).
    Section 1.197, paragraph (b), is proposed to be amended to provide  a 
period of two months, rather than the one month currently provided,  for the 
single request for reconsideration or modification of the Board  decision as 
provided for in Sec. 1.197(b).
    Section 1.291, paragraph (c), is proposed to be amended by removing  the 
blanket limitation of one protest per protestor and would provide  for a 
second or subsequent submission in the form of additional prior  art. Mere 
argument that is later submitted by an initial protestor  would continue not 
to be entered and returned unless it is shown that  the argument relates to a 
new issue that could not have been earlier  raised. MPEP 1907(b). Although, 
later submitted prior art would be made  of record by a previous protestor 
without a showing that it relates to  a new issue, it should be noted that 
entry of later submitted prior art  in the file record does not assure its 
consideration by the examiner if  submitted late in the examination process. 
Accordingly, initial  protests should be as complete as possible when first 
filed.     In view of the proposed change to Sec. 1.291(a) of this section in 
 the 18-Month Publication Notice of Proposed Rulemaking, discussed  supra, 
e.g., at Sec. 1.62 of the preamble, limiting the filing of  protests to the 
issuance of patents to particular time periods (none  after the notice of 
allowance is mailed, none after two months from  publication or the filing of 
protests with a fee during the two-month  period from publication where a 
notice of allowance has not been  mailed), the restriction of protests by 
number is deemed unnecessary  and is recognized as ineffective in that the 
current rule may allow for  more than one protest to be filed on behalf of a 
party.
    Section 1.291 paragraph (c) would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.294 paragraph (b) would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.304(a)(1) is proposed to be amended to replace  
``consideration'' by ``reconsideration,'' an error that resulted from  
mistyping when it first appeared in the Federal Register.
    Section 1.312, paragraph (b), is proposed to have a reference to  Sec. 
1.175(b) added in view of the proposed change in Sec. 1.175(b)  referencing 
Sec. 1.312(b).
    Section 1.313 is proposed to be amended by the addition of  paragraph (c) 
informing applicants that unless written notification is  received that the 
application has been withdrawn from issue at least  two weeks prior to the 
projected date of issue, applicants should  expect that the application will 
issue as a patent. Once an application  has issued, the Office is without 
authority to grant a request under  Sec. 1.313 notwithstanding submission of 
the request prior to issuance  of the patent.
    Sections 1.316 (b) through (f) are proposed to be removed as they  would 
be combined in proposed Sec. 1.137.
    Sections 1.317 (b) through (f) are proposed to be removed as they  would 
be combined in proposed Sec. 1.137.
    Section 1.318 is proposed to be removed and reserved as being an  internal 
Office instruction.
    Section 1.324 is proposed to be amended by creating paragraphs (a)  and 
(b). The requirement for factual showings to establish a lack of  deceptive 
intent would be deleted, with a statement to that effect  being sufficient, 
paragraph (a).
    As Office practice (MPEP 1481) is to require the same type and  character 
of proof of facts as in petitions under Sec. 1.48(a), a  showing of diligence 
proposed to be deleted in Sec. 1.48 would not be  continued in either Sec. 
1.48 or Sec. 1.324, which currently follows  the requirements of Sec. 1.48. 
The applicability of a rejection under  35 U.S.C. 102(f)/(g) against a patent 
with the wrong inventorship set  forth therein is deemed to provide sufficient 
motivation for prompt  correction of the inventorship without the need for a 
separate  requirement for diligence.
    The parties set forth in 35 U.S.C. 256 are interpreted to be only  the 
person named as an inventor or not named as an inventor through  error. 
Accordingly, Sec. 1.324 is proposed to be amended, paragraph  (b)(1), to 
explicitly require a statement relating to the lack of  deceptive intent only 
from each person who is being added or deleted as  an inventor, as opposed to 
the current practice of requiring a  statement from each original named 
inventor and any inventor to be  added.
    The current requirements for an oath or declaration under Sec. 1.63  by 
each actual inventor would be replaced, paragraph (b)(2) of  Sec. 1.324, by a 
statement from the current named inventors who have  not submitted a statement 
under paragraph (b)(1) of Sec. 1.324 either  agreeing to the change of 
inventorship or stating that they have no  disagreement in regard to the 
requested change. Not every original  named inventor would necessarily have 
knowledge of each of the  contributions of the other inventors and/or how the 
inventorship error  occurred, in which case their lack of disagreement to the 
requested  change would be sufficient.
    Paragraph (b)(3) of Sec. 1.324 would require the written consent of  the 
assignees of all parties who submitted a statement under paragraph  (b)(1) and 
(b)(2) of this section similar to the current practice of  consents by the 
assignees of all the existing patentees. A  clarification reference to Sec. 
3.73(b) has been added.
    Paragraph (b)(4) of Sec. 1.324 states the requirement for a  petition fee 
as set forth in Sec. 1.20(b).
    Section 1.325 relating to mistakes not corrected is proposed to be  
removed and reserved as unnecessary in that mistakes cannot be  corrected 
unless a basis for their correction is found.
    Sections 1.351 and 1.352 are proposed to be removed and reserved as  
unnecessary in that they are internal instructions.
    Section 1.366, paragraph (b), would have the term ``certificate''  removed 
as unnecessary. Paragraph (c) would be clarified by changing  ``serial 
number'' to ``application number'' which consists of the  serial number and 
the series code (e.g., ``08/''). Paragraph (d) would  have the suggested 
requirements for the patent issue date and the  application filing date 
removed as unnecessary in that the patent  number is sufficient to identify 
the file and the change parallels an  intended deletion of these dates from 
forms PTO/SB/45 and PTO/SB/47.  The term ``serial'' would be removed from 
paragraph (d).
    Section 1.377, paragraph (c), would be amended to remove the  requirement

[[Page 49840]]

that the petition be verified in accordance with the proposed change to  Sec. 
1.4(d)(2).
    Section 1.378, paragraph (d), would be amended to remove the  requirement 
that the statement be verified in accordance with the  proposed change to Sec. 
1.4(d)(2).
    Section 1.425 would be amended by removing paragraph (a) and its  
requirement for: Proof of the pertinent facts, which relates to the  lack of 
cooperation or unavailability of the inventor for which status  is sought and 
by deleting paragraph (b) and its requirements for: Proof  of the pertinent 
facts, the presence of a sufficient proprietary  interest, and a showing that 
such action is necessary to preserve the  rights of the parties or to prevent 
irreparable damage. Additionally,  the requirement that the last known address 
of the non-signing inventor  be stated would be removed. The current 
requirements are thought to be  unnecessary in view of the need for submission 
of the same information  in a petition under 37 CFR 1.47 during the national 
stage. The  paragraph to be added would parallel the requirement in PCT Rule 
4.15  for a statement explaining to the satisfaction of the Commissioner the  
lack of the signature concerned.
    Section 1.484, paragraphs (d) through (f), would be amended by  
replacement of ``response'' and ``respond'' with ``reply'' in  accordance with 
the proposed change to Sec. 1.111.
    Section 1.485 paragraph (a) would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.488, paragraph (b), would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.492 proposed to be amended to add new paragraph (g).     Section 
1.494, paragraph (c), would be amended by replacement of  ``response'' with 
``reply'' in accordance with the proposed change to  Sec. 1.111.
    Section 1.495, paragraph (c)(2), would be amended by replacement of  
``response'' with ``reply'' in accordance with the proposed change to  Sec. 
1.111.
    Section 1.510, paragraph (e), would be amended to replace a  reference to 
Sec. 1.121(f), in view of it proposed removal, with a  reference to Sec. 
1.530(d) in view of its proposed revision.     Section 1.530 the title and 
paragraph (a) would be amended by  replacement of ``amendment'' and 
``response'' with ``reply'' in  accordance with the proposed change to Sec. 
1.111.
    Section 1.530, paragraph (d), would be replaced by paragraphs  (d)(1) 
through (d)(6) removing the reference to Sec. 1.121(f) in  accordance with the 
proposed deletion of Sec. 1.121(f). The manner of  making amendments in 
reexamination proceeding under the current  reexamination practice is governed 
by Sec. 1.530 (d)(1) through (d)(6).  Paragraph (d) would apply to proposed 
amendments in reexamination  proceedings. Paragraph (d)(1) would be directed 
to the manner of  proposing amendments in the specification other than in the 
claims.  Paragraph (d)(1)(i) would require the precise point to be indicated  
where a proposed amendment is to be made. Paragraph (d)(1)(ii) would  require 
that all amendments including deletions be made by submission  of a copy of 
the rewritten paragraph(s) with markings. A change in one  sentence, 
paragraph, or page that results in only format changes to  other pages not 
being amended are not to be submitted. Paragraph  (d)(1)(iii) would require 
proposed amendments to the specification to  be made by rewritten relative to 
the patent specification and not  relative to a previous proposed amendment. 
Paragraph (d)(1)(iv) would  define the markings set forth in paragraph 
(d)(1)(ii).
    Paragraph (d)(2) of Sec. 1.530 would relate to the manner of  proposing 
amendment of the claims in reexamination proceedings.  Paragraph (d)(2)(i)(A) 
would require that a proposed amendment include  the entire text of each 
patent claim which is proposed to be amended,  but not all pending claims, 
such as patent claims that have not been  proposed to be amended. 
Additionally, provision would be made for the  cancellation of patent or of a 
proposed claim by a direction to cancel  without the need for marking by 
brackets. Compare with deletion of  claims in reissue applications where only 
patent claims and not added  claims may be cancelled by direction, paragraph 
(b)(2)(i)(A). Paragraph  (b)(2)(i)(B) would prohibit the renumbering of the 
patent claims and  require that any proposed added claims follow the number of 
the highest  numbered patent claim. Paragraph (b)(2)(i)(C) would identify the 
type  of markings required by paragraph (d)(2)(i)(A), single underlining for  
added material and single brackets for material deleted.
    Paragraph (d)(2)(ii) would require the patent owner to set forth  the 
status of all patent claims, of all currently proposed claims, and  of all 
previously proposed claims that are no longer being proposed as  of the date 
of submission of each proposed amendment. Compare with  Sec. 1.121(b)(2)(ii), 
which does not require the status of patent  claims that were not amended or 
of added claims that were cancelled.     Paragraph (d)(2)(iii) of Sec. 1.530 
would require an explanation of  the support in the disclosure for any 
proposed first-time amendments to  the claims on pages separate from the 
amendments along with any  additional comments. The absence of an explanation 
would result in an  incomplete reply, 35 U.S.C. 135.
    Paragraph (d)(2)(iv) of Sec. 1.530 would require that each  submission of 
a proposed amendment to any claim (patent claims and all  proposed claims) 
requires copies of all proposed amendments to the  claims as of the date of 
the submission. A copy of a previous amendment  would not meet the requirement 
of this section in that all amendments  must be represented, as only the last 
amendment will be used for  printing. A copy of a patent claim that has not 
been proposed to be  amended is not to be presented.
    Paragraph (d)(2)(v) of Sec. 1.530 would provide that the failure to  
submit a copy of any proposed added claim would be construed as a  direction 
to cancel that claim.
    Paragraph (d)(3) of Sec. 1.530 would clarify that: (1) A proposed  
amendment may not enlarge the scope of the claims of the patent, (2)  that no 
amendment may be proposed in an expired patent, and (3) no  amendment will be 
incorporated into the patent by certificate issued  after the expiration of 
the patent.
    Paragraph (d)(4) of Sec. 1.530 would clarify that amendments  proposed to 
a patent during reexamination proceedings will not be  effective until a 
reexamination certificate is issued.
    Paragraph (d)(5) of Sec. 1.530 would provide the specifications  that the 
form of papers must comply with in reexamination proceedings,  e.g., paper 
size must be either letter size or A4 size (and not legal  size).
    Paragraph (d)(6) of Sec. 1.530 would clarify that proposed  amendments to 
the patent drawings are not permitted and that any change  must be by way of a 
new sheet of drawings with the proposed amended  figures being identified as 
``amended'' and with proposed added figures  identified as ``new'' for each 
sheet that has changed.
    Section 1.550, paragraphs (a), (b), and (d), would be amended by  
replacement of ``response,'' ``responses'' and ``respond'' with  ``reply'' in 
accordance with the proposed change to Sec. 1.111.     Section 1.560, 
paragraph (b), would be amended by replacement of  ``response'' with ``reply'' 
in accordance with the proposed change to  Sec. 1.111.
    Section 1.770 would be amended by replacement of ``response'' with  
``reply''

[[Page 49841]]

in accordance with the proposed change to Sec. 1.111.
    Section 1.785 would be amended by replacement of ``response'' with  
``reply'' in accordance with the proposed change to Sec. 1.111.     Section 
1.804, paragraph (b), would be clarified grammatically by  changing ``shall 
state'' to ``stating'' and would be amended to delete  the requirement that 
the statement be verified in accordance with the  proposed change to Sec. 
1.4(d)(2).
    Section 1.805, paragraph (c), would be amended by replacement of  
``verified'' with ``statement'' in accordance with the proposed change  to 
Sec. 1.111 and removing unnecessary language noting that an attorney  or agent 
registered to practice need not verify their statements.     Portions of part 
3 are proposed to be amended to incorporate part 7  that is proposed to be 
removed and reserved.
    Section 3.11(a) is proposed to be created for the current subject  matter 
and a new paragraph (b) would be added citing Executive Order  9424 and its 
requirements by several departments and other executive  agencies of the 
Government for forwarding items for recording.     Section 3.26 would be 
amended to remove the requirement that  English language translation be 
verified in accordance with the  proposed change to Sec. 1.4(d)(2).
    Section 3.27(a) is proposed to be added to include current subject  matter 
and an exception for Sec. 3.27(b) that would be added citing  Executive Order 
9424 and a mailing address therefor.
    Section 3.31(c) is proposed to be added to require that the cover  sheet 
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 and that the document will not affect  title.
    Section 3.41(a) is proposed to be added for the current subject  matter 
and a Sec. 3.41(b) added to note when no recording fee is  required in Sec. 
3.41(b)(1) through (3) when it is required by  Executive Order 9424.
    Section 3.51 is proposed to be amended by removing the term  
``certification'' as unnecessary in accordance with the proposed change  to 
Sec. 1.4(d)(2).
    Section 3.58 is proposed to be added to provide for the maintaining  of a 
Department Register to record Government interests required by  Executive 
Order 9424 in Sec. 3.58(a). New Sec. 3.58(b) would provide  that the Office 
maintain a Secret Register to record Government  interests also required by 
the Executive Order.
    Section 3.73(b) is proposed to be amended to remove the sentence  
requiring an assignee to specifically state that the evidentiary  documents 
have been reviewed and to certify that title is in the  assignee seeking to 
take action. The sentence is deemed to be  unnecessary in view of the proposed 
amendment to Sec. 1.4(d). Section  3.73(b) has been clarified by addition of a 
reference to an example of  documentary evidence that can be submitted.
    Section 5.1 is proposed to be amended by removing the current  subject 
matter as being duplicative of material in the other sections  of this part 
and to be replaced by subject matter proposed to be  deleted from Sec. 5.33.
    Section 5.2(b) through (d) are proposed to be removed as repetitive  of 
material in the sections following with Sec. 5.2(b) being replaced  with 
subject matter of the first sentence from Sec. 5.7.
    Section 5.3 would be amended by replacement of ``response'' with  
``reply'' in accordance with the proposed change to Sec. 1.111.     Section 
5.4 is proposed to be amended by removing unnecessary  subject matter from 
paragraph (a), eliminating, in paragraph (d), the  requirement that the 
petition be verified in accordance with the  proposed amendment to Sec. 
1.4(d)(2) and by adding the first sentence  of Sec. 5.8 to paragraph (d).
    Section 5.5 is proposed to be amended by removing unnecessary  subject 
matter from paragraph (b) and by replacing current Sec. 5.5(e)  with subject 
matter proposed to be removed from Sec. 5.6(a).     Section 5.6 is proposed to 
be removed and reserved with the subject  matter of Sec. 5.6(a) being placed 
in proposed Sec. 5.5(e).     Section 5.7 is proposed to be removed and 
reserved with the first  sentence thereof being placed in proposed Sec. 
5.2(b).
    Section 5.8 is proposed to be removed and reserved with the subject  
matter from the first sentence thereof being placed in proposed  Sec. 5.4(e).
    Sections 5.11 (b) and (c) are proposed to be amended to update the  
references to other parts of the Code of Federal Regulations.     Section 5.13 
is proposed to be amended by removing the last two  sentences which are 
considered to be unnecessary.
    Section 5.14(a) is proposed to be amended by removing unnecessary  subject 
matter and replacing ``serial number'' with the more  appropriate designation 
``application number''.
    Section 5.15(a) is proposed to be amended by removing unnecessary  subject 
matter and to update the references to other parts of the Code  of Federal 
Regulations.
    Section 5.16 is proposed to be removed and reserved as unnecessary.     
Section 5.17 is proposed to be removed and reserved as unnecessary.     
Section 5.18 is proposed to be amended to update the references to  other 
parts of the Code of Federal Regulations.
    Sections 5.19 (a) and (b) are proposed to be amended to update the  
references to other parts of the Code of Federal Regulations. Section  5.19(c) 
is proposed to be removed as unnecessary.
    Section 5.20(b) is proposed to be removed as unnecessary.     Section 
5.25(c) is proposed to be removed as unnecessary.     Section 5.31 is proposed 
to be removed and reserved as unnecessary.     Section 5.32 is proposed to be 
removed and reserved as unnecessary.     Section 5.33 is proposed to be 
removed and reserved and the subject  matter added to Sec. 5.1.
    Part 7 is proposed to be removed and reserved as the substance  thereof 
has been incorporated into part 3.

Compilation of Inquiries to Public

    The Supplementary Information portion and the preamble portion of  Sec. 
1.137 request comments on the advisability of applying  retroactively 
provisions in the final rules to papers submitted prior  to the effective date 
of the final rule changes.
    The Sec. 1.121 portion of the preamble requests comments regarding  the 
advisability of harmonizing reissue practice with reexamination  practice.
    The Sec. 1.137(b) portion of the preamble requests comments on  
alternatives as to the time period for submitting a petition  thereunder.

Review Under the Paperwork Reduction Act of 1995

    This proposed rule contains information collection requirements  which are 
subject to review by the Office of Management and Budget  (OMB) under the 
Paperwork Reduction Act of 1995. The title, description  and respondent 
description of each of the information collections are  shown below with an 
estimate of each of the annual reporting burdens.  The collections of 
information in this proposed rule have been reviewed  and approved by, or are 
pending approval by the OMB under the following  control numbers: 0651-0035, 
0651-0033, 0651-0031, 0651-0016, 0651-0032  and 0651-0027. Included in each 
estimate is the time for reviewing  instructions, gathering and maintaining 
the data

[[Page 49842]]

needed, and completing and reviewing the collection of information.     With 
respect to the following collections of information, the  Office invites 
comments on: (1) Whether the proposed collection of  information is necessary 
for the proper performance of the Office's  functions, including whether the 
information will have practical  utility; (2) The accuracy of the Office's 
estimate of the burden of the  proposed collection of information, including 
the validity of the  methodology and assumptions used; (3) Ways to enhance the 
quality,  utility, and clarity of the information to be collected; and (4) 
Ways  to minimize the burden of the collection of information on respondents, 
 including through the use of automated collection techniques, when  
appropriate, and other forms of information technology.
    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 OMB control number.

    OMB Number: 0651-0035.
    Title: Address-Affecting Provisions.
    Form Numbers: PTO/SB/82/83.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non- Profit, 
Not-for-Profit Institutions and Federal Government.     Estimated Number of 
Respondents: 44,850.
    Estimated Time Per Response: 0.2 hour.
    Estimated Total Annual Burden Hours: 8,970 hours.
    Needs and Uses: Under existing law, a patent applicant or assignee  may 
appoint, revoke or change a representative to act in a  representative 
capacity. Also, an appointed representative may withdraw  from acting in a 
representative capacity. This collection includes the  information needed to 
ensure that Office correspondence reaches the  appropriate individual.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non- Profit, 
Not-for-Profit Institutions and Federal Government.     Estimated Number of 
Respondents: 165,900.
    Estimated Time Per Response: 0.382 hour.
    Estimated Total Annual Burden Hours: 63,400 hours.
    Needs and Uses: This collection of information is required to  administer 
the patent laws pursuant to Title 35 of the U.S. Code  concerning the issuance 
of patents and related actions including  correcting errors in printed 
patents, refiling of patent applications,  requesting reexamination of a 
patent, and requesting a reissue patent  to correct an error in a patent. The 
affected public includes any  individual or institution whose application for 
a patent has been  allowed or who takes action as covered by the applicable 
rules. 
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08-12/21-26/31/32/42/43/61-64/67-69/91-93/96/ 97.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non- Profit 
Institutions, Not-for-Profit Institutions and Federal  Government.
    Estimated Number of Respondents: 364,000.
    Estimated Time Per Response: 1.779 hours.
    Estimated Total Annual Burden Hours: 647,720 hours.
    Needs and Uses: During the processing for an application for a  patent, 
the applicant/agent may be required or desire to submit  additional 
information to the Office concerning the examination of a  specific 
application. The specific information required or which may be  submitted 
includes: Information Disclosure Citations; Terminal  Disclaimers; Petitions 
to Revive; Express Abandonment; Appeal Notice;  Small Entity; Petition for 
Access; Power to Inspect; Certificate of  Mailing; Amendment Transmittal 
Letter; Deposit Account Order Form. 
    OMB Number: 0651-0016.
    Title: Rules for Patent Maintenance Fees.     Form Numbers: 
PTO/SB/45/46/47/65/66.
    Type of Review: Pending OMB approval.
    Affected Public: Individuals or Households, Business or Other Non- Profit, 
Not-for-Profit Institutions and Federal Government.     Estimated Number of 
Respondents: 273,800.
    Estimated Time Per Response: .08 hour.
    Estimated Total Annual Burden Hours: 22,640 hours.
    Needs and Uses: Maintenance fees are required to maintain a patent  in 
force under Title 35 of the U.S. Code. Payment of maintenance fees  are 
required at 3\1/2\, 7\1/2\ and 11\1/2\ years after the grant of the  patent. A 
patent number and serial number of the patent on which  maintenance fees are 
paid are required in order to ensure proper  crediting of such payments.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/17-20/101-109.
    Type of Review: Currently approved through 9/98.
    Affected Public: Individuals or Households, Business or Other Non- Profit, 
Not-for-Profit Institutions and Federal Government.     Estimated Number of 
Respondents: 221,000.
    Estimated Time Per Response: 10.8 hours.
    Estimated Total Annual Burden Hours: 2,387,000 hours.
    Needs and Uses: The purpose of this information collection is to  permit 
the Office to determine whether an application meets the  criteria set forth 
in the patent statutes and regulations. The standard  Fee Transmittal form, 
New Utility Patent Application Transmittal form,  New Design Patent 
Application Transmittal form, New Plant Patent  Application Transmittal form, 
Plant Color Coding Sheet, Declaration,  and Plant Patent Application 
Declaration will assist applicants in  complying with the requirements of the 
patent statutes and regulations,  and will further assist the Office in 
processing and examination of the  application.

    OMB Number: 0651-0027.
    Title: Changes in Patent and Trademark Assignment Practices.     Form 
Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
    Type of Review: Currently approved through 9/98.
    Affected Public: Individuals or households and businesses or other  
for-profit institutions.
    Estimated Number of Respondents: 170,000.
    Estimated Time Per Response: 0.5 hour.
    Estimated Total Annual Burden Hours: 85,000 hours.
    Needs and Uses: The Office records about 170,000 assignments or  documents 
related to ownership of patent and trademark cases each year.  The Office 
requires a cover sheet to expedite the processing of these  documents and to 
ensure that they are properly recorded.
    As required by the Paperwork Reduction Act of 1995 (44 U.S.C. 
[[Page 49843]]

3507(d)), the Office has submitted a copy of this proposed rulemaking  to OMB 
for its review of these information collections. Interested  persons are 
requested to send comments regarding these information  collections, including 
suggestions for reducing this burden, to the  Office of Information and 
Regulatory Affairs of OMB, New Executive  Office Bldg., 725 17th St. NW, rm. 
10235, Washington, DC 20503, Attn:  Desk Officer for the Patent and Trademark 
Office.     OMB is required to make a decision concerning the collections of  
information contained in these proposed regulations between 30 and 60  days 
after publication of this document in the Federal Register.  Therefore, a 
comment to OMB is best assured of having its full effect  if OMB receives it 
within 30 days of publication. This does not affect  the deadline for the 
public to comment to the Office on the proposed  regulations.

Other Considerations

    This proposed rule change is in conformity with the requirements of  the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order  12612, and 
the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.  It has been 
determined that this rulemaking is not significant for the  purposes of 
Executive Order 12866.
    The Assistant General Counsel for Legislation and Regulation of the  
Department of Commerce has certified to the Chief Counsel for Advocacy,  Small 
Business Administration that the proposed rule change would not  have a 
significant impact on a substantial number of small entities  (Regulatory 
Flexibility Act, Pub. L. 96-354). The principal impact of  these proposed 
changes is to reduce the regulatory burden on the public  in filing patent 
applications and petitions therein.     The PTO has determined that this 
proposed rule change has no  Federalism implications affecting the 
relationship between the National  Government and the States as outlined in 
Executive Order 12612. 
List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Deceptive intent, Inventions  and 
patents.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents. 
37 CFR Part 5

    Inventions and patents, Licenses and exports, Secrecy. 
37 CFR Part 7

    Inventions and patents.

    For the reasons set forth in the preamble, 37 CFR parts 1, 3, 5 and  7 are 
proposed to be amended as follows, with removals indicated by  brackets ([ ]) 
and additions are indicated by arrows (&gt; &lt;): 
PART 1-- RULES OF PRACTICE IN PATENT CASES 
    1. The authority citation for part 1 continues to read as follows: 
    Authority: 35 U.S.C. 6, 23, unless otherwise noted.

    1a. Section 1.4 is proposed to be amended by revising paragraph (d)  and 
by adding paragraph (g) to read as follows:

Sec. 1.4  Nature of correspondence and signature requirements. 
* * * * *
    (d)&gt;(1)&lt; Each piece of correspondence, except as provided for in  
paragraphs (e) and (f) of this section, filed in a patent or trademark  
application, reexamination 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:
    [(1)]&gt;(i)&lt; Be an original, that is, have an original signature  
personally signed in permanent ink by that person; or
    [(2)]&gt;(ii)&lt; Be a copy, such as a photocopy or facsimile  
transmission (Sec. 1.6(d)), of an original &gt;or of a copy of a copy&lt;. 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.
    &gt;(2) By presenting to the Office any paper the party submitting  such 
paper is certifying that to the best of the person's knowledge,  information 
and belief, formed after an inquiry reasonable under the  circumstances that:
    (i) 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;
    (ii) 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;
    (iii) 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
    (iv) 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.
    (3) Sanctions:
    (i) Violations of paragraphs (d)(2)(i) to (iv) of this section  after 
notice and reasonable opportunity to respond are subject to such  sanctions as 
are deemed appropriate by the Commissioner including  issuance of a Notice of 
Termination of Proceedings or return of papers;  and
    (ii) 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 in 
18 U.S.C. 1001, and may jeopardize the  validity or enforceability of the 
application or any patent issuing  thereon.&lt;
* * * * *
    &gt;(g) 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.&lt;
    2. Section 1.6 is proposed to be amended by revising paragraph (e)  to 
read as follows:

Sec. 1.6   Receipt of correspondence.

* * * * *
    (e) 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:
    (1) Promptly filed after the ending of the designated interruption  or 
emergency; and
    (2) Accompanied by a statement indicating that such correspondence  would 
have been filed on that particular

[[Page 49844]]

date if it were not for the designated interruption or emergency in the  
United States Postal Service. [Such statement must be a verified  statement if 
made by a person other than a practitioner as defined in  Sec. 10.1(r) of this 
chapter.]
    3. Section 1.8 is proposed to be amended by revising paragraph (b)  to 
read as follows:

Sec. 1.8   Certificate of mailing or transmission.

* * * * *
    (b) 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 dismissed,  terminated, or decided with 
prejudice, the correspondence will be  considered timely if the party who 
forwarded such correspondence:     (1) 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,
    (2) Supplies an additional copy of the previously mailed or  transmitted 
correspondence and certificate, and
    (3) Includes a statement which attests on a personal knowledge  basis or 
to the satisfaction of the Commissioner to the previous timely  mailing or 
transmission. [Such statement must be a verified statement  if made by a 
person other than a practitioner as defined in  Sec. 10.1(r) of this chapter.] 
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.
* * * * *
    4. Section 1.10 is proposed to be amended by revising paragraph (c)  to 
read as follows:

Sec. 1.10   Filing of papers and fees by ``Express Mail'' with  certificate.

* * * * *
    (c) The Patent and Trademark Office will accept the certificate of  
mailing by ``Express Mail'' and accord the paper or fee the certificate  date 
under 35 U.S.C. 21(a) (unless the certificate date is a Saturday,  Sunday, or 
Federal holiday within the District of Columbia--see  Sec. 1.6(a)) without 
further proof of the date on which the mailing by  ``Express Mail'' occurred 
unless a question is present regarding the  date of mailing. If more than a 
reasonable time has elapsed between the  certificate date and the Patent and 
Trademark Office receipt date or if  other questions regarding the date of 
mailing are present, the person  mailing the paper or fee may be required to 
file a copy of the  ``Express Mail'' receipt showing the actual date of 
mailing and a  statement from the person who mailed the paper or fee [averring 
to the  fact] &gt;stating&lt; that the mailing occurred on the date certified. 
[Such  statement must be a verified statement if made by a person not  
registered to practice before the Patent and Trademark Office.]     5. Section 
1.14 is proposed to be amended by revising paragraphs  (a) and (e) and by 
adding paragraph (f) to read as follows: 

Sec. 1.14   Patent applications preserved in [secrecy] &gt;confidence&lt;. 
    (a) Except as provided in Sec. 1.11(b) pending patent applications  are 
preserved in [secrecy] &gt;confidence&lt;. No information will be given  by 
the Office respecting the filing by any particular person of an  application 
for a patent, the pendency of any particular case before  it, or the subject 
matter of any particular application, nor will  access be given to or copies 
furnished of any pending application or  papers relating thereto, without 
written authority in that particular  application from the applicant or his 
&gt;or her&lt; assignee or attorney or  agent of record, unless the 
application has been identified by [serial]  &gt;application&lt; number in a 
published patent document or the United  States of America has been indicated 
as a Designated State in a  published international application, in which case 
status information  &gt;,&lt; such as whether it is pending, abandoned, or 
patented &gt;,&lt; may be  supplied, or unless it shall be necessary to the 
proper conduct of  business before the Office or as provided by this part. 
Where an  application has been patented, the patent number and issue date may 
 also be supplied.
* * * * *
    (e) Any request by a member of the public seeking access to, or  copies 
of, any pending or abandoned application preserved in [secrecy]  
&gt;confidence&lt; pursuant to paragraphs (a) and (b) of this section, or any 
 papers relating thereto, must &gt;:&lt;
    (1) Be in the form of a petition and be accompanied by the petition  fee 
set forth in Sec. 1.17(i), or
    (2) Include written authority granting access to the member of the  public 
in that particular application from the applicant or the  applicant's assignee 
or attorney or agent of record.
    &gt;(f) Information as to the filing of an application will be  published 
in the Official Gazette as required by Sec. 1.47(a) and (b).&lt;     6. 
Section 1.17 is proposed to be amended by removing and reserving  paragraphs 
(b) through (d) and revising paragraphs (a) and (i) to read  as follows:

Sec. 1.17   Patent application processing fees. 
    (a) Extension fee&gt;s pursuant to Sec. 1.136(a):&lt; [for response  
within first month pursuant to Sec. 1.136(a):

By a small entity (Sec. 1.9(f))..................................$55.00 By 
other than a small entity...................................$110.00]     
&gt;(1) For reply within first month:

By a small entity (Sec. 1.9(f))..................................$55.00 By 
other than a small entity....................................$110.00     (2) 
For reply within second month:

By a small entity (Sec. 1.9(f)).................................$195.00 By 
other than a small entity
  ..............................................................$390.00     
(3) For reply within third month:

By a small entity (Sec. 1.9(f)).................................$465.00 By 
other than a small entity....................................$930.00     (4) 
For reply within fourth month:

By a small entity (Sec. 1.9(f)).................................$735.00 By 
other than a small entity..................................$1,470.00     (5) 
For reply within fifth month:

By a small entity (Sec. 1.9(f))...............................$1,005.00 By 
other than a small entity.................................$2,010.00&lt;     
(b) &gt;Removed&lt; [Extension fee for response within second month  pursuant 
to Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$190.00 By 
other than a small entity...................................$380.00]     (c) 
&gt;Removed&lt; [Extension fee for response within third month  pursuant to 
Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$450.00 By 
other than a small entity...................................$900.00]     (d) 
&gt;Removed&lt; [Extension fee for response within fourth month  pursuant to 
Sec. 1.136(a):

By a small entity (Sec. 1.9(f)).................................$700.00 By 
other than a small entity.................................$1,400.00] * * * * *
(i) For filing a petition to the Commissioner under a section of  this part 
listed below which refers to this paragraph...........$130.00 
    Sec. 1.12--for access to an assignment record.
    Sec. 1.14--for access to an application.
    Sec. 1.53--to accord a filing date, except in provisional  applications.
    Sec. 1.55--for entry of late priority papers.
    &gt;Sec. 1.59--for expungement and return of information.&lt;     [Sec. 
1.60--to accord a filing date.
    Sec. 1.62--to accord a filing date.]
    Sec. 1.97(d)--to consider an information disclosure statement.     Sec. 
1.102--to make an application special.
    Sec. 1.103--to suspend action in application.
    Sec. 1.177&gt;(a)&lt;--for [divisional] &gt;multiple reissue  
applications&lt; [reissues to issue separately].
    Sec. 1.312--for amendment after payment of issue fee.
    Sec. 1.313--to withdraw an application from issue.
    Sec. 1.314--to defer issuance of a patent.     Sec. 1.666(b)--for access 
to an interference settlement  agreement.
    Sec. 3.81--for a patent to issue to assignee, [where the]  assignment 
[was] submitted after payment of the issue fee. * * * * *

[[Page 49845]]

    7. Section 1.21 is proposed to be amended by revising paragraph (n)  to 
read as follows:

Sec. 1.21  Miscellaneous fees and charges.

* * * * *
(n) For handling an incomplete or improper application under  Sec. 1.53(c) [, 
Sec. 1.60 or Sec. 1.62].........................$130.00 * * * * *
    8. Section 1.26 is proposed to be amended by revising paragraph (a)  to 
read as follows:

Sec. 1.26  Refunds.

    (a) [Money] &gt;Any fee&lt; paid by [actual] mistake or in excess &gt;of  
that required&lt; 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  may be returned by check 
or, if requested, by credit to a deposit  account.
* * * * *
    9. Section 1.27 is proposed to be revised to read as follows: 

Sec.  1.27  Statement of status as small entity.

    (a) Any person seeking to establish status as a small entity  (Sec. 1.9(f) 
of this part) for purposes of paying fees in an  application or a patent must 
file a [verified] statement in the  application or patent prior to or with the 
first fee paid as a small  entity. Such a [verified] statement need only be 
filed once in an  application or patent and remains in effect until changed.  
   (b) &gt;When establishing status as a small entity&lt; [Any verified  
statement filed] pursuant to paragraph (a) of this section &gt;, any  
statement filed&lt; on behalf of an independent inventor must be signed by  
the independent inventor except as provided in Sec. 1.42, Sec. 1.43, or  Sec. 
1.47 of this part and must aver that the inventor qualifies as an  independent 
inventor in accordance with Sec. 1.9(c) of this part. Where  there are joint 
inventors in an application, each inventor must file a  [verified] 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  [verified] 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 averring to their status. For  purposes of a 
[verified] statement under this paragraph, a license to a  Federal agency 
resulting from a funding agreement with that agency  pursuant to 35 U.S.C. 
202(c)(4) does not constitute a license as set  forth in Sec. 1.9 of this 
part.
    (c) Any [verified] statement filed pursuant to paragraph (a) of  this 
section on behalf of a small business concern must (1) be signed  by the owner 
or an official of the small business concern empowered to  act on behalf of 
the concern; (2) aver that the concern qualifies as a  small business concern 
as defined in Sec. 1.9(d); and (3) aver 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 Sec. 1.9. Where  the rights of the small business 
concern as a small entity are not  exclusive, a [verified] statement must also 
be filed by the other small  entities having rights averring to their status 
as such. For purposes  of a [verified] statement under this paragraph, a 
license to a Federal  agency resulting from a funding agreement with that 
agency pursuant to  35 U.S.C. 202(c)(4) does not constitute a license as set 
forth in  Sec. 1.9 of this part.
    (d) Any [verified] statement filed pursuant to paragraph (a) of  this 
section on behalf of a nonprofit organization must
    (1) be signed by an official of the nonprofit organization  empowered to 
act on behalf of the organization;
    (2) aver that the organization qualifies as a nonprofit  organization as 
defined in Sec. 1.9(e) of this part specifying under  which one of Sec. 1.9(e) 
(1), (2), (3), or (4) of this part the  organization qualifies; and
    (3) aver 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 Sec. 1.9  of this part. 
Where the rights of the nonprofit organization as a small  entity are not 
exclusive, a [verified] statement must also be filed by  the other small 
entities having rights averring to their status as  such. For purposes of a 
[verified] statement under this paragraph, a  license to a Federal agency 
pursuant to 35 U.S.C. 202(c)(4) does not  constitute a conveyance of rights as 
set forth in this paragraph.     10. Section 1.28 is proposed to be amended by 
revising paragraphs  (a) and (c) to read as follows:

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

    (a) The failure to establish status as a small entity (Secs. 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 Sec. 1.26  of this part, 
based on establishment of small entity status, of a  portion of fees timely 
paid in full prior to establishing status as a  small entity may only be 
obtained if a [verified] statement under  Sec. 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 
Sec. 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. &gt;The refiling of an 
application under Sec. 1.53 as a  continuation, division, continuation-in-part 
or continued prosecution  application or the filing of a reissue application 
requires a new  determination as to continued entitlement to small entity 
status for  the refiled application or the reissue application.&lt; A 
nonprovisional  application claiming benefit under 35 U.S.C. 119(e), 120, 121, 
or  365(c) of a prior application, &gt;a continued prosecution application, or 
 a reissue application&lt; may rely on a [verified] statement filed in the  
prior application &gt;or in the patent&lt; if the nonprovisional application  
&gt;, the continued prosecution application or the reissue application&lt;  
includes a reference to the [verified] statement in the prior  application 
&gt;or in the patent&lt; or includes a copy of the [verified]  statement in 
the prior application &gt;or in the patent&lt; and status as a  small entity 
is still proper and desired. &gt;The payment of a small  entity basic 
statutory filing fee will substitute for the reference.&lt;  Once status as a 
small entity has been established in an application or  patent, the status 
remains in that application or patent without the  filing of a further 
[verified] statement

[[Page 49846]]

pursuant to Sec. 1.27 of this part unless the Office is notified of a  change 
in status.
* * * * *
    (c) 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 [(1) 
if any deficiency between the  amount paid and the amount due is paid within 
three months after the  date the error occurred or (2) if any] &gt;upon 
payment of the&lt; deficiency  between the amount paid and the amount due [is 
paid more than three  months after the date the error occurred and the payment 
is accompanied  by a statement explaining how the error in good faith occurred 
and how  and when the error was discovered. The statement must be a verified  
statement if made by a person not registered to practice before the  Patent 
and Trademark Office]. 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.
* * * * *
    11. Section 1.33 is proposed to be amended by revising paragraph  (a) to 
read as follows and to remove and reserve paragraph (b): 

Sec. 1.33  Correspondence &gt;address&lt; respecting patent applications,  
reexamination proceedings, and other proceedings.

    (a) [The residence and post office address of the applicant must  appear 
in the oath or declaration if not stated elsewhere in the  application.] The 
applicant [may also specify and] &gt;, the assignee(s)  of the entire interest 
(see Secs.  3.71 and 3.73) or&lt; an attorney or  agent of record &gt;(see 
Sec. 1.34(b))&lt; may specify a correspondence  address to which 
communications about the application are to be  directed. All notices, 
official letters, and other communications in  the [case] &gt;application&lt; 
will be directed to the correspondence address  or, if no such correspondence 
address is specified, to an attorney or  agent of record (see Sec. 1.34(b)), 
or, if no attorney or agent is of  record, to the applicant [, or to any 
assignee of record of the entire  interest if the applicant or such assignee 
so requests, or to an  assignee of an undivided part if the applicant so 
requests, at the]  &gt;provided a&lt; post office address [of which the 
Office] has been  [notified] &gt;furnished&lt; in the [case] 
&gt;application&lt;. Amendments and  other papers filed in the application 
must be signed:
    (1) by the applicant, or
    (2) if there is an assignee of record of an undivided part  interest, by 
the applicant and such assignee, or
    (3) if there is an assignee of record of the entire interest, by  such 
assignee, or
    (4) by an attorney or agent of record, or
    (5) by a registered attorney or agent not of record who acts in a  
representative capacity under the provisions of Sec. 1.34(a). Double  
correspondence with an applicant and [his] &gt;an&lt; attorney or agent, or  
with more than one attorney or agent, will not be undertaken. If more  than 
one attorney or agent [be] &gt;is&lt; made of record and a  correspondence 
address has not been specified, correspondence will be  held with the one last 
made of record.
    (b) &gt;[Reserved]&lt;
* * * * *
    12. Section 1.41 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.41  Applicant for patent.

    (a) A patent [must be] &gt;is&lt; applied for in the name of the actual  
inventor or inventors. &gt;The inventorship of an application is set forth  in 
the oath or declaration that is executed in accordance with  Sec. 1.63.&lt; 
[Full names must be stated, including the family name, and  at least one given 
name without abbreviation together with any other  given name or initial.] 
&gt;For identification purposes, the name of the  actual inventor or inventors 
should be supplied when the specification  and any required drawing are filed. 
If the name of the actual inventor  or inventors are not supplied when the 
specification and any required  drawing are filed, the application should 
include an applicant  identification consisting of alphanumeric 
characters.&lt;
* * * * *
    13. Section 1.47 is proposed to be revised to read as follows: 

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

    (a) 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 [omitted] 
&gt;nonsigning&lt; inventor. The oath or  declaration in such an application 
must be accompanied by a petition  including proof of the pertinent facts 
&gt;,&lt; [and] by the [required] fee  &gt;set forth in&lt; [(]Sec. 
1.17(h)[)]&gt;,&lt; and [must state] the last known  address of the [omitted 
]&gt;nonsigning&lt; inventor. The Patent and  Trademark Office shall forward 
notice of the filing of the application  to the [omitted] &gt;nonsigning&lt; 
inventor at said address[. Should such  notice be returned to the Office 
undelivered, or should the address of  the omitted inventor be unknown,] 
&gt;and&lt; notice of the filing of the  application shall be published in the 
Official Gazette. The [omitted]  &gt;nonsigning&lt; inventor may subsequently 
join in the application on  filing an oath or declaration [of the character 
required by] &gt;complying  with&lt; Sec. 1.63. [A patent may be granted to 
the inventor making the  application, upon a showing satisfactory to the 
Commissioner, subject  to the same rights which the omitted inventor would 
have had if he or  she had been joined.]
    (b) Whenever [an] &gt;all the&lt; [inventor] &gt;inventors&lt; [refuses]  
&gt;refuse&lt; to execute an application for patent, or cannot be found or  
reached after diligent effort, a person to whom [the] &gt;an&lt; 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  &gt;all&lt; the 
[inventor] &gt;inventors&lt;. The oath or declaration in such an  application 
must be accompanied by a petition including proof of the  pertinent facts 
&gt;,&lt; [and] a showing that such action is necessary to  preserve the 
rights of the parties or to prevent irreparable damage,  [and by] the 
[required] fee &gt; set forth in&lt; [(]Sec. 1.17(h)[)]&gt;,&lt; and  [must 
state] the last known address of &gt;all&lt; the [inventor]  
&gt;inventors&lt;. [The assignment, written agreement to assign or other  
evidence of proprietary interest, or a verified copy thereof, must be  filed 
in the Patent and Trademark Office.] The Office shall forward  notice of the 
filing of the application to &gt;all&lt; the [inventor]  &gt;inventors&lt; at 
the [address] &gt;addresses&lt; stated in the application[.  Should such 
notice be returned to the Office undelivered, or should the  address of the 
inventor be unknown] &gt;and&lt; notice of the filing of the  application 
shall be published in the Official Gazette. [The] &gt;An&lt;  inventor may 
subsequently join in the application on filing an oath or  declaration [of the 
character required by] &gt;complying with&lt; Sec. 1.63.  [A patent may be 
granted to the inventor upon a showing satisfactory to  the Commissioner.]
    14. Section 1.48 is proposed to be revised to read as follows: 

Sec. 1.48   Correction of inventorship &gt;in a patent application&lt;. 
    (a) [If the correct inventor or inventors are not named in a  
nonprovisional application through error without any

[[Page 49847]]

deceptive intention on the part of the actual inventor or inventors,]  &gt;If 
the inventive entity is set forth in error in an executed Sec. 1.63  or Sec. 
1.175 oath or declaration 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&lt;, the 
application may be amended to name only the actual  inventor or inventors. 
&gt;When the application is involved in an  interference, the amendment shall 
comply with the requirements of this  section and shall be accompanied by a 
motion under Sec. 1.634.&lt; Such  amendment must be [diligently made and must 
be] accompanied by:     (1) A petition including a statement [of facts 
verified by the  original named inventor or inventors establishing when the 
error  without deceptive intention was discovered and how it occurred] 
&gt;from  each person who is being added as an inventor and from each person 
who  is being deleted as an inventor that the error in inventorship occurred  
without deceptive intention on their part&lt;;
    (2) An oath or declaration by each actual inventor or inventors as  
required by Sec. 1.63 &gt;or as permitted by Secs. 1.42, 1.43 or 1.47&lt;;    
 (3) The fee set forth in Sec. 1.17(h); and
    (4) &gt;If an assignment has been executed by any of the original  named 
inventors the,&lt; [The] written consent of [any] &gt;the&lt; assignee &gt;,  
see Sec. 3.73(b)&lt;. [When the application is involved in an  interference, 
the petition shall comply with the requirements of this  section and shall be 
accompanied by a motion under Sec. 1.634.]     (b) If the correct inventors 
are named in [the] &gt;a&lt; nonprovisional  application when filed and the 
prosecution of the application results  in the amendment or cancellation of 
claims so that less than all of the  originally named inventors are the actual 
inventors of the invention  being claimed in the application, an amendment 
shall be filed deleting  the names of the person or persons who are not 
inventors of the  invention being claimed. &gt;When the application is 
involved in an  interference, the amendment shall comply with the requirements 
of this  section and shall be accompanied by a motion under Sec. 1.634. 
Such&lt;  [The] amendment must be [diligently made and shall be] accompanied 
by:     (1) A petition including a statement identifying each named  inventor 
who is being deleted and acknowledging that the inventor's  invention is no 
longer being claimed in the application; and     (2) The fee set forth in Sec. 
1.17(h).
    (c) If a nonprovisional application discloses unclaimed subject  matter by 
an inventor or inventors not named in the application, the  application may be 
amended [pursuant to paragraph (a) of this section]  to add claims to the 
subject matter and name the correct inventors for  the application. &gt;When 
the application is involved in an interference,  the amendment shall comply 
with the requirements of this section and  shall be accompanied by a motion 
under Sec. 1.634. Such amendment must  be accompanied by:
    (1) 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 their 
part;
    (2) An oath or declaration by each actual inventor or inventors as  
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;     (3) The 
fee set forth in Sec. 1.17(h); and
    (4) If an assignment has been executed by any of the original named  
inventors, the written consent of the assignee, see Sec. 3.73(b)&lt;.     (d) 
If the name or names of an inventor or inventors were omitted  in a 
provisional application through error without any deceptive  intention on 
&gt;their part&lt; [the part of the actual inventor or  inventors], the 
provisional application may be amended to add the name  or names of the 
[actual] &gt;omitted&lt; inventor or inventors. Such  amendment must be 
accompanied by:
    (1) A petition including a statement that the &gt;inventorship&lt; error  
occurred without deceptive intention on the part of the [actual]  
&gt;omitted&lt; inventor or inventors[, which statement must be a verified  
statement if made by a person not registered to practice before the  Patent 
and Trademark Office]; and     (2) The fee set forth in Sec. 1.17(q).
    (e) If a person or persons were named as an inventor or inventors  in a 
provisional application through error without any deceptive  intention &gt;on 
their part&lt;, an amendment may be filed in the provisional  application 
deleting the name or names of the person or persons who  were erroneously 
named. Such amendment must be accompanied by:     (1) A petition including a 
statement [of facts verified] by the  person or persons whose name or names 
are being deleted [establishing]  that the &gt;inventorship&lt; error occurred 
without deceptive intention &gt;on  their part&lt;;
    (2) The fee set forth in Sec. 1.17(q); and
    (3) [The written consent of any assignee.] &gt;If an assignment has  been 
executed by any of the original named inventors, the written  consent of the 
assignee, see Sec. 3.73(b).
    (f) If the correct inventor or inventors are not named on filing a  
nonprovisional application without an executed oath or declaration  under Sec. 
1.63, the later submission of an executed oath or  declaration under Sec. 1.63 
will act to correct the earlier  identification of inventorship.
    (g) The Office may require such other information as may be deemed  
appropriate under the particular circumstances surrounding the  correction of 
inventorship.&lt;
    15. Section 1.51 is proposed to be amended by removing paragraph  (c).

Sec. 1.51   General requisites of an application.

* * * * *
    (c) [Removed]
    16. Section 1.52 is proposed to be amended by revising paragraphs  (a) and 
(d) as follows:

Sec. 1.52   Language, paper, writing, margins.

    (a) The application, any amendments or corrections thereto, and the  oath 
or declaration must be in the English language except as provided  for in Sec. 
1.69 and paragraph (d) of this section, or be accompanied  by a [verified] 
translation of the application and a translation of any  corrections or 
amendments into the English language &gt;together with a  statement that the 
translation is accurate&lt;. All papers which are to  become a part of the 
permanent records of the Patent and Trademark  Office must be legibly written, 
typed, or printed in permanent ink or  its equivalent in quality. All of the 
application papers must be  presented in a form having sufficient clarity and 
contrast between the  paper and the writing, typing, or printing thereon to 
permit the direct  reproduction of readily legible copies in any number by use 
of  photographic, electrostatic, photo-offset, and microfilming processes.  If 
the papers are not of the required quality, substitute typewritten  or printed 
papers of suitable quality may be required.
* * * * *
    (d) An application may be filed in a language other than English.  [A 
verified] &gt;An&lt; English translation of the non-English-language  
application &gt;, a statement that the translation is accurate,&lt; and the  
fee set forth in Sec. 1.17(k) are required to be filed with the  application 
or within such time as may be set by the Office.     17. Section 1.53 is 
proposed to be amended by revising paragraphs  (b) through (d) as follows:

[[Page 49848]]

Sec. 1.53   Application number, filing date, and completion of  application.

* * * * *
    (b)(1) The filing date of an application for patent filed under  this 
section, except for a provisional application &gt;under paragraph  (b)(2) of 
this section or a continued prosecution application under  paragraph (b)(3) of 
this section&lt;, is the date on which: a  specification containing a 
description pursuant to Sec. 1.71 and at  least one claim pursuant to Sec. 
1.75; and any drawing required by  Sec. 1.81(a), are filed in the Patent and 
Trademark Office [in the name  of the actual inventor or inventors as required 
by Sec. 1.41]. No new  matter may be introduced into an application after its 
filing date  &gt;(1.115(b)(1))&lt; [(Sec. 1.118)]. [If all the names of the 
actual  inventor or inventors are not supplied when the specification and any 
 required drawing are filed, the application will not be given a filing  date 
earlier than the date upon which the names are supplied unless a  petition 
with the fee set forth in Sec. 1.17(i) is filed which sets  forth the reasons 
the delay in supplying the names should be excused.]  A continuation or 
divisional application (filed under the conditions  specified in 35 U.S.C. 
120, 121 or 365(c) and Sec. 1.78(a)) may be  filed under this &gt;paragraph or 
paragraph (b)(3) of this&lt; section [,  Sec. 1.60 or Sec. 1.62]. A 
continuation-in-part application &gt;must&lt; [may  also] be filed under this 
&gt;paragraph&lt; [section or Sec. 1.62].     &gt;(i) Any continuation or 
divisional application may be filed by all  or by less than all of the 
inventors named in a prior application. A  newly executed oath or declaration 
is not required 
(Sec. 1.51(a)(1)(ii)) and paragraph (d) of this section in a  continuation or 
divisional application filed by all or by less than all  of the inventors 
named in a prior application, provided that one of the  following is 
submitted: A copy of the executed oath or declaration  filed to complete (Sec. 
1.51(a)(1)) the most immediate prior national  application for which priority 
is claimed under 35 U.S.C. 120, 121 or  365(c), or a copy of an unexecuted 
oath or declaration, and a statement  that the copy is a true copy of the oath 
or declaration that was  subsequently executed and filed to complete (Sec. 
1.51(a)(1)) the most  immediate prior national application for which priority 
is claimed  under 35 U.S.C. 120, 121 or 365(c). See paragraph (d) of this 
section  for the filing of a continuation or divisional application without 
the  submission of a newly executed oath or declaration or a copy of the  oath 
or declaration for the most immediate prior national application  for which 
priority is claimed under 35 U.S.C. 120, 121 or 365(c).     (A) The copy of 
the executed or unexecuted oath or declaration for  the most immediate prior 
national application for which priority is  claimed under 35 U.S.C. 120, 121 
or 365(c) must be accompanied by a  statement requesting the deletion of the 
names of the person or persons  who are not inventors in the continuation or 
divisional application.     (B) Where the power of attorney or correspondence 
address was  changed during the prosecution of the prior application, the 
change in  power of attorney or correspondence address must be identified in 
the  continuation or divisional application.
    (ii) 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 a 
continuation-in-part application, which application may name  all, more, or 
less than all of the inventors named in the prior  application.
    (iii) The inventorship of an application is set forth in the oath  or 
declaration that is executed in accordance with Sec. 1.63.&lt;     (2) The 
filing date of a provisional application is the date on  which: A 
specification as prescribed by 35 U.S.C. 112, first paragraph;  and any 
drawing required by Sec. 1.81(a), are filed in the Patent and  Trademark 
Office [in the name of the actual inventor or inventors as  required by Sec. 
1.41]. No amendment, other than to make the  provisional application comply 
with all applicable regulations, may be  made to the provisional application 
after the filing date of the  provisional application. [If all the names of 
the actual inventor or  inventors are not supplied when the specification and 
any required  drawing are filed, the provisional application will not be given 
a  filing date earlier than the date upon which the names are supplied  unless 
a petition with the fee set forth in Sec. 1.17(q) is filed which  sets forth 
the reasons the delay in supplying the names should be  excused.]
    (i) A provisional application must also include a cover sheet  identifying 
the application as a provisional application. Otherwise,  the application will 
be treated as an application filed under  &gt;paragraph (b)(1) of this 
section&lt; [Sec. 1.53(b)(1)].     (ii) An application for patent filed under 
&gt;paragraph (b)(1) of  this section&lt; [Sec. 1.53(b)(1)] may be [treated 
as] &gt;converted to&lt; a  provisional application and be accorded the 
original filing date  provided that a petition requesting the conversion, with 
the fee set  forth in Sec. 1.17(q), is filed prior to the earlier of the 
abandonment  of the [Sec. 1.53(b)(1)] application &gt;under paragraph (b)(1) 
of this  section&lt;, the payment of the issue fee, the expiration of 12 
months  after the filing date of the [Sec. 1.53(b)(1)] application &gt;under  
paragraph (b)(1) of this section&lt;, or the filing of a request for a  
statutory invention registration under Sec. 1.293. The grant of any  such 
petition will not entitle applicant to a refund of the fees which  were 
properly paid in the application filed under &gt;paragraph (b)(1) of  this 
section&lt; [Sec. 1.53(b)(1)].
    (iii) A provisional application shall not be entitled to the right  of 
priority under Sec. 1.55 or 35 U.S.C. 119 or 365(a) or to the  benefit of an 
earlier filing date under Sec. 1.78 or 35 U.S.C. 120, 121  or 365(c) of any 
other application. No claim for priority under  Sec. 1.78(a)(3) may be made in 
a design application based on a  provisional application. No request under 
Sec. 1.293 for a statutory  invention registration may be filed in a 
provisional application. The  requirements of Secs. 1.821 through 1.825 
regarding application  disclosures containing nucleotide and/or amino acid 
sequences are not  mandatory for provisional applications.
    &gt;(3) In a nonprovisional application that is complete as defined by  
Sec. 1.51(a)(1) and filed on or after June 8, 1995, a continuation or  
divisional application that discloses and claims only subject matter  
disclosed in and names as inventors the same or less than all the  inventors 
named in that prior complete application may be filed as a  continued 
prosecution application under this paragraph. The filing date  of a continued 
prosecution application is the date on which a request  for an application 
under this paragraph including identification of the  prior application number 
is filed.
    (i) An application filed under this paragraph:
    (A) Will utilize the file jacket and contents of the prior  application, 
including the specification, drawings and oath or  declaration, from the prior 
complete application (Sec. 1.51(a)) to  constitute the new application, and 
will be assigned the application  number of the prior application for 
identification purposes,     (B) Is a request to expressly abandon the prior 
application as of  the filing date of the request for an application under 
this paragraph,  and
    (C) Must be filed before the payment of the issue fee, abandonment  of, or 
termination of proceedings on the prior application, or after  payment of the

[[Page 49849]]

issue fee if a petition under Sec. 1.313(b)(5) is granted in the prior  
application.
    (ii) The filing fee for a continued prosecution application filed  under 
this paragraph is:
    (A) The basic filing fee as set forth in Sec. 1.16(a), and     (B) Any 
additional Sec. 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 Sec. 1.116 
unentered in the prior application which  applicant has requested to be 
entered in the continued prosecution  application.
    (iii) If an application filed under this paragraph is filed by less  than 
all the inventors named in the prior application, a statement must  accompany 
the application when filed requesting deletion of the names  of the person or 
persons who are not inventors of the invention being  claimed in the new 
application.
    (iv) Any new change must be made in the form of an amendment to 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 
Sec. 1.125.
    (v) The filing of a continued prosecution application under this  
paragraph will be construed to include a waiver of confidence by the  
applicant under 35 U.S.C. 122 to the extent that any member of the  public who 
is entitled under the provisions of Sec. 1.14 to access to,  or information 
concerning either the prior application or any  application filed under the 
provisions of this paragraph may be given  similar access to, or similar 
information concerning, the other  application(s) in the file jacket.
    (vi) In addition to identifying the application number of the prior  
application, applicant is urged to 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:
    (A) Title of invention;
    (B) Name of applicant(s);
    (C) Correspondence address;
    (D) Identification of any priority claim under 35 U.S.C. 119, 120  and 
121.
    (vii) Envelopes containing only requests and fees for filing an  
application under this paragraph should be marked ``Box CPA.''&lt;     
(c)&gt;(1) If any application filed under paragraph (b) of this  section is 
found to be incomplete or improper, applicant will be so  notified and given a 
time period within which to correct the filing  error.
    (2) Any request for review of a notification pursuant to paragraph  (c)(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 Sec. 1.17(i) in  an application filed 
under paragraphs (b)(1) or (b)(3) of this section,  and the fee set forth in 
Sec. 1.17(q) in an application filed under  paragraph (b)(2) of this section. 
In the absence of a timely  (Sec. 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 (c)(1) of this section will 
be the date the  filing error is corrected.
    (3) If an applicant is notified of a filing error pursuant to  paragraph 
(c)(1) of this section, but fails to correct the filing error  within the 
given time period or otherwise timely (Sec. 1.181(f)) take  action pursuant to 
paragraph (c)(2) of this section, proceedings in the  application will be 
considered terminated. Where proceedings in an  application are terminated 
pursuant to this paragraph, the application  may be returned or otherwise 
disposed of, and any filing fees, less the  handling fee set forth in Sec. 
1.21(n), will be refunded.&lt; [If any  application is filed without the 
specification, drawing or name, or  names, of the actual inventor or inventors 
required by paragraph (b)(1)  or (b)(2) of this section, applicant will be so 
notified and given a  time period within which to submit the omitted 
specification, drawing,  name, or names, of the actual inventor, or inventors, 
in order to  obtain a filing date as of the date of filing of such submission. 
A  copy of the ``Notice of Incomplete Application'' form notifying the  
applicant should accompany any response thereto submitted to the  Office. If 
the omission is not corrected within the time period set,  the application 
will be returned or otherwise disposed of; the fee, if  submitted, will be 
refunded less the handling fee set forth in  Sec. 1.21(n). Any request for 
review of a refusal to accord an  application a filing date must be by way of 
a petition accompanied by  the fee set forth in Sec. 1.17(i), if the 
application was filed under  Sec. 1.53(b)(1), or by the fee set forth in Sec. 
1.17(q), if the  application was filed under Sec. 1.53(b)(2).]
    (d)(1) If an application which has been accorded a filing date  pursuant 
to [paragraph] &gt;paragraphs&lt; (b)(1) &gt;or (b)(3)&lt; of this section  
&gt;, including a continuation, divisional, or continuation-in-part  
application,&lt; does not include the appropriate filing fee or an oath or  
declaration by the applicant [,] &gt;pursuant to Secs. 1.63 or 1.175,  which 
may be a copy of the executed oath or declaration filed to  complete, pursuant 
to Sec. 1.51(a)(1), the most immediate prior  national application for which 
priority is claimed under 35 U.S.C. 120,  121 or 365(c), or a copy of an 
unexecuted oath or declaration, and a  statement that the copy is a true copy 
of the oath or declaration that  was subsequently executed and filed to 
complete (Sec. 1.51(a)(1)) the  most immediate prior national application for 
which priority is claimed  under 35 U.S.C. 120, 121 or 365(c), in a 
continuation or divisional  application,&lt; applicant will be so notified, if 
a correspondence  address has been provided, given a period of time within 
which to file  the fee, oath [,] or declaration and to pay the surcharge as 
set forth  in Sec. 1.16(e) in order to prevent abandonment of the application. 
[A  copy of the ``Notice to File Missing Parts'' form mailed to applicant  
should accompany any response thereto submitted to the Office.] If the  
required filing fee is not timely paid, or if the processing and  retention 
fee set forth in Sec. 1.21(l) is not paid within one year of  the date of 
mailing of the notification required by this paragraph, the  application will 
be disposed of. No copies will be provided or  certified by the Office of an 
application which has been disposed of or  in which neither the required basic 
filing fee nor the processing and  retention fee has been paid. The 
notification pursuant to this  paragraph may be made simultaneously with any 
notification pursuant to  paragraph (c) of this section. If no correspondence 
address is included  in the application, applicant has two months from the 
filing date to  file the basic filing fee, oath or declaration and to pay the 
surcharge  as set forth in Sec. 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  Sec. 1.21(l) 
to prevent disposal of the application.
* * * * *
    18. Section 1.54 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.54  Parts of application to be filed together; filing receipt. 
* * * * *
    (b) Applicant will be informed of the application number and filing  date 
by a filing receipt &gt;, unless the application is an application  filed 
under Sec. 1.53(b)(3)&lt;.

[[Page 49850]]

    19. Section 1.55 is proposed to be amended revising paragraph (a)  to read 
as follows:

Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the  benefit of 
the filing date of one or more prior foreign applications  under the 
conditions specified in 35 U.S.C. 119 (a) 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 Sec. 1.63. The claim for  priority and the certified copy of the 
foreign application specified in  35 U.S.C. 119(b) must be filed in the case 
of an interference  (Sec. 1.630), when necessary to overcome the date of a 
reference relied  upon by the examiner, when specifically required by the 
examiner, and  in all other cases, before the patent is granted. If the 
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 specifically required by 
 the examiner, in which event an English language translation must be  filed 
together with a statement that the translation of the certified  copy is 
accurate. [The statement must be a verified statement if made  by a person not 
registered to practice before the Patent and Trademark  Office.]
* * * * *
    20. Section 1.59 is proposed to be revised to read as follows: 

Sec. 1.59  &gt;Expungement of information or copy of papers in application  
file&lt; [Papers of application with filing date not to be returned]. 
    &gt;(a)(1) Information&lt; [Papers] in an application which has received  
a filing date pursuant to Sec. 1.53 will not be &gt;expunged and&lt; returned 
 [for any purpose whatever] &gt;, except as provided in paragraph (b) of  this 
section&lt;. [If applicants have not preserved copies of the papers,  the 
Office will furnish copies at the usual cost of any application in  which 
either the required basic filing fee (Sec. 1.16) or, if the  application was 
filed under Sec. 1.53(b)(1), the processing and  retention fee Sec. 1.21(l) 
has been paid.] See Sec. 1.618 for return of  unauthorized and improper papers 
in interferences.
    &gt;(2) Information forming part of the original disclosure, i.e.,  
written specification, drawings, claims and any preliminary amendment  
specifically incorporated into an executed oath or declaration under  Secs. 
1.63 and 1.175, will not be expunged from the application file.     (b) 
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 Sec. 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.     (c) If applicants have not preserved copies of any 
application  papers, the Office will furnish copies upon request, at the usual 
cost,  for any application in which either the required basic filing fee  
(Sec. 1.16) or, if the application was filed under Sec. 1.53(b)(1), the  
processing and retention fee (Sec. 1.21(l)) has been paid.&lt; 

Sec. 1.60  [Removed and reserved]

    21. Section 1.60 is proposed to be removed and reserved. 

Sec. 1.62  [Removed and reserved]

    22. Section 1.62 is proposed to be removed and reserved.     23. Section 
1.63 is proposed to be amended by revising paragraph  (a) to read as follows:

Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(a)(1)(ii) as a  part of 
an application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;     (2) 
Identify the specification to which it is directed;     (3) Identify each 
inventor &gt;by: full name, including the family  name, and at least one given 
name without abbreviation together with  any other given name or initial,&lt; 
and the residence &gt;, post office  address&lt; and country of citizenship of 
each inventor; and     (4) State whether the inventor is a sole or joint 
inventor of the  invention claimed.
* * * * *
    24. Section 1.69 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.69  Foreign language oaths and declarations.

* * * * *
    (b) 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 [a verified] &gt;an&lt; English translation  
&gt;together with a statement that the translation is accurate&lt;, except  
that in the case of an oath or declaration filed under Sec. 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.
    25. Section 1.78 is proposed to be amended by revising paragraph  (a)(1) 
as follows:

Sec. 1.78  Claiming benefit of [an] earlier filing date and cross- references 
to other applications.

    (a)(1) A nonprovisional application may claim an invention  disclosed in 
one or more prior filed copending nonprovisional  applications or 
international applications designating the United  States of America. In order 
for a nonprovisional application to claim  the benefit of a prior filed 
copending nonprovisional application or  international application designating 
the United States of America,  each prior application must name as an inventor 
at least one inventor  named in the later filed nonprovisional application and 
disclose the  named inventor's invention claimed in at least one claim of the 
later  filed nonprovisional application in the manner provided by the first  
paragraph of 35 U.S.C. 112. In addition, each prior application must  be:
    (i) Complete as set forth in Sec. 1.51(a)(1); or
    (ii) Entitled to a filing date as set forth in Sec. &gt;Sec. &lt;  
1.53(b)(1) &gt;or (b)(3)&lt; [, Sec. 1.60 or Sec. 1.62] and include the basic 
 filing fee set forth in Sec. 1.16; or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b)(1) and  have 
paid therein the processing and retention fee set forth in  Sec. 1.21(l) 
within the time period set forth in Sec. 1.53(d)(1). * * * * *
    26. Section 1.84 is proposed to be amended by revising paragraph  (b) as 
follows:

Sec. 1.84  Standards for drawings.

* * * * *
    (b) Photographs.
    (1) Black and white. Photographs are not ordinarily permitted in  utility 
[and design] applications. However, the Office will accept  photographs in 
utility [and design] applications only after &gt;the&lt;  granting of a 
petition filed under this paragraph which requests that  photographs be 
accepted. Any such petition must include the following:     (i) The 
appropriate fee set forth in Sec. 1.17(h); and     (ii) Three (3) sets of 
photographs. Photographs 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. 
[[Page 49851]]

    (2) 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.
* * * * *
    27. Section 1.91 is proposed to be revised to read as follows: 

Sec. 1.91  Models &gt;and exhibits&lt; not generally required as part of  
application or patent.

    Models &gt;and exhibits&lt; [were once required in all cases admitting a  
model, as a part of the application, and these models became a part of  the 
record of the patent. Such models are no longer generally required  (the 
description of the invention in the specification, and the  drawings, must be 
sufficiently full and complete, and capable of being  understood, to disclose 
the invention without the aid of a model), and]  will not be admitted unless 
specifically [called for.] &gt;required by the  Office. A model, working 
model, or other physical exhibit may be  required if deemed necessary for any 
purpose in examination of the  application.&lt;

Sec. 1.92  [Removed and reserved]

    28. Section 1.92 is proposed to be removed and reserved.     29. Section 
1.97 is proposed to be amended by revising paragraphs  (c) through (e) to read 
as follows:

Sec. 1.97  Filing of information disclosure statement.

* * * * *
    (c) An information disclosure statement shall be considered by the  Office 
if filed after the period specified in paragraph (b) of this  section, but 
before the mailing date of either:
    (1) A final action under Sec. 1.113&gt;;&lt; or
    (2) A notice of allowance under Sec. 1.311, whichever occurs first,  
provided the &gt;information disclosure&lt; statement is accompanied by  
either a [certification] &gt;statement&lt; as specified in paragraph (e) of  
this section or the fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the  Office 
if filed after the mailing date of either:
    &gt;(1) A&lt; [a] final action under Sec. 1.113&gt;;&lt; or     &gt;(2) 
A&lt; [a] notice of allowance under Sec. 1.311, whichever occurs  first, but 
before payment of the issue fee, provided the &gt;information  disclosure&lt; 
statement is accompanied by:
    [(1) &gt;(i)&lt; A [certification] &gt;statement&lt; as specified in 
paragraph  (e) of this section,
    [2] &gt;(ii)&lt; A petition requesting consideration of the information  
disclosure statement, and
    [3] &gt;(iii)&lt; The petition fee set forth in Sec. 1.17(i)(1).     (e) A 
[certification] &gt;statement&lt; under this section must state  either:
    (1) 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 &gt;information disclosure&lt; statement [,] &gt;;&lt;  or
    (2) 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 [or] &gt;and&lt;, to the  knowledge of the 
person signing the [certification] &gt;statement&lt; after  making reasonable 
inquiry, was known to any individual designated in  Sec. 1.56(c) more than 
three months prior to the filing of the  &gt;information disclosure&lt; 
statement.
* * * * *

Sec. 1.101  [Removed and reserved]

    30. Section 1.101 is proposed to be removed and reserved.     31. Section 
1.102 is proposed to be amended by revising paragraph  (a) to read as follows:

Sec. 1.102  Advancement of examination.

    (a) 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 [verified]  showing which, in the 
opinion of the Commissioner, will justify so  advancing it.
* * * * *
    32. Section 1.103 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and  
sufficient cause and for a reasonable time specified upon petition by  the 
applicant and, if such cause is not the fault of the Office, the  payment of 
the fee set forth in Sec. 1.17(i)(1). Action will not be  suspended when a 
&gt;reply&lt; [response] by the applicant to an Office  action is required.
* * * * *

Sec. 1.104  [Removed and reserved].

    33. Section 1.104 is proposed to be removed and reserved. 

Sec. 1.105  [Removed and reserved].

    34. Section 1.105 is proposed to be removed and reserved. 

Sec. 1.108  [Removed and reserved].

    35. Section 1.108 is proposed to be removed and reserved.     36. Section 
1.111 is proposed to be amended by revising paragraph  (b) to read as follows:

Sec. 1.111  Reply by applicant or patent owner. 
* * * * *
    (b) In order to be entitled to reconsideration or further  examination, 
the applicant or patent owner must [make request therefor  in writing] 
&gt;reply&lt;. The reply by the applicant or patent owner must  &gt;be reduced 
to a writing which&lt; distinctly and specifically [point]  &gt;points&lt; out 
the supposed errors in the examiner's action and must  [respond] &gt;reply&lt; 
to every ground of objection and rejection in the  prior Office action. 
&gt;The reply must present arguments pointing out the  specific distinctions 
believed to render the claims, including any  newly presented claims, 
patentable over the applied references.&lt; 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 
case 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.
* * * * *
    37. Section 1.112 is proposed to be revised to read as follows: 

Sec. 1.112  Reconsideration &gt;before final action&lt;.

    After [response] &gt;reply&lt; by applicant or patent owner (Sec. 1.111)  
&gt;to a non-final action&lt;, 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 
[respond] &gt;reply&lt; to such Office action in the same  manner provided in 
Sec. 1.111, with or without amendment. [Any  amendments after the second 
Office action must ordinarily be restricted  to the rejection or to the 
objections or requirements made. The  application or patent under

[[Page 49852]]

reexamination will be again considered, and so on repeatedly, unless  the 
examiner has indicated that the action is final.]
    38. Section 1.113 is proposed to be revised to read as follows: 

Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration  &gt;by 
the examiner&lt; the rejection or other action may be made final,  whereupon 
applicant's or patent owner's &gt;reply&lt; [response] is limited  to appeal 
in the case of rejection of any claim (Sec. 1.191), or to  amendment as 
specified in Sec. 1.116. Petition may be taken to the  Commissioner in the 
case of objections or requirements not involved in  the rejection of any claim 
(Sec. 1.181). &gt;Reply&lt; [Response] 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  &gt;reply&lt; [response] to a final 
rejection or action must comply with any  requirements or objections 
&gt;as&lt; to form.
    (b) In making such final rejection, the examiner shall repeat or  state 
all grounds of rejection then considered applicable to the claims  in the 
case, clearly stating the reasons &gt;in support thereof&lt;  [therefor].
    &gt;(c) The first action in an application will not be made final.&lt;    
 39. Section 1.115 is proposed to be revised to read as follows: 

Sec. 1.115  Amendment.

    [The applicant may amend before or after the first examination and  action 
and also after the second or subsequent examination or  reconsideration as 
specified in 1.112 or when and as specifically  required by the examiner. The 
patent owner may amend in accordance with  1.510(e) and 1.530(b) prior to 
reexamination and during reexamination  proceedings in accordance with 1.112 
and 1.116.]
    &gt;(a) The applicant or the patent owner may amend the disclosure  (e.g., 
specification, claims, drawings and abstract) of an application  before final 
action as indicated in Sec. 1.121, except for  nonprovisional applications 
which are subject to Sec. 1.53(b)(2). The  patent owner may amend the patent 
in a reexamination proceeding in  accordance with Sec. Sec. 1.510(e) and 
1.530(d).
    (b)(1) No amendment shall introduce new matter into the disclosure  of an 
application.
    (2) If it is determined that an amendment filed after the filing  date of 
the application introduces new matter into the disclosure, the  claims 
containing the new matter will be rejected and deletion of the  new matter in 
the description and drawings will be required.     (c) Claims may be amended 
by canceling particular claims, by  presenting new claims, or by rewriting 
particular claims as indicated  in Sec. 1.121(b). If an amendment is in reply 
to an Office action note  Sec. 1.111.
    (d) The disclosure must be amended when required to correct  inaccuracies 
of description and definition, and to secure  correspondence between the 
claims, the specification, and the drawing.     (e) No amendment to the 
drawing may be made except with permission  of the Office. Permissible changes 
in the construction shown in any  drawing may be made only by the submission 
of a substitute drawing by  applicant. 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.
    (f) To amend a clause that was previously amended, the clause  should be 
wholly rewritten so that no interlineations or deletions  shall appear in the 
clause as finally presented. Matter canceled by  amendment can be reinstated 
only by a subsequent amendment presenting  the canceled matter as a new 
insertion.&lt;
    40. Section 1.116 is proposed to be amended by revising paragraphs  (a) 
and (b) to read as follows:

Sec. 1.116   Amendments after final action.

    (a) After &gt;a&lt; final rejection or &gt;other final&lt; action (Sec. 
1.113)  &gt;,&lt; amendments &gt;are limited to&lt; [may be made] cancelling 
claims or  complying with any requirement of form &gt;expressly set forth in a 
 previous Office action.&lt; [which has been made. 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 &gt;related&lt; proceedings [relative thereto],  shall 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 Sec. 
1.135.
    (b) &gt;Any amendment not in compliance with paragraph (a) of this  
section must be submitted with a request for an application under  Sec. 
1.53(b)(3) to ensure its consideration.&lt; [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.]
* * * * *

Sec. 1.117   [Removed and reserved]

    41. Section 1.117 is proposed to be removed and reserved 

Sec. 1.118   [Removed and reserved]

    42. Section 1.118 is proposed to be removed and reserved 

Sec. 1.119   [Removed and reserved]

    43. Section 1.119 is proposed to be removed and reserved     44. Section 
1.121 is proposed to be revised to read as follows: 

Sec. 1.121   Manner of making amendments.

    [(a) Erasures, additions, insertions, or alterations of the Office  file 
of papers and records must not be physically entered by the  applicant. 
Amendments to the application (excluding the claims) are  made by filing a 
paper (which should conform to Sec. 1.52) directing or  requesting that 
specified amendments be made. The exact word or words  to be stricken out or 
inserted by said amendment must be specified and  the precise point indicated 
where the deletion or insertion is to be  made.
    (b) Except as otherwise provided herein, a particular claim may be  
amended only by directions to cancel or by rewriting such claim with  
underlining below the word or words added and brackets around the word  or 
words deleted. The rewriting of a claim in this form will be  construed as 
directing the cancellation of the original claim; however,  the original claim 
number followed by the parenthetical word must be  used for the rewritten 
claim. If a previously rewritten claim is  rewritten, underlining and 
bracketing will be applied in reference to  the previously rewritten claim 
with the parenthetical expression  ``twice amended,'' ``three times amended,'' 
etc., following the  original claim number.
    (c) A particular claim may be amended in the manner indicated for  the 
application in paragraph (a) of this section to the extent of  corrections in 
spelling, punctuation, and typographical errors.  Additional amendments in 
this manner will be admitted provided the  changes are limited to (1) 
deletions and/or (2) the addition of no more  than five words in any one 
claim. Any amendment submitted with  instructions to amend particular claims 
but failing to conform to the  provisions of paragraphs (b) and (c) of this 
section may be considered  nonresponsive and treated accordingly.
    (d) Where underlining or brackets are intended to appear in the  printed 
patent

[[Page 49853]]

or are properly part of the claimed material and not intended as  symbolic of 
changes in the particular claim, amendment by rewriting in  accordance with 
paragraph (b) of this section shall be prohibited.     (e) In reissue 
applications, both the descriptive portion and the  claims are to be amended 
by either (1) submitting a copy of a portion  of the description or an entire 
claim with all matter to be deleted  from the patent being placed between 
brackets and all matter to be  added to the patent being underlined, or (2) 
indicating the exact word  or words to be stricken out or inserted and the 
precise point where the  deletion or insertion is to be made. Any word or 
words to be inserted  must be underlined. See 1.173.
    (f) Proposed amendments presented in patents involved in  reexamination 
proceedings must be presented in the form of a full copy  of the text of: (1) 
Each claim which is amended and (2) each paragraph  of the description which 
is amended. Matter deleted from the patent  shall be placed between brackets 
and matter added shall be underlined.  Copies of the printed claims from the 
patent may be used with any  additions being indicated by carets and deleted 
material being placed  between brackets. Claims must not be renumbered and the 
numbering of  the claims added for reexamination must follow the number of the 
 highest numbered patent claim. No amendment may enlarge the scope of  the 
claims of the patent. No new matter may be introduced into the  patent.]
    &gt;(a) Amendments in non-reissue applications: Amendments in  
applications excluding reissue applications are made by filing a paper,  in 
compliance with Sec. 1.52, directing that specified amendments be  made.
    (1) Specification other than claims: Amendments to the  specification 
other than claims may only be made as follows:     (i) The precise point in 
the specification must be indicated where  an amendment is to be made.
    (ii) If the only changes to the specification are deletions,  amendments 
may only be made by precise directions to delete.     (iii) Except as provided 
by paragraph (a)(1)(ii) of this section,  amendments must be made by 
submission of a copy of the rewritten  sentence(s), paragraph(s) and/or 
page(s) with marking pursuant to  paragraph (a)(1)(iv) of this section.
    (iv) Underlining below the subject matter added and brackets around  the 
subject matter deleted are to be used to mark the amendments being  made. If a 
previously rewritten sentence(s), paragraph(s) or page(s) is  again rewritten, 
marking will be applied in reference to the  sentence(s), paragraph(s) or 
page(s) as previously rewritten.     (2) Claims: Amendments to the claims may 
only be made as follows:     (i)(A) A claim may be cancelled by a direction to 
cancel the claim  or by omitting the claim when submitting a complete copy of 
all pending  claims as required by (a)(2)(ii) of this section.
    (B) A previously submitted claim may only be amended, other than by  
cancellation pursuant to paragraph (a)(2)(i)(A) of this section, by  
submitting a copy of the claim completely rewritten with markings,  pursuant 
to paragraph (a)(2)(iii) of this section, of the subject  matter added and/or 
deleted. The rewriting of a claim in this form will  be construed as directing 
that the rewritten claim be a replacement for  the previously submitted claim; 
however, the previously submitted claim  number followed by the parenthetical 
word ``amended'' must be used for  the rewritten claim.
    (C) A new claim may only be added by submitting a clean copy of the  new 
claim. The numbering of any new claims added must follow the number  of the 
highest numbered previously submitted claim.
    (ii) Whenever a previously submitted claim is amended by rewriting  
pursuant to paragraph (a)(2)(i)(B) of this section or a new claim is  added 
pursuant to paragraph (a)(2)(i)(C) of this section, applicant  must submit a 
separate complete copy of all pending claims. Such  separate complete copy 
must include all newly rewritten, all newly  added, all previously rewritten 
claims that are still pending, and any  unamended claims that are still 
pending. For all claims, other than  those claims being newly rewritten, the 
copy must be submitted in clean  form without markings as to previous 
amendments.
    (iii) Underlining below the subject matter added and brackets  around the 
subject matter deleted relative to the previously submitted  claim are to be 
used to mark the amendments being made. If a previously  rewritten claim is 
again rewritten, marking will be applied in  reference to the claim as 
previously rewritten, and the parenthetical  expression will be ``twice 
amended,'' ``three times amended,'' etc.,  following the original claim 
number.
    (iv) The failure to include a copy of any previously submitted  claim with 
the separate complete copy of all pending claims required by  paragraph 
(a)(2)(ii) of this section will be construed as a direction  to cancel that 
claim.
    (3) 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 Sec. 1.84.
    (4) Any amendment to an application that is present in a substitute  
specification submitted pursuant to Sec. 1.125 must be presented under  the 
provisions of Sec. 1.121(a)(1) either prior to or concurrent with  submission 
of the substitute specification.
    (b) Amendments in reissue applications: Amendments in reissue  
applications are made by filing a paper, in compliance with Sec. 1.52,  
directing that specified amendments be made.
    (1) Specification other than claims: Amendments to the  specification 
other than claims may only be made as follows:     (i) The precise point in 
the specification must be indicated where  an amendment is to be made.
    (ii) Amendments must be made by submission of the entire text of  the 
rewritten paragraph(s) with markings pursuant to paragraph  (b)(1)(iv) of this 
section.
    (iii) Each submission of an amendment to the specification must  include 
all amendments to the specification relative to the patent as  of the date of 
the submission. This would include amendments to the  specification of the 
patent submitted for the first time as well as any  previously submitted 
amendments that are still desired. Any previously  submitted amendments to the 
specification that are no longer desired  must not be included in the 
submission.
    (iv) 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.
    (2) Claims: Amendments to the claims are made as follows:     (i)(A) The 
amendment must include the entire text of each patent  claim which is amended 
and of each added claim with marking pursuant to  paragraph (b)(2)(i)(C), of 
this section except a patent claim should be  cancelled by a statement 
cancelling the patent claim without  presentation of the text of the patent 
claim.     (B) 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.
    (C) 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

[[Page 49854]]

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.     (ii) Each 
amendment submission must set forth the status, as of the  date of the 
amendment, of all patent claims and of all added claims.     (iii) 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.
    (iv) Each submission of an amendment to any claim (patent claims  and all 
added claims) must include all pending amendments to the claims  as of the 
date of the submission. This would include amendments to the  claims submitted 
for the first time as well as any previously submitted  amendments to the 
claims that are still desired. Any previously  submitted amendments to the 
claims that are no longer desired must not  be included in the submission. A 
copy of any patent claims that have  not been amended are not to be presented 
with each amendment  submission.
    (v) The failure to submit a copy of any added claim, as required by  
paragraph (b)(2)(iv) of this section, will be construed as a direction  to 
cancel that claim.
    (vi) 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 U.S.C. 251. No  amendment to the patent 
claims may introduce new matter or be made in  an expired patent.
    (3) 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 Sec. 1.84.
    (c) Amendments in reexamination proceedings: Any proposed amendment  to 
the description and claims in patents involved in reexamination  proceedings 
must be made in accordance with Sec. 1.530.&lt; 

Sec. 1.122  [Removed and reserved]

    45. Section 1.122 is proposed to be removed and reserved. 

Sec. 1.123  [Removed and reserved]

    46. Section 1.123 is proposed to be removed and reserved. 

Sec. 1.124  [Removed and reserved]

    47. Section 1.124 is proposed to be removed and reserved. 

Sec. 1.125  Substitute specification.

    48. Section 1.125 is proposed to be revised as follows:     &gt;(a)&lt; If 
the number or nature of the amendments &gt; or the legibility  of the 
specification&lt; [shall] render it difficult to [consider the  case, or to 
arrange the papers for printing or copying] &gt;process an  application&lt;, 
the Office may require the entire specification,  including the claims, or any 
part thereof, to be rewritten in clean  form incorporating all amendments.
    &gt;(b)&lt; A substitute specification for an application other than a  
reissue application may [not be accepted unless it has been required by  the 
examiner or unless it is clear to the examiner that acceptance of a  
substitute specification would facilitate processing of the  application. Any 
substitute specification] &gt;be&lt; filed [must be] &gt;at any  point up to 
payment of the issue fee if it is&lt; accompanied by a  statement that the 
substitute specification&gt;:
    (1)&lt; includes no new matter &gt;, and
    (2) includes only amendments submitted in accordance with the  
requirements of Sec. 1.121(a) either prior to or concurrent with  submission 
of the substitute specification&lt;. [Such statement must be a  verified 
statement if made by a person not registered to practice  before the Office.].
    &gt;(c) A substitute specification submitted under this section must  be 
submitted in clean form without markings as to amended material.     (d) A 
substitute specification under this section is not permitted  in reissue 
applications or in reexamination proceedings.&lt;     49. Section 1.133 is 
proposed to be amended by revising paragraph  (b) to read as follows:

Sec. 1.133  Interviews.

* * * * *
    (b) 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 &gt;reply&lt; 
[response] to Office actions as specified in Sec. 1.111,  Sec. 1.135.
    50. The undesignated center heading in Subpart B-National  processing 
Provisions, following Sec. 1.133 is proposed to be revised  to read as 
follows:

Time for &gt;Reply&lt; [Response] by Applicant; Abandonment of Application 
    51. Section 1.134 is proposed to be revised as follows: 

Sec. 1.134  Time period for &gt;reply&lt; [response] to an Office action. 
    An Office action will notify the applicant of any non-statutory or  
shortened statutory time period set for &gt;reply&lt; [response] to an Office 
 action. Unless the applicant is notified in writing that [response] &gt;a  
reply&lt; is required in less than six months, a maximum period of six  months 
is allowed.
    52. Section 1.135 is proposed to be revised to read as follows: 

Sec. 1.135  Abandonment for failure to &gt;reply&lt; [respond] within time  
period.

    (a) If an applicant of a patent application fails to &gt;reply&lt;  
[respond] within the time period provided under Sec. 1.134 and  Sec. 1.136, 
the application will become abandoned unless an Office  action indicates 
otherwise.
    (b) Prosecution of an application to save it from abandonment  pursuant to 
paragraph (a) of this section must include such complete  and proper action as 
the condition of the case may require. The  admission of &gt;, or refusal to 
admit, any amendment after final  rejection, and any related proceedings,&lt; 
an amendment not responsive to  the last Office action, or refusal to admit 
the same, and any  proceedings relative thereto, shall not operate to save the 
application  from abandonment.
    (c) When action by the applicant is a bona fide attempt to &gt;reply&lt;  
[respond] and to advance the case to final action, and is substantially  a 
complete [response] &gt;reply&lt; to the &gt;non-final&lt; Office action, but 
 consideration of some matter or compliance with some requirement has  been 
inadvertently omitted, &gt;applicant&lt; [opportunity to explain and  supply 
the omission] may be given &gt;a new time period for reply under  Sec. 1.134 
to supply the omission or to file a continuing application&lt;  [before the 
question of abandonment is considered].
    53. Section 1.136 is proposed to be amended by revising the heading  and 
paragraph (a) to read as follows:

Sec. 1.136  Filing of timely &gt;replies&lt; [responses] with petition and  
fee for extension of time and extensions of time for cause. 
    (a)(1) If an applicant is required to &gt;reply&lt; [respond] within a  
nonstatutory or shortened statutory time period, applicant may &gt;reply&lt;  
[respond] up to [four] &gt;five&lt; months after the time

[[Page 49855]]

period set &gt;and within the statutory period, if applicable,&lt; if a  
petition for an extension of time and the fee set in Sec. 1.17&gt;(a)&lt; are 
 filed [prior to or with the response], unless:
    (i) Applicant is notified otherwise in an Office action,     (ii) The 
&gt;reply&lt; [response] is a reply brief submitted pursuant to  Sec. 
1.193(b),
    (iii) The &gt;reply&lt; [response] is a request for an oral hearing  
submitted pursuant to Sec. 1.194(b),
    (iv) The &gt;reply&lt; [response] is to a decision by the Board of Patent 
 Appeals and Interferences pursuant to Sec. 1.196, Sec. 1.197 or  Sec. 1.304, 
or
    (v) The application is involved in an interference declared  pursuant to 
Sec. 1.611.
    (2) The date on which the [response, the] petition [,] and the fee  have 
been filed is the date [of the response and also 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. &gt;A reply must be filed prior to the  expiration of the period of 
extension to avoid abandonment of the  application (Sec. 1.135), but in&lt; 
[In] no case may an applicant &gt;reply&lt;  [respond] 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 Sec. 1.136(b) for  extensions of time relating to proceedings 
pursuant to Secs. 1.193(b),  1.194, 1.196 or 1.197. See Sec. 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. See Sec. 1.550(c) for extension of 
time in reexamination  proceedings and Sec. 1.645 for extension of time in 
interference  proceedings.
    &gt;(3) A paper may be submitted in an application with an  authorization 
to treat any concurrent or future reply requiring a  petition for an extension 
of time under paragraph (a) of this section  for its timely submission as 
incorporating such petition for the  appropriate length of time. An 
authorization to charge all required  fees, fees under Sec. 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 paragraph (a) of this section for its 
timely submission.&lt; * * * * *
    54. Section 1.137 is proposed to be revised to read as follows: 

Sec. 1.137  Revival of abandoned application &gt;or lapsed patent&lt;. 
    (a) An &gt;abandoned&lt; application [abandoned for failure to prosecute] 
 may be revived as a pending application &gt;or a lapsed patent may be  
revived as a patent&lt; if it is shown to the satisfaction of the  
Commissioner that the delay &gt;in prosecution or payment of any portion  of 
the required issue fee&lt; was unavoidable. A petition to revive an  
&gt;unavoidably&lt; abandoned application &gt;or unavoidably lapsed patent&lt; 
must  be [promptly filed after the applicant is notified of, or otherwise  
becomes aware of, the abandonment, and must be] accompanied by:     [(1) A 
proposed response to continue prosecution of that  application, or the filing 
of a continuing application, unless either  has been previously filed;]
    &gt;(1) The required reply, unless previously filed. In a  nonprovisional 
application abandoned for failure to prosecute, the  proposed reply 
requirement may be met by the filing of a continuing  application. In an 
abandoned application or a lapsed patent, for  failure to pay any portion of 
the required issue fee, the proposed  reply must be the issue fee or any 
outstanding balance thereof;&lt;     (2) The petition fee as set forth in Sec. 
1.17(l); [and]     (3) A showing that the delay was unavoidable &gt;and that 
the petition  was promptly filed after the applicant was notified of, or 
otherwise  became aware of, the abandonment or lapse; and&lt; [The showing 
must be a  verified showing if made by a person not registered to practice 
before  the Patent and Trademark Office.]     &gt;(4) Any terminal disclaimer 
(and fee as set forth in Sec. 1.20(d))  required pursuant to paragraph (c) of 
this section.&lt;
    (b) An &gt;abandoned&lt; application [unintentionally abandoned for  
failure to prosecute] may be revived as a pending application &gt;or  lapsed 
patent may be revived as a patent&lt; if the delay &gt;in prosecution  or 
payment of any portion of the required issue fee&lt; was unintentional.  A 
petition to revive an unintentionally abandoned application &gt;or  lapsed 
patent&lt; must be &gt;accompanied by&lt;:     &gt;(1) The required reply, 
unless previously filed. In a  nonprovisional application abandoned for 
failure to prosecute, the  proposed reply requirement may be met by the filing 
of a continuing  application. In an abandoned application or a lapsed patent, 
for  failure to pay any portion of the required issue fee, the proposed  reply 
must be the issue fee or any outstanding balance thereof;&lt;     [(1) 
Accompanied by a proposed response to continue prosecution of  that 
application, or filing of a continuing application, unless either  has been 
previously filed;]
    (2) [Accompanied by the] The petition fee as set forth in  Sec. 1.17(m);
    (3) [Accompanied by a] A statement that the delay was  unintentional. [The 
statement must be a verified statement if made by a  person not registered to 
practice before the Patent and Trademark  Office.] The Commissioner may 
require additional information where  there is a question whether the delay 
was unintentional; and     (4) &gt;Any terminal disclaimer (and fee as set 
forth in Sec. 1.20(d))  required pursuant to paragraph (c) of this 
section.&lt; [Filed either:     (i) Within one year of the date on which the 
application became  abandoned; or
    (ii) Within three months of the date of the first decision on a  petition 
to revive under paragraph (a) of this section which was filed  within one year 
of the date on which the application became abandoned.]     (c) &gt;In all 
design applications and in all nonprovisional utility  or plant applications 
filed before June 8, 1995&lt; [In all applications  filed before June 8, 1995, 
and all design applications filed on or  after June 8, 1995], any petition 
pursuant to [paragraph (a) of] this  section [not filed within six months of 
the date of abandonment of the  application,] must be accompanied by a 
terminal disclaimer with fee  under Sec. 1.321 dedicating to the public a 
terminal part of the term  of any patent granted thereon equivalent to the 
period of abandonment  of the application. The terminal disclaimer must also 
apply to any  patent granted on any continuing application entitled under 35 
U.S.C.  120 to the benefit of the filing date of the application for which  
revival is sought.
    (d) Any request for reconsideration or review of a decision  refusing to 
revive an &gt;abandoned&lt; application &gt;or lapsed patent&lt; upon  
petition filed pursuant to paragraphs (a) or (b) of this section, to be  
considered timely, must be filed within two months of the decision  refusing 
to revive or within such time as set in the decision.     (e) The time periods 
set forth in this section [cannot be extended,  except that the three-month 
period set forth in paragraph (b)(4)(ii)  and the time period set forth in 
paragraph (d) of this section] may be  extended under the provisions of Sec. 
1.136.
    &gt;(f) A provisional application, abandoned for failure to timely  reply 
to an Office requirement, may be revived pursuant to paragraphs  (a) or (b) 
this

[[Page 49856]]

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.&lt;

Sec. 1.139   [Removed and reserved]

    55. Section 1.139 is proposed to be removed and reserved.     56. Section 
1.142 is proposed to be amended by revising paragraph  (a) to read as follows:

Sec. 1.142   Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed  in a 
single application, the examiner in [his] &gt;an Office&lt; action shall  
require the applicant in [his] &gt;a reply&lt; [response] to that action to  
elect [that] &gt;an&lt; invention to which [his] &gt;the&lt; [claim] 
&gt;claims&lt; shall  be restricted, this official action being called a 
requirement for  restriction (also known as a requirement for division). [If 
the  distinctness and independence of the inventions be clear, such] 
&gt;Such&lt;  requirement will &gt;normally&lt; be made before any action on 
the merits;  however, it may be made at any time before final action [in the 
case at  the discretion of the examiner].
* * * * *
    57. Section 1.144 is proposed to be revised to read as follows: 

Sec. 1.144   Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in  addition to 
making any &gt;reply&lt; [response] 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.
    58. Section 1.146 is proposed to be revised to read as follows: 

Sec. 1.146   Election of species.

    In the first action on an application containing a [generic] claim  &gt;to 
a generic invention (genus)&lt; and claims [restricted separately to  each of] 
&gt;to&lt; more than one &gt;patentably distinct&lt; species embraced  
thereby, the examiner may require the applicant in his &gt;or her reply&lt;  
[response] to that action to elect [that] &gt;a&lt; species of his or her  
invention to which his or her claim shall be restricted if no [generic]  claim 
&gt;to the genus&lt; is [held] &gt;found to be&lt; 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 case.
    59. Section 1.152 is proposed to be revised to read as follows: 

Sec. 1.152   Design drawings.

    The design must be represented by a drawing that complies with the  
requirements of Sec. 1.84, and must contain a sufficient number of  views to 
constitute a complete disclosure of the appearance of the  [article] 
&gt;design&lt;. Appropriate &gt;and adequate&lt; surface shading [must]  
&gt;should&lt; be used to show the character or contour of the surfaces  
represented. Solid black surface shading is not permitted except when  used to 
represent &gt;the color black as well as&lt; 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. &gt;Color 
photographs and color drawings will be  permitted in design applications only 
after the granting of a petition  filed under Sec. 1.84(a)(2).&lt; Photographs 
and ink drawings must not be  combined &gt;as formal drawings&lt; in one 
application. Photographs submitted  in lieu of ink drawings in design patent 
applications must comply with  Sec. 1.84(b) and must not disclose 
environmental structure but must be  limited to the design for the article 
claimed. [Color drawings and  color photographs are not permitted in design 
patent applications.]     60. Section 1.154 is proposed to be amended by 
revising paragraph  (a) as follows:

Sec. 1.154   Arrangement of specification.

* * * * *
    (a) Preamble, stating name of the applicant&gt;,&lt; [and] title of the  
designn&gt;, and a brief description of the nature and intended use of the  
article in which the design is embodied&lt;.
* * * * *
    61. Section 1.155 is proposed to be amended by removing paragraphs  (b) 
through (f).

Sec. 1.155   Issue and term of design patents.

* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].
    62. Section 1.163 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.163   Specification.

* * * * *
    (b) Two copies of the specification (including the claim) must be  
submitted, but only one signed oath or declaration is required. [The  second 
copy of the specification may be a legible carbon copy of the  original.]
    63. Section 1.165 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.165   Plant drawings.

    (a) Plant patent drawings [should be artistically and competently  
executed and] must comply with the requirements of Sec. 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. * * * * *
    64. Section 1.167(b) is proposed to be removed and reserved. 

Sec. 1.167   Examination.

* * * * *
    (b) [Reserved].
    65. Section 1.171 is proposed to be revised to read as follows: 

Sec. 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. [The application 
must be accompanied by a certified copy  of an abstract of title or an order 
for a title report accompanied by  the fee set forth in Sec. 1.19(b)(4), to be 
placed in the file, and by  an offer to surrender the original patent (Sec. 
1.178).]     66. Section 1.172 is proposed to be amended by revising paragraph 
 (a) to read as follows:

Sec. 1.172   Applicants, assignees.

    (a) A reissue oath must be signed and sworn to or declaration made  by the 
inventor or inventors except as otherwise provided (see  Secs. 1.42, 1.43, 
1.47), and must be accompanied by the written  [assent] &gt;consent&lt; 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. &gt;All assignees consenting to the reissue 
must  establish their ownership interest in the patent to the satisfaction of 
 the Commissioner. Ownership is

[[Page 49857]]

established by submitting to the Office documentary evidence of a chain  of 
title from the original owner to the assignee or by specifying  (e.g., reel 
and frame number, etc.) where such evidence is recorded in  the Office. 
Documents submitted to establish ownership may be required  to be 
recorded.&lt;
* * * * *
    67. Section 1.175 is proposed to be revised to read as follows: 

Sec. 1.175   Reissue oath or declaration.

    (a) [Applicants for reissue,] &gt;The reissue oath or declaration&lt; in  
addition to complying with the requirements of Sec. 1.63, must also  [file 
with their applications] &gt;include&lt; [a statement] &gt;statement(s)&lt;  
[under oath or declaration] as follows:
    (1) [When] &gt;That&lt; the applicant [verily] believes the original  
patent to be wholly or partly inoperative or invalid [, stating such  belief 
and the reasons why.
    (2) When it is claimed that such patent is so inoperative or  invalid ``] 
by reason of a defective specification or drawing, [``  particularly 
specifying such defects.
    (3) When it is claimed that such patent is inoperative or invalid  ``] 
&gt;or&lt; by reason of the patentee claiming more or less than [he]  
&gt;patentee&lt; had the right to claim in the patent, ['' distinctly  
specifying the excess or insufficiency in the claims.] &gt;and&lt;     [(4)] 
[Reserved]
    [(5) Particularly] &gt;(2) stating&lt; [specifying at least one error  
relied upon, and how they arose or occurred] &gt;that all errors being  
corrected in the reissue application up to the time of filing of the  oath or 
declaration under this paragraph arose without deceptive  intention on the 
part of the applicant&lt;.
    [(6)] &gt;(b)(1) For any error corrected not covered by the oath or  
declaration submitted under paragraph (a) of this section, applicant  must 
submit a supplemental oath or declaration&lt; [Stating] &gt;stating&lt;  
that&gt; every such error&lt; [said errors] arose [``] without any deceptive  
intention [''] on the part of the applicant. &gt;Any supplemental oath or  
declaration required by this paragraph must be submitted before  allowance and 
may be submitted:
    (i) With any amendment prior to allowance, or
    (ii) In order to overcome a rejection under 35 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.
    (2) 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.
    (c) Other than as set forth in paragraphs (a)(2) and (b) of this  section, 
an oath or declaration under this section need not  specifically identify the 
error or errors that are being corrected.&lt;     [(7) Acknowledging the duty 
to disclose to the Office all  information known to applicants to be material 
to patentability as  defined in Sec. 1.56.
    (b) Corroborating affidavits or declarations of others may be filed  and 
the examiner may, in any case, require additional information or  affidavits 
or declarations concerning the application for reissue and  its object.]
    &gt;(d) The oath or declaration required by paragraph (a) of this  section 
may be submitted under the provisions of Sec. 1.53(d)(1).&lt;     68. Section 
1.176 is proposed to be revised to read as follows: 

Sec. 1.176   Examination of reissue.

    [An original claim, if re-presented in the reissue application, is  
subject to reexamination, and the] &gt;The&lt; entire &gt;reissue&lt; 
application  will be examined in the same manner as original applications, 
subject  to the rules relating thereto, excepting that division will not be  
required &gt;between the original claims of the patent&lt;. Applications for  
reissue will be acted on by the examiner in advance of other  applications, 
but not sooner than two months after the announcement of  the filing of the 
reissue application has appeared in the Official  Gazette.
    69. Section 1.177 is proposed to be revised to read as follows: 

Sec. 1.177   &gt;Multiple reissue applications&lt; [Reissue in divisions]. 
    &gt;(a)&lt; The Commissioner [may] &gt;will pursuant to&lt; [, in] his or 
her  discretion, &gt;under 35 U.S.C. 251,&lt; [cause several] &gt;permit 
multiple  reissue&lt; patents to be issued for distinct and separate parts of 
the  thing patented[,upon] &gt;if the following conditions are met:     (1) 
Copending reissue applications for distinct and separate parts  of the thing 
patented have been filed,
    (2) Applicant has filed in each copending application a timely&lt;  demand 
[of the applicant] &gt;by way of petition for multiple reissue  patents,
    (3)&lt; [upon payment of the] &gt;The&lt; required &gt;filing and 
issue&lt;  [fee]&gt;fees&lt; for each [division] &gt;copending reissue 
application have  been paid, and
    (4) Each petition for multiple reissue patents is granted prior to  
issuance of a reissue patent on any of the copending reissue  applications.
    (b) Each petition under paragraph (a) of this section must be  accompanied 
by:
    (1) A request for the issuance of multiple reissue patents for  distinct 
and separate parts of the thing patented,
    (2) The petition fee pursuant to Sec. 1.17(i),
    (3) An identification of the other copending reissue 
application(s),
    (4) A statement that the inventions as claimed in the copending  reissue 
applications are distinct and separate parts of the thing  patented, and
    (5) A showing sufficient to establish to the satisfaction of the  
Commissioner that the claimed subject matter of the thing patented is  in fact 
being divided into distinct and separate parts&lt;. [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 Secs. 
1.83 and 1.84.]
    &gt;(c) When the copending reissue applications are filed at the same  
time, each petition under paragraph (a) of this section, must be filed  no 
later than the earliest submission of the reissue oath or  declaration under 
Sec. 1.175(a) for any of the copending reissue  applications. When the 
copending reissue applications are filed at  different times, each petition 
under paragraph (a) of this section must  be filed no later than the earliest 
of:
    (1) Payment of the issue fee for any of the copending reissue  
applications, or
    (2) Submission of the reissue oath or declaration under  Sec. 1.175(a) in 
the later filed copending reissue application.&lt; [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 Sec. 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].
    &gt;(d) Where the requirements of this section have not been complied  
with, the Commissioner will not permit multiple reissue patents to be  
issued.&lt;
    70. Section 1.181 is proposed to be amended by removing paragraphs  (d), 
(e) and (g).

Sec. 1.181   Petition to the Commissioner.

* * * * *
    (d) [Removed].
    (e) [Removed].
* * * * *
    (g) [Removed].
    71. Section 1.182 is proposed to be revised to read as follows: 
[[Page 49858]]

Sec. 1.182   Questions not specifically provided for.

    All cases not specifically provided for in the regulations of this  part 
will be decided in accordance with the merits of each case by or  under the 
authority of the Commissioner, &gt;subject to such other  requirements as may 
be imposed&lt; [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  Sec. 1.17(h).

Sec. 1.184   [Removed and reserved]

    72. Section 1.184 is proposed to be removed and reserved.     73. Section 
1.191 is proposed to be amended by revising paragraphs  (a) and (b) to read as 
follows:

Sec. 1.191   Appeal to Board of Patent Appeals and Interferences. 
    (a) Every applicant for a patent or for reissue of a patent, or  every 
owner of a patent under reexamination[, any of] &gt;whose claims  have&lt; 
[the claims of which have] been twice rejected &gt;in a particular  
application or patent under reexamination&lt; [or who has been given a  final 
rejection (Sec. 1.113)], may &gt;file an&lt; [, upon the payment of the  fee 
set forth in Sec. 1.17(e),] appeal from the decision of the  examiner to the 
Board of Patent Appeals and Interferences &gt;by filing a  notice of appeal 
and paying the fee set forth in Sec. 1.17(e)&lt; within  the time allowed for 
&gt;reply&lt; [response].
    (b) The &gt;notice of&lt; appeal in an application or reexamination  
proceeding must identify the rejected claim or claims appealed, and  must be 
signed by the applicant, patent owner or duly authorized  attorney or agent.
* * * * *
    74. Section 1.192 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.192   Appellant's brief.

    (a) &gt;Appellant&lt; [The appellant] shall, within [2] &gt;two&lt; months 
from  the date of the notice of appeal under Sec. 1.191 in an application,  
reissue application, or patent under reexamination, or within the time  
allowed for &gt;reply&lt; [response] to the action appealed from, if such  
time is later, file a brief in triplicate. The brief must be  accompanied by 
the requisite fee set forth in Sec. 1.17(f) and must set  forth the 
authorities and arguments on which the appellant will rely to  maintain the 
appeal. Any arguments or authorities not included in the  brief may be refused 
consideration by the Board of Patent Appeals and  Interferences.
* * * * *
    75. Section 1.193 is proposed to be revised to read as follows: 

Sec. 1.193   Examiner's answer &gt;and substitute brief&lt;. 
    (a)&gt;(1)&lt; The primary examiner may, within such time as may be  
directed by the Commissioner, furnish a written statement in answer to  [the] 
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 [the] appellant. If the primary examiner  shall find that the appeal is not 
regular in form or does not relate to  an appealable action, [he] &gt;the 
primary examiner&lt; shall so state [and a  petition from such decision may be 
taken to the Commissioner as  provided in Sec. 1.181].
    &gt;(a)(2) An examiner's answer may not include a new ground of  
rejection.&lt;
    (b)&gt;(1) Appellant&lt; [The appellant] may file a [reply] &gt;substitute 
 appeal&lt; brief [directed only to such new points of argument as may be  
raised in the] &gt;under Sec. 1.192 to an&lt; examiner's answer, within two  
months from the date of [such answer] &gt;the examiner's answer.&lt; [The new 
 points or argument shall be specifically identified in the reply brief.  If 
the examiner determines that the reply brief is not directed only to  new 
points of argument raised in the examiner's answer, the examiner  may refuse 
entry of the reply brief and will so notify the appellant.  If the examiner's 
answer expressly states that it includes a new ground  of rejection, appellant 
must file a reply thereto within two months  from the date of such answer to 
avoid dismissal of the appeal as to the  claims subject to the new ground of 
rejection; such reply may be  accompanied by any amendment or material 
appropriate to then new  ground.] See Sec. 1.136(b) for extensions of time for 
filing a [reply]  &gt;substitute&lt; brief in a patent application and Sec. 
1.550(c) for  extensions of time in a reexamination proceeding. &gt;The 
primary examiner  may either acknowledge receipt and entry of the substitute 
appeal brief  or reopen prosecution to respond to any new issues raised in the 
 substitute appeal brief. A substitute examiner's answer is not  permitted, 
except where the application has been remanded by the Board  of Patent Appeals 
and Interferences for such purpose.&lt;     &gt;(2) Where prosecution is 
reopened by the primary examiner after an  appeal brief has been filed, an 
appeal brief under Sec. 1.192 is an  appropriate reply by an applicant to the 
reopening of prosecution if it  is accompanied by a request that the appeal be 
reinstated. If  reinstatement of the appeal is elected, no amendments, 
affidavits  (Secs. 1.131 or 1.132) or other new evidence are permitted. If  
reinstatement of the appeal is not elected, amendments, affidavits and  other 
new evidence are permitted.&lt;
    76. Section 1.194 is proposed to be revised to read as follows: 

Sec. 1.194  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances  in 
which [the] appellant considers such a hearing necessary or  desirable for a 
proper presentation of [his] &gt;the&lt; 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.
    (b) If appellant desires an oral hearing, appellant must file&gt;, in  a 
separate paper,&lt; a written request for such hearing accompanied by  the fee 
set forth in Sec. 1.17(g) within two months after the date of  the examiner's 
answer. If appellant requests an oral hearing and  submits therewith the fee 
set forth in Sec. 1.17(g), 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  Sec. 1.136(b) for extensions of time for 
requesting an oral hearing in  a patent application and Sec. 1.550(c) for 
extensions of time in a  reexamination proceeding.
    (c) If no request and fee for oral hearing have been timely filed  by 
[the] appellant, the appeal will be assigned for consideration and  decision. 
If [the] appellant has requested an oral hearing and has  submitted the fee 
set forth in Sec. 1.17(g), a day of hearing will be  set, and due notice 
thereof given to [the] appellant and to the primary  examiner. &gt;A&lt; 
[Hearing] &gt;hearing&lt; will be held as stated in the notice,  and oral 
argument will be limited to twenty minutes for [the] appellant  and fifteen 
minutes for the primary examiner unless otherwise ordered  before the hearing 
begins. &gt;If the Board decides that a hearing is not  necessary, the Board 
will so notify appellant.&lt;
    77. Section 1.196 is proposed to be amended by revising paragraphs  (b) 
and (d) to read as follows:

Sec. 1.196  Decision by the Board of Patent Appeals and Interferences. 
* * * * *
    (b) Should the Board of Patent Appeals and Interferences have  knowledge 
of any grounds not involved in the appeal for rejecting any  [appealed] 
&gt;pending&lt; claim, it may include in the decision a statement  to that 
effect with its reasons for so holding, which statement shall 
[[Page 49859]]

constitute a new &gt;ground of&lt; rejection of the [claims] &gt;claim&lt;. A 
new  &gt;ground of&lt; rejection shall not be considered final for purposes of 
 judicial review. When the Board of Patent Appeals and Interferences  makes a 
new &gt;ground of&lt; rejection [of an appealed claim], the  appellant&gt;, 
within two months from the date of the decision,&lt; may  exercise [any one] 
&gt;either&lt; of the following two options with respect  to the new ground 
&gt;of rejection&lt;:
    (1) The appellant may submit an appropriate amendment of the claims  so 
rejected or a showing of facts &gt;relating to the claims so rejected&lt;,  or 
both, and have the matter reconsidered by the examiner in which  event the 
application will be remanded to the examiner. The [statement]  &gt;new ground 
of rejection&lt; shall be 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 [for] &gt;of&lt;  rejection stated in 
the decision. Should the examiner [again reject the  application] &gt;reject 
the claims, appellant&lt; [the applicant] may again  appeal &gt;pursuant to 
Secs. 1.191 through 1.195&lt; to the Board of Patent  Appeals and 
Interferences.
    (2) The appellant may have the case reconsidered under  Sec. 1.197(b) by 
the Board of Patent Appeals and Interferences upon the  same record. The 
request for reconsideration [shall] &gt;must&lt; address the  new ground [for] 
&gt;of&lt; 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 reconsideration is  sought. Where request for 
such reconsideration is made, the Board of  Patent Appeals and Interferences 
shall reconsider the new ground [for]  &gt;of&lt; rejection and, if necessary, 
render a new decision which shall  include all grounds &gt;of rejection&lt; 
upon which a patent is refused. The  decision on reconsideration is deemed to 
incorporate the earlier  decision &gt;for purposes of appeal&lt;, except for 
those portions  specifically withdrawn on reconsideration, and is final for 
the purpose  of judicial review&gt;, except when noted otherwise in the 
decision&lt;. * * * * *
    [(d) Although the Board of Patent Appeals and Interferences  normally will 
confine its decision to a review of rejections made by  the examiner, should 
it have knowledge of any grounds for rejecting any  allowed claim it may 
include in its decision a recommended rejection of  the claim and remand the 
case to the examiner. In such event, the Board  shall set a period, not less 
than one month, within which the appellant  may submit to the examiner an 
appropriate amendment, a showing of facts  or reasons, or both, in order to 
avoid the grounds set forth in the  recommendation of the Board of Patent 
Appeals and Interferences. 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 examiner make  
the recommended rejection final the applicant may again appeal to the  Board 
of Patent Appeals and Interferences.]     &gt;(1) 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.
    (2) Appellant will be given a time limit within which to reply to  the 
inquiry made under paragraph (d)(1) of this section.&lt; * * * * *
    78. Section 1.197 is proposed to be amended by revising paragraphs  (a) 
and (b) to read as follows:

Sec. 1.197  Action following decision.

    (a) After decision by the Board of Patent Appeals and  Interferences, the 
case shall be returned to the examiner, subject to  [the] appellant's right of 
appeal or other review, for such further  action by [the] appellant or by the 
examiner, as the condition of the  case may require, to carry into effect the 
decision.
    (b) A single request for reconsideration or modification of the  decision 
may be made if filed within &gt;two months&lt; [one month] from the  date of 
the original decision, unless the original decision is so  modified by the 
decision on reconsideration as to become, in effect, a  new decision, and the 
Board of Patent Appeals and Interferences so  states. The request for 
reconsideration shall state with particularity  the points believed to have 
been misapprehended or overlooked in  rendering the decision and also state 
all other grounds upon which  reconsideration is sought. See Sec. 1.136(b) for 
extensions of time for  seeking reconsideration in a patent application and 
Sec. 1.550(c) for  extensions of time in a reexamination proceeding.
* * * * *
    79. Section 1.291 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 1.291  Protests by the public against pending applications. 
* * * * *
    (c) 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. The Office may communicate with the  applicant regarding any protest 
and may require the applicant to  &gt;reply&lt; [respond] to specific 
questions raised by the protest. In the  absence of a request by the Office, 
an applicant has no duty to, and  need not, &gt;reply&lt; [respond] 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 &gt;,except for  additional prior art, or&lt; unless such 
submission raises new issues  which could not have been earlier presented.
    80. Section 1.294 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.294  Examination of request for publication of a statutory  invention 
registration and patent application to which the request is  directed.

* * * * *
    (b) Applicant will be notified of the results of the examination  set 
forth in paragraph (a) of this section. If the requirements of  Sec. 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  U.S.C. 112, the notification to applicant will 
include a rejection  under the appropriate provisions of 35 U.S.C. 112. The 
periods for  &gt;reply&lt; [response] established pursuant to this section are 
subject to  the extension of time provisions of Sec. 1.136. After 
&gt;reply&lt;  [response] by the applicant, the application will again be 
considered  for publication of a statutory invention registration. If the  
requirements of Sec. 1.293 and this section are not timely met, the  refusal 
to publish will be made final. If the requirements of 35 U.S.C.  112 are not 
met, the rejection pursuant to 35 U.S.C. 112 will be made  final.
* * * * *

[[Page 49860]]

    81. Section 1.304 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court  of 
Appeals for the Federal Circuit (Sec. 1.302) or for commencing a  civil action 
(Sec. 1.303) is two months from the date of the decision  of the Board of 
Patent Appeals and Interferences. If a request for  [consideration] 
&gt;reconsideration&lt; or modification of the decision is  filed within the 
time period provided under Sec. 1.197(b) or  Sec. 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:
    (i) 14 days after service of the notice of appeal or the summons  and 
complaint, or
    (ii) Two months after the date of decision of the Board of Patent  Appeals 
and Interferences, whichever is later.
* * * * *
    82. Section 1.312 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.312  Amendments after allowance.

* * * * *
    (b) Any amendment pursuant to paragraph (a) of this section filed  after 
the date the issue fee is paid must be accompanied by a petition  including 
the fee set forth in Sec. 1.17(i) and a showing of good and  sufficient 
reasons why the amendment is necessary and was not earlier  presented. &gt;For 
reissue applications, see Sec. 1.175(b), which requires  a supplemental oath 
or declaration to accompany the amendment.&lt;     83. Section 1.313 is 
proposed to be amended by adding a new  paragraph (c) to read as follows:

Sec. 1.313  Withdrawal from issue.

* * * * *
    &gt;(c) Unless an applicant receives written notification that the  
application has been withdrawn from issue at least two weeks prior to  the 
projected date of issue, applicant should expect that the  application will 
issue as a patent.&lt;
    84. Section 1.316 paragraphs (b) through (f) are proposed to be  removed.

Sec. 1.316  Application abandoned for failure to pay issue fee. 
* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].
    85. Section 1.317 paragraphs (b) through (f) are proposed to be  removed.

Sec. 1.317  Lapsed patents; delayed payment of balance of issue fee. 
* * * * *
    (b) [Removed].
    (c) [Removed].
    (d) [Removed].
    (e) [Removed].
    (f) [Removed].

Sec. 1.318  [Removed and reserved].

    86. Section 1.318 is proposed to be removed and reserved.     87. Section 
1.324 is proposed to be revised to read as follows: 

Sec. 1.324  Correction of inventorship in patent. 
    &gt;(a) 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, &lt; 
[Whenever a patent is issued and it appears that the  correct inventor or 
inventors were not named through error without  deceptive intention on the 
part of the actual inventor or inventors,]  the Commissioner may, on petition 
[of all the parties and the assignees  and satisfactory proof of the facts and 
payment of the fee set forth in  Sec. 1.20(b)], 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 &gt;petition&lt; [request] to correct 
inventorship of a  patent involved in an interference shall comply with the 
requirements  of this section and shall be accompanied by a motion under Sec. 
1.634.     &gt;(b) Any petition pursuant to paragraph (a) of this section must 
be  accompanied by:
    (1) 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 their  part;
    (2) 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;
    (3) 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; such statement must comply  with the requirements 
of Sec. 3.73(b); and
    (4) The fee set forth in Sec. 1.20(b).&lt;

Sec. 1.325  [Removed and reserved]

    88. Section 1.325 is proposed to be removed and reserved. 

Sec. 1.351  [Removed and reserved]

    89. Sections 1.351 is proposed to be removed and reserved. 

Sec. 1.352  [Removed and reserved]

    90. Section 1.352 is proposed to be removed and reserved.     91. Section 
1.366 is proposed to be amended by revising paragraphs  (b) through (d) to 
read as follows:

Sec. 1.366  Submission of maintenance fees.

* * * * *
    (b) 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 and may be paid in the manner  set forth in Sec. 
1.23 or by an authorization to charge a deposit  account established pursuant 
to Sec. 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  Sec. 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 Sec. 
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 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  [certificate] procedures of 
either Sec. 1.8 or Sec. 1.10 may be  utilized in paying maintenance fees and 
any necessary surcharges.     (c) In submitting maintenance fees and any 
necessary surcharges,  identification of the patents for which maintenance 
fees are being paid  must include the following:
    (1) The patent number, and
    (2) The [serial] &gt;application&lt; number of the United States  
application for the patent on which the maintenance fee is being paid.     (d) 
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 
[[Page 49861]]

changed or claimed, the amount of the maintenance fee and any surcharge  being 
paid, and any assigned payor number[, the patent issue date and  the United 
States application filing date]. 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 [serial] 
number as required by paragraph (c) of this  section and should also include 
the original patent number[, the  original patent issue date, and the original 
United States application  filing date].
* * * * *
    92. Section 1.377 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 1.377  Review of decision refusing to accept and record payment of  a 
maintenance fee filed prior to expiration of patent. 
* * * * *
    (c) Any petition filed under this section must comply with the  
requirements of paragraph (b) of Sec. 1.181 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. [Such petition must 
be in the form of a verified statement if  made by a person not registered to 
practice before the Patent and  Trademark Office.]
    93. Section 1.378 is proposed to be amended by revising paragraph  (d) to 
read as follows:

Sec. 1.378  Acceptance of delayed payment of maintenance fee in expired  
patent to reinstate patent. 
* * * * *
    (d) 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. [Such  petition must 
be in the form of a verified statement if made by a  person not registered to 
practice before the Patent and Trademark  Office.]
* * * * *
    94. Section 1.425 is proposed to be revised to read as follows: 

Sec. 1.425  Filing by other than inventor.

    [(a) If a joint inventor refuses to join in an international  application 
which designates the United States of America or cannot be  found or reached 
after diligent effort, the international application  which designates the 
United States of America may be filed by the other  inventor on behalf of 
himself or herself and the omitted inventor. Such  an international 
application which designates the United States of  America must be accompanied 
by proof of the pertinent facts and must  state the last known address of the 
omitted inventor. The Patent and  Trademark Office shall forward notice of the 
filing of the  international application to the omitted inventor at said 
address.     (b) Whenever an inventor refuses to execute an international  
application which designates the United States of America, or cannot be  found 
or reached after diligent effort, a person to whom the 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 file 
the international application on behalf  of and as agent for the inventor. 
Such an international application  which designates the United States of 
America must be accompanied by  proof of the pertinent facts and a showing 
that such action is  necessary to preserve the rights of the parties or to 
prevent  irreparable damage and must state the last known address of the  
inventor. The assignment, written agreement to assign or other evidence  of 
proprietary interest, or a verified copy thereof, must be filed in  the Patent 
and Trademark Office. The Office shall forward notice of the  filing of the 
application to the inventor at the address stated in the  application.] 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 could  not 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.
    95. Section 1.484 is proposed to be amended by revising paragraphs  (d) 
through (f) to read as follows:

Sec. 1.484  Conduct of international preliminary examination. 
* * * * *
    (d) 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 
&gt;reply&lt; [respond].
    (e) If no written opinion under paragraph (d) of this section is  
necessary, or after any written opinion and the &gt;reply&lt; [response]  
thereto or the expiration of the time limit for &gt;reply&lt; [response] 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.
    (f) An applicant will be permitted a personal or telephone  interview with 
the examiner, which must be conducted during the non- extendable time limit 
for &gt;reply&lt; [response] 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 
&gt;reply&lt; [response] to the written  opinion or, if applicant files no 
&gt;reply&lt; [response], be made of record  in the file by the examiner.
    96. Section 1.485 is proposed to be amended by revising paragraph  (a) to 
read as follows:

Sec. 1.485  Amendments by applicant during international preliminary  
examination.

    (a) The applicant may make amendments at the time of filing of the  Demand 
and within the time limit set by the International Preliminary  Examining 
Authority for &gt;reply&lt; [response] to any notification under  Sec. 
1.484(b) or to any written opinion. Any such amendments must:     (1) Be made 
by submitting a replacement sheet for every sheet of  the application which 
differs from the sheet it replaces unless an  entire sheet is cancelled, and
    (2) Include a description of how the replacement sheet differs from  the 
replaced sheet.
* * * * *
    97. Section 1.488 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.488  Determination of unity of invention before the  International 
Preliminary Examining Authority.

* * * * *
    (b) If the International Preliminary Examining Authority considers  that 
the international application does not comply with the requirement  of unity 
of invention, it may:
    (1) 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

[[Page 49862]]

searched by an International Searching Authority.
    (2) Invite the applicant to restrict the claims or pay additional  fees, 
pointing out the categories of the 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 
Preliminary Examining Authority, or
    (3) If applicant fails to restrict the claims or pay additional  fees 
within the time limit set for &gt;reply&lt; [response], 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.
* * * * *
    98. Section 1.492 is proposed to be amended by adding a new  paragraph (g) 
to read as follows:

Sec. 1.492  National stage fees.

* * * * *
    &gt;(g) If the additional fees required by paragraphs (b), (c), and  (d) 
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.&lt;
    99. Section 1.494 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 1.494  Entering the national stage in the United States of America  as a 
Designated Office.

* * * * *
    (c) If applicant complies with paragraph (b) of this section before  
expiration of 20 months from the priority date but omits:
    (1) 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
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);  see 
Sec. 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 Sec. 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 Sec. 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 copy  of the notification mailed to applicant should 
accompany any &gt;reply&lt;  [response] thereto submitted to the Office.
* * * * *
    100. Section 1.495 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 1.495  Entering the national stage in the United States of America  as an 
Elected Office.

* * * * *
    (c) If applicant complies with paragraph (b) of this section before  
expiration of 30 months from the priority date but omits:
    (1) 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
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);  see 
Sec. 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 Sec. 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 Sec. 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 copy  of the notification mailed to applicant should 
accompany any &gt;reply&lt;  [response] thereto submitted to the Office.
* * * * *
    101. Section 1.510 is proposed to be amended by revising paragraph  (e) to 
read as follows:

Sec. 1.510  Request for reexamination.

* * * * *
    (e) A request filed by the patent owner may include a proposed  amendment 
in accordance with [Sec. 1.121(f)] &gt;Sec. 1.530(d)&lt;.     102. Section 
1.530 is proposed to be amended by revising the  heading and paragraphs (a) 
and (d) to read as follows:

Sec. 1.530  Statement and [amendment] &gt;reply&lt; by patent owner. 
    (a) Except as provided in Sec. 1.510(e), no statement or other  
&gt;reply&lt; [response] by the patent owner shall be filed prior to the  
determinations made in accordance with Secs. 1.515 or 1.520. If a  premature 
statement or other &gt;reply&lt; [response] is filed by the patent  owner it 
will not be acknowledged or considered in making the  determination.
* * * * *
    [(d) Any proposed amendment to the description and claims must be  made in 
accordance with Sec. 1.121(f). No amendment may enlarge the  scope of the 
claims of the patent or introduce new matter. No amended  or new claims may be 
proposed for entry in an expired patent. Moreover,  no amended or new claims 
will be incorporated into the patent by  certificate issued after the 
expiration of the patent.]     &gt;(d) 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.
    (1) Specification other than claims: Amendments to the  specification 
other than claims may only be made as follows:     (i) The precise point in 
the specification must be indicated where  an amendment is to be made.
    (ii) Amendments must be made by submission of the entire text of  the 
rewritten paragraph(s) with markings pursuant to paragraph  (d)(1)(iv) of this 
section.
    (iii) Each submission of an amendment to the specification of the  patent 
must include all amendments to the specification relative to the  patent as of 
the date of the submission. This would include amendments  to the 
specification of the patent submitted for the first time as well  as any 
previously submitted amendments that are still desired. Any  previously 
submitted amendments to the specification that are no longer  desired must not 
be included in the submission.
    (iv) 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.
    (2) Claims: Amendments to the claims are made as follows:     (i)(A) The 
amendment must include the entire text of each patent  claim which is amended 
and each proposed claim with marking pursuant to  paragraph (d)(2)(i)(C) of 
this section, except a patent or proposed  claim should be cancelled by a 
statement cancelling the patent or  proposed claim without presentation of the 
text of the patent or  proposed claim.
    (B) Patent claims must not be renumbered and the numbering of any 
[[Page 49863]]

claims proposed to be added to the patent must follow the number of the  
highest numbered patent claim.
    (C) 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.
    (ii) Each amendment submission must set forth the status, as of the  date 
of the amendment, of all patent claims, of all claims currently  proposed, and 
of all previously proposed claims that are no longer  being proposed.
    (iii) 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.
    (iv) Each submission of an amendment to any claim (patent claims  and all 
proposed claims) must include all amendments to the claims as  of the date of 
the submission. This would include amendments to the  claims submitted for the 
first time as well as any previously submitted  amendments to the claims that 
are still desired. Any previously  submitted amendments to the claims that are 
no longer desired must not  be included in the submission. A copy of any 
patent claims that have  not been amended are not to be presented with each 
amendment  submission.
    (v) The failure to submit a copy of any proposed claim will be  construed 
as a direction to cancel that claim.
    (3) 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.     (4) Amendments made 
to a patent during a reexamination proceeding  will not be effective until a 
reexamination certificate is issued.     (5) The form of replies, amendments, 
briefs, appendices and other  papers must be in accordance with the following 
requirements. All  documents, including any amendments or corrections thereto, 
must be in  the English language. All papers which are to become a part of the 
 permanent records of the Patent and Trademark Office must be legibly  written 
either by a typewriter or mechanical printer in permanent dark  ink or its 
equivalent in portrait orientation on flexible, strong,  smooth, non-shiny, 
durable, and white paper. All printed matter must  appear in at least 11 point 
type. All of the 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. 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 1\1/2\ or double spaced. The  pages must be numbered 
consecutively, starting with 1, the numbers  being centrally located above or 
preferably, below, the text.     (6) 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  
changed submitted in compliance with Sec. 1.84&lt;
* * * * *
    103. Section 1.550 is proposed to be amended by revising paragraphs  (a), 
(b) and (d) to read as follows:

Sec. 1.550  Conduct of reexamination proceedings.

    (a) 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 &gt;replies&lt;  [responses] thereto, the 
examination will be conducted in accordance  with Secs. 1.104 through 1.116 
and will result in the issuance of a  reexamination certificate under Sec. 
1.570.
    (b) The patent owner will be given at least [30] &gt;thirty&lt; days to  
&gt;reply&lt; [respond] to any Office action. Such &gt;reply&lt; [response] 
may  include further statements in &gt;reply&lt; [response] to any rejections 
and/ or proposed amendments or new claims to place the patent in a condition  
where all claims, if amended as proposed, would be patentable. * * * * *
    (d) If the patent owner fails to file a timely and appropriate  
&gt;reply&lt; [response] to any Office action, the reexamination proceeding  
will be terminated and the Commissioner will proceed to issue a  certificate 
under Sec. 1.570 in accordance with the last action of the  Office.
* * * * *
    104. Section 1.560 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.560  Interviews in reexamination proceedings.

* * * * *
    (b) 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 &gt;reply&lt; [response] to  Office actions as 
specified in Sec. 1.111.
    105. Section 1.770 is proposed to be revised to read as follows: 

Sec. 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 Sec. 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  &gt;reply&lt; [response] 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 Sec. 1.20(j)) 
 or any portion thereof.
    106. Section 1.785 is proposed to be amended by revising paragraph  (d) to 
read as follows:

Sec. 1.785   Multiple applications for extension of term of the same  patent 
or different patents for the same regulatory review period for a  product.

* * * * *
    (d) 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 or 
express and exclusive authorization from  the holder of the regulatory

[[Page 49864]]

approval to rely on the regulatory review period for extension. 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 [(1)] 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 
&gt;reply&lt; [response] set shall be  regarded as conclusively establishing 
that the applicant is not the  holder of the regulatory approval and is not 
expressly and exclusively  authorized by the holder of the regulatory approval 
to seek the  extension being sought.
* * * * *
    107. Section 1.804 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 1.804   Time of making an original deposit.

* * * * *
    (b) When the original deposit is made after the effective filing  date of 
an application for patent, the applicant shall promptly submit  a [verified] 
statement from a person in a position to corroborate the  fact, [and shall 
state] &gt;stating&lt;, that the biological material which  is deposited is a 
biological material specifically identified in the  application as filed[, 
except if the person is an attorney or agent  registered to practice before 
the Office, in which case the statement  need not be verified].
    108. Section 1.805 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 1.805   Replacement or supplement of deposit.

* * * * *
    (c) 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:
    (1) Includes a [verified] statement of the reason for making the  
replacement or supplemental deposit;
    (2) Includes a [verified] statement from a person in a position to  
corroborate the fact, and [shall state] &gt;stating&lt;, that the replacement 
 or supplemental deposit is of a biological material which is identical  to 
that originally deposited;
    (3) Includes a [verified] showing that the patent owner acted  
diligently[-]&gt;:&lt;
    (i) 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
    (ii) 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;
    (4) Includes a [verified] statement that the term of the  replacement or 
supplemental deposit expires no earlier than the term of  the deposit being 
replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations[,  except that 
if the person making one or more of the required statements  or showing is an 
attorney or agent registered to practice before the  Office, that statement or 
showing need not be verified].
* * * * *

PART 3--ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE

    The authority citation for part 3 continues to read as follows: 
    Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

    109a. Section 3.11 is proposed to be revised to read as follows: 

Sec. 3.11   Documents which will be recorded.

    &gt;(a)&lt; Assignments of applications, patents, and registrations,  
accompanied by completed cover sheets as specified in Secs. 3.28 and  3.31, 
will be recorded in the Office. Other documents, accompanied by  completed 
cover sheets as specified in Secs. 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.     &gt;(b) Executive Order 
9424 (3 CFR 1943--1948 Comp.) 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 (3 CFR 1943--1948 Comp.) to be 
filed  will be recorded as provided in this Part.&lt;
    110. Section 3.26 is proposed to be revised to read as follows: 

Sec. 3.26   English language requirement.

    The Office will accept and record non-English language documents  only if 
accompanied by [a verified] &gt;an&lt; English translation signed by  the 
individual making the translation.
    110a. Section 3.27 is proposed to be revised to read as follows: 

Sec. 3.27   Mailing address for submitting documents to be recorded. 
    &gt;(a) Except as provided in paragraph (b) of this section,  
documents&lt; [Documents] and cover sheets to be recorded should be  addressed 
to the Commissioner of Patents and Trademarks, Box  Assignments, Washington, 
DC 20231, unless they are filed together with  new applications or with a 
petition under Sec. 3.81(b).
    &gt;(b) A document required by Executive Order 9424 (3 CFR 1943--1948  
Comp.) to be filed which does not affect title and is so identified in  the 
cover sheet (see Sec. 3.31(c)(2)) must be addressed and mailed to  the 
Commissioner of Patents and Trademarks, Box Government Interest,  Washington, 
DC 20231.&lt;
    111. Section 3.31 is proposed to be amended by adding paragraph (c)  to 
read as follows:

Sec. 3.31   Cover sheet content.

* * * * *
    &gt;(c) Each patent cover sheet required by Sec. 3.28 seeking to  record a 
governmental interest as provided by Sec. 3.11(b) must:     (1) 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 
Sec. 3.58), and
    (2) Indicate, if applicable, that the document to be recorded is  not a 
document affecting title (see Sec. 3.41(b)).&lt;
    112. Section 3.41 is proposed to be revised to read as follows: 

Sec. 3.41   Recording fees.

    &gt;(a)&lt; All requests to record documents must be accompanied by the  
appropriate fee. &gt;Except as provided in paragraph (b) of this section,  
a&lt; [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 Sec. 1.21(h) of this [Chapter]  &gt;chapter&lt; for 
patents and in Sec. 2.6(q) of this [Chapter] &gt;chapter&lt;  for trademarks.
    &gt;(b) No fee is required for each patent application and patent  against 
which a document required by Executive Order 9424 (3 CFR 1943- 1948 Comp.) is 
to be filed if:
    (1) The document does not affect title and is so identified in the  cover 
sheet (see Sec. 3.31(c)(2));

[[Page 49865]]

    (2) The cover sheet is filed in a format approved by the Office;  and
    (3) The document and cover sheet are mailed to the Office in  compliance 
with Sec. 3.27(b).&lt;
    113. Section 3.51 is proposed to be revised to read as follows: 

Sec. 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] &gt;part&lt;  is filed in 
the Office. A document which does not comply with the  identification 
requirements of 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 [certification] 
procedure under either  Sec. 1.8 or Sec. 1.10 of this [Chapter] 
&gt;chapter&lt; 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.
    114. Section 3.58 is proposed to be added to read as follows: 

Sec. 3.58   Governmental registers.

    (a) The Office will maintain a Departmental Register to record  
governmental interests required to be recorded by Executive Order 9424  (3 CFR 
1943-1948 Comp.). 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 Sec. 1.12.
    (b) The Office will maintain a Secret Register to record  governmental 
interests required to be recorded by Executive Order 9424  (3 CFR 1943-1948 
Comp.). 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.&lt;
    115. Section 3.73 is proposed to be amended by revising paragraph  (b) to 
read as follows:

Sec. 3.73   Establishing right of assignee to prosecute.

* * * * *
    (b) When the assignee of the entire right, title and interest 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 documentary evidence of a chain  of title from the original owner 
to the assignee &gt;(e.g., copy of an  executed assignment submitted for 
recording, etc.)&lt; or by specifying  (e.g., reel and frame number, etc.) 
where such evidence is recorded in  the Office. 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. 
[In addition, the assignee of a  patent application or patent must submit a 
statement specifying that  the evidentiary documents have been reviewed and 
certifying that, to  the best of assignee's knowledge and belief, title is in 
the assignee  seeking to take the action.]

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND  FILE 
APPLICATIONS IN FOREIGN COUNTRIES

    116. The authority citation for Part 5 is proposed to be revised to  read 
as follows:

    Authority: 35 U.S.C. 6, 41, 181-188; 22 U.S.C. 2751 et seq.; 22  U.S.C. 
3201 et seq.; 42 U.S.C. 2011 et seq..

    117. Section 5.1 is proposed to be revised to read as follows: 

Sec. 5.1   [Defense inspection of certain 
applications]&gt;Correspondence&lt;.

    [(a) The provisions of this part shall apply to both national and  
international applications filed in the Patent and Trademark Office  and, with 
respect to inventions made in the United States, to  applications filed in any 
foreign country or any international  authority other than the United States 
Receiving Office. The     (1) filing of a national or an international 
application in a  foreign country or with an international authority other 
than the  United States Receiving Office, or
    (2) transmittal of an international application to a foreign agency  or an 
international authority other than the United States Receiving  Office is 
considered to be a foreign filing within the meaning of  Chapter 17 of Title 
35, United States Code.
    (b) In accordance with the provisions of 35 U.S.C. 181, patent  
applications containing subject matter the disclosure of which might be  
detrimental to the national security are made available for inspection  by 
defense agencies as specified in said section. Only applications  obviously 
relating to national security, and applications within fields  indicated to 
the Patent and Trademark Office by the defense agencies as  so related, are 
made available. The inspection will be made only by  responsible 
representatives authorized by the agency to review  applications. Such 
representatives are required to sign a dated  acknowledgment of access 
accepting the condition that information  obtained from the inspection will be 
used for no purpose other than the  administration of 35 U.S.C. 181-188. 
Copies of applications may be made  available to such representatives for 
inspection outside the Patent and  Trademark Office under conditions assuring 
that the confidentiality of  the applications will be maintained, including 
the conditions that: (1)  All copies will be returned to the Patent and 
Trademark Office promptly  if no secrecy order is imposed, or upon rescission 
of such order if one  is imposed, and (2) no additional copies will be made by 
the defense  agencies. A record of the removal and return of copies made 
available  for defense inspection will be maintained by the Patent and 
Trademark  Office. Applications relating to atomic energy are made available 
to  the Department of Energy as specified in 1.14 of this chapter.]     &gt; 
All correspondence in connection with this part, including  petitions, must

[[Page 49866]]

be addressed to ``Assistant Commissioner for Patents (Attention  Licensing and 
Review), Washington, DC 20231.''&lt;
    118. Section 5.2 proposed to be amended by revising paragraph (b)  and 
removing paragraphs (c) and (d) to read as follows:

Sec. 5.2  Secrecy order.

* * * * *
    (b) [The secrecy order is directed to the applicant, his  successors, any 
and all assignees, and their legal representatives;  hereinafter designated as 
principals.] &gt;Any request for compensation as  provided in 35 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.&lt;
    [(c) A copy of the secrecy order will be forwarded to each  principal of 
record in the application and will be accompanied by a  receipt, identifying 
the particular principal, to be signed and  returned.
    (d) The secrecy order is directed to the subject matter of the  
application. Where any other application in which a secrecy order has  not 
been issued discloses a significant part of the subject matter of  the 
application under secrecy order, the other application and the  common subject 
matter should be called to the attention of the Patent  and Trademark Office. 
Such a notice may include any material such as  would be urged in a petition 
to rescind secrecy orders on either of the  applications.]
    119. Section 5.3 is proposed to be amended by revising paragraph  (c) to 
read as follows:

Sec. 5.3  Prosecution of application under secrecy orders; withholding  
patent.

* * * * *
    (c) 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 Sec. 1.311 of this  chapter) does not require 
&gt;reply&lt; [response] 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 Sec. 1.311  of this chapter, or take such other action as 
may then be warranted. * * * * *
    120. Section 5.4 is proposed to be amended by revising paragraphs  (a) and 
(d) to read as follows:

Sec. 5.4  Petition for rescission of secrecy order.

    (a) 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 be accompanied 
by one copy of the application or an order  for the same, unless a showing is 
made that such a copy has already  been furnished to the department or agency 
which caused the secrecy  order to be issued.]
* * * * *
    (d) [Unless based upon facts of public record, the petition must be  
verified.] &gt; Appeal to the Secretary of Commerce, as provided by 35  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.&lt;     121. Section 
5.5 is proposed to be amended by revising paragraphs  (b) and (e) to read as 
follows:

Sec. 5.5  Permit to disclose or modification of secrecy order. 
* * * * *
    (b) 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 [and be accompanied 
by one copy of the  application or an order for the same, unless a showing is 
made that  such a copy has already been furnished to the department or agency 
 which caused the secrecy order to be issued].
* * * * *
    (e) [The permit or modification may contain conditions and  limitations.] 
&gt;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.&lt;

Sec. 5.6  [Removed and reserved]

    122. Section 5.6 is proposed to be removed and reserved. 

Sec. 5.7  [Removed and reserved]

    123. Section 5.7 is proposed to be removed and reserved. 

Sec. 5.8  [Removed and reserved]

    124. Section 5.8 is proposed to be removed and reserved.     125. Section 
5.11 is proposed to be amended by revising paragraphs  (b) and (c) to read as 
follows:

Sec. 5.11  License for filing in a foreign country an application on an  
invention made in the United States or for transmitting international  
application.

* * * * *
    (b) The license from the Commissioner of Patents and Trademarks  referred 
to in paragraph (a) of this section 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 CFR Parts [121] 
&gt;120&lt; through 130 (International  Traffic in Arms Regulations of the 
Department of State), 15 CFR [Part  379 (Regulations of the Bureau of Export 
Administration, Department of  Commerce)] &gt;Parts 768-799 (Export 
Administration Regulations of the  Department of Commerce)&lt; and 10 CFR Part 
810 [(Foreign Atomic Energy  Programs of the Department of Energy)] 
&gt;(Assistance to Foreign Atomic  Energy Activities--Regulations of the 
Department of Energy)&lt;.     (c) 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 CFR Parts [121] &gt;120&lt; through 130 (International  Traffic in Arms 
Regulations of the Department of State), 15 CFR [Part  379 (Regulations of the 
Bureau of Export Administration, Department of  Commerce)] &gt;Parts 768-799 
(Export Administration Regulations of the  Department of Commerce)&lt; and 10 
CFR Part 810 [(Foreign Atomic Energy  Programs of the Department of Energy)] 
&gt;(Assistance to Foreign Atomic  Energy Activities--Regulations of the 
Department of Energy)&lt; 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 Sec. 5.2 being 
placed thereon. The term  ``exported'' means export as it is defined in 22 CFR 
[Parts 121 through  130] &gt;Part 120&lt;, 15 CFR

[[Page 49867]]

Part [379] &gt;779&lt; and &gt;activities covered by&lt; 10 CFR Part 810. * * 
* * *
    126. Section 5.13 is proposed to be revised to read as follows: 

Sec. 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 Sec. 5.12(b)  must be 
accompanied by the required fee (Sec. 1.17(h)), if expedited  handling of the 
petition is also sought, and a legible copy of the  material upon which a 
license is desired. This copy will be retained as  a measure of the license 
granted. [For assistance in the identification  of the subject matter of each 
license so issued, it is suggested that  the petition be submitted in 
duplicate and provide a title and other  description of the material. The 
duplicate copy of the petition will be  returned with the license or other 
action on the petition.]     127. Section 5.14 is proposed to be amended by 
revising paragraph  (a) to read as follows:

Sec. 5.14  Petition for license; corresponding U.S. application. 
    (a) When there is a corresponding United States application on  file, a 
petition for license under Sec. 5.12(b) must include the  required fee (Sec. 
1.17(h)), if expedited handling of the petition is  also sought, and must 
identify this application by [serial]  &gt;application&lt; 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. [Where the title is not 
descriptive, and the  subject matter is clearly of no interest from a security 
standpoint,  time may be saved by a short statement in the petition as to the 
nature  of the invention.]
* * * * *
    128. Section 5.15 is proposed to be amended by revising paragraph  (a) to 
read as follows.

Sec. 5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Secs. 5.12  
through 5.14, which were not required to be made available for  inspection by 
defense agencies under 35 U.S.C. 181 and Sec. 5.1, 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 U.S.C. 181 and Sec. 5.1. [This license 
also covers the  inventions disclosed in foreign applications which have been 
granted a  license under this part prior to April 4, 1984, and which were not 
 subject to security inspection under 35 U.S.C. 181 and Sec. 5.1.] 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 when the subject matter of the foreign or  international 
application corresponds to that of the domestic  application. This license 
includes authority:
    (1) To export and file all duplicate and formal application papers  in 
foreign countries or with international agencies;
    (2) 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
    (3) To take any action in the prosecution of the foreign or  international 
application provided that the adding of subject matter of  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 U.S.C. 181 and Sec. 5.1 by  including technical data 
pertaining to:
    (i) 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 CFR Parts [121] &gt;120&lt; through 130; or     (ii) 
Restricted Data, sensitive nuclear technology or technology  useful for 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 Assistance to 
Foreign Atomic Energy  Activities] &gt;of the Department of Energy for 
assistance to foreign  energy activities&lt;, 10 CFR Part 810, in effect at 
the time of foreign  filing.
* * * * *

Sec. 5.16  [Removed and reserved]

    129. Section 5.16 is proposed to be removed and reserved. 

Sec. 5.17  [Removed and reserved]

    130. Section 5.17 is proposed to be revised and removed.     131. Section 
5.18 is proposed to be revised to read as follows: 

Sec. 5.18  Arms, ammunition, and implements of war.

    (a) 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 CFR Parts [121]  &gt;120&lt; 
through [128] &gt;130&lt;); the articles designated as arms,  ammunition, and 
implements of war are enumerated in the U.S. Munitions  List, 22 CFR [121.01] 
&gt;Part 121&lt;. However, if a patent applicant  complies with regulations 
issued by the Commissioner of Patents and  Trademarks under 35 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 Secs. 5.11 and [5.15 (22 CFR 
125.04(b),  125.20(b))] &gt;5.12 (22 CFR Part 125)&lt;.
    (b) When a patent application containing subject matter on the  Munitions 
List (22 CFR [121.01] &gt;Part 121&lt;) is subject to a secrecy  order under 
Sec. 5.2 and a petition is made under Sec. 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 
CFR [125.05(d)] &gt;Part 125&lt;).     132. Section 5.19 is proposed to be 
revised to read as follows: 

Sec. 5.19   Export of technical data.

    (a) Under regulations (15 CFR 770.10(j)) established by the [U.S.]  
Department of Commerce, [Bureau of Export Administration, Office of  Export 
Licensing,] a [validated export] 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 (37 CFR  5.11 through 5.33) of 
the Patent and Trademark Office.     (b) [A validated] &gt;An&lt; 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

[[Page 49868]]

returned to the United States for subsequent filing in the U.S. Patent  and 
Trademark Office (15 CFR 779A.3(e)).
    (c) [Removed].
    133. Section 5.20, paragraph (b), is proposed to be removed. 

Sec. 5.20  Export of technical data relating to sensitive nuclear  technology.

* * * * *
    (b) [Removed].
    134. Section 5.25, paragraph (c), is proposed to be removed. 

Sec. 5.25  Petition for retroactive license.

* * * * *
    (c) [Removed].

Sec. 5.31  [Removed and reserved]

    135. Section 5.31 is proposed to be removed and reserved. 

Sec. 5.32  [Removed and reserved]

    136. Section 5.32 is proposed to be removed and reserved. 

Sec. 5.33  [Removed and reserved]

    137. Section 5.33 is proposed to be removed and reserved. 
PART 7--[REMOVED AND RESERVED]

    138. Part 7 is proposed to be removed and reserved.

    Dated: September 10, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and  Trademarks.
[FR Doc. 96-23665 Filed 9-20-96; 8:45 am]
BILLING CODE 3510-16-P