Appendix R   Patent Rules
Title 37 - Code of Federal Regulations
Patents, Trademarks, and Copyrights
CHAPTER I—
SUBCHAPTER A – GENERAL
PATENTS
Part
  1   rules of practice in patent cases
  3   assignment, recording and rights of assignee
  4   complaints regarding invention promoters
  5   secrecy of certain inventions and licenses to export and file
applications in foreign countries
Index I  rules relating to patents
PRACTICE BEFORE THE PATENT AND
TRADEMARK OFFICE
Part
  10   representation of others before the patent and trademark
office
  11   representation of others before the united states patent and
trademark office
  15   [reserved]
  15a   [reserved]
  41   practice before the board of patent appeals and
interferences
Index II  rules relating to representation of others before the
united states patent and trademark office
SUBCHAPTER B – ADMINISTRATION
Part
  102   disclosure of government information
  104   legal processes
SUBCHAPTER C – PROTECTION OF
FOREIGN MASK WORKS
Part
  150   requests for presidential proclamations pursuant to 17
u.s.c. 902(a)(2)
GENERAL
PART 1   RULES OF PRACTICE IN PATENT
CASES
Subpart A - General ProvisionsGENERAL INFORMATION AND
CORRESPONDENCE
1.1 Addresses for non-trademark correspondence with
the United States Patent and Trademark Office.
1.2 Business to be transacted in writing.
1.3 Business to be conducted with decorum and
courtesy.
1.4 Nature of correspondence and signature
requirements.
1.5 Identification of patent, patent application, or
patent-related proceeding.
1.6 Receipt of correspondence.
1.7 Times for taking action; Expiration on Saturday,
Sunday or Federal holiday.
1.8 Certificate of mailing or transmission.
1.9 Definitions.
1.10 Filing of correspondence by “Express Mail.”
RECORDS AND FILES OF THE PATENT AND
TRADEMARK OFFICE
1.11 Files open to the public.
1.12 Assignment records open to public inspection.
1.13 Copies and certified copies.
1.14 Patent applications preserved in confidence.
1.15 [Reserved]
FEES AND PAYMENT OF MONEY
1.16 National application filing, search, and examination
fees.
1.17 Patent application and reexamination processing
fees.
1.18 Patent post allowance (including issue) fees.
1.19 Document supply fees.
1.20 Post issuance fees.
1.21 Miscellaneous fees and charges.
1.22 Fees payable in advance.
1.23 Methods of payment.
1.24 [Reserved]
1.25 Deposit accounts.
1.26 Refunds.
1.27 Definition of small entities and establishing status
as a small entity to permit payment of small entity
fees; when a determination of entitlement to small
entity status and notification of loss of entitlement
to small entity status are required; fraud on the
Office.
1.28 Refunds when small entity status is later
established; how errors in small entity status are
excused.
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 Subpart B - National Processing Provisions
PROSECUTION OF APPLICATION AND
APPOINTMENT OF ATTORNEY OR AGENT
1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
1.32 Power of attorney.
1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
1.34 Acting in a representative capacity.
1.36 Revocation of power of attorney; withdrawal of
patent attorney or agent.
WHO MAY APPLY FOR A PATENT
1.41 Applicant for patent.
1.42 When the inventor is dead.
1.43 When the inventor is insane or legally incapacitated.
1.44 [Reserved]
1.45 Joint inventors.
1.46 Assigned inventions and patents.
1.47 Filing when an inventor refuses to sign or cannot
be reached.
1.48 Correction of inventorship in a patent application,
other than a reissue application, pursuant to 35
U.S.C. 116.
THE APPLICATION
1.51 General requisites of an application.
1.52 Language, paper, writing, margins, compact disc
specifications.
1.53 Application number, filing date, and completion of
application.
1.54 Parts of application to be filed together; filing
receipt.
1.55 Claim for foreign priority.
1.56 Duty to disclose information material to
patentability.
1.57 Incorporation by reference.
1.58 Chemical and mathematical formulae and tables.
1.59 Expungement of information or copy of papers in
application file.
1.60 [Reserved]
1.61 [Reserved]
1.62 [Reserved]
OATH OR DECLARATION
1.63 Oath or declaration.
1.64 Person making oath or declaration.
1.66 Officers authorized to administer oaths.
1.67 Supplemental oath or declaration.
1.68 Declaration in lieu of oath.
1.69 Foreign language oaths and declarations.1.70 [Reserved]
SPECIFICATION
1.71 Detailed description and specification of the
invention.
1.72 Title and abstract.
1.73 Summary of the invention.
1.74 Reference to drawings.
1.75 Claim(s).
1.76 Application data sheet.
1.77 Arrangement of application elements.
1.78 Claiming benefit of earlier filing date and
cross-references to other applications.
1.79 Reservation clauses not permitted.
THE DRAWINGS
1.81 Drawings required in patent application.
1.83 Content of drawing.
1.84 Standards for drawings.
1.85 Corrections to drawings.
1.88 [Reserved]
MODELS, EXHIBITS, SPECIMENS
1.91 Models or exhibits not generally admitted as part
of application or patent.
1.92 [Reserved]
1.93 Specimens.
1.94 Return of models, exhibits or specimens.
1.95 Copies of exhibits.
1.96 Submission of computer program listings.
INFORMATION DISCLOSURE STATEMENT
1.97 Filing of information disclosure statement.
1.98 Content of information disclosure statement.
1.99 Third-party submission in published application.
EXAMINATION OF APPLICATIONS
1.101 [Reserved]
1.102 Advancement of examination.
1.103 Suspension of action by the Office.
1.104 Nature of examination.
1.105 Requirements for information.
1.106 [Reserved]
1.107 [Reserved]
1.108 [Reserved]
1.109 [Reserved]
1.110 Inventorship and date of invention of the subject
matter of individual claims.
ACTION BY APPLICANT AND FURTHER
CONSIDERATION
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 1.111 Reply by applicant or patent owner to a non-final
Office action.
1.112 Reconsideration before final action.
1.113 Final rejection or action.
1.114 Request for continued examination.
AMENDMENTS
1.115 Preliminary amendments.
1.116 Amendments and affidavits or other evidence after
final action and prior to appeal.
1.117 [Reserved]
1.118 [Reserved]
1.119 [Reserved]
1.121 Manner of making amendments in applications.
1.122 [Reserved]
1.123 [Reserved]
1.124 [Reserved]
1.125 Substitute specification.
1.126 Numbering of claims.
1.127 Petition from refusal to admit amendment.
TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination
after final rejection and restriction practice.
AFFIDA VITS OVERCOMING REJECTIONS
1.130 Affidavit or declaration to disqualify commonly
owned patent or published application as prior art.
1.131 Affidavit or declaration of prior invention.
1.132 Affidavits or declarations traversing rejections or
objections.
INTERVIEWS
1.133 Interviews.
TIME FOR REPLY BY APPLICANT;
ABANDONMENT OF APPLICATION
1.134 Time period for reply to an Office action.
1.135 Abandonment for failure to reply within time
period.
1.136 Extensions of time.
1.137 Revival of abandoned application, terminated or
limited reexamination prosecution, or lapsed patent.
1.138 Express abandonment.
1.139 [Reserved]
JOINDER OF INVENTIONS IN ONE
APPLICATION; RESTRICTION
1.141 Different inventions in one national application.
1.142 Requirement for restriction.
1.143 Reconsideration of requirement.
1.144 Petition from requirement for restriction.1.145 Subsequent presentation of claims for different
invention.
1.146 Election of species.
DESIGN PATENTS
1.151 Rules applicable.
1.152 Design drawings.
1.153 Title, description and claim, oath or declaration.
1.154 Arrangement of application elements in a design
application.
1.155 Expedited examination of design applications.
PLANT PATENTS
1.161 Rules applicable.
1.162 Applicant, oath or declaration.
1.163 Specification and arrangement of application
elements in a plant application.
1.164 Claim.
1.165 Plant Drawings.
1.166 Specimens.
1.167 Examination.
REISSUES
1.171 Application for reissue.
1.172 Applicants, assignees.
1.173 Reissue specification, drawings, and amendments.
1.174 [Reserved]
1.175 Reissue oath or declaration.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents.
1.178 Original patent; continuing duty of applicant.
1.179 [Reserved]
PETITIONS AND ACTION BY THE DIRECTOR
1.181 Petition to the Director.
1.182 Questions not specifically provided for.
1.183 Suspension of rules.
1.184 [Reserved]
APPEAL TO THE BOARD OF PATENT
APPEALS AND INTERFERENCES
1.191 Appeal to Board of Patent Appeals and
Interferences.
1.192 [Reserved]
1.193 [Reserved]
1.194 [Reserved]
1.195 [Reserved]
1.196 [Reserved]
1.197 Termination of proceedings.
1.198 Reopening after a final decision of the Board of
Patent Appeals and Interferences.
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 PUBLICATION OF APPLICATIONS
1.211 Publication of applications.
1.213 Nonpublication request.
1.215 Patent application publication.
1.217 Publication of a redacted copy of an application.
1.219 Early publication.
1.221 V oluntary publication or republication of patent
application publication.
MISCELLANEOUS PROVISIONS
1.248 Service of papers; manner of service; proof of
service in cases other than interferences.
1.251 Unlocatable file.
1.265 [Removed]
PROTESTS AND PUBLIC USE PROCEEDINGS
1.291 Protests by the public against pending applications.
1.292 Public use proceedings.
1.293 Statutory invention registration.
1.294 Examination of request for publication of a statutory
invention registration and patent application to
which the request is directed.
1.295 Review of decision finally refusing to publish a
statutory invention registration.
1.296 Withdrawal of request for publication of statutory
invention registration.
1.297 Publication of statutory invention registration.
REVIEW OF PATENT AND TRADEMARK
OFFICE DECISIONS BY COURT
1.301 Appeal to U.S. Court of Appeals for the Federal
Circuit.
1.302 Notice of appeal.
1.303 Civil action under 35 U.S.C. 145, 146, 306.
1.304 Time for appeal or civil action.
ALLOWANCE AND ISSUE OF PATENT
1.311 Notice of Allowance.
1.312 Amendments after allowance.
1.313 Withdrawal from issue.
1.314 Issuance of patent.
1.315 Delivery of patent.
1.316 Application abandoned for failure to pay issue fee.
1.317 Lapsed patents; delayed payment of balance of issue
fee.
1.318 [Reserved]
DISCLAIMER
1.321 Statutory disclaimers, including terminal
disclaimers.CORRECTION OF ERRORS IN PATENT
1.322 Certificate of correction of Office mistake.
1.323 Certificate of correction of applicant’s mistake.
1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
1.325 Other mistakes not corrected.
ARBITRATION AWARDS
1.331 [Reserved]
1.332 [Reserved]
1.333 [Reserved]
1.334 [Reserved]
1.335 Filing of notice of arbitration awards.
AMENDMENT OF RULES
1.351 Amendments to rules will be published.
1.352 [Reserved]
MAINTENANCE FEES
1.362 Time for payment of maintenance fees.
1.363 Fee address for maintenance fee purposes.
1.366 Submission of maintenance fees.
1.377 Review of decision refusing to accept and record
payment of a maintenance fee filed prior to
expiration of patent.
1.378 Acceptance of delayed payment of maintenance fee
in expired patent to reinstate patent.
Subpart C - International Processing Provisions
GENERAL INFORMATION
1.401 Definitions of terms under the Patent Cooperation
Treaty.
1.412 The United States Receiving Office.
1.413 The United States International Searching
Authority.
1.414 The United States Patent and Trademark Office as
a Designated Office or Elected Office.
1.415 The International Bureau.
1.416 The United States International Preliminary
Examining Authority.
1.417 Submission of translation of international
publication.
1.419 Display of currently valid control number under the
Paperwork Reduction Act.
WHO MAY FILE AN INTERNATIONAL
APPLICATION
1.421 Applicant for international application.
1.422 When the inventor is dead.
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 1.423 When the inventor is insane or legally incapacitated.
1.424 [Reserved]
1.425 [Reserved]
THE INTERNATIONAL APPLICATION
1.431 International application requirements.
1.432 Designation of States by filing an international
application.
1.433 Physical requirements of international application.
1.434 The request.
1.435 The description.
1.436 The claims.
1.437 The drawings.
1.438 The abstract.
FEES
1.445 International application filing, processing and
search fees.
1.446 Refund of international application filing and
processing fees.
PRIORITY
1.451 The priority claim and priority document in an
international application.
1.452 Restoration of right of priority.
REPRESENTATION
1.455 Representation in international applications.
TRANSMITTAL OF RECORD COPY
1.461 Procedures for transmittal of record copy to the
International Bureau.
TIMING
1.465 Timing of application processing based on the
priority date.
1.468 Delays in meeting time limits.
AMENDMENTS
1.471 Corrections and amendments during international
processing.
1.472 Changes in person, name, or address of applicants
and inventors.
UNITY OF INVENTION
1.475 Unity of invention before the International
Searching Authority, the International Preliminary
Examining Authority and during the national stage.
1.476 Determination of unity of invention before the
International Searching Authority.1.477 Protest to lack of unity of invention before the
International Searching Authority.
INTERNATIONAL PRELIMINARY
EXAMINATION
1.480 Demand for international preliminary examination.
1.481 Payment of international preliminary examination
fees.
1.482 International preliminary examination fees.
1.484 Conduct of international preliminary examination.
1.485 Amendments by applicant during international
preliminary examination.
1.488 Determination of unity of invention before the
International Preliminary Examining Authority.
1.489 Protest to lack of unity of invention before the
International Preliminary Examining Authority.
NATIONAL STAGE
1.491 National stage commencement and entry.
1.492 National stage fees.
1.494 [Reserved]
1.495 Entering the national stage in the United States of
America.
1.496 Examination of international applications in the
national stage.
1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
1.499 Unity of invention during the national stage.
Subpart D - Ex Parte Reexamination of Patents
CITATION OF PRIOR ART
1.501 Citation of prior art in patent files.
1.502 Processing of prior art citations during an ex parte
reexamination proceeding.
REQUEST FOR EX PARTE REEXAMINATION
1.510 Request for ex parte reexamination.
1.515 Determination of the request for ex parte
reexamination.
1.520 Ex parte reexamination at the initiative of the
Director.
EX PARTE REEXAMINATION
1.525 Order for ex parte reexamination.
1.530 Statement by patent owner in ex parte
reexamination; amendment by patent owner in ex
parte or inter partes reexamination; inventorship
change in ex parte or inter partes reexamination.
1.535 Reply by third party requester in ex parte
reexamination.
1.540 Consideration of responses in ex parte
reexamination.
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 1.550 Conduct of ex parte reexamination proceedings.
1.552 Scope of reexamination in ex parte reexamination
proceedings.
1.555 Information material to patentability in ex parte
reexamination and inter partes reexamination
proceedings.
1.560 Interviews in ex parte reexamination proceedings.
1.565 Concurrent office proceedings which include an ex
parte reexamination proceeding.
CERTIFICATE
1.570 Issuance and publication of ex parte reexamination
certificate concludes ex parte reexamination
proceeding.
Subpart E - [Reserved]
Subpart F - Adjustment and Extension of Patent Term
ADJUSTMENT OF PATENT TERM DUE TO
EXAMINATION DELAY
1.701 Extension of patent term due to examination delay
under the Uruguay Round Agreements Act (original
applications, other than designs, filed on or after
June 8, 1995, and before May 29, 2000).
1.702 Grounds for adjustment of patent term due to
examination delay under the Patent Term Guarantee
Act of 1999 (original applications, other than
designs, filed on or after May 29, 2000).
1.703 Period of adjustment of patent term due to
examination delay.
1.704 Reduction of period of adjustment of patent term.
1.705 Patent term adjustment determination.
EXTENSION OF PATENT TERM DUE TO
REGULATORY REVIEW
1.710 Patents subject to extension of the patent term.
1.720 Conditions for extension of patent term.
1.730 Applicant for extension of patent term; signature
requirements.
1.740 Formal requirements for application for extension
of patent term; correction of informalities.
1.741 Complete application given a filing date; petition
procedure.
1.750 Determination of eligibility for extension of patent
term.
1.760 Interim extension of patent term under 35 U.S.C.
156(e)(2).
1.765 Duty of disclosure in patent term extension
proceedings.
1.770 Express withdrawal of application for extension of
patent term.1.775 Calculation of patent term extension for a human
drug, antibiotic drug, or human biological product.
1.776 Calculation of patent term extension for a food
additive or color additive.
1.777 Calculation of patent term extension for a medical
device.
1.778 Calculation of patent term extension for an animal
drug product.
1.779 Calculation of patent term extension for a veterinary
biological product.
1.780 Certificate or order of extension of patent term.
1.785 Multiple applications for extension of term of the
same patent or of different patents for the same
regulatory review period for a product.
1.790 Interim extension of patent term under 35 U.S.C.
156(d)(5).
1.791 Termination of interim extension granted prior to
regulatory approval of a product for commercial
marketing or use.
Subpart G - Biotechnology Invention Disclosures
DEPOSIT OF BIOLOGICAL MATERIAL
1.801 Biological material.
1.802 Need or opportunity to make a deposit.
1.803 Acceptable depository.
1.804 Time of making an original deposit.
1.805 Replacement or supplement of deposit.
1.806 Term of deposit.
1.807 Viability of deposit.
1.808 Furnishing of samples.
1.809 Examination procedures.
APPLICATION DISCLOSURES CONTAINING
NUCLEOTIDE AND/OR AMINO ACID
SEQUENCES
1.821 Nucleotide and/or amino acid sequence disclosures
in patent applications.
1.822 Symbols and format to be used for nucleotide and/or
amino acid sequence data.
1.823 Requirements for nucleotide and/or amino acid
sequences as part of the application.
1.824 Form and format for nucleotide and/or amino acid
sequence submissions in computer readable form.
1.825 Amendments to or replacement of sequence listing
and computer readable copy thereof.
Subpart H - Inter Partes Reexamination of Patents That
Issued From an Original Application Filed in the United
States on or After November 29, 1999
PRIOR ART CITATIONS
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 1.902 Processing of prior art citations during an inter
partes reexamination proceeding.
REQUIREMENTS FOR INTER PARTES
REEXAMINATION PROCEEDINGS
1.903 Service of papers on parties in inter partes
reexamination.
1.904 Notice of inter partes reexamination in Official
Gazette.
1.905 Submission of papers by the public in inter partes
reexamination.
1.906 Scope of reexamination in inter partes
reexamination proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file, and time for filing, a request
for inter partes reexamination.
1.915 Content of request for inter partes reexamination.
1.919 Filing date of request for inter partes reexamination.
1.923 Examiner’s determination on the request for inter
partes reexamination.
1.925 Partial refund if request for inter partes
reexamination is not ordered.
1.927 Petition to review refusal to order inter partes
reexamination.
INTER PARTES REEXAMINATION OF
PATENTS
1.931 Order for inter partes reexamination.
INFORMATION DISCLOSURE IN INTER
PARTES REEXAMINATION
1.933 Patent owner duty of disclosure in inter partes
reexamination proceedings.
OFFICE ACTIONS AND RESPONSES (BEFORE
THE EXAMINER) IN INTER PARTES
REEXAMINATION
1.935 Initial Office action usually accompanies order for
inter partes reexamination.
1.937 Conduct of inter partes reexamination.
1.939 Unauthorized papers in inter partes reexamination
1.941 Amendments by patent owner in inter partes
reexamination.
1.943 Requirements of responses, written comments, and
briefs in inter partes reexamination.
1.945 Response to Office action by patent owner in inter
partes reexamination.
1.947 Comments by third party requester to patent
owner’s response in inter partes reexamination.
1.948 Limitations on submission of prior art by third party
requester following the order for inter partes
reexamination.1.949 Examiner’s Office action closing prosecution in
inter partes reexamination.
1.951 Options after Office action closing prosecution in
inter partes reexamination.
1.953 Examiner’s Right of Appeal Notice in inter partes
reexamination.
INTERVIEWS PROHIBITED IN INTER PARTES
REEXAMINATION
1.955 Interviews prohibited in inter partes reexamination
proceedings.
EXTENSIONS OF TIME, TERMINATING OF
REEXAMINATION PROSECUTION, AND
PETITIONS TO REVIVE IN INTER PARTES
REEXAMINATION
1.956 Patent owner extensions of time in inter partes
reexamination.
1.957 Failure to file a timely, appropriate or complete
response or comment in inter partes reexamination.
1.958 Petition to revive inter partes reexamination
prosecution terminated for lack of patent owner
response.
APPEAL TO THE BOARD OF PATENT
APPEALS AND INTERFERENCES IN INTER
PARTES REEXAMINATION
1.959 Appeal in inter partes reexamination.
1.961
-
1.977[Reserved]
1.979 Return of Jurisdiction from the Board of Patent
Appeals and Interferences; termination of appeal
proceedings.
1.981 Reopening after a final decision of the Board of
Patent Appeals and Interferences.
APPEAL TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT IN
INTER PARTES REEXAMINATION
1.983 Appeal to the United States Court of Appeals for
the Federal Circuit in inter partes reexamination.
CONCURRENT PROCEEDINGS INVOLVING
SAME PATENT IN INTER PARTES
REEXAMINATION
1.985 Notification of prior or concurrent proceedings in
inter partes reexamination.
1.987 Suspension of inter partes reexamination proceeding
due to litigation.
1.989 Merger of concurrent reexamination proceedings.
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 1.991 Merger of concurrent reissue application and inter
partes reexamination proceeding.
1.993 Suspension of concurrent interference and inter
partes reexamination proceeding.
1.995 Third party requester’s participation rights
preserved in merged proceeding.
REEXAMINATION CERTIFICATE IN INTER
PARTES REEXAMINATION
1.997 Issuance and publication of inter partes
reexamination certificate concludes inter partes
reexamination proceeding.
PART 3   ASSIGNMENT, RECORDING AND
RIGHTS OF ASSIGNEE
PART 4   COMPLAINTS REGARDING INVENTION
PROMOTERS
PART 5   SECRECY OF CERTAIN INVENTIONS
AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
PART 10   REPRESENTATION OF OTHERS
BEFORE THE PATENT AND TRADEMARK
OFFICE
PART 11   REPRESENTATION OF OTHERS
BEFORE THE UNITED STATES PATENT AND
TRADEMARK OFFICE
Subpart A - General Provisions
GENERAL INFORMATION
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules.
Subpart B - Recognition To Practice Before the USPTO
PATENTS, TRADEMARKS, AND OTHER
NON-PATENT LAW
11.4 [Reserved]
11.5 Register of attorneys and agents in patent matters;
practice before the office.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters.
11.11 Administrative suspension, inactivation, resignation,
and readmission.11.12
-
11.13[Reserved]
11.14 Individuals who may practice before the Office in
trademarks and other non-patent matters.
11.15 Refusal to recognize a practitioner.
11.16
-
11.17[Reserved]
11.18 Signature and certificate for correspondence filed
in the Office.
Subpart C - Investigations and Disciplinary Proceedings;
Jurisdiction, Sanctions, Investigations, and Proceedings
PART 15   [Reserved]
PART 15a   [Reserved]
PART 41   PRACTICE BEFORE THE BOARD OF
PATENT APPEALS AND INTERFERENCES
Subpart A - General Provisions
Subpart B - Ex Parte Appeals
Subpart C - Inter Partes Appeals
Subpart D - Contested Cases
Subpart E - Patent Interferences
ADMINISTRATION
PART 102   DISCLOSURE OF GOVERNMENT
INFORMATION
Subpart A - Freedom of Information Act
Subpart B - Privacy Act
PART 104   LEGAL PROCESSES
Subpart A - General Provisions
Subpart B - Service of Process
Subpart C - Employee Testimony and Production of
Documents in Legal Proceedings
Subpart D - Employee Indemnification
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 Subpart E - Tort Claims
PROTECTION OF FOREIGN MASK WORKS
PART 150   REQUESTS FOR PRESIDENTIAL
PROCLAMATIONS PURSUANT TO 17 U.S.C.
902(a)(2)
SUBCHAPTER  — GENERAL
PART  - 1   RULES OF PRACTICE IN PATENT CASES
Subpart A  — General Provisions
GENERAL INFORMATION AND
CORRESPONDENCE
§  1.1 Addresses for non-trademark correspondence
with the United States Patent and Trademark
Office.
(a)  In general.  Except as provided in paragraphs
(a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all
correspondence intended for the United States Patent and
Trademark Office must be addressed to either “Director
of the United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, Virginia 22313-1450” or to
specific areas within the Office as set out in paragraphs
(a)(1), and (a)(3)(iii) of this section. When appropriate,
correspondence should also be marked for the attention
of a particular office or individual.
(1)   Patent correspondence .
(i)   In general. All correspondence concerning
patent matters processed by organizations
reporting to the Commissioner for Patents should
be addressed to: Commissioner for Patents, PO
Box 1450, Alexandria, Virginia 22313-1450.
(ii) Board of Patent Appeals and
Interferences . See § 41.10  of this title. Notices
of appeal, appeal briefs, reply briefs, requests for
oral hearing, as well as all other correspondence
in an application or a patent involved in an appeal
to the Board for which an address is not otherwise
specified, should be addressed as set out in
paragraph (a)(1)(i) of this section.
(2) [Reserved]
(3)   Office of General Counsel correspondence.—
(i)  Litigation and service .  Correspondence
relating to pending litigation or otherwise withinthe scope of part 104 of this title shall be
addressed as provided in § 104.2 .
(ii)   Disciplinary proceedings .
Correspondence to counsel for the Director of the
Office of Enrollment and Discipline relating to
disciplinary proceedings pending before a Hearing
Officer or the Director shall be mailed to: Mail
Stop 8, Office of the Solicitor, United States
Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450.
(iii)   Solicitor, in general. Correspondence to
the Office of the Solicitor not otherwise provided
for shall be addressed to: Mail Stop 8, Office of
the Solicitor, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia
22313-1450.
(iv)   General Counsel. Correspondence to the
Office of the General Counsel not otherwise
provided for, including correspondence to the
General Counsel relating to disciplinary
proceedings, shall be addressed to: General
Counsel, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia
22313-1450.
(v)   Improper correspondence .
Correspondence improperly addressed to a Post
Office Box specified in paragraphs (a)(3)(i) and
(a)(3)(ii) of this section will not be filed elsewhere
in the United States Patent and Trademark Office,
and may be returned.
(4)   Office of Public Records correspondence .
(i)  Assignments.  All patent-related documents
submitted by mail to be recorded by Assignment
Services Division, except for documents filed
together with a new application, should be
addressed to: Mail Stop Assignment Recordation
Services, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450. See  § 3.27.
(ii)   Documents . All requests for certified or
uncertified copies of patent documents should be
addressed to: Mail Stop Document Services,
Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450.
(5)  Office of Enrollment and Discipline
correspondence . All correspondence directed to the
Office of Enrollment and Discipline concerning
enrollment, registration, and investigation matters
should be addressed to Mail Stop OED, Director of the
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 United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450.
(b)   Patent Cooperation Treaty . Letters and other
communications relating to international applications
during the international stage and prior to the assignment
of a national serial number should be additionally marked
“Mail Stop PCT.”
(c)    For reexamination proceedings .
(1) Requests for ex parte  reexamination (original
request papers) and all subsequent ex parte 
reexamination correspondence filed in the Office, other
than correspondence to the Office of the General
Counsel pursuant to § 1.1(a)(3) and § 1.302 (c), should
be additionally marked “Mail Stop  Ex Parte Reexam.”
(2) Requests for inter partes  reexamination
(original request papers) and all subsequent inter partes 
reexamination correspondence filed in the Office, other
than correspondence to the Office of the General
Counsel pursuant to § 1.1(a)(3) and § 1.302 (c), should
be additionally marked “Mail Stop  Inter partes
Reexam.”
(d) Payments of maintenance fees in patents not
submitted electronically over the Internet, and
correspondence related to maintenance fees may be
addressed to: Director of the United States Patent and
Trademark Office, Attn: Maintenance Fee, 2051 Jamieson
Avenue, Suite 300, Alexandria, Virginia 22314.
(e)   Patent term extension . All applications for
extension of patent term under 35 U.S.C. 156 and any
communications relating thereto intended for the United
States Patent and Trademark Office should be additionally
marked “Mail Stop Patent Ext.” When appropriate, the
communication should also be marked to the attention of
a particular individual, as where a decision has been
rendered.
(f) [Reserved]
[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724,
Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec. 12,
1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24,
1987; para. (g) added, 53 FR 16413, May 9,1988; para. (h) added, 54
FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised
and para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996,
effective Dec. 2, 1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999,
effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR 39447, July
31, 2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para (a)(2) corrected, 68 FR 19371, Apr. 21,
2003, effective May 1, 2003; section heading, para. (a) introductory
text and para. (a)(4) revised, para. (a)(2) removed and reserved, and
note following para. (f) removed, 68 FR 48286, Aug. 13, 2003, effective
Sept. 12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective
Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) removed and reserved,
69 FR 29865, May 26, 2004, effective June 25, 2004; para. (a)
introductory text revised and para. (a)(5) added, 69 FR 35427, June 24,
2004, effective July 26, 2004; para. (a)(1)(ii) revised and para. (a)(1)(iii)
removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para.(c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007;
para. (d) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008;
paras. (a)(3)(ii) and (a)(3)(iii) revised, 75 FR 36294, June 25, 2010,
effective June 25, 2010]
§  1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should
be transacted in writing. The personal attendance of
applicants or their attorneys or agents at the Patent and
Trademark Office is unnecessary. The action of the Patent
and Trademark Office will be based exclusively on the
written record in the Office. No attention will be paid to
any alleged oral promise, stipulation, or understanding in
relation to which there is disagreement or doubt.
§  1.3 Business to be conducted with decorum and
courtesy.
Applicants and their attorneys or agents are required to
conduct their business with the United States Patent and
Trademark Office with decorum and courtesy. Papers
presented in violation of this requirement will be
submitted to the Director and will not be entered. A notice
of the non-entry of the paper will be provided. Complaints
against examiners and other employees must be made in
correspondence separate from other papers.
[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
68 FR 38611, June 30, 2003, effective July 30, 2003]
§  1.4 Nature of correspondence and signature
requirements.
(a) Correspondence with the Patent and Trademark
Office comprises:
(1) Correspondence relating to services and
facilities of the Office, such as general inquiries,
requests for publications supplied by the Office, orders
for printed copies of patents, orders for copies of
records, transmission of assignments for recording, and
the like, and
(2) Correspondence in and relating to a particular
application or other proceeding in the Office. See
particularly the rules relating to the filing, processing,
or other proceedings of national applications in subpart
B, §§ 1.31 to 1.378 ; of international applications in
subpart C, §§ 1.401  to 1.499 ; of ex parte 
reexaminations of patents in subpart D, §§ 1.501  to
1.570 ; of extension of patent term in subpart F, §§
1.710  to 1.785 ; of inter partes reexaminations of patents
in subpart H, §§ 1.902  to 1.997 ; and of the Board of
Patent Appeals and Interferences in part 41  of this title.
(b) Since each file must be complete in itself, a
separate copy of every paper to be filed in a patent, patent
file, or other proceeding must be furnished for each file
to which the paper pertains, even though the contents of
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 the papers filed in two or more files may be identical. The
filing of duplicate copies of correspondence in the file of
an application, patent, or other proceeding should be
avoided, except in situations in which the Office requires
the filing of duplicate copies. The Office may dispose of
duplicate copies of correspondence in the file of an
application, patent, or other proceeding.
(c) Since different matters may be considered by
different branches or sections of the United States Patent
and Trademark Office, each distinct subject, inquiry or
order must be contained in a separate paper to avoid
confusion and delay in answering papers dealing with
different subjects.
(d)
(1)  Handwritten signature . Each piece of
correspondence, except as provided in paragraphs
(d)(2), (d)(3), (e) and (f) of this section, filed in an
application, patent file, or other proceeding in the
Office which requires a person’s signature, must:
(i) Be an original, that is, have an original
handwritten signature personally signed, in
permanent dark ink or its equivalent, by that
person; or
(ii) Be a direct or indirect copy, such as a
photocopy or facsimile transmission (§ 1.6(d)),
of an original. In the event that a copy of the
original is filed, the original should be retained as
evidence of authenticity. If a question of
authenticity arises, the Office may require
submission of the original.
(2) S-signature . An S-signature is a signature
inserted between forward slash marks, but not a
handwritten signature as defined by § 1.4(d)(1). An
S-signature includes any signature made by electronic
or mechanical means, and any other mode of making
or applying a signature not covered by a handwritten
signature of § 1.4(d)(1). Correspondence being filed
in the Office in paper, by facsimile transmission as
provided in § 1.6(d), or via the Office electronic filing
system as an attachment as provided in § 1.6(a)(4), for
a patent application, patent, or a reexamination
proceeding may be S-signature signed instead of being
personally signed ( i.e., with a handwritten signature)
as provided for in paragraph (d)(1) of this section. The
requirements for an S-signature under this paragraph
(d)(2) of this section are as follows.
(i) The S-signature must consist only of letters,
or Arabic numerals, or both, with appropriate
spaces and commas, periods, apostrophes, or
hyphens for punctuation, and the person signing
the correspondence must insert his or her own
S-signature with a first single forward slash markbefore, and a second single forward slash mark
after, the S-signature ( e.g., /Dr. James T. Jones,
Jr./); and
(ii) A patent practitioner (§ 1.32(a)(1)), signing
pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must
supply his/her registration number either as part
of the S-signature, or immediately below or
adjacent to the S-signature. The number (#)
character may be used only as part of the
S-signature when appearing before a practitioner’s
registration number; otherwise the number
character may not be used in an S-signature.
(iii) The signer’s name must be:
(A) Presented in printed or typed form
preferably immediately below or adjacent
the S-signature, and
(B) Reasonably specific enough so that
the identity of the signer can be readily
recognized.
(3) Forms . The Office provides forms to the public
to use in certain situations to assist in the filing of
correspondence for a certain purpose and to meet
certain requirements for patent applications and
proceedings. Use of the forms for purposes for which
they were not designed is prohibited. No changes to
certification statements on the Office forms (e.g. , oath
or declaration forms, terminal disclaimer forms, petition
forms, and nonpublication request forms) may be made.
The existing text of a form, other than a certification
statement, may be modified, deleted, or added to, if all
text identifying the form as an Office form is removed.
The presentation to the Office (whether by signing,
filing, submitting, or later advocating) of any Office
form with text identifying the form as an Office form
by a party, whether a practitioner or non-practitioner,
constitutes a certification under § 11.18 (b) of this
chapter that the existing text and any certification
statements on the form have not been altered other than
permitted by EFS-Web customization.
(4) Certifications . (i) Section 11.18 certifications :
The presentation to the Office (whether by signing,
filing, submitting, or later advocating) of any paper by
a party, whether a practitioner or non-practitioner,
constitutes a certification under § 11.18 (b) of this
subchapter. Violations of § 11.18 (b)(2) of this
subchapter by a party, whether a practitioner or
non-practitioner, may result in the imposition of
sanctions under § 11.18(c)  of this subchapter. Any
practitioner violating § 11.18 (b) of this subchapter may
also be subject to disciplinary action. See  §§ 11.18 (d)
and 11.804(b)(9) of this subchapter.
(ii)   Certifications as to the signature :
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 (A)  Of another : A person submitting
a document signed by another under
paragraph (d)(2) of this section is
obligated to have a reasonable basis to
believe that the person whose signature is
present on the document was actually
inserted by that person, and should retain
evidence of authenticity of the signature.
(B)   Self certification : The person
inserting a signature under paragraph
(d)(2) of this section in a document
submitted to the Office certifies that the
inserted signature appearing in the
document is his or her own signature.
(C)  Sanctions  : Violations of the
certifications as to the signature of another
or a person’s own signature, set forth in
paragraphs (d)(4)(ii)(A) and (B) of this
section, may result in the imposition of
sanctions under § 11.18 (c) and (d) of this
chapter.
(e) Correspondence requiring a person’s signature and
relating to registration practice before the Patent and
Trademark Office in patent cases, enrollment and
disciplinary investigations, or disciplinary proceedings
must be submitted with an original hand written signature
personally signed in permanent dark ink or its equivalent
by that person.
(f) When a document that is required by statute to be
certified must be filed, a copy, including a photocopy or
facsimile transmission, of the certification is not
acceptable.
(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.
(h)  Ratification/confirmation/evidence of authenticity:
The Office may require ratification, confirmation (which
includes submission of a duplicate document but with a
proper signature), or evidence of authenticity of a
signature, such as when the Office has reasonable doubt
as to the authenticity (veracity) of the signature,  e.g.,
where there are variations of a signature, or where thesignature and the typed or printed name, do not clearly
identify the person signing.
[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978;
para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a),
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53
FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added,
58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised
& para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
paras. (a)(2) and (d)(1) revised, 64 FR 48900, Sept. 8, 1999, effective
Oct. 30, 1999; paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; para. (a)(2) revised, 65 FR 76756, Dec. 7, 2000,
effective Feb. 5, 2001; para. (d)(1)(iii)(A) amended, 67 FR 79520, Dec.
30, 2002, effective Dec. 30, 2002; para. (d)(1)(iii)(B) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; para. (d)(1)(iii) removed
and reserved, paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and
(d)(1)(ii) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003;
para. (a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; paras. (d) and (e) revised and para. (h) added, 69 FR 56481, Sept.
21, 2004, effective Sept. 21, 2004; para. (d)(2) introductory text and
paragraph (d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective
Nov. 25, 2005; paras. (d)(2) introductory text, (d)(3), and (d)(4)(ii)
revised, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007; paras. (d)(3)
and (d)(4)(i) revised, para. (d)(4)(ii)(C) added, 73 FR 47650, Aug. 14,
2008, effective Sept. 15, 2008]
§  1.5 Identification of patent, patent application, or
patent-related proceeding.
(a) No correspondence relating to an application
should be filed prior to receipt of the application number
from the Patent and Trademark Office. When a letter
directed to the Patent and Trademark Office concerns a
previously filed application for a patent, it must identify
on the top page in a conspicuous location, the application
number (consisting of the series code and the serial
number; e.g., 07/123,456), or the serial number and filing
date assigned to that application by the Patent and
Trademark Office, or the international application number
of the international application. Any correspondence not
containing such identification will be returned to the
sender where a return address is available. The returned
correspondence will be accompanied with a cover letter
which will indicate to the sender that if the returned
correspondence is resubmitted to the Patent and
Trademark Office within two weeks of the mail date on
the cover letter, the original date of receipt of the
correspondence will be considered by the Patent and
Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate
of Mailing or Transmission procedure under § 1.8  or the
Express Mail procedure under § 1.10  for resubmissions
of returned correspondence if they desire to have the
benefit of the date of deposit in the United States Postal
Service. If the returned correspondence is not resubmitted
within the two-week period, the date of receipt of the
resubmission will be considered to be the date of receipt
of the correspondence. The two-week period to resubmit
the returned correspondence will not be extended. In
addition to the application number, all letters directed to
the Patent and Trademark Office concerning applications
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 for patent should also state the name of the applicant, the
title of the invention, the date of filing the same, and, if
known, the group art unit or other unit within the Patent
and Trademark Office responsible for considering the
letter and the name of the examiner or other person to
which it has been assigned.
(b) When the letter concerns a patent other than for
purposes of paying a maintenance fee, it should state the
number and date of issue of the patent, the name of the
patentee, and the title of the invention. For letters
concerning payment of a maintenance fee in a patent, see
the provisions of § 1.366 (c).
(c) [Reserved]
(d) A letter relating to a reexamination proceeding
should identify it as such by the number of the patent
undergoing reexamination, the reexamination request
control number assigned to such proceeding, and, if
known, the group art unit and name of the examiner to
which it been assigned.
(e) [Reserved]
(f) When a paper concerns a provisional application,
it should identify the application as such and include the
application number.
[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May 29, 1981;
para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49
FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53
FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 58
FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (f) added, 61
FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) amended,
61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (c) revised,
64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; section heading
revised, para. (c) removed and reserved, 68 FR 48286, Aug. 13, 2003,
effective Sept. 12, 2003; para. (e) removed and reserved, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004]
§  1.6 Receipt of correspondence.
(a)  Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark
Office is stamped with the date of receipt except as
follows:
(1) The Patent and Trademark Office is not open
for the filing of correspondence on any day that is a
Saturday, Sunday, or Federal holiday within the District
of Columbia. Except for correspondence transmitted
by facsimile under paragraph (a)(3) of this section, or
filed electronically under paragraph (a)(4) of this
section, no correspondence is received in the Office on
Saturdays, Sundays, or Federal holidays within the
District of Columbia.
(2) Correspondence filed in accordance with § 1.10
will be stamped with the date of deposit as “Express
Mail” with the United States Postal Service.
(3) Correspondence transmitted by facsimile to the
Patent and Trademark Office will be stamped with thedate on which the complete transmission is received in
the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District
of Columbia, in which case the date stamped will be
the next succeeding day which is not a Saturday,
Sunday, or Federal holiday within the District of
Columbia.
(4) Correspondence may be submitted using the
Office electronic filing system only in accordance with
the Office electronic filing system requirements.
Correspondence submitted to the Office by way of the
Office electronic filing system will be accorded a
receipt date, which is the date the correspondence is
received at the correspondence address for the Office
set forth in § 1.1 when it was officially submitted.
(b) [Reserved]
(c)  Correspondence delivered by hand . In addition
to being mailed, correspondence may be delivered by
hand during hours the Office is open to receive
correspondence.
(d) Facsimile transmission . Except in the cases
enumerated below, correspondence, including
authorizations to charge a deposit account, may be
transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete
transmission is received in the United States Patent and
Trademark Office, unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia. See
§ 1.6 (a)(3). To facilitate proper processing, each
transmission session should be limited to correspondence
to be filed in a single application or other proceeding
before the United States Patent and Trademark Office.
The application number of a patent application, the control
number of a reexamination proceeding, the interference
number of an interference proceeding, or the patent
number of a patent should be entered as a part of the
sender’s identification on a facsimile cover sheet.
Facsimile transmissions are not permitted and, if
submitted, will not be accorded a date of receipt in the
following situations:
(1) Correspondence as specified in § 1.4 (e),
requiring an original signature;
(2) Certified documents as specified in § 1.4 (f);
(3) Correspondence which cannot receive the
benefit of the certificate of mailing or transmission as
specified in § 1.8 (a)(2)(i)(A) through (D) and (F), and
§ 1.8 (a)(2)(iii)(A), except that a continued prosecution
application under § 1.53 (d) may be transmitted to the
Office by facsimile;
(4) Color drawings submitted under §§ 1.81, 1.83
through 1.85, 1.152 , 1.165 , 1.173 , or 1.437 ;
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 (5) A request for reexamination under § 1.510  or
§ 1.913 ;
(6) Correspondence to be filed in a patent
application subject to a secrecy order under §§ 5.1
through 5.5 of this chapter and directly related to the
secrecy order content of the application;
(7) [Reserved]
(8) [Reserved]
(9) In contested cases before the Board of Patent
Appeals and Interferences except as the Board may
expressly authorize.
(e) [Reserved]
(f) Facsimile transmission of a patent application
under § 1.53 (d) . In the event that the Office has no
evidence of receipt of an application under § 1.53 (d) (a
continued prosecution application) transmitted to the
Office by facsimile transmission, the party who
transmitted the application under § 1.53 (d) may petition
the Director to accord the application under § 1.53 (d) a
filing date as of the date the application under § 1.53 (d)
is shown to have been transmitted to and received in the
Office,
(1) Provided that the party who transmitted such
application under § 1.53 (d):
(i) Informs the Office of the previous
transmission of the application under § 1.53 (d)
promptly after becoming aware that the Office
has no evidence of receipt of the application under
§ 1.53 (d);
(ii) Supplies an additional copy of the
previously transmitted application under § 1.53 (d);
and
(iii) Includes a statement which attests on a
personal knowledge basis or to the satisfaction of
the Director to the previous transmission of the
application under § 1.53 (d) and is accompanied
by a copy of the sending unit’s report confirming
transmission of the application under § 1.53 (d) or
evidence that came into being after the complete
transmission and within one business day of the
complete transmission of the application under
§ 1.53 (d).
(2) The Office may require additional evidence to
determine if the application under § 1.53 (d) was
transmitted to and received in the Office on the date in
question.
(g) Submission of the national stage correspondence
required by § 1.495  via the Office electronic filing system .
In the event that the Office has no evidence of receipt of
the national stage correspondence required by § 1.495 ,which was submitted to the Office by the Office electronic
filing system, the party who submitted the correspondence
may petition the Director to accord the national stage
correspondence a receipt date as of the date the
correspondence is shown to have been officially submitted
to the Office.
(1) The petition of this paragraph (g) requires that
the party who submitted such national stage
correspondence:
(i) Informs the Office of the previous
submission of the correspondence promptly after
becoming aware that the Office has no evidence
of receipt of the correspondence under § 1.495 ;
(ii) Supplies an additional copy of the
previously submitted correspondence;
(iii) Includes a statement that attests on a
personal knowledge basis, or to the satisfaction
of the Director, that the correspondence was
previously officially submitted; and
(iv) Supplies a copy of an acknowledgment
receipt generated by the Office electronic filing
system, or equivalent evidence, confirming the
submission to support the statement of paragraph
(g)(1)(iii) of this section.
(2) The Office may require additional evidence to
determine if the national stage correspondence was
submitted to the Office on the date in question.
[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR
4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr.
1, 1984; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993;
para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996;
paras. (d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para (a)(1) revised and para. (a)(4)
added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; para.(d)(9)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(5)
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b)
removed and reserved and paras. (e), (f) & (f)(1)(iii) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(4), (d)(7) and
(d)(8) removed and reserved, and paras. (d), introductory text, (d)(3),
and (d)(4) revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12,
2003; para. (d)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.
13, 2004; para. (d)(4) revised and para. (e) removed and reserved, 69
FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; paras. (a)(4) & (g)
added, 72 FR 2770, Jan. 23, 2007, effective Jan. 23, 2007]
§  1.7 Times for taking action; Expiration on
Saturday, Sunday or Federal holiday.
(a) Whenever periods of time are specified in this part
in days, calendar days are intended. When the day, or the
last day fixed by statute or by or under this part for taking
any action or paying any fee in the United States Patent
and Trademark Office falls on Saturday, Sunday, or on a
Federal holiday within the District of Columbia, the action
may be taken, or the fee paid, on the next succeeding
business day which is not a Saturday, Sunday, or a Federal
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 holiday. See § 1.304  for time for appeal or for
commencing civil action.
(b) If the day that is twelve months after the filing
date of a provisional application under 35 U .S.C. 111(b)
and § 1.53(c)  falls on Saturday, Sunday, or on a Federal
holiday within the District of Columbia, the period of
pendency shall be extended to the next succeeding secular
or business day which is not a Saturday, Sunday, or a
Federal holiday.
[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected
48 FR 4285, Jan. 31, 1983; revised, 65 FR 14865, Mar. 20, 2000,
effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000)]
§  1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph
(a)(2) of this section or as otherwise expressly excluded
in this chapter, correspondence required to be filed in the
U.S. Patent and Trademark Office within a set period of
time will be considered as being timely filed if the
procedure described in this section is followed. The actual
date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being
timely filed if:
(i) The correspondence is mailed or
transmitted prior to expiration of the set period of
time by being:
(A) Addressed as set out in § 1.1(a)
and deposited with the U.S. Postal Service
with sufficient postage as first class mail;
(B) Transmitted by facsimile to the
Patent and Trademark Office in
accordance with § 1.6 (d); or
(C) Transmitted via the Office
electronic filing system in accordance with
§ 1.6(a)(4); and
(ii) The correspondence includes a certificate
for each piece of correspondence stating the date
of deposit or transmission. The person signing the
certificate should have reasonable basis to expect
that the correspondence would be mailed or
transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of
this section does not apply to, and no benefit will be
given to a Certificate of Mailing or Transmission on,
the following:
(i)  Relative to Patents and Patent
Applications—
(A) The filing of a national patent
application specification and drawing or
other correspondence for the purpose of
obtaining an application filing date,including a request for a continued
prosecution application under § 1.53 (d);
(B) [Reserved]
(C) Papers filed in contested cases
before the Board of Patent Appeals and
Interferences, which are governed by §
41.106  (f) of this title;
(D) The filing of an international
application for patent;
(E) The filing of correspondence in an
international application before the U.S.
Receiving Office, the U.S. International
Searching Authority, or the U.S.
International Preliminary Examining
Authority;
(F) The filing of a copy of the
international application and the basic
national fee necessary to enter the national
stage, as specified in § 1.495(b) .
(ii)  [Reserved]
(iii)  Relative to Disciplinary Proceedings—
(A) Correspondence filed in
connection with a disciplinary proceeding
under part 11 of this chapter.
(B) [Reserved]
(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
U.S. Patent and Trademark Office after a reasonable
amount of time has elapsed from the time of mailing or
transmitting of the correspondence, or after the application
is held to be abandoned, or after the proceeding is
dismissed or decided with prejudice, or the prosecution
of a reexamination proceeding is terminated pursuant to
§ 1.550 (d) or § 1.957 (b) or limited pursuant to § 1.957 (c),
or a requester paper is refused consideration pursuant to
§ 1.957 (a), 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 that attests on a personal
knowledge basis or to the satisfaction of the Director
to the previous timely mailing, transmission or
submission. If the correspondence was sent by facsimile
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 transmission, a copy of the sending unit’s report
confirming transmission may be used to support this
statement. If the correspondence was transmitted via
the Office electronic filing system, a copy of an
acknowledgment receipt generated by the Office
electronic filing system confirming submission may
be used to support this statement.
(c) The Office may require additional evidence to
determine if the correspondence was timely filed.
[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para.
(a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48
FR 2708, Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective
Feb. 11, 1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8,
1985; 52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR
37588, Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR 54494,
Oct. 22, 1993, effective Nov. 22, 1993; para. (a) revised, 61 FR 56439,
Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised;
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(2)(i)(F)
revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b)(3)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.
(a)(2)(ii) removed and reserved, 68 FR 48286, Aug. 13, 2003, effective
Sept. 12, 2003; para. (a)(2)(i)(B) removed and reserved and para.
(a)(2)(i)(C) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 2004, effective
Oct. 21, 2004; paras. (a)(1)(i) & (b)(3) revised, 72 FR 2770, Jan. 23,
2007, effective Jan. 23, 2007; para. (b) introductory text revised, 72 FR
18892, Apr. 16, 2007, effective May 16, 2007; para. (a)(2)(iii)(A)
revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§  1.9 Definitions.
(a)
(1) A national application as used in this chapter
means a U.S. application for patent which was either
filed in the Office under 35 U .S.C. 111 , or which
entered the national stage from an international
application after compliance with 35 U .S.C. 371 .
(2) A provisional application as used in this chapter
means a U.S. national application for patent filed in
the Office under 35 U .S.C. 111 (b).
(3) A nonprovisional application as used in this
chapter means a U.S. national application for patent
which was either filed in the Office under 35 U .S.C.
111(a), or which entered the national stage from an
international application after compliance with 35
U.S.C. 371 .
(b) An international application as used in this chapter
means an international application for patent filed under
the Patent Cooperation Treaty prior to entering national
processing at the Designated Office stage.
(c) A published application as used in this chapter
means an application for patent which has been published
under 35 U.S.C. 122(b) .
(d) [Reserved]
(e) [Reserved]
(f) [Reserved](g) For definitions in Board of Patent Appeals and
Interferences proceedings, see part 41  of this title.
(h) A Federal holiday within the District of Columbia
as used in this chapter means any day, except Saturdays
and Sundays, when the Patent and Trademark Office is
officially closed for business for the entire day.
(i) National security classified as used in this chapter
means specifically authorized under criteria established
by an Act of Congress or Executive Order to be kept
secret in the interest of national defense or foreign policy
and, in fact, properly classified pursuant to such Act of
Congress or Executive Order.
(j) Director as used in this chapter, except for part 11
of this chapter, means the Under Secretary of Commerce
for Intellectual Property and Director of the United States
Patent and Trademark Office.
(k) Paper as used in this chapter means a document
that may exist in electronic form, or in physical form, and
therefore does not necessarily imply physical sheets of
paper.
[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982,
effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1,
1982; para. (d), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984;
para. (g), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para.
(d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para.
(a) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para.
(h) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras.
(d) & (f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
paras. (c)-(f) removed and reserved and para. (i) added, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR 57024,
Sept. 20, 2000, effective Nov. 29, 2000; para. (j) added, 68 FR 14332,
Mar. 25, 2003, effective May 1, 2003; para. (k) added, 68 FR 38611,
June 30, 2003, effective July 30, 2003; para. (g) revised, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004; para. (j) revised, 73 FR 47650,
Aug. 14, 2008, effective Sept. 15, 2008]
§  1.10 Filing of correspondence by “Express Mail.”
(a)
(1) Any correspondence received by the U.S. Patent
and Trademark Office (USPTO) that was delivered by
the “Express Mail Post Office to Addressee” service
of the United States Postal Service (USPS) will be
considered filed with the USPTO on the date of deposit
with the USPS.
(2) The date of deposit with USPS is shown by the
“date in” on the “Express Mail” label or other official
USPS notation. If the USPS deposit date cannot be
determined, the correspondence will be accorded the
USPTO receipt date as the filing date. See § 1.6 (a).
(b) Correspondence should be deposited directly with
an employee of the USPS to ensure that the person
depositing the correspondence receives a legible copy of
the “Express Mail” mailing label with the “date-in” clearly
marked. Persons dealing indirectly with the employees
of the USPS (such as by deposit in an “Express Mail”
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 drop box) do so at the risk of not receiving a copy of the
“Express Mail” mailing label with the desired “date-in”
clearly marked. The paper(s) or fee(s) that constitute the
correspondence should also include the “Express Mail”
mailing label number thereon. See paragraphs (c), (d) and
(e) of this section.
(c) Any person filing correspondence under this
section that was received by the Office and delivered by
the “Express Mail Post Office to Addressee” service of
the USPS, who can show that there is a discrepancy
between the filing date accorded by the Office to the
correspondence and the date of deposit as shown by the
“date-in” on the “Express Mail” mailing label or other
official USPS notation, may petition the Director to accord
the correspondence a filing date as of the “date-in” on the
“Express Mail” mailing label or other official USPS
notation, provided that:
(1) The petition is filed promptly after the person
becomes aware that the Office has accorded, or will
accord, a filing date other than the USPS deposit date;
(2) The number of the “Express Mail” mailing label
was placed on the paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by
“Express Mail;” and
(3) The petition includes a true copy of the “Express
Mail” mailing label showing the “date-in,” and of any
other official notation by the USPS relied upon to show
the date of deposit.
(d) Any person filing correspondence under this
section that was received by the Office and delivered by
the “Express Mail Post Office to Addressee” service of
the USPS, who can show that the “date-in” on the
“Express Mail” mailing label or other official notation
entered by the USPS was incorrectly entered or omitted
by the USPS, may petition the Director to accord the
correspondence a filing date as of the date the
correspondence is shown to have been deposited with the
USPS, provided that:
(1) The petition is filed promptly after the person
becomes aware that the Office has accorded, or will
accord, a filing date based upon an incorrect entry by
the USPS;
(2) The number of the “Express Mail” mailing label
was placed on the paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by
“Express Mail”; and
(3) The petition includes a showing which
establishes, to the satisfaction of the Director, that the
requested filing date was the date the correspondence
was deposited in the “Express Mail Post Office to
Addressee” service prior to the last scheduled pickup
for that day. Any showing pursuant to this paragraphmust be corroborated by evidence from the USPS or
that came into being after deposit and within one
business day of the deposit of the correspondence in
the “Express Mail Post Office to Addressee” service
of the USPS.
(e) Any person mailing correspondence addressed as
set out in § 1.1 (a) to the Office with sufficient postage
utilizing the “Express Mail Post Office to Addressee”
service of the USPS but not received by the Office, may
petition the Director to consider such correspondence
filed in the Office on the USPS deposit date, provided
that:
(1) The petition is filed promptly after the person
becomes aware that the Office has no evidence of
receipt of the correspondence;
(2) The number of the “Express Mail” mailing label
was placed on the paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by
“Express Mail”;
(3) The petition includes a copy of the originally
deposited paper(s) or fee(s) that constitute the
correspondence showing the number of the “Express
Mail” mailing label thereon, a copy of any returned
postcard receipt, a copy of the “Express Mail” mailing
label showing the “date-in,” a copy of any other official
notation by the USPS relied upon to show the date of
deposit, and, if the requested filing date is a date other
than the “date-in” on the “Express Mail” mailing label
or other official notation entered by the USPS, a
showing pursuant to paragraph (d)(3) of this section
that the requested filing date was the date the
correspondence was deposited in the “Express Mail
Post Office to Addressee” service prior to the last
scheduled pickup for that day; and
(4) The petition includes a statement which
establishes, to the satisfaction of the Director, the
original deposit of the correspondence and that the
copies of the correspondence, the copy of the “Express
Mail” mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS
are true copies of the originally mailed correspondence,
original “Express Mail” mailing label, returned postcard
receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to
determine if the correspondence was deposited as
“Express Mail” with the USPS on the date in question.
(g) Any person who mails correspondence addressed
as set out in § 1.1 (a) to the Office with sufficient postage
utilizing the “Express Mail Post Office to Addressee”
service of the USPS, but has the correspondence returned
by the USPS due to an interruption or emergency in
“Express Mail” service, may petition the Director to
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 consider such correspondence as filed on a particular date
in the Office, provided that:
(1) The petition is filed promptly after the person
becomes aware of the return of the correspondence;
(2) The number of the “Express Mail” mailing label
was placed on the paper(s) or fee(s) that constitute the
correspondence prior to the original mailing by
“Express Mail”;
(3) The petition includes the original
correspondence or a copy of the original
correspondence showing the number of the “Express
Mail” mailing label thereon and a copy of the “Express
Mail” mailing label showing the “date-in”; and
(4) The petition includes a statement which
establishes, to the satisfaction of the Director, the
original deposit of the correspondence and that the
correspondence or copy of the correspondence is the
original correspondence or a true copy of the
correspondence originally deposited with the USPS on
the requested filing date. The Office may require
additional evidence to determine if the correspondence
was returned by the USPS due to an interruption or
emergency in “Express Mail” service.
(h) Any person who attempts to mail correspondence
addressed as set out in §  1.1 (a) to the Office with
sufficient postage utilizing the “Express Mail Post Office
to Addressee” service of the USPS, but has the
correspondence refused by an employee of the USPS due
to an interruption or emergency in “Express Mail” service,
may petition the Director to consider such correspondence
as filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person
becomes aware of the refusal of the correspondence;
(2) The number of the “Express Mail” mailing label
was placed on the paper(s) or fee(s) that constitute the
correspondence prior to the attempted mailing by
“Express Mail”;
(3) The petition includes the original
correspondence or a copy of the original
correspondence showing the number of the “Express
Mail” mailing label thereon; and
(4) The petition includes a statement by the person
who originally attempted to deposit the correspondence
with the USPS which establishes, to the satisfaction of
the Director, the original attempt to deposit the
correspondence and that the correspondence or copy
of the correspondence is the original correspondence
or a true copy of the correspondence originally
attempted to be deposited with the USPS on the
requested filing date. The Office may require additional
evidence to determine if the correspondence wasrefused by an employee of the USPS due to an
interruption or emergency in “Express Mail” service.
(i) Any person attempting to file correspondence under
this section that was unable to be deposited with the USPS
due to an interruption or emergency in “Express Mail”
service which has been so designated by the Director,
may petition the Director to consider such correspondence
as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by
the Director promptly after the person becomes aware
of the designated interruption or emergency in “Express
Mail” service;
(2) The petition includes the original
correspondence or a copy of the original
correspondence; and
(3) The petition includes a statement which
establishes, to the satisfaction of the Director, that the
correspondence would have been deposited with the
USPS but for the designated interruption or emergency
in “Express Mail” service, and that the correspondence
or copy of the correspondence is the original
correspondence or a true copy of the correspondence
originally attempted to be deposited with the USPS on
the requested filing date.
[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983; 48
FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984,
effective Apr. 1, 1984; paras. (a)-(c) revised and paras. (d) - (f) added,
61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)
revised, 67 FR 36099, May 23, 2002, effective June 24, 2002; paras.
(c), (d), (d)(3), (e) & (e)(4) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (a)(1) revised, 68 FR 48286, Aug. 13, 2003,
effective Sept. 12, 2003; paras. (g) through (i) added, 69 FR 56481,
Sept. 21, 2004, effective Sept. 21, 2004]
RECORDS AND FILES OF THE PATENT AND
TRADEMARK OFFICE
§  1.11 Files open to the public.
(a) The specification, drawings, and all papers relating
to the file of: A published application; a patent; or a
statutory invention registration are open to inspection by
the public, and copies may be obtained upon the payment
of the fee set forth in § 1.19(b)(2). If an application was
published in redacted form pursuant to § 1.217 , the
complete file wrapper and contents of the patent
application will not be available if: The requirements of
paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217  have been
met in the application; and the application is still pending.
See § 2.27 of this title for trademark files.
(b) All reissue applications, all applications in which
the Office has accepted a request to open the complete
application to inspection by the public, and related papers
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 in the application file, are open to inspection by the public,
and copies may be furnished upon paying the fee therefor.
The filing of reissue applications, other than continued
prosecution applications under § 1.53 (d) of reissue
applications, will be announced in the  Official Gazette .
The announcement shall include at least the filing date,
reissue application and original patent numbers, title, class
and subclass, name of the inventor, name of the owner of
record, name of the attorney or agent of record, and
examining group to which the reissue application is
assigned.
(c) All requests for reexamination for which all the
requirements of § 1.510  or § 1.915  have been satisfied
will be announced in the Official Gazette.  Any
reexaminations at the initiative of the Director pursuant
to § 1.520  will also be announced in the  Official Gazette.
The announcement shall include at least the date of the
request, if any, the reexamination request control number
or the Director initiated order control number, patent
number, title, class and subclass, name of the inventor,
name of the patent owner of record, and the examining
group to which the reexamination is assigned.
(d) All papers or copies thereof relating to a
reexamination proceeding which have been entered of
record in the patent or reexamination file are open to
inspection by the general public, and copies may be
furnished upon paying the fee therefor.
(e) Except as prohibited in § 41.6 (b), the file of any
interference is open to public inspection and copies of the
file may be obtained upon payment of the fee therefor.
[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46
FR 29181, May 29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982,
effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective
Feb. 11, 1985; paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective
May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective
Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective
Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective
Nov. 25, 2005; para. (c) revised, 71 FR 44219, Aug. 4, 2006, effective
Aug. 4, 2006]
§  1.12 Assignment records open to public inspection.
(a)
(1) Separate assignment records are maintained in
the United States Patent and Trademark Office for
patents and trademarks. The assignment records,
relating to original or reissue patents, including digests
and indexes (for assignments recorded on or after May
1, 1957), and published patent applications are open to
public inspection at the United States Patent and
Trademark Office, and copies of patent assignment
records may be obtained upon request and payment of
the fee set forth in § 1.19 of this chapter. See § 2.200
of this chapter regarding trademark assignment records.(2) All records of assignments of patents recorded
before May 1, 1957, are maintained by the National
Archives and Records Administration (NARA). The
records are open to public inspection. Certified and
uncertified copies of those assignment records are
provided by NARA upon request and payment of the
fees required by NARA.
(b) Assignment records, digests, and indexes relating
to any pending or abandoned patent application, which
is open to the public pursuant to § 1.11 or for which copies
or access may be supplied pursuant to § 1.14, are available
to the public. Copies of any assignment records, digests,
and indexes that are not available to the public shall be
obtainable only upon written authority of the applicant
or applicant’s assignee or patent attorney or patent agent
or upon a showing that the person seeking such
information is a bona fide prospective or actual purchaser,
mortgagee, or licensee of such application, unless it shall
be necessary to the proper conduct of business before the
Office or as provided in this part.
(c) Any request by a member of the public seeking
copies of any assignment records of any pending or
abandoned patent application preserved in confidence
under § 1.14 , or any information with respect thereto,
must:
(1) Be in the form of a petition including the fee
set forth in §  1.17(g) ; or
(2) Include written authority granting access to the
member of the public to the particular assignment
records from the applicant or applicant’s assignee or
attorney or agent of record.
(d) An order for a copy of an assignment or other
document should identify the reel and frame number
where the assignment or document is recorded. If a
document is identified without specifying its correct reel
and frame, an extra charge as set forth in § 1.21 (j) will
be made for the time consumed in making a search for
such assignment.
[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a)
and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a)
and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.
(a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para.
(a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para.
(c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para.
(c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;
para. (c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; paras. (a)(1) and (b) revised, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 48286,
Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised, 69 FR 29865,
May 26, 2004, effective June 25, 2004; para. (c)(1) revised, 69 FR
56481, Sept. 21, 2004, effective Nov. 22, 2004]
§  1.13 Copies and certified copies.
(a) Non-certified copies of patents, patent application
publications, and of any records, books, papers, or
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 drawings within the jurisdiction of the United States
Patent and Trademark Office and open to the public, will
be furnished by the United States Patent and Trademark
Office to any person, and copies of other records or papers
will be furnished to persons entitled thereto, upon payment
of the appropriate fee. See § 2.201 of this chapter
regarding copies of trademark records.
(b) Certified copies of patents, patent application
publications, and trademark registrations and of any
records, books, papers, or drawings within the jurisdiction
of the United States Patent and Trademark Office and
open to the public or persons entitled thereto will be
authenticated by the seal of the United States Patent and
Trademark Office and certified by the Director, or in his
or her name, upon payment of the fee for the certified
copy.
[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994;
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.
(b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) revised,
68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
§  1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information.
 Patent applications that have not been published under
35 U.S.C. 122(b)  are generally preserved in confidence
pursuant to 35 U.S.C. 122(a) . Information concerning the
filing, pendency, or subject matter of an application for
patent, including status information, and access to the
application, will only be given to the public as set forth
in § 1.11 or in this section.
(1) Records associated with patent applications (see
paragraph (g) for international applications) may be
available in the following situations:
(i) Patented applications and statutory
invention registrations.  The file of an application
that has issued as a patent or published as a
statutory invention registration is available to the
public as set forth in § 1.11(a) . A copy of the
patent application-as-filed, the file contents of the
application, or a specific document in the file of
such an application may be provided upon request
and payment of the appropriate fee set forth in §
1.19(b) .
(ii) Published abandoned applications.  The
file of an abandoned application that has been
published as a patent application publication is
available to the public as set forth in § 1.11(a) . A
copy of the application-as-filed, the file contents
of the published application, or a specific
document in the file of the published application
may be provided to any person upon request, and
payment of the appropriate fee set forth in §
1.19(b) .(iii) Published pending applications.  A copy
of the application-as-filed, the file contents of the
application, or a specific document in the file of
a pending application that has been published as
a patent application publication may be provided
to any person upon request, and payment of the
appropriate fee set forth in § 1.19(b) . If a redacted
copy of the application was used for the patent
application publication, the copy of the
specification, drawings, and papers may be limited
to a redacted copy. The Office will not provide
access to the paper file of a pending application
that has been published, except as provided in
paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications
(including provisional applications) that are
identified or relied upon.  The file contents of an
unpublished, abandoned application may be made
available to the public if the application is
identified in a U.S. patent, a statutory invention
registration, a U.S. patent application publication,
or an international patent application publication
of an international application that was published
in accordance with PCT Article 21(2) . An
application is considered to have been identified
in a document, such as a patent, when the
application number or serial number and filing
date, first named inventor, title and filing date or
other application specific information are provided
in the text of the patent, but not when the same
identification is made in a paper in the file
contents of the patent and is not included in the
printed patent. Also, the file contents may be made
available to the public, upon a written request, if
benefit of the abandoned application is claimed
under 35 U.S.C. 119(e) , 120, 121, or 365 in an
application that has issued as a U.S. patent, or has
published as a statutory invention registration, a
U.S. patent application publication, or an
international patent application that was published
in accordance with PCT Article 21(2) . A copy of
the application-as-filed, the file contents of the
application, or a specific document in the file of
the application may be provided to any person
upon written request, and payment of the
appropriate fee (§ 1.19(b) ).
(v) Unpublished pending applications
(including provisional applications) whose benefit
is claimed.  A copy of the file contents of an
unpublished pending application may be provided
to any person, upon written request and payment
of the appropriate fee (§ 1.19(b) ), if the benefit of
the application is claimed under 35 U.S.C. 119(e) ,
120, 121, or 365 in an application that has issued
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 as a U.S. patent, an application that has published
as a statutory invention registration, a U.S. patent
application publication, or an international patent
application publication that was published in
accordance with PCT Article 21(2) . A copy of the
application-as-filed, or a specific document in the
file of the pending application may also be
provided to any person upon written request, and
payment of the appropriate fee (§ 1.19(b) ). The
Office will not provide access to the paper file of
a pending application, except as provided in
paragraph (c) or (i) of this section.
(vi) Unpublished pending applications
(including provisional applications) that are
incorporated by reference or otherwise identified .
A copy of the application as originally filed of an
unpublished pending application may be provided
to any person, upon written request and payment
of the appropriate fee (§ 1.19(b) ), if the
application is incorporated by reference or
otherwise identified in a U.S. patent, a statutory
invention registration, a U.S. patent application
publication, or an international patent application
publication that was published in accordance with
PCT Article 21(2) . The Office will not provide
access to the paper file of a pending application,
except as provided in paragraph (c) or (i) of this
section.
(vii)  When a petition for access or a power
to inspect is required . Applications that were not
published or patented, that are not the subject of
a benefit claim under 35 U.S.C. 119(e) , 120, 121,
or 365 in an application that has issued as a U.S.
patent, an application that has published as a
statutory invention registration, a U.S. patent
application publication, or an international patent
application publication that was published in
accordance with PCT Article 21(2) , or are not
identified in a U.S. patent, a statutory invention
registration, a U.S. patent application publication,
or an international patent application that was
published in accordance with PCT Article 21(2) ,
are not available to the public. If an application is
identified in the file contents of another
application, but not the published patent
application or patent itself, a granted petition for
access (see paragraph (i)) or a power to inspect
(see paragraph (c)) is necessary to obtain the
application, or a copy of the application.
(2) Information concerning a patent application
may be communicated to the public if the patent
application is identified in a published patent document
or in an application as set forth in paragraphs (a)(1)(i)through (a)(1)(vi) of this section. The information that
may be communicated to the public ( i.e., status
information) includes:
(i) Whether the application is pending,
abandoned, or patented;
(ii) Whether the application has been
published under 35 U.S.C. 122(b) ;
(iii) The application “numerical identifier”
which may be:
(A) The eight-digit application number
(the two-digit series code plus the six-digit
serial number); or
(B) The six-digit serial number plus
any one of the filing date of the national
application, the international filing date,
or date of entry into the national stage; and
(iv) Whether another application claims the
benefit of the application ( i.e., whether there are
any applications that claim the benefit of the filing
date under 35 U.S.C. 119(e) , 120, 121 or 365 of
the application), and if there are any such
applications, the numerical identifier of the
application, the specified relationship between the
applications ( e.g., continuation), whether the
application is pending, abandoned or patented,
and whether the application has been published
under 35 U.S.C. 122(b) .
(b)  Electronic access to an application. Where a copy
of the application file or access to the application may be
made available pursuant to this section, the Office may
at its discretion provide access to only an electronic copy
of the specification, drawings, and file contents of the
application.
(c)  Power to inspect a pending or abandoned
application . Access to an application may be provided to
any person if the application file is available, and the
application contains written authority ( e.g., a power to
inspect) granting access to such person. The written
authority must be signed by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record
(made of record pursuant to § 3.71 of this chapter); or
(4) A registered attorney or agent named in the
papers accompanying the application papers filed under
§ 1.53 or the national stage documents filed under §
1.495 , if an executed oath or declaration pursuant to §
1.63 or § 1.497  has not been filed.
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 (d)  Applications reported to Department of Energy .
Applications for patents which appear to disclose, purport
to disclose or do disclose inventions or discoveries relating
to atomic energy are reported to the Department of
Energy, which Department will be given access to the
applications. Such reporting does not constitute a
determination that the subject matter of each application
so reported is in fact useful or is an invention or discovery,
or that such application in fact discloses subject matter
in categories specified by 42 U.S.C. 2181(c) and (d).
(e)  Decisions by the Director . Any decision by the
Director that would not otherwise be open to public
inspection may be published or made available for public
inspection if:
(1) The Director believes the decision involves an
interpretation of patent laws or regulations that would
be of precedential value; and
(2) The applicant is given notice and an opportunity
to object in writing within two months on the ground
that the decision discloses a trade secret or other
confidential information. Any objection must identify
the deletions in the text of the decision considered
necessary to protect the information, or explain why
the entire decision must be withheld from the public
to protect such information. An applicant or party will
be given time, not less than twenty days, to request
reconsideration and seek court review before any
portions of a decision are made public under this
paragraph over his or her objection.
(f) Publication pursuant to §  1.47. Information as to
the filing of an application will be published in the Official
Gazette  in accordance with § 1.47(c) .
(g)  International applications.
(1) Copies of international application files for
international applications which designate the U.S. and
which have been published in accordance with PCT
Article 21(2) , or copies of a document in such
application files, will be furnished in accordance with
PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3,
upon written request including a showing that the
publication of the application has occurred and that the
U.S. was designated, and upon payment of the
appropriate fee (see § 1.19(b) ), if:
(i) With respect to the Home Copy (the copy
of the international application kept by the Office
in its capacity as the Receiving Office, see PCT
Article 12(1) ), the international application was
filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy
of an international application kept by the Office
in its capacity as the International Searching
Authority, see PCT Article 12(1)), the U.S. actedas the International Searching Authority, except
for the written opinion of the International
Searching Authority which shall not be available
until the expiration of thirty months from the
priority date; or
(iii) With respect to the Examination Copy
(the copy of an international application kept by
the Office in its capacity as the International
Preliminary Examining Authority), the United
States acted as the International Preliminary
Examining Authority, an International Preliminary
Examination Report has issued, and the United
States was elected.
(2) A copy of an English language translation of a
publication of an international application which has
been filed in the United States Patent and Trademark
Office pursuant to 35 U.S.C. 154(d)(4) will be
furnished upon written request including a showing
that the publication of the application in accordance
with PCT Article 21(2) has occurred and that the U.S.
was designated, and upon payment of the appropriate
fee (§ 1.19(b)(4)).
(3) Access to international application files for
international applications which designate the U.S. and
which have been published in accordance with PCT
Article 21(2), or copies of a document in such
application files, will be permitted in accordance with
PCT Articles 30 and 38 and PCT Rules 44 ter.1, 94.2
and 94.3, upon written request including a showing
that the publication of the application has occurred and
that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of
an international application-as-filed under paragraph
(a) of this section will not be provided prior to the
international publication of the application pursuant to
PCT Article 21(2) .
(5) Access to international application files under
paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of
this section will not be permitted with respect to the
Examination Copy in accordance with PCT Article 38.
(h)  Access by a Foreign Intellectual Property Office.
(1) Access to the application-as-filed may be
provided to any foreign intellectual property office
participating with the Office in a bilateral or multilateral
priority document exchange agreement (participating
foreign intellectual property office), if the application
contains written authority granting such access. Written
authority under this paragraph should be submitted
prior to filing a subsequent foreign application with a
participating intellectual property office in which
priority is claimed to the patent application.
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 (2) Written authority provided under paragraph
(h)(1) of this section must include the title of the
invention (§ 1.71(a)), comply with the requirements of
paragraph (c) of this section, and be submitted on a
separate document (§ 1.4(c)).
(3) Written authority provided under paragraph
(h)(1) of this section will be treated as authorizing the
Office to provide to all participating foreign intellectual
property offices indicated in the written authority in
accordance with their respective agreements with the
Office:
(i) A copy of the application-as-filed; and
(ii) A copy of the application-as-filed with
respect to any application the filing date of which
is claimed by the application in which written
authority under paragraph (h)(1) of this section is
filed.
(i)  Access or copies in other circumstances . The
Office, either  sua sponte or on petition, may also provide
access or copies of all or part of an application if
necessary to carry out an Act of Congress or if warranted
by other special circumstances. Any petition by a member
of the public seeking access to, or copies of, all or part of
any pending or abandoned application preserved in
confidence pursuant to paragraph (a) of this section, or
any related papers, must include:
(1) The fee set forth in § 1.17(g) ; and
(2) A showing that access to the application is
necessary to carry out an Act of Congress or that special
circumstances exist which warrant petitioner being
granted access to all or part of the application.
[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para.
(e) added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para.
(b), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378,
Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; para.
(e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; para. (b)
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e)
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras.
(a), (b) and (e) amended, 61 FR 42790, Aug. 19, 1996, effective Sept.
23, 1996; para. (a) revised & para. (f) added, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; para. (g) added, 63 FR 29614, June 1,
1998, effective July 1, 1998, (adopted as final, 63 FR 66040, Dec. 1,
1998); revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
paras. (a), (b), (c), (e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 18, 2000;
para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001;
para. (d)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002;
paras. (g) & (g)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003;
paras. (g)(1)(ii) & (g)(3) revised, 68 FR 59881, Oct. 20, 2003, effective
Jan. 1, 2004; para. (g)(1)(ii) corrected, 68 FR 67805, Dec., 4, 2003;
para. (g)(5) revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004;
para. (g)(2) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,
2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; para. (h)(1) revised, 69 FR 56481, Sept. 21, 2004, effective Nov.
22, 2004; paras. (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii), (a)(2)introductory text, & (b) revised, para. (h) redesignated as para. (i) and
para. (h) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007]
§  1.15 [Reserved]
(Editor’s note: substance supplanted by Part 102)
[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969;
amended 53 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988; removed
and reserved, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
FEES AND PAYMENT OF MONEY
§  1.16 National application filing, search, and
examination fees.
(a) Basic fee for filing each application under 35
U.S.C. 111 for an original patent, except design, plant, or
provisional applications:
(1) For an application filed on or after December
8, 2004:
By a small entity ( § 1.27 (a)) if the application is submitted
in compliance with the Office electronic filing system
(§ 1.27(b)(2)) $82.00
By a small entity ( § 1.27 (a))$165.00
By other than a small entity $330.00
(2) For an application filed before December 8,
2004:
By a small entity ( § 1.27 (a))$425.00
By other than a small entity $850.00
(b) Basic fee for filing each application for an original
design patent:
(1) For an application filed on or after December
8, 2004:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(2) For an application filed before December 8,
2004:
By a small entity ( § 1.27 (a))$190.00
By other than a small entity $380.00
(c) Basic fee for filing each application for an original
plant patent:
(1) For an application filed on or after December
8, 2004:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(2) For an application filed before December 8,
2004:
By a small entity ( § 1.27 (a))$300.00
By other than a small entity $600.00
(d) Basic fee for filing each provisional application:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
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 (e) Basic fee for filing each application for the reissue
of a patent:
(1) For an application filed on or after December
8, 2004:
By a small entity ( § 1.27 (a))$165.00
By other than a small entity $330.00
(2) For an application filed before December 8,
2004:
By a small entity ( § 1.27 (a))$425.00
By other than a small entity $850.00
(f) Surcharge for filing any of the basic filing fee, the
search fee, the examination fee, or the oath or declaration
on a date later than the filing date of the application,
except provisional applications:
By a small entity (§  1.27 (a))$65.00
By other than a small entity $130.00
(g) Surcharge for filing the basic filing fee or cover
sheet (§ 1.51(c)(1)) on a date later than the filing date of
the provisional application::
By a small entity ( § 1.27 (a))$25.00
By other than a small entity $50.00
(h) In addition to the basic filing fee in an application,
other than a provisional application, for filing or later
presentation at any other time of each claim in
independent form in excess of 3:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(i) In addition to the basic filing fee in an application,
other than a provisional application, for filing or later
presentation at any other time of each claim (whether
dependent or independent) in excess of 20 (note that §
1.75(c) indicates how multiple dependent claims are
considered for fee calculation purposes):
By a small entity ( § 1.27 (a))$26.00
By other than a small entity $52.00
(j) In addition to the basic filing fee in an application,
other than a provisional application, that contains, or is
amended to contain, a multiple dependent claim, per
application:
By a small entity ( § 1.27 (a))$195.00
By other than a small entity $390.00
(k) Search fee for each application filed under 35
U.S.C. 111 on or after December 8, 2004, for an original
patent, except design, plant, or provisional applications:
By a small entity ( § 1.27 (a))$270.00
By other than a small entity $540.00
(l) Search fee for each application filed on or after
December 8, 2004, for an original design patent:
By a small entity ( § 1.27 (a))$50.00
By other than a small entity $100.00(m) Search fee for each application filed on or after
December 8, 2004, for an original plant patent:
By a small entity ( § 1.27 (a))$165.00
By other than a small entity $330.00
(n) Search fee for each application filed on or after
December 8, 2004, for the reissue of a patent:
By a small entity ( § 1.27 (a))$270.00
By other than a small entity $540.00
(o) Examination fee for each application filed under
35 U.S.C. 111 on or after December 8, 2004, for an
original patent, except design, plant, or provisional
applications:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(p) Examination fee for each application filed on or
after December 8, 2004, for an original design patent:
By a small entity ( § 1.27 (a))$70.00
By other than a small entity $140.00
(q) Examination fee for each application filed on or
after December 8, 2004, for an original plant patent:
By a small entity ( § 1.27 (a))$85.00
By other than a small entity $170.00
(r) Examination fee for each application filed on or
after December 8, 2004, for the reissue of a patent:
By a small entity ( § 1.27 (a))$325.00
By other than a small entity $650.00
(s) Application size fee for any application under 35
U.S.C.  111 filed on or after December 8, 2004, the
specification and drawings of which exceed 100 sheets
of paper, for each additional 50 sheets or fraction thereof:
By a small entity (§  1.27 (a))$135.00
By other than a small entity $270.00
(t) Non-electronic filing fee for any application under
35 U .S.C. 111(a)  that is filed on or after November 15,
2011, other than by the Office electronic filing system,
except for a reissue, design, or plant application:
By a small entity ( § 1.27(a) )$200.00
By other than a small entity $400.00
[Added, 47 FR 41273, Sept. 17, 1982, effective date Oct. 1,
1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras.
(a), (b), (d) - (i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;
paras. (a)-(j), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,
1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; paras. (a)-(g) amended and paras. (k) and (l)
added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a),
(b), (d), & (f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective Oct.
1, 1995; paras. (a), (b), (d), and (f)-(i) amended and para. (m) added,
61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d),
and (f) - (i) amended, 62 FR 40450, July 29, 1997, effective Oct. 1,
1997; paras. (d) & (l) amended, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; paras. (a)-(d) and (f)-(j) revised, 63 FR 6758, Dec. 8,
1998, effective Nov. 10, 1998; paras. (a) and (b) revised, 64 FR 67774,
Dec. 3, 1999, effective Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i)
revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras.
(a)-(l) revised, 65 FR 78958, Dec. 18, 2000; paras. (a), (b), (d), (f)-(i)
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 and (k) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001;
paras. (a), (g), and (h) revised, 67 FR 70847, Nov. 27, 2002, effective
Jan. 1, 2003; paras. (a), (b), (d), and (f) through (i) revised, 68 FR 41532,
July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), (d), and (f) through
(i) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised,
70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (f) and (s)
revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; paras. (a)
through (e) and (h) through (s) revised, 72 FR 46899, Aug. 22, 2007,
effective Sept. 30, 2007; paras. (a) through (e), (h) through (k), and (m)
through (s) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008;
para. (t) added, 76 FR 70651, Nov. 15, 2011, effective Nov. 15, 2011]
§  1.17 Patent application and reexamination
processing fees.
(a) Extension fees pursuant to § 1.136 (a):
(1) For reply within first month:
By a small entity ( § 1.27 (a))$65.00
By other than a small entity $130.00
(2) For reply within second month:
By a small entity ( § 1.27 (a))$245.00
By other than a small entity $490.00
(3) For reply within third month:
By a small entity ( § 1.27 (a))$555.00
By other than a small entity $1,110.00
(4) For reply within fourth month:
By a small entity ( § 1.27 (a))$865.00
By other than a small entity $1,730.00
(5) For reply within fifth month:
By a small entity ( § 1.27 (a))$1,175.00
By other than a small entity $2,350.00
(b) For fees in proceedings before the Board of Patent
Appeals and Interferences, see § 41.20  of this title.
(c) For filing a request for prioritized examination
under § 1.102(e):
By a small entity ( § 1.27 (a))$2,400.00
By other than a small entity $4,800.00
(d) [Reserved]
(e) To request continued examination pursuant to §
1.114 :
By a small entity  (§1.27(a)) $405.00
By other than a small entity $810.00
(f)
For filing a petition under one of the following
sections which refers to this paragraph: $400.00.
§ 1.36(a)—for revocation of a power of attorney by fewer
than all of the applicants.§  1.53 (e)—to accord a filing
date. §  1.57 (a)—to accord a filing date. §  1.182 —for
decision on a question not specifically provided for. §
1.183 —to suspend the rules. §  1.378 (e)—for
reconsideration of decision on petition refusing to accept
delayed payment of maintenance fee in an expired patent.
§ 1.741 (b)—to accord a filing date to an application under
§ 1.740  for extension of a patent term.(g)
For filing a petition under one of the following
sections which refers to this paragraph: . $200.00
§ 1.12—for access to an assignment record. §  1.14 —for
access to an application. §  1.47 —for filing by other than
all the inventors or a person not the inventor. §  1.59 —for
expungement of information. §  1.103 (a)—to suspend
action in an application. § 1.136 (b)—for review of a
request for extension for extension of time when the
provisions of §  1.136  (a) are not available. § 1.295 —for
review of refusal to publish a statutory invention
registration. §  1.296 —to withdraw a request for
publication of a statutory invention registration filed on
or after the date the notice of intent to publish issued. §
1.377 —for review of decision refusing to accept and
record payment of a maintenance fee filed prior to
expiration of a patent. § 1.550 (c)—for patent owner
requests for extension of time in  ex parte reexamination
proceedings. §  1.956 —for patent owner requests for
extension of time in  inter partes  reexamination
proceedings. § 5.12—for expedited handling of a foreign
filing license. § 5.15—for changing the scope of a license.
§ 5.25—for retroactive license.
(h)
For filing a petition under one of the following
sections which refers to this paragraph $130.00
§ 1.19 (g)—to request documents in a form other than
provided in this part.§ 1.84—for accepting color drawings
or photographs. § 1.91—for entry of a model or exhibit.§
1.102 (d)—to make an application special.§  1.138(c) —to
expressly abandon an application to avoid publication. §
1.313 —to withdraw an application from issue. §
1.314 —to defer issuance of a patent.
(i)
Processing fee for taking action under one of the
following sections which refers to this paragraph:$130.00
§ 1.28(c)(3) —for processing a non-itemized fee deficiency
based on an error in small entity status. §  1.41 —for
supplying the name or names of the inventor or inventors
after the filing date without an oath or declaration as
prescribed by §  1.63 , except in provisional applications.
§ 1.48 —for correcting inventorship, except in provisional
applications. §  1.52(d) —for processing a nonprovisional
application filed with a specification in a language other
than English. §  1.53(b)(3) —to convert a provisional
application filed under §  1.53(c)  into a nonprovisional
application under § 1.53(b) . § 1.55—for entry of late
priority papers. § 1.71(g)(2)—for processing a belated
amendment under § 1.71(g). §  1.99(e) —for processing a
belated submission under § 1.99. § 1.102(e) —for
requesting prioritized examination of an application. §
1.103(b) —for requesting limited suspension of action,
continued prosecution application for a design patent (§ 
1.53(d) ). § 1.103(c) —for requesting limited suspension
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 of action, request for continued examination (§  1.114 ).
§ 1.103(d) —for requesting deferred examination of an
application. §  1.217 —for processing a redacted copy of
a paper submitted in the file of an application in which a
redacted copy was submitted for the patent application
publication. §  1.221 —for requesting voluntary publication
or republication of an application. § 1.291 (c)(5)—for
processing a second or subsequent protest by the same
real party in interest.§  1.497(d )—for filing an oath or
declaration pursuant to 35 U.S.C.  371(c)(4)  naming an
inventive entity different from the inventive entity set
forth in the international stage. §  3.81 —for a patent to
issue to assignee, assignment submitted after payment of
the issue fee.
(j)
For filing a petition to institute a public use proceeding
under § 1.292 $1,510.00
(k)
For filing a request for expedited examination under
§ 1.155(a) $900.00
(l) For filing a petition for the revival of an
unavoidably abandoned application under 35 U.S.C. 111,
133, 364, or 371, for the unavoidably delayed payment
of the issue fee under 35 U.S.C. 151, or for the revival of
an unavoidably terminated reexamination proceeding
under 35 U.S.C. 133 (§ 1.137 (a)):
By a small entity (§  1.27(a)) $270.00
By other than a small entity $540.00
(m) For filing a petition for the revival of an
unintentionally abandoned application, for the
unintentionally delayed payment of the fee for issuing a
patent, or for the revival of an unintentionally terminated
reexamination proceeding under 35 U.S.C. 41(a)(7) (§
1.137  (b)):
By a small entity (§  1.27(a) )$810.00
By other than a small entity $1,620.00.
(n)
For requesting publication of a statutory invention
registration prior to the mailing of the first examiner’s
action pursuant to § 1.104 $920.00 reduced by the amount
of the application basic filing fee paid.
(o)
For requesting publication of a statutory invention
registration after the mailing of the first examiner’s action
pursuant to § 1.104 $1,840.00 reduced by the amount of
the application basic filing fee paid.
(p)
For an information disclosure statement under §
1.97(c)  or (d) or a submission under § 1.99 $180.00
(q)
Processing fee for taking action under one of the
following sections which refers to this paragraph $50.00§ 1.41—to supply the name or names of the inventor or
inventors after the filing date without a cover sheet as
prescribed by § 1.51(c)(1)  in a provisional application§
1.48—for correction of inventorship in a provisional
application. § 1.53(c)(2)  —to convert a nonprovisional
application filed under § 1.53(b)  to a provisional
application under § 1.53(c) .
(r) For entry of a submission after final rejection under
§ 1.129 (a):
By a small entity ( § 1.27 (a))$405.00
By other than a small entity $810.00
(s) For each additional invention requested to be
examined under § 1.129 (b):
By a small entity ( § 1.27 (a))$405.00
By other than a small entity $810.00
(t)
For the acceptance of an unintentionally delayed claim
for priority under 35 U.S.C. 119, 120,  121, or 365(a)  or
(c) (§§ 1.55 and 1.78) or for filing a request for the
restoration of the right of priority under § 1.452 $1,410.00
[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982;
para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h),
49 FR 13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR
34724, Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and
(i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n)
and (c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 50 FR 31824,
Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)- (m), 54 FR 6893, Feb.
15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para.
(i)(1), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras.
(a)-(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para.
(i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (p)
added, 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1),
57 FR 29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR
32439, July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug.
21, 1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993,
effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug.
25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and paras.
(q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras.
(b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995,
effective Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s) amended,
61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (b)-(g), (j),
(m)-(p), (r) & (s) amended, 62 FR 40450, July 29, 1997, effective Oct.
1, 1997; paras. (a) - (d), (h), (i) & (q) revised, paras. (e)-(g) reserved,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected,
62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997; paras. (a)-(d), (l)
and (m) revised, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998;
paras. (r) and (s) revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8,
1998; paras. (r) and (s) revised, 64 FR 67774, Dec. 3, 1999, effective
Jan. 10, 2000; para. (e) added and para. (i) revised, 65 FR 14865, Mar.
20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug.
16, 2000); paras. (a)-(e), (m), (r) and (s) revised, 65 FR 49193, August
11, 2000, effective October 1, 2000; paras. (h), (i), (k), (l), (m), (p), and
(q) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading
and paras. (h), (i), (l), (m) and (p) revised, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; para. (t) added, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; paras. (a)-(e), (r) and (s) revised, 65 FR 78958,
Dec. 18, 2000; heading and para. (h) revised, 66 FR 47387, Sept. 12,
2001, effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)-(e), (m) and
(r)-(t) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras.
(a)(2) through (a)(5), (e), (m), and (r) through (t) revised, 67 FR 70847,
Nov. 27, 2002, effective Jan. 1, 2003; para. (h) revised, 68 FR 38611,
June 30, 2003, effective July 30, 2003; paras. (a)(2) through (a)(5), (b)
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 through (e), (m), and (r) through (t) revised, 68 FR 41532, July 14, 2003,
effective Oct. 1, 2003; paras. (c) and (d) removed and reserved and
paras. (b) and (h) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.
13, 2004; paras. (a)(2) through (a)(5), (e), (m), and (r) through (t) revised,
69 FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; paras. (f) and (g)
added and paras. (h) and (i) revised, 69 FR 56481, Sept. 21, 2004,
effective Nov. 22, 2004; paras. (a), (l) and (m) revised, 70 FR 3880,
Jan. 27, 2005, effective Dec. 8, 2004; para. (i) revised, 70 FR 54259,
Sept. 14, 2005, effective Sept. 14, 2005; para. (f) revised, 70 FR 56119,
Sept. 26, 2005, effective Nov. 25, 2005; paras. (l) & (m) revised, 72 FR
18892, Apr. 16, 2007, effective May 16, 2007; paras. (a)(2) through
(a)(5), (e), (l), (m), and (r) through (t) revised, 72 FR 46899, Aug. 22,
2007, effective Sept. 30, 2007; paras. (a)(4) and (a)(5) corrected, 72 FR
55055, Sept. 28, 2007, effective Sept. 30, 2007; para. (f) revised, 72 FR
46716, Aug. 21, 2007 (implementation enjoined and never became
effective); para. (t) revised, 72 FR 51559, Sept. 10, 2007, and corrected
72 FR 57864, Oct. 11, 2007, effective Nov. 9, 2007; paras. (a), (l), and
(m) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para.
(f) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to
remove changes made by the final rules in 72 FR 46716 from the CFR);
para. (c) added and para. (i) revised, 76 FR 18399, Apr. 4, 2011, effective
date delayed until further notice, 76 FR 23876, April 29, 2011 and
withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept. 23, 2011; para.
(c) added and para. (i) revised, 76 FR 59050, Sept. 23, 2011, effective
Sept. 26, 2011]
§  1.18 Patent post allowance (including issue) fees.
(a) Issue fee for issuing each original patent, except
a design or plant patent, or for issuing each reissue patent:
By a small entity ( § 1.27 (a))$755.00
By other than a small entity $1,510.00
(b) Issue fee for issuing an original design patent:
By a small entity ( § 1.27 (a))$430.00
By other than a small entity $860.00
(c) Issue fee for issuing an original plant patent:
By a small entity ( § 1.27 (a))$595.00
By other than a small entity $1,190.00
(d)
Publication fee $300.00
(e)
For filing an application for patent term adjustment
under § 1.705 $200.00
(f)
For filing a request for reinstatement of all or part of
the term reduced pursuant to §  1.704(b)  in an application
for patent term adjustment under §  1.705 $400.00
[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982;
50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893,
Feb. 15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13.
1991, effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994,
effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective
Oct. 1, 1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1,
1996; amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997;
amended, 63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; revised,
65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; heading revised
and paras. (d)-(f) added, 65 FR 56366, Sept. 18, 2000, effective Nov.
17, 2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov.
29, 2000; paras. (a)-(c) revised, 65 FR 78958, Dec. 18, 2000; paras.
(a)-(c) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001;
paras. (a) through (c) revised, 67 FR 70847, Nov. 27, 2002, effectiveJan. 1, 2003; paras. (a) through (c) revised, 68 FR 41532, July 14, 2003,
effective Oct. 1, 2003; paras. (a) through (c) revised, 69 FR 52604, Aug.
27, 2004, effective Oct. 1, 2004; paras. (a)-(c) revised, 70 FR 3880, Jan.
27, 2005, effective Dec. 8, 2004; paras. (a) through (c) revised, 72 FR
46899, Aug. 22, 2007, effective Sept. 30, 2007; paras. (a) through (c)
revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]
§  1.19 Document supply fees.
The United States Patent and Trademark Office will
supply copies of the following patent-related documents
upon payment of the fees indicated. Paper copies will be
in black and white unless the original document is in
color, a color copy is requested and the fee for a color
copy is paid.
(a) Uncertified copies of patent application
publications and patents:
(1)
Printed copy of the paper portion of a patent
application publication or patent, including a design
patent, statutory invention registration, or defensive
publication document. Service includes preparation of
copies by the Office within two to three business days
and delivery by United States Postal Service; and
preparation of copies by the Office within one business
day of receipt and delivery to an Office Box or by
electronic means ( e.g., facsimile, electronic mail)$3.00
(2)
Printed copy of a plant patent in color $15.00
(3)
Color copy of a patent (other than a plant patent)
or statutory invention registration containing a color
drawing  $25.00
(b) Copies of Office documents to be provided in
paper, or in electronic form, as determined by the Director
(for other patent-related materials see § 1.21(k)):
(1) Copy of a patent application as filed, or a
patent-related file wrapper and contents, stored in paper
in a paper file wrapper, in an image format in an image
file wrapper, or if color documents, stored in paper in
an Artifact Folder:
(i) If provided on paper:
(A)
Application as filed $20.00.
(B)
File wrapper and contents of 400 or
fewer pages $200.00.
(C)
Additional fee for each additional 100
pages or portion thereof of file wrapper
and contents $40.00.
(D)
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 Individual application documents,
other than application as filed, per
document $25.00.
(ii) If provided on compact disc or other
physical electronic medium in single order:
(A)
Application as filed $20.00.
(B)
File wrapper and contents, first
physical electronic medium: $55.00.
(C)
Additional fee for each continuing
physical electronic medium in the single
order of paragraph (b)(1)(ii)(B) of this
section: $15.00.
(iii) If provided electronically ( e.g., by
electronic transmission) other than on a physical
electronic medium as specified in paragraph
(b)(1)(ii) of this section:
(A)
Application as filed: $20.00.
(B)
File wrapper and contents: $55.00.
(iv)
If provided to a foreign intellectual property
office pursuant to a priority document exchange
agreement (see § 1.14 (h)(1)) 0.00
(2) Copy of patent-related file wrapper contents
that were submitted and are stored on compact disc or
other electronic form ( e.g., compact discs stored in an
Artifact Folder), other than as available in paragraph
(b)(1) of this section:
(i) If provided on compact disc or other
physical electronic medium in a single order:
(A)
First physical electronic medium in a
single order: $55.00.
(B)
Additional fee for each continuing
physical electronic medium in the single
order of paragraph (b)(2)(i) of this
section: $15.00.
(ii)
If provided electronically other than on a
physical electronic medium per order: $55.00.
(3)
Copy of Office records, except copies available
under paragraph (b)(1) or (2) of this section: $25.00.(4)
For assignment records, abstract of title and
certification, per patent: $25.00.
(c)
Library service ( 35 U .S.C. 13 ): For providing
to libraries copies of all patents issued annually, per
annum  $50.00
(d)
For list of all United States patents and statutory
invention registrations in a subclass $3.00
(e)
Uncertified statement as to status of the payment of
maintenance fees due on a patent or expiration of a
patent $10.00
(f)
Uncertified copy of a non-United States patent
document, per document $25.00
(g) Petitions for documents in a form other than that
provided by this part, or in a form other than that generally
provided by the Director, will be decided in accordance
with the merits of each situation. Any petition seeking a
decision under this section must be accompanied by the
petition fee set forth in §  1.17  (h) and, if the petition is
granted, the documents will be provided at cost.
(h) [Reserved]
[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982;
para. (b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras.
(f) and (g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1,
1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May
8,1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised,
54 FR 6893, Feb. 15, 1989; 54 FR 9432, March 7, 1989, effective Apr.
17, 1989, revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992, effective Oct.1,
1992; para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993;
paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018,
Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended,
62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a)(1)(i)
through (a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective Dec.
2, 1999; introductory text and paras. (a) and (b) revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; paras. (g) and (h) removed and
reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras.
(a)(1) and (b)(1) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1,
2003; introductory text and para. (b) revised and para. (g) added, 69 FR
56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (b)(1)(iv) added,
72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007]
§  1.20 Post issuance fees.
(a)
For providing a certificate of correction for applicant’s
mistake ( § 1.323 )$100.00
(b)
Processing fee for correcting inventorship in a patent
(§ 1.324 )$130.00
(c) In reexamination proceedings
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 (1)
For filing a request for ex parte  reexamination (§
1.510(a) )$2,520.00
(2)
For filing a request for inter partes  reexamination
(§ 1.915(a) )$8,800.00
(3) For filing with a request for reexamination or
later presentation at any other time of each claim in
independent form in excess of 3 and also in excess of
the number of claims in independent form in the patent
under reexamination:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(4) For filing with a request for reexamination or
later presentation at any other time of each claim
(whether dependent or independent) in excess of 20
and also in excess of the number of claims in the patent
under reexamination (note that § 1.75(c) indicates how
multiple dependent claims are considered for fee
calculation purposes):
By a small entity (§ 1.27 (a))$26.00
By other than a small entity $52.00
(5) If the excess claims fees required by paragraphs
(c)(3) and (c)(4) are not paid with the request for
reexamination or on later presentation of the claims for
which the excess claims fees are due, the fees required
by paragraphs (c)(3) and (c)(4) must be paid or the
claims canceled by amendment prior to the expiration
of the time period set for reply by the Office in any
notice of fee deficiency in order to avoid abandonment.
(d) For filing each statutory disclaimer ( § 1.321 ):
By a small entity ( § 1.27 (a))$70.00
By other than a small entity $140.00
(e) For maintaining an original or reissue patent,
except a design or plant patent, based on an application
filed on or after December 12, 1980, in force beyond four
years, the fee being due by three years and six months
after the original grant:
By a small entity ( § 1.27 (a))$490.00
By other than a small entity $980.00
(f) For maintaining an original or reissue patent,
except a design or plant patent, based on an application
filed on or after December 12, 1980, in force beyond eight
years, the fee being due by seven years and six months
after the original grant:
By a small entity ( § 1.27 (a))$1,240.00
By other than a small entity $2,480.00
(g) For maintaining an original or reissue patent,
except a design or plant patent, based on an application
filed on or after December 12, 1980, in force beyond
twelve years, the fee being due by eleven years and six
months after the original grant:By a small entity ( § 1.27 (a))$2,055.00
By other than a small entity $4,110.00
(h) Surcharge for paying a maintenance fee during
the six-month grace period following the expiration of
three years and six months, seven years and six months,
and eleven years and six months after the date of the
original grant of a patent based on an application filed on
or after December 12, 1980:
By a small entity ( § 1.27 (a))$65.00
By other than a small entity $130.00
(i) Surcharge for accepting a maintenance fee after
expiration of a patent for non-timely payment of a
maintenance fee where the delay in payment is shown to
the satisfaction of the Director to have been —
(1)
Unavoidable $700.00
(2)
Unintentional $1,640.00
(j) For filing an application for extension of the term
of a patent
(1)
Application for extension under § 1.740 $1,120.00
(2)
Initial application for interim extension under §
1.790 $420.00
(3)
Subsequent application for interim extension under
§ 1.790 $220.00
[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982;
paras. (k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective
date Nov. 1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985,
effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date
Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 1987;
paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989,
effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective
Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21,
1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736,
Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615,
May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1)
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras.
(a), (e)  - (g), (i)(1), (i)(2), and (j)(1) -(j)(3) amended, 61 FR 39585, July
30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), (i)(1), (i)(2), and
(j)(1) - (j)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1,
1997; paras. (d)-(g) revised, 63 FR 67578, Dec. 8, 1998, effective Nov.
10, 1998; para. (e) revised, 64 FR 67774, Dec. 3, 1999, effective Dec.
29, 1999; paras. (e)-(g) revised, 65 FR 49193, Aug. 11, 2000, effective
Oct. 1, 2000; paras. (b) and (d)-(h) revised, 65 FR 78958, Dec. 18, 2000;
para. (b) corrected, 65 FR 80755, Dec. 22, 2000; para. (c) revised, 65
FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (e)-(g) revised,
66 FR 39447, July 31, 2001, effective Oct. 1, 2001; paras. (e) through
(g) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003; para.
(i) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras.
(e) through (g) revised, 68 FR 41532, July 14, 2003, effective Oct. 1,
2003; paras. (e) through (g) revised, 69 FR 52604, Aug. 27, 2004,
effective Oct. 1, 2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 2005,
effective Dec. 8, 2004; paras. (c)(3), (c)(4), and (e) through (g) revised,
72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras.
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 (c)(3),(c)(4), and (d) through (g) revised, 73 FR 47534, Aug. 14, 2008,
effective Oct. 2, 2008]
§  1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the
following fees for the services indicated:
(a) Registration of attorneys and agents:
(l) For admission to examination for registration to
practice:
(i)
Application Fee (non-refundable) $40.00
(ii) Registration examination fee
(A)
For test administration by commercial
entity $200.00
(B)
For test administration by the
USPTO $450.00
(2)
On registration to practice or grant of limited
recognition under § 11.9(b) or (c) $100.00
(3) [Reserved]
(4)
For certificate of good standing as an attorney or
agent $10.00
(i)
Suitable for framing $20.00
(ii) [Reserved]
(5) For review of decision:
(i)
By the Director of Enrollment and Discipline
under § 11.2 (c)$130.00
(ii)
Of the Director of Enrollment and Discipline
under § 11.2 (d)$130.00
(6) [Reserved]
(7) Annual practitioner maintenance fee for
registered attorney or agent.
(i)
Active Status $118.00
(ii)
V oluntary Inactive Status $25.00
(iii)
Fee for requesting restoration to active status
from voluntary inactive status $50.00
(iv)Balance due upon restoration to active status
from voluntary inactive status $93.00
(8)
Annual practitioner maintenance fee for individual
granted limited recognition $118.00
(9)
(i)
Delinquency fee $50.00
(ii)
Administrative reinstatement fee $100.00
(10)
On application by a person for recognition or
registration after disbarment or suspension on ethical
grounds, or resignation pending disciplinary
proceedings in any other jurisdiction; on application
by a person for recognition or registration who is
asserting rehabilitation from prior conduct that resulted
in an adverse decision in the Office regarding the
person’s moral character; and on application by a
person for recognition or registration after being
convicted of a felony or crime involving moral
turpitude or breach of fiduciary duty; on petition for
reinstatement by a person excluded or suspended on
ethical grounds, or excluded on consent from practice
before the Office $1,600.00
(b) Deposit accounts:
(1)
For establishing a deposit account $10.00
(2)
Service charge for each month when the balance
at the end of the month is below $1,000 $25.00
(3)
Service charge for each month when the balance
at the end of the month is below $300 for  restricted
subscription deposit accounts used exclusively for
subscription order of patent copies as issued $25.00
(c) [Reserved]
(d)
Delivery box: Local delivery box rental, per
annum $50.00
(e)
International type search reports: For preparing an
international type search report of an international type
search made at the time of the first action on the merits
in a national patent application $40.00
(f) [Reserved]
(g)
Self-service copy charge, per page $0.25
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 (h)
For recording each assignment, agreement, or other
paper relating to the property in a patent or application,
per property $40.00
(i) Publication in  Official Gazette: For publication in
the  Official Gazette  of a notice of the availability of an
application or a patent for licensing or sale:
Each application or patent $25.00
(j)
Labor charges for services, per hour or fraction
thereof $40.00
(k)
For items and services that the Director finds may be
supplied, for which fees are not specified by statute or by
this part, such charges as may be determined by the
Director with respect to each such item or service Actual
cost
(l) [Reserved]
(m)
For processing each payment refused (including a
check returned “unpaid”) or charged back by a financial
institution $50.00
(n)
For handling an application in which proceedings are
terminated pursuant to § 1.53 (e)$130.00
(o) [Reserved]
[Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982;
paras. (b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984;
paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date
Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985;
paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 1989; 54 FR
8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17,
1989; para. (n) added 54 FR 47518, Nov. 15, 1989, effective Jan. 16,
1990; paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb.
12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142,
Dec. 13, 1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56
FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5),
(a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective
Oct. 1, 1992; para. (p) added, 57 FR 38190, Aug. 21, 1992, effective
Oct. 1, 1992; para. (p) deleted, 59 FR 43736, Aug.25, 1994, effective
Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995,
effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised, 61 FR
39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6),
and (j) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997;
paras. (l) & (n) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (a)(6)(ii) revised, 63 FR 67578, Dec. 8, 1998, effective Dec.
8, 1998; para (m) revised, 65 FR 33452, May 24, 2000, effective July
24, 2000; para. (a)(6) revised, 65 FR 49193, Aug. 11, 2000, effective
Oct. 1, 2000; para. (o) removed and reserved, 66 FR 39447, July 31,
2001, effective Oct. 1, 2001; para. (k) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; para. (a) revised, 69 FR 35427, June 24,
2004, effective July 26, 2004; para. (l) removed and reserved, 70 FR
30360, May 26, 2005, effective July 1, 2005; para. (c) removed and
reserved, 71 FR 64636, Nov. 3, 2006, effective Feb. 1, 2007; para. (a)(3)
removed and reserved and paras. (a)(7), (a)(8) and (a)(9) added, 73 FR
67750, Nov. 17, 2008, effective Dec. 17, 2008]
§  1.22 Fees payable in advance.(a) Patent fees and charges payable to the United
States Patent and Trademark Office are required to be
paid in advance; that is, at the time of requesting any
action by the Office for which a fee or charge is payable
with the exception that under § 1.53  applications for patent
may be assigned a filing date without payment of the basic
filing fee.
(b) All fees paid to the United States Patent and
Trademark Office must be itemized in each individual
application, patent, or other proceeding in such a manner
that it is clear for which purpose the fees are paid. The
Office may return fees that are not itemized as required
by this paragraph. The provisions of §  1.5(a ) do not apply
to the resubmission of fees returned pursuant to this
paragraph.
[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (b)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised,
68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003]
§  1.23 Methods of payment.
(a) All payments of money required for United States
Patent and Trademark Office fees, including fees for the
processing of international applications ( § 1.445 ), shall
be made in U.S. dollars and in the form of a cashier’s or
certified check, Treasury note, national bank notes, or
United States Postal Service money order. If sent in any
other form, the Office may delay or cancel the credit until
collection is made. Checks and money orders must be
made payable to the Director of the United States Patent
and Trademark Office. (Checks made payable to the
Commissioner of Patents and Trademarks will continue
to be accepted.) Payments from foreign countries must
be payable and immediately negotiable in the United
States for the full amount of the fee required. Money sent
to the Office by mail will be at the risk of the sender, and
letters containing money should be registered with the
United States Postal Service.
(b) Payments of money required for United States
Patent and Trademark Office fees may also be made by
credit card, except for replenishing a deposit account.
Payment of a fee by credit card must specify the amount
to be charged to the credit card and such other information
as is necessary to process the charge, and is subject to
collection of the fee. The Office will not accept a general
authorization to charge fees to a credit card. If credit card
information is provided on a form or document other than
a form provided by the Office for the payment of fees by
credit card, the Office will not be liable if the credit card
number becomes public knowledge.
[43 FR 20462, May 11, 1978; revised, 64 FR 48900, Sept. 8,
1999, effective Oct. 30, 1999; revised, 65 FR 33452, May 24, 2000,
effective June 5, 2000; para. (b) revised, 69 FR 43751, July 22, 2004,
effective Aug. 23, 2004]
§  1.24 [Reserved]
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 [47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR
2708, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug.
6, 1985, effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 56 FR
65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (b) revised, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000; removed and reserved, 65
FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§  1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general
public in paying any fees due, in ordering services offered
by the Office, copies of records, etc., deposit accounts
may be established in the Patent and Trademark Office
upon payment of the fee for establishing a deposit account
§ 1.21 (b)(1)). A minimum deposit of $1,000 is required
for paying any fee due or in ordering any services offered
by the Office. However, a minimum deposit of $300 may
be paid to establish a restricted subscription deposit
account used exclusively for subscription order of patent
copies as issued. At the end of each month, a deposit
account statement will be rendered. A remittance must
be made promptly upon receipt of the statement to cover
the value of items or services charged to the account and
thus restore the account to its established normal deposit
value. An amount sufficient to cover all fees, services,
copies, etc., requested must always be on deposit. Charges
to accounts with insufficient funds will not be accepted.
A service charge ( § 1.21 (b)(2)) will be assessed for each
month that the balance at the end of the month is below
$1,000. For restricted subscription deposit accounts, a
service charge ( § 1.21 (b)(3)) will be assessed for each
month that the balance at the end of the month is below
$300.
(b) Filing, issue, appeal, international-type search
report, international application processing, petition, and
post-issuance fees may be charged against these accounts
if sufficient funds are on deposit to cover such fees. A
general authorization to charge all fees, or only certain
fees, set forth in §§ 1.16 to 1.18 to a deposit account
containing sufficient funds may be filed in an individual
application, either for the entire pendency of the
application or with a particular paper filed. An
authorization to charge fees under § 1.16 in an
international application entering the national stage under
35 U.S.C. 371 will be treated as an authorization to charge
fees under § 1.492 . An authorization to charge fees set
forth in § 1.18 to a deposit account is subject to the
provisions of § 1.311 (b). An authorization to charge to a
deposit account the fee for a request for reexamination
pursuant to § 1.510  or § 1.913  and any other fees required
in a reexamination proceeding in a patent may also be
filed with the request for reexamination. An authorization
to charge a fee to a deposit account will not be considered
payment of the fee on the date the authorization to charge
the fee is effective as to the particular fee to be charged
unless sufficient funds are present in the account to cover
the fee.(c) A deposit account holder may replenish the deposit
account by submitting a payment to the United States
Patent and Trademark Office. A payment to replenish a
deposit account must be submitted by one of the methods
set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of
this section.
(1) A payment to replenish a deposit account may
be submitted by electronic funds transfer through the
Federal Reserve Fedwire System, which requires that
the following information be provided to the deposit
account holder’s bank or financial institution:
(i) Name of the Bank, which is Treas NYC
(Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark
Office account number with the Department of
the Treasury, which is 13100001; and
(iv) The deposit account holder’s company
name and deposit account number.
(2) A payment to replenish a deposit account may
be submitted by electronic funds transfer over the
Office’s Internet Web site  (www.uspto.gov).
(3) A payment to replenish a deposit account may
be addressed to: Director of the United States Patent
and Trademark Office, Attn: Deposit Accounts, 2051
Jamieson Avenue, Suite 300, Alexandria, Virginia
22314.
[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274,
Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985,
effective Oct. 5, 1985; para. (b) revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; para (b) revised, 65 FR 76756, Dec. 7, 2000,
effective Feb. 5, 2001; para. (b) revised, 67 FR 520, Jan. 4, 2002,
effective Apr. 1, 2002; para. (c) added, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 22, 2004,
effective Aug. 23, 2004; para. (c)(4) revised, 70 FR 56119, Sept. 26,
2005, effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4) removed,
73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]
§  1.26 Refunds.
(a) The Director may refund any fee paid by mistake
or in excess of that required. A change of purpose after
the payment of a fee, such as when a party desires to
withdraw a patent filing for which the fee was paid,
including an application, an appeal, or a request for an
oral hearing, will not entitle a party to a refund of such
fee. The Office will not refund amounts of twenty-five
dollars or less unless a refund is specifically requested,
and will not notify the payor of such amounts. If a party
paying a fee or requesting a refund does not provide the
banking information necessary for making refunds by
electronic funds transfer (31 U.S.C. 3332 and 31 CFR
part 208), or instruct the Office that refunds are to be
credited to a deposit account, the Director may require
such information, or use the banking information on the
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 payment instrument to make a refund. Any refund of a
fee paid by credit card will be by a credit to the credit
card account to which the fee was charged.
(b) Any request for refund must be filed within two
years from the date the fee was paid, except as otherwise
provided in this paragraph or in §  1.28(a) . If the Office
charges a deposit account by an amount other than an
amount specifically indicated in an authorization (§
1.25(b)) , any request for refund based upon such charge
must be filed within two years from the date of the deposit
account statement indicating such charge, and include a
copy of that deposit account statement. The time periods
set forth in this paragraph are not extendable.
(c) If the Director decides not to institute a
reexamination proceeding, for ex parte  reexaminations
filed under § 1.510 , a refund of $1,690 will be made to
the reexamination requester. For inter partes 
reexaminations filed under § 1.913 , a refund of $7,970
will be made to the reexamination requester. The
reexamination requester should indicate the form in which
any refund should be made ( e.g., by check, electronic
funds transfer, credit to a deposit account, etc.). Generally,
reexamination refunds will be issued in the form that the
original payment was provided.
[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR
31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb.
15, 1989, effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991,
effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992,
effective Oct. 1,1992; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para. (a) revised and para. (b) added, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 65 FR
76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (a) & (c) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) revised,
68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003: paras. (a) and
(b) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and
never became effective); paras. (a) and (b) revised, 74 FR 52686, Oct.
14, 2009, effective Oct. 14, 2009 (to remove changes made by the final
rules in 72 FR 46716 from the CFR)]
§  1.27 Definition of small entities and establishing
status as a small entity to permit payment of
small entity fees; when a determination of
entitlement to small entity status and
notification of loss of entitlement to small entity
status are required; fraud on the Office.
(a)  Definition of small entities . A small entity as used
in this chapter means any party (person, small business
concern, or nonprofit organization) under paragraphs
(a)(1) through (a)(3) of this section.
(1)  Person . A person, as used in paragraph (c) of
this section, means any inventor or other individual
( e.g., an individual to whom an inventor has transferred
some rights in the invention) who has not assigned,
granted, conveyed, or licensed, and is under no
obligation under contract or law to assign, grant,
convey, or license, any rights in the invention. An
inventor or other individual who has transferred somerights in the invention to one or more parties, or is
under an obligation to transfer some rights in the
invention to one or more parties, can also qualify for
small entity status if all the parties who have had rights
in the invention transferred to them also qualify for
small entity status either as a person, small business
concern, or nonprofit organization under this section.
(2)   Small business concern . A small business
concern, as used in paragraph (c) of this section, means
any business concern that:
(i) Has not assigned, granted, conveyed, or
licensed, and is under no obligation under contract
or law to assign, grant, convey, or license, any
rights in the invention to any person, concern, or
organization which would not qualify for small
entity status as a person, small business concern,
or nonprofit organization; and
(ii) Meets the size standards set forth in 13
CFR 121.801 through 121.805 to be eligible for
reduced patent fees. Questions related to standards
for a small business concern may be directed to:
Small Business Administration, Size Standards
Staff, 409 Third Street, SW., Washington, DC
20416.
(3)   Nonprofit Organization . A nonprofit
organization, as used in paragraph (c) of this section,
means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or
licensed, and is under no obligation under contract
or law to assign, grant, convey, or license, any
rights in the invention to any person, concern, or
organization which would not qualify as a person,
small business concern, or a nonprofit
organization; and
(ii) Is either:
(A) A university or other institution of
higher education located in any country;
(B) An organization of the type
described in section 501(c)(3) of the
Internal Revenue Code of 19 86 (26
U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the
Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or
educational organization qualified under
a nonprofit organization statute of a state
of this country ( 35 U .S.C. 201  (i)); or
(D) Any nonprofit organization located
in a foreign country which would qualify
as a nonprofit organization under
paragraphs (a)(3)(ii)(B) of this section or
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 (a)(3)(ii)(C) of this section if it were
located in this country.
(4)   License to a Federal agency .
(i) For persons under paragraph (a)(1) of this
section, a license to the Government resulting
from a rights determination under Executive Order
10096 does not constitute a license so as to
prohibit claiming small entity status.
(ii) For small business concerns and nonprofit
organizations under paragraphs (a)(2) and (a)(3)
of this section, 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 for the purposes of paragraphs
(a)(2)(i) and (a)(3)(i) of this section.
(5)   Security Interest . A security interest does not
involve an obligation to transfer rights in the invention
for the purposes of paragraphs (a)(1) through (a)(3) of
this section unless the security interest is defaulted
upon.
(b)  Establishment of small entity status permits
payment of reduced fees .
(1) A small entity, as defined in paragraph (a) of
this section, who has properly asserted entitlement to
small entity status pursuant to paragraph (c) of this
section will be accorded small entity status by the
Office in the particular application or patent in which
entitlement to small entity status was asserted.
Establishment of small entity status allows the payment
of certain reduced patent fees pursuant to 35 U.S.C.
41(h)(1).
(2) Submission of an original utility application in
compliance with the Office electronic filing system by
an applicant who has properly asserted entitlement to
small entity status pursuant to paragraph (c) of this
section in that application allows the payment of a
reduced filing fee pursuant to 35 U.S.C.  41(h)(3).
(c)  Assertion of small entity status. Any party (person,
small business concern or nonprofit organization) should
make a determination, pursuant to paragraph (f) of this
section, of entitlement to be accorded small entity status
based on the definitions set forth in paragraph (a) of this
section, and must, in order to establish small entity status
for the purpose of paying small entity fees, actually make
an assertion of entitlement to small entity status, in the
manner set forth in paragraphs (c)(1) or (c)(3) of this
section, in the application or patent in which such small
entity fees are to be paid.(1)  Assertion by writing . Small entity status may
be established by a written assertion of entitlement to
small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this
section); and
(iii) Convey the concept of entitlement to
small entity status, such as by stating that applicant
is a small entity, or that small entity status is
entitled to be asserted for the application or patent.
While no specific words or wording are required
to assert small entity status, the intent to assert
small entity status must be clearly indicated in
order to comply with the assertion requirement.
(2)  Parties who can sign and file the written
assertion . The written assertion can be signed by:
(i) One of the parties identified in §  1.33(b)
(e.g. , an attorney or agent registered with the
Office), §  3.73(b)  of this chapter notwithstanding,
who can also file the written assertion;
(ii) At least one of the individuals identified
as an inventor (even though a § 1.63 executed oath
or declaration has not been submitted),
notwithstanding §  1.33(b)(4),  who can also file
the written assertion pursuant to the exception
under §  1.33(b)  of this part; or
(iii) An assignee of an undivided part interest,
notwithstanding §§ 1.33(b)(3)  and 3.73(b)  of
this chapter, but the partial assignee cannot file
the assertion without resort to a party identified
under § 1.33(b)  of this part.
(3)  Assertion by payment of the small entity basic
filing or basic national fee . The payment, by any party,
of the exact amount of one of the small entity basic
filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c),
1.16(d), 1.16(e), or  the small entity basic national fee
set forth in § 1.492(a) , will be treated as a written
assertion of entitlement to small entity status even if
the type of basic filing or basic national fee is
inadvertently selected in error.
(i) If the Office accords small entity status
based on payment of a small entity basic filing or
basic national fee under paragraph (c)(3) of this
section that is not applicable to that application,
any balance of the small entity fee that is
applicable to that application will be due along
with the appropriate surcharge set forth in §
1.16(f) , or § 1.16(g).
(ii) The payment of any small entity fee other
than those set forth in paragraph (c)(3) of this
section (whether in the exact fee amount or not)
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 will not be treated as a written assertion of
entitlement to small entity status and will not be
sufficient to establish small entity status in an
application or a patent.
(4) Assertion required in related, continuing, and
reissue applications . Status as a small entity must be
specifically established by an assertion in each related,
continuing and reissue application in which status is
appropriate and desired. Status as a small entity in one
application or patent does not affect the status of any
other application or patent, regardless of the
relationship of the applications or patents. The refiling
of an application under § 1.53 as a continuation,
divisional, or continuation-in-part application
(including a continued prosecution application under
§ 1.53(d)) , or the filing of a reissue application, requires
a new assertion as to continued entitlement to small
entity status for the continuing or reissue application.
(d) When small entity fees can be paid . Any fee, other
than the small entity basic filing fees and the small entity
national fees of paragraph (c)(3) of this section, can be
paid in the small entity amount only if it is submitted with,
or subsequent to, the submission of a written assertion of
entitlement to small entity status, except when refunds
are permitted by §  1.28(a).
(e)  Only one assertion required .
(1) An assertion of small entity status need only be
filed once in an application or patent. Small entity
status, once established, remains in effect until changed
pursuant to paragraph (g)(1) of this section. Where an
assignment of rights or an obligation to assign rights
to other parties who are small entities occurs subsequent
to an assertion of small entity status, a second assertion
is not required.
(2) Once small entity status is withdrawn pursuant
to paragraph (g)(2) of this section, a new written
assertion is required to again obtain small entity status.
(f)  Assertion requires a determination of entitlement
to pay small entity fees . Prior to submitting an assertion
of entitlement to small entity status in an application,
including a related, continuing, or reissue application, a
determination of such entitlement should be made
pursuant to the requirements of paragraph (a) of this
section. It should be determined that all parties holding
rights in the invention qualify for small entity status. The
Office will generally not question any assertion of small
entity status that is made in accordance with the
requirements of this section, but note paragraph (h) of
this section.
(g)(1)  New determination of entitlement to small entity
status is needed when issue and maintenance fees are
due. Once status as a small entity has been established
in an application or patent, fees as a small entity may
thereafter be paid in that application or patent without
regard to a change in status until the issue fee is due or
any maintenance fee is due.
(2) Notification of loss of entitlement to small entity
status is required when issue and maintenance fees are
due . Notification of a loss of entitlement to small entity
status must be filed in the application or patent prior
to paying, or at the time of paying, the earliest of the
issue fee or any maintenance fee due after the date on
which status as a small entity as defined in paragraph
(a) of this section is no longer appropriate. The
notification that small entity status is no longer
appropriate must be signed by a party identified in §
1.33(b).  Payment of a fee in other than the small entity
amount is not sufficient notification that small entity
status is no longer appropriate.
(h)  Fraud attempted or practiced on the Office .
(1) Any attempt to fraudulently establish status as
a small entity, or pay fees as a small entity, shall be
considered as a fraud practiced or attempted on the
Office.
(2) Improperly, and with intent to deceive,
establishing status as a small entity, or paying fees as
a small entity, shall be considered as a fraud practiced
or attempted on the Office.
[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982;
para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d),
49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131,
Oct. 10, 1997, effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8,
2000, effective Sept. 8, 2000; para. (a) revised, 69 FR 56481, Sept. 21,
2004, effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 FR 3880,
Jan. 27, 2005, effective Dec. 8, 2004]
§  1.28 Refunds when small entity status is later
established; how errors in small entity status
are excused.
(a) Refunds based on later establishment of small
entity status . A refund pursuant to § 1.26, 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 an assertion under § 1.27(c)
and a request for a refund of the excess amount are filed
within three months of the date of the timely payment of
the full fee. The three-month time period is not extendable
under § 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 three months of the date
of payment of, the full fee.
(b)  Date of payment .
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 (1) The three-month period for requesting a refund,
pursuant to paragraph (a) of this section, starts on the
date that a full fee has been paid;
(2) The date when a deficiency payment is paid in
full determines the amount of deficiency that is due,
pursuant to paragraph (c) of this section.
(c) How errors in small entity status are excused . 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 loss of
entitlement to small entity status as required by §
1.27(g)(2) , the error will be excused upon: compliance
with the separate submission and itemization requirements
of paragraphs (c)(1) and (c)(2) of this section, and the
deficiency payment requirement of paragraph (c)(2) of
this section:
(1) Separate submission required for each
application or patent . Any paper submitted under this
paragraph must be limited to the deficiency payment
(all fees paid in error), required by paragraph (c)(2) of
this section, for one application or one patent. Where
more than one application or patent is involved,
separate submissions of deficiency payments ( e.g. ,
checks) and itemizations are required for each
application or patent. See § 1.4(b) .
(2)  Payment of deficiency owed . The deficiency
owed, resulting from the previous erroneous payment
of small entity fees, must be paid.
(i)  Calculation of the deficiency owed . The
deficiency owed for each previous fee erroneously
paid as a small entity is the difference between
the current fee amount (for other than a small
entity) on the date the deficiency is paid in full
and the amount of the previous erroneous (small
entity) fee payment. The total deficiency payment
owed is the sum of the individual deficiency owed
amounts for each fee amount previously
erroneously paid as a small entity. Where a fee
paid in error as a small entity was subject to a fee
decrease between the time the fee was paid in error
and the time the deficiency is paid in full, the
deficiency owed is equal to the amount
(previously) paid in error;
(ii)  Itemization of the deficiency payment . An
itemization of the total deficiency payment is
required. The itemization must include the
following information:
(A) Each particular type of fee that
was erroneously paid as a small entity,
( e.g., basic statutory filing fee, two-monthextension of time fee) along with the
current fee amount for a non-small entity;
(B) The small entity fee actually paid,
and when. This will permit the Office to
differentiate, for example, between two
one-month extension of time fees
erroneously paid as a small entity but on
different dates;
(C) The deficiency owed amount (for
each fee erroneously paid); and
(D) The total deficiency payment
owed, which is the sum or total of the
individual deficiency owed amounts set
forth in paragraph (c)(2)(ii)(C) of this
section.
(3) Failure to comply with requirements . If the
requirements of paragraphs (c)(1) and (c)(2) of this
section are not complied with, such failure will either:
be treated as an authorization for the Office to process
the deficiency payment and charge the processing fee
set forth in § 1.17(i) , or result in a requirement for
compliance within a one-month non-extendable time
period under § 1.136(a)  to avoid the return of the fee
deficiency paper, at the option of the Office.
(d) Payment of deficiency operates as notification of
loss of status . Any deficiency payment (based on a
previous erroneous payment of a small entity fee)
submitted under paragraph (c) of this section will be
treated under § 1.27(g)(2) as a notification of a loss of
entitlement to small entity status.
[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982;
para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2),
57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised,
58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c)
revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; revised, 65
FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
Subpart B  — National Processing Provisions
PROSECUTION OF APPLICATION AND
APPOINTMENT OF ATTORNEY OR AGENT
§  1.31 Applicant may be represented by one or more
patent practitioners or joint inventors.
An applicant for patent may file and prosecute his or her
own case, or he or she may give a power of attorney so
as to be represented by one or more patent practitioners
or joint inventors. The United States Patent and
Trademark Office cannot aid in the selection of a patent
practitioner.
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 [50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; revised, 69
FR 29865, May 26, 2004, effective June 25, 2004; revised 69 FR 35427,
June 24, 2004, effective July 26, 2004; revised, 70 FR 56119, Sept. 26,
2005, effective Nov. 25, 2005]
§  1.32 Power of attorney.
(a)  Definitions .
(1) Patent practitioner  means a registered patent
attorney or registered patent agent under § 11.6.
(2)  Power of attorney  means a written document
by which a principal authorizes one or more patent
practitioners or joint inventors to act on his or her
behalf.
(3) Principal  means either an applicant for patent
(§ 1.41(b)) or an assignee of entire interest of the
applicant for patent or in a reexamination proceeding,
the assignee of the entirety of ownership of a patent.
The principal executes a power of attorney designating
one or more patent practitioners or joint inventors to
act on his or her behalf.
(4)  Revocation  means the cancellation by the
principal of the authority previously given to a patent
practitioner or joint inventor to act on his or her behalf.
(5)  Customer Number  means a number that may
be used to:
(i) Designate the correspondence address of a
patent application or patent such that the
correspondence address for the patent application,
patent or other patent proceeding would be the
address associated with the Customer Number;
(ii) Designate the fee address (§ 1.363 ) of a
patent such that the fee address for the patent
would be the address associated with the Customer
Number; and
(iii) Submit a list of patent practitioners such
that those patent practitioners associated with the
Customer Number would have power of attorney.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in
compliance with (c) of this section;
(3) Give the representative power to act on behalf
of the principal; and
(4) Be signed by the applicant for patent (§ 1.41(b))
or the assignee of the entire interest of the applicant.
(c) A power of attorney may only name as
representative:
(1) One or more joint inventors (§ 1.45);
(2) Those registered patent practitioners associated
with a Customer Number;(3) Ten or fewer patent practitioners, stating the
name and registration number of each patent
practitioner. Except as provided in paragraph (c)(1) or
(c)(2) of this section, the Office will not recognize more
than ten patent practitioners as being of record in an
application or patent. If a power of attorney names
more than ten patent practitioners, such power of
attorney must be accompanied by a separate paper
indicating which ten patent practitioners named in the
power of attorney are to be recognized by the Office
as being of record in the application or patent to which
the power of attorney is directed.
[Added, 69 FR 29865, May 26, 2004, effective June 25, 2004;
paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 26, 2005, effective
Nov. 25, 2005]
§  1.33 Correspondence respecting patent applications,
reexamination proceedings, and other
proceedings.
(a) Correspondence address and daytime telephone
number . When filing an application, a correspondence
address must be set forth in either an application data
sheet (§ 1.76 ), or elsewhere, in a clearly identifiable
manner, in any paper submitted with an application filing.
If no correspondence address is specified, the Office may
treat the mailing address of the first named inventor (if
provided, see §§ 1.76 (b)(1) and 1.63 (c)(2)) as the
correspondence address. The Office will direct, or
otherwise make available, all notices, official letters, and
other communications relating to the application to the
person associated with the correspondence address. For
correspondence submitted via the Office’s electronic filing
system, however, an electronic acknowledgment receipt
will be sent to the submitter. The Office will generally
not engage in double correspondence with an applicant
and a patent practitioner, or with more than one patent
practitioner except as deemed necessary by the Director.
If more than one correspondence address is specified in
a single document, the Office will select one of the
specified addresses for use as the correspondence address
and, if given, will select the address associated with a
Customer Number over a typed correspondence address.
For the party to whom correspondence is to be addressed,
a daytime telephone number should be supplied in a
clearly identifiable manner and may be changed by any
party who may change the correspondence address. The
correspondence address may be changed as follows:
(1) Prior to filing of §   1.63 oath or declaration
by any of the inventors . If a § 1.63 oath or declaration
has not been filed by any of the inventors, the
correspondence address may be changed by the party
who filed the application. If the application was filed
by a patent practitioner, any other patent practitioner
named in the transmittal papers may also change the
correspondence address. Thus, the inventor(s), any
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 patent practitioner named in the transmittal papers
accompanying the original application, or a party that
will be the assignee who filed the application, may
change the correspondence address in that application
under this paragraph.
(2) Where a § 1.63 oath or declaration has been
filed by any of the inventors.  If a § 1.63 oath or
declaration has been filed, or is filed concurrent with
the filing of an application, by any of the inventors, the
correspondence address may be changed by the parties
set forth in paragraph (b) of this section, except for
paragraph (b)(2).
(b)  Amendments and other papers . Amendments and
other papers, except for written assertions pursuant to §
1.27(c)(2)(ii) of this part, filed in the application must be
signed by:
(1) A patent practitioner of record appointed in
compliance with § 1.32(b);
(2) A patent practitioner not of record who acts in
a representative capacity under the provisions of § 1.34;
(3) An assignee as provided for under § 3.71(b)  of
this chapter; or
(4) All of the applicants (§ 1.41(b) ) for patent,
unless there is an assignee of the entire interest and
such assignee has taken action in the application in
accordance with § 3.71 of this chapter.
(c) All notices, official letters, and other
communications for the patent owner or owners in a
reexamination proceeding will be directed to the
correspondence address. Amendments and other papers
filed in a reexamination proceeding on behalf of the patent
owner must be signed by the patent owner, or if there is
more than one owner by all the owners, or by an attorney
or agent of record in the patent file, or by a registered
attorney or agent not of record who acts in a representative
capacity under the provisions of § 1.34. Double
correspondence with the patent owner or owners and the
patent owner’s attorney or agent, or with more than one
attorney or agent, will not be undertaken.
(d) A “correspondence address” or change thereto
may be filed with the Patent and Trademark Office during
the enforceable life of the patent. The “correspondence
address” will be used in any correspondence relating to
maintenance fees unless a separate “fee address” has been
specified. See § 1.363  for “fee address” used solely for
maintenance fee purposes.
(e) A change of address filed in a patent application
or patent does not change the address for a patent
practitioner in the roster of patent attorneys and agents.
See § 11.11  of this title.[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para.
(d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para.
(c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b)
revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997; paras. (a)
and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
(a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and
(c) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; para.
(c) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004; para.
(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (a)
introductory text revised, paras. (a)(1), (b)(1), and (b)(2) revised, and
para. (e) added, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005;
para. (a) introductory text revised, 72 FR 2770, Jan. 23, 2007, effective
Jan. 23, 2007; para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective
May 16, 2007]
§  1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative
capacity appears in person or signs a paper in practice
before the United States Patent and Trademark Office in
a patent case, his or her personal appearance or signature
shall constitute a representation to the United States Patent
and Trademark Office that under the provisions of this
subchapter and the law, he or she is authorized to
represent the particular party on whose behalf he or she
acts. In filing such a paper, the patent practitioner must
set forth his or her registration number, his or her name
and signature. Further proof of authority to act in a
representative capacity may be required.
[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6,
1985, effective Mar. 6, 1985; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective
June 25, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25,
2005]
§  1.36 Revocation of power of attorney; withdrawal
of patent attorney or agent.
(a) A power of attorney, pursuant to § 1.32(b), may
be revoked at any stage in the proceedings of a case by
an applicant for patent (§ 1.41(b)) or an assignee of the
entire interest of the applicant, or the owner of the entire
interest of a patent. A power of attorney to the patent
practitioners associated with a Customer Number will be
treated as a request to revoke any powers of attorney
previously given. Fewer than all of the applicants (or
fewer than all of the assignees of the entire interest of the
applicant or, in a reexamination proceeding, fewer than
all the owners of the entire interest of a patent) may
revoke the power of attorney only upon a showing of
sufficient cause, and payment of the petition fee set forth
in § 1.17(f). A patent practitioner will be notified of the
revocation of the power of attorney. Where power of
attorney is given to the patent practitioners associated
with a Customer Number (§ 1.32(c)(2)), the practitioners
so appointed will also be notified of the revocation of the
power of attorney when the power of attorney to all of
the practitioners associated with the Customer Number
is revoked. The notice of revocation will be mailed to the
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 correspondence address for the application (§ 1.33) in
effect before the revocation. An assignment will not of
itself operate as a revocation of a power previously given,
but the assignee of the entire interest of the applicant may
revoke previous powers of attorney and give another
power of attorney of the assignee’s own selection as
provided in § 1.32(b).
(b) A registered patent attorney or patent agent who
has been given a power of attorney pursuant to § 1.32(b)
may withdraw as attorney or agent of record upon
application to and approval by the Director. The applicant
or patent owner will be notified of the withdrawal of the
registered patent attorney or patent agent. Where power
of attorney is given to the patent practitioners associated
with a Customer Number, a request to delete all of the
patent practitioners associated with the Customer Number
may not be granted if an applicant has given power of
attorney to the patent practitioners associated with the
Customer Number in an application that has an Office
action to which a reply is due, but insufficient time
remains for the applicant to file a reply. See § 41.5 of this
title for withdrawal during proceedings before the Board
of Patent Appeals and Interferences.
[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised,
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865,
May 26, 2004, effective June 25, 2004; revised, 69 FR 49959, Aug. 12,
2004, effective Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept.
26, 2005, effective Nov. 25, 2005]
WHO MAY APPLY FOR A PATENT
§  1.41 Applicant for patent.
(a) A patent is applied for in the name or names of
the actual inventor or inventors.
(1) The inventorship of a nonprovisional application
is that inventorship set forth in the oath or declaration
as prescribed by §  1.63 , except as provided for in §§
1.53(d)(4 ) and 1.63(d ). If an oath or declaration as
prescribed by § 1.63 is not filed during the pendency
of a nonprovisional application, the inventorship is that
inventorship set forth in the application papers filed
pursuant to § 1.53(b) , unless applicant files a paper,
including the processing fee set forth in § 1.17(i),
supplying or changing the name or names of the
inventor or inventors.
(2) The inventorship of a provisional application
is that inventorship set forth in the cover sheet as
prescribed by § 1.51(c)(1) . If a cover sheet as
prescribed by § 1.51(c)(1)  is not filed during the
pendency of a provisional application, the inventorship
is that inventorship set forth in the application papers
filed pursuant to § 1.53(c) , unless applicant files a paper
including the processing fee set forth in § 1.17(q) ,supplying or changing the name or names of the
inventor or inventors.
(3) In a nonprovisional application filed without an
oath or declaration as prescribed by § 1.63 or a
provisional application filed without a cover sheet as
prescribed by § 1.51(c)(1) , the name, residence, and
citizenship of each person believed to be an actual
inventor should be provided when the application
papers pursuant to § 1.53(b)  or § 1.53(c)  are filed.
(4) The inventorship of an international application
entering the national stage under 35 U.S.C. 371 is that
inventorship set forth in the international application,
which includes any change effected under PCT Rule
92bis . See § 1.497 (d) and (f) for filing an oath or
declaration naming an inventive entity different from
the inventive entity named in the international
application, or if a change to the inventive entity has
been effected under PCT Rule 92bis  subsequent to the
execution of any declaration filed under PCT Rule
4.17(iv) (§ 1.48(f)(1) does not apply to an international
application entering the national stage under 35 U.S.C.
371).
(b) Unless the contrary is indicated the word
“applicant” when used in these sections refers to the
inventor or joint inventors who are applying for a patent,
or to the person mentioned in §§ 1.42, 1.43 or 1.47 who
is applying for a patent in place of the inventor.
(c) Any person authorized by the applicant may
physically or electronically deliver an application for
patent to the Office on behalf of the inventor or inventors,
but an oath or declaration for the application (§  1.63 ) can
only be made in accordance with § 1.64.
(d) A showing may be required from the person filing
the application that the filing was authorized where such
authorization comes into question.
[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para.
(a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras.
(a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
para. (a)(4) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]
§  1.42 When the inventor is dead.
In case of the death of the inventor, the legal
representative (executor, administrator, etc.) of the
deceased inventor may make the necessary oath or
declaration, and apply for and obtain the patent. Where
the inventor dies during the time intervening between the
filing of the application and the granting of a patent
thereon, the letters patent may be issued to the legal
representative upon proper intervention.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]
§  1.43 When the inventor is insane or legally
incapacitated.
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 In case an inventor is insane or otherwise legally
incapacitated, the legal representative (guardian,
conservator, etc.) of such inventor may make the
necessary oath or declaration, and apply for and obtain
the patent.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]
§  1.44 [Reserved]
[Removed and reserved, 65 FR 54604, Sept. 8, 2000, effective
Sept. 8, 2000]
§  1.45 Joint inventors.
(a) Joint inventors must apply for a patent jointly and
each must make the required oath or declaration: neither
of them alone, nor less than the entire number, can apply
for a patent for an invention invented by them jointly,
except as provided in § 1.47 .
(b) Inventors may apply for a patent jointly even
though
(1) They did not physically work together or at the
same time,
(2) Each inventor did not make the same type or
amount of contribution, or
(3) Each inventor did not make a contribution to
the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional
application, each named inventor must have made a
contribution, individually or jointly, to the subject matter
of at least one claim of the application and the application
will be considered to be a joint application under 35
U.S.C. 116 . If multiple inventors are named in a
provisional application, each named inventor must have
made a contribution, individually or jointly, to the subject
matter disclosed in the provisional application and the
provisional application will be considered to be a joint
application under 35 U .S.C. 116 .
[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct.
1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 50 FR
9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995]
§  1.46 Assigned inventions and patents.
In case the whole or a part interest in the invention or in
the patent to be issued is assigned, the application must
still be made or authorized to be made, and an oath or
declaration signed, by the inventor or one of the persons
mentioned in §§ 1.42 , 1.43, or 1.47. However, the patent
may be issued to the assignee or jointly to the inventor
and the assignee as provided in § 3.81 .
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR
29642, July 6, 1992, effective Sept. 4, 1992]§  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 nonsigning
inventor. The oath or declaration in such an application
must be accompanied by a petition including proof of the
pertinent facts, the fee set forth in § 1.17(g) , and the last
known address of the nonsigning inventor. The nonsigning
inventor may subsequently join in the application by filing
an oath or declaration complying with § 1.63.
(b) Whenever all of the inventors refuse to execute
an application for patent, or cannot be found or reached
after diligent effort, a person to whom an inventor has
assigned or agreed in writing to assign the invention, or
who otherwise shows sufficient proprietary interest in the
matter justifying such action, may make application for
patent on behalf of and as agent for all the inventors. The
oath or declaration in such an application must be
accompanied by a petition including proof of the pertinent
facts, a showing that such action is necessary to preserve
the rights of the parties or to prevent irreparable damage,
the fee set forth in § 1.17(g) , and the last known address
of all of the inventors. An inventor may subsequently join
in the application by filing an oath or declaration
complying with § 1.63.
(c) The Office will send notice of the filing of the
application to all inventors who have not joined in the
application at the address(es) provided in the petition
under this section, and publish notice of the filing of the
application in the  Official Gazette . The Office may
dispense with this notice provision in a continuation or
divisional application, if notice regarding the filing of the
prior application was given to the nonsigning inventor(s).
[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR
2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; paras. (a) and (b) revised, 69 FR 56481, Sept.
21, 2004, effective Nov. 22, 2004]
§  1.48 Correction of inventorship in a patent
application, other than a reissue application,
pursuant to 35 U.S.C.  116.
(a) Nonprovisional application after oath/declaration
filed . If the inventive entity is set forth in error in an
executed § 1.63 oath or declaration in a nonprovisional
application, and such error arose without any deceptive
intention on the part of the person named as an inventor
in error or on the part of the person who through error
was not named as an inventor, the inventorship of the
nonprovisional application may be amended to name only
the actual inventor or inventors. Amendment of the
inventorship requires:
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 (1) A request to correct the inventorship that sets
forth the desired inventorship change;
(2) A statement from each person being added as
an inventor and from each person being deleted as an
inventor that the error in inventorship occurred without
deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or
inventors as required by § 1.63 or as permitted by §§
1.42, 1.43 or § 1.47;
(4) The processing fee set forth in § 1.17(i ); and
(5) If an assignment has been executed by any of
the original named inventors, the written consent of
the assignee (see § 3.73(b)  of this chapter).
(b)  Nonprovisional application—fewer inventors due
to amendment or cancellation of claims . If the correct
inventors are named in a nonprovisional application, and
the prosecution of the nonprovisional application results
in the amendment or cancellation of claims so that fewer
than all of the currently named inventors are the actual
inventors of the invention being claimed in the
nonprovisional application, an amendment must be filed
requesting deletion of the name or names of the person
or persons who are not inventors of the invention being
claimed. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in
§ 1.33(b) , to correct the inventorship that identifies the
named inventor or inventors being deleted and
acknowledges that the inventor’s invention is no longer
being claimed in the nonprovisional application; and
(2) The processing fee set forth in § 1.17(i) .
(c)  Nonprovisional application—inventors added for
claims to previously unclaimed subject matter . If a
nonprovisional application discloses unclaimed subject
matter by an inventor or inventors not named in the
application, the application may be amended to add claims
to the subject matter and name the correct inventors for
the application. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets
forth the desired inventorship change;
(2) A statement from each person being added as
an inventor that the addition is necessitated by
amendment of the claims and that the inventorship error
occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventors
as required by § 1.63 or as permitted by §§  1.42 , 1.43,
or § 1.47;
(4) The processing fee set forth in § 1.17(i) ; and(5) If an assignment has been executed by any of
the original named inventors, the written consent of
the assignee (see § 3.73(b ) of this chapter).
(d)  Provisional application—adding omitted
inventors. If the name or names of an inventor or inventors
were omitted in a provisional application through error
without any deceptive intention on the part of the omitted
inventor or inventors, the provisional application may be
amended to add the name or names of the omitted inventor
or inventors. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 
1.33(b) , to correct the inventorship that identifies the
inventor or inventors being added and states that the
inventorship error occurred without deceptive intention
on the part of the omitted inventor or inventors; and
(2) The processing fee set forth in § 1.17(q) .
(e)  Provisional application—deleting the name or
names of the inventor or inventors. If a person or persons
were named as an inventor or inventors in a provisional
application through error without any deceptive intention
on the part of such person or persons, an amendment may
be filed in the provisional application deleting the name
or names of the person or persons who were erroneously
named. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets
forth the desired inventorship change;
(2) A statement by the person or persons whose
name or names are being deleted that the inventorship
error occurred without deceptive intention on the part
of such person or persons;
(3) The processing fee set forth in § 1.17(q) ; and
(4) If an assignment has been executed by any of
the original named inventors, the written consent of
the assignee (see § 3.73(b)  of this chapter).
(f)
(1) Nonprovisional application—filing executed
oath/declaration corrects inventorship . If the correct
inventor or inventors are not named on filing a
nonprovisional application under § 1.53(b)  without an
executed oath or declaration under § 1.63 by any of the
inventors, the first submission of an executed oath or
declaration under § 1.63 by any of the inventors during
the pendency of the application will act to correct the
earlier identification of inventorship. See §§ 1.41(a)(4)
and 1.497(d) and (f)  for submission of an executed
oath or declaration to enter the national stage under 35
U.S.C. 371 naming an inventive entity different from
the inventive entity set forth in the international stage.
(2) Provisional application filing cover sheet
corrects inventorship.  If the correct inventor or
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 inventors are not named on filing a provisional
application without a cover sheet under § 1.51(c)(1) ,
the later submission of a cover sheet under § 1.51(c)(1)
during the pendency of the application will act to
correct the earlier identification of inventorship.
(g)  Additional information may be required . The
Office may require such other information as may be
deemed appropriate under the particular circumstances
surrounding the correction of inventorship.
(h) Reissue applications not covered . The provisions
of this section do not apply to reissue applications. See
§§ 1.171  and 1.175  for correction of inventorship in a
patent via a reissue application.
(i) Correction of inventorship in patent . See § 1.324
for correction of inventorship in a patent.
(j)  Correction of inventorship in a contested case
before the Board of Patent Appeals and Interferences  .
In a contested case under part 41, subpart D, of this title,
a request for correction of an application must be in the
form of a motion under § 41.121 (a)(2) of this title and
must comply with the requirements of this section.
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7,
1985, effective May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992,
effective Jan. 4, 1993; revised, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.
(f)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras.
(a)-(c) and (i) revised and para. (j) added, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
THE APPLICATION
§  1.51 General requisites of an application.
(a) Applications for patents must be made to the
Director of the United States Patent and Trademark
Office.
(b) A complete application filed under § 1.53(b)  or §
1.53(d ) comprises:
(1) A specification as prescribed by 35 U.S.C. 112,
including a claim or claims, see §§ 1.71 to 1.77;
(2) An oath or declaration, see §§ 1.63 and  1.68 ;
(3) Drawings, when necessary, see §§ 1.81 to  1.85 ;
and
(4) The prescribed filing fee, search fee,
examination fee, and application size fee, see § 1.16.
(c) A complete provisional application filed under
§ 1.53 (c) comprises:
(1) A cover sheet identifying:
(i) The application as a provisional
application,(ii) The name or names of the inventor or
inventors, (see § 1.41 (a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the
attorney or agent (if applicable),
(vi) The docket number used by the person
filing the application to identify the application
(if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government
agency and Government contract number (if the
invention was made by an agency of the U.S.
Government or under a contract with an agency
of the U.S. Government);
(2) A specification as prescribed by the first
paragraph of 35 U .S.C. 112 , see § 1.71 ;
(3) Drawings, when necessary, see §§ 1.81  to 1.85;
and
(4) The prescribed filing fee and application size
fee, see § 1.16 .
(d) Applicants are encouraged to file an information
disclosure statement in nonprovisional applications. See
§ 1.97  and § 1.98 . No information disclosure statement
may be filed in a provisional application.
[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41275,
Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709,
Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17,
1992, effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, Sept. 8,
2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; paras. (b)(4) and (c)(4) revised, 70 FR
3880, Jan. 27, 2005, effective Dec. 8, 2004]
§  1.52 Language, paper, writing, margins, compact
disc specifications.
(a)   Papers that are to become a part of the
permanent United States Patent and Trademark Office
records in the file of a patent application or a
reexamination proceeding .
(1) All papers, other than drawings, that are
submitted on paper or by facsimile transmission, and
are to become a part of the permanent United States
Patent and Trademark Office records in the file of a
patent application or reexamination proceeding, must
be on sheets of paper that are the same size, not
permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny,
durable, and white;
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 (ii) Either 21.0 cm by 29.7 cm (DIN size A4)
or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with
each sheet including 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);
(iii) Written on only one side in portrait
orientation;
(iv) Plainly and legibly written either by a
typewriter or machine printer in permanent dark
ink or its equivalent; and
(v) 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 capture by
use of digital imaging and optical character
recognition.
(2) All papers that are submitted on paper or by
facsimile transmission and are to become a part of the
permanent records of the United States Patent and
Trademark Office should have no holes in the sheets
as submitted.
(3) The provisions of this paragraph and paragraph
(b) of this section do not apply to the pre-printed
information on paper forms provided by the Office, or
to the copy of the patent submitted on paper in double
column format as the specification in a reissue
application or request for reexamination.
(4) See  § 1.58 for chemical and mathematical
formulae and tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the
Office must be formatted and transmitted in compliance
with the Office’s electronic filing system requirements.
(b)  The application (specification, including the
claims, drawings, and oath or declaration) or
reexamination proceeding and any amendments or
corrections to the application or reexamination
proceeding .
(1) The application or proceeding and any
amendments or corrections to the application (including
any translation submitted pursuant to paragraph (d) of
this section) or proceeding, except as provided for in
§ 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph
(a) of this section; and
(ii) Be in the English language or be
accompanied by a translation of the applicationand a translation of any corrections or amendments
into the English language together with a
statement that the translation is accurate.
(2) The specification (including the abstract and
claims) for other than reissue applications and
reexamination proceedings, and any amendments for
applications (including reissue applications) and
reexamination proceedings to the specification, except
as provided for in §§ 1.821  through 1.825 , must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font ( e.g.,
Arial, Times Roman, or Courier, preferably a font
size of 12) lettering style having capital letters
which should be at least 0.3175 cm. (0.125 inch)
high, but may be no smaller than 0.21 cm. (0.08
inch) high ( e.g., a font size of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a
separate physical sheet or electronic page (§ 1.75(h) ).
(4) The abstract must commence on a separate
physical sheet or electronic page or be submitted as the
first page of the patent in a reissue application or
reexamination proceeding (§ 1.72(b) ).
(5) Other than in a reissue application or
reexamination proceeding, the pages of the
specification including claims and abstract must be
numbered consecutively, starting with 1, the numbers
being centrally located above or preferably below, the
text.
(6) Other than in a reissue application or
reexamination proceeding, the paragraphs of the
specification, other than in the claims or abstract, may
be numbered at the time the application is filed, and
should be individually and consecutively numbered
using Arabic numerals, so as to unambiguously identify
each paragraph. The number should consist of at least
four numerals enclosed in square brackets, including
leading zeros ( e.g., [0001]). The numbers and
enclosing brackets should appear to the right of the left
margin as the first item in each paragraph, before the
first word of the paragraph, and should be highlighted
in bold. A gap, equivalent to approximately four spaces,
should follow the number. Nontext elements ( e.g.,
tables, mathematical or chemical formulae, chemical
structures, and sequence data) are considered part of
the numbered paragraph around or above the elements,
and should not be independently numbered. If a nontext
element extends to the left margin, it should not be
numbered as a separate and independent paragraph. A
list is also treated as part of the paragraph around or
above the list, and should not be independently
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 numbered. Paragraph or section headers (titles),
whether abutting the left margin or centered on the
page, are not considered paragraphs and should not be
numbered.
(c)
(1) Any interlineation, erasure, cancellation or other
alteration of the application papers filed must be made
before the signing of any accompanying oath or
declaration pursuant to § 1.63 referring to those
application papers and should be dated and initialed or
signed by the applicant on the same sheet of paper.
Application papers containing alterations made after
the signing of an oath or declaration referring to those
application papers must be supported by a supplemental
oath or declaration under § 1.67. In either situation, a
substitute specification (§ 1.125 ) is required if the
application papers do not comply with paragraphs (a)
and (b) of this section.
(2) After the signing of the oath or declaration
referring to the application papers, amendments may
only be made in the manner provided by §  1.121 .
(3) Notwithstanding the provisions of this
paragraph, if an oath or declaration is a copy of the
oath or declaration from a prior application, the
application for which such copy is submitted may
contain alterations that do not introduce matter that
would have been new matter in the prior application.
(d) A nonprovisional or provisional application may
be in a language other than English.
(1) Nonprovisional application .  If a
nonprovisional application is filed in a language other
than English, an English language translation of the
non-English language application, a statement that the
translation is accurate, and the processing fee set forth
in § 1.17(i)  are required. If these items are not filed
with the application, applicant will be notified and
given a period of time within which they must be filed
in order to avoid abandonment.
(2) Provisional application.  If a provisional
application is filed in a language other than English,
an English language translation of the non-English
language provisional application will not be required
in the provisional application. See  § 1.78(a)  for the
requirements for claiming the benefit of such
provisional application in a nonprovisional application.
(e)  Electronic documents that are to become part of
the permanent United States Patent and Trademark Office
records in the file of a patent application or reexamination
proceeding .(1) The following documents may be submitted to
the Office on a compact disc in compliance with this
paragraph:
(i) A computer program listing (see §  1.96 );
(ii) A “Sequence Listing” (submitted under §
1.821(c)) ; or
(iii) Any individual table (see § 1.58) if the
table is more than 50 pages in length, or if the total
number of pages of all of the tables in an
application exceeds 100 pages in length, where a
table page is a page printed on paper in
conformance with paragraph (b) of this section
and §  1.58 (c).
(2) A compact disc as used in this part means a
Compact Disc-Read Only Memory (CD-ROM) or a
Compact Disc-Recordable (CD-R) in compliance with
this paragraph. A CD-ROM is a “read-only” medium
on which the data is pressed into the disc so that it
cannot be changed or erased. A CD-R is a “write once”
medium on which once the data is recorded, it is
permanent and cannot be changed or erased.
(3)
(i) Each compact disc must conform to the
International Standards Organization (ISO) 9660
standard, and the contents of each compact disc
must be in compliance with the American
Standard Code for Information Interchange
(ASCII). CD-R discs must be finalized so that
they are closed to further writing to the CD-R.
(ii) Each compact disc must be enclosed in a
hard compact disc case within an unsealed padded
and protective mailing envelope and accompanied
by a transmittal letter on paper in accordance with
paragraph (a) of this section. The transmittal letter
must list for each compact disc the machine format
( e.g., IBM-PC, Macintosh), the operating system
compatibility ( e.g., MS-DOS, MS-Windows,
Macintosh, Unix), a list of files contained on the
compact disc including their names, sizes in bytes,
and dates of creation, plus any other special
information that is necessary to identify, maintain,
and interpret ( e.g., tables in landscape orientation
should be identified as landscape orientation or
be identified when inquired about) the information
on the compact disc. Compact discs submitted to
the Office will not be returned to the applicant.
(4) Any compact disc must be submitted
in duplicate unless it contains only the “Sequence
Listing” in computer readable form required by
§ 1.821(e) . The compact disc and duplicate copy must
be labeled “Copy 1” and “Copy 2,” respectively. The
transmittal letter which accompanies the compact disc
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 must include a statement that the two compact discs
are identical. In the event that the two compact discs
are not identical, the Office will use the compact disc
labeled “Copy 1” for further processing. Any
amendment to the information on a compact disc must
be by way of a replacement compact disc in compliance
with this paragraph containing the substitute
information, and must be accompanied by a statement
that the replacement compact disc contains no new
matter. The compact disc and copy must be labeled
“COPY 1 REPLACEMENT MM/DD/YYYY” (with
the month, day and year of creation indicated), and
“COPY 2 REPLACEMENT MM/DD/YYYY ,”
respectively.
(5) The specification must contain an
incorporation-by-reference of the material on the
compact disc in a separate paragraph (§ 1.77(b)(5)) ,
identifying each compact disc by the names of the files
contained on each of the compact discs, their date of
creation and their sizes in bytes. The Office may require
applicant to amend the specification to include in the
paper portion any part of the specification previously
submitted on compact disc.
(6) A compact disc must also be labeled with the
following information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number
if known, used by the person filing the application
to identify the application; and
(iv) A creation date of the compact disc.
(v) If multiple compact discs are submitted,
the label shall indicate their order ( e.g. “1 of X”).
(vi) An indication that the disk is “Copy 1” or
“Copy 2” of the submission. See paragraph (b)(4)
of this section.
(7) If a file is unreadable on both copies of the disc,
the unreadable file will be treated as not having been
submitted. A file is unreadable if, for example, it is of
a format that does not comply with the requirements
of paragraph (e)(3) of this section, it is corrupted by a
computer virus, or it is written onto a defective compact
disc.
(f)
(1) Any sequence listing in an electronic medium
in compliance with §§  1.52 (e) and 1.821 (c) or (e), and
any computer program listing filed in an electronic
medium in compliance with §§ 1.52(e)  and  1.96 , will
be excluded when determining the application size fee
required by §  1.16 (s) or §  1.492 (j). For purposes ofdetermining the application size fee required by §
1.16(s) or §  1.492 (j), for an application the specification
and drawings of which, excluding any sequence listing
in compliance with §  1.821 (c) or (e), and any computer
program listing filed in an electronic medium in
compliance with §§ 1.52(e) and  1.96 , are submitted in
whole or in part on an electronic medium other than
the Office electronic filing system, each three kilobytes
of content submitted on an electronic medium shall be
counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph,
the paper size equivalent of the specification and
drawings of an application submitted via the Office
electronic filing system will be considered to be
seventy-five percent of the number of sheets of paper
present in the specification and drawings of the
application when entered into the Office file wrapper
after being rendered by the Office electronic filing
system for purposes of determining the application size
fee required by §  1.16 (s). Any sequence listing in
compliance with § 1.821 (c) or (e), and any computer
program listing in compliance with §  1.96 , submitted
via the Office electronic filing system will be excluded
when determining the application size fee required by
§ 1.16 (s) if the listing is submitted in ASCII text as
part of an associated file.
[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41275,
Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2709, Jan. 20,
1983, effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984,
effective Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective
Mar. 16, 1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para. (e) added, 65 FR 54604, Sept.
8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958,
Dec. 18, 2000); paras. (a), (b), and (c) revised, 65 FR 54604, Sept. 8,
2000, effective Nov. 7, 2000; para. (d) revised, 65 FR 57024, Sept. 20,
2000, effective Nov. 29, 2000; paras. (a) and (b) revised, 68 FR 38611,
June 30, 2003, effective July 30, 2003; section heading and paras.
(b)(2)(ii), (e)(1)(iii) and (e)(3)(i)-(ii) revised, 69 FR 56481, Sept. 21,
2004, effective Oct. 21, 2004; section heading revised and para. (f)
added; 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (f)
revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (e)(5)
revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras.
(a)(5), (a)(7), and (b)(7) removed and para. (a)(6) redesignated as (a)(5),
70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (d)(2)
revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and
never became effective); para. (d)(2) revised, 74 FR 52686, Oct. 14,
2009, effective Oct. 14, 2009 (to remove changes made by the final
rules in 72 FR 46716 from the CFR)]
§  1.53 Application number, filing date, and
completion of application.
(a)  Application number . Any papers received in the
Patent and Trademark Office which purport to be an
application for a patent will be assigned an application
number for identification purposes.
(b) Application filing requirements - Nonprovisional
application . The filing date of an application for patent
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 filed under this section, except for a provisional
application under paragraph (c) of this section or a
continued prosecution application under paragraph (d) of
this section, is the date on which a specification as
prescribed by 35 U .S.C. 112 containing a description
pursuant to § 1.71  and at least one claim pursuant to §
1.75, and any drawing required by § 1.81 (a) are filed in
the Patent and Trademark Office. No new matter may be
introduced into an application after its filing date. A
continuing application, which may be a continuation,
divisional, or continuation-in-part application, may be
filed under the conditions specified in 35 U.S.C. 120 , 121
or 365(c) and § 1.78 (a).
(1) A continuation or divisional application that
names as inventors the same or fewer than all of the
inventors named in the prior application may be filed
under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may
disclose and claim subject matter not disclosed in the
prior application) or a continuation or divisional
application naming an inventor not named in the prior
application must be filed under this paragraph.
(c) Application filing requirements - Provisional
application . The filing date of a provisional application
is the date on which a specification as prescribed by the
first paragraph of 35 U .S.C. 112 , and any drawing
required by § 1.81 (a) are filed in the Patent and Trademark
Office. No amendment, other than to make the provisional
application comply with the patent statute and all
applicable regulations, may be made to the provisional
application after the filing date of the provisional
application.
(1) A provisional application must also include the
cover sheet required by § 1.51(c)(1) , which may be an
application data sheet (§ 1.76), or a cover letter
identifying the application as a provisional application.
Otherwise, the application will be treated as an
application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph
(b) of this section may be converted to a provisional
application and be accorded the original filing date of
the application filed under paragraph (b) of this section.
The grant of such a request for conversion will not
entitle applicant to a refund of the fees that were
properly paid in the application filed under paragraph
(b) of this section. Such a request for conversion must
be accompanied by the processing fee set forth in §
1.17(q)  and be filed prior to the earliest of:
(i) Abandonment of the application filed under
paragraph (b) of this section;
(ii) Payment of the issue fee on the application
filed under paragraph (b) of this section;(iii) Expiration of twelve months after the
filing date of the application filed under paragraph
(b) of this section; or
(iv) The filing of a request for a statutory
invention registration under § 1.293  in the
application filed under paragraph (b) of this
section.
(3) A provisional application filed under paragraph
(c) of this section may be converted to a nonprovisional
application filed under paragraph (b) of this section
and accorded the original filing date of the provisional
application. The conversion of a provisional application
to a nonprovisional application will not result in either
the refund of any fee properly paid in the provisional
application or the application of any such fee to the
filing fee, or any other fee, for the nonprovisional
application. Conversion of a provisional application to
a nonprovisional application under this paragraph will
result in the term of any patent to issue from the
application being measured from at least the filing date
of the provisional application for which conversion is
requested. Thus, applicants should consider avoiding
this adverse patent term impact by filing a
nonprovisional application claiming the benefit of the
provisional application under 35 U .S.C. 119(e)  (rather
than converting the provisional application into a
nonprovisional application pursuant to this paragraph).
A request to convert a provisional application to a
nonprovisional application must be accompanied by
the fee set forth in § 1.17(i)  and an amendment
including at least one claim as prescribed by the second
paragraph of 35 U .S.C. 112 , unless the provisional
application under paragraph (c) of this section
otherwise contains at least one claim as prescribed by
the second paragraph of 35 U .S.C.112 . The
nonprovisional application resulting from conversion
of a provisional application must also include the filing
fee, search fee, and examination fee for a
nonprovisional application, an oath or declaration by
the applicant pursuant to §§ 1.63 , 1.162 , or 1.175 , and
the surcharge required by § 1.16(f)  if either the basic
filing fee for a nonprovisional application or the oath
or declaration was not present on the filing date
accorded the resulting nonprovisional application ( i.e.,
the filing date of the original provisional application).
A request to convert a provisional application to a
nonprovisional application must also be filed prior to
the earliest of:
(i) 
Abandonment of the provisional application
filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing
date of the provisional application filed under
paragraph (c) of this section.
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 (4) A provisional application is not entitled to the
right of priority under 35 U.S.C. 119  or 365(a)  or
§ 1.55,  or to the benefit of an earlier filing date under
35 U.S.C. 120 , 121 or 365(c)  or § 1.78 of any other
application. No claim for priority under 35 U.S.C.
119(e)  or § 1.78(a)(4)  may be made in a design
application based on a provisional application. No
request under § 1.293  for a statutory invention
registration may be filed in a provisional application.
The requirements of §§ 1.821  through 1.825  regarding
application disclosures containing nucleotide and/or
amino acid sequences are not mandatory for provisional
applications.
(d)  Application filing requirements - Continued
prosecution (nonprovisional) application .
(1) A continuation or divisional application (but
not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution
application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a
design application that is complete as defined by
§ 1.51(b) ; and
(iii) The application under this paragraph is
filed before the earliest of:
(A) Payment of the issue fee on the
prior application, unless a petition under
§ 1.313(c)  is granted in the prior
application;
(B) Abandonment of the prior
application; or
(C) Termination of proceedings on the
prior application.
(2) The filing date of a continued prosecution
application is the date on which a request on a separate
paper for an application under this paragraph is filed.
An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter
disclosed in the prior application;
(iii) Names as inventors the same inventors
named in the prior application on the date the
application under this paragraph was filed, except
as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application
under this paragraph, will utilize the file jacket
and contents of the prior application, including
the specification, drawings and oath or declaration
from the prior application, to constitute the newapplication, and will be assigned the application
number of the prior application for identification
purposes; and
(v) Is a request to expressly abandon the prior
application as of the filing date of the request for
an application under this paragraph.
(3) The filing fee, search fee, and examination fee
for a continued prosecution application filed under this
paragraph are the basic filing fee as set forth in §
1.16(b), the search fee as set forth in §  1.16  (l), and the
examination fee as set forth in §  1.16 (p).
(4) An application filed under this paragraph may
be filed by fewer than all the inventors named in the
prior application, provided that the request for an
application under this paragraph when filed is
accompanied by a statement requesting deletion of the
name or names of the person or persons who are not
inventors of the invention being claimed in the new
application. No person may be named as an inventor
in an application filed under this paragraph who was
not named as an inventor in the prior application on
the date the application under this paragraph was filed,
except by way of correction of inventorship under
§ 1.48.
(5) Any new change must be made in the form of
an amendment to the prior application as it existed prior
to the filing of an application under this paragraph. No
amendment in an application under this paragraph (a
continued prosecution application) may introduce new
matter or matter that would have been new matter in
the prior application. Any new specification filed with
the request for an application under this paragraph will
not be considered part of the original application
papers, but will be treated as a substitute specification
in accordance with § 1.125 .
(6) The filing of a continued prosecution application
under this paragraph will be construed to include a
waiver of confidentiality by the applicant under
35 U .S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of § 1.14
to access to, copies of, or information concerning either
the prior application or any continuing application filed
under the provisions of this paragraph, may be given
similar access to, copies of, or similar information
concerning the other application or applications in the
file jacket.
(7) A request for an application under this
paragraph is the specific reference required by
35 U .S.C. 120  to every application assigned the
application number identified in such request. No
amendment in an application under this paragraph may
delete this specific reference to any prior application.
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 (8) In addition to identifying the application number
of the prior application, applicant should furnish in the
request for an application under this paragraph the
following information relating to the prior application
to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103 (b) for requesting a limited
suspension of action in an application filed under this
paragraph.
(e)  Failure to meet filing date requirements .
(1) If an application deposited under paragraph (b),
(c), or (d) of this section does not meet the requirements
of such paragraph to be entitled to a filing date,
applicant will be so notified, if a correspondence
address has been provided, and given a period of time
within which to correct the filing error. If, however, a
request for an application under paragraph (d) of this
section does not meet the requirements of that
paragraph because the application in which the request
was filed is not a design application, and if the
application in which the request was filed was itself
filed on or after June 8, 1995, the request for an
application under paragraph (d) of this section will be
treated as a request for continued examination under §
1.114 .
(2) Any request for review of a notification pursuant
to paragraph (e)(1) of this section, or a notification that
the original application papers lack a portion of the
specification or drawing(s), must be by way of a
petition pursuant to this paragraph accompanied by the
fee set forth in § 1.17(f ). In the absence of a timely (§
1.181(f))  petition pursuant to this paragraph, the filing
date of an application in which the applicant was
notified of a filing error pursuant to paragraph (e)(1)
of this section will be the date the filing error is
corrected.
(3) If an applicant is notified of a filing error
pursuant to paragraph (e)(1) of this section, but fails to
correct the filing error within the given time period or
otherwise timely ( § 1.181 (f)) take action pursuant to
this paragraph, proceedings in the application will be
considered terminated. Where proceedings in an
application are terminated pursuant to this paragraph,
the application may be disposed of, and any filing fees,
less the handling fee set forth in § 1.21 (n), will be
refunded.
(f)  Completion of application subsequent to
filing—Nonprovisional (including continued prosecution
or reissue) application .(1) If an application which has been accorded a
filing date pursuant to paragraph (b) or (d) of this
section does not include the basic filing fee, the search
fee, or the examination fee, or if an application which
has been accorded a filing date pursuant to paragraph
(b) of this section does not include an oath or
declaration by the applicant pursuant to §§  1.63 , 1.162
or § 1.175 , and applicant has provided a correspondence
address (§  1.33(a) ), applicant will be notified and given
a period of time within which to pay the basic filing
fee, search fee, and examination fee, file an oath or
declaration in an application under paragraph (b) of
this section, and pay the surcharge if required by §
1.16(f)  to avoid abandonment.
(2) If an application which has been accorded a
filing date pursuant to paragraph (b) of this section does
not include the basic filing fee, the search fee, the
examination fee, or an oath or declaration by the
applicant pursuant to §§ 1.63, 1.162  or § 1.175 , and
applicant has not provided a correspondence address
(§ 1.33(a)) , applicant has two months from the filing
date of the application within which to pay the basic
filing fee, search fee, and examination fee, file an oath
or declaration, and pay the surcharge required by §
1.16(f ) to avoid abandonment.
(3) If the excess claims fees required by §§  1.16 (h)
and (i) and multiple dependent claim fee required by
§ 1.16(j) are not paid on filing or on later presentation
of the claims for which the excess claims or multiple
dependent claim fees are due, the fees required by §§
1.16(h), (i) and (j) must be paid or the claims canceled
by amendment prior to the expiration of the time period
set for reply by the Office in any notice of fee
deficiency. If the application size fee required by §
1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or
additional fee under § 1.16(s), the fee required by §
1.16(s) must be paid prior to the expiration of the time
period set for reply by the Office in any notice of fee
deficiency in order to avoid abandonment.
(4) This paragraph applies to continuation or
divisional applications under paragraphs (b) or (d) of
this section and to continuation-in-part applications
under paragraph (b) of this section. See § 1.63(d)
concerning the submission of a copy of the oath or
declaration from the prior application for a continuation
or divisional application under paragraph (b) of this
section.
(5) If applicant does not pay the basic filing fee
during the pendency of the application, the Office may
dispose of the application.
(g)  Completion of application subsequent to
filing—Provisional application .
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 (1) If a provisional application which has been
accorded a filing date pursuant to paragraph (c) of this
section does not include the cover sheet required by §
1.51(c)(1)  or the basic filing fee (§  1.16(d) ), and
applicant has provided a correspondence address (§
1.33(a)) , applicant will be notified and given a period
of time within which to pay the basic filing fee, file a
cover sheet (§ 1.51(c)(1)) , and pay the surcharge
required by § 1.16(g)  to avoid abandonment.
(2) If a provisional application which has been
accorded a filing date pursuant to paragraph (c) of this
section does not include the cover sheet required by §
1.51(c)(1 ) or the basic filing fee (§  1.16(d) ), and
applicant has not provided a correspondence address
(§ 1.33(a) ), applicant has two months from the filing
date of the application within which to pay the basic
filing fee, file a cover sheet (§ 1.51(c)(1)) , and pay the
surcharge required by § 1.16(g)  to avoid abandonment.
(3) If the application size fee required by §  1.16 (s)
(if any) is not paid on filing, the fee required by §
1.16(s) must be paid prior to the expiration of the time
period set for reply by the Office in any notice of fee
deficiency in order to avoid abandonment.
(4) If applicant does not pay the basic filing fee
during the pendency of the application, the Office may
dispose of the application.
(h)  Subsequent treatment of application -
Nonprovisional (including continued prosecution)
application . An application for a patent filed under
paragraphs (b) or (d) of this section will not be placed on
the files for examination until all its required parts,
complying with the rules relating thereto, are received,
except that certain minor informalities may be waived
subject to subsequent correction whenever required.
(i)  Subsequent treatment of application - Provisional
application . A provisional application for a patent filed
under paragraph (c) of this section will not be placed on
the files for examination and will become abandoned no
later than twelve months after its filing date pursuant to
35 U .S.C. 111 (b)(1).
(j)  Filing date of international application. The filing
date of an international application designating the United
States of America is treated as the filing date in the United
States of America under PCT Article 11 (3), except as
provided in 35 U .S.C. 102 (e).
[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b)
and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50
FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; paras. (c) and (d), 53
FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54
FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 63 FR
5734, Feb. 4, 1998, effective Feb. 4, 1998 (adopted as final, 63 FR
36184, Jul. 2, 1998); paras. (c)(3), (c)(4) and (d) revised, 65 FR 14865,Mar. 20, 2000, effective May 29, 2000 (paras. (c)(4) and (d) adopted
as final, 65 FR 50092, Aug. 16, 2000); para. (c)(3) revised, 65 FR 50092,
Aug. 16, 2000, effective Aug. 16, 2000; paras. (c)(1), (c)(2), (d)(4),
(e)(2), (f), and (g) revised and para. (d)(10) added, 65 FR 54604, Sept.
8, 2000, effective Nov. 7, 2000; para. (c)(4) revised, 65 FR 78958, Dec.
18, 2000; para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; paras. (d)(1), (d)(3) and (e)(1) revised, 68 FR 32376, May
30, 2003, effective July 14, 2003; para. (d)(9) deleted and para. (d)(10)
redesignated as para. (d)(9), 69 FR 29865, May 26, 2004, effective June
25, 2004; para. (e)(2) revised, 69 FR 56481, Sept. 21, 2004, effective
Nov. 22, 2004; paras (c)(3), (f) and (g) revised, 70 FR 3880, Jan. 27,
2005, effective Dec., 8, 2004; paras. (d)(3) and (f)(5) revised, 70 FR
30360, May 26, 2005, effective July 1, 2005; paras. (b) and (c)(4)
revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and
never became effective); paras. (b) and (c)(4) revised, 74 FR 52686,
Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the
final rules in 72 FR 46716 from the CFR)]
§  1.54 Parts of application to be filed together; filing
receipt.
(a) It is desirable that all parts of the complete
application be deposited in the Office together; otherwise,
a letter must accompany each part, accurately and clearly
connecting it with the other parts of the application.
See § 1.53 (f) and (g) with regard to completion of an
application.
(b) Applicant will be informed of the application
number and filing date by a filing receipt, unless the
application is an application filed under § 1.53 (d).
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b)
amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  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 (f) , 172, and 365(a) and
(b).
(1)
(i) In an original application filed under
35 U.S.C. 111(a) , the claim for priority must be
presented during the pendency of the application,
and within the later of four months from the actual
filing date of the application or sixteen months
from the filing date of the prior foreign
application. This time period is not extendable.
The claim must identify the foreign application
for which priority is claimed, as well as any
foreign application for the same subject matter
and having a filing date before that of the
application for which priority is claimed, by
specifying the application number, country (or
intellectual property authority), day, month, and
year of its filing. The time periods in this
paragraph do not apply in an application under 35
U.S.C. 111(a) if the application is:
(A) A design application; or
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 (B) An application filed before
November 29, 2000.
(ii) In an application that entered the national
stage from an international application after
compliance with 35 U.S.C. 371, the claim for
priority must be made during the pendency of the
application and within the time limit set forth in
the PCT and the Regulations under the PCT.
(2) The claim for priority and the certified copy of
the foreign application specified in 35 U.S.C.  119(b)
or PCT Rule 17 must, in any event, be filed before the
patent is granted. If the claim for priority or the certified
copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by the
processing fee set forth in § 1.17(i) , but the patent will
not include the priority claim unless corrected by a
certificate of correction under 35 U.S.C. 255 and §
1.323
(3) The Office may require that the claim for
priority and the certified copy of the foreign application
be filed earlier than provided in paragraphs (a)(1) or
(a)(2) of this section:
(i) When the application becomes involved in
an interference (see § 41.202  of this title),
(ii) When necessary to overcome the date of
a reference relied upon by the examiner, or
(iii) When deemed necessary by the examiner.
(4)
(i) An English language translation of a
non-English language foreign application is not
required except:
(A) When the application is involved
in an interference (see § 41.202  of this
title),
(B) When necessary to overcome the
date of a reference relied upon by the
examiner, or
(C) When specifically required by the
examiner.
(ii) If an English language translation is required,
it must be filed together with a statement that the
translation of the certified copy is accurate.
(b) An applicant in a nonprovisional application may
under certain circumstances claim priority on the basis
of one or more applications for an inventor’s certificate
in a country granting both inventor’s certificates and
patents. To claim the right of priority on the basis of an
application for an inventor’s certificate in such a country
under 35 U .S.C. 119 (d), the applicant when submitting aclaim for such right as specified in paragraph (a) of this
section, shall include an affidavit or declaration. The
affidavit or declaration must include a specific statement
that, upon an investigation, he or she is satisfied that to
the best of his or her knowledge, the applicant, when filing
the application for the inventor’s certificate, had the option
to file an application for either a patent or an inventor’s
certificate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.
(c) Unless such claim is accepted in accordance with
the provisions of this paragraph, any claim for priority
under 35 U.S.C. 119(a)-(d)  or 365(a)  not presented within
the time period provided by paragraph (a) of this section
is considered to have been waived. If a claim for priority
under 35 U .S.C. 119(a)-(d)  or 365(a)  is presented after
the time period provided by paragraph (a) of this section,
the claim may be accepted if the claim identifying the
prior foreign application by specifying its application
number, country (or intellectual property authority), and
the day, month, and year of its filing was unintentionally
delayed. A petition to accept a delayed claim for priority
under 35 U .S.C. 119(a)-(d)  or 365(a)  must be
accompanied by:
(1) The claim under 35 U.S.C. 119(a)-(d) or  365(a)
and this section to the prior foreign application, unless
previously submitted;
(2) The surcharge set forth in § 1.17(t) ; and
(3) A statement that the entire delay between the
date the claim was due under paragraph (a)(1) of this
section and the date the claim was filed was
unintentional. The Director may require additional
information where there is a question whether the delay
was unintentional.
(d)
(1) The requirement in this section for the certified
copy of the foreign application will be considered
satisfied if:
(i) The applicant files a request, in a separate
document, that the Office obtain a copy of the
foreign application from a foreign intellectual
property office participating with the Office in a
bilateral or multilateral priority document
exchange agreement (participating foreign
intellectual property office (see § 1.14 (h)(1));
(ii) The foreign application is identified in the
oath or declaration (§ 1.63(c)) or an application
data sheet (§ 1.76 (a)(6)); and
(iii) The copy of the foreign application is
received by the Office within the period set forth
in paragraph (a) of this section. Such a request
should be made within the later of four months
from the filing date of the application or sixteen
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 months from the filing date of the foreign
application.
(2) If the foreign application was filed at a foreign
intellectual property office that is not participating with
the Office in a priority document exchange agreement,
but a copy of the foreign application was filed in an
application subsequently filed in a participating foreign
intellectual property office, the request under paragraph
(d)(1)(i) of this section must identify the participating
foreign intellectual property office and the application
number of the subsequent application in which a copy
of the foreign application was filed.
[para. (b), 47 FR 41275, Sept. 17, 1982, effective Oct. 1 1982;
48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 49 FR
554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec.
12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989,
effective Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989,
effective Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 1989, effective
Jan. 16, 1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8,
1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; paras. (a) and (c) corrected, 65 FR 66502, Nov.
6, 2000, effective Nov. 29, 2000; paras.(a)(1) and (c) revised, 66 FR
67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (c)(3) revised, 68
FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(3) and (a)(4)
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para.
(d) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007]
§  1.56 Duty to disclose information material to
patentability.
(a) A patent by its very nature is affected with a public
interest. The public interest is best served, and the most
effective patent examination occurs when, at the time an
application is being examined, the Office is aware of and
evaluates the teachings of all information material to
patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of
candor and good faith in dealing with the Office, which
includes a duty to disclose to the Office all information
known to that individual to be material to patentability as
defined in this section. The duty to disclose information
exists with respect to each pending claim until the claim
is cancelled or withdrawn from consideration, or the
application becomes abandoned. Information material
to the patentability of a claim that is cancelled or
withdrawn from consideration need not be submitted if
the information is not material to the patentability of any
claim remaining under consideration in the application.
There is no duty to submit information which is not
material to the patentability of any existing claim. The
duty to disclose all information known to be material to
patentability is deemed to be satisfied if all information
known to be material to patentability of any claim issued
in a patent was cited by the Office or submitted to the
Office in the manner prescribed by §§ 1.97 (b)-(d) and1.98. However, no patent will be granted on an application
in connection with which fraud on the Office was
practiced or attempted or the duty of disclosure was
violated through bad faith or intentional misconduct. The
Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign
patent office in a counterpart application, and
(2) The closest information over which individuals
associated with the filing or prosecution of a patent
application believe any pending claim patentably
defines, to make sure that any material information
contained therein is disclosed to the Office.
(b) Under this section, information is material to
patentability when it is not cumulative to information
already of record or being made of record in the
application, and
(1) It establishes, by itself or in combination with
other information, a  prima facie case of unpatentability
of a claim; or
(2) It refutes, or is inconsistent with, a position the
applicant takes in:
(i) Opposing an argument of unpatentability
relied on by the Office, or
(ii) Asserting an argument of patentability.
A  prima facie case of unpatentability is established when
the information compels a conclusion that a claim is
unpatentable under the preponderance of evidence,
burden-of-proof standard, giving each term in the claim
its broadest reasonable construction consistent with the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to
establish a contrary conclusion of patentability.
(c) Individuals associated with the filing or
prosecution of a patent application within the meaning of
this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or
prosecutes the application; and
(3) Every other person who is substantively
involved in the preparation or prosecution of the
application and who is associated with the inventor,
with the assignee or with anyone to whom there is an
obligation to assign the application.
(d) Individuals other than the attorney, agent or
inventor may comply with this section by disclosing
information to the attorney, agent, or inventor.
(e) In any continuation-in-part application, the duty
under this section includes the duty to disclose to the
Office all information known to the person to be material
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 to patentability, as defined in paragraph (b) of this section,
which became available between the filing date of the
prior application and the national or PCT international
filing date of the continuation-in-part application.
[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751,
May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20,
1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984,
effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985,
effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective
Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para.
(e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§  1.57 Incorporation by reference.
(a) Subject to the conditions and requirements of this
paragraph, if all or a portion of the specification or
drawing(s) is inadvertently omitted from an application,
but the application contains a claim under § 1.55 for
priority of a prior-filed foreign application, or a claim
under §  1.78  for the benefit of a prior-filed provisional,
nonprovisional, or international application, that was
present on the filing date of the application, and the
inadvertently omitted portion of the specification or
drawing(s) is completely contained in the prior-filed
application, the claim under §  1.55  or § 1.78 shall also be
considered an incorporation by reference of the prior-filed
application as to the inadvertently omitted portion of the
specification or drawing(s).
(1) The application must be amended to include the
inadvertently omitted portion of the specification or
drawing(s) within any time period set by the Office,
but in no case later than the close of prosecution as
defined by §  1.114 (b), or abandonment of the
application, whichever occurs earlier. The applicant is
also required to:
(i) Supply a copy of the prior-filed application,
except where the prior-filed application is an
application filed under  35 U .S.C. 111 ;
(ii) Supply an English language translation of
any prior-filed application that is in a language
other than English; and
(iii) Identify where the inadvertently omitted
portion of the specification or drawings can be
found in the prior-filed application.
(2) Any amendment to an international application
pursuant to this paragraph shall be effective only as to
the United States, and shall have no effect on the
international filing date of the application. In addition,
no request under this section to add the inadvertently
omitted portion of the specification or drawings in an
international application designating the United States
will be acted upon by the Office prior to the entry and
commencement of the national stage (§ 1.491) or the
filing of an application under  35 U .S.C. 111 (a) which
claims benefit of the international application. Anyomitted portion of the international application which
applicant desires to be effective as to all designated
States, subject to PCT Rule 20.8(b),  must be submitted
in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a
filing date under § 1.53(b), the amendment must be by
way of a petition pursuant to this paragraph
accompanied by the fee set forth in § 1.17(f).
(b) Except as provided in paragraph (a) of this
section, an incorporation by reference must be set forth
in the specification and must:
(1) Express a clear intent to incorporate by
reference by using the root words “incorporat(e)”
and “reference” ( e.g., “incorporate by reference”);
and
(2) Clearly identify the referenced patent,
application, or publication.
(c) “Essential material” may be incorporated by
reference, but only by way of an incorporation by
reference to a U.S. patent or U.S. patent application
publication, which patent or patent application publication
does not itself incorporate such essential material by
reference. “Essential material” is material that is necessary
to:
(1) Provide a written description of the claimed
invention, and of the manner and process of making
and using it, in such full, clear
, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and set forth the best mode
contemplated by the inventor of carrying out the
invention as required by the first paragraph of  35
U.S.C. 112 ;
(2) Describe the claimed invention in terms that
particularly point out and distinctly claim the invention
as required by the second paragraph of 35 U .S.C. 112 ;
or
(3) Describe the structure, material, or acts that
correspond to a claimed means or step for performing
a specified function as required by the sixth paragraph
of 35 U .S.C. 112 .
(d) Other material (“Nonessential material”) may be
incorporated by reference to U.S. patents, U.S. patent
application publications, foreign patents, foreign published
applications, prior and concurrently filed commonly
owned U.S. applications, or non-patent publications. An
incorporation by reference by hyperlink or other form of
browser executable code is not permitted.
(e) The examiner may require the applicant to supply
a copy of the material incorporated by reference. If the
Office requires the applicant to supply a copy of material
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 incorporated by reference, the material must be
accompanied by a statement that the copy supplied
consists of the same material incorporated by reference
in the referencing application.
(f) Any insertion of material incorporated by reference
into the specification or drawings of an application must
be by way of an amendment to the specification or
drawings. Such an amendment must be accompanied by
a statement that the material being inserted is the material
previously incorporated by reference and that the
amendment contains no new matter.
(g) An incorporation of material by reference that
does not comply with paragraphs (b), (c), or (d) of this
section is not effective to incorporate such material unless
corrected within any time period set by the Office, but in
no case later than the close of prosecution as defined by
§ 1.114 (b), or abandonment of the application, whichever
occurs earlier. In addition:
(1) A correction to comply with paragraph (b)(1)
of this section is permitted only if the application as
filed clearly conveys an intent to incorporate the
material by reference. A mere reference to material
does not convey an intent to incorporate the material
by reference.
(2) A correction to comply with paragraph (b)(2)
of this section is only permitted for material that was
sufficiently described to uniquely identify the
document.
[Added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004;
para. (a)(3) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22,
2004; para. (a)(2) revised, 72 FR 51559, Sept. 10, 2007, effective Sept.
10, 2007]
§  1.58 Chemical and mathematical formulae and
tables.
(a) The specification, including the claims, may
contain chemical and mathematical formulae, but shall
not contain drawings or flow diagrams. The description
portion of the specification may contain tables, but the
same tables may only be included in both the drawings
and description portion of the specification if the
application was filed under  35 U .S.C. 371 . Claims may
contain tables either if necessary to conform to 35 U.S.C.
112 or if otherwise found to be desirable.
(b) Tables that are submitted in electronic form (§§
1.96(c) and  1.821 (c)) must maintain the spatial
relationships ( e.g., alignment of columns and rows) of
the table elements when displayed so as to visually
preserve the relational information they convey. Chemical
and mathematical formulae must be encoded to maintain
the proper positioning of their characters when displayed
in order to preserve their intended meaning.(c) Chemical and mathematical formulae and tables
must be presented in compliance with § 1.52(a) and (b),
except that chemical and mathematical formulae or tables
may be placed in a landscape orientation if they cannot
be presented satisfactorily in a portrait orientation.
Typewritten characters used in such formulae and tables
must be chosen from a block (nonscript) type font or
lettering style having capital letters which should be at
least 0.422 cm. (0.166 inch) high ( e.g., preferably Arial,
Times Roman, or Courier with a font size of 12), but may
be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font
size of 6). A space at least 0.64 cm. (1/4 inch) high should
be provided between complex formulae and tables and
the text. Tables should have the lines and columns of data
closely spaced to conserve space, consistent with a high
degree of legibility.
[43 FR 20463, May 11, 1978; para. (b) removed and reserved,
para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23,
1996; para. (b) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.59 Expungement of information or copy of papers
in application file.
(a)
(1) Information in an application will not be
expunged, except as provided in paragraph (b) of this
section or § 41.7(a) of this title.
(2) Information forming part of the original
disclosure ( i.e. , written specification including the
claims, drawings, and any preliminary amendment
specifically incorporated into an executed oath or
declaration under §§ 1.63 and 1.175 ) will not be
expunged from the application file.
(b) An applicant may request that the Office expunge
information, other than what is excluded by paragraph
(a)(2) of this section, by filing a petition under this
paragraph. Any petition to expunge information from an
application must include the fee set forth in § 1.17(g)  and
establish to the satisfaction of the Director that the
expungement of the information is appropriate in which
case a notice granting the petition for expungement will
be provided.
(c) Upon request by an applicant and payment of the
fee specified in § 1.19(b) , the Office will furnish copies
of an application, unless the application has been disposed
of (see  §§ 1.53(e) , (f) and (g)). The Office cannot provide
or certify copies of an application that has been disposed
of.
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554,
Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; 50 FR 23123, May 31, 1985, effective Feb. 11,
1985; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
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 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (a)(1) revised,
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised,
69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§  1.60 [Reserved]
[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554,
Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective
May 8, 1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989,
effective Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added, 57
FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60
FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  1.61 [Reserved]
(Editor’s note: Substance is now in § 1.495 )
§  1.62 [Reserved]
[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48
FR 2710, Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d),
49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h),
50 FR 9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54
FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) and (e)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (f)
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
OATH OR DECLARATION
§  1.63 Oath or declaration.
(a) An oath or declaration filed under § 1.51(b)(2)  as
a part of a nonprovisional application must:
(1) Be executed, i.e ., signed, in accordance with
either § 1.66 or § 1.68. There is no minimum age for
a person to be qualified to sign, but the person must be
competent to sign,  i.e., understand the document that
the person is signing;
(2) Identify each inventor by full name, including
the family name, and at least one given name without
abbreviation together with any other given name or
initial;
(3) Identify the country of citizenship of each
inventor; and
(4) State that the person making the oath or
declaration believes the named inventor or inventors
to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patent
is sought.
(b) In addition to meeting the requirements of
paragraph (a) of this section, the oath or declaration must
also:
(1) Identify the application to which it is directed;
(2) State that the person making the oath or
declaration has reviewed and understands the contents
of the application, including the claims, as amended
by any amendment specifically referred to in the oath
or declaration; and(3) State that the person making the oath or
declaration acknowledges the duty to disclose to the
Office all information known to the person to be
material to patentability as defined in § 1.56.
(c) Unless such information is supplied on an
application data sheet in accordance with § 1.76, the oath
or declaration must also identify:
(1) The mailing address, and the residence if an
inventor lives at a location which is different from
where the inventor customarily receives mail, of each
inventor; and
(2) Any foreign application for patent (or inventor’s
certificate) for which a claim for priority is made
pursuant to § 1.55, and any foreign application having
a filing date before that of the application on which
priority is claimed, by specifying the application
number, country, day, month, and year of its filing.
(d)
(1) A newly executed oath or declaration is not
required under § 1.51(b)(2 ) and § 1.53(f)  in a
continuation or divisional application, provided that:
(i) The prior nonprovisional application
contained an oath or declaration as prescribed by
paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application
was filed by all or by fewer than all of the
inventors named in the prior application;
(iii) The specification and drawings filed in
the continuation or divisional application contain
no matter that would have been new matter in the
prior application; and
(iv) A copy of the executed oath or declaration
filed in the prior application, showing the
signature or an indication thereon that it was
signed, is submitted for the continuation or
divisional application.
(2) The copy of the executed oath or declaration
submitted under this paragraph for a continuation or
divisional application must be accompanied by a
statement requesting the deletion of the name or names
of the person or persons who are not inventors in the
continuation or divisional application.
(3) Where the executed oath or declaration of which
a copy is submitted for a continuation or divisional
application was originally filed in a prior application
accorded status under § 1.47 , the copy of the executed
oath or declaration for such prior application must be
accompanied by:
(i) A copy of the decision granting a petition
to accord § 1.47  status to the prior application,
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 unless all inventors or legal representatives have
filed an oath or declaration to join in an
application accorded status under § 1.47  of which
the continuation or divisional application claims
a benefit under 35 U.S.C. 120 , 121, or 365(c); and
(ii) If one or more inventor(s) or legal
representative(s) who refused to join in the prior
application or could not be found or reached has
subsequently joined in the prior application or
another application of which the continuation or
divisional application claims a benefit under
35 U .S.C. 120 , 121, or 365(c), a copy of the
subsequently executed oath(s) or declaration(s)
filed by the inventor or legal representative to join
in the application.
(4) 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. Otherwise, the
Office may not recognize in the continuation or
divisional application the change of power of attorney
or correspondence address during the prosecution of
the prior application.
(5) A newly executed oath or declaration must be
filed in a continuation or divisional application naming
an inventor not named in the prior application.
(e) A newly executed oath or declaration must be filed
in any continuation-in-part application, which application
may name all, more, or fewer than all of the inventors
named in the prior application.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48
FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992,
effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), (c), and (e)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (d)(4)
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.64 Person making oath or declaration.
(a) The oath or declaration (§ 1.63), including any
supplemental oath or declaration (§ 1.67), must be made
by all of the actual inventors except as provided for in §§
1.42, 1.43, 1.47, or § 1.67.
(b) If the person making the oath or declaration or any
supplemental oath or declaration is not the inventor (§§
1.42, 1.43, 1.47, or § 1.67), the oath or declaration shall
state the relationship of the person to the inventor, and,
upon information and belief, the facts which the inventor
is required to state. If the person signing the oath or
declaration is the legal representative of a deceased
inventor, the oath or declaration shall also state that theperson is a legal representative and the citizenship,
residence, and mailing address of the legal representative.
[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§  1.66 Officers authorized to administer oaths.
(a) The oath or affirmation may be made before any
person within the United States authorized by law to
administer oaths. An oath made in a foreign country may
be made before any diplomatic or consular officer of the
United States authorized to administer oaths, or before
any officer having an official seal and authorized to
administer oaths in the foreign country in which the
applicant may be, whose authority shall be proved by a
certificate of a diplomatic or consular officer of the United
States, or by an apostille of an official designated by a
foreign country which, by treaty or convention, accords
like effect to apostilles of designated officials in the
United States. The oath shall be attested in all cases in
this and other countries, by the proper official seal of the
officer before whom the oath or affirmation is made. Such
oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where
made. When the person before whom the oath or
affirmation is made in this country is not provided with
a seal, his official character shall be established by
competent evidence, as by a certificate from a clerk of a
court of record or other proper officer having a seal.
(b) When the oath is taken before an officer in a
country foreign to the United States, any accompanying
application papers, except the drawings, must be attached
together with the oath and a ribbon passed one or more
times through all the sheets of the application, except the
drawings, and the ends of said ribbon brought together
under the seal before the latter is affixed and impressed,
or each sheet must be impressed with the official seal of
the officer before whom the oath is taken. If the papers
as filed are not properly ribboned or each sheet impressed
with the seal, the case will be accepted for examination,
but before it is allowed, duplicate papers, prepared in
compliance with the foregoing sentence, must be filed.
[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982]
§  1.67 Supplemental oath or declaration.
(a) The Office may require, or inventors and
applicants may submit, a supplemental oath or declaration
meeting the requirements of § 1.63 or § 1.162  to correct
any deficiencies or inaccuracies present in the earlier filed
oath or declaration.
(1) Deficiencies or inaccuracies relating to all the
inventors or applicants (§§ 1.42, 1.43, or §  1.47 ) may
be corrected with a supplemental oath or declaration
signed by all the inventors or applicants.
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 (2) Deficiencies or inaccuracies relating to fewer
than all of the inventor(s) or applicant(s) (§§  1.42 , 1.43
or § 1.47) may be corrected with a supplemental oath
or declaration identifying the entire inventive entity
but signed only by the inventor(s) or applicant(s) to
whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure
to meet the requirements of § 1.63(c)  (e.g ., to correct
the omission of a mailing address of an inventor) in an
oath or declaration may be corrected with an application
data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or
declaration or an application data sheet (§ 1.76), as
opposed to who must sign the supplemental oath or
declaration or an application data sheet, is governed
by § 1.33(a)(2)  and paragraph (b) of this section.
(b) A supplemental oath or declaration meeting the
requirements of § 1.63  must be filed when a claim is
presented for matter originally shown or described but
not substantially embraced in the statement of invention
or claims originally presented or when an oath or
declaration submitted in accordance with § 1.53 (f) after
the filing of the specification and any required drawings
specifically and improperly refers to an amendment which
includes new matter. No new matter may be introduced
into a nonprovisional application after its filing date even
if a supplemental oath or declaration is filed. In proper
situations, the oath or declaration here required may be
made on information and belief by an applicant other than
the inventor.
(c) [Reserved]
[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c)
added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b)
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)
revised and para. (c) removed and reserved, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000]
§  1.68 Declaration in lieu of oath.
Any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be under oath may be subscribed to by a
written declaration. Such declaration may be used in lieu
of the oath otherwise required, if, and only if, the declarant
is on the same document, warned that willful false
statements and the like are punishable by fine or
imprisonment, or both (18  U.S.C. 1001) and may
jeopardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the body
of the declaration that all statements made of the
declarant’s own knowledge are true and that all statements
made on information and belief are believed to be true.
[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]§  1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or
declaration cannot understand English, the oath or
declaration must be in a language that such individual can
understand and shall state that such individual understands
the content of any documents to which the oath or
declaration relates.
(b) Unless the text of any oath or declaration in a
language other than English is in a form provided by the
Patent and Trademark Office or in accordance with PCT
Rule 4.17(iv), it must be accompanied by an English
translation together with a statement that the translation
is accurate, except that in the case of an oath or declaration
filed under §  1.63 , the translation may be filed in the
Office no later than two months from the date applicant
is notified to file the translation.
[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 20, 1983,
effective Feb. 27, 1983; para. (b) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para. (b) revised, 69 FR 56481, Sept. 21, 2004,
effective Oct. 21, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005,
effective Dec. 8, 2004]
§  1.70 [Reserved]
(Editor’s note: Substance moved to § 1.497 )
[52 FR 20046, May 28, 1987, effective July 1, 1987]
SPECIFICATION
§  1.71 Detailed description and specification of the
invention.
(a) The specification must include a written
description of the invention or discovery and of the
manner and process of making and using the same, and
is required to be in such full, clear, concise, and exact
terms as to enable any person skilled in the art or science
to which the invention or discovery appertains, or with
which it is most nearly connected, to make and use the
same.
(b) The specification must set forth the precise
invention for which a patent is solicited, in such manner
as to distinguish it from other inventions and from what
is old. It must describe completely a specific embodiment
of the process, machine, manufacture, composition of
matter or improvement invented, and must explain the
mode of operation or principle whenever applicable. The
best mode contemplated by the inventor of carrying out
his invention must be set forth.
(c) In the case of an improvement, the specification
must particularly point out the part or parts of the process,
machine, manufacture, or composition of matter to which
the improvement relates, and the description should be
confined to the specific improvement and to such parts
as necessarily cooperate with it or as may be necessary
to a complete understanding or description of it.
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 (d) A copyright or mask work notice may be placed
in a design or utility patent application adjacent to
copyright and mask work material contained therein. The
notice may appear at any appropriate portion of the patent
application disclosure. For notices in drawings, see §
1.84(s). The content of the notice must be limited to only
those elements provided for by law. For example, “©1983
John Doe”(17 U.S.C. 401) and “*M* John Doe” (17
U.S.C. 909) would be properly limited and, under current
statutes, legally sufficient notices of copyright and mask
work, respectively. Inclusion of a copyright or mask work
notice will be permitted only if the authorization language
set forth in paragraph (e) of this section is included at the
beginning (preferably as the first paragraph) of the
specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent
document contains material which is subject to
(copyright or mask work) protection. The (copyright
or mask work) owner has no objection to the
facsimile reproduction by anyone of the patent
document or the patent disclosure, as it appears in
the Patent and Trademark Office patent file or
records, but otherwise reserves all (copyright or
mask work) rights whatsoever.
(f) The specification must commence on a separate
sheet. Each sheet including part of the specification may
not include other parts of the application or other
information. The claim(s), abstract and sequence listing
(if any) should not be included on a sheet including any
other part of the application.
(g)
(1) The specification may disclose or be amended
to disclose the names of the parties to a joint research
agreement (35 U.S.C . 103 (c)(2)(C)).
(2) An amendment under paragraph (g)(1) of this
section must be accompanied by the processing fee set
forth §  1.17 (i) if not filed within one of the following
time periods:
(i) Within three months of the filing date of a
national application;
(ii) Within three months of the date of entry
of the national stage as set forth in § 1.491  in an
international application;
(iii) Before the mailing of a first Office action
on the merits; or
(iv) Before the mailing of a first Office action
after the filing of a request for continued
examination under § 1.114 .(3) If an amendment under paragraph (g)(1) of this
section is filed after the date the issue fee is paid, the
patent as issued may not necessarily include the names
of the parties to the joint research agreement. If the
patent as issued does not include the names of the
parties to the joint research agreement, the patent must
be corrected to include the names of the parties to the
joint research agreement by a certificate of correction
under 35 U.S.C . 255  and § 1.323  for the amendment
to be effective.
[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective Jan.
1, 1989; para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993;
para. (f) added, 68 FR 38611, June 30, 2003, effective July 30, 2003;
para. (g) added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004;
para. (g) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005]
§  1.72 Title and abstract.
(a) The title of the invention may not exceed 500
characters in length and must be as short and specific as
possible. Characters that cannot be captured and recorded
in the Office’s automated information systems may not
be reflected in the Office’s records in such systems or in
documents created by the Office. Unless the title is
supplied in an application data sheet (§ 1.76), the title of
the invention should appear as a heading on the first page
of the specification.
(b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet,
preferably following the claims, under the heading
“Abstract” or “Abstract of the Disclosure.” The sheet or
sheets presenting the abstract may not include other parts
of the application or other material. The abstract in an
application filed under 35 U.S.C. 111 may not exceed
150 words in length. The purpose of the abstract is to
enable the United States Patent and Trademark Office
and the public generally to determine quickly from a
cursory inspection the nature and gist of the technical
disclosure.
[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978; para.
(b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.
(b) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§  1.73 Summary of the invention.
A brief summary of the invention indicating its nature
and substance, which may include a statement of the
object of the invention, should precede the detailed
description. Such summary should, when set forth, be
commensurate with the invention as claimed and any
object recited should be that of the invention as claimed.
§  1.74 Reference to drawings.
When there are drawings, there shall be a brief description
of the several views of the drawings and the detailed
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 description of the invention shall refer to the different
views by specifying the numbers of the figures and to the
different parts by use of reference letters or numerals
(preferably the latter).
§  1.75 Claim(s).
(a) The specification must conclude with a claim
particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention
or discovery.
(b) More than one claim may be presented provided
they differ substantially from each other and are not
unduly multiplied.
(c) One or more claims may be presented in dependent
form, referring back to and further limiting another claim
or claims in the same application. Any dependent claim
which refers to more than one other claim (“multiple
dependent claim”) shall refer to such other claims in the
alternative only. A multiple dependent claim shall not
serve as a basis for any other multiple dependent claim.
For fee calculation purposes under § 1.16 , a multiple
dependent claim will be considered to be that number of
claims to which direct reference is made therein. For fee
calculation purposes also, any claim depending from a
multiple dependent claim will be considered to be that
number of claims to which direct reference is made in
that multiple dependent claim. In addition to the other
filing fees, any original application which is filed with,
or is amended to include, multiple dependent claims must
have paid therein the fee set forth in § 1.16 (j). Claims in
dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the
dependent claim. A multiple dependent claim shall be
construed to incorporate by reference all the limitations
of each of the particular claims in relation to which it is
being considered.
(d)
(1) The claim or claims must conform to the
invention as set forth in the remainder of the
specification and the terms and phrases used in the
claims must find clear support or antecedent basis in
the description so that the meaning of the terms in the
claims may be ascertainable by reference to the
description. (See § 1.58 (a)).
(2) See §§ 1.141  to 1.146  as to claiming different
inventions in one application.
(e) Where the nature of the case admits, as in the case
of an improvement, any independent claim should contain
in the following order:
(1) A preamble comprising a general description
of all the elements or steps of the claimed combination
which are conventional or known,(2) A phrase such as “wherein the improvement
comprises,” and
(3) Those elements, steps, and/or relationships
which constitute that portion of the claimed
combination which the applicant considers as the new
or improved portion.
(f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as
claim number 1, and all dependent claims should be
grouped together with the claim or claims to which they
refer to the extent practicable.
(h) The claim or claims must commence on a separate
physical sheet or electronic page. Any sheet including a
claim or portion of a claim may not contain any other
parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be
separated by a line indentation.
[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR
21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41276,
Sept. 17, 1982, effective Oct. 1, 1982; para. (g) amended, paras. (h) and
(i) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para.
(h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para.
(h) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para.
(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras.
(b) and (c) revised, 72 FR 46716, Aug. 21, 2007 (implementation
enjoined and never became effective); paras. (b) and (c) revised, 74 FR
52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made
by the final rules in 72 FR 46716 from the CFR)]
§  1.76 Application data sheet.
(a)  Application data sheet. An application data sheet
is a sheet or sheets, that may be voluntarily submitted in
either provisional or nonprovisional applications, which
contains bibliographic data, arranged in a format specified
by the Office. An application data sheet must be titled
“Application Data Sheet” and must contain all of the
section headings listed in paragraph (b) of this section,
with any appropriate data for each section heading. If an
application data sheet is provided, the application data
sheet is part of the provisional or nonprovisional
application for which it has been submitted.
(b)  Bibliographic data . Bibliographic data as used in
paragraph (a) of this section includes:
(1) Applicant information . This information
includes the name, residence, mailing address, and
citizenship of each applicant (§ 1.41(b)) . The name of
each applicant must include the family name, and at
least one given name without abbreviation together
with any other given name or initial. If the applicant is
not an inventor, this information also includes the
applicant’s authority (§§ 1.42, 1.43, and 1.47) to apply
for the patent on behalf of the inventor.
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 (2) Correspondence information . This information
includes the correspondence address, which may be
indicated by reference to a customer number, to which
correspondence is to be directed (see §  1.33(a) ).
(3) Application information . This information
includes the title of the invention, a suggested
classification, by class and subclass, the Technology
Center to which the subject matter of the invention is
assigned, the total number of drawing sheets, a
suggested drawing figure for publication (in a
nonprovisional application), any docket number
assigned to the application, the type of application
(e.g. , utility, plant, design, reissue, provisional),
whether the application discloses any significant part
of the subject matter of an application under a secrecy
order pursuant to § 5.2 of this chapter (see § 5.2(c)) ,
and, for plant applications, the Latin name of the genus
and species of the plant claimed, as well as the variety
denomination. The suggested classification and
Technology Center information should be supplied for
provisional applications whether or not claims are
present. If claims are not present in a provisional
application, the suggested classification and
Technology Center should be based upon the
disclosure.
(4) Representative information . This information
includes the registration number of each practitioner
having a power of attorney in the application
(preferably by reference to a customer number).
Providing this information in the application data sheet
does not constitute a power of attorney in the
application (see §  1.32 ).
(5) Domestic priority information . This information
includes the application number, the filing date, the
status (including patent number if available), and
relationship of each application for which a benefit is
claimed under 35 U.S.C. 119(e) , 120, 121, or 365(c) .
Providing this information in the application data sheet
constitutes the specific reference required by 35 U.S.C.
119(e)  or 120, and § 1.78(a)(2)  or § 1.78(a)(5) , and
need not otherwise be made part of the specification.
(6) Foreign priority information . This information
includes the application number, country, and filing
date of each foreign application for which priority is
claimed, as well as any foreign application having a
filing date before that of the application for which
priority is claimed. Providing this information in the
application data sheet constitutes the claim for priority
as required by 35 U.S.C. 119(b)  and §  1.55(a) .
(7) Assignee information . This information
includes the name (either person or juristic entity) and
address of the assignee of the entire right, title, and
interest in an application. Providing this informationin the application data sheet does not substitute for
compliance with any requirement of part 3  of this
chapter to have an assignment recorded by the Office.
(c)  Supplemental application data sheets.
Supplemental application data sheets:
(1) May be subsequently supplied prior to payment
of the issue fee either to correct or update information
in a previously submitted application data sheet, or an
oath or declaration under § 1.63 or §   1.67 , except that
inventorship changes are governed by § 1.48,
correspondence changes are governed by §  1.33(a) ,
and citizenship changes are governed by §  1.63  or §
1.67; and
(2) Must be titled “Supplemental Application Data
Sheet,” include all of the section headings listed in
paragraph (b) of this section, include all appropriate
data for each section heading, and must identify the
information that is being changed, preferably with
underlining for insertions, and strike-through or
brackets for text removed.
(d)   Inconsistencies between application data sheet
and other documents . For inconsistencies between
information that is supplied by both an application data
sheet under this section and other documents.
(1) The latest submitted information will govern
notwithstanding whether supplied by an application
data sheet, an amendment to the specification, a
designation of a correspondence address, or by a §
1.63 or § 1.67  oath or declaration, except as provided
by paragraph (d)(3) of this section;
(2) The information in the application data sheet
will govern when the inconsistent information is
supplied at the same time by an amendment to the
specification, a designation of correspondence address,
or a §  1.63  or § 1.67  oath or declaration, except as
provided by paragraph (d)(3) of this section;
(3) The oath or declaration under §  1.63  or §  1.67
governs inconsistencies with the application data sheet
in the naming of inventors (§  1.41  (a)(1)) and setting
forth their citizenship ( 35 U .S.C. 115 );
(4) The Office will capture bibliographic
information from the application data sheet
(notwithstanding whether an oath or declaration
governs the information). Thus, the Office shall
generally, for example, not look to an oath or
declaration under § 1.63 to see if the bibliographic
information contained therein is consistent with the
bibliographic information captured from an application
data sheet (whether the oath or declaration is submitted
prior to or subsequent to the application data sheet).
Captured bibliographic information derived from an
application data sheet containing errors may be
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 corrected if applicant submits a request therefor and a
supplemental application data sheet.
[Added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
para. (b)(7) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29,
2000; paras. (a), (b)(4), (c)(2) and (d) revised, 69 FR 56481, Sept. 21,
2004, effective Oct. 21, 2004; para. (b)(5) revised, 70 FR 54259, Sept.
14, 2005, effective Sept. 14, 2005; para. (b)(5) revised, 72 FR 46716,
Aug. 21, 2007 (implementation enjoined and never became effective);
para. (b)(5) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009
(to remove changes made by the final rules in 72 FR 46716 from the
CFR)]
§  1.77 Arrangement of application elements.
(a) The elements of the application, if applicable,
should appear in the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings.
(6) Executed oath or declaration.
(b) The specification should include the following
sections in order:
(1) Title of the invention, which may be
accompanied by an introductory portion stating the
name, citizenship, and residence of the applicant (unless
included in the application data sheet).
(2) Cross-reference to related applications (unless
included in the application data sheet).
(3) Statement regarding federally sponsored
research or development.
(4) The names of the parties to a joint research
agreement.
(5) Reference to a “Sequence Listing,” a table, or
a computer program listing appendix submitted on a
compact disc and an incorporation-by-reference of the
material on the compact disc (see § 1.52(e)(5)) . The
total number of compact discs including duplicates and
the files on each compact disc shall be specified.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the several views of the
drawing.
(9) Detailed description of the invention.
(10) A claim or claims.
(11) Abstract of the disclosure.
(12) “Sequence Listing,” if on paper (see §§  1.821
through 1.825 ).(c) The text of the specification sections defined in
paragraphs (b)(1) through (b)(12) of this section, if
applicable, should be preceded by a section heading in
uppercase and without underlining or bold type.
[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras.
(h) and (i), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised,
70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004]
§  1.78 Claiming benefit of earlier filing date and
cross-references to other applications.
(a)
(1) A nonprovisional application or international
application designating the United States of America
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 an application to claim the
benefit of a prior-filed copending nonprovisional
application or international application designating the
United States of America, each prior-filed application
must name as an inventor at least one inventor named
in the later-filed application and disclose the named
inventor’s invention claimed in at least one claim of
the later-filed application in the manner provided by
the first paragraph of 35 U .S.C. 112 . In addition, each
prior-filed application must be:
(i) An international application entitled to a
filing date in accordance with PCT Article 11
and designating the United States of America; or
(ii) Entitled to a filing date as set forth in §
1.53(b) or § 1.53(d) and have paid therein the
basic filing fee set forth in § 1.16 within the
pendency of the application.
(2)
(i) Except for a continued prosecution
application filed under § 1.53(d) , any
nonprovisional application or international
application designating the United States of
America claiming the benefit of one or more
prior-filed copending nonprovisional applications
or international applications designating the
United States of America must contain or be
amended to contain a reference to each such
prior-filed application, identifying it by application
number (consisting of the series code and serial
number) or international application number and
international filing date and indicating the
relationship of the applications. Cross references
to other related applications may be made when
appropriate ( see  § 1.14).
(ii) This reference must be submitted during
the pendency of the later-filed application. If the
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 later-filed application is an application filed under
35 U.S.C. 111(a), this reference must also be
submitted within the later of four months from the
actual filing date of the later-filed application or
sixteen months from the filing date of the
prior-filed application. If the later-filed application
is a nonprovisional application which entered the
national stage from an international application
after compliance with 35 U.S.C. 371, this
reference must also be submitted within the later
of four months from the date on which the national
stage commenced under 35 U.S.C. 371 (b) or (f)
in the later-filed international application or
sixteen months from the filing date of the
prior-filed application. These time periods are not
extendable. Except as provided in paragraph (a)(3)
of this section, the failure to timely submit the
reference required by 35 U.S.C. 120 and paragraph
(a)(2)(i) of this section is considered a waiver of
any benefit under 35 U.S.C. 120,121, or 365(c)
to such prior-filed application. The time periods
in this paragraph do not apply if the later-filed
application is:
(A) An application for a design patent;
(B) An application filed under 35
U.S.C. 111 (a) before November 29, 2000;
or
(C) A nonprovisional application
which entered the national stage after
compliance with 35 U.S.C. 371 from an
international application filed under 35
U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a
nonprovisional application, the reference required
by this paragraph must be included in an
application data sheet (§  1.76 ), or the specification
must contain or be amended to contain such
reference in the first sentence(s) following the
title.
(iv) The request for a continued prosecution
application under § 1.53(d)  is the specific
reference required by 35 U .S.C. 120  to the
prior-filed application. The identification of an
application by application number under this
section is the identification of every application
assigned that application number necessary for a
specific reference required by 35 U .S.C. 120  to
every such application assigned that application
number.
(3) If the reference required by 35 U.S.C. 120 and
paragraph (a)(2) of this section is presented after the
time period provided by paragraph (a)(2)(ii) of thissection, the claim under 35 U.S.C. 120, 121, or 365(c)
for the benefit of a prior-filed copending nonprovisional
application or international application designating the
United States of America may be accepted if the
reference identifying the prior-filed application by
application number or international application number
and international filing date was unintentionally
delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed application must be accompanied
by:
(i) The reference required by 35 U.S.C. 120
and paragraph (a)(2) of this section to the
prior-filed application, unless previously
submitted;
(ii) The surcharge set forth in § 1.17(t); and
(iii) A statement that the entire delay between
the date the claim was due under paragraph
(a)(2)(ii) of this section and the date the claim was
filed was unintentional. The Director may require
additional information where there is a question
whether the delay was unintentional.
(4) A nonprovisional application, other than for a
design patent, or an international application
designating the United States of America may claim
an invention disclosed in one or more prior-filed
provisional applications. In order for an application to
claim the benefit of one or more prior-filed provisional
applications, each prior-filed provisional application
must name as an inventor at least one inventor named
in the later-filed application and disclose the named
inventor’s invention claimed in at least one claim of
the later-filed application in the manner provided by
the first paragraph of 35 U.S.C. 112. In addition, each
prior-filed provisional application must be entitled to
a filing date as set forth in § 1.53(c) , and the basic filing
fee set forth in § 1.16(d)  must be paid within the time
period set forth in § 1.53(g).
(5)
(i) Any nonprovisional application or
international application designating the United
States of America claiming the benefit of one or
more prior-filed provisional applications must
contain or be amended to contain a reference to
each such prior-filed provisional application,
identifying it by the provisional application
number (consisting of series code and serial
number).
(ii) This reference must be submitted during
the pendency of the later-filed application. If the
later-filed application is an application filed under
35 U.S.C. 111(a), this reference must also be
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 submitted within the later of four months from the
actual filing date of the later-filed application or
sixteen months from the filing date of the
prior-filed provisional application. If the later-filed
application is a nonprovisional application which
entered the national stage from an international
application after compliance with 35 U.S.C. 371,
this reference must also be submitted within the
later of four months from the date on which the
national stage commenced under 35 U.S.C. 371(b)
or (f) in the later-filed international application or
sixteen months from the filing date of the
prior-filed provisional application. These time
periods are not extendable. Except as provided in
paragraph(a)(6) of this section, the failure to
timely submit the reference is considered a waiver
of any benefit under 35 U.S.C. 119(e) to such
prior-filed provisional application. The time
periods in this paragraph do not apply if the
later-filed application is:
(A) An application filed under 35
U.S.C. 111(a) before November 29, 2000;
or
(B) A nonprovisional application
which entered the national stage after
compliance with 35 U.S.C. 371 from an
international application filed under 35
U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a
nonprovisional application, the reference required
by this paragraph must be included in an
application data sheet (§  1.76 ), or the specification
must contain or be amended to contain such
reference in the first sentence(s) following the
title.
(iv) If the prior-filed provisional application
was filed in a language other than English and
both an English-language translation of the
prior-filed provisional application and a statement
that the translation is accurate were not previously
filed in the prior-filed provisional application,
applicant will be notified and given a period of
time within which to file, in the prior-filed
provisional application, the translation and the
statement. If the notice is mailed in a pending
nonprovisional application, a timely reply to such
a notice must include the filing in the
nonprovisional application of either a confirmation
that the translation and statement were filed in the
provisional application, or an amendment or
Supplemental Application Data Sheet withdrawing
the benefit claim, or the nonprovisional application
will be abandoned. The translation and statementmay be filed in the provisional application, even
if the provisional application has become
abandoned.
(6) If the reference required by 35 U.S.C. 119(e)
and paragraph (a)(5) of this section is presented in a
nonprovisional application after the time period
provided by paragraph (a)(5)(ii) of this section, the
claim under 35 U.S.C. 119(e)  for the benefit of a prior
filed provisional application may be accepted during
the pendency of the later-filed application if the
reference identifying the prior-filed application by
provisional application number was unintentionally
delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 119(e)  for the benefit of a
prior-filed provisional application must be accompanied
by:
(i) The reference required by 35 U.S.C.  119(e)
and paragraph (a)(5) of this section to the
prior-filed provisional application, unless
previously submitted;
(ii) The surcharge set forth in § 1.17(t) ; and
(iii) A statement that the entire delay between
the date the claim was due under paragraph
(a)(5)(ii) of this section and the date the claim was
filed was unintentional. The Director may require
additional information where there is a question
whether the delay was unintentional.
(b) Where two or more applications filed by the same
applicant contain conflicting claims, elimination of such
claims from all but one application may be required in
the absence of good and sufficient reason for their
retention during pendency in more than one application.
(c) If an application or a patent under reexamination
and at least one other application naming different
inventors are owned by the same person and contain
conflicting claims, and there is no statement of record
indicating that the claimed inventions were commonly
owned or subject to an obligation of assignment to the
same person at the time the later invention was made, the
Office may require the assignee to state whether the
claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time
the later invention was made, and if not, indicate which
named inventor is the prior inventor. Even if the claimed
inventions were commonly owned, or subject to an
obligation of assignment to the same person, at the time
the later invention was made, the conflicting claims may
be rejected under the doctrine of double patenting in view
of such commonly owned or assigned applications or
patents under reexamination.
[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras.
(a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR
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 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3)
and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996; para. (a) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; para. (a)(3) revised, 65 FR 14865, Mar. 20, 2000,
effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000);
paras. (a)(2), (a)(4), and (c) revised, 65 FR 54604, Sept. 8, 2000,
effective Sept. 8, 2000; paras. (a)(2), (a)(3), and (a)(4) revised and paras.
(a)(5) and (a)(6) added, 65 FR 57024, Sept. 20, 2000, effective Nov.
29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001, effective Dec.
28, 2001; paras. (a)(3)(iii) & (a)(6)(iii) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; para (a)(3) revised, 68 FR 70996, Dec.
22, 2003, effective Jan. 21, 2004; paras. (a)(1), (a)(2)(iii), (a)(5)(iii) and
(c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para.
(a)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004;
para.(a)(1)(iii) removed and para. (a)(1)(ii) revised, 70 FR 30360, May
26, 2005, effective July 1, 2005; para. (a)(5)(iv) revised, 70 FR 56119,
Sept. 26, 2005, effective Nov. 25, 2005; revised, 72 FR 46716, Aug.
21, 2007 (implementation enjoined and never became effective); revised,
74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes
made by the final rules in 72 FR 46716 from the CFR)]
§  1.79 Reservation clauses not permitted.
A reservation for a future application of subject matter
disclosed but not claimed in a pending application will
not be permitted in the pending application, but an
application disclosing unclaimed subject matter may
contain a reference to a later filed application of the same
applicant or owned by a common assignee disclosing and
claiming that subject matter.
THE DRA WINGS
§  1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a
drawing of his or her invention where necessary for the
understanding of the subject matter sought to be patented;
this drawing, or a high quality copy thereof, must be filed
with the application. Since corrections are the
responsibility of the applicant, the original drawing(s)
should be retained by the applicant for any necessary
future correction.
(b) Drawings may include illustrations which facilitate
an understanding of the invention (for example, flowsheets
in cases of processes, and diagrammatic views).
(c) Whenever the nature of the subject matter sought
to be patented admits of illustration by a drawing without
its being necessary for the understanding of the subject
matter and the applicant has not furnished such a drawing,
the examiner will require its submission within a time
period of not less than two months from the date of the
sending of a notice thereof.
(d) Drawings submitted after the filing date of the
application may not be used to overcome any insufficiency
of the specification due to lack of an enabling disclosure
or otherwise inadequate disclosure therein, or tosupplement the original disclosure thereof for the purpose
of interpretation of the scope of any claim.
[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28,
1988, effective Jan. 1, 1989]
§  1.83 Content of drawing.
(a) The drawing in a nonprovisional application must
show every feature of the invention specified in the
claims. However, conventional features disclosed in the
description and claims, where their detailed illustration
is not essential for a proper understanding of the invention,
should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation
( e.g., a labeled rectangular box). In addition, tables and
sequence listings that are included in the specification
are, except for applications filed under  35 U .S.C. 371 ,
not permitted to be included in the drawings.
(b) When the invention consists of an improvement
on an old machine the drawing must when possible
exhibit, in one or more views, the improved portion itself,
disconnected from the old structure, and also in another
view, so much only of the old structure as will suffice to
show the connection of the invention therewith.
(c) Where the drawings in a nonprovisional
application do not comply with the requirements of
paragraphs (a) and (b) of this section, the examiner shall
require such additional illustration within a time period
of not less than two months from the date of the sending
of a notice thereof. Such corrections are subject to the
requirements of § 1.81 (d).
[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978; paras.
(a) and (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.84 Standards for drawings.
(a)  Drawings . There are two acceptable categories
for presenting drawings in utility and design patent
applications.
(1)  Black ink . Black and white drawings are
normally required. India ink, or its equivalent that
secures solid black lines, must be used for drawings;
or
(2)  Color.  On rare occasions, color drawings may
be necessary as the only practical medium by which to
disclose the subject matter sought to be patented in a
utility or design patent application or the subject matter
of a statutory invention registration. The color drawings
must be of sufficient quality such that all details in the
drawings are reproducible in black and white in the
printed patent. Color drawings are not permitted in
international applications (see PCT Rule 11.13 ), or in
an application, or copy thereof, submitted under the
Office electronic filing system. The Office will accept
color drawings in utility or design patent applications
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 and statutory invention registrations only after granting
a petition filed under this paragraph explaining why
the color drawings are necessary. Any such petition
must include the following:
(i) The fee set forth in § 1.17(h) ;
(ii) Three (3) sets of color drawings;
(iii) An amendment to the specification to
insert (unless the specification contains or has
been previously amended to contain) the following
language as the first paragraph of the brief
description of the drawings:
The patent or application file contains at least
one drawing executed in color. Copies of this patent
or patent application publication with color
drawing(s) will be provided by the Office upon
request and payment of the necessary fee.
(b)  Photographs .—
(1)  Black and white . Photographs, including
photocopies of photographs, are not ordinarily
permitted in utility and design patent applications. The
Office will accept photographs in utility and design
patent applications, however, if photographs are the
only practicable medium for illustrating the claimed
invention. For example, photographs or
photomicrographs of: electrophoresis gels, blots ( e.g.,
immunological, western, Southern, and northern), auto-
radiographs, cell cultures (stained and unstained),
histological tissue cross sections (stained and
unstained), animals, plants, in vivo imaging, thin layer
chromatography plates, crystalline structures, and, in
a design patent application, ornamental effects, are
acceptable. If the subject matter of the application
admits of illustration by a drawing, the examiner may
require a drawing in place of the photograph. The
photographs must be of sufficient quality so that all
details in the photographs are reproducible in the
printed patent.
(2)  Color photographs. Color photographs will be
accepted in utility and design patent applications if the
conditions for accepting color drawings and black and
white photographs have been satisfied. See paragraphs
(a)(2) and (b)(1) of this section.
(c) Identification of drawings . Identifying indicia
should be provided, and if provided, should include the
title of the invention, inventor’s name, and application
number, or docket number (if any) if an application
number has not been assigned to the application. If this
information is provided, it must be placed on the front of
each sheet within the top margin. Each drawing sheet
submitted after the filing date of an application must beidentified as either “Replacement Sheet” or “New Sheet”
pursuant to §  1.121 (d). If a marked-up copy of any
amended drawing figure including annotations indicating
the changes made is filed, such marked-up copy must be
clearly labeled as “Annotated Sheet” pursuant to §
1.121 (d)(1).
(d)  Graphic forms in drawings . Chemical or
mathematical formulae, tables, and waveforms may be
submitted as drawings and are subject to the same
requirements as drawings. Each chemical or mathematical
formula must be labeled as a separate figure, using
brackets when necessary, to show that information is
properly integrated. Each group of waveforms must be
presented as a single figure, using a common vertical axis
with time extending along the horizontal axis. Each
individual waveform discussed in the specification must
be identified with a separate letter designation adjacent
to the vertical axis.
(e)  Type of paper . Drawings submitted to the Office
must be made on paper which is flexible, strong, white,
smooth, non-shiny, and durable. All sheets must be
reasonably free from cracks, creases, and folds. Only one
side of the sheet may be used for the drawing. Each sheet
must be reasonably free from erasures and must be free
from alterations, overwritings, and interlineations.
Photographs must be developed on paper meeting the
sheet-size requirements of paragraph (f) of this section
and the margin requirements of paragraph (g) of this
section. See paragraph (b) of this section for other
requirements for photographs.
(f)  Size of paper. All drawing sheets in an application
must be the same size. One of the shorter sides of the
sheet is regarded as its top. The size of the sheets on which
drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g)  Margins . The sheets must not contain frames
around the sight ( i.e., the usable surface), but should have
scan target points ( i.e., cross-hairs) printed on two
cater-corner margin corners. Each sheet must include a
top margin of at least 2.5 cm. (1 inch), a left side margin
of at least 2.5 cm. (1 inch), a right side margin of at least
1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm.
(3/8 inch), thereby leaving a sight no greater than 17.0 cm.
by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4)
drawing sheets, and a sight no greater than 17.6 cm. by
24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by
27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h)  Views . The drawing must contain as many views
as necessary to show the invention. The views may be
plan, elevation, section, or perspective views. Detail views
of portions of elements, on a larger scale if necessary,
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 may also be used. All views of the drawing must be
grouped together and arranged on the sheet(s) without
wasting space, preferably in an upright position, clearly
separated from one another, and must not be included in
the sheets containing the specifications, claims, or
abstract. Views must not be connected by projection lines
and must not contain center lines. Waveforms of electrical
signals may be connected by dashed lines to show the
relative timing of the waveforms.
(1)  Exploded views . Exploded views, with the
separated parts embraced by a bracket, to show the
relationship or order of assembly of various parts are
permissible. When an exploded view is shown in a
figure which is on the same sheet as another figure, the
exploded view should be placed in brackets.
(2)  Partial views . When necessary, a view of a
large machine or device in its entirety may be broken
into partial views on a single sheet, or extended over
several sheets if there is no loss in facility of
understanding the view. Partial views drawn on separate
sheets must always be capable of being linked edge to
edge so that no partial view contains parts of another
partial view. A smaller scale view should be included
showing the whole formed by the partial views and
indicating the positions of the parts shown. When a
portion of a view is enlarged for magnification
purposes, the view and the enlarged view must each
be labeled as separate views.
(i) Where views on two or more sheets form,
in effect, a single complete view, the views on the
several sheets must be so arranged that the
complete figure can be assembled without
concealing any part of any of the views appearing
on the various sheets.
(ii) A very long view may be divided into
several parts placed one above the other on a
single sheet. However, the relationship between
the different parts must be clear and unambiguous.
(3)  Sectional views . The plane upon which a
sectional view is taken should be indicated on the view
from which the section is cut by a broken line. The
ends of the broken line should be designated by Arabic
or Roman numerals corresponding to the view number
of the sectional view, and should have arrows to
indicate the direction of sight. Hatching must be used
to indicate section portions of an object, and must be
made by regularly spaced oblique parallel lines spaced
sufficiently apart to enable the lines to be distinguished
without difficulty. Hatching should not impede the
clear reading of the reference characters and lead lines.
If it is not possible to place reference characters outside
the hatched area, the hatching may be broken off
wherever reference characters are inserted. Hatchingmust be at a substantial angle to the surrounding axes
or principal lines, preferably 45°. A cross section must
be set out and drawn to show all of the materials as
they are shown in the view from which the cross section
was taken. The parts in cross section must show proper
material(s) by hatching with regularly spaced parallel
oblique strokes, the space between strokes being chosen
on the basis of the total area to be hatched. The various
parts of a cross section of the same item should be
hatched in the same manner and should accurately and
graphically indicate the nature of the material(s) that
is illustrated in cross section. The hatching of
juxtaposed different elements must be angled in a
different way. In the case of large areas, hatching may
be confined to an edging drawn around the entire inside
of the outline of the area to be hatched. Different types
of hatching should have different conventional
meanings as regards the nature of a material seen in
cross section.
(4)  Alternate position . A moved position may be
shown by a broken line superimposed upon a suitable
view if this can be done without crowding; otherwise,
a separate view must be used for this purpose.
(5)  Modified forms. Modified forms of construction
must be shown in separate views.
(i)  Arrangement of views . One view must not be
placed upon another or within the outline of another. All
views on the same sheet should stand in the same direction
and, if possible, stand so that they can be read with the
sheet held in an upright position. If views wider than the
width of the sheet are necessary for the clearest illustration
of the invention, the sheet may be turned on its side so
that the top of the sheet, with the appropriate top margin
to be used as the heading space, is on the right-hand side.
Words must appear in a horizontal, left-to-right fashion
when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing
standard scientific convention to denote the axis of
abscissas (of X) and the axis of ordinates (of Y).
(j)  Front page view . The drawing must contain as
many views as necessary to show the invention. One of
the views should be suitable for inclusion on the front
page of the patent application publication and patent as
the illustration of the invention. Views must not be
connected by projection lines and must not contain center
lines. Applicant may suggest a single view (by figure
number) for inclusion on the front page of the patent
application publication and patent.
(k)  Scale. The scale to which a drawing is made must
be large enough to show the mechanism without crowding
when the drawing is reduced in size to two-thirds in
reproduction. Indications such as “actual size” or “scale
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 1/2” on the drawings are not permitted since these lose
their meaning with reproduction in a different format.
(l)  Character of lines, numbers, and letters.  All
drawings must be made by a process which will give them
satisfactory reproduction characteristics. Every line,
number, and letter must be durable, clean, black (except
for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines
and letters must be heavy enough to permit adequate
reproduction. This requirement applies to all lines
however fine, to shading, and to lines representing cut
surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where
different thicknesses have a different meaning.
(m)  Shading . The use of shading in views is
encouraged if it aids in understanding the invention and
if it does not reduce legibility. Shading is used to indicate
the surface or shape of spherical, cylindrical, and conical
elements of an object. Flat parts may also be lightly
shaded. Such shading is preferred in the case of parts
shown in perspective, but not for cross sections. See
paragraph (h)(3) of this section. Spaced lines for shading
are preferred. These lines must be thin, as few in number
as practicable, and they must contrast with the rest of the
drawings. As a substitute for shading, heavy lines on the
shade side of objects can be used except where they
superimpose on each other or obscure reference
characters. Light should come from the upper left corner
at an angle of 45°. Surface delineations should preferably
be shown by proper shading. Solid black shading areas
are not permitted, except when used to represent bar
graphs or color.
(n)  Symbols. Graphical drawing symbols may be used
for conventional elements when appropriate. The elements
for which such symbols and labeled representations are
used must be adequately identified in the specification.
Known devices should be illustrated by symbols which
have a universally recognized conventional meaning and
are generally accepted in the art. Other symbols which
are not universally recognized may be used, subject to
approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they
are readily identifiable.
(o)  Legends . Suitable descriptive legends may be
used subject to approval by the Office, or may be required
by the examiner where necessary for understanding of
the drawing. They should contain as few words as
possible.
(p)  Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred),
sheet numbers, and view numbers must be plain and
legible, and must not be used in association with
brackets or inverted commas, or enclosed withinoutlines,  e.g., encircled. They must be oriented in the
same direction as the view so as to avoid having to
rotate the sheet. Reference characters should be
arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters,
except where another alphabet is customarily used,
such as the Greek alphabet to indicate angles,
wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must
measure at least .32 cm. (1/8 inch) in height. They
should not be placed in the drawing so as to interfere
with its comprehension. Therefore, they should not
cross or mingle with the lines. They should not be
placed upon hatched or shaded surfaces. When
necessary, such as indicating a surface or cross section,
a reference character may be underlined and a blank
space may be left in the hatching or shading where the
character occurs so that it appears distinct.
(4) The same part of an invention appearing in more
than one view of the drawing must always be
designated by the same reference character, and the
same reference character must never be used to
designate different parts.
(5) Reference characters not mentioned in the
description shall not appear in the drawings. Reference
characters mentioned in the description must appear in
the drawings.
(q)  Lead lines . Lead lines are those lines between the
reference characters and the details referred to. Such lines
may be straight or curved and should be as short as
possible. They must originate in the immediate proximity
of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines
are required for each reference character except for those
which indicate the surface or cross section on which they
are placed. Such a reference character must be underlined
to make it clear that a lead line has not been left out by
mistake. Lead lines must be executed in the same way as
lines in the drawing. See paragraph (l) of this section.
(r)  Arrows . Arrows may be used at the ends of lines,
provided that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate
the entire section towards which it points;
(2) On a lead line, an arrow touching a line to
indicate the surface shown by the line looking along
the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice . A copyright or
mask work notice may appear in the drawing, but must
be placed within the sight of the drawing immediately
below the figure representing the copyright or mask work
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 material and be limited to letters having a print size of
.32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content
of the notice must be limited to only those elements
provided for by law. For example, “©1983 John Doe”
(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909)
would be properly limited and, under current statutes,
legally sufficient notices of copyright and mask work,
respectively. Inclusion of a copyright or mask work notice
will be permitted only if the authorization language set
forth in § 1.71 (e) is included at the beginning (preferably
as the first paragraph) of the specification.
(t)  Numbering of sheets of drawings . The sheets of
drawings should be numbered in consecutive Arabic
numerals, starting with 1, within the sight as defined in
paragraph (g) of this section. These numbers, if present,
must be placed in the middle of the top of the sheet, but
not in the margin. The numbers can be placed on the
right-hand side if the drawing extends too close to the
middle of the top edge of the usable surface. The drawing
sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion.
The number of each sheet should be shown by two Arabic
numerals placed on either side of an oblique line, with
the first being the sheet number and the second being the
total number of sheets of drawings, with no other marking.
(u)  Numbering of views.
(1) The different views must be numbered in
consecutive Arabic numerals, starting with 1,
independent of the numbering of the sheets and, if
possible, in the order in which they appear on the
drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be
identified by the same number followed by a capital
letter. View numbers must be preceded by the
abbreviation “FIG.” Where only a single view is used
in an application to illustrate the claimed invention, it
must not be numbered and the abbreviation “FIG.”
must not appear.
(2) Numbers and letters identifying the views must
be simple and clear and must not be used in association
with brackets, circles, or inverted commas. The view
numbers must be larger than the numbers used for
reference characters.
(v)  Security markings. Authorized security markings
may be placed on the drawings provided they are outside
the sight, preferably centered in the top margin.
(w)  Corrections . Any corrections on drawings
submitted to the Office must be durable and permanent.
(x)  Holes . No holes should be made by applicant in
the drawing sheets.(y) Types of drawings . See § 1.152  for design
drawings, § 1.165  for plant drawings, and § 1.173(a)(2)
for reissue drawings.
[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36
FR 9775, May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657,
Nov. 6,1980; paras. (a), (b), (i), (j), and (l) amended, paras. (n), (o), and
(p) added, 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; revised,
58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g),
and (x) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;
paras. (a)(2)(i), (b), (c) & (g) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; paras. (a), (b), (c), (j), (k), (o), and (x) revised,
and para. (y) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
paras. (a)(2), (e), and (j) revised, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 2004, effective
Sept. 21, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004,
effective Nov. 22, 2004; para. (y) revised, 70 FR 3880, Jan. 27, 2005,
effective Dec. 8, 2004]
§  1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on
the files for examination until objections to the drawings
have been corrected. Except as provided in § 1.215(c) ,
any patent application publication will not include
drawings filed after the application has been placed on
the files for examination. Unless applicant is otherwise
notified in an Office action, objections to the drawings in
a utility or plant application will not be held in abeyance,
and a request to hold objections to the drawings in
abeyance will not be considered a bona fide  attempt to
advance the application to final action (§ 1.135(c) ). If a
drawing in a design application meets the requirements
of § 1.84(e),  (f), and (g) and is suitable for reproduction,
but is not otherwise in compliance with § 1.84, the
drawing may be admitted for examination.
(b) The Office will not release drawings for purposes
of correction. If corrections are necessary, new corrected
drawings must be submitted within the time set by the
Office.
(c) If a corrected drawing is required or if a drawing
does not comply with §  1.84  at the time an application is
allowed, the Office may notify the applicant and set a
three-month period of time from the mail date of the
notice of allowability within which the applicant must
file a corrected drawing in compliance with §  1.84  to
avoid abandonment. This time period is not extendable
under §  1.136 (a) or §  1.136 (b).
[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR
47810, Nov. 28, 1988, effective Jan. 1, 1989; revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 57024,
Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised, 69 FR 56481,
Sept. 21, 2004, effective Oct. 21, 2004]
§  1.88 [Reserved]
[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]
MODELS, EXHIBITS, SPECIMENS
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 §  1.91 Models or exhibits not generally admitted as
part of application or patent.
(a) A model or exhibit will not be admitted as part of
the record of an application unless it:
(1) Substantially conforms to the requirements of
§ 1.52  or § 1.84 ;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section
including:
(i) The fee set forth in § 1.17 (h); and
(ii) An explanation of why entry of the model
or exhibit in the file record is necessary to
demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a)
of this section, a model, working model, or other physical
exhibit may be required by the Office if deemed necessary
for any purpose in examination of the application.
(c) Unless the model or exhibit substantially conforms
to the requirements of §  1.52  or § 1.84  under paragraph
(a)(1) of this section, it must be accompanied by
photographs that show multiple views of the material
features of the model or exhibit and that substantially
conform to the requirements of § 1.84.
[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para. (a)(3)(i) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; para. (c) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21,
2004]
§  1.92 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§  1.93 Specimens.
When the invention relates to a composition of matter,
the applicant may be required to furnish specimens of the
composition, or of its ingredients or intermediates, for the
purpose of inspection or experiment.
§  1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned
to the applicant if no longer necessary for the conduct of
business before the Office. When applicant is notified
that a model, exhibit, or specimen is no longer necessary
for the conduct of business before the Office and will be
returned, applicant must arrange for the return of the
model, exhibit, or specimen at the applicant’s expense.
The Office will dispose of perishables without notice to
applicant unless applicant notifies the Office upon
submission of the model, exhibit or specimen that a return
is desired and makes arrangements for its return promptly
upon notification by the Office that the model, exhibit or
specimen is no longer necessary for the conduct of
business before the Office.(b) Applicant is responsible for retaining the actual
model, exhibit, or specimen for the enforceable life of
any patent resulting from the application. The provisions
of this paragraph do not apply to a model or exhibit that
substantially conforms to the requirements of §  1.52  or §
1.84, where the model or exhibit has been described by
photographs that substantially conform to §  1.84 , or where
the model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph
(a) of this section, of the need to arrange for return of a
model, exhibit or specimen, applicant must arrange for
the return within the period set in such notice, to avoid
disposal of the model, exhibit or specimen by the Office.
Extensions of time are available under §  1.136 , except in
the case of perishables. Failure to establish that the return
of the item has been arranged for within the period set or
failure to have the item removed from Office storage
within a reasonable amount of time notwithstanding any
arrangement for return, will permit the Office to dispose
of the model, exhibit or specimen.
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.95 Copies of exhibits.
Copies of models or other physical exhibits will not
ordinarily be furnished by the Office, and any model or
exhibit in an application or patent shall not be taken from
the Office except in the custody of an employee of the
Office specially authorized by the Director.
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§  1.96 Submission of computer program listings.
(a)  General. Descriptions of the operation and general
content of computer program listings should appear in
the description portion of the specification. A computer
program listing for the purpose of this section is defined
as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for
a computer. The program listing may be either in machine
or machine-independent (object or source) language which
will cause a computer to perform a desired procedure or
task such as solve a problem, regulate the flow of work
in a computer, or control or monitor events. Computer
program listings may be submitted in patent applications
as set forth in paragraphs (b) and (c) of this section.
(b)  Material which will be printed in the patent : If
the computer program listing is contained in 300 lines or
fewer, with each line of 72 characters or fewer, it may be
submitted either as drawings or as part of the specification.
(1) Drawings . If the listing is submitted as
drawings, it must be submitted in the manner and
complying with the requirements for drawings as
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 provided in § 1.84. At least one figure numeral is
required on each sheet of drawing.
(2)  Specification .
(i) If the listing is submitted as part of the
specification, it must be submitted in accordance
with the provisions of § 1.52.
(ii) Any listing having more than 60 lines of
code that is submitted as part of the specification
must be positioned at the end of the description
but before the claims. Any amendment must be
made by way of submission of a substitute sheet.
(c) As an appendix which will not be printed : Any
computer program listing may, and any computer program
listing having over 300 lines (up to 72 characters per line)
must, be submitted on a compact disc in compliance with
§ 1.52(e) . A compact disc containing such a computer
program listing is to be referred to as a “computer program
listing appendix.” The “computer program listing
appendix” will not be part of the printed patent. The
specification must include a reference to the “computer
program listing appendix” at the location indicated in §
1.77(b)(5) .
(1) Multiple computer program listings for a single
application may be placed on a single compact disc.
Multiple compact discs may be submitted for a single
application if necessary. A separate compact disc is
required for each application containing a computer
program listing that must be submitted on a “computer
program listing appendix.”
(2) The “computer program listing appendix” must
be submitted on a compact disc that complies with §
1.52(e)  and the following specifications (no other
format shall be allowed):
(i) Computer Compatibility: IBM PC/XT/AT,
or compatibles, or Apple Macintosh;
(ii) Operating System Compatibility:
MS-DOS, MS-Windows, Unix, or Macintosh;
(iii) Line Terminator: ASCII Carriage Return
plus ASCII Line Feed;
(iv) Control Codes: the data must not be
dependent on control characters or codes which
are not defined in the ASCII character set; and
(v) Compression: uncompressed data.
[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, Nov.
15, 1989, effective Jan. 16, 1990; revised, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996; paras. (b) and (c) revised, 65 FR 54604, Sept.
8, 2000, effective Sept. 8, 2000 (effective date corrected, 65 FR 78958,
Dec. 18, 2000; para. (c) introductory text revised, 70 FR 54259, Sept.
14, 2005, effective Sept. 14, 2005]INFORMATION DISCLOSURE STATEMENT
§  1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a
reissue of a patent to have an information disclosure
statement in compliance with § 1.98 considered by the
Office during the pendency of the application, the
information disclosure statement must satisfy one of
paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be
considered by the Office if filed by the applicant within
any one of the following time periods:
(1) Within three months of the filing date of a
national application other than a continued prosecution
application under § 1.53(d) ;
(2) Within three months of the date of entry of the
national stage as set forth in § 1.491  in an international
application;
(3) Before the mailing of a first Office action on
the merits; or
(4) Before the mailing of a first Office action after
the filing of a request for continued examination under
§ 1.114 .
(c) An information disclosure statement shall be
considered by the Office if filed after the period specified
in paragraph (b) of this section, provided that the
information disclosure statement is filed before the
mailing date of any of a final action under § 1.113 , a
notice of allowance under § 1.311 , or an action that
otherwise closes prosecution in the application, and it is
accompanied by one of:
(1) The statement specified in paragraph (e) of this
section; or
(2) The fee set forth in § 1.17(p) .
(d) An information disclosure statement shall be
considered by the Office if filed by the applicant after the
period specified in paragraph (c) of this section, provided
that the information disclosure statement is filed on or
before payment of the issue fee and is accompanied by:
(1) The statement specified in paragraph (e) of this
section; and
(2) The fee set forth in § 1.17(p) .
(e) A statement under this section must state either:
(1) That each item of information contained in the
information disclosure statement was first cited in any
communication from a foreign patent office in a
counterpart foreign application not more than three
months prior to the filing of the information disclosure
statement; or
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 (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, and, to the knowledge
of the person signing the certification after making
reasonable inquiry, no item of information contained
in the information disclosure statement was known to
any individual designated in § 1.56(c)  more than three
months prior to the filing of the information disclosure
statement.
(f) No extensions of time for filing an information
disclosure statement are permitted under § 1.136 . If a
bona fide  attempt is made to comply with § 1.98 , but part
of the required content is inadvertently omitted, additional
time may be given to enable full compliance.
(g) An information disclosure statement filed in
accordance with this section shall not be construed as a
representation that a search has been made.
(h) The filing of an information disclosure statement
shall not be construed to be an admission that the
information cited in the statement is, or is considered to
be, material to patentability as defined in § 1.56 (b).
(i) If an information disclosure statement does not
comply with either this section or § 1.98, it will be
placed in the file but will not be considered by the
Office.
[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR
2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR
20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61
FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised,
65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final,
65 FR 50092, Aug. 16, 2000); paras. (a) through (e) and (i) revised, 65
FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§  1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under
§ 1.97  shall include the items listed in paragraphs (a)(1),
(a)(2) and (a)(3) of this section.
(1) A list of all patents, publications, applications,
or other information submitted for consideration by the
Office. U.S. patents and U.S. patent application
publications must be listed in a section separately from
citations of other documents. Each page of the list must
include:
(i) The application number of the application
in which the information disclosure statement is
being submitted;
(ii) A column that provides a space, next to
each document to be considered, for the
examiner’s initials; and
(iii) A heading that clearly indicates that the
list is an information disclosure statement.(2) A legible copy of:
(i) Each foreign patent;
(ii) Each publication or that portion which
caused it to be listed, other than U.S. patents and
U.S. patent application publications unless
required by the Office;
(iii) For each cited pending unpublished U.S.
application, the application specification including
the claims, and any drawing of the application, or
that portion of the application which caused it to
be listed including any claims directed to that
portion; and
(iv) All other information or that portion
which caused it to be listed.
(3)
(i) A concise explanation of the relevance, as
it is presently understood by the individual
designated in §  1.56 (c) most knowledgeable about
the content of the information, of each patent,
publication, or other information listed that is not
in the English language. The concise explanation
may be either separate from applicant’s
specification or incorporated therein.
(ii) A copy of the translation if a written
English-language translation of a
non-English-language document, or portion
thereof, is within the possession, custody, or
control of, or is readily available to any individual
designated in § 1.56(c).
(b)
(1) Each U.S. patent listed in an information
disclosure statement must be identified by inventor,
patent number, and issue date.
(2) Each U.S. patent application publication listed
in an information disclosure statement shall be
identified by applicant, patent application publication
number, and publication date.
(3) Each U.S. application listed in an information
disclosure statement must be identified by the inventor,
application number, and filing date.
(4) Each foreign patent or published foreign patent
application listed in an information disclosure statement
must be identified by the country or patent office which
issued the patent or published the application, an
appropriate document number, and the publication date
indicated on the patent or published application.
(5) Each publication listed in an information
disclosure statement must be identified by publisher,
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 author (if any), title, relevant pages of the publication,
date, and place of publication.
(c) When the disclosures of two or more patents or
publications listed in an information disclosure statement
are substantively cumulative, a copy of one of the patents
or publications as specified in paragraph (a) of this section
may be submitted without copies of the other patents or
publications, provided that it is stated that these other
patents or publications are cumulative.
(d) A copy of any patent, publication, pending U.S.
application or other information, as specified in paragraph
(a) of this section, listed in an information disclosure
statement is required to be provided, even if the patent,
publication, pending U.S. application or other information
was previously submitted to, or cited by, the Office in an
earlier application, unless:
(1) The earlier application is properly identified in
the information disclosure statement and is relied on
for an earlier effective filing date under 35 U.S.C. 120;
and
(2) The information disclosure statement submitted
in the earlier application complies with paragraphs (a)
through (c) of this section.
[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 20, 1983,
effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar.
16, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
paras. (a)(2) and (b) revised, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (e) added, 68 FR 38611, June 30, 2003, effective
July 30, 2003; paras. (a) and (c) revised and para. (e) removed, 69 FR
56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.99 Third-party submission in published
application.
(a) A submission by a member of the public of patents
or publications relevant to a pending published application
may be entered in the application file if the submission
complies with the requirements of this section and the
application is still pending when the submission and
application file are brought before the examiner.
(b) A submission under this section must identify the
application to which it is directed by application number
and include:
(1) The fee set forth in § 1.17(p) ;
(2) A list of the patents or publications submitted
for consideration by the Office, including the date of
publication of each patent or publication;
(3) A copy of each listed patent or publication in
written form or at least the pertinent portions; and
(4) An English language translation of all the
necessary and pertinent parts of any non-English
language patent or publication in written form relied
upon.(c) The submission under this section must be served
upon the applicant in accordance with § 1.248 .
(d) A submission under this section shall not include
any explanation of the patents or publications, or any
other information. The Office will not enter such
explanation or information if included in a submission
under this section. A submission under this section is also
limited to ten total patents or publications.
(e) A submission under this section must be filed
within two months from the date of publication of the
application (§ 1.215(a) ) or prior to the mailing of a notice
of allowance (§ 1.311 ), whichever is earlier. Any
submission under this section not filed within this period
is permitted only when the patents or publications could
not have been submitted to the Office earlier, and must
also be accompanied by the processing fee set forth in §
1.17(i) . A submission by a member of the public to a
pending published application that does not comply with
the requirements of this section will not be entered.
(f) A member of the public may include a
self-addressed postcard with a submission to receive an
acknowledgment by the Office that the submission has
been received. A member of the public filing a submission
under this section will not receive any communications
from the Office relating to the submission other than the
return of a self-addressed postcard. In the absence of a
request by the Office, an applicant has no duty to, and
need not, reply to a submission under this section.
[48 FR 2712, Jan. 20, 1983; effective Feb. 27, 1983; removed
and reserved, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; added,
65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (f) corrected,
65 FR 66502, Nov. 6, 2000, effective Nov. 29, 2000; paras. (d) and (e)
revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
EXAMINATION OF APPLICATIONS
§ 
1.101[Reserved]
[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, Jan. 20,
1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985,
effective May 8, 1985; 52 FR 20046, May 28, 1987, effective July 1,
1987; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§ 
1.102Advancement 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 Director to expedite the
business of the Office, or upon filing of a request under
paragraph (b) or (e) of this section or upon filing a petition
or request under paragraph (c) or (d) of this section with
a showing which, in the opinion of the Director, will
justify so advancing it.
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 (b) Applications wherein the inventions are deemed
of peculiar importance to some branch of the public
service and the head of some department of the
Government requests immediate action for that reason,
may be advanced for examination.
(c) A petition to make an application special may be
filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or
conservation of energy resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on
grounds other than those referred to in paragraph (c) of
this section must be accompanied by the fee set forth in
§ 1.17(h) .
(e) A request for prioritized examination under this
paragraph must comply with the requirements of this
paragraph and be accompanied by the prioritized
examination fee set forth in § 1.17(c)  , the processing fee
set forth in § 1.17(i) , and if not already paid, the
publication fee set forth in § 1.18(d) . An application for
which prioritized examination has been requested may
not contain or be amended to contain more than four
independent claims, more than thirty total claims, or any
multiple dependent claim. Prioritized examination under
this paragraph will not be accorded to international
applications that have not entered the national stage under
35 U .S.C. 371 , design applications, reissue applications,
provisional applications, or reexamination proceedings.
A request for prioritized examination must also comply
with the requirements of paragraph (e)(1) or paragraph
(e)(2) of this section.
(1) A request for prioritized examination may be
filed with an original utility or plant nonprovisional
application under 35 U .S.C. 111(a)  that is complete as
defined by § 1.51(b) , with any fees due under § 1.16
paid on filing. If the application is a utility application,
it must be filed via the Office's electronic filing system.
The request for prioritized examination in compliance
with this paragraph must be present upon filing of the
application.
(2) A request for prioritized examination may be
filed with or after a request for continued examination
in compliance with § 1.114 . If the application is a utility
application, the request must be filed via the Office’s
electronic filing system. The request must be filed
before the mailing of the first Office action after the
filing of the request for continued examination under
§ 1.114 . Only a single such request for prioritizedexamination under this paragraph may be granted in
an application.
[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 47 FR
41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 54 FR 6893,
Feb. 15, 1989, effective Apr. 17, 1989; para. (d) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 FR 14332,
Mar. 25, 2003, effective May 1, 2003; para. (c) revised, 69 FR 56481,
Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised and para. (e)
added, 76 FR 18399, Apr. 4, 2011, effective date delayed until further
notice, 76 FR 23876, April 29, 2011 and withdrawn effective Sept. 23,
2011, 76 FR 59050, Sept. 23, 2011; para. (a) revised and para. (e) added,
76 FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (e) revised,
76 FR 78566, Dec. 19, 2011, effective Dec. 19, 2011]
§ 
1.103Suspension of action by the Office.
(a)  Suspension for cause. On request of the applicant,
the Office may grant a suspension of action by the Office
under this paragraph for good and sufficient cause. The
Office will not suspend action if a reply by applicant to
an Office action is outstanding. Any petition for
suspension of action under this paragraph must specify a
period of suspension not exceeding six months. Any
petition for suspension of action under this paragraph
must also include:
(1) A showing of good and sufficient cause for
suspension of action; and
(2) The fee set forth in § 1.17(g) , unless such cause
is the fault of the Office.
(b) Limited suspension of action in a continued
prosecution application (CPA) filed under § 1.53(d)  . On
request of the applicant, the Office may grant a suspension
of action by the Office under this paragraph in a continued
prosecution application filed under § 1.53(d)  for a period
not exceeding three months. Any request for suspension
of action under this paragraph must be filed with the
request for an application filed under § 1.53(d) , specify
the period of suspension, and include the processing fee
set forth in § 1.17(i) .
(c) Limited suspension of action after a request for
continued application (RCE) under § 1.114  . On request
of the applicant, the Office may grant a suspension of
action by the Office under this paragraph after the filing
of a request for continued examination in compliance with
§ 1.114  for a period not exceeding three months. Any
request for suspension of action under this paragraph must
be filed with the request for continued examination under
§ 1.114 , specify the period of suspension, and include the
processing fee set forth in § 1.17(i) .
(d) Deferral of examination . On request of the
applicant, the Office may grant a deferral of examination
under the conditions specified in this paragraph for a
period not extending beyond three years from the earliest
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 filing date for which a benefit is claimed under title 35,
United States Code. A request for deferral of examination
under this paragraph must include the publication fee set
forth in § 1.18(d)  and the processing fee set forth in §
1.17(i ). A request for deferral of examination under this
paragraph will not be granted unless:
(1) The application is an original utility or plant
application filed under § 1.53(b)  or resulting from entry
of an international application into the national stage
after compliance with §  1.495 ;
(2) The applicant has not filed a nonpublication
request under § 1.213(a) , or has filed a request under
§ 1.213(b) to rescind a previously filed nonpublication
request;
(3) The application is in condition for publication
as provided in § 1.211(c) ; and
(4) The Office has not issued either an Office action
under 35 U.S.C. 132 or a notice of allowance under 35
U.S.C. 151.
(e)  Notice of suspension on initiative of the Office .
The Office will notify applicant if the Office suspends
action by the Office on an application on its own initiative.
(f)  Suspension of action for public safety or defense.
The Office may suspend action by the Office by order of
the Director if the following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental
to the public safety or defense; and
(3) The appropriate department or agency requests
such suspension.
(g)   Statutory invention registration. The Office will
suspend action by the Office for the entire pendency of
an application if the Office has accepted a request to
publish a statutory invention registration in the
application, except for purposes relating to patent
interference proceedings under part 41, subpart D, of this
title.
[24 FR 10332, Dec. 22, 1959; 33 FR 5624, Apr. 11, 1968; paras.
(a) and (b), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para.
(d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50
FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR 6893,
Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 20195,
Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 50092, Aug. 16,
2000, effective Aug. 16, 2000; paras. (d) through (f) redesignated as (e)
through (g) and para. (d) added, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (d)(1) revised, 67 FR 520, Jan. 4, 2002, effective
Apr. 1, 2002; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective
Sept. 13, 2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004,
effective Nov. 22, 2004]
§ 
1.104Nature of examination.(a)  Examiner’s action .
(1) On taking up an application for examination or
a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a
thorough investigation of the available prior art relating
to the subject matter of the claimed invention. The
examination shall be complete with respect both to
compliance of the application or patent under
reexamination with the applicable statutes and rules
and to the patentability of the invention as claimed, as
well as with respect to matters of form, unless otherwise
indicated.
(2) The applicant, or in the case of a reexamination
proceeding, both the patent owner and the requester,
will be notified of the examiner’s action. The reasons
for any adverse action or any objection or requirement
will be stated in an Office action and such information
or references will be given as may be useful in aiding
the applicant, or in the case of a reexamination
proceeding the patent owner, to judge the propriety of
continuing the prosecution.
(3) An international-type search will be made in all
national applications filed on and after June 1, 1978.
(4) Any national application may also have an
international-type search report prepared thereon at the
time of the national examination on the merits, upon
specific written request therefor and payment of the
international-type search report fee set forth in
§ 1.21 (e). The Patent and Trademark Office does not
require that a formal report of an international-type
search be prepared in order to obtain a search fee refund
in a later filed international application.
(b)  Completeness of examiner’s action . The
examiner’s action will be complete as to all matters,
except that in appropriate circumstances, such as
misjoinder of invention, fundamental defects in the
application, and the like, the action of the examiner may
be limited to such matters before further action is made.
However, matters of form need not be raised by the
examiner until a claim is found allowable.
(c)  Rejection of claims .
(1) If the invention is not considered patentable, or
not considered patentable as claimed, the claims, or
those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references
at his or her command. When a reference is complex
or shows or describes inventions other than that claimed
by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly
explained and each rejected claim specified.
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 (3) In rejecting claims the examiner may rely upon
admissions by the applicant, or the patent owner in a
reexamination proceeding, as to any matter affecting
patentability and, insofar as rejections in applications
are concerned, may also rely upon facts within his or
her knowledge pursuant to paragraph (d)(2) of this
section.
(4) Subject matter which is developed by another
person which qualifies as prior art only under 35 U.S.C.
102(e) , (f) or (g) may be used as prior art under 35
U.S.C. 103  against a claimed invention unless the entire
rights to the subject matter and the claimed invention
were commonly owned by the same person or subject
to an obligation of assignment to the same person at
the time the claimed invention was made.
(i) Subject matter developed by another person
and a claimed invention shall be deemed to have
been commonly owned by the same person or
subject to an obligation of assignment to the same
person in any application and in any patent granted
on or after December 10, 2004, if:
(A) The claimed invention and the
subject matter was made by or on behalf
of parties to a joint research agreement
that was in effect on or before the date the
claimed invention was made;
(B) The claimed invention was made
as a result of activities undertaken within
the scope of the joint research agreement;
and
(C) The application for patent for the
claimed invention discloses or is amended
to disclose the names of the parties to the
joint research agreement.
(ii) For purposes of paragraph (c)(4)(i) of this
section, the term “joint research agreement” means
a written contract, grant, or cooperative agreement
entered into by two or more persons or entities for
the performance of experimental, developmental,
or research work in the field of the claimed
invention.
(iii) To overcome a rejection under 35 U.S.C .
103(a) based upon subject matter which qualifies
as prior art under only one or more of 35 U.S.C.
102(e), (f) or (g) via 35 U.S.C . 103 (c)(2), the
applicant must provide a statement to the effect
that the prior art and the claimed invention were
made by or on the behalf of parties to a joint
research agreement, within the meaning of 35
U.S.C . 103 (c)(3) and paragraph (c)(4)(ii) of this
section, that was in effect on or before the date
the claimed invention was made, and that theclaimed invention was made as a result of
activities undertaken within the scope of the joint
research agreement.
(5) The claims in any original application naming
an inventor will be rejected as being precluded by a
waiver in a published statutory invention registration
naming that inventor if the same subject matter is
claimed in the application and the statutory invention
registration. The claims in any reissue application
naming an inventor will be rejected as being precluded
by a waiver in a published statutory invention
registration naming that inventor if the reissue
application seeks to claim subject matter:
(i) Which was not covered by claims issued
in the patent prior to the date of publication of the
statutory invention registration; and
(ii) Which was the same subject matter waived
in the statutory invention registration.
(d)  Citation of references .
(1) If domestic patents are cited by the examiner,
their numbers and dates, and the names of the patentees
will be stated. If domestic patent application
publications are cited by the examiner, their publication
number, publication date, and the names of the
applicants will be stated. If foreign published
applications or patents are cited, their nationality or
country, numbers and dates, and the names of the
patentees will be stated, and such other data will be
furnished as may be necessary to enable the applicant,
or in the case of a reexamination proceeding, the patent
owner, to identify the published applications or patents
cited. In citing foreign published applications or
patents, in case only a part of the document is involved,
the particular pages and sheets containing the parts
relied upon will be identified. If printed publications
are cited, the author (if any), title, date, pages or plates,
and place of publication, or place where a copy can be
found, will be given.
(2) When a rejection in an application is based on
facts within the personal knowledge of an employee
of the Office, the data shall be as specific as possible,
and the reference must be supported, when called for
by the applicant, by the affidavit of such employee,
and such affidavit shall be subject to contradiction or
explanation by the affidavits of the applicant and other
persons.
(e)  Reasons for allowance . If the examiner believes
that the record of the prosecution as a whole does not
make clear his or her reasons for allowing a claim or
claims, the examiner may set forth such reasoning. The
reasons shall be incorporated into an Office action
rejecting other claims of the application or patent under
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 reexamination or be the subject of a separate
communication to the applicant or patent owner. The
applicant or patent owner may file a statement
commenting on the reasons for allowance within such
time as may be specified by the examiner. Failure by the
examiner to respond to any statement commenting on
reasons for allowance does not give rise to any
implication.
[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para.
(d), 47 FR 41276, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e),
50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR
29642, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para. (c)(4) revised, 65 FR 14865,
Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092,
Aug. 16, 2000); paras. (a)(2) and (e) revised, 65 FR 54604, Sept. 8,
2000, effective Nov. 7, 2000; para. (a)(5) removed and para. (d)(1)
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.
(c)(4) revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para.
(c)(4) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005;
paras. (a)(1) and (b) revised, 72 FR 46716, Aug. 21, 2007
(implementation enjoined and never became effective); paras. (a)(1)
and (b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009
(to remove changes made by the final rules in 72 FR 46716 from the
CFR)]
§ 
1.105Requirements for information.
(a)
(1) In the course of examining or treating a matter
in a pending or abandoned application filed under 35
U.S.C. 111 or 371 (including a reissue application), in
a patent, or in a reexamination proceeding, the examiner
or other Office employee may require the submission,
from individuals identified under §  1.56(c ), or any
assignee, of such information as may be reasonably
necessary to properly examine or treat the matter, for
example:
(i)  Commercial databases : The existence of
any particularly relevant commercial database
known to any of the inventors that could be
searched for a particular aspect of the invention.
(ii)  Search : Whether a search of the prior art
was made, and if so, what was searched.
(iii)  Related information : A copy of any
non-patent literature, published application, or
patent (U.S. or foreign), by any of the inventors,
that relates to the claimed invention.
(iv)   Information used to draft application: A
copy of any non-patent literature, published
application, or patent (U.S. or foreign) that was
used to draft the application.
(v)   Information used in invention process: A
copy of any non-patent literature, published
application, or patent (U.S. or foreign) that was
used in the invention process, such as by designingaround or providing a solution to accomplish an
invention result.
(vi)   Improvements : Where the claimed
invention is an improvement, identification of
what is being improved.
(vii)   In Use : Identification of any use of the
claimed invention known to any of the inventors
at the time the application was filed
notwithstanding the date of the use.
(viii)   Technical information known to
applicant . Technical information known to
applicant concerning the related art, the disclosure,
the claimed subject matter, other factual
information pertinent to patentability, or
concerning the accuracy of the examiner’s stated
interpretation of such items.
(2) Where an assignee has asserted its right to
prosecute pursuant to § 3.71(a)  of this chapter, matters
such as paragraphs (a)(1)(i), (iii), and (vii) of this
section may also be applied to such assignee.
(3) Requirements for factual information known to
applicant may be presented in any appropriate manner,
for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific
questions seeking applicant’s factual knowledge;
or
(iii) Stipulations as to facts with which the
applicant may agree or disagree.
(4) Any reply to a requirement for information
pursuant to this section that states either that the
information required to be submitted is unknown to or
is not readily available to the party or parties from
which it was requested may be accepted as a complete
reply.
(b) The requirement for information of paragraph
(a)(1) of this section may be included in an Office action,
or sent separately.
(c) A reply, or a failure to reply, to a requirement for
information under this section will be governed by §§
1.135  and 1.136 .
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
para. (a)(3) revised and paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481,
Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added, 72 FR
46716, Aug. 21, 2007 (implementation enjoined and never became
effective); para. (a)(1)(ix) removed, 74 FR 52686, Oct. 14, 2009,
effective Oct. 14, 2009 (to remove changes made by the final rules in
72 FR 46716 from the CFR)]
§ 
1.106[Reserved]
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 [24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
para. (c) added, 47 FR 21752, May 19, 1982, effective July 1, 1982;
paras. (d) and (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985;
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]
§ 
1.107[Reserved]
[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 42790,
Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.108[Reserved]
[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.109[Reserved]
[Added 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004;
removed and reserved, 70 FR 54259, Sept. 14, 2005, effective Sept. 14,
2005]
§ 
1.110Inventorship and date of invention of the
subject matter of individual claims.
When more than one inventor is named in an application
or patent, the Patent and Trademark Office, when
necessary for purposes of an Office proceeding, may
require an applicant, patentee, or owner to identify the
inventive entity of the subject matter of each claim in the
application or patent. Where appropriate, the invention
dates of the subject matter of each claim and the
ownership of the subject matter on the date of invention
may be required of the applicant, patentee or owner. See 
also §§ 1.78 (c) and 1.130 .
[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; revised,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 72 FR
46716, Aug. 21, 2007 (implementation enjoined and never became
effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009
(to remove changes made by the final rules in 72 FR 46716 from the
CFR)]
ACTION BY APPLICANT AND FURTHER
CONSIDERATION
§ 
1.111Reply by applicant or patent owner to a
non-final Office action.
(a)
(1) If the Office action after the first examination
(§ 1.104 ) is adverse in any respect, the applicant or
patent owner, if he or she persists in his or her
application for a patent or reexamination proceeding,
must reply and request reconsideration or further
examination, with or without amendment. See §§  1.135
and 1.136  for time for reply to avoid abandonment.
(2)   Supplemental replies .(i) A reply that is supplemental to a reply that
is in compliance with §  1.111 (b) will not be
entered as a matter of right except as provided in
paragraph (a)(2)(ii) of this section. The Office
may enter a supplemental reply if the supplemental
reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner
suggestion(s);
(C) Placement of the application in
condition for allowance;
(D) Reply to an Office requirement
made after the first reply was filed;
(E) Correction of informalities ( e.g.,
typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the
supplemental reply is filed within the period
during which action by the Office is suspended
under §  1.103 (a) or (c).
(b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to
the Office action. The reply by the applicant or patent
owner must be reduced to a writing which distinctly and
specifically points out the supposed errors in the
examiner’s action and must reply to every ground of
objection and rejection in the prior Office action. The
reply must present arguments pointing out the specific
distinctions believed to render the claims, including any
newly presented claims, patentable over any applied
references. If the reply is with respect to an application,
a request may be made that objections or requirements as
to form not necessary to further consideration of the
claims be held in abeyance until allowable subject matter
is indicated. The applicant’s or patent owner’s reply must
appear throughout to be a  bona fide  attempt to advance
the application or the reexamination proceeding to final
action. A general allegation that the claims define a
patentable invention without specifically pointing out
how the language of the claims patentably distinguishes
them from the references does not comply with the
requirements of this section.
(c) In amending in reply to a rejection of claims in an
application or patent under reexamination, the applicant
or patent owner must clearly point out the patentable
novelty which he or she thinks the claims present in view
of the state of the art disclosed by the references cited or
the objections made. The applicant or patent owner must
also show how the amendments avoid such references or
objections.
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 [46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(2) revised, 68
FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(2) revised,
69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(2)(i)
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8. 2004]
§ 
1.112Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111  or §
1.945 ) to a non-final action and any comments by an inter
partes reexamination requester (§ 1.947 ), the application
or the patent under reexamination will be reconsidered
and again examined. The applicant, or in the case of a
reexamination proceeding the patent owner and any third
party requester, will be notified if claims are rejected,
objections or requirements made, or decisions favorable
to patentability are made, in the same manner as after the
first examination (§ 1.104 ). Applicant or patent owner
may reply to such Office action in the same manner
provided in § 1.111  or § 1.945 , with or without
amendment, unless such Office action indicates that it is
made final (§ 1.113 ) or an appeal (§ 41.31  of this title)
has been taken (§ 1.116 ), or in an inter partes
reexamination, that it is an action closing prosecution (§
1.949 ) or a right of appeal notice (§ 1.953 ).
[46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective
Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004]
§ 
1.113Final rejection or action.
(a) On the second or any subsequent examination or
consideration by the examiner the rejection or other action
may be made final, whereupon applicant’s, or for ex parte 
reexaminations filed under § 1.510 , patent owner’s reply
is limited to appeal in the case of rejection of any claim
(§ 41.31  of this title), or to amendment as specified in §
1.114  or § 1.116 . Petition may be taken to the Director in
the case of objections or requirements not involved in the
rejection of any claim (§ 1.181 ). Reply to a final rejection
or action must comply with § 1.114  or paragraph (c) of
this section. For final actions in an inter partes
reexamination filed under § 1.913 , see § 1.953 .
(b) In making such final rejection, the examiner shall
repeat or state all grounds of rejection then considered
applicable to the claims in the application, clearly stating
the reasons in support thereof.
(c) Reply to a final rejection or action must include
cancellation of, or appeal from the rejection of, each
rejected claim. If any claim stands allowed, the reply to
a final rejection or action must comply with any
requirements or objections as to form.[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised,
65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final,
65 FR 50092, Aug. 16, 2000); para. (a) revised, 65 FR 76756, Dec. 7,
2000, effective Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; para. (a) revised, 69 FR 49959, Aug. 12,
2004, effective Sept. 13, 2004]
§ 
1.114Request for continued examination.
(a) If prosecution in an application is closed, an
applicant may request continued examination of the
application by filing a submission and the fee set forth in
§ 1.17(e)  prior to the earliest of:
(1) Payment of the issue fee, unless a petition under
§ 1.313  is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court
of Appeals for the Federal Circuit under 35 U.S.C. 141 ,
or the commencement of a civil action under 35 U.S.C.
145 or 146, unless the appeal or civil action is
terminated.
(b) Prosecution in an application is closed as used in
this section means that the application is under appeal, or
that the last Office action is a final action (§ 1.113 ), a
notice of allowance (§ 1.311) , or an action that otherwise
closes prosecution in the application.
(c) A submission as used in this section includes, but
is not limited to, an information disclosure statement, an
amendment to the written description, claims, or drawings,
new arguments, or new evidence in support of
patentability. If reply to an Office action under 35 U.S.C.
132 is outstanding, the submission must meet the reply
requirements of § 1.111 .
(d) If an applicant timely files a submission and fee
set forth in § 1.17(e), the Office will withdraw the finality
of any Office action and the submission will be entered
and considered. If an applicant files a request for
continued examination under this section after appeal,
but prior to a decision on the appeal, it will be treated as
a request to withdraw the appeal and to reopen prosecution
of the application before the examiner. An appeal brief
(§ 41.37  of this title) or a reply brief (§ 41.41  of this title),
or related papers, will not be considered a submission
under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed
under 35 U .S.C. 111(a)  before June 8, 1995;
(3) An international application filed under 35
U.S.C. 363  before June 8, 1995;
(4) An application for a design patent; or
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 (5) A patent under reexamination.
[Added 65 FR 14865, Mar. 20, 2000, effective May 29, 2000;
revised 65 FR 50092, Aug. 16, 2000; para. (d) revised, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and (d) revised and
(f), (g), and (h) added, 72 FR 46716, Aug. 21, 2007 (implementation
enjoined and never became effective); paras. (a) and (d) revised and (f),
(g), and (h) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,
2009 (to remove changes made by the final rules in 72 FR 46716 from
the CFR)]
AMENDMENTS
§ 
1.115Preliminary amendments.
(a) A preliminary amendment is an amendment that
is received in the Office (§  1.6) on or before the mail date
of the first Office action under §  1.104 . The patent
application publication may include preliminary
amendments (§  1.215  (a)).
(1) A preliminary amendment that is present on the
filing date of an application is part of the original
disclosure of the application.
(2) A preliminary amendment filed after the filing
date of the application is not part of the original
disclosure of the application.
(b) A preliminary amendment in compliance with §
1.121  will be entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation
of all the claims without presenting any new or
substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved
if the preliminary amendment unduly interferes with
the preparation of a first Office action in an application.
Factors that will be considered in disapproving a
preliminary amendment include:
(i) The state of preparation of a first Office
action as of the date of receipt (§  1.6) of the
preliminary amendment by the Office; and
(ii) The nature of any changes to the
specification or claims that would result from
entry of the preliminary amendment.
(3) A preliminary amendment will not be
disapproved under (b)(2) of this section if it is filed no
later than:
(i) Three months from the filing date of an
application under §  1.53  (b);
(ii) The filing date of a continued prosecution
application under § 1.53 (d); or
(iii) Three months from the date the national
stage is entered as set forth in § 1.491  in an
international application.(4) The time periods specified in paragraph (b)(3)
of this section are not extendable.
[46 FR 29183, May 29, 1981; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; added, 65 FR 54604, Sept.
8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar.
25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004,
effective Sept. 21, 2004]
§ 
1.116Amendments and affidavits or other evidence
after final action and prior to appeal.
(a) An amendment after final action must comply with
§ 1.114  or this section.
(b) After a final rejection or other final action
(§ 1.113 ) in an application or in an ex parte  reexamination
filed under § 1.510 , or an action closing prosecution (§
1.949 ) in an inter partes  reexamination filed under §
1.913 , but before or on the same date of filing an appeal
(§ 41.31  or § 41.61  of this title):
(1) An amendment may be made canceling claims
or complying with any requirement of form expressly
set forth in a previous Office action;
(2) An amendment presenting rejected claims in
better form for consideration on appeal may be
admitted; or
(3) An amendment touching the merits of the
application or patent under reexamination may be
admitted upon a showing of good and sufficient reasons
why the amendment is necessary and was not earlier
presented.
(c) The admission of, or refusal to admit, any
amendment after a final rejection, a final action, an action
closing prosecution, or any related proceedings will not
operate to relieve the application or reexamination
proceeding from its condition as subject to appeal or to
save the application from abandonment under § 1.135 , or
the reexamination prosecution from termination under §
1.550 (d) or § 1.957 (b) or limitation of further prosecution
under § 1.957 (c).
(d)
(1) Notwithstanding the provisions of paragraph
(b) of this section, no amendment other than canceling
claims, where such cancellation does not affect the
scope of any other pending claim in the proceeding,
can be made in an inter partes reexamination
proceeding after the right of appeal notice under § 1.953
except as provided in § 1.981  or as permitted by §
41.77 (b)(1) of this title.
(2) Notwithstanding the provisions of
paragraph (b) of this section, an amendment made
after a final rejection or other final action (§ 1.113 )
in an ex parte  reexamination filed under § 1.510 ,
or an action closing prosecution (§ 1.949 ) in an
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 inter partes reexamination filed under § 1.913  may
not cancel claims where such cancellation affects
the scope of any other pending claim in the
reexamination proceeding except as provided in
§ 1.981  or as permitted by § 41.77 (b)(1) of this
title.
(e) An affidavit or other evidence submitted after
a final rejection or other final action (§ 1.113 ) in an
application or in an ex parte  reexamination filed under
§ 1.510 , or an action closing prosecution (§ 1.949 ) in
an inter partes reexamination filed under § 1.913  but
before or on the same date of filing an appeal (§ 41.31
or § 41.61  of this title), may be admitted upon a
showing of good and sufficient reasons why the
affidavit or other evidence is necessary and was not
earlier presented.
(f) Notwithstanding the provisions of paragraph (e)
of this section, no affidavit or other evidence can be
made in an inter partes reexamination proceeding after
the right of appeal notice under § 1.953  except as
provided in § 1.981  or as permitted by § 41.77  (b)(1)
of this title.
(g) After decision on appeal, amendments,
affidavits and other evidence can only be made as
provided in §§ 1.198  and 1.981 , or to carry into effect
a recommendation under § 41.50 (c) of this title.
[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981;
para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted
as final, 65 FR 50092, Aug. 16, 2000); paras. (b) and (d) revised, 65 FR
76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug.
12, 2004, effective Sept. 13, 2004]
§ 
1.117[Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; added, 72 FR 46716, Aug. 21, 2007 (implementation
enjoined and never became effective); removed, 74 FR 52686, Oct. 14,
2009, effective Oct. 14, 2009 (to remove changes made by the final
rules in 72 FR 46716 from the CFR)]
§ 
1.118[Reserved]
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; removed
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.119[Reserved]
[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.121Manner of making amendments in
applications.
(a) Amendments in applications, other than reissue
applications.  Amendments in applications, other than
reissue applications, are made by filing a paper, incompliance with § 1.52, directing that specified
amendments be made.
(b) Specification . Amendments to the specification,
other than the claims, computer listings (§ 1.96) and
sequence listings (§ 1.825 ), must be made by adding,
deleting or replacing a paragraph, by replacing a section,
or by a substitute specification, in the manner specified
in this section.
(1)  Amendment to delete, replace, or add a
paragraph. Amendments to the specification, including
amendment to a section heading or the title of
the invention which are considered for amendment
purposes to be an amendment of a paragraph, must be
made by submitting:
(i) An instruction, which unambiguously
identifies the location, to delete one or more
paragraphs of the specification, replace a
paragraph with one or more replacement
paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph
with markings to show all the changes relative to
the previous version of the paragraph. The text of
any added subject matter must be shown by
underlining the added text. The text of any deleted
matter must be shown by strike-through except
that double brackets placed before and after the
deleted characters may be used to show deletion
of five or fewer consecutive characters. The text
of any deleted subject matter must be shown by
being placed within double brackets if
strikethrough cannot be easily perceived;
(iii) The full text of any added paragraphs
without any underlining; and
(iv) The text of a paragraph to be deleted must
not be presented with strike-through or placed
within double brackets. The instruction to delete
may identify a paragraph by its paragraph number
or include a few words from the beginning, and
end, of the paragraph, if needed for paragraph
identification purposes.
(2) Amendment by replacement section . If the
sections of the specification contain section headings
as provided in § 1.77(b) , § 1.154(b) , or § 1.163(c) ,
amendments to the specification, other than the claims,
may be made by submitting:
(i) A reference to the section heading along
with an instruction, which unambiguously
identifies the location, to delete that section of the
specification and to replace such deleted section
with a replacement section; and;
(ii) A replacement section with markings to
show all changes relative to the previous version
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 of the section. The text of any added subject
matter must be shown by underlining the added
text. The text of any deleted matter must be shown
by strike-through except that double brackets
placed before and after the deleted characters may
be used to show deletion of five or fewer
consecutive characters. The text of any deleted
subject matter must be shown by being placed
within double brackets if strike-through cannot
be easily perceived.
(3)  Amendment by substitute specification . The
specification, other than the claims, may also be
amended by submitting:
(i) An instruction to replace the specification;
and
(ii) A substitute specification in compliance
with §§ 1.125(b)  and (c).
(4)  Reinstatement of previously deleted paragraph
or section . A previously deleted paragraph or section
may be reinstated only by a subsequent amendment
adding the previously deleted paragraph or section.
(5)  Presentation in subsequent amendment
document . Once a paragraph or section is amended in
a first amendment document, the paragraph or section
shall not be represented in a subsequent amendment
document unless it is amended again or a substitute
specification is provided.
(c)  Claims . Amendments to a claim must be made
by rewriting the entire claim with all changes ( e.g.,
additions and deletions) as indicated in this subsection,
except when the claim is being canceled. Each amendment
document that includes a change to an existing claim,
cancellation of an existing claim or addition of a new
claim, must include a complete listing of all claims ever
presented, including the text of all pending and withdrawn
claims, in the application. The claim listing, including the
text of the claims, in the amendment document will serve
to replace all prior versions of the claims, in the
application. In the claim listing, the status of every claim
must be indicated after its claim number by using one of
the following identifiers in a parenthetical expression:
(Original), (Currently amended), (Canceled),
(Withdrawn), (Previously presented), (New), and (Not
entered).
(1)  Claim listing. All of the claims presented in a
claim listing shall be presented in ascending numerical
order. Consecutive claims having the same status of
“canceled” or “not entered” may be aggregated into
one statement ( e.g., Claims 1–5 (canceled)). The claim
listing shall commence on a separate sheet of the
amendment document and the sheet(s) that contain thetext of any part of the claims shall not contain any other
part of the amendment.
(2)  When claim text with markings is required. All
claims being currently amended in an amendment paper
shall be presented in the claim listing, indicate a status
of “currently amended,” and be submitted with
markings to indicate the changes that have been made
relative to the immediate prior version of the claims.
The text of any added subject matter must be shown
by underlining the added text. The text of any deleted
matter must be shown by strike-through except that
double brackets placed before and after the deleted
characters may be used to show deletion of five or
fewer consecutive characters. The text of any deleted
subject matter must be shown by being placed within
double brackets if strike-through cannot be easily
perceived. Only claims having the status of “currently
amended,” or “withdrawn” if also being amended, shall
include markings. If a withdrawn claim is currently
amended, its status in the claim listing may be identified
as “withdrawn— currently amended.”
(3)  When claim text in clean version is required.
The text of all pending claims not being currently
amended shall be presented in the claim listing in clean
version,  i.e., without any markings in the presentation
of text. The presentation of a clean version of any claim
having the status of “original,” “withdrawn” or
“previously presented” will constitute an assertion that
it has not been changed relative to the immediate prior
version, except to omit markings that may have been
present in the immediate prior version of the claims of
the status of “withdrawn” or “previously presented.”
Any claim added by amendment must be indicated with
the status of “new” and presented in clean version,  i.e.,
without any underlining.
(4)  When claim text shall not be presented;
canceling a claim.
(i) No claim text shall be presented for any
claim in the claim listing with the status of
“canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected
by an instruction to cancel a particular claim
number. Identifying the status of a claim in the
claim listing as “canceled” will constitute an
instruction to cancel the claim.
(5)  Reinstatement of previously canceled claim. A
claim which was previously canceled may be reinstated
only by adding the claim as a “new” claim with a new
claim number.
(d)   Drawings : One or more application drawings
shall be amended in the following manner: Any changes
to an application drawing must be in compliance with §
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 1.84 and must be submitted on a replacement sheet of
drawings which shall be an attachment to the amendment
document and, in the top margin, labeled “Replacement
Sheet”. Any replacement sheet of drawings shall include
all of the figures appearing on the immediate prior version
of the sheet, even if only one figure is amended. Any new
sheet of drawings containing an additional figure must
be labeled in the top margin as “New Sheet”. All changes
to the drawings shall be explained, in detail, in either the
drawing amendment or remarks section of the amendment
paper.
(1) A marked-up copy of any amended drawing
figure, including annotations indicating the changes
made, may be included. The marked-up copy must be
clearly labeled as “Annotated Sheet” and must be
presented in the amendment or remarks section that
explains the change to the drawings.
(2) A marked-up copy of any amended drawing
figure, including annotations indicating the changes
made, must be provided when required by the examiner.
(e)  Disclosure consistency. The disclosure must be
amended, when required by the Office, to correct
inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the
remainder of the specification, and the drawings.
(f)  No new matter. No amendment may introduce
new matter into the disclosure of an application.
(g)  Exception for examiner’s amendments. Changes
to the specification, including the claims, of an application
made by the Office in an examiner’s amendment may be
made by specific instructions to insert or delete subject
matter set forth in the examiner’s amendment by
identifying the precise point in the specification or the
claim(s) where the insertion or deletion is to be made.
Compliance with paragraphs (b)(1), (b)(2), or (c) of this
section is not required.
(h)  Amendment sections. Each section of an
amendment document ( e.g., amendment to the claims,
amendment to the specification, replacement drawings,
and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications.  Any
amendment to the description and claims in reissue
applications must be made in accordance with § 1.173 .
(j) Amendments in reexamination proceedings.  Any
proposed amendment to the description and claims in
patents involved in reexamination proceedings must be
made in accordance with § 1.530 .
(k)  Amendments in provisional applications.
Amendments in provisional applications are not usually
made. If an amendment is made to a provisional
application, however, it must comply with the provisions
of this section. Any amendments to a provisionalapplication shall be placed in the provisional application
file but may not be entered.
[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981;
para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; para. (i) revised, 65 FR 76756,
Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 38611, June 30,
2003, effective July 30, 2003; para. (d) revised, 69 FR 56481, Sept. 21,
2004, effective Oct. 21, 2004]
§ 
1.122[Reserved]
[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12,
1984, effective Feb. 11, 1985; removed and reserved, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.123[Reserved]
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555,
Jan. 4, 1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20,
1993, effective Oct. 1, 1993; removed and reserved, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]
§ 
1.124[Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§ 
1.125Substitute specification.
(a) If the number or nature of the amendments or the
legibility of the application papers renders it difficult to
consider the application, or to arrange the papers for
printing or copying, the Office may require the entire
specification, including the claims, or any part thereof,
be rewritten.
(b) Subject to § 1.312 , a substitute specification,
excluding the claims, may be filed at any point up to
payment of the issue fee if it is accompanied by a
statement that the substitute specification includes no new
matter.
(c) A substitute specification submitted under this
section must be submitted with markings showing all the
changes relative to the immediate prior version of the
specification of record. The text of any added subject
matter must be shown by underlining the added text. The
text of any deleted matter must be shown by
strike-through except that double brackets placed before
and after the deleted characters may be used to show
deletion of five or fewer consecutive characters. The text
of any deleted subject matter must be shown by being
placed within double brackets if strike-through cannot be
easily perceived. An accompanying clean version (without
markings) must also be supplied. Numbering the
paragraphs of the specification of record is not considered
a change that must be shown pursuant to this paragraph.
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 (d) A substitute specification under this section is not
permitted in a reissue application or in a reexamination
proceeding.
[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(2) and
(c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras.
(b) and (c) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§ 
1.126Numbering of claims.
The original numbering of the claims must be preserved
throughout the prosecution. When claims are canceled
the remaining claims must not be renumbered. When
claims are added, they must be numbered by the applicant
consecutively beginning with the number next following
the highest numbered claim previously presented (whether
entered or not). When the application is ready for
allowance, the examiner, if necessary, will renumber the
claims consecutively in the order in which they appear or
in such order as may have been requested by applicant.
[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]
§ 
1.127Petition from refusal to admit amendment.
From the refusal of the primary examiner to admit an
amendment, in whole or in part, a petition will lie to the
Director under § 1.181 .
[Revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
TRANSITIONAL PROVISIONS
§ 
1.129Transitional procedures for limited
examination after final rejection and restriction
practice.
(a) An applicant in an application, other than for
reissue or a design patent, that has been pending for at
least two years as of June 8, 1995, taking into account
any reference made in such application to any earlier filed
application under 35 U .S.C. 120 , 121 and 365(c), is
entitled to have a first submission entered and considered
on the merits after final rejection under the following
circumstances: The Office will consider such a
submission, if the first submission and the fee set forth
in § 1.17 (r) are filed prior to the filing of an appeal brief
and prior to abandonment of the application. The finality
of the final rejection is automatically withdrawn upon the
timely filing of the submission and payment of the fee set
forth in § 1.17 (r). If a subsequent final rejection is made
in the application, applicant is entitled to have a second
submission entered and considered on the merits after the
subsequent final rejection under the following
circumstances: The Office will consider such a
submission, if the second submission and a second feeset forth in § 1.17 (r) are filed prior to the filing of an
appeal brief and prior to abandonment of the application.
The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the
submission and payment of the second fee set forth in
§ 1.17 (r). Any submission filed after a final rejection made
in an application subsequent to the fee set forth in §
1.17(r) having been twice paid will be treated as set forth
in § 1.116 . A submission as used in this paragraph
includes, but is not limited to, an information disclosure
statement, an amendment to the written description, claims
or drawings and a new substantive argument or new
evidence in support of patentability.
(b)
(1) In an application, other than for reissue or a
design patent, that has been pending for at least three
years as of June 8, 1995, taking into account any
reference made in the application to any earlier filed
application under 35 U .S.C. 120 , 121 and 365(c), no
requirement for restriction or for the filing of divisional
applications shall be made or maintained in the
application after June 8, 1995, except where:
(i) The requirement was first made in the
application or any earlier filed application under
35 U .S.C. 120 , 121 and 365(c) prior to April 8,
1995;
(ii) The examiner has not made a requirement
for restriction in the present or parent application
prior to April 8, 1995, due to actions by the
applicant; or
(iii) The required fee for examination of each
additional invention was not paid.
(2) If the application contains more than one
independent and distinct invention and a requirement
for restriction or for the filing of divisional applications
cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a
time period to:
(i) Elect the invention or inventions to be
searched and examined, if no election has been
made prior to the notice, and pay the fee set forth
in 1.17(s) for each independent and distinct
invention claimed in the application in excess of
one which applicant elects;
(ii) Confirm an election made prior to the
notice and pay the fee set forth in § 1.17 (s) for
each independent and distinct invention claimed
in the application in addition to the one invention
which applicant previously elected; or
(iii) File a petition under this section traversing
the requirement. If the required petition is filed in
a timely manner, the original time period for
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 electing and paying the fee set forth in § 1.17 (s)
will be deferred and any decision on the petition
affirming or modifying the requirement will set a
new time period to elect the invention or
inventions to be searched and examined and to
pay the fee set forth in § 1.17 (s) for each
independent and distinct invention claimed in the
application in excess of one which applicant
elects.
(3) The additional inventions for which the required
fee has not been paid will be withdrawn from
consideration under § 1.142 (b). An applicant who
desires examination of an invention so withdrawn from
consideration can file a divisional application under 35
U.S.C. 121 .
(c) The provisions of this section shall not be
applicable to any application filed after June 8, 1995.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]
AFFIDA VITS OVERCOMING REJECTIONS
§ 
1.130Affidavit or declaration to disqualify commonly
owned patent or published application as prior
art.
(a) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 103 on a U.S.
patent or U.S. patent application publication which is not
prior art under 35 U.S.C. 102(b ), and the inventions
defined by the claims in the application or patent under
reexamination and by the claims in the patent or published
application are not identical but are not patentably distinct,
and the inventions are owned by the same party, the
applicant or owner of the patent under reexamination may
disqualify the patent or patent application publication as
prior art. The patent or patent application publication can
be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with §
1.321(c) ; and
(2) An oath or declaration stating that the
application or patent under reexamination and patent
or published application are currently owned by the
same party, and that the inventor named in the
application or patent under reexamination is the prior
inventor under 35 U.S.C. 104.
(b) [Reserved]
[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;
heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective
Nov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11,
2005, effective Dec. 10, 2004]
§ 
1.131Affidavit or declaration of prior invention.(a) When any claim of an application or a patent under
reexamination is rejected, the inventor of the subject
matter of the rejected claim, the owner of the patent under
reexamination, or the party qualified under §§ 1.42, 1.43,
or 1.47, may submit an appropriate oath or declaration to
establish invention of the subject matter of the rejected
claim prior to the effective date of the reference or activity
on which the rejection is based. The effective date of a
U.S. patent, U.S. patent application publication, or
international application publication under PCT Article
21(2)  is the earlier of its publication date or date that it is
effective as a reference under 35 U.S.C. 102(e) . Prior
invention may not be established under this section in any
country other than the United States, a NAFTA country,
or a WTO member country. Prior invention may not be
established under this section before December 8, 1993,
in a NAFTA country other than the United States, or
before January 1, 1996, in a WTO member country other
than a NAFTA country. Prior invention may not be
established under this section if either:
(1) The rejection is based upon a U.S. patent or
U.S. patent application publication of a pending or
patented application to another or others which claims
the same patentable invention as defined in § 41.203 (a)
of this title, in which case an applicant may suggest an
interference pursuant to § 41.202 (a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts shall be such, in character
and weight, as to establish reduction to practice prior to
the effective date of the reference, or conception of the
invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the
application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of
the affidavit or declaration or their absence must be
satisfactorily explained.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a),
50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar.
21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para.
(a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995,
effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996,
effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604,
Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024,
Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR
49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69
FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 
1.132Affidavits or declarations traversing rejections
or objections.
When any claim of an application or a patent under
reexamination is rejected or objected to, any evidence
submitted to traverse the rejection or objection on a basis
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 not otherwise provided for must be by way of an oath or
declaration under this section.
[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR
54604, Sept. 8, 2000, effective Sept. 8, 2000; revised 65 FR 57024,
Sept. 20, 2000, effective Nov. 29, 2000]
INTERVIEWS
§ 
1.133Interviews.
(a)
(1) Interviews with examiners concerning
applications and other matters pending before the
Office must be conducted on Office premises and
within Office hours, as the respective examiners may
designate. Interviews will not be permitted at any other
time or place without the authority of the Director.
(2) An interview for the discussion of the
patentability of a pending application will not occur
before the first Office action, unless the application is
a continuing or substitute application or the examiner
determines that such an interview would advance
prosecution of the application.
(3) The examiner may require that an interview be
scheduled in advance.
(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 reply to Office actions as specified in §§
1.111  and 1.135 .
[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov.
7, 2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; para. (a)(2) revised, 70 FR 56119, Sept. 26, 2005, effective
Nov. 25, 2005]
TIME FOR REPLY BY APPLICANT;
ABANDONMENT OF APPLICATION
§ 
1.134Time period for reply to an Office action.
An Office action will notify the applicant of any
non-statutory or shortened statutory time period set for
reply to an Office action. Unless the applicant is notified
in writing that a reply is required in less than six months,
a maximum period of six months is allowed.
[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]§ 
1.135Abandonment for failure to reply within time
period.
(a) If an applicant of a patent application fails to reply
within the time period provided under § 1.134  and
§ 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 reply as the
condition of the application may require. The admission
of, or refusal to admit, any amendment after final rejection
or any amendment not responsive to the last action, or
any related proceedings, will not operate to save the
application from abandonment.
(c) When reply by the applicant is a bona fide  attempt
to advance the application to final action, and is
substantially a complete reply to the non-final Office
action, but consideration of some matter or compliance
with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under
§ 1.134  to supply the omission.
[Paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982, effective
Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr.
1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.136Extensions of time.
(a)
(1) If an applicant is required to reply within a
nonstatutory or shortened statutory time period,
applicant may extend the time period for reply up to
the earlier of the expiration of any maximum period
set by statute or five months after the time period set
for reply, if a petition for an extension of time and the
fee set in § 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office
action;
(ii) The reply is a reply brief submitted
pursuant to § 41.41  of this title;
(iii) The reply is a request for an oral hearing
submitted pursuant to § 41.47 (a) of this title;
(iv) The reply is to a decision by the Board of
Patent Appeals and Interferences pursuant to §
1.304  or to § 41.50  or § 41.52  of this title; or
(v) The application is involved in a contested
case (§ 41.101 (a) of this title).
(2) The date on which the petition and the fee have
been filed is the date for purposes of determining the
period of extension and the corresponding amount of
the fee. The expiration of the time period is determined
by the amount of the fee paid. A reply must be filed
prior to the expiration of the period of extension to
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 avoid abandonment of the application (§ 1.135 ), but in
no situation may an applicant reply later than the
maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section
when the provisions of this paragraph are available.
See § 1.304  for extensions of time to appeal to the U.S.
Court of Appeals for the Federal Circuit or to
commence a civil action; § 1.550 (c) for extensions of
time in ex parte  reexamination proceedings, § 1.956
for extensions of time in inter partes reexamination
proceedings; and §§ 41.4(a) and 41.121 (a)(3) of this
title for extensions of time in contested cases before
the Board of Patent Appeals and Interferences.
(3) A written request may be submitted in an
application that is an authorization to treat any
concurrent or future reply, requiring a petition for an
extension of time under this paragraph for its timely
submission, as incorporating a petition for extension
of time for the appropriate length of time. An
authorization to charge all required fees, fees under §
1.17, or all required extension of time fees will be
treated as a constructive petition for an extension of
time in any concurrent or future reply requiring a
petition for an extension of time under this paragraph
for its timely submission. Submission of the fee set
forth in § 1.17 (a) will also be treated as a constructive
petition for an extension of time in any concurrent reply
requiring a petition for an extension of time under this
paragraph for its timely submission.
(b) When a reply cannot be filed within the time
period set for such reply and the provisions of paragraph
(a) of this section are not available, the period for reply
will be extended only for sufficient cause and for a
reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before
the day on which such reply is due, but the mere filing of
such a request will not affect any extension under this
paragraph. In no situation can any extension carry the
date on which reply is due beyond the maximum time
period set by statute. See § 1.304  for extensions of time
to appeal to the U.S. Court of Appeals for the Federal
Circuit or to commence a civil action; § 1.550(c)  for
extensions of time in ex parte  reexamination proceedings;
§ 1.956  for extensions of time in inter partes 
reexamination proceedings; and §§ 41.4(a) and
41.121 (a)(3) of this title for extensions of time in
contested cases before the Board of Patent Appeals and
Interferences. Any request under this section must be
accompanied by the petition fee set forth in § 1.17(g).
(c) If an applicant is notified in a “Notice of
Allowability” that an application is otherwise in condition
for allowance, the following time periods are not
extendable if set in the “Notice of Allowability” or in anOffice action having a mail date on or after the mail date
of the “Notice of Allowability”:
(1) The period for submitting an oath or declaration
in compliance with § 1.63;
(2) The period for submitting formal drawings set
under § 1.85(c) ; and
(3) The period for making a deposit set under §
1.809(c) .
[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR
555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20,
1989; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para.
(c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras.
(a)(2) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5,
2001; para. (c) revised, 66 FR 21090, Apr. 27, 2001, effective May 29,
2001; paras. (a)(1), (a)(2), and (b) revised, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004,
effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005,
effective Dec. 8, 2004; para. (a)(1) revised, 72 FR 46716, Aug. 21, 2007
(implementation enjoined and never became effective); para. (a)(1)
revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove
changes made by the final rules in 72 FR 46716 from the CFR)]
§ 
1.137Revival of abandoned application, terminated
or limited reexamination prosecution, or lapsed
patent.
(a) Unavoidable . If the delay in reply by applicant or
patent owner was unavoidable, a petition may be filed
pursuant to this paragraph to revive an abandoned
application, a reexamination prosecution terminated under
§§ 1.550 (d) or 1.957 (b) or limited under § 1.957 (c), or a
lapsed patent. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The reply required to the outstanding Office
action or notice, unless previously filed;
(2) The petition fee as set forth in § 1.17(l) ;
(3) A showing to the satisfaction of the Director
that the entire delay in filing the required reply from
the due date for the reply until the filing of a grantable
petition pursuant to this paragraph was unavoidable;
and
(4) Any terminal disclaimer (and fee as set forth in
§ 1.20(d))  required pursuant to paragraph (d) of this
section.
(b) Unintentional . If the delay in reply by applicant
or patent owner was unintentional, a petition may be filed
pursuant to this paragraph to revive an abandoned
application, a reexamination prosecution terminated under
§§ 1.550 (d) or 1.957 (b) or limited under § 1.957 (c), or a
lapsed patent. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The reply required to the outstanding Office
action or notice, unless previously filed;
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 (2) The petition fee as set forth in § 1.17(m) ;
(3) A statement that the entire delay in filing the
required reply from the due date for the reply until the
filing of a grantable petition pursuant to this paragraph
was unintentional. The Director may require additional
information where there is a question whether the delay
was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in
§ 1.20(d))  required pursuant to paragraph (d) of this
section.
(c) Reply . In a nonprovisional application abandoned
for failure to prosecute, the required reply may be met by
the filing of a continuing application. In a nonprovisional
utility or plant application filed on or after June 8, 1995,
and abandoned for failure to prosecute, the required reply
may also be met by the filing of a request for continued
examination in compliance with § 1.114 . In an application
or patent, abandoned or lapsed for failure to pay the issue
fee or any portion thereof, the required reply must include
payment of the issue fee or any outstanding balance. In
an application, abandoned for failure to pay the
publication fee, the required reply must include payment
of the publication fee.
(d)  Terminal disclaimer .
(1) Any petition to revive pursuant to this section
in a design application must be accompanied by a
terminal disclaimer and fee as set forth in §  1.321
dedicating to the public a terminal part of the term of
any patent granted thereon equivalent to the period of
abandonment of the application. Any petition to revive
pursuant to this section in either a utility or plant
application filed before June 8, 1995, must be
accompanied by a terminal disclaimer and fee as set
forth in § 1.321  dedicating to the public a terminal part
of the term of any patent granted thereon equivalent to
the lesser of:
(i) The period of abandonment of the
application; or
(ii) The period extending beyond twenty years
from the date on which the application for the
patent was filed in the United States or, if the
application contains a specific reference to an
earlier filed application(s) under 35 U.S.C. 120,
121, or 365(c) , from the date on which the earliest
such application was filed.
(2) Any terminal disclaimer pursuant to paragraph
(d)(1) of this section must also apply to any patent
granted on a continuing utility or plant application filed
before June 8, 1995, or a continuing design application,
that contains a specific reference under 35 U.S.C. 120,
121, or 365(c)  to the application for which revival is
sought.(3) The provisions of paragraph (d)(1) of this
section do not apply to applications for which revival
is sought solely for purposes of copendency with a
utility or plant application filed on or after June 8, 1995,
to lapsed patents, to reissue applications, or to
reexamination proceedings.
(e)  Request for reconsideration . Any request for
reconsideration or review of a decision refusing to revive
an abandoned application, a terminated or limited
reexamination prosecution, or lapsed patent upon petition
filed pursuant to this section, to be considered timely,
must be filed within two months of the decision refusing
to revive or within such time as set in the decision. Unless
a decision indicates otherwise, this time period may be
extended under:
(1) The provisions of § 1.136  for an abandoned
application or lapsed patent;
(2) The provisions of § 1.550 (c) for a terminated
ex parte  reexamination prosecution, where the ex parte 
reexamination was filed under § 1.510 ; or
(3) The provisions of § 1.956  for a terminated inter
partes  reexamination prosecution or an inter partes 
reexamination limited as to further prosecution, where
the inter partes  reexamination was filed under § 1.913 .
(f)  Abandonment for failure to notify the Office of a
foreign filing : A nonprovisional application abandoned
pursuant to 35 U.S.C. 122(b)(2)(B)(iii)  for failure to
timely notify the Office of the filing of an application in
a foreign country or under a multinational treaty that
requires publication of applications eighteen months after
filing, may be revived only pursuant to paragraph (b) of
this section. The reply requirement of paragraph (c) of
this section is met by the notification of such filing in a
foreign country or under a multinational treaty, but the
filing of a petition under this section will not operate to
stay any period for reply that may be running against the
application.
(g) Provisional applications:  A provisional
application, abandoned for failure to timely respond to
an Office requirement, may be revived pursuant to this
section. Subject to the provisions of 35 U.S.C.  119(e)(3)
and § 1.7(b) , a provisional application will not be regarded
as pending after twelve months from its filing date under
any circumstances.
[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; para. (b)
48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (a) - (c),
paras. (d) & (e) added, 58 FR 44277, Aug. 20,1993, effective Sept. 20,
1993; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8,
1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para.
(c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised,
65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (d)(3)
revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; heading,
paras. (a) introductory text, (b) introductory text, and (e) revised, 72 FR
18892, Apr. 16, 2007, effective May 16, 2007]
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 § 
1.138Express abandonment.
(a) An application may be expressly abandoned by
filing a written declaration of abandonment identifying
the application in the United States Patent and Trademark
Office. Express abandonment of the application may not
be recognized by the Office before the date of issue or
publication unless it is actually received by appropriate
officials in time to act.
(b) A written declaration of abandonment must be
signed by a party authorized under § 1.33(b)(1) , (b)(3),
or (b)(4) to sign a paper in the application, except as
otherwise provided in this paragraph. A registered attorney
or agent, not of record, who acts in a representative
capacity under the provisions of §  1.34(a)  when filing a
continuing application, may expressly abandon the prior
application as of the filing date granted to the continuing
application.
(c) An applicant seeking to abandon an application to
avoid publication of the application (see § 1.211 (a)(1))
must submit a declaration of express abandonment by
way of a petition under this paragraph including the fee
set forth in § 1.17(h) in sufficient time to permit the
appropriate officials to recognize the abandonment and
remove the application from the publication process.
Applicants should expect that the petition will not be
granted and the application will be published in regular
course unless such declaration of express abandonment
and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
(d) An applicant seeking to abandon an application
filed under 35 U.S.C. 111(a) and § 1.53(b) on or after
December 8, 2004, to obtain a refund of the search fee
and excess claims fee paid in the application, must submit
a declaration of express abandonment by way of a petition
under this paragraph before an examination has been made
of the application. The date indicated on any certificate
of mailing or transmission under § 1.8 will not be taken
into account in determining whether a petition under §
1.138 (d) was filed before an examination has been made
of the application. If a request for refund of the search fee
and excess claims fee paid in the application is not filed
with the declaration of express abandonment under this
paragraph or within two months from the date on which
the declaration of express abandonment under this
paragraph was filed, the Office may retain the entire
search fee and excess claims fee paid in the application.
This two-month period is not extendable. If a petition and
declaration of express abandonment under this paragraph
are not filed before an examination has been made of the
application, the Office will not refund any part of the
search fee and excess claims fee paid in the application
except as provided in § 1.26.[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c)
added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)
revised and para. (d) added, 71 FR 12284, Mar. 10, 2006, effective Mar.
10, 2006]
§ 
1.139[Reserved]
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997]
JOINDER OF INVENTIONS IN ONE
APPLICATION; RESTRICTION
§ 
1.141Different inventions in one national application.
(a) Two or more independent and distinct inventions
may not be claimed in one national application, except
that more than one species of an invention, not to exceed
a reasonable number, may be specifically claimed in
different claims in one national application, provided the
application also includes an allowable claim generic to
all the claimed species and all the claims to species in
excess of one are written in dependent form ( § 1.75 ) or
otherwise include all the limitations of the generic claim.
(b) Where claims to all three categories, product,
process of making, and process of use, are included in a
national application, a three way requirement for
restriction can only be made where the process of making
is distinct from the product. If the process of making and
the product are not distinct, the process of using may be
joined with the claims directed to the product and the
process of making the product even though a showing of
distinctness between the product and process of using the
product can be made.
[52 FR 20046, May 28, 1987, effective July 1, 1987]
§ 
1.142Requirement for restriction.
(a) If two or more independent and distinct inventions
are claimed in a single application, the examiner in an
Office action will require the applicant in the reply to that
action to elect an invention to which the claims will be
restricted, this official action being called a requirement
for restriction (also known as a requirement for division).
Such requirement will normally be made before any action
on the merits; however, it may be made at any time before
final action.
(b) Claims to the invention or inventions not elected,
if not canceled, are nevertheless withdrawn from further
consideration by the examiner by the election, subject
however to reinstatement in the event the requirement for
restriction is withdrawn or overruled.
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 [Para (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997; para. (a) revised and (c) added, 72 FR 46716, Aug. 21, 2007
(implementation enjoined and never became effective); para. (a) revised
and (c) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009
(to remove changes made by the final rules in 72 FR 46716 from the
CFR)]
§ 
1.143Reconsideration of requirement.
If the applicant disagrees with the requirement for
restriction, he may request reconsideration and withdrawal
or modification of the requirement, giving the reasons
therefor. (See § 1.111 ). In requesting reconsideration the
applicant must indicate a provisional election of one
invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final.
The requirement for restriction will be reconsidered on
such a request. If the requirement is repeated and made
final, the examiner will at the same time act on the claims
to the invention elected.
§ 
1.144Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in
addition to making any reply due on the remainder of the
action, may petition the Director to review the
requirement. Petition may be deferred until after final
action on or allowance of claims to the invention elected,
but must be filed not later than appeal. A petition will not
be considered if reconsideration of the requirement was
not requested (see § 1.181 ).
[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.145Subsequent presentation of claims for different
invention.
If, after an office action on an application, the applicant
presents claims directed to an invention distinct from and
independent of the invention previously claimed, the
applicant will be required to restrict the claims to the
invention previously claimed if the amendment is entered,
subject to reconsideration and review as provided in §§
1.143  and 1.144 .
[Revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined
and never became effective); revised, 74 FR 52686, Oct. 14, 2009,
effective Oct. 14, 2009 (to remove changes made by the final rules in
72 FR 46716 from the CFR)]
§ 
1.146Election of species.
In the first action on an application containing a generic
claim to a generic invention (genus) and claims to more
than one patentably distinct species embraced thereby,
the examiner may require the applicant in the reply to thataction to elect a species of his or her invention to which
his or her claim will be restricted if no claim to the genus
is found to be allowable. However, if such application
contains claims directed to more than a reasonable number
of species, the examiner may require restriction of the
claims to not more than a reasonable number of species
before taking further action in the application.
[43 FR 20465, May 11, 1978; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]
DESIGN PATENTS
§ 
1.151Rules applicable.
The rules relating to applications for patents for other
inventions or discoveries are also applicable to
applications for patents for designs except as otherwise
provided.
§ 
1.152Design drawings.
The design must be represented by a drawing that
complies with the requirements of § 1.84 and must contain
a sufficient number of views to constitute a complete
disclosure of the appearance of the design. Appropriate
and adequate surface shading should be used to show the
character or contour of the surfaces represented. Solid
black surface shading is not permitted except when used
to represent the color black as well as color contrast.
Broken lines may be used to show visible environmental
structure, but may not be used to show hidden planes and
surfaces that 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. Photographs and ink drawings are
not permitted to be combined as formal drawings in one
application. Photographs submitted in lieu of ink drawings
in design patent applications must not disclose
environmental structure but must be limited to the design
claimed for the article.
[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended,
58 FR 38719, July 20, 1993, effective Oct. 1, 1993; revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604,
Sept. 8, 2000, effective Sept. 8, 2000]
§ 
1.153Title, description and claim, oath or
declaration.
(a) The title of the design must designate the particular
article. No description, other than a reference to the
drawing, is ordinarily required. The claim shall be in
formal terms to the ornamental design for the article
(specifying name) as shown, or as shown and described.
More than one claim is neither required nor permitted.
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 (b) The oath or declaration required of the applicant
must comply with § 1.63 .
[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;
para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]
§ 
1.154Arrangement of application elements in a
design application.
(a) The elements of the design application, if
applicable, should appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) Executed oath or declaration (see §  1.153(b) ).
(b) The specification should include the following
sections in order:
(1) Preamble, stating the name of the applicant, title
of the design, and a brief description of the nature and
intended use of the article in which the design is
embodied.
(2) Cross-reference to related applications (unless
included in the application data sheet).
(3) Statement regarding federally sponsored
research or development.
(4) Description of the figure or figures of the
drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in
paragraph (b) of this section, if applicable, should be
preceded by a section heading in uppercase letters without
underlining or bold type.
[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20,
1983, effective date Feb. 27, 1983; revised, 61 FR 42790, Aug. 19,
1996, effective Sept. 23, 1996; para. (a)(3) revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000]
§ 
1.155Expedited examination of design applications.
(a) The applicant may request that the Office expedite
the examination of a design application. To qualify for
expedited examination:
(1) The application must include drawings in
compliance with § 1.84;
(2) The applicant must have conducted a
preexamination search; and(3) The applicant must file a request for expedited
examination including:
(i) The fee set forth in § 1.17(k) ; and
(ii) A statement that a preexamination search
was conducted. The statement must also indicate
the field of search and include an information
disclosure statement in compliance with § 1.98.
(b) The Office will not examine an application that is
not in condition for examination ( e.g., missing basic filing
fee) even if the applicant files a request for expedited
examination under this section.
[47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,
2000]
PLANT PATENTS
§ 
1.161Rules applicable.
The rules relating to applications for patent for other
inventions or discoveries are also applicable to
applications for patents for plants except as otherwise
provided.
§ 
1.162Applicant, oath or declaration.
The applicant for a plant patent must be the person who
has invented or discovered and asexually reproduced the
new and distinct variety of plant for which a patent is
sought (or as provided in §§ 1.42 , 1.43, and 1.47). The
oath or declaration required of the applicant, in addition
to the averments required by § 1.63 , must state that he or
she has asexually reproduced the plant. Where the plant
is a newly found plant the oath or declaration must also
state that it was found in a cultivated area.
[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]
§ 
1.163Specification and arrangement of application
elements in a plant application.
(a) The specification must contain as full and complete
a disclosure as possible of the plant and the characteristics
thereof that distinguish the same over related known
varieties, and its antecedents, and must particularly point
out where and in what manner the variety of plant has
been asexually reproduced. For a newly found plant, the
specification must particularly point out the location and
character of the area where the plant was discovered.
(b) The elements of the plant application, if applicable,
should appear in the following order:
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 (1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) Executed oath or declaration (§ 1.162 ).
(c) The specification should include the following
sections in order:
(1) Title of the invention, which may include an
introductory portion stating the name, citizenship, and
residence of the applicant.
(2) Cross-reference to related applications (unless
included in the application data sheet).
(3) Statement regarding federally sponsored
research or development.
(4) Latin name of the genus and species of the plant
claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined
in paragraph (c) of this section, if applicable, should be
preceded by a section heading in upper case, without
underlining or bold type.
[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20,
1983, effective Feb. 27, 1983; paras. (c) and (d) added, 61 FR 42790,
Aug. 19, 1996, effective Sept. 23, 1996; para. (b) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,
2000, effective Nov. 7, 2000]
§ 
1.164Claim.
The claim shall be in formal terms to the new and distinct
variety of the specified plant as described and illustrated,
and may also recite the principal distinguishing
characteristics. More than one claim is not permitted.
§ 
1.165Plant Drawings.
(a) Plant patent drawings should be artistically and
competently executed and must comply with the
requirements of § 1.84 . View numbers and reference
characters need not be employed unless required by theexaminer. The drawing must disclose all the distinctive
characteristics of the plant capable of visual
representation.
(b) The drawings may be in color. The drawing must
be in color if color is a distinguishing characteristic of the
new variety. Two copies of color drawings or photographs
must be submitted.
[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277, Sept. 17,
1982, effective Oct. 1, 1982; paras. (a) and (b) amended, 58 FR 38719,
July 20, 1993, effective Oct. 1, 1993; para. (b) revised, 65 FR 57024,
Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 69 FR 56481,
Sept. 21, 2004, effective Oct. 21, 2004]
§ 
1.166Specimens.
The applicant may be required to furnish specimens of
the plant, or its flower or fruit, in a quantity and at a time
in its stage of growth as may be designated, for study and
inspection. Such specimens, properly packed, must be
forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such
specimens, plants must be made available for official
inspection where grown.
§ 
1.167Examination.
Applications may be submitted by the Patent and
Trademark Office to the Department of Agriculture for
study and report.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
REISSUES
§ 
1.171Application for reissue.
An application for reissue must contain the same parts
required for an application for an original patent,
complying with all the rules relating thereto except as
otherwise provided, and in addition, must comply with
the requirements of the rules relating to reissue
applications.
[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised,
54 FR 6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr.
17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.172Applicants, assignees.
(a) A reissue oath must be signed and sworn to or
declaration made by the inventor or inventors except as
otherwise provided (see §§ 1.42 , 1.43, 1.47), and must be
accompanied by the written consent of all assignees, if
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 any, owning an undivided interest in the patent, but a
reissue oath may be made and sworn to or declaration
made by the assignee of the entire interest if the
application does not seek to enlarge the scope of the
claims of the original patent. All assignees consenting to
the reissue must establish their ownership interest in the
patent by filing in the reissue application a submission in
accordance with the provisions of § 3.73 (b) of this
chapter.
(b) A reissue will be granted to the original patentee,
his legal representatives or assigns as the interest may
appear.
[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20,
1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]
§ 
1.173Reissue specification, drawings, and
amendments.
(a)  Contents of a reissue application . An application
for reissue must contain the entire specification, including
the claims, and the drawings of the patent. No new matter
shall be introduced into the application. 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.
(1) Specification, including claims.  The entire
specification, including the claims, of the patent for
which reissue is requested must be furnished in the
form of a copy of the printed patent, in double column
format, each page on only one side of a single sheet of
paper. If an amendment of the reissue application is to
be included, it must be made pursuant to paragraph (b)
of this section. The formal requirements for papers
making up the reissue application other than those set
forth in this section are set out in § 1.52. Additionally,
a copy of any disclaimer (§ 1.321 ), certificate of
correction (§§ 1.322  through 1.324 ), or reexamination
certificate (§ 1.570 ) issued in the patent must be
included. (See also § 1.178 ).
(2) Drawings . Applicant must submit a clean copy
of each drawing sheet of the printed patent at the time
the reissue application is filed. If such copy complies
with § 1.84, no further drawings will be required.
Where a drawing of the reissue application is to include
any changes relative to the patent being reissued, the
changes to the drawing must be made in accordance
with paragraph (b)(3) of this section. The Office will
not transfer the drawings from the patent file to the
reissue application.
(b)  Making amendments in a reissue application. An
amendment in a reissue application is made either by
physically incorporating the changes into the specification
when the application is filed, or by a separate amendment
paper. If amendment is made by incorporation, markingspursuant to paragraph (d) of this section must be used. If
amendment is made by an amendment paper, the paper
must direct that specified changes be made, as follows:
(1) Specification other than the claims . Changes
to the specification, other than to the claims, must be
made by submission of the entire text of an added or
rewritten paragraph, including markings pursuant to
paragraph (d) of this section, except that an entire
paragraph may be deleted by a statement deleting the
paragraph without presentation of the text of the
paragraph. The precise point in the specification must
be identified where any added or rewritten paragraph
is located. This paragraph applies whether the
amendment is submitted on paper or compact disc (see
§§ 1.52(e)(1)  and 1.821(c) , but not for discs submitted
under § 1.821(e)).
(2)  Claims. An amendment paper must include the
entire text of each claim being changed by such
amendment paper and of each claim being added by
such amendment paper. For any claim changed by the
amendment paper, a parenthetical expression
“amended,” “twice amended,”  etc., should follow the
claim number. Each changed patent claim and each
added claim must include markings pursuant to
paragraph (d) of this section, except that a patent claim
or added claim should be canceled by a statement
canceling the claim without presentation of the text of
the claim.
(3) Drawings.  One or more patent drawings shall
be amended in the following manner: Any changes to
a patent drawing must be submitted as a replacement
sheet of drawings which shall be an attachment to the
amendment document. Any replacement sheet of
drawings must be in compliance with § 1.84 and shall
include all of the figures appearing on the original
version of the sheet, even if only one figure is amended.
Amended figures must be identified as “Amended,”
and any added figure must be identified as “New.” In
the event that a figure is canceled, the figure must be
surrounded by brackets and identified as “Canceled.”
All changes to the drawing(s) shall be explained, in
detail, beginning on a separate sheet accompanying the
papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing
figure, including annotations indicating the
changes made, may be included. The marked-up
copy must be clearly labeled as “Annotated
Marked-up Drawings” and must be presented in
the amendment or remarks section that explains
the change to the drawings.
(ii) A marked-up copy of any amended
drawing figure, including annotations indicating
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 the changes made, must be provided when
required by the examiner.
(c)  Status of claims and support for claim changes .
Whenever there is an amendment to the claims pursuant
to paragraph (b) of this section, there must also be
supplied, on pages separate from the pages containing the
changes, the status ( i.e., pending or canceled), as of the
date of the amendment, of all patent claims and of all
added claims, and an explanation of the support in the
disclosure of the patent for the changes made to the
claims.
(d)  Changes shown by markings . Any changes
relative to the patent being reissued which are made to
the specification, including the claims, upon filing, or by
an amendment paper in the reissue application, must
include the following markings:
(1) The matter to be omitted by reissue must be
enclosed in brackets; and
(2) The matter to be added by reissue must be
underlined, except for amendments submitted on
compact discs (§§ 1.96 and 1.821(c) ). Matter added by
reissue on compact discs must be preceded with “<U>”
and end with “</U>” to properly identify the material
being added.
(e)  Numbering of patent claims preserved.  Patent
claims may not be renumbered. The numbering of any
claim added in the reissue application must follow the
number of the highest numbered patent claim.
(f)  Amendment of disclosure may be required . The
disclosure must be amended, when required by the Office,
to correct inaccuracies of description and definition, and
to secure substantial correspondence between the claims,
the remainder of the specification, and the drawings.
(g)  Amendments made relative to the patent.  All
amendments must be made relative to the patent
specification, including the claims, and drawings, which
are in effect as of the date of filing of the reissue
application.
[Revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;
para. (b)(3) revised, 68 FR 38611, June 30, 2003, effective July 30,
2003; para. (b) introductory text revised, 69 FR 56481, Sept. 21, 2004,
effective Oct. 21, 2004]
§ 
1.174[Reserved]
[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20,
1983, effective Feb. 27, 1983; removed and reserved, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000]
§ 
1.175Reissue oath or declaration.(a) The reissue oath or declaration in addition to
complying with the requirements of § 1.63 , must also
state that:
(1) The applicant believes the original patent to be
wholly or partly inoperative or invalid by reason of a
defective specification or drawing, or by reason of the
patentee claiming more or less than the patentee had
the right to claim in the patent, stating at least one error
being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue
application up to the time of filing of the oath or
declaration under this paragraph arose without any
deceptive intention on the part of the applicant.
(b)
(1) For any error corrected, which is not covered
by the oath or declaration submitted under paragraph
(a) of this section, applicant must submit a
supplemental oath or declaration stating that every such
error arose without any deceptive intention on the part
of the applicant. Any supplemental oath or declaration
required by this paragraph must be submitted before
allowance and may be submitted:
(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) Having once stated an error upon which the reissue
is based, as set forth in paragraph (a)(1), unless all errors
previously stated in the oath or declaration are no longer
being corrected, a subsequent oath or declaration under
paragraph (b) of this section need not specifically identify
any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a)
of this section may be submitted under the provisions of
§ 1.53 (f).
(e) The filing of any continuing reissue application
which does not replace its parent reissue application must
include an oath or declaration which, pursuant to
paragraph (a)(1) of this section, identifies at least one
error in the original patent which has not been corrected
by the parent reissue application or an earlier reissue
application. All other requirements relating to oaths or
declarations must also be met.
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 [24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 34
FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982,
effective July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective
Feb. 27, 1983; para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar.
16, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para. (e) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 
1.176Examination of reissue.
(a) A reissue application will be examined in the same
manner as a non-reissue, non-provisional application, and
will be subject to all the requirements of the rules related
to non-reissue applications. Applications for reissue will
be acted on by the examiner in advance of other
applications.
(b) Restriction between subject matter of the original
patent claims and previously unclaimed subject matter
may be required (restriction involving only subject matter
of the original patent claims will not be required). If
restriction is required, the subject matter of the original
patent claims will be held to be constructively elected
unless a disclaimer of all the patent claims is filed in the
reissue application, which disclaimer cannot be withdrawn
by applicant.
[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000]
§ 
1.177Issuance of multiple reissue patents.
(a) The Office may reissue a patent as multiple reissue
patents. If applicant files more than one application for
the reissue of a single patent, each such application must
contain or be amended to contain in the first sentence of
the specification a notice stating that more than one
reissue application has been filed and identifying each of
the reissue applications by relationship, application
number and filing date. The Office may correct by
certificate of correction under § 1.322  any reissue patent
resulting from an application to which this paragraph
applies that does not contain the required notice.
(b) If applicant files more than one application for the
reissue of a single patent, each claim of the patent being
reissued must be presented in each of the reissue
applications as an amended, unamended, or canceled
(shown in brackets) claim, with each such claim bearing
the same number as in the patent being reissued. The same
claim of the patent being reissued may not be presented
in its original unamended form for examination in more
than one of such multiple reissue applications. The
numbering of any added claims in any of the multiple
reissue applications must follow the number of the highest
numbered original patent claim.
(c) If any one of the several reissue applications by
itself fails to correct an error in the original patent as
required by 35 U.S.C. 251 but is otherwise in condition
for allowance, the Office may suspend action in theallowable application until all issues are resolved as to at
least one of the remaining reissue applications. The Office
may also merge two or more of the multiple reissue
applications into a single reissue application. No reissue
application containing only unamended patent claims and
not correcting an error in the original patent will be passed
to issue by itself.
[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982;
revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989,
effective Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective
June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000]
§ 
1.178Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall
constitute an offer to surrender that patent, and the
surrender shall take effect upon reissue of the patent. Until
a reissue application is granted, the original patent shall
remain in effect.
(b) In any reissue application before the Office, the
applicant must call to the attention of the Office any prior
or concurrent proceedings in which the patent (for which
reissue is requested) is or was involved, such as
interferences, reissues, reexaminations, or litigations and
the results of such proceedings (see also § 1.173(a)(1)).
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)
revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]
§ 
1.179[Reserved]
[Removed and reserved, 69 FR 56481, Sept. 21, 2004, effective
Oct. 21, 2004]
PETITIONS AND ACTION BY THE DIRECTOR
§ 
1.181Petition to the Director.
(a) Petition may be taken to the Director:
(1) From any action or requirement of any examiner
in the  ex parte prosecution of an application, or in  ex
parte or  inter partes prosecution of a reexamination
proceeding which is not subject to appeal to the Board
of Patent Appeals and Interferences or to the court;
(2) In cases in which a statute or the rules specify
that the matter is to be determined directly by or
reviewed by the Director; and
(3) To invoke the supervisory authority of the
Director in appropriate circumstances. For petitions
involving action of the Board of Patent Appeals and
Interferences, see § 41.3 of this title.
(b) Any such petition must contain a statement of the
facts involved and the point or points to be reviewed and
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 the action requested. Briefs or memoranda, if any, in
support thereof should accompany or be embodied in the
petition; and where facts are to be proven, the proof in
the form of affidavits or declarations (and exhibits, if any)
must accompany the petition.
(c) When a petition is taken from an action or
requirement of an examiner in the ex parte  prosecution
of an application, or in the ex parte  or inter partes 
prosecution of a reexamination proceeding, it may be
required that there have been a proper request for
reconsideration (§ 1.111 ) and a repeated action by the
examiner. The examiner may be directed by the Director
to furnish a written statement, within a specified time,
setting forth the reasons for his or her decision upon the
matters averred in the petition, supplying a copy to the
petitioner.
(d) Where a fee is required for a petition to the
Director the appropriate section of this part will so
indicate. If any required fee does not accompany the
petition, the petition will be dismissed.
(e) Oral hearing will not be granted except when
considered necessary by the Director.
(f) The mere filing of a petition will not stay any
period for reply that may be running against the
application, nor act as a stay of other proceedings. Any
petition under this part not filed within two months of the
mailing date of the action or notice from which relief is
requested may be dismissed as untimely, except as
otherwise provided. This two-month period is not
extendable.
(g) The Director may delegate to appropriate Patent
and Trademark Office officials the determination of
petitions.
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;
paras. (d) and (g), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982;
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para.
(f) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras.
(a) and (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
paras. (a), (a)(2)-(3), (c)-(e) & (g) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (a)(3) revised, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
§ 
1.182Questions not specifically provided for.
All situations not specifically provided for in the
regulations of this part will be decided in accordance with
the merits of each situation by or under the authority of
the Director, subject to such other requirements as may
be imposed, and such decision will be communicated to
the interested parties in writing. Any petition seeking a
decision under this section must be accompanied by the
petition fee set forth in § 1.17 (f).
[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised,68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR
56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.183Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations in this part which is not a
requirement of the statutes may be suspended or waived
by the Director or the Director’s designee, sua sponte ,
or on petition of the interested party, subject to such other
requirements as may be imposed. Any petition under this
section must be accompanied by the petition fee set forth
in § 1.17 (f).
[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR
56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.184[Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
APPEAL TO THE BOARD OF PATENT APPEALS
AND INTERFERENCES
§ 
1.191Appeal to Board of Patent Appeals and
Interferences.
Appeals to the Board of Patent Appeals and Interferences
under 35 U.S.C. 134(a) and (b) are conducted according
to part 41 of this title.
[46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, Sept. 17,
1982, effective Oct. 1, 1982; para. (d), 49 FR 555, Jan. 4, 1984, effective
Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;
paras. (b) and (d) amended, para. (e) added, 54 FR 29553, July 13, 1989,
effective Aug. 20, 1989; para. (d) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; paras. (a) and (b) revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 76756, Dec. 7,
2000, effective Feb. 5, 2001; para. (e) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; para. (a) revised, 68 FR 70996, Dec. 22,
2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
§ 
1.192[Reserved]
[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, Sept. 17,
1982, effective Oct. 1, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective
Apr. 1, 1984; 53 FR 23734, June 23, 1988, effective Sept. 12, 1988;
para. (a), (c), and (d) revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; paras. (a)-(c) revised, 60 FR 14488, Mar 17, 1995, effective
Apr. 21, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
§ 
1.193[Reserved]
[24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969; para.
(c), 47 FR 21752, May 19, 1982, added effective July 1, 1982; para.
(b), 50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 53 FR 23735,
June 23, 1988, effective Sept. 12, 1988; para. (c) deleted, 57 FR 2021,
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 Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 58 FR 54504,
Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; para. (b)(1) revised, 65 FR 54604, Sept.
8, 2000, effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 14332, Mar.
25, 2003, effective May 1, 2003; removed and reserved, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004]
§ 
1.194[Reserved]
[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 41278, Sept.
17, 1982, effective Oct. 1, 1982; para. (a), 49  FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; para. (b) revised 53 FR 23735, June 23, 1988,
effective Sept. 12, 1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993,
effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
§ 
1.195[Reserved]
[34 FR 18858, Nov. 26, 1969; removed and reserved, 69 FR
49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
1.196[Reserved]
[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981; 49
FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; para. (b) revised, 53
FR 23735, June 23, 1988, effective Sept. 12, 1988; paras. (a), (b) & (d)
amended, paras. (e) & (f) added, 54 FR 29552, July 13, 1989, effective
Aug. 20, 1989; para. (f) revised, 58 FR 54504, Oct. 22, 1993, effective
Jan. 3, 1994; paras. (b) & (d) revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997; removed and reserved, 69 FR 49959, Aug. 12,
2004, effective Sept. 13, 2004]
§ 
1.197Termination of proceedings.
(a) [Reserved]
(b)   Termination of proceedings .
(1) Proceedings on an application are considered
terminated by the dismissal of an appeal or the failure
to timely file an appeal to the court or a civil action (§
1.304 ) except:
(i) Where claims stand allowed in an
application; or
(ii) Where the nature of the decision requires
further action by the examiner.
(2) The date of termination of proceedings on an
application is the date on which the appeal is dismissed
or the date on which the time for appeal to the U.S.
Court of Appeals for the Federal Circuit or review by
civil action (§ 1.304 ) expires in the absence of further
appeal or review. If an appeal to the U.S. Court of
Appeals for the Federal Circuit or a civil action has
been filed, proceedings on an application are considered
terminated when the appeal or civil action is terminated.
A civil action is terminated when the time to appeal
the judgment expires. An appeal to the U.S. Court of
Appeals for the Federal Circuit, whether from adecision of the Board or a judgment in a civil action,
is terminated when the mandate is issued by the Court.
[46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, Sept. 17,
1982, effective Oct. 1, 1982; 49 FR 556, Jan. 4, 1984, effective Apr. 1,
1984; paras. (a) and (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,
1985; paras. (b) and (c), 54 FR 29552, July 13, 1989, effective Aug. 20,
1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,
1994; paras. (a) & (b) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective
Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; section heading revised and para. (a) removed and reserved, 76
FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
1.198Reopening after a final decision of the Board
of Patent Appeals and Interferences.
When a decision by the Board of Patent Appeals and
Interferences on appeal has become final for judicial
review, prosecution of the proceeding before the primary
examiner will not be reopened or reconsidered by the
primary examiner except under the provisions of § 1.114
or § 41.50  of this title without the written authority of the
Director, and then only for the consideration of matters
not already adjudicated, sufficient cause being shown.
[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985;
revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted
as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004]
PUBLICATION OF APPLICATIONS
§ 
1.211Publication of applications.
(a) Each U.S. national application for patent filed in
the Office under 35 U.S.C.  111(a)  and each international
application in compliance with 35 U.S.C. 371 will be
published promptly after the expiration of a period of
eighteen months from the earliest filing date for which a
benefit is sought under title 35, United States Code,
unless:
(1) The application is recognized by the Office as
no longer pending;
(2) The application is national security classified
(see § 5.2(c) ), subject to a secrecy order under 35
U.S.C. 181, or under national security review;
(3) The application has issued as a patent in
sufficient time to be removed from the publication
process; or
(4) The application was filed with a nonpublication
request in compliance with § 1.213(a) .
(b) Provisional applications under 35 U.S.C.  111(b)
shall not be published, and design applications under 35
U.S.C. chapter 16 and reissue applications under 35
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 U.S.C. chapter 25 shall not be published under this
section.
(c) An application filed under 35 U.S.C. 111(a)  will
not be published until it includes the basic filing fee (§
1.16(a)  or 1.16(c)) , any English translation required by §
1.52(d) , and an executed oath or declaration under § 1.63.
The Office may delay publishing any application until it
includes any application size fee required by the Office
under § 1.16(s) or § 1.492 (j), a specification having papers
in compliance with § 1.52 and an abstract (§ 1.72(b)) ,
drawings in compliance with § 1.84, and a sequence
listing in compliance with §§ 1.821  through 1.825  (if
applicable), and until any petition under § 1.47 is granted.
(d) The Office may refuse to publish an application,
or to include a portion of an application in the patent
application publication (§ 1.215 ), if publication of the
application or portion thereof would violate Federal or
state law, or if the application or portion thereof contains
offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d)  must be
paid in each application published under this section
before the patent will be granted. If an application is
subject to publication under this section, the sum specified
in the notice of allowance under § 1.311  will also include
the publication fee which must be paid within three
months from the date of mailing of the notice of allowance
to avoid abandonment of the application. This three-month
period is not extendable. If the application is not published
under this section, the publication fee (if paid) will be
refunded.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000;
para. (c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]
§ 
1.213Nonpublication request.
(a) If the invention disclosed in an application has not
been and will not be the subject of an application filed in
another country, or under a multilateral international
agreement, that requires publication of applications
eighteen months after filing, the application will not be
published under 35 U.S.C. 122(b)  and § 1.211  provided:
(1) A request (nonpublication request) is submitted
with the application upon filing;
(2) The request states in a conspicuous manner that
the application is not to be published under 35 U.S.C.
122(b) ;
(3) The request contains a certification that the
invention disclosed in the application has not been and
will not be the subject of an application filed in another
country, or under a multilateral international agreement,
that requires publication at eighteen months after filing;
and(4) The request is signed in compliance with §
1.33(b).
(b) The applicant may rescind a nonpublication
request at any time. A request to rescind a nonpublication
request under paragraph (a) of this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request
that the application is not to be published under 35
U.S.C. 122(b)  is rescinded; and
(3) Be signed in compliance with § 1.33(b) .
(c) If an applicant who has submitted a nonpublication
request under paragraph (a) of this section subsequently
files an application directed to the invention disclosed in
the application in which the nonpublication request was
submitted in another country, or under a multilateral
international agreement, that requires publication of
applications eighteen months after filing, the applicant
must notify the Office of such filing within forty-five days
after the date of the filing of such foreign or international
application. The failure to timely notify the Office of the
filing of such foreign or international application shall
result in abandonment of the application in which the
nonpublication request was submitted (35 U.S.C.
122(b)(2)(B)(iii)) .
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 
1.215Patent application publication.
(a) The publication of an application under  35 U .S.C.
122(b) shall include a patent application publication. The
date of publication shall be indicated on the patent
application publication. The patent application publication
will be based upon the specification and drawings
deposited on the filing date of the application, as well as
the executed oath or declaration submitted to complete
the application. The patent application publication may
also be based upon amendments to the specification (other
than the abstract or the claims) that are reflected in a
substitute specification under §  1.125 (b), amendments to
the abstract under §  1.121 (b), amendments to the claims
that are reflected in a complete claim listing under §
1.121(c), and amendments to the drawings under §
1.121 (d), provided that such substitute specification or
amendment is submitted in sufficient time to be entered
into the Office file wrapper of the application before
technical preparations for publication of the application
have begun. Technical preparations for publication of an
application generally begin four months prior to the
projected date of publication. The patent application
publication of an application that has entered the national
stage under 35 U.S.C. 371 may also include amendments
made during the international stage. See paragraph (c) of
this section for publication of an application based upon
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 a copy of the application submitted via the Office
electronic filing system.
(b) If applicant wants the patent application
publication to include assignee information, the applicant
must include the assignee information on the application
transmittal sheet or the application data sheet (§ 1.76).
Assignee information may not be included on the patent
application publication unless this information is provided
on the application transmittal sheet or application data
sheet included with the application on filing. Providing
this information on the application transmittal sheet or
the application data sheet does not substitute for
compliance with any requirement of part 3 of this chapter
to have an assignment recorded by the Office.
(c) At applicant’s option, the patent application
publication will be based upon the copy of the application
(specification, drawings, and oath or declaration) as
amended, provided that applicant supplies such a copy in
compliance with the Office electronic filing system
requirements within one month of the mailing date of the
first Office communication that includes a confirmation
number for the application, or fourteen months of the
earliest filing date for which a benefit is sought under title
35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant
to paragraph (c) of this section does not comply with the
Office electronic filing system requirements, the Office
will publish the application as provided in paragraph (a)
of this section. If, however, the Office has not started the
publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under
paragraph (c) of this section in creating the patent
application publication.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000;
paras. (a) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Oct.
21, 2004]
§ 
1.217Publication of a redacted copy of an
application.
(a) If an applicant has filed applications in one or more
foreign countries, directly or through a multilateral
international agreement, and such foreign-filed
applications or the description of the invention in such
foreign-filed applications is less extensive than the
application or description of the invention in the
application filed in the Office, the applicant may submit
a redacted copy of the application filed in the Office for
publication, eliminating any part or description of the
invention that is not also contained in any of the
corresponding applications filed in a foreign country. The
Office will publish the application as provided in §
1.215(a)  unless the applicant files a redacted copy of the
application in compliance with this section within sixteenmonths after the earliest filing date for which a benefit is
sought under title 35, United States Code.
(b) The redacted copy of the application must be
submitted in compliance with the Office electronic filing
system requirements. The title of the invention in the
redacted copy of the application must correspond to the
title of the application at the time the redacted copy of
the application is submitted to the Office. If the redacted
copy of the application does not comply with the Office
electronic filing system requirements, the Office will
publish the application as provided in § 1.215(a) .
(c) The applicant must also concurrently submit in
paper (§ 1.52(a))  to be filed in the application:
(1) A certified copy of each foreign-filed
application that corresponds to the application for
which a redacted copy is submitted;
(2) A translation of each such foreign-filed
application that is in a language other than English, and
a statement that the translation is accurate;
(3) A marked-up copy of the application showing
the redactions in brackets; and
(4) A certification that the redacted copy of the
application eliminates only the part or description of
the invention that is not contained in any application
filed in a foreign country, directly or through a
multilateral international agreement, that corresponds
to the application filed in the Office.
(d) The Office will provide a copy of the complete
file wrapper and contents of an application for which a
redacted copy was submitted under this section to any
person upon written request pursuant to §  1.14(c)(2) ,
unless applicant complies with the requirements of
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission
required by paragraph (c) of this section with the
following:
(i) A copy of any Office correspondence
previously received by applicant including any
desired redactions, and a second copy of all Office
correspondence previously received by applicant
showing the redacted material in brackets; and
(ii) A copy of each submission previously filed
by the applicant including any desired redactions,
and a second copy of each submission previously
filed by the applicant showing the redacted
material in brackets.
(2) In addition to providing the submission required
by paragraphs (c) and (d)(1) of this section, applicant
must:
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 (i) Within one month of the date of mailing of
any correspondence from the Office, file a copy
of such Office correspondence including any
desired redactions, and a second copy of such
Office correspondence showing the redacted
material in brackets; and
(ii) With each submission by the applicant,
include a copy of such submission including any
desired redactions, and a second copy of such
submission showing the redacted material in
brackets.
(3) Each submission under paragraph (d)(1) or
(d)(2) of this paragraph must also be accompanied by
the processing fee set forth in § 1.17(i)  and a
certification that the redactions are limited to the
elimination of material that is relevant only to the part
or description of the invention that was not contained
in the redacted copy of the application submitted for
publication.
(e) The provisions of § 1.8 do not apply to the time
periods set forth in this section.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 
1.219Early publication.
Applications that will be published under § 1.211  may be
published earlier than as set forth in §  1.211(a)  at the
request of the applicant. Any request for early publication
must be accompanied by the publication fee set forth in
§ 1.18(d). If the applicant does not submit a copy of the
application in compliance with the Office electronic filing
system requirements pursuant to § 1.215(c) , the Office
will publish the application as provided in § 1.215(a) . No
consideration will be given to requests for publication on
a certain date, and such requests will be treated as a
request for publication as soon as possible.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
§ 
1.221Voluntary publication or republication of
patent application publication.
(a) Any request for publication of an application filed
before, but pending on, November 29, 2000, and any
request for republication of an application previously
published under § 1.211 , must include a copy of the
application in compliance with the Office electronic filing
system requirements and be accompanied by the
publication fee set forth in § 1.18(d)  and the processing
fee set forth in § 1.17(i) . If the request does not comply
with the requirements of this paragraph or the copy of the
application does not comply with the Office electronic
filing system requirements, the Office will not publish
the application and will refund the publication fee.(b) The Office will grant a request for a corrected or
revised patent application publication other than as
provided in paragraph (a) of this section only when the
Office makes a material mistake which is apparent from
Office records. Any request for a corrected or revised
patent application publication other than as provided in
paragraph (a) of this section must be filed within two
months from the date of the patent application publication.
This period is not extendable.
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000]
MISCELLANEOUS PROVISIONS
§ 
1.248Service of papers; manner of service; proof of
service in cases other than interferences.
(a) Service of papers must be on the attorney or agent
of the party if there be such or on the party if there is no
attorney or agent, and may be made in any of the
following ways:
(1) By delivering a copy of the paper to the person
served;
(2) By leaving a copy at the usual place of business
of the person served with someone in his employment;
(3) When the person served has no usual place of
business, by leaving a copy at the person’s residence,
with some person of suitable age and discretion who
resides there;
(4) Transmission by first class mail. When service
is by mail the date of mailing will be regarded as the
date of service;
(5) Whenever it shall be satisfactorily shown to the
Director that none of the above modes of obtaining or
serving the paper is practicable, service may be by
notice published in the  Official Gazette .
(b) Papers filed in the Patent and Trademark Office
which are required to be served shall contain proof of
service. Proof of service may appear on or be affixed to
papers filed. Proof of service shall include the date and
manner of service. In the case of personal service, proof
of service shall also include the name of any person
served, certified by the person who made service. Proof
of service may be made by:
(1) An acknowledgement of service by or on behalf
of the person served or
(2) A statement signed by the attorney or agent
containing the information required by this section.
(c) See § 41.106 (e) of this title for service of papers
in contested cases before the Board of Patent Appeals and
Interferences.
[46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; para. (a)(5) revised, 68 FR 14332, Mar. 25,
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 2003, effective May 1, 2003; para. (c) revised, 69 FR 49959, Aug. 12,
2004, effective Sept. 13, 2004; para. (c) revised, 69 FR 49959, Aug. 12,
2004, effective Sept. 13, 2004; para. (c) revised, 69 FR 5 8260, Sept.
30, 2004, effective Sept. 30, 2004]
§ 
1.251Unlocatable file.
(a) In the event that the Office cannot locate the file
of an application, patent, or other patent-related
proceeding after a reasonable search, the Office will notify
the applicant or patentee and set a time period within
which the applicant or patentee must comply with the
notice in accordance with one of paragraphs (a)(1), (a)(2),
or (a)(3) of this section.
(1) Applicant or patentee may comply with a notice
under this section by providing:
(i) A copy of the applicant’s or patentee’s
record (if any) of all of the correspondence
between the Office and the applicant or patentee
for such application, patent, or other proceeding
(except for U.S. patent documents);
(ii) A list of such correspondence; and
(iii) A statement that the copy is a complete
and accurate copy of the applicant’s or patentee’s
record of all of the correspondence between the
Office and the applicant or patentee for such
application, patent, or other proceeding (except
for U.S. patent documents), and whether applicant
or patentee is aware of any correspondence
between the Office and the applicant or patentee
for such application, patent, or other proceeding
that is not among applicant’s or patentee’s records.
(2) Applicant or patentee may comply with a notice
under this section by:
(i) Producing the applicant’s or patentee’s
record (if any) of all of the correspondence
between the Office and the applicant or patentee
for such application, patent, or other proceeding
for the Office to copy (except for U.S. patent
documents); and
(ii) Providing a statement that the papers
produced by applicant or patentee are applicant’s
or patentee’s complete record of all of the
correspondence between the Office and the
applicant or patentee for such application, patent,
or other proceeding (except for U.S. patent
documents), and whether applicant or patentee is
aware of any correspondence between the Office
and the applicant or patentee for such application,
patent, or other proceeding that is not among
applicant’s or patentee’s records.
(3) If applicant or patentee does not possess any
record of the correspondence between the Office andthe applicant or patentee for such application, patent,
or other proceeding, applicant or patentee must comply
with a notice under this section by providing a
statement that applicant or patentee does not possess
any record of the correspondence between the Office
and the applicant or patentee for such application,
patent, or other proceeding.
(b) With regard to a pending application, failure to
comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of
this section within the time period set in the notice will
result in abandonment of the application.
[Added, 65 FR 69446, Nov. 17, 2000, effective Nov. 17, 2000]
§ 
1.265[Removed]
[Added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined
and never became effective); removed, 74 FR 52686, Oct. 14, 2009,
effective Oct. 14, 2009 (to remove changes made by the final rules in
72 FR 46716 from the CFR)]
PROTESTS AND PUBLIC USE PROCEEDINGS
§ 
1.291Protests by the public against pending
applications.
(a) A protest may be filed by a member of the public
against a pending application, and it will be matched with
the application file if it adequately identifies the patent
application. A protest submitted within the time frame of
paragraph (b) of this section, which is not matched in a
timely manner to permit review by the examiner during
prosecution, due to inadequate identification, may not be
entered and may be returned to the protestor where
practical, or, if return is not practical, discarded.
(b) The protest will be entered into the record of the
application if, in addition to complying with paragraph
(c) of this section, the protest has been served upon the
applicant in accordance with §  1.248 , or filed with the
Office in duplicate in the event service is not possible;
and, except for paragraph (b)(1) of this section, the protest
was filed prior to the date the application was published
under § 1.211 , or a notice of allowance under §  1.311  was
mailed, whichever occurs first:
(1) If a protest is accompanied by the written
consent of the applicant, the protest will be considered
if the protest is matched with the application in time to
permit review during prosecution.
(2) A statement must accompany a protest that it
is the first protest submitted in the application by the
real party in interest who is submitting the protest; or
the protest must comply with paragraph (c)(5) of this
section. This section does not apply to the first protest
filed in an application.
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 (c) In addition to compliance with paragraphs (a) and
(b) of this section, a protest must include:
(1) A listing of the patents, publication, or other
information relied upon;
(2) A concise explanation of the relevance of each
item listed pursuant to paragraph (c)(1) of this section;
(3) A copy of each listed patent, publication, or
other item of information in written form, or at least
the pertinent portions thereof;
(4) An English language translation of all the
necessary and pertinent parts of any non-English
language patent, publication, or other item of
information relied upon; and
(5) If it is a second or subsequent protest by the
same party in interest, an explanation as to why the
issue(s) raised in the second or subsequent protest are
significantly different than those raised earlier and why
the significantly different issue(s) were not presented
earlier, and a processing fee under §  1.17 (i) must be
submitted.
(d) A member of the public filing a protest in an
application under this section will not receive any
communication 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 acknowledgement by the Office that
the protest has been received. The limited involvement
of the member of the public filing a protest pursuant to
this section ends with the filing of the protest, and no
further submission on behalf of the protestor will be
considered, unless the submission is made pursuant to
paragraph (c)(5) of this section.
(e) Where a protest raising inequitable conduct issues
satisfies the provisions of this section for entry, it will be
entered into the application file, generally without
comment on the inequitable conduct issues raised in it.
(f) In the absence of a request by the Office, an
applicant has no duty to, and need not, reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or
(c) of this section may not be entered, and if not entered,
will be returned to the protestor, or discarded, at the option
of the Office.
[47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a)
and (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a)
and (b) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;
para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para. (a)(1) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29,
2000; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.292Public use proceedings.(a) When a petition for the institution of public use
proceedings, supported by affidavits or declarations is
found, on reference to the examiner, to make a prima facie
showing that the invention claimed in an application
believed to be on file had been in public use or on sale
more than one year before the filing of the application, a
hearing may be had before the Director to determine
whether a public use proceeding should be instituted. If
instituted, the Director may designate an appropriate
official to conduct the public use proceeding, including
the setting of times for taking testimony, which shall be
taken as provided by part 41, subpart D, of this title. The
petitioner will be heard in the proceedings but after
decision therein will not be heard further in the
prosecution of the application for patent.
(b) The petition and accompanying papers, or a notice
that such a petition has been filed, shall be entered in the
application file if:
(1) The petition is accompanied by the fee set forth
in § 1.17 (j);
(2) The petition is served on the applicant in
accordance with § 1.248 , or filed with the Office in
duplicate in the event service is not possible; and
(3) The petition is submitted prior to the date the
application was published or the mailing of a notice of
allowance under § 1.311 , whichever occurs first.
(c) A petition for institution of public use proceedings
shall not be filed by a party to an interference as to an
application involved in the interference. Public use and
on sale issues in an interference shall be raised by a
motion under § 41.121 (a)(1) of this title.
[42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279, Sept. 17,
1982; paras. (a) and (c), 49 FR 48416, Dec. 12, 1984, effective Feb. 12,
1985; paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 1996, effective
Sept. 23, 1996; para. (b)(3) revised, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; paras. (a) and (c) revised, 69 FR 49959, Aug.
12, 2004, effective Sept. 13, 2004]
§ 
1.293Statutory invention registration.
(a) An applicant for an original patent may request,
at any time during the pendency of applicant’s pending
complete application, that the specification and drawings
be published as a statutory invention registration. Any
such request must be signed by (1) the applicant and any
assignee of record or (2) an attorney or agent of record
in the application.
(b) Any request for publication of a statutory invention
registration must include the following parts:
(1) A waiver of the applicant’s right to receive a
patent on the invention claimed effective upon the date
of publication of the statutory invention registration;
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 (2) The required fee for filing a request for
publication of a statutory invention registration as
provided for in § 1.17 (n) or (o);
(3) A statement that, in the opinion of the requester,
the application to which the request is directed meets
the requirements of 35 U .S.C. 112 ; and
(4) A statement that, in the opinion of the requester,
the application to which the request is directed complies
with the formal requirements of this part for printing
as a patent.
(c) A waiver filed with a request for a statutory
invention registration will be effective, upon publication
of the statutory invention registration, to waive the
inventor’s right to receive a patent on the invention
claimed in the statutory invention registration, in any
application for an original patent which is pending on, or
filed after, the date of publication of the statutory
invention registration. A waiver filed with a request for
a statutory invention  registration will not affect the rights
of any other inventor even if the subject matter of the
statutory invention registration and an application of
another inventor are commonly owned. A waiver filed
with a request for a statutory invention registration will
not affect any rights in a patent to the inventor which
issued prior to the date of publication of the statutory
invention registration unless a reissue application is filed
seeking to enlarge the scope of the claims of the patent.
See also § 1.104 (c)(5).
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para.
(c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.294Examination of request for publication of a
statutory invention registration and patent
application to which the request is directed.
(a) Any request for a statutory invention registration
will be examined to determine if the requirements of
§ 1.293  have been met. The application to which the
request is directed will be examined to determine (1) if
the subject matter of the application is appropriate for
publication, (2) if the requirements for publication are
met, and (3) if the requirements of 35 U .S.C. 112  and §
1.293  of this part are met.
(b) Applicant will be notified of the results of the
examination set forth in paragraph (a) of this section. If
the requirements of § 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 reply
established pursuant to this section are subject to theextension of time provisions of § 1.136 . After reply by
the applicant, the application will again be considered for
publication of a statutory invention registration. If the
requirements of § 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.
(c) If the examination pursuant to this section results
in approval of the request for a statutory invention
registration the applicant will be notified of the intent to
publish a statutory invention registration.
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; para.
(b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.295Review of decision finally refusing to publish
a statutory invention registration.
(a) Any requester who is dissatisfied with the final
refusal to publish a statutory invention registration for
reasons other than compliance with 35 U .S.C. 112  may
obtain review of the refusal to publish the statutory
invention registration by filing a petition to the Director
accompanied by the fee set forth in § 1.17 (g) within one
month or such other time as is set in the decision refusing
publication. Any such petition should comply with the
requirements of § 1.181 (b). The petition may include a
request that the petition fee be refunded if the final refusal
to publish a statutory invention registration for reasons
other than compliance with 35 U .S.C. 112  is determined
to result from an error by the Patent and Trademark
Office.
(b) Any requester who is dissatisfied with a decision
finally rejecting claims pursuant to 35 U.S.C. 112 may
obtain review of the decision by filing an appeal to the
Board of Patent Appeals and Interferences pursuant to §
41.31  of this title. If the decision rejecting claims pursuant
to 35 U.S.C. 112 is reversed, the request for a statutory
invention registration will be approved and the registration
published if all of the other provisions of § 1.293  and this
section are met.
[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; para. (a)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b)
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para.
(a) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.296Withdrawal of request for publication of
statutory invention registration.
A request for a statutory invention registration, which has
been filed, may be withdrawn prior to the date of the
notice of the intent to publish a statutory invention
registration issued pursuant to § 1.294 (c) by filing a
request to withdraw the request for publication of a
statutory invention registration. The request to withdraw
may also include a request for a refund of any amount
paid in excess of the application filing fee and a handling
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 fee of $130.00 which will be retained. Any request to
withdraw the request for publication of a statutory
invention registration filed on or after the date of the
notice of intent to publish issued pursuant to § 1.294 (c)
must be in the form of a petition accompanied by the fee
set forth in § 1.17 (g).
[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; revised,
54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec.
13, 1991, effective Dec. 16, 1991; revised, 69 FR 56481, Sept. 21, 2004,
effective Nov. 22, 2004]
§ 
1.297Publication of statutory invention registration.
(a) If the request for a statutory invention registration
is approved the statutory invention registration will be
published. The statutory invention registration will be
mailed to the requester at the correspondence address as
provided for in § 1.33 (a). A notice of the publication of
each statutory invention registration will be published in
the  Official Gazette .
(b) Each statutory invention registration published
will include a statement relating to the attributes of a
statutory invention registration. The statement will read
as follows:
A statutory invention registration is not a patent.
It has the defensive attributes of a patent but does
not have the enforceable attributes of a patent. No
article or advertisement or the like may use the term
patent, or any term suggestive of a patent, when
referring to a statutory invention registration. For
more specific information on the rights associated
with a statutory invention registration see 35 U.S.C.
157.
[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826,
Aug. 6, 1985, effective Oct. 5, 1985]
REVIEW OF PATENT AND TRADEMARK OFFICE
DECISIONS BY COURT
§ 
1.301Appeal to U.S. Court of Appeals for the Federal
Circuit.
Any applicant, or any owner of a patent involved in any
ex parte  reexamination proceeding filed under § 1.510 ,
dissatisfied with the decision of the Board of Patent
Appeals and Interferences, and any party to an
interference dissatisfied with the decision of the Board
of Patent Appeals and Interferences, may appeal to the
U.S. Court of Appeals for the Federal Circuit. The
appellant must take the following steps in such an appeal:
In the U. S. Patent and Trademark Office, file a written
notice of appeal directed to the Director (§§ 1.302  and
1.304 ); and in the Court, file a copy of the notice of appealand pay the fee for appeal as provided by the rules of the
Court. For appeals by patent owners and third party
requesters in inter partes  reexamination proceedings filed
under § 1.913 , § 1.983  is controlling.
[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9383, Mar. 7,
1985, effective May 8, 1985; 54 FR 29552, July 13, 1989, effective
Aug. 20, 1989; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5,
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
§ 
1.302Notice of appeal.
(a) When an appeal is taken to the U.S. Court of
Appeals for the Federal Circuit, the appellant shall give
notice thereof to the Director within the time specified in
§ 1.304 .
(b) In interferences, the notice must be served as
provided in § 41.106 (e) of this title.
(c) In ex parte  reexamination proceedings, the notice
must be served as provided in § 1.550 (f).
(d) In inter partes  reexamination proceedings, the
notice must be served as provided in § 1.903 .
(e) Notices of appeal directed to the Director shall be
mailed to or served by hand on the General Counsel as
provided in § 104.2 .
[24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381, Oct. 26,
1982, effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective
Feb. 11, 1985; 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para.
(c) added, 53 FR 16414, May 8, 1988; paras. (a) & (c) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 70996,
Dec. 22, 2003, effective Jan. 21, 2004; para. (b) revised, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 58260,
Sept. 30, 2004, effective Sept. 30, 2004]
§ 
1.303Civil action under 35 U .S.C. 145 , 146, 306.
(a) Any applicant, or any owner of a patent involved
in an ex parte  reexamination proceeding filed before
November 29, 1999, dissatisfied with the decision of the
Board of Patent Appeals and Interferences, and any party
to an interference dissatisfied with the decision of the
Board of Patent Appeals and Interferences may, instead
of appealing to the U.S. Court of Appeals for the Federal
Circuit (§ 1.301 ), have remedy by civil action under 35
U.S.C. 145 or 146, as appropriate. Such civil action must
be commenced within the time specified in § 1.304 .
(b) If an applicant in an  ex parte  case, or an owner
of a patent involved in an  ex parte  reexamination
proceeding filed before November 29, 1999, has taken
an appeal to the U.S. Court of Appeals for the Federal
Circuit, he or she thereby waives his or her right to
proceed under 35 U.S.C. 145.
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 (c) A notice of election under  35 U .S.C. 141  to have
all further proceedings on review conducted as provided
in 35 U .S.C. 146 must be filed with the Office of the
Solicitor and served as provided in §  41.106 (e) of this
title.
(d) For an  ex parte  reexamination proceeding filed
on or after November 29, 1999, and for any  inter partes
reexamination proceeding, no remedy by civil action
under 35 U.S.C. 145 is available.
[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR
48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553,
July 13, 1989, effective Aug. 20, 1989; para. (a) revised, 65 FR 54604,
Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and (b) revised and
para. (d) added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para.
(c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras.
(a), (b), & (d) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,
2004; para. (c) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; para. (c) revised, 69 FR 58260, Sept. 30, 2004, effective Sept.
30, 2004]
§ 
1.304Time 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 (§ 1.302 )
or for commencing a civil action (§ 1.303 ) is two
months from the date of the decision of the Board of
Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed
within the time period provided under § 41.52 (a),
§ 41.79 (a), or § 41.127 (d) of this title, the time for filing
an appeal or commencing a civil action shall expire
two months after action on the request. In contested
cases before the Board of Patent Appeals and
Interferences, the time for filing a cross-appeal or
cross-action expires:
(i) Fourteen 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.
(2) The time periods set forth in this section are not
subject to the provisions of § 1.136 , § 1.550  (c), or §
1.956 , or of § 41.4 of this title.
(3) The Director may extend the time for filing an
appeal or commencing a civil action:
(i) For good cause shown if requested in
writing before the expiration of the period for
filing an appeal or commencing a civil action, or
(ii) Upon written request after the expiration
of the period for filing an appeal or commencing
a civil action upon a showing that the failure to
act was the result of excusable neglect.(b) The times specified in this section in days are
calendar days. The time specified herein in months are
calendar months except that one day shall be added to
any two-month period which includes February 28. If the
last day of the time specified for appeal or commencing
a civil action falls on a Saturday, Sunday or Federal
holiday in the District of Columbia, the time is extended
to the next day which is neither a Saturday, Sunday nor
a Federal holiday.
(c) If a defeated party to an interference has taken an
appeal to the U.S. Court of Appeals for the Federal Circuit
and an adverse party has filed notice under 35 U.S.C. 141
electing to have all further proceedings conducted under
35 U .S.C. 146  (§ 1.303 (c)), the time for filing a civil
action thereafter is specified in 35 U .S.C. 141 . The time
for filing a cross-action expires 14 days after service of
the summons and complaint.
[41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR 47382, Oct.
26, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984;
para. (a) 49 FR Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 50 FR
9383, Mar. 7, 1985, effective May 8, 1985; 54 FR 29553, July 13, 1989,
effective Aug. 20, 1989; paras. (a) and (c) revised 58 FR 54494, Oct.
22, 1993, effective Nov. 22, 1993; para. (a)(1) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)(1) and (a)(2) revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a)(3) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(1) revised,
68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. (a)(1) and
(a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
ALLOWANCE AND ISSUE OF PATENT
§ 
1.311Notice of Allowance.
(a) If, on examination, it appears that the applicant is
entitled to a patent under the law, a notice of allowance
will be sent to the applicant at the correspondence address
indicated in § 1.33 . The notice of allowance shall specify
a sum constituting the issue fee which must be paid within
three months from the date of mailing of the notice of
allowance to avoid abandonment of the application. The
sum specified in the notice of allowance may also include
the publication fee, in which case the issue fee and
publication fee  (§ 1.211 (e)) must both be paid within three
months from the date of mailing of the notice of allowance
to avoid abandonment of the application. This three-month
period is not extendable.
(b) An authorization to charge the issue fee or other
post-allowance fees set forth in §  1.18  to a deposit account
may be filed in an individual application only after
mailing of the notice of allowance. The submission of
either of the following after the mailing of a notice of
allowance will operate as a request to charge the correct
issue fee or any publication fee due to any deposit account
identified in a previously filed authorization to charge
such fees:
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 (1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment
of issue fee or publication fee.
[47 FR 41279, Sept. 17, 1982, effective Oct. 1, 1982; para. (b)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised,
65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised,
66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (b) revised,
69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]
§ 
1.312Amendments after allowance.
No amendment may be made as a matter of right in an
application after the mailing of the notice of allowance.
Any amendment filed pursuant to this section must be
filed before or with the payment of the issue fee, and may
be entered on the recommendation of the primary
examiner, approved by the Director, without withdrawing
the application from issue.
[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan.
3, 1994; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June
8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000
(adopted as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 14332,
Mar. 25, 2003, effective May 1, 2003]
§ 
1.313Withdrawal from issue.
(a) Applications may be withdrawn from issue for
further action at the initiative of the Office or upon
petition by the applicant. To request that the Office
withdraw an application from issue, applicant must file
a petition under this section including the fee set forth in
§ 1.17(h)  and a showing of good and sufficient reasons
why withdrawal of the application from issue is necessary.
A petition under this section is not required if a request
for continued examination under § 1.114  is filed prior to
payment of the issue fee. If the Office withdraws the
application from issue, the Office will issue a new notice
of allowance if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will
not withdraw the application from issue at its own
initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of § 1.56  or illegality in the
application;
(3) Unpatentability of one or more claims; or
(4) For interference.
(c) Once the issue fee has been paid, the application
will not be withdrawn from issue upon petition by the
applicant for any reason except:
(1) Unpatentability of one of more claims, which
petition must be accompanied by an unequivocalstatement that one or more claims are unpatentable, an
amendment to such claim or claims, and an explanation
as to how the amendment causes such claim or claims
to be patentable;
(2) Consideration of a request for continued
examination in compliance with § 1.114 ; or
(3) Express abandonment of the application. Such
express abandonment may be in favor of a continuing
application.
(d) A petition under this section will not be effective
to withdraw the application from issue unless it is actually
received and granted by the appropriate officials before
the date of issue. Withdrawal of an application from issue
after payment of the issue fee may not be effective to
avoid publication of application information.
[47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; para. (a),
54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr.
17, 1989; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;
para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (paras.
(b), (c)(1), (c)(3) and (d) adopted as final, 65 FR 50092, Aug. 16, 2000);
paras. (a) and c(2) revised, 65 FR 50092, Aug. 16, 2000, effective Aug.
16, 2000)]
§ 
1.314Issuance of patent.
If applicant timely pays the issue fee, the Office will issue
the patent in regular course unless the application is
withdrawn from issue ( § 1.313 ) or the Office defers
issuance of the patent. To request that the Office defer
issuance of a patent, applicant must file a petition under
this section including the fee set forth in § 1.17 (h) and a
showing of good and sufficient reasons why it is necessary
to defer issuance of the patent.
[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982;
revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised,
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 
1.315Delivery of patent.
The patent will be delivered or mailed upon issuance to
the correspondence address of record. See § 1.33 (a).
[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]
§ 
1.316Application abandoned for failure to pay issue
fee.
If the issue fee is not paid within three months from the
date of the notice of allowance, the application will be
regarded as abandoned. Such an abandoned application
will not be considered as pending before the Patent and
Trademark Office.
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 [47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; para. (d) revised, 60 FR 20195, Apr. 25, 1995,
effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§ 
1.317Lapsed patents; delayed payment of balance
of issue fee.
If the issue fee paid is the amount specified in the notice
of allowance, but a higher amount is required at the time
the issue fee is paid, any remaining balance of the issue
fee is to be paid within three months from the date of
notice thereof and, if not paid, the patent will lapse at the
termination of the three-month period.
[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras.
(a)-(d) amended, paras. (e) & (f) added, 58 FR 44277, Aug. 20, 1993,
effective Sept. 20, 1993; para. (d) amended, 60 FR 20195, Apr. 25,
1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]
§ 
1.318[Reserved]
[43 FR 20465, May 11, 1978; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]
DISCLAIMER
§ 
1.321Statutory disclaimers, including terminal
disclaimers.
(a) A patentee owning the whole or any sectional
interest in a patent may disclaim any complete claim or
claims in a patent. In like manner any patentee may
disclaim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted. Such
disclaimer is binding upon the grantee and its successors
or assigns. A notice of the disclaimer is published in the
 Official Gazette  and attached to the printed copies of the
specification. The disclaimer, to be recorded in the Patent
and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or
agent of record;
(2) Identify the patent and complete claim or
claims, or term being disclaimed. A disclaimer which
is not a disclaimer of a complete claim or claims, or
term will be refused recordation;
(3) State the present extent of patentee’s ownership
interest in the patent; and
(4) Be accompanied by the fee set forth in § 1.20 (d).
(b) An applicant or assignee may disclaim or dedicate
to the public the entire term, or any terminal part of the
term, of a patent to be granted. Such terminal disclaimer
is binding upon the grantee and its successors or assigns.
The terminal disclaimer, to be recorded in the Patent and
Trademark Office, must:(1) Be signed:
(i) By the applicant, or
(ii) If there is an assignee of record of an
undivided part interest, by the applicant and such
assignee, or
(iii) If there is an assignee of record of the
entire interest, by such assignee, or
(iv) By an attorney or agent of record;
(2) Specify the portion of the term of the patent
being disclaimed;
(3) State the present extent of applicant’s or
assignee’s ownership interest in the patent to be
granted; and
(4) Be accompanied by the fee set forth in § 1.20 (d).
(c) A terminal disclaimer, when filed to obviate
judicially created double patenting in a patent application
or in a reexamination proceeding except as provided for
in paragraph (d) of this section, must:
(1) Comply with the provisions of paragraphs (b)(2)
through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1)
of this section if filed in a patent application or in
accordance with paragraph (a)(1) of this section if filed
in a reexamination proceeding; and
(3) Include a provision that any patent granted on
that application or any patent subject to the
reexamination proceeding shall be enforceable only
for and during such period that said patent is commonly
owned with the application or patent which formed the
basis for the judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent
application or in a reexamination proceeding to obviate
double patenting based upon a patent or application that
is not commonly owned but was disqualified under 35
U.S.C. 103(c) as resulting from activities undertaken
within the scope of a joint research agreement, must:
(1) Comply with the provisions of paragraphs (b)(2)
through (b)(4) of this section;
(2) Be signed in accordance with paragraph (b)(1)
of this section if filed in a patent application or be
signed in accordance with paragraph (a)(1) of this
section if filed in a reexamination proceeding;
(3) Include a provision waiving the right to
separately enforce any patent granted on that
application or any patent subject to the reexamination
proceeding and the patent or any patent granted on the
application which formed the basis for the double
patenting, and that any patent granted on that
application or any patent subject to the reexamination
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 proceeding shall be enforceable only for and during
such period that said patent and the patent, or any patent
granted on the application, which formed the basis for
the double patenting are not separately enforced.
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised,
58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised,
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para (d) added,
70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d)
revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005]
CORRECTION OF ERRORS IN PATENT
§ 
1.322Certificate of correction of Office mistake.
(a)
(1) The Director may issue a certificate of
correction pursuant to 35 U.S.C. 254 to correct a
mistake in a patent, incurred through the fault of the
Office, which mistake is clearly disclosed in the records
of the Office:
(i) At the request of the patentee or the
patentee’ s assignee;
(ii) Acting  sua sponte  for mistakes that the
Office discovers; or
(iii) Acting on information about a mistake
supplied by a third party.
(2)
(i) There is no obligation on the Office to act
on or respond to a submission of information or
request to issue a certificate of correction by a
third party under paragraph (a)(1)(iii) of this
section.
(ii) Papers submitted by a third party under
this section will not be made of record in the file
that they relate to nor be retained by the Office.
(3) If the request relates to a patent involved in an
interference, the request must comply with the
requirements of this section and be accompanied by a
motion under § 41.121 (a)(2) or § 41.121 (a)(3) of this
title.
(4) The Office will not issue a certificate of
correction under this section without first notifying the
patentee (including any assignee of record) at the
correspondence address of record as specified in §
1.33(a)  and affording the patentee or an assignee an
opportunity to be heard.
(b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate in form, the Director may issue a corrected
patent in lieu thereof as a more appropriate form for
certificate of correction, without expense to the patentee.[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969; para.
(a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras.
(a)(1) & (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1,
2003; para. (a)(3) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.
13, 2004]
§ 
1.323Certificate of correction of applicant’s mistake.
The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 255 at the request of
the patentee or the patentee’s assignee, upon payment of
the fee set forth in § 1.20(a). If the request relates to a
patent involved in an interference, the request must
comply with the requirements of this section and be
accompanied by a motion under § 41.121 (a)(2) or §
41.121 (a)(3) of this title.
[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984,
effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 8, 2000, effective
Nov. 7, 2000; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004]
§ 
1.324Correction of inventorship in patent, pursuant
to 35 U.S.C. 256.
(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, the
Director, pursuant to  35 U .S.C. 256 , may, on application
of all the parties and assignees, or on order of a court
before which such matter is called in question, issue a
certificate naming only the actual inventor or inventors.
A petition to correct inventorship of a patent involved in
an interference must comply with the requirements of this
section and must be accompanied by a motion under §
41.121 (a)(2) or § 41.121 (a)(3) of this title.
(b) Any request to correct inventorship of a patent
pursuant to paragraph (a) of this section must be
accompanied by:
(1) Where one or more persons are being added, a
statement from each person who is being added as an
inventor that the inventorship error occurred without
any deceptive intention on his or her 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, which statement must
comply with the requirements of § 3.73 (b) of this
chapter; and
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 (4) The fee set forth in § 1.20 (b).
(c) For correction of inventorship in an application,
see §§ 1.48 and 1.497 .
(d) In a contested case before the Board of Patent
Appeals and Interferences under part 41, subpart D, of
this title, a request for correction of a patent must be
in the form of a motion under § 41.121 (a)(2) or §
41.121 (a)(3) of this title.
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR
2713, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12,
1984, 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; heading and para.
(b)(1) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para.
(c) added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (a)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)
and (c) revised and para. (d) added, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004; para. (a) and para. (b) introductory text revised,
69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised,
70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004]
§ 
1.325Other mistakes not corrected.
Mistakes other than those provided for in §§ 1.322 , 1.323 ,
1.324 , and not affording legal grounds for reissue or for
reexamination, will not be corrected after the date of the
patent.
[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 1983]
ARBITRATION A WARDS
§ 
1.331[Reserved]
[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978; 47
FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective
Sept. 4, 1992]
§ 
1.332[Reserved]
[47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6,
1992, effective Sept. 4, 1992]
§ 
1.333[Reserved]
[Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]
§ 
1.334[Reserved]
[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; para. (c),
54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; deleted, 57 FR
29642, July 6, 1992, effective Sept. 4, 1992]
§ 
1.335Filing of notice of arbitration awards.
(a) Written notice of any award by an arbitrator
pursuant to 35 U .S.C. 294  must be filed in the Patent and
Trademark Office by the patentee or the patentee’s
assignee or licensee. If the award involves more than onepatent a separate notice must be filed for placement in the
file of each patent. The notice must set forth the patent
number, the names of the inventor and patent owner, and
the names and addresses of the parties to the arbitration.
The notice must also include a copy of the award.
(b) If an award by an arbitrator pursuant to 35 U .S.C.
294 is modified by a court, the party requesting the
modification must file in the Patent and Trademark Office,
a notice of the modification for placement in the file of
each patent to which the modification applies. The notice
must set forth the patent number, the names of the
inventor and patent owner, and the names and addresses
of the parties to the arbitration. The notice must also
include a copy of the court’s order modifying the award.
(c) Any award by an arbitrator pursuant to 35 U .S.C.
294 shall be unenforceable until any notices required by
paragraph (a) or (b) of this section are filed in the Patent
and Trademark Office. If any required notice is not filed
by the party designated in paragraph (a) or (b) of this
section, any party to the arbitration proceeding may file
such a notice.
[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]
AMENDMENT OF RULES
§ 
1.351Amendments to rules will be published.
All amendments to the regulations in this part will
be published in the  Official Gazette and in the  Federal
Register .
§ 
1.352[Reserved]
[Para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective Jan.
3, 1994; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
MAINTENANCE FEES
§ 
1.362Time for payment of maintenance fees.
(a) Maintenance fees as set forth in §§ 1.20 (e) through
(g) are required to be paid in all patents based on
applications filed on or after December 12, 1980, except
as noted in paragraph (b) of this section, to maintain a
patent in force beyond 4, 8 and 12 years after the date of
grant.
(b) Maintenance fees are not required for any plant
patents or for any design patents. Maintenance fees are
not required for a reissue patent if the patent being
reissued did not require maintenance fees.
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 (c) The application filing dates for purposes of
payment of maintenance fees are as follows:
(1) For an application not claiming benefit of an
earlier application, the actual United States filing date
of the application.
(2) For an application claiming benefit of an earlier
foreign application under 35 U .S.C. 119 , the United
States filing date of the application.
(3) For a continuing (continuation, division,
continuation-in-part) application claiming the benefit
of a prior patent application under 35 U .S.C. 120 , the
actual United States filing date of the continuing
application.
(4) For a reissue application, including a continuing
reissue application claiming the benefit of a reissue
application under 35 U .S.C. 120 , the United States
filing date of the original non-reissue application on
which the patent reissued is based.
(5) For an international application which has
entered the United States as a Designated Office under
35 U .S.C. 371 , the international filing date granted
under Article 11 (1) of the Patent Cooperation Treaty
which is considered to be the United States filing date
under 35 U .S.C. 363 .
(d) Maintenance fees may be paid in patents without
surcharge during the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant
for the first maintenance fee,
(2) 7 years through 7 years and 6 months after grant
for the second maintenance fee, and
(3) 11 years through 11 years and 6 months after
grant for the third maintenance fee.
(e) Maintenance fees may be paid with the surcharge
set forth in § 1.20 (h) during the respective grace periods
after:
(1) 3 years and 6 months and through the day of
the 4th anniversary of the grant for the first
maintenance fee.
(2) 7 years and 6 months and through the day of
the 8th anniversary of the grant for the second
maintenance fee, and
(3) 11 years and 6 months and through the day of
the 12th anniversary of the grant for the third
maintenance fee.
(f) If the last day for paying a maintenance fee without
surcharge set forth in paragraph (d) of this section, or the
last day for paying a maintenance fee with surcharge set
forth in paragraph (e) of this section, falls on a Saturday,
Sunday, or a federal holiday within the District ofColumbia, the maintenance fee and any necessary
surcharge may be paid under paragraph (d) or paragraph
(e) respectively on the next succeeding day which is not
a Saturday, Sunday, or Federal holiday.
(g) Unless the maintenance fee and any applicable
surcharge is paid within the time periods set forth in
paragraphs (d), (e) or (f) of this section, the patent will
expire as of the end of the grace period set forth in
paragraph (e) of this section. A patent which expires for
the failure to pay the maintenance fee will expire at the
end of the same date (anniversary date) the patent was
granted in the 4th, 8th, or 12th year after grant.
(h) The periods specified in §§1.362 (d) and (e) with
respect to a reissue application, including a continuing
reissue application thereof, are counted from the date of
grant of the original non-reissue application on which the
reissued patent is based.
[49 FR 34724, Aug. 31, 1984, added effective Nov. 1, 1984;
paras. (a) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (c)(4) and (e) revised and para. (h) added, 58 FR 54504, Oct. 22,
1993, effective Jan. 3, 1994]
§ 
1.363Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other
communications relating to payment or refund of
maintenance fees will be directed to the correspondence
address used during prosecution of the application as
indicated in § 1.33 (a) unless:
(1) A fee address for purposes of payment of
maintenance fees is set forth when submitting the issue
fee, or
(2) A change in the correspondence address for all
purposes is filed after payment of the issue fee, or
(3) A fee address or a change in the “fee address”
is filed for purposes of receiving notices, receipts and
other correspondence relating to the payment of
maintenance fees after the payment of the issue fee, in
which instance, the latest such address will be used.
(b) An assignment of a patent application or patent
does not result in a change of the “correspondence
address” or “fee address” for maintenance fee purposes.
(c) A fee address must be an address associated with
a Customer Number.
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984;
para. (c) added, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§ 
1.366Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any
necessary surcharges, or any person or organization may
pay maintenance fees and any necessary surcharges on
behalf of a patentee. Authorization by the patentee need
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 not be filed in the Patent and Trademark Office to pay
maintenance fees and any necessary surcharges on behalf
of the patentee.
(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. A maintenance fee or surcharge may
be paid in the manner set forth in § 1.23  or by an
authorization to charge a deposit account established
pursuant to § 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 § 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 Director in an expired patent pursuant to a petition
filed under § 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 § 1.23 , or
in the filing of an authorization to charge a deposit account
having insufficient funds will not constitute payment of
a maintenance fee or surcharge on a patent. The
procedures set forth in § 1.8  or § 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 patent
number, and the application number of the United States
application for the patent on which the maintenance fee
is being paid. If the payment includes identification of
only the patent number ( i.e., does not identify the
application number of the United States application for
the patent on which the maintenance fee is being paid),
the Office may apply the payment to the patent identified
by patent number in the payment or may return the
payment.
(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 changed or claimed, the
amount of the maintenance fee and any surcharge being
paid, and any assigned customer number. If the
maintenance fee and any necessary surcharge is being
paid on a reissue patent, the payment must identify the
reissue patent by reissue patent number and reissue
application number as required by paragraph (c) of this
section and should also include the original patent number.
(e) Maintenance fee payments and surcharge payments
relating thereto must be submitted separate from any other
payments for fees or charges, whether submitted in themanner set forth in § 1.23  or by an authorization to charge
a deposit account. If maintenance fee and surcharge
payments for more than one patent are submitted together,
they should be submitted on as few sheets as possible
with the patent numbers listed in increasing patent number
order. If the payment submitted is insufficient to cover
the maintenance fees and surcharges for all the listed
patents, the payment will be applied in the order the
patents are listed, beginning at the top of the listing.
(f) Notification of any change in status resulting in
loss of entitlement to small entity status must be filed in
a patent prior to paying, or at the time of paying, the
earliest maintenance fee due after the date on which status
as a small entity is no longer appropriate. See § 1.27 (g).
(g) Maintenance fees and surcharges relating thereto
will not be refunded except in accordance with §§1.26
and 1.28(a).
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984;
para. (b) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993;
paras. (b) - (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,
2000; para. (f) revised, 65 FR 78958, Dec. 18, 2000; para. (b) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.377Review of decision refusing to accept and
record payment of a maintenance fee filed
prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal
of the Patent and Trademark Office to accept and record
a maintenance fee which was filed prior to the expiration
of the patent may petition the Director to accept and
record the maintenance fee.
(b) Any petition under this section must be filed within
two months of the action complained of, or within such
other time as may be set in the action complained of, and
must be accompanied by the fee set forth in § 1.17 (g).
The petition may include a request that the petition fee
be refunded if the refusal to accept and record the
maintenance fee is determined to result from an error by
the Patent and Trademark Office.
(c) Any petition filed under this section must comply
with the requirements of § 1.181 (b) and must be signed
by an attorney or agent registered to practice before the
Patent and Trademark Office, or by the patentee, the
assignee, or other party in interest.
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984;
para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.378Acceptance of delayed payment of maintenance
fee in expired patent to reinstate patent.
(a) The Director may accept the payment of any
maintenance fee due on a patent after expiration of the
patent if, upon petition, the delay in payment of the
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 maintenance fee is shown to the satisfaction of the
Director to have been unavoidable (paragraph (b) of this
section) or unintentional (paragraph (c) of this section)
and if the surcharge required by § 1.20 (i) is paid as a
condition of accepting payment of the maintenance fee.
If the Director accepts payment of the maintenance fee
upon petition, the patent shall be considered as not having
expired, but will be subject to the conditions set forth in
35 U .S.C. 41 (c)(2).
(b) Any petition to accept an unavoidably delayed
payment of a maintenance fee filed under paragraph (a)
of this section must include:
(1) The required maintenance fee set forth in § 1.20
(e) through (g);
(2) The surcharge set forth in § 1.20 (i)(1); and
(3) A showing that the delay was unavoidable since
reasonable care was taken to ensure that the
maintenance fee would be paid timely and that the
petition was filed promptly after the patentee was
notified of, or otherwise became aware of, the
expiration of the patent. The showing must enumerate
the steps taken to ensure timely payment of the
maintenance fee, the date and the manner in which
patentee became aware of the expiration of the patent,
and the steps taken to file the petition promptly.
(c) Any petition to accept an unintentionally delayed
payment of a maintenance fee filed under paragraph (a)
of this section must be filed within twenty-four months
after the six-month grace period provided in § 1.362 (e)
and must include:
(1) The required maintenance fee set forth in § 1.20
(e) through (g);
(2) The surcharge set forth in § 1.20 (i)(2); and
(3) A statement that the delay in payment of the
maintenance fee was unintentional.
(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.
(e) Reconsideration of a decision refusing to accept
a maintenance fee upon petition filed pursuant to
paragraph (a) of this section may be obtained by filing a
petition for reconsideration within two months of, or such
other time as set in the decision refusing to accept the
delayed payment of the maintenance fee. Any such
petition for reconsideration must be accompanied by the
petition fee set forth in § 1.17 (f). After the decision on
the petition for reconsideration, no further reconsideration
or review of the matter will be undertaken by the Director.
If the delayed payment of the maintenance fee is not
accepted, the maintenance fee and the surcharge set forthin § 1.20 (i) will be refunded following the decision on
the petition for reconsideration, or after the expiration of
the time for filing such a petition for reconsideration, if
none is filed. Any petition fee under this section will not
be refunded unless the refusal to accept and record the
maintenance fee is determined to result from an error by
the Patent and Trademark Office.
[49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 1984;
para. (a), 50 FR 9383, Mar.7, 1985, effective May 8, 1985; paras. (b)
and (c), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; paras. (a)
- (c) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (a) - (c) and (e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20,
1993; para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; paras. (a) & (e) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; para. (e) revised, 69 FR 56536, Sept. 21, 2004, effective
Nov. 22, 2004]
Subpart C  — International Processing Provisions
GENERAL INFORMATION
§ 
1.401Definitions of terms under the Patent
Cooperation Treaty.
(a) The abbreviation  PCT and the term  Treaty mean
the Patent Cooperation Treaty.
(b)  International Bureau means the World Intellectual
Property Organization located in Geneva, Switzerland.
(c)  Administrative Instructions  means that body of
instructions for operating under the Patent Cooperation
Treaty referred to in PCT Rule 89 .
(d)  Request, when capitalized, means that element of
the international application described in PCT Rules 3
and 4.
(e) International application,  as used in this
subchapter is defined in § 1.9 (b).
(f) Priority date  for the purpose of computing time
limits under the Patent Cooperation Treaty is defined in
PCT Art. 2 (xi). Note also § 1.465 .
(g)  Demand, when capitalized, means that document
filed with the International Preliminary Examining
Authority which requests an international preliminary
examination.
(h)  Annexes means amendments made to the claims,
description or the drawings before the International
Preliminary Examining Authority.
(i) Other terms and expressions in this subpart C not
defined in this section are to be taken in the sense
indicated in PCT Art. 2  and 35 U .S.C. 351 .
[43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 1987]
§ 
1.412The United States Receiving Office.
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 (a) The United States Patent and Trademark Office is
a Receiving Office only for applicants who are residents
or nationals of the United States of America.
(b) The Patent and Trademark Office, when acting as
a Receiving Office, will be identified by the full title
“United States Receiving Office” or by the abbreviation
“RO/US.”
(c) The major functions of the Receiving Office
include:
(1) According of international filing dates to
international applications meeting the requirements of
PCT Art. 11 (1) and PCT Rule 20 ;
(2) Assuring that international applications meet
the standards for format and content of PCT Art. 14 (1),
PCT Rule 9 , 26, 29.1, 37, 38, 91, and portions of PCT
Rules 3 through 11;
(3) Collecting and, when required, transmitting fees
due for processing international applications ( PCT
Rule 14 , 15, 16);
(4) Transmitting the record and search copies to
the International Bureau and International Searching
Authority, respectively ( PCT Rules 22  and 23); and
(5) Determining compliance with applicable
requirements of part 5 of this chapter.
(6) Reviewing and, unless prescriptions concerning
national security prevent the application from being so
transmitted ( PCT Rule 19.4 ), transmitting the
international application to the International Bureau
for processing in its capacity as a Receiving Office:
(i) Where the United States Receiving Office
is not the competent Receiving Office under PCT
Rule 19.1  or 19.2 and § 1.421 (a); or
(ii) Where the international application is not
in English but is in a language accepted under
PCT Rule 12.1 (a) by the International Bureau as
a Receiving Office; or
(iii) Where there is agreement and
authorization in accordance with PCT Rule
19.4(a)(iii).
[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective June
1, 1995; para. (c)(6) revised, 63 FR 29614, June 1, 1998, effective July
1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
§ 
1.413The United States International Searching
Authority.
(a) Pursuant to appointment by the Assembly, the
United States Patent and Trademark Office will act as an
International Searching Authority for international
applications filed in the United States Receiving Office
and in other Receiving Offices as may be agreed upon by
the Director, in accordance with the agreement betweenthe Patent and Trademark Office and the International
Bureau (PCT Art. 16(3)(b)).
(b) The Patent and Trademark Office, when acting as
an International Searching Authority, will be identified
by the full title “United States International Searching
Authority” or by the abbreviation “ISA/US.”
(c) The major functions of the International Searching
Authority include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type
searches and preparing international and
international-type search reports (PCT Art. 15, 17 and
18, and PCT Rules 25, 33 to 45 and 47), and issuing
declarations that no international search report will be
established (PCT Article 17(2)(a));
(4) Preparing written opinions of the International
Searching Authority in accordance with PCT Rule
43 bis (when necessary); and
(5) Transmitting the international search report and
the written opinion of the International Searching
Authority to the applicant and the International Bureau.
[Para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003; paras. (a) & (c) revised, 68 FR 58991, Oct. 20, 2003, effective
Jan. 1, 2004]
§ 
1.414The United States Patent and Trademark
Office as a Designated Office or Elected Office.
(a) The United States Patent and Trademark Office
will act as a Designated Office or Elected Office for
international applications in which the United States of
America has been designated or elected as a State in which
patent protection is desired.
(b) The United States Patent and Trademark Office,
when acting as a Designated Office or Elected Office
during international processing will be identified by the
full title “United States Designated Office” or by the
abbreviation “DO/US” or by the full title “United States
Elected Office” or by the abbreviation “EO/US.”
(c) The major functions of the United States
Designated Office or Elected Office in respect to
international applications in which the United States of
America has been designated or elected, include:
(1) Receiving various notifications throughout the
international stage and
(2) Accepting for national stage examination
international applications which satisfy the
requirements of 35 U .S.C. 371 .
[52 FR 20047, May 28, 1987, effective July 1, 1987]
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 § 
1.415The International Bureau.
(a) The International Bureau is the World Intellectual
Property Organization located at Geneva, Switzerland. It
is the international intergovernmental organization which
acts as the coordinating body under the Treaty and the
Regulations ( PCT Art. 2  (xix) and 35 U .S.C. 351 (h)).
(b) The major functions of the International Bureau
include:
(1) Publishing of international applications and the
International Gazette;
(2) Transmitting copies of international applications
to Designated Offices;
(3) Storing and maintaining record copies; and
(4) Transmitting information to authorities pertinent
to the processing of specific international applications.
§ 
1.416The United States International Preliminary
Examining Authority.
(a) Pursuant to appointment by the Assembly, the
United States Patent and Trademark Office will act as an
International Preliminary Examining Authority for
international applications filed in the United States
Receiving Office and in other Receiving Offices as may
be agreed upon by the Director, in accordance with
agreement between the Patent and Trademark Office and
the International Bureau.
(b) The United States Patent and Trademark Office,
when acting as an International Preliminary Examining
Authority, will be identified by the full title “United States
International Preliminary Examining Authority” or by the
abbreviation “IPEA/US.”
(c) The major functions of the International
Preliminary Examining Authority include:
(1) Receiving and checking for defects in the
Demand;
(2) Forwarding Demands in accordance with PCT
Rule 59.3 ;
(3) Collecting the handling fee for the International
Bureau and the preliminary examination fee for the
United States International Preliminary Examining
Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary
examination report which is a non-binding opinion on
the questions of whether the claimed invention appears:
to be novel, to involve an inventive step (to be
nonobvious), and to be industrially applicable; and(7) Transmitting the international preliminary
examination report to applicant and the International
Bureau.
[Added 52 FR 20047, May 28, 1987; para. (c) revised, 63 FR
29614, June 1, 1998, effective July 1998 (adopted as final, 63 FR 66040,
Dec. 1, 1998); para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003]
§ 
1.417Submission of translation of international
publication.
The submission of an English language translation of the
publication of an international application pursuant to 35
U.S.C. 154(d)(4) must clearly identify the international
application to which it pertains (§ 1.5(a)) and be clearly
identified as a submission pursuant to 35 U.S.C. 154(d)(4).
Otherwise, the submission will be treated as a filing under
35 U.S.C. 111(a). Such submissions should be marked
“Mail Stop PCT.”
[Added 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000;
revised 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 70996,
Dec. 22, 2003, effective Jan. 21, 2004]
§ 
1.419Display of currently valid control number
under the Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 1995
(44 U.S.C. 3501  et seq. ), the collection of information
in this subpart has been reviewed and approved by the
Office of Management and Budget under control number
0651-0021.
(b) Notwithstanding any other provision of law, no
person is required to respond to nor shall a person be
subject to a penalty for failure to comply with a collection
of information subject to the requirements of the
Paperwork Reduction Act unless that collection of
information displays a currently valid Office
of Management and Budget control number. This section
constitutes the display required by 44 U.S.C. 3512(a) and
5 CFR 1320.5(b)(2)(i) for the collection of information
under Office of Management and Budget control number
0651-0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).
[Added, 63 FR 29614, June 1, 1998, effective July 1, 1998
(adopted as final, 63 FR 66040, Dec. 1, 1998)]
WHO MAY FILE AN INTERNATIONAL
APPLICATION
§ 
1.421Applicant for international application.
(a) Only residents or nationals of the United States of
America may file international applications in the United
States Receiving Office. If an international application
does not include an applicant who is indicated as being a
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 resident or national of the United States of America, and
at least one applicant:
(1) Has indicated a residence or nationality in a
PCT Contracting State, or
(2) Has no residence or nationality indicated,
applicant will be so notified and, if the international
application includes a fee amount equivalent to that
required by § 1.445 (a)(4), the international application
will be forwarded for processing to the International
Bureau acting as a Receiving Office (see also §
1.412 (c)(6)).
(b) Although the United States Receiving Office will
accept international applications filed by any resident or
national of the United States of America for international
processing, for the purposes of the designation of the
United States, an international application must be filed,
and will be accepted by the Patent and Trademark Office
for the national stage only if filed, by the inventor or as
provided in §§ 1.422  or 1.423 . Joint inventors must jointly
apply for an international application.
(c) For the purposes of designations other than the
United States, international applications may be filed by
the assignee or owner.
(d) A registered attorney or agent of the applicant may
sign the international application Request and file the
international application for the applicant. A separate
power of attorney from each applicant may be required.
(e) Any indication of different applicants for the
purpose of different Designated Offices must be shown
on the Request portion of the international application.
(f) Requests for changes in the indications concerning
the applicant, agent, or common representative of an
international application shall be made in accordance with
PCT Rule 92 bis and may be required to be signed by all
applicants.
(g) Requests for withdrawals of the international
application, designations, priority claims, the Demand,
or elections shall be made in accordance with PCT Rule
90 bis and must be signed by all applicants. A separate
power of attorney from the applicants will be required for
the purposes of any request for a withdrawal in accordance
with PCT Rule 90 bis which is not signed by all
applicants. The submission of a separate power of attorney
may be excused upon the request of another applicant
where one or more inventors cannot be found or reached
after diligent effort. Such a request must be accompanied
by a statement explaining to the satisfaction of the
Director the lack of the signature concerned:
[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan.
1, 1989; para. (a) amended, 60 FR 21438, May 2, 1995, effective June
1, 1995; paras. (b)-(g) revised, 68 FR 58991, Oct. 20, 2003, effective
Jan. 1, 2004; para. (a)(2) revised, 68 FR 67805, Dec. 4, 2003, effective
Jan. 1, 2004]§ 
1.422When the inventor is dead.
In case of the death of the inventor, the legal
representative (executor, administrator, etc.) of the
deceased inventor may file an international application
which designates the United States of America.
§ 
1.423When the inventor is insane or legally
incapacitated.
In case an inventor is insane or otherwise legally
incapacitated, the legal representative (guardian,
conservator, etc.) of such inventor may file an
international application which designates the United
States of America.
§ 
1.424[Reserved]
[Removed and reserved, 68 FR 58991, Oct. 20, 2003, effective
Jan. 1, 2004]
§ 
1.425[Reserved]
[Removed and reserved, 68 FR 58991, Oct. 20, 2003, effective
Jan. 1, 2004]
THE INTERNATIONAL APPLICATION
§ 
1.431International application requirements.
(a) An international application shall contain, as
specified in the Treaty and the Regulations, a Request, a
description, one or more claims, an abstract, and one or
more drawings (where required). ( PCT Art. 3 (2) and
Section 207  of the Administrative Instructions.)
(b) An international filing date will be accorded by
the United States Receiving Office, at the time of receipt
of the international application, provided that:
(1) At least one applicant is a United States resident
or national and the papers filed at the time of receipt
of the international application so indicate ( 35 U .S.C.
361(a), PCT Art. 11 (1)(i)).
(2) The international application is in the English
language ( 35 U .S.C. 361 (c), PCT Art. 11 (1)(ii)).
(3) The international application contains at least
the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an
international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting
State of the International Patent Cooperation
Union (§ 1.432 );
(iii) The name of the applicant, as prescribed
(note §§ 1.421 -1.423 );
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 (iv) A part which on the face of it appears to
be a description; and
(v) A part which on the face of it appears to
be a claim.
(c) Payment of the international filing fee (PCT Rule
15.2) and the transmittal and search fees (§ 1.445 ) may
be made in full at the time the international application
papers required by paragraph (b) of this section are
deposited or within one month thereafter. The
international filing, transmittal, and search fee payable is
the international filing, transmittal, and search fee in effect
on the receipt date of the international application.
(1) If the international filing, transmittal and search
fees are not paid within one month from the date of
receipt of the international application and prior to the
sending of a notice of deficiency which imposes a late
payment fee, applicant will be notified and given one
month within which to pay the deficient fees plus the
late payment fee. Subject to paragraph (c)(2) of this
section, the late payment fee will be equal to the greater
of:
(i) Fifty percent of the amount of the deficient
fees; or
(ii) An amount equal to the transmittal fee.
(2) The late payment fee shall not exceed an amount
equal to fifty percent of the international filing fee not
taking into account any fee for each sheet of the
international application in excess of thirty sheets (PCT
Rule 16 bis).
(3) The one-month time limit set pursuant to
paragraph (c) of this section to pay deficient fees may
not be extended.
(d) If the payment needed to cover the transmittal fee,
the international filing fee, the search fee, and the late
payment fee pursuant to paragraph (c) of this section is
not timely made in accordance with PCT Rule 16 bis.1(e),
the Receiving Office will declare the international
application withdrawn under PCT Article 14(3)(a).
[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR
9383, Mar. 7, 1985, effective May 8, 1985; para. (d) amended, 52 FR
20047, May 28, 1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended,
para. (e) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993;
paras. (c) and (d) revised, 63 FR 29614, June 1, 1998, effective July 1,
1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); paras. (b)(3), (c)
& (d) revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; para.
(c)(2) corrected, 68 FR 67805, Dec. 4, 2003]
§ 
1.432Designation of States by filing an international
application.
The filing of an international application request shall
constitute:(a) The designation of all Contracting States that are
bound by the Treaty on the international filing date;
(b) An indication that the international application is,
in respect of each designated State to which PCT Article
43 or 44 applies, for the grant of every kind of protection
which is available by way of the designation of that State;
and.
(c) An indication that the international application is,
in respect of each designated State to which PCT Article
45(1) applies, for the grant of a regional patent and also,
unless PCT Article 45(2) applies, a national patent.
[43 FR 20486, May 11, 1978; para. (b) amended 52 FR 20047,
May 28, 1987; paras. (a), (b) amended and para. (c) added, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993; paras. (b) and (c) revised, para.
(d) added, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted
as final, 63 FR 66040, Dec. 1, 1998); revised, 68 FR 58991, Oct. 20,
2003, effective Jan. 1, 2004]
§ 
1.433Physical requirements of international
application.
(a) The international application and each of the
documents that may be referred to in the check list of the
Request ( PCT Rule 3.3 (a)(ii)) shall be filed in one copy
only.
(b) All sheets of the international application must be
on A4 size paper (21.0 x 29.7 cm.).
(c) Other physical requirements for international
applications are set forth in PCT Rule 11  and sections
201-207 of the Administrative Instructions.
§ 
1.434The request.
(a) The request shall be made on a standardized form
(PCT Rules 3 and 4). Copies of printed Request forms
are available from the United States Patent and Trademark
Office. Letters requesting printed forms should be marked
“Mail Stop PCT.”
(b) The Check List portion of the Request form should
indicate each document accompanying the international
application on filing.
(c) All information, for example, addresses, names of
States and dates, shall be indicated in the Request as
required by PCT Rule 4  and Administrative Instructions
110 and 201.
(d) For the purposes of the designation of the United
States of America, an international application shall
include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national
application or international application designating the
United States of America, if the benefit of the filing
date for the prior-filed application is to be claimed.
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 (e) An international application may also include in
the Request a declaration of the inventors as provided for
in PCT Rule 4.17(iv).
[Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May
1, 1993; para. (d) revised, 66 FR 16004, Mar. 22, 2001, effective Mar.
1, 2001; para. (d)(2) revised, 66 FR 67087, Dec. 28, 2001, effective
Dec. 28, 2001; paras. (a) & (d)(2) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (d) revised, para (e) added, 68 FR 58991,
Oct. 20, 2003, effective Jan. 1, 2004]
§ 
1.435The description.
(a) The application must meet the requirements as to
the content and form of the description set forth in PCT
Rules 5 , 9, 10, and 11 and sections 204 and 208 of the
Administrative Instructions.
(b) In international applications designating the United
States the description must contain upon filing an
indication of the best mode contemplated by the inventor
for carrying out the claimed invention.
[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1,
1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)]
§ 
1.436The claims.
The requirements as to the content and format of claims
are set forth in PCT Art. 6  and PCT Rules 6 , 9, 10 and
11 and shall be adhered to. The number of the claims shall
be reasonable, considering the nature of the invention
claimed.
§ 
1.437The drawings.
(a) Drawings are required when they are necessary
for the understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set
forth in PCT Rule 11 and shall be adhered to.
[Revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
§ 
1.438The abstract.
(a) Requirements as to the content and form of the
abstract are set forth in PCT Rule 8 , and shall be adhered
to.
(b) Lack of an abstract upon filing of an international
application will not affect the granting of a filing date.
However, failure to furnish an abstract within one month
from the date of the notification by the Receiving Office
will result in the international application being declared
withdrawn.
FEES§ 
1.445International application filing, processing and
search fees.
(a) The following fees and charges for international
applications are established by law or by the Director
under the authority of 35 U .S.C. 376 :
(1) A transmittal fee (see 35 U .S.C. 361(d)  and
PCT Rule 14 ) consisting of:
(i)
A basic portion $240.00
(ii) A non-electronic filing fee portion for any
international application designating the United
States of America that is filed on or after
November 15, 2011, other than by the Office
electronic filing system, except for a plant
application:
By a small entity ( § 1.27(a) )$200.00
By other than a small entity $400.00
(2)
A search fee (see 35 U .S.C. 361  (d) and PCT Rule
16) $2,080.00
(3)
A supplemental search fee when required, per
additional invention $2,080.00
(4) A fee equivalent to the transmittal fee in
paragraph (a)(1) of this section for transmittal of an
international application to the International Bureau
for processing in its capacity as a Receiving Office
(PCT Rule 19.4).
(b) The international filing fee shall be as prescribed
in PCT Rule 15.
[43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, Sept. 17,
1982, effective Oct. 1, 1982; para. (a)(4) - (6), 50 FR 9384, Mar. 7,
1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct.
5, 1985; para. (a) amended 52 FR 20047, May 28, 1987; paras. (a)(2)
and (3), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989,
effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective
Dec. 27, 1991; para. (a), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,
1992; para. (a)(4) added, 58 FR 4335, Jan. 14, 1993, effective May 1,
1993; paras. (a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1,
1994; para. (a)(5) added, 60 FR 21438, May 2, 1995, effective June 1,
1995; para. (a) amended, 60 FR 41018, Aug. 11, 1995, effective Oct.
1, 1995; para. (a) amended, 61 FR 39585, July 30, 1996, effective Oct.
1, 1996; para. (a) amended, 62 FR 40450, July 29, 1997, effective Oct.
1, 1997; para. (a) revised, 63 FR 29614, June 1, 1998, effective July
1,1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (a) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR
58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2) revised, 70 FR
3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (a)(2) and (a)(3)
revised, 72 FR 51559, Sept. 10, 2007, effective Nov. 9, 2007; paras.
(a)(1) through (a)(3) revised, 73 FR 67754, Nov. 12, 2008, effective
Jan. 12, 2009; para. (a) introductory text and (a)(1) revised, 76 FR 70651,
Nov. 15, 2011, effective Nov. 15, 2011]
§ 
1.446Refund of international application filing and
processing fees.
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 (a) Money paid for international application fees,
where paid by actual mistake or in excess, such as a
payment not required by law or treaty and its regulations,
may be refunded. A mere change of purpose after the
payment of a fee will not entitle a party to a refund of
such fee. The Office will not refund amounts of
twenty-five dollars or less unless a refund is specifically
requested and will not notify the payor of such amounts.
If the payor or party requesting a refund does not provide
the banking information necessary for making refunds by
electronic funds transfer, the Office may use the banking
information provided on the payment instrument to make
any refund by electronic funds transfer.
(b) Any request for refund under paragraph (a) of this
section must be filed within two years from the date the
fee was paid. If the Office charges a deposit account by
an amount other than an amount specifically indicated in
an authorization under § 1.25 (b), any request for refund
based upon such charge must be filed within two years
from the date of the deposit account statement indicating
such charge and include a copy of that deposit account
statement. The time periods set forth in this paragraph are
not extendable.
(c) Refund of the supplemental search fees will be
made if such refund is determined to be warranted by the
Director or the Director’s designee acting under PCT
Rule 40.2 (c).
(d) The international and search fees will be refunded
if no international filing date is accorded or if the
application is withdrawn before transmittal of the record
copy to the International Bureau ( PCT Rules 15.6  and
16.2). The search fee will be refunded if the application
is withdrawn before transmittal of the search copy to the
International Searching Authority. The transmittal fee
will not be refunded.
(e) The handling fee ( § 1.482 (b)) will be refunded
(PCT Rule 57.6 ) only if:
(1) The Demand is withdrawn before the Demand
has been sent by the International Preliminary
Examining Authority to the International Bureau, or
(2) The Demand is considered not to have been
submitted ( PCT Rule 54.4 (a)).
[43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, Sept. 17,
1982, effective Oct. 1, 1982; para.(b), 50 FR 9384, Mar. 7, 1985,
effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5,
1985; para. (d) amended and para. (e) added, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; para (a) revised and para. (b) added, 65 FR
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003]
PRIORITY
§ 
1.451The priority claim and priority document in
an international application.(a) The claim for priority must, subject to paragraph
(d) of this section, be made on the Request ( PCT Rule
4.10) in a manner complying with sections 110 and 115
of the Administrative Instructions.
(b) Whenever the priority of an earlier United States
national application or international application filed with
the United States Receiving Office is claimed in an
international application, the applicant may request in a
letter of transmittal accompanying the international
application upon filing with the United States Receiving
Office or in a separate letter filed in the United States
Receiving Office not later than 16 months after the
priority date, that the United States Patent and Trademark
Office prepare a certified copy of the prior application
for transmittal to the International Bureau ( PCT Article
8 and PCT Rule 17 ). The fee for preparing a certified
copy is set forth in § 1.19 (b)(1).
(c) If a certified copy of the priority document is not
submitted together with the international application on
filing, or, if the priority application was filed in the United
States and a request and appropriate payment for
preparation of such a certified copy do not accompany
the international application on filing or are not filed
within 16 months of the priority date, the certified copy
of the priority document must be furnished by the
applicant to the International Bureau or to the United
States Receiving Office within the time limit specified in
PCT Rule 17.1 (a).
(d) The applicant may correct or add a priority claim
in accordance with PCT Rule 26 bis.1.
[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982,
effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 17, 1982, effective
Oct. 1, 1982; paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May
8, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;
para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993;
para. (a) revised, para. (d) added, 63 FR 29614, June 1, 1998, effective
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (b)
revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]
§ 
1.452Restoration of right of priority.
(a) If the international application has an international
filing date which is later than the expiration of the priority
period as defined by PCT Rule 2.4 but within two months
from the expiration of the priority period, the right of
priority in the international application may be restored
upon request if the delay in filing the international
application within the priority period was unintentional.
(b) A request to restore the right of priority in an
international application under paragraph (a) of this
section must be filed not later than two months from the
expiration of the priority period and must include:
(1) A notice under PCT Rule 26 bis .1(a) adding
the priority claim, if the priority claim in respect of the
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 earlier application is not contained in the international
application;
(2) The fee set forth in § 1.17(t); and
(3) A statement that the delay in filing the
international application within the priority period was
unintentional. The Director may require additional
information where there is a question whether the delay
was unintentional.
(c) If the applicant makes a request for early
publication under PCT Article 21(2)(b), any requirement
under paragraph (b) of this section filed after the technical
preparations for international publication have been
completed by the International Bureau shall be considered
as not having been submitted in time.
(d) Restoration of a right of priority to a prior
application by the United States Receiving Office under
this section, or by any other Receiving Office under the
provisions of PCT Rule 26 bis .3, will not entitle
applicants to a right of priority in any application which
has entered the national stage under 35 U.S.C. 371, or in
any application filed under 35 U.S.C. 111(a) which claims
benefit under 35 U.S.C. 120 and 365(c) to an international
application in which the right to priority has been restored.
[Added, 72 FR 51559 Sept. 10, 2007, effective Nov. 9, 2007]
REPRESENTATION
§ 
1.455Representation in international applications.
(a) Applicants of international applications may be
represented by attorneys or agents registered to practice
before the United States Patent and Trademark Office or
by an applicant appointed as a common representative
(PCT Art. 49 , Rules 4.8  and 90 and § 11.9 ). If applicants
have not appointed an attorney or agent or one of the
applicants to represent them, and there is more than one
applicant, the applicant first named in the request and
who is entitled to file in the U.S. Receiving Office shall
be considered to be the common representative of all the
applicants. An attorney or agent having the right to
practice before a national office with which an
international application is filed and for which the United
States is an International Searching Authority or
International Preliminary Examining Authority may be
appointed to represent the applicants in the international
application before that authority. An attorney or agent
may appoint an associate attorney or agent who shall also
then be of record ( PCT Rule 90.1 (d)). The appointment
of an attorney or agent, or of a common representative,
revokes any earlier appointment unless otherwise
indicated ( PCT Rule 90.6 (b) and (c)).(b) Appointment of an agent, attorney or common
representative (PCT Rule 4.8) must be effected either in
the Request form, signed by applicant, in the Demand
form, signed by applicant, or in a separate power of
attorney submitted either to the United States Receiving
Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should
be submitted to the United States Receiving Office until
the issuance of the international search report.
(d) The addressee for correspondence will be as
indicated in section 108 of the Administrative Instructions.
[43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985,
effective Mar. 8, 1985; para. (a) amended, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; para. (b) revised, 68 FR 58991, Oct. 20, 2003,
effective Jan. 1, 2004; para. (a) revised, 69 FR 35427, June 24, 2004,
effective July 26, 2004]
TRANSMITTAL OF RECORD COPY
§ 
1.461Procedures for transmittal of record copy to
the International Bureau.
(a) Transmittal of the record copy of the international
application to the International Bureau shall be made by
the United States Receiving Office or as provided by PCT
Rule 19.4 .
(b) [Reserved]
(c) No copy of an international application may be
transmitted to the International Bureau, a foreign
Designated Office, or other foreign authority by the
United States Receiving Office or the applicant, unless
the applicable requirements of part 5 of this chapter have
been satisfied.
[43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR 9384,
Mar. 7, 1985, effective May 8, 1985; para. (a) revised, 63 FR 29614,
June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040,
Dec. 1, 1998)]
TIMING
§ 
1.465Timing of application processing based on the
priority date.
(a) For the purpose of computing time limits under
the Treaty, the priority date shall be defined as in PCT
Art. 2 (xi).
(b) When a claimed priority date is corrected under
PCT Rule 26 bis.1(a) , or a priority claim is added under
PCT Rule 26 bis.1(a) , withdrawn under PCT Rule
90 bis.3, or considered not to have been made under PCT
Rule 26 bis.2, the priority date for the purposes of
computing any non-expired time limits will be the filing
date of the earliest remaining priority claim under PCT
Article 8 of the international application, or if none, the
international filing date.
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 (c) When corrections under PCT Art. 11 (2), Art.
14(2) or PCT Rule 20.2 (a) (i) or (iii) are timely submitted,
and the date of receipt of such corrections falls later than
one year from the claimed priority date or dates, the
Receiving Office shall proceed under PCT Rule 26 bis.2.
[Paras. (b) and (c) revised, 63 FR 29614, June 1, 1998, effective
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (b)
revised, 72 FR 51559, Sept. 10, 2007, effective Sept. 10, 2007]
§ 
1.468Delays in meeting time limits.
Delays in meeting time limits during international
processing of international applications may only be
excused as provided in PCT Rule 82 . For delays in
meeting time limits in a national application, see § 1.137 .
AMENDMENTS
§ 
1.471Corrections and amendments during
international processing.
(a) Except as otherwise provided in this paragraph,
all corrections submitted to the United States Receiving
Office or United States International Searching Authority
must be in English, in the form of replacement sheets in
compliance with PCT Rules 10  and 11, and accompanied
by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets.
Replacement sheets are not required for the deletion of
lines of text, the correction of simple typographical errors,
and one addition or change of not more than five words
per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make
the deletion or transfer the correction to the international
application, provided that such corrections do not
adversely affect the clarity and direct reproducibility of
the application ( PCT Rule 26.4 ). Amendments that do
not comply with PCT Rules 10  and 11.1 to 11.13  may
not be entered.
(b) Amendments of claims submitted to the
International Bureau shall be as prescribed by PCT Rule
46.
(c) Corrections or additions to the Request of any
declarations under PCT Rule 4.17 should be submitted
to the International Bureau as prescribed by PCT Rule
26 ter.
[Para. (a) revised, 63 FR 29614, June 1, 1998, effective July 1,
1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (c) added, 66
FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]
§ 
1.472Changes in person, name, or address of
applicants and inventors.
All requests for a change in person, name or address of
applicants and inventor should be sent to the United StatesReceiving Office until the time of issuance of the
international search report. Thereafter requests for such
changes should be submitted to the International Bureau.
[43 FR 20466, May 11, 1978; redesignated at 52 FR 20047,
May 28, 1987]
UNITY OF INVENTION
§ 
1.475Unity of invention before the International
Searching Authority, the International
Preliminary Examining Authority and during
the national stage.
(a) An international and a national stage application
shall relate to one invention only or to a group of
inventions so linked as to form a single general inventive
concept (“requirement of unity of invention”). Where a
group of inventions is claimed in an application, the
requirement of unity of invention shall be fulfilled only
when there is a technical relationship among those
inventions involving one or more of the same or
corresponding special technical features. The expression
“special technical features” shall mean those technical
features that define a contribution which each of the
claimed inventions, considered as a whole, makes over
the prior art.
(b) An international or a national stage application
containing claims to different categories of invention will
be considered to have unity of invention if the claims are
drawn only to one of the following combinations of
categories:
(1) A product and a process specially adapted for
the manufacture of said product; or
(2) A product and process of use of said product;
or
(3) A product, a process specially adapted for the
manufacture of the said product, and a use of the said
product; or
(4) A process and an apparatus or means
specifically designed for carrying out the said process;
or
(5) A product, a process specially adapted for the
manufacture of the said product, and an apparatus or
means specifically designed for carrying out the said
process.
(c) If an application contains claims to more or less
than one of the combinations of categories of invention
set forth in paragraph (b) of this section, unity of invention
might not be present.
(d) If multiple products, processes of manufacture or
uses are claimed, the first invention of the category first
mentioned in the claims of the application and the first
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 recited invention of each of the other categories related
thereto will be considered as the main invention in the
claims, see PCT Article 17 (3)(a) and § 1.476 (c).
(e) The determination whether a group of inventions
is so linked as to form a single general inventive concept
shall be made without regard to whether the inventions
are claimed in separate claims or as alternatives within a
single claim.
[Added 52 FR 20047, May 28, 1987, effective July 1, 1987;
paras. (a) - (e) amended and para. (f) deleted, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993]
§ 
1.476Determination of unity of invention before the
International Searching Authority.
(a) Before establishing the international search report,
the International Searching Authority will determine
whether the international application complies with the
requirement of unity of invention as set forth in § 1.475 .
(b) If the International Searching Authority considers
that the international application does not comply with
the requirement of unity of invention, it shall inform the
applicant accordingly and invite the payment of additional
fees (note § 1.445  and PCT Art. 17 (3)(a) and PCT Rule
40). The applicant will be given a time period in
accordance with PCT Rule 40.3 to pay the additional
fees due.
(c) In the case of non-compliance with unity of
invention and where no additional fees are paid, the
international search will be performed on the invention
first mentioned (“main invention”) in the claims.
(d) Lack of unity of invention may be directly evident
before considering the claims in relation to any prior art,
or after taking the prior art into consideration, as where
a document discovered during the search shows the
invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims
joined thereby without a common inventive concept. In
such a case the International Searching Authority may
raise the objection of lack of unity of invention.
[43 FR 20466, May 11, 1978; redesignated and amended at 52
FR 20047, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993]
§ 
1.477Protest to lack of unity of invention before the
International Searching Authority.
(a) If the applicant disagrees with the holding of lack
of unity of invention by the International Searching
Authority, additional fees may be paid under protest,
accompanied by a request for refund and a statement
setting forth reasons for disagreement or why the required
additional fees are considered excessive, or both ( PCT
Rule 40.2 (c)).
(b) Protest under paragraph (a) of this section will be
examined by the Director or the Director’s designee. Inthe event that the applicant’s protest is determined to be
justified, the additional fees or a portion thereof will be
refunded.
(c) An applicant who desires that a copy of the protest
and the decision thereon accompany the international
search report when forwarded to the Designated Offices
may notify the International Searching Authority to that
effect any time prior to the issuance of the international
search report. Thereafter, such notification should be
directed to the International Bureau ( PCT Rule 40.2 (c)).
[43 FR 20466, May 11, 1978; redesignated and amended at 52
FR 20047, May 28, 1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003]
INTERNATIONAL PRELIMINARY
EXAMINATION
§ 
1.480Demand for international preliminary
examination.
(a) On the filing of a proper Demand in an application
for which the United States International Preliminary
Examining Authority is competent and for which the fees
have been paid, the international application shall be the
subject of an international preliminary examination. The
preliminary examination fee (§ 1.482 (a)(1)) and the
handling fee (§ 1.482 (b)) shall be due within the
applicable time limit set forth in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form
(PCT Rule 53). Copies of the printed Demand forms are
available from the United States Patent and Trademark
Office. Letters requesting printed Demand forms should
be marked “Mail Stop PCT.”
(c) Withdrawal of a proper Demand prior to the start
of the international preliminary examination will entitle
applicant to a refund of the preliminary examination fee
minus the amount of the transmittal fee set forth in
§ 1.445 (a)(1).
(d) The filing of a Demand shall constitute the election
of all Contracting States which are designated and are
bound by Chapter II of the Treaty on the international
filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the
applicable time limit set forth in PCT Rule 54 bis.1(a)
shall be considered as if it had not been submitted ( PCT
Rule 54 bis.1(b)).
[52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov. 28,
1988, effective Jan. 1, 1989; para. (b) amended, 58 FR 4335, Jan. 14,
1993, effective May 1, 1993; para. (a) revised, 63 FR 29614, June 1,
1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1,
1998); para. (c) removed and para. (d) redesignated as para. (c), 67 FR
520, Jan. 4, 2002, effective Apr. 1, 2002; para. (b) revised, 68 FR 14332,
Mar. 25, 2003, effective May 1, 2003; para. (a) revised, paras. (d) & (e)
added, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004]
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 § 
1.481Payment of international preliminary
examination fees.
(a) The handling and preliminary examination fees
shall be paid within the time period set in PCT Rule 57.3.
The handling fee or preliminary examination fee payable
is the handling fee or preliminary examination fee in effect
on the date of payment.
(1) If the handling and preliminary examination
fees are not paid within the time period set in PCT Rule
57.3, applicant will be notified and given one month
within which to pay the deficient fees plus a late
payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient
fees, but not exceeding an amount equal to double
the handling fee; or
(ii) An amount equal to the handling fee ( PCT
Rule 58 bis.2).
(2) The one-month time limit set in this paragraph
to pay deficient fees may not be extended.
(b) If the payment needed to cover the handling and
preliminary examination fees, pursuant to paragraph (a)
of this section, is not timely made in accordance with
PCT Rule 58 bis.1(d), the United States International
Preliminary Examination Authority will declare the
Demand to be considered as if it had not been submitted.
[63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as
final, 63 FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 58991, Oct.
20, 2003, effective Jan. 1, 2004]
§ 
1.482International preliminary examination fees.
(a) The following fees and charges for international
preliminary examination are established by the Director
under the authority of 35 U.S.C. 376:
(1) The following preliminary examination fee is
due on filing the Demand:
(i)
If an international search fee as set forth in §
1.445 (a)(2) has been paid on the international
application to the United States Patent and
Trademark Office as an International Searching
Authority $600.00
(ii)
If the International Searching Authority for
the international application was an authority other
than the United States Patent and Trademark
Office $750.00
(2)
An additional preliminary examination fee when
required, per additional invention $600.00(b) The handling fee is due on filing the Demand and
shall be as prescribed in PCT Rule 57.
[52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb. 15,
1989, effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991,
effective Dec. 27, 1991; paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug.
21, 1992, effective Oct. 1, 1992; paras. (a)(2)(i) and (b) amended, 58
FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1) and
(a)(2)(ii), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras.
(a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018, Aug. 11, 1995,
effective Oct. 1, 1995; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended,
61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(i),
(a)(1)(ii), and (a)(2)(ii) amended, 62 FR 40450, July 29, 1997, effective
Oct. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003; revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,
2004; para. (b) & (e)-(g) revised, paras. (h) & (i) added, 68 FR 58991,
Oct. 20, 2003, effective Jan. 1, 2004]
§ 
1.484Conduct of international preliminary
examination.
(a) An international preliminary examination will be
conducted to formulate a non-binding opinion as to
whether the claimed invention has novelty, involves an
inventive step (is non-obvious) and is industrially
applicable.
(b) International preliminary examination will begin
in accordance with PCT Rule 69.1.
(c) No international preliminary examination will be
conducted on inventions not previously searched by an
International Searching Authority.
(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 reply.
(e) The written opinion established by the
International Searching Authority under PCT Rule
43 bis.1 shall be considered to be a written opinion of the
United States International Preliminary Examining
Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority
may establish further written opinions under paragraph
(d) of this section.
(g) If no written opinion under paragraph (d) of this
section is necessary, or if no further written opinion under
paragraph (f) of this section is to be established, or after
any written opinion and the reply thereto or the expiration
of the time limit for reply to such written opinion, an
international preliminary examination report will be
established by the International Preliminary Examining
Authority. One copy will be submitted to the International
Bureau and one copy will be submitted to the applicant.
(h) An applicant will be permitted a personal or
telephone interview with the examiner, which may be
requested after the filing of a Demand, and must be
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 conducted during the period between the establishment
of the written opinion and the establishment of the
international preliminary examination report. 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 or, if not filed by
applicant be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the
international application is in a language other than
English, the United States International Preliminary
Examining Authority may, where the validity of the
priority claim is relevant for the formulation of the opinion
referred to in Article 33(1), invite the applicant to furnish
an English translation of the priority document within
two months from the date of the invitation. If the
translation is not furnished within that time limit, the
international preliminary report may be established as if
the priority had not been claimed.
[52 FR 20049, May 28, 1987; para. (b) amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993; paras. (d)-(f) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; para. (b) revised, 63 FR 29614,
June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040,
Dec. 1, 1998); para. (g) added, 66 FR 16004, Mar. 22, 2001, effective
Mar. 1, 2001; para. (b) & (e)-(g) revised, paras. (h) & (i) added, 68 FR
58991, Oct. 20, 2003, effective Jan. 1, 2004]
§ 
1.485Amendments by applicant during international
preliminary examination.
The applicant may make amendments at the time of filing
the Demand. The applicant may also make amendments
within the time limit set by the International Preliminary
Examining Authority for reply to any notification under
§ 1.484 (b) or to any written opinion. Any such
amendments must be made in accordance with PCT Rule
66.8.
[Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993; para. (a) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 63 FR 29614,
June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040,
Dec. 1, 1998); amended, 74 FR 31372, July 1, 2009, effective July 1,
2009]
§ 
1.488Determination of unity of invention before the
International Preliminary Examining
Authority.
(a) Before establishing any written opinion or the
international preliminary examination report, the
International Preliminary Examining Authority will
determine whether the international application complies
with the requirement of unity of invention as set forth in
§ 1.475 .
(b) If the International Preliminary Examining
Authority considers that the international application doesnot 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 searched by an International Searching
Authority.
(2) Invite the applicant to restrict the claims or pay
additional fees, pointing out the categories of invention
found, within a set time limit which will not be
extended. No international preliminary examination
will be conducted on inventions not previously searched
by an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay
additional fees within the time limit set for reply, the
International Preliminary Examining Authority will
issue a written opinion and/or establish an international
preliminary examination report on the main invention
and shall indicate the relevant facts in the said report.
In case of any doubt as to which invention is the main
invention, the invention first mentioned in the claims
and previously searched by an International Searching
Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident
before considering the claims in relation to any prior art,
or after taking the prior art into consideration, as where
a document discovered during the search shows the
invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims
joined thereby without a common inventive concept. In
such a case the International Preliminary Examining
Authority may raise the objection of lack of unity of
invention.
[52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335,
Jan. 14, 1993, effective May 1, 1993; para. (b)(3) revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.489Protest to lack of unity of invention before the
International Preliminary Examining
Authority.
(a) If the applicant disagrees with the holding of lack
of unity of invention by the International Preliminary
Examining Authority, additional fees may be paid under
protest, accompanied by a request for refund and a
statement setting forth reasons for disagreement or why
the required additional fees are considered excessive, or
both.
(b) Protest under paragraph (a) of this section will be
examined by the Director or the Director’s designee. In
the event that the applicant’s protest is determined to be
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 justified, the additional fees or a portion thereof will be
refunded.
(c) An applicant who desires that a copy of the protest
and the decision thereon accompany the international
preliminary examination report when forwarded to the
Elected Offices, may notify the International Preliminary
Examining Authority to that effect any time prior to the
issuance of the international preliminary examination
report. Thereafter, such notification should be directed to
the International Bureau.
[Added 52 FR 20050, May 28, 1987, effective July 1, 1987;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
NATIONAL STAGE
§ 
1.491National stage commencement and entry.
(a) Subject to 35 U .S.C. 371(f) , the national stage
shall commence with the expiration of the applicable time
limit under PCT Article 22(1) or (2) , or under PCT
Article 39(1)(a) .
(b) An international application enters the national
stage when the applicant has filed the documents and fees
required by 35 U .S.C. 371(c) within the period set in §
1.495 .
[Added, 52 FR 20050, May 28, 1987; revised, 66 FR 45775,
Aug. 30, 2001; revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]
§ 
1.492National stage fees.
The following fees and charges are established for
international applications entering the national stage under
35 U .S.C. 371 :
(a) The basic national fee for an international
application entering the national stage under 35 U.S.C.
371 if the basic national fee was not paid before December
8, 2004:
By a small entity ( § 1.27 (a))$165.00
By other than a small entity $330.00
(b) Search fee for an international application entering
the national stage under 35 U.S.C.  371  if the basic
national fee was not paid before December 8, 2004:
(1) If an international preliminary examination
report on the international application prepared by the
United States International Preliminary Examining
Authority or a written opinion on the international
application prepared by the United States International
Searching Authority states that the criteria of novelty,
inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article  33 (1) to (4)
have been satisfied for all of the claims presented in
the application entering the national stage:By a small entity ( § 1.27 (a))$0.00
By other than a small entity $0.00
(2) If the search fee as set forth in § 1.445 (a)(2) has
been paid on the international application to the United
States Patent and Trademark Office as an International
Searching Authority:
By a small entity ( § 1.27 (a))$50.00
By other than a small entity $100.00
(3) If an international search report on the
international application has been prepared by an
International Searching Authority other than the United
States International Searching Authority and is
provided, or has been previously communicated by the
International Bureau, to the Office:
By a small entity ( § 1.27 (a))$215.00
By other than a small entity $430.00
(4) In all situations not provided for in paragraphs
(b)(1), (b)(2), or (b)(3) of this section:
By a small entity ( § 1.27 (a))$270.00
By other than a small entity $540.00
(c) The examination fee for an international
application entering the national stage under 35 U.S.C.
371 if the basic national fee was not paid before December
8, 2004:
(1) If an international preliminary examination
report on the international application prepared by the
United States International Preliminary Examining
Authority or a written opinion on the international
application prepared by the United States International
Searching Authority states that the criteria of novelty,
inventive step (non-obviousness), and industrial
applicability, as defined in PCT Article  33(1) to (4)
have been satisfied for all of the claims presented in
the application entering the national stage:
By a small entity ( § 1.27 (a))$0.00
By other than a small entity $0.00
(2) In all situations not provided for in paragraph
(c)(1) of this section:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(d) In addition to the basic national fee, for filing or
on later presentation at any other time of each claim in
independent form in excess of 3:
By a small entity ( § 1.27 (a))$110.00
By other than a small entity $220.00
(e) In addition to the basic national fee, for filing or
on later presentation at any other time of each claim
(whether dependent or independent) in excess of 20 (note
that § 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes):
By a small entity ( § 1.27 (a))$26.00
By other than a small entity $52.00
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 (f) In addition to the basic national fee, if the
application contains, or is amended to contain, a multiple
dependent claim, per application:
By a small entity ( § 1.27 (a))$195.00
By other than a small entity $390.00
(g) If the excess claims fees required by paragraphs
(d) and (e) of this section and multiple dependent claim
fee required by paragraph (f) of this section are not paid
with the basic national fee or on later presentation of the
claims for which excess claims or multiple dependent
claim fees are due, the fees required by paragraphs (d),
(e), and (f) of this section must be paid or the claims
canceled by amendment prior to the expiration of the time
period set for reply by the Office in any notice of fee
deficiency in order to avoid abandonment.
(h) Surcharge for filing any of the search fee, the
examination fee, or the oath or declaration after the date
of the commencement of the national stage (§  1.491(a))
pursuant to § 1.495 (c)
By a small entity (§ 1.27(a))$65.00
By other than a small entity $130.00
(i)
For filing an English translation of an international
application or any annexes to an international preliminary
examination report later than thirty months after the
priority date (§§  1.495 (c) and (e)) $130.00.
(j) Application size fee for any international
application for which the basic national fee was not paid
before December 8, 2004, the specification and drawings
of which exceed 100 sheets of paper, for each additional
50 sheets or fraction thereof:
By a small entity ( § 1.27 (a))$135.00
By other than a small entity $270.00
[52 FR 20050, May 28, 1987, effective July 1, 1987; paras.
(a)(1) - (3), (b), (d)- (f), 54 FR 6893, Feb. 15, 1989, effective Apr. 17,
1989; para. (a)(5) added, 56 FR 65142, Dec. 13, 1991, effective Dec.
16, 1991; revised, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
paras. (a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 1992,
effective Oct. 1, 1992; para. (e) amended, 58 FR 4335, Jan. 14, 1993,
effective May 1, 1993; paras. (a), (b) and (d), 59 FR 43736, Aug. 25,
1994, effective Oct. 1, 1994; paras. (a), (b), & (d) amended, 60 FR
41018, Aug. 11, 1995, effective, Oct. 1, 1995; paras. (a), (b), & (d)
amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras.
(a), (b), & (d) amended, 62 FR 40450, July 29, 1997, effective Oct. 1,
1997; para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; paras. (a)-(d) revised, 63 FR 67578, Dec. 8, 1998, effective Nov.
10, 1998; para. (a)(2) revised, 64 FR 67774, Dec. 3, 1999, effective
Dec. 29, 1999; paras. (a), (b) and (d) revised, 65 FR 49193, Aug. 11,
2000, effective Oct. 1, 2000; paras. (a)-(e) revised, 65 FR 78958, Dec.
18, 2000; paras. (a)(1)-(a)(3), (a)(5), (b) and (d) revised, 66 FR 39447,
July 31, 2001, effective Oct. 1, 2001; paras. (e) and (f) revised, 67 FR
520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)(1) through (a)(3),
and (a)(5) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 2003;
paras. (a)(1) through (a)(3), (a)(5), (b), and (d) revised, 68 FR 41532,
July 14, 2003, effective Oct. 1, 2003; paras. (a)(1) through (a)(3), (a)(5),
(b) and (d) revised, 69 F R 52604, Aug. 27, 2004, effective Oct. 1, 2004;
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b)
and (c) revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 2005; paras.(h) and (j) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005;
paras. (b) and (c) revised, 70 FR 35375, June 20, 2005, effective July
1, 2005; paras. (a), (b)(2) through (b)(4), (c)(2), (d) through (f), and (j)
revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; paras.
(b)(2) through (b)(4) corrected, 72 FR 55055, Sept. 28, 2007, effective
Sept. 30, 2007; paras. (a), (b)(3), (b)(4), (c)(2), (d) through (f) and (j)
revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]
§ 
1.494[Reserved]
[Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and (g)
amended and para. (h) deleted, 58 FR 4335, Jan. 14, 1993, effective
May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997; para (c) revised, 63 FR 29614, June 1, 1998, effective,
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para (f)
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.
(c)(2) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2000;
para. (c)(2) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22,
2001; removed and reserved, 67 FR 520, Jan. 4, 2002, effective Apr. 1,
2002]
§ 
1.495Entering the national stage in the United States
of America.
(a) The applicant in an international application must
fulfill the requirements of 35 U.S.C. 371 within the time
periods set forth in paragraphs (b) and (c) of this section
in order to prevent the abandonment of the international
application as to the United States of America. The
thirty-month time period set forth in paragraphs (b), (c),
(d), (e) and (h) of this section may not be extended.
International applications for which those requirements
are timely fulfilled will enter the national stage and obtain
an examination as to the patentability of the invention in
the United States of America.
(b) To avoid abandonment of the application, the
applicant shall furnish to the United States Patent and
Trademark Office not later than the expiration of thirty
months from the priority date:
(1) A copy of the international application, unless
it has been previously communicated by the
International Bureau or unless it was originally filed
in the United States Patent and Trademark Office; and
(2) The basic national fee (see § 1.492 (a)).
(c)
(1) If applicant complies with paragraph (b) of this
section before expiration of thirty months from the
priority date, the Office will notify the applicant if he
or she has omitted any of:
(i) A translation of the international
application, as filed, into the English language, if
it was originally filed in another language and if
any English language translation of the publication
of the international application previously
submitted under 35 U.S.C. 154(d) (§  1.417 ) is not
also a translation of the international application
as filed (35 U.S.C.  371(c)(2));
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 (ii) The oath or declaration of the inventor (35
U.S.C. 371(c)(4) and § 1.497 ), if a declaration of
inventorship in compliance with § 1.497  has not
been previously submitted in the international
application under  PCT Rule 4.17 (iv) within the
time limits provided for in PCT Rule 26  ter.1;
(iii) The search fee set forth in §  1.492 (b);
(iv) The examination fee set forth in §
1.492 (c); and
(v) Any application size fee required by §
1.492 (j);
(2) A notice under paragraph (c)(1) of this section
will set a time period within which applicant must
provide any omitted translation, oath or declaration of
the inventor, search fee set forth in § 1.492 (b),
examination fee set forth in § 1.492 (c), and any
application size fee required by § 1.492 (j) in order to
avoid abandonment of the application.
(3) The payment of the processing fee set forth in
§ 1.492 (i) is required for acceptance of an English
translation later than the expiration of thirty months
after the priority date. The payment of the surcharge
set forth in § 1.492(h)  is required for acceptance of any
of the search fee, the examination fee, or the oath or
declaration of the inventor after the date of the
commencement of the national stage (§ 1.491 (a)).
(4) A “Sequence Listing” need not be translated if
the “Sequence Listing” complies with PCT Rule
12.1(d) and the description complies with PCT Rule
5.2(b).
(d) A copy of any amendments to the claims made
under PCT Article 19 , and a translation of those
amendments into English, if they were made in another
language, must be furnished not later than the expiration
of thirty months from the priority date. Amendments
under PCT Article 19  which are not received by the
expiration of thirty months from the priority date will be
considered to be canceled.
(e) A translation into English of any annexes to an
international preliminary examination report (if
applicable), if the annexes were made in another language,
must be furnished not later than the expiration of thirty
months from the priority date. Translations of the annexes
which are not received by the expiration of thirty months
from the priority date may be submitted within any period
set pursuant to paragraph (c) of this section accompanied
by the processing fee set forth in § 1.492 (f). Annexes for
which translations are not timely received will be
considered canceled.
(f) Verification of the translation of the international
application or any other document pertaining to aninternational application may be required where it is
considered necessary, if the international application or
other document was filed in a language other than English.
(g) The documents and fees submitted under
paragraphs (b) and (c) of this section must be clearly
identified as a submission to enter the national stage under
35 U.S.C. 371. Otherwise, the submission will be
considered as being made under 35 U.S.C. 111(a).
(h) An international application becomes abandoned
as to the United States thirty months from the priority
date if the requirements of paragraph (b) of this section
have not been complied with within thirty months from
the priority date. If the requirements of paragraph (b) of
this section are complied with within thirty months from
the priority date but either of any required translation of
the international application as filed or the oath or
declaration are not timely filed, an international
application will become abandoned as to the United States
upon expiration of the time period set pursuant to
paragraph (c) of this section.
[Added 52 FR 20051, May 28, 1987, effective July 1, 1987;
paras. (a) -(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan.
14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para (c) revised, 63 FR 29614, June
1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1,
1998), para. (g) revised, 65 FR 57024, Sept. 20, 2000, effective Nov.
29, 2000; para. (c)(2) revised, 66 FR 16004, Mar. 22, 2001, effective
Mar. 1, 2001 para. (c)(2) corrected, 66 FR 28053, May 22, 2001,
effective Mar. 22, 2001; heading and paras. (a)-(e) and (h) revised, 67
FR 520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (c) & (g) revised,
68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (c) revised,
70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(1)(i) and
(c)(3) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para.
(g) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and
never became effective); para. (g) revised, 74 FR 52686, Oct. 14, 2009,
effective Oct. 14, 2009 (to remove changes made by the final rules in
72 FR 46716 from the CFR)]
§ 
1.496Examination of international applications in
the national stage.
(a) International applications which have complied
with the requirements of 35 U .S.C. 371 (c) will be taken
up for action based on the date on which such
requirements were met. However, unless an express
request for early processing has been filed under 35
U.S.C. 371 (f), no action may be taken prior to one month
after entry into the national stage.
(b) National stage applications having paid therein
the search fee as set forth in §  1.492 (b)(1) and the
examination fee as set forth in §  1.492 (c)(1) may be
amended subsequent to the date of entry into the national
stage only to the extent necessary to eliminate objections
as to form or to cancel rejected claims. Such national stage
applications will be advanced out of turn for examination.
[Added 52 FR 20051, May 28, 1987, effective July 1, 1987;
para. (b) revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 2005; para.
(b) revised, 70 FR 35375, June 20, 2005, effective July 1, 2005]
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 § 
1.497Oath or declaration under 35 U.S.C. 371 (c)(4).
(a) When an applicant of an international application
desires to enter the national stage under 35 U .S.C. 371
pursuant to § 1.495 , and a declaration in compliance with
this section has not been previously submitted in the
international application under PCT Rule 4.17(i v) within
the time limits provided for in PCT Rule 26 ter.1, he or
she must file an oath or declaration that:
(1) Is executed in accordance with either §§ 1.66
or 1.68;
(2) Identifies the specification to which it is
directed;
(3) Identifies each inventor and the country of
citizenship of each inventor; and
(4) States that the person making the oath or
declaration believes the named inventor or inventors
to be the original and first inventor or inventors of the
subject matter which is claimed and for which a patent
is sought.
(b)
(1) The oath or declaration must be made by all of
the actual inventors except as provided for in §§ 1.42 ,
1.43 or 1.47.
(2) If the person making the oath or declaration or
any supplemental oath or declaration is not the inventor
(§§ 1.42, 1.43, or § 1.47), the oath or declaration shall
state the relationship of the person to the inventor, and,
upon information and belief, the facts which the
inventor would have been required to state. If the
person signing the oath or declaration is the legal
representative of a deceased inventor, the oath or
declaration shall also state that the person is a legal
representative and the citizenship, residence and
mailing address of the legal representative.
(c) Subject to paragraph (f) of this section, if the oath
or declaration meets the requirements of paragraphs (a)
and (b) of this section, the oath or declaration will be
accepted as complying with 35 U .S.C. 371 (c)(4) and §
1.495 (c). However, if the oath or declaration does not
also meet the requirements of § 1.63 , a supplemental oath
or declaration in compliance with § 1.63  or an application
data sheet will be required in accordance with § 1.67 .
(d) If the oath or declaration filed pursuant to 35
U.S.C. 371(c)(4)  and this section names an inventive
entity different from the inventive entity set forth in the
international application, or if a change to the inventive
entity has been effected under PCT Rule 92 bis
subsequent to the execution of any oath or declaration
which was filed in the application under PCT Rule
4.17(iv) or this section and the inventive entity thuschanged is different from the inventive entity identified
in any such oath or declaration, applicant must submit:
(1) A statement from each person being added as
an inventor and from each person being deleted as an
inventor that any error in inventorship in the
international application occurred without deceptive
intention on his or her part;
(2) The processing fee set forth in § 1.17(i) ; and
(3) If an assignment has been executed by any of
the original named inventors, the written consent of
the assignee (see § 3.73(b)  of this chapter); and
(4) Any new oath or declaration required by
paragraph (f) of this section.
(e) The Office may require such other information as
may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
(f) A new oath or declaration in accordance with this
section must be filed to satisfy 35 U.S.C . 371(c)(4)  if the
declaration was filed under PCT Rule 4.17(i v), and:
(1) There was a change in the international filing
date pursuant to PCT Rule 20.5(c)  after the declaration
was executed; or
(2) A change in the inventive entity was effected
under PCT Rule 92 bis after the declaration was
executed and no declaration which sets forth and is
executed by the inventive entity as so changed has been
filed in the application.
(g) If a priority claim has been corrected or added
pursuant to PCT Rule 26 bis during the international stage
after the declaration of inventorship was executed in the
international application under PCT Rule 4.17(i v),
applicant will be required to submit either a new oath or
declaration or an application data sheet as set forth in §
1.76 correctly identifying the application upon which
priority is claimed.
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987;
paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19,
1996, effective Sept. 23, 1996; para. (b)(2) revised and paras. (d) and
(e) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras.
(a), (c), and (d) revised and paras. (f) and (g) added, 66 FR 16004, Mar.
22, 2001, effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053,
May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), and (f)
revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002; para. (c)
corrected, 67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR 51559,
Sept. 10, 2007, effective Sept. 10, 2007]
§ 
1.499Unity of invention during the national stage.
If the examiner finds that a national stage application
lacks unity of invention under § 1.475 , the examiner may
in an Office action require the applicant in the response
to that action to elect the invention to which the claims
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 shall be restricted. Such requirement may be made before
any action on the merits but may be made at any time
before the final action at the discretion of the examiner.
Review of any such requirement is provided under §§
1.143  and 1.144 .
[Added 52 FR 20052, May 28, 1987, effective July 1, 1987;
amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]
Subpart D  — Ex Parte Reexamination of Patents
CITATION OF PRIOR ART
§ 
1.501Citation of prior art in patent files.
(a) At any time during the period of enforceability of
a patent, any person may cite, to the Office in writing,
prior art consisting of patents or printed publications
which that person states to be pertinent and applicable to
the patent and believes to have a bearing on the
patentability of any claim of the patent. If the citation is
made by the patent owner, the explanation of pertinency
and applicability may include an explanation of how the
claims differ from the prior art. Such citations shall be
entered in the patent file except as set forth in §§ 1.502
and 1.902 .
(b) If the person making the citation wishes his or her
identity to be excluded from the patent file and kept
confidential, the citation papers must be submitted without
any identification of the person making the submission.
(c) Citation of patents or printed publications by the
public in patent files should either: (1) Reflect that a copy
of the same has been mailed to the patent owner at the
address as provided for in § 1.33 (c); or in the event service
is not possible (2) Be filed with the Office in duplicate.
[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a)
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.502Processing of prior art citations during an ex
parte reexamination proceeding.
Citations by the patent owner under § 1.555  and by an ex
parte  reexamination requester under either § 1.510  or §
1.535  will be entered in the reexamination file during a
reexamination proceeding. The entry in the patent file of
citations submitted after the date of an order to reexamine
pursuant to § 1.525  by persons other than the patent
owner, or an ex parte  reexamination requester under
either § 1.510  or § 1.535 , will be delayed until the
reexamination proceeding has been concluded by the
issuance and publication of a reexamination certificate.
See § 1.902  for processing of prior art citations in patent
and reexamination files during an inter partes 
reexamination proceeding filed under § 1.913 .[Added 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
REQUEST FOR EX PARTE REEXAMINATION
§ 
1.510Request for ex parte reexamination.
(a) Any person may, at any time during the period of
enforceability of a patent, file a request for an ex parte 
reexamination by the Office of any claim of the patent on
the basis of prior art patents or printed publications cited
under § 1.501 . The request must be accompanied by the
fee for requesting reexamination set in § 1.20(c)(1) .
(b) Any request for reexamination must include the
following parts:
(1) A statement pointing out each substantial new
question of patentability based on prior patents and
printed publications.
(2) An identification of every claim for which
reexamination is requested, and a detailed explanation
of the pertinency and manner of applying the cited prior
art to every claim for which reexamination is requested.
If appropriate the party requesting reexamination may
also point out how claims distinguish over cited prior
art.
(3) A copy of every patent or printed publication
relied upon or referred to in paragraph (b)(1) and (2)
of this section accompanied by an English language
translation of all the necessary and pertinent parts of
any non-English language patent or printed publication.
(4) A copy of the entire patent including the front
face, drawings, and specification/claims (in double
column format) for which reexamination is requested,
and a copy of any disclaimer, certificate of correction,
or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one
side of a sheet of paper.
(5) A certification that a copy of the request filed
by a person other than the patent owner has been served
in its entirety on the patent owner at the address as
provided for in § 1.33 (c). The name and address of the
party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the
Office.
(c) If the request does not include the fee for
requesting ex parte  reexamination required by paragraph
(a) of this section and meet all the requirements by
paragraph (b) of this section, then the person identified
as requesting reexamination will be so notified and will
generally be given an opportunity to complete the request
within a specified time. Failure to comply with the notice
will result in the ex parte  reexamination request not being
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 granted a filing date, and will result in placement of the
request in the patent file as a citation if it complies with
the requirements of § 1.501 .
(d) The filing date of the request for  ex parte
reexamination is the date on which the request satisfies
all the requirements of this section.
(e) A request filed by the patent owner may include
a proposed amendment in accordance with § 1.530 .
(f) If a request is filed by an attorney or agent
identifying another party on whose behalf the request is
being filed, the attorney or agent must have a power of
attorney from that party or be acting in a representative
capacity pursuant to § 1.34.
[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a),
47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (e) revised,
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(4) and
(e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading
and para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
paras. (c) and (d) revised, 71 FR 9260, Feb. 23, 2006, effective Mar.
27, 2006; paras. (c) and (d) revised, 71 FR 44219, Aug. 4, 2006, effective
Aug. 4, 2006; para. (f) revised, 72 FR 18892, Apr. 16, 2007, effective
May 16, 2007]
§ 
1.515Determination of the request for ex parte
reexamination.
(a) Within three months following the filing date of
a request for an ex parte  reexamination, an examiner will
consider the request and determine whether or not a
substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior
art cited therein, with or without consideration of other
patents or printed publications. The examiner’s
determination will be based on the claims in effect at the
time of the determination, will become a part of the
official file of the patent, and will be mailed to the patent
owner at the address as provided for in § 1.33(c)  and to
the person requesting reexamination.
(b) Where no substantial new question of patentability
has been found, a refund of a portion of the fee for
requesting ex parte  reexamination will be made to the
requester in accordance with § 1.26(c) .
(c) The requester may seek review by a petition to the
Director under § 1.181  within one month of the mailing
date of the examiner’s determination refusing ex parte 
reexamination. Any such petition must comply with §
1.181(b) . If no petition is timely filed or if the decision
on petition affirms that no substantial new question of
patentability has been raised, the determination shall be
final and nonappealable.
[46 FR 29185, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 68
FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.520Ex parte reexamination at the initiative of the
Director.The Director, at any time during the period of
enforceability of a patent, may determine whether or not
a substantial new question of patentability is raised by
patents or printed publications which have been
discovered by the Director or which have been brought
to the Director’s attention, even though no request for
reexamination has been filed in accordance with § 1.510
or § 1.913 . The Director may initiate ex parte 
reexamination without a request for reexamination
pursuant to § 1.510  or § 1.913 . Normally requests from
outside the Office that the Director undertake
reexamination on his own initiative will not be considered.
Any determination to initiate ex parte  reexamination
under this section will become a part of the official file
of the patent and will be mailed to the patent owner at the
address as provided for in § 1.33(c) .
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 14332,
Mar. 25, 2003, effective May 1, 2003]
EX PARTE REEXAMINATION
§ 
1.525Order for ex parte reexamination.
(a) If a substantial new question of patentability is
found pursuant to § 1.515 or § 1.520 , the determination
will include an order for ex parte  reexamination of the
patent for resolution of the question. If the order for ex
parte  reexamination resulted from a petition pursuant to
§ 1.515(c) , the ex parte  reexamination will ordinarily be
conducted by an examiner other than the examiner
responsible for the initial determination under § 1.515(a) .
(b) The notice published in the Official Gazette  under
§ 1.11(c)  will be considered to be constructive notice and
 ex parte  reexamination will proceed.
[46 FR 29186, May 29, 1981, effective July 1, 1981; heading
and paras. (a) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb.
5, 2001]
§ 
1.530Statement by patent owner in ex parte
reexamination; amendment by patent owner
in ex parte or inter partes reexamination;
inventorship change in ex parte or inter partes
reexamination.
(a) Except as provided in § 1.510 (e), no statement or
other response by the patent owner in an ex parte 
reexamination proceeding shall be filed prior to the
determinations made in accordance with § 1.515  or §
1.520 . If a premature statement or other response is filed
by the patent owner, it will not be acknowledged or
considered in making the determination, and it will be
returned or discarded (at the Office’s option).
(b) The order for  ex parte  reexamination will set a
period of not less than two months from the date of the
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 order within which the patent owner may file a statement
on the new question of patentability, including any
proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall
clearly point out why the subject matter as claimed is not
anticipated or rendered obvious by the prior art patents
or printed publications, either alone or in any reasonable
combinations. Where the reexamination request was filed
by a third party requester, any statement filed by the patent
owner must be served upon the ex parte  reexamination
requester in accordance with § 1.248 .
(d) Making amendments in a reexamination
proceeding . A proposed amendment in an ex parte  or
an inter partes  reexamination proceeding is made by
filing a paper directing that proposed specified changes
be made to the patent specification, including the claims,
or to the drawings. An amendment paper directing that
proposed specified changes be made in a reexamination
proceeding may be submitted as an accompaniment to a
request filed by the patent owner in accordance with §
1.510(e) , as part of a patent owner statement in accordance
with paragraph (b) of this section, or, where permitted,
during the prosecution of the reexamination proceeding
pursuant to § 1.550(a)  or § 1.937 .
(1) Specification other than the claims . Changes
to the specification, other than to the claims, must be
made by submission of the entire text of an added or
rewritten paragraph including markings pursuant to
paragraph (f) of this section, except that an entire
paragraph may be deleted by a statement deleting the
paragraph, without presentation of the text of the
paragraph. The precise point in the specification must
be identified where any added or rewritten paragraph
is located. This paragraph applies whether the
amendment is submitted on paper or compact disc (see
 §§ 1.96  and 1.825 ).
(2)  Claims. An amendment paper must include the
entire text of each patent claim which is being proposed
to be changed by such amendment paper and of each
new claim being proposed to be added by such
amendment paper. For any claim changed by the
amendment paper, a parenthetical expression
“amended,” “twice amended,”  etc., should follow the
claim number. Each patent claim proposed to be
changed and each proposed added claim must include
markings pursuant to paragraph (f) of this section,
except that a patent claim or proposed added claim
should be canceled by a statement canceling the claim,
without presentation of the text of the claim.
(3) Drawings . Any change to the patent drawings
must be submitted as a sketch on a separate paper
showing the proposed changes in red for approval by
the examiner. Upon approval of the changes by theexaminer, only new sheets of drawings including the
changes and in compliance with §  1.84  must be filed.
Amended figures must be identified as “Amended,”
and any added figure must be identified as “New.” In
the event a figure is canceled, the figure must be
surrounded by brackets and identified as “Canceled.”
(4) The formal requirements for papers making up
the reexamination proceeding other than those set forth
in this section are set out in §  1.52 .
(e)  Status of claims and support for claim changes.
Whenever there is an amendment to the claims pursuant
to paragraph (d) of this section, there must also be
supplied, on pages separate from the pages containing the
changes, the status ( i.e., pending or canceled), as of the
date of the amendment, of all patent claims and of all
added claims, and an explanation of the support in the
disclosure of the patent for the changes to the claims made
by the amendment paper.
(f)  Changes shown by markings. Any changes relative
to the patent being reexamined which are made to the
specification, including the claims, must include the
following markings:
(1) The matter to be omitted by the reexamination
proceeding must be enclosed in brackets; and
(2) The matter to be added by the reexamination
proceeding must be underlined.
(g)  Numbering of patent claims preserved . Patent
claims may not be renumbered. The numbering of any
claims added in the reexamination proceeding must follow
the number of the highest numbered patent claim.
(h)  Amendment of disclosure may be required . The
disclosure must be amended, when required by the Office,
to correct inaccuracies of description and definition, and
to secure substantial correspondence between the claims,
the remainder of the specification, and the drawings.
(i)  Amendments made relative to patent.  All
amendments must be made relative to the patent
specification, including the claims, and drawings, which
are in effect as of the date of filing the request for
reexamination.
(j)  No enlargement of claim scope . 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,
other than the cancellation of claims, will be incorporated
into the patent by a certificate issued after the expiration
of the patent.
(k)  Amendments not effective until certificate .
Although the Office actions will treat proposed
amendments as though they have been entered, the
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 proposed amendments will not be effective until the
reexamination certificate is issued and published.
(l)  Correction of inventorship in an ex parte or inter
partes reexamination proceeding .
(1) When it appears in a patent being reexamined
that the correct inventor or inventors were not named
through error without deceptive intention on the part
of the actual inventor or inventors, the Director may,
on petition of all the parties set forth in
§ 1.324 (b)(1)-(3), including the assignees, and
satisfactory proof of the facts and payment of the fee
set forth in § 1.20(b), or on order of a court before
which such matter is called in question, include in the
reexamination certificate to be issued under § 1.570  or
§ 1.997  an amendment naming only the actual inventor
or inventors. The petition must be submitted as part of
the reexamination proceeding and must satisfy the
requirements of § 1.324 .
(2) Notwithstanding paragraph (1)(1) of this
section, if a petition to correct inventorship satisfying
the requirements of § 1.324  is filed in a reexamination
proceeding, and the reexamination proceeding is
concluded other than by a reexamination certificate
under § 1.570  or § 1.997 , a certificate of correction
indicating the change of inventorship stated in the
petition will be issued upon request by the patentee.
[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (d)
revised, para. (e) removed, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997; heading and para. (d) revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; paras. (e) through (l) added, 65 FR 54604, Sept.
8, 2000, effective Nov. 7, 2000; heading, paras. (a)-(c), para. (d)
introductory text and para. (l) revised, 65 FR 76756, Dec. 7, 2000,
effective Feb. 5, 2001; para. (l)(1) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; paras. (a), (k), and (l) revised, 72 FR 18892,
Apr. 16, 2007, effective May 16, 2007]
§ 
1.535Reply by third party requester in ex parte
reexamination.
A reply to the patent owner’s statement under § 1.530
may be filed by the ex parte  reexamination requester
within two months from the date of service of the patent
owner’s statement. Any reply by the ex parte  requester
must be served upon the patent owner in accordance with
§ 1.248 . If the patent owner does not file a statement under
§ 1.530 , no reply or other submission from the  ex parte
reexamination requester will be considered.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.540Consideration of responses in ex parte
reexamination.
The failure to timely file or serve the documents set forth
in § 1.530  or in § 1.535  may result in their being refused
consideration. No submissions other than the statementpursuant to § 1.530  and the reply by the ex parte 
reexamination requester pursuant to § 1.535  will be
considered prior to examination.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.550Conduct of ex parte reexamination
proceedings.
(a) All ex parte  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 ex parte 
reexamination order and expiration of the time for
submitting any responses, the examination will be
conducted in accordance with §§ 1.104  through 1.116  and
will result in the issuance of an ex parte  reexamination
certificate under § 1.570 .
(b) The patent owner in an  ex parte  reexamination
proceeding will be given at least thirty days to respond
to any Office action. In response to any rejection, such
response may include further statements and/or proposed
amendments or new claims to place the patent in a
condition where all claims, if amended as proposed, would
be patentable.
(c) The time for taking any action by a patent owner
in an ex parte  reexamination proceeding will be extended
only for sufficient cause and for a reasonable time
specified. Any request for such extension must be filed
on or before the day on which action by the patent owner
is due, but in no case will the mere filing of a request
effect any extension. Any request for such extension must
be accompanied by the petition fee set forth in § 1.17( g).
See § 1.304(a)  for extensions of time for filing a notice
of appeal to the U.S. Court of Appeals for the Federal
Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and
appropriate response to any Office action or any written
statement of an interview required under § 1.560 (b), the
prosecution in the ex parte  reexamination proceeding
will be a terminated prosecution, and the Director will
proceed to issue and publish a certificate concluding the
reexamination proceeding under § 1.570  in accordance
with the last action of the Office.
(e) If a response by the patent owner is not timely
filed in the Office,
(1) The delay in filing such response may be
excused if it is shown to the satisfaction of the Director
that the delay was unavoidable; a petition to accept an
unavoidably delayed response must be filed in
compliance with § 1.137(a) ; or
(2) The response may nevertheless be accepted if
the delay was unintentional; a petition to accept an
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 unintentionally delayed response must be filed in
compliance with § 1.137(b) .
(f) The reexamination requester will be sent copies
of Office actions issued during the ex parte  reexamination
proceeding. After filing of a request for ex parte 
reexamination by a third party requester, any document
filed by either the patent owner or the third party requester
must be served on the other party in the reexamination
proceeding in the manner provided by § 1.248 . The
document must reflect service or the document may be
refused consideration by the Office.
(g) The active participation of the ex parte 
reexamination requester ends with the reply pursuant to
§ 1.535 , and no further submissions on behalf of the
reexamination requester will be acknowledged or
considered. Further, no submissions on behalf of any third
parties will be acknowledged or considered unless such
submissions are:
(1) in accordance with § 1.510  or § 1.535 ; or
(2) entered in the patent file prior to the date of the
order for ex parte  reexamination pursuant to § 1.525 .
(h) Submissions by third parties, filed after the date
of the order for ex parte  reexamination pursuant to §
1.525 , must meet the requirements of and will be treated
in accordance with § 1.501(a) .
[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (c),
49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416,
Dec. 12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13,
1989, effective Aug. 20, 1989; paras. (a), (b), & (e) revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and (b) revised,
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 FR
76756, Dec. 7, 2000, effective Feb. 5, 2001; paras. (d) & (e)(1) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) revised,
69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (d) revised,
72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 
1.552Scope of reexamination in ex parte
reexamination proceedings.
(a) Claims in an  ex parte  reexamination proceeding
will be examined on the basis of patents or printed
publications and, with respect to subject matter added or
deleted in the reexamination proceeding, on the basis of
the requirements of 35 U.S.C. 112.
(b) Claims in an  ex parte  reexamination proceeding
will not be permitted to enlarge the scope of the claims
of the patent.
(c) Issues other than those indicated in paragraphs (a)
and (b) of this section will not be resolved in a
reexamination proceeding. If such issues are raised by
the patent owner or third party requester during a
reexamination proceeding, the existence of such issues
will be noted by the examiner in the next Office action,
in which case the patent owner may consider theadvisability of filing a reissue application to have such
issues considered and resolved.
[46 FR 29186, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.555Information material to patentability in ex
parte reexamination and inter partes
reexamination proceedings.
(a) A patent by its very nature is affected with a public
interest. The public interest is best served, and the most
effective reexamination occurs when, at the time a
reexamination proceeding is being conducted, the Office
is aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding.
Each individual associated with the patent owner in a
reexamination proceeding has a duty of candor and good
faith in dealing with the Office, which includes a duty to
disclose to the Office all information known to that
individual to be material to patentability in a
reexamination proceeding. The individuals who have a
duty to disclose to the Office all information known to
them to be material to patentability in a reexamination
proceeding are the patent owner, each attorney or agent
who represents the patent owner, and every other
individual who is substantively involved on behalf of the
patent owner in a reexamination proceeding. The duty to
disclose the information exists with respect to each claim
pending in the reexamination proceeding until the claim
is cancelled. Information material to the patentability of a
cancelled claim need not be submitted if the information
is not material to patentability of any claim remaining
under consideration in the reexamination proceeding. The
duty to disclose all information known to be material to
patentability in a reexamination proceeding is deemed to
be satisfied if all information known to be material to
patentability of any claim in the patent after issuance of
the reexamination certificate was cited by the Office or
submitted to the Office in an information disclosure
 statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on
the Office was practiced or attempted or the duty of
disclosure was violated through bad faith or intentional
misconduct by, or on behalf of, the patent owner in the
reexamination proceeding. Any information disclosure
statement must be filed with the items listed in § 1.98 (a)
as applied to individuals associated with the patent owner
in a reexamination proceeding, and should be filed within
two months of the date of the order for reexamination, or
as soon thereafter as possible.
(b) Under this section, information is material to
patentability in a reexamination proceeding when it is not
cumulative to information of record or being made of
record in the reexamination proceeding, and
(1) It is a patent or printed publication that
establishes, by itself or in combination with other
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 patents or printed publications, a  prima facie  case of
unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the
patent owner takes in:
(i) Opposing an argument of unpatentability
relied on by the Office, or
(ii) Asserting an argument of patentability.
A  prima facie  case of unpatentability of a claim pending
in a reexamination proceeding is established when the
information compels a conclusion that a claim is
unpatentable under the preponderance of evidence,
burden-of-proof standard, giving each term in the claim
its broadest reasonable construction consistent with the
specification, and before any consideration is given to
evidence which may be submitted in an attempt to
establish a contrary conclusion of patentability.
(c) The responsibility for compliance with this section
rests upon the individuals designated in paragraph (a) of
this section and no evaluation will be made by the Office
in the reexamination proceeding as to compliance with
this section. If questions of compliance with this section
are raised by the patent owner or the third party requester
during a reexamination proceeding, they will be noted as
unresolved questions in accordance with § 1.552(c) .
[46 FR 29187, May 29, 1981, effective July 1, 1981; 47 FR
21752, May 19, 1982, effective July 1, 1982; paras. (a) and (b), 49 FR
556, Jan. 4, 1984, effective Apr. 1, 1984; revised 57 FR 2021, Jan. 17,
1992, effective Mar. 16, 1992; heading and para. (c) revised, 65 FR
76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.560Interviews in ex parte reexamination
proceedings.
(a) Interviews in  ex parte reexamination proceedings
pending before the Office between examiners and the
owners of such patents or their attorneys or agents of
record must be conducted in the Office at such times,
within Office hours, as the respective examiners may
designate. Interviews will not be permitted at any other
time or place without the authority of the Director.
Interviews for the discussion of the patentability of claims
in patents involved in  ex parte reexamination proceedings
will not be conducted prior to the first official action.
Interviews should be arranged in advance. Requests that
reexamination requesters participate in interviews with
examiners will not be granted.
(b) In every instance of an interview with an examiner
in an ex parte  reexamination proceeding, a complete
written statement of the reasons presented at the interview
as warranting favorable action must be filed by the patent
owner. An interview does not remove the necessity for
response to Office actions as specified in § 1.111 . Patent
owner’s response to an outstanding Office action afterthe interview does not remove the necessity for filing the
written statement. The written statement must be filed as
a separate part of a response to an Office action
outstanding at the time of the interview, or as a separate
paper within one month from the date of the interview,
whichever is later.
[46 FR 29187, May 29, 1981, effective July 1, 1981; revised,
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68
FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.565Concurrent office proceedings which include
an ex parte reexamination proceeding.
(a) In an ex parte  reexamination proceeding before
the Office, the patent owner must inform the Office of
any prior or concurrent proceedings in which the patent
is or was involved such as interferences, reissues, ex parte 
reexaminations, inter partes  reexaminations, or litigation
and the results of such proceedings. See § 1.985  for
notification of prior or concurrent proceedings in an  inter
partes  reexamination proceeding.
(b) If a patent in the process of ex parte  reexamination
is or becomes involved in litigation, the Director shall
determine whether or not to suspend the reexamination.
See § 1.987  for  inter partes reexamination proceedings.
(c) If ex parte  reexamination is ordered while a prior
ex parte  reexamination proceeding is pending and
prosecution in the prior ex parte  reexamination
proceeding has not been terminated, the ex parte 
reexamination proceedings will usually be merged and
result in the issuance and publication of a single certificate
under § 1.570 . For merger of inter partes  reexamination
proceedings, see § 1.989 (a). For merger of ex parte 
reexamination and inter partes  reexamination
proceedings, see § 1.989 (b).
(d) If a reissue application and an ex parte 
reexamination proceeding on which an order pursuant to
§ 1.525  has been mailed are pending concurrently on a
patent, a decision will usually be made to merge the two
proceedings or to suspend one of the two proceedings.
Where merger of a reissue application and an ex parte 
reexamination proceeding is ordered, the merged
examination will be conducted in accordance with §§
1.171  through 1.179 , and the patent owner will be required
to place and maintain the same claims in the reissue
application and the ex parte  reexamination proceeding
during the pendency of the merged proceeding. The
examiner’s actions and responses by the patent owner in
a merged proceeding will apply to both the reissue
application and the ex parte  reexamination proceeding
and will be physically entered into both files. Any ex
parte  reexamination proceeding merged with a reissue
application shall be concluded by the grant of the reissued
patent. For merger of a reissue application and an inter
partes  reexamination, see § 1.991 .
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 (e) If a patent in the process of ex parte  reexamination
is or becomes involved in an interference, the Director
may suspend the reexamination or the interference. The
Director will not consider a request to suspend an
interference unless a motion (§ 41.121 (a)(3) of this title)
to suspend the interference has been presented to, and
denied by, an administrative patent judge, and the request
is filed within ten (10) days of a decision by an
administrative patent judge denying the motion for
suspension or such other time as the administrative patent
judge may set. For concurrent inter partes reexamination
and interference of a patent, see § 1.993 .
[46 FR 29187, May 29, 1981, effective July 1, 1981; paras. (b)
and (d), 47 FR 21753, May 19, 1982, effective July 1, 1982; paras. (b)
& (e), 49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985,
effective Feb. 11, 1985; para (a) revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000, effective
Feb. 5, 2001; paras. (b) & (e) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004,
effective Sept. 13, 2004; paras. (c) and (d) revised, 72 FR 18892, Apr.
16, 2007, effective May 16, 2007]
CERTIFICATE
§ 
1.570Issuance and publication of ex parte
reexamination certificate concludes ex parte
reexamination proceeding.
(a) To conclude an  ex parte  reexamination
proceeding, the Director will issue and publish an  ex
parte  reexamination certificate in accordance with 35
U.S.C.  307 setting forth the results of the  ex parte
reexamination proceeding and the content of the patent
following the  ex parte  reexamination proceeding.
(b) An ex parte  reexamination certificate will be
issued and published in each patent in which an ex parte 
reexamination proceeding has been ordered under § 1.525
and has not been merged with any inter partes 
reexamination proceeding pursuant to § 1.989 (a). Any
statutory disclaimer filed by the patent owner will be made
part of the  ex parte  reexamination certificate.
(c) The ex parte  reexamination certificate will be
mailed on the day of its date to the patent owner at the
address as provided for in § 1.33(c) . A copy of the  ex
parte  reexamination certificate will also be mailed to the
requester of the  ex parte  reexamination proceeding.
(d) If an  ex parte  reexamination certificate has been
issued and published which cancels all of the claims of
the patent, no further Office proceedings will be
conducted with that patent or any reissue applications or
any reexamination requests relating thereto.
(e) If the ex parte  reexamination proceeding is
terminated by the grant of a reissued patent as provided
in § 1.565(d) , the reissued patent will constitute the  exparte  reexamination certificate required by this section
and 35 U.S.C. 307.
(f) A notice of the issuance of each  ex parte
reexamination certificate under this section will be
published in the  Official Gazette  on its date of issuance.
[46 FR 29187, May 29, 1981, effective July 1, 1981; para. (e),
47 FR 21753, May 19, 1982, effective July 1, 1982; revised, 65 FR
76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (a) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; heading and paras. (a),
(b), and (d) revised, 72 FR 18892, Apr. 16, 2007, effective May 16,
2007]
Subpart E  — [Reserved]
Subpart F  — Adjustment and Extension of Patent
Term
ADJUSTMENT OF PATENT TERM DUE TO
EXAMINATION DELAY
§ 
1.701Extension of patent term due to examination
delay under the Uruguay Round Agreements
Act (original applications, other than designs,
filed on or after June 8, 1995, and before May
29, 2000).
(a) A patent, other than for designs, issued on an
application filed on or after June 8, 1995, is entitled to
extension of the patent term if the issuance of the patent
was delayed due to:
(1) Interference proceedings under 35 U .S.C.
135(a); and/or
(2) The application being placed under a secrecy
order under 35 U .S.C. 181 ; and/or
(3) Appellate review by the Board of Patent
Appeals and Interferences or by a Federal court under
35 U.S.C. 141 or 145, if the patent was issued pursuant
to a decision in the review reversing an adverse
determination of patentability and if the patent is not
subject to a terminal disclaimer due to the issuance of
another patent claiming subject matter that is not
patentably distinct from that under appellate review. If
an application is remanded by a panel of the Board of
Patent Appeals and Interferences and the remand is the
last action by a panel of the Board of Patent Appeals
and Interferences prior to the mailing of a notice of
allowance under 35 U.S.C. 151 in the application, the
remand shall be considered a decision in the review
reversing an adverse determination of patentability as
that phrase is used in 35 U.S.C. 154(b)(2)  as amended
by section 532(a) of the Uruguay Round Agreements
Act, Public Law 103-465, 108 Stat. 4809, 4983-85
(1994), and a final decision in favor of the applicant
under paragraph (c)(3) of this section. A remand by a
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 panel of the Board of Patent Appeals and Interferences
shall not be considered a decision in the review
reversing an adverse determination of patentability as
provided in this paragraph if there is filed a request for
continued examination under 35 U.S.C. 132(b) that
was not first preceded by the mailing, after such
remand, of at least one of an action under 35 U.S.C.
132 or a notice of allowance under 35 U.S.C. 151.
(b) The term of a patent entitled to extension under
paragraph (a) of this section shall be extended for the sum
of the periods of delay calculated under paragraphs (c)(1),
(c)(2), (c)(3) and (d) of this section, to the extent that these
periods are not overlapping, up to a maximum of five
years. The extension will run from the expiration date of
the patent.
(c)
(1) The period of delay under paragraph (a)(1) of
this section for an application is the sum of the
following periods, to the extent that the periods are not
overlapping:
(i) With respect to each interference in which
the application was involved, the number of days,
if any, in the period beginning on the date the
interference was declared or redeclared to involve
the application in the interference and ending on
the date that the interference was terminated with
respect to the application; and
(ii) The number of days, if any, in the period
beginning on the date prosecution in the
application was suspended by the Patent and
Trademark Office due to interference proceedings
under 35 U .S.C. 135 (a) not involving the
application and ending on the date of the
termination of the suspension.
(2) The period of delay under paragraph (a)(2) of
this section for an application is the sum of the
following periods, to the extent that the periods are not
overlapping:
(i) The number of days, if any, the application
was maintained in a sealed condition under
35 U .S.C. 181 ;
(ii) The number of days, if any, in the period
beginning on the date of mailing of an examiner’s
answer under § 41.39  of this title in the application
under secrecy order and ending on the date the
secrecy order and any renewal thereof was
removed;
(iii) The number of days, if any, in the period
beginning on the date applicant was notified that
an interference would be declared but for thesecrecy order and ending on the date the secrecy
order and any renewal thereof was removed; and
(iv) The number of days, if any, in the period
beginning on the date of notification under § 5.3 (c)
and ending on the date of mailing of the notice of
allowance under § 1.311 .
(3) The period of delay under paragraph (a)(3) of
this section is the sum of the number of days, if any,
in the period beginning on the date on which an appeal
to the Board of Patent Appeals and Interferences was
filed under 35 U .S.C. 134  and ending on the date of a
final decision in favor of the applicant by the Board of
Patent Appeals and Interferences or by a Federal court
in an appeal under 35 U.S.C. 141  or a civil action under
35 U .S.C. 145 .
(d) The period of delay set forth in paragraph (c)(3)
shall be reduced by:
(1) Any time during the period of appellate review
that occurred before three years from the filing of the
first national application for patent presented for
examination; and
(2) Any time during the period of appellate review,
as determined by the Director, during which the
applicant for patent did not act with due diligence. In
determining the due diligence of an applicant, the
Director may examine the facts and circumstances of
the applicant’s actions during the period of appellate
review to determine whether the applicant exhibited
that degree of timeliness as may reasonably be expected
from, and which is ordinarily exercised by, a person
during a period of appellate review.
(e) The provisions of this section apply only to
original patents, except for design patents, issued on
applications filed on or after June 8, 1995, and before
May 29, 2000.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;
para. (e) added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000;
para. (d)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (a)(3) revised, 69 FR 21704, Apr. 22, 2004, effective May 24,
2004; para. (c)(2)(ii) revised, 69 FR 49959, Aug. 12, 2004, effective
Sept. 13, 2004]
§ 
1.702Grounds for adjustment of patent term due to
examination delay under the Patent Term
Guarantee Act of 1999 (original applications,
other than designs, filed on or after May 29,
2000).
(a)   Failure to take certain actions within specified
time frames. Subject to the provisions of 35 U.S.C. 154(b)
and this subpart, the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to
the failure of the Office to:
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 (1) Mail at least one of a notification under 35
U.S.C. 132 or a notice of allowance under 35 U.S.C.
151 not later than fourteen months after the date on
which the application was filed under 35 U.S.C. 111(a)
or fulfilled the requirements of 35 U.S.C. 371 in an
international application;
(2) Respond to a reply under 35 U.S.C. 132 or to
an appeal taken under 35 U.S.C. 134 not later than four
months after the date on which the reply was filed or
the appeal was taken;
(3) Act on an application not later than four months
after the date of a decision by the Board of Patent
Appeals and Interferences under 35 U.S.C. 134 or 135
or a decision by a Federal court under 35 U.S.C. 141,
145, or 146 where at least one allowable claim remains
in the application; or
(4) Issue a patent not later than four months after
the date on which the issue fee was paid under 35
U.S.C. 151 and all outstanding requirements were
satisfied.
(b)   Failure to issue a patent within three years of
the actual filing date of the application . Subject to the
provisions of 35 U.S.C. 154(b)  and this subpart, the term
of an original patent shall be adjusted if the issuance of
the patent was delayed due to the failure of the Office to
issue a patent within three years after the date on which
the application was filed under 35 U.S.C. 111(a)  or the
national stage commenced under 35 U.S.C. 371(b)  or (f)
in an international application, but not including:
(1) Any time consumed by continued examination
of the application under 35 U.S.C. 132(b) ;
(2) Any time consumed by an interference
proceeding under 35 U.S.C. 135(a) ;
(3) Any time consumed by the imposition of a
secrecy order under 35 U.S.C. 181;
(4) Any time consumed by review by the Board of
Patent Appeals and Interferences or a Federal court; or
(5) Any delay in the processing of the application
by the Office that was requested by the applicant.
(c)  Delays caused by interference proceedings .
Subject to the provisions of 35 U.S.C. 154(b)  and this
subpart, the term of an original patent shall be adjusted
if the issuance of the patent was delayed due to
interference proceedings under 35 U.S.C. 135(a) .
(d)  Delays caused by secrecy order . Subject to the
provisions of 35 U.S.C. 154(b)  and this subpart, the term
of an original patent shall be adjusted if the issuance of
the patent was delayed due to the application being placed
under a secrecy order under 35 U.S.C. 181.(e) Delays caused by successful appellate review .
Subject to the provisions of 35 U.S.C. 154(b) and this
subpart, the term of an original patent shall be adjusted
if the issuance of the patent was delayed due to review
by the Board of Patent Appeals and Interferences under
35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141
or 145, if the patent was issued under a decision in the
review reversing an adverse determination of patentability.
If an application is remanded by a panel of the Board of
Patent Appeals and Interferences and the remand is the
last action by a panel of the Board of Patent Appeals and
Interferences prior to the mailing of a notice of allowance
under 35 U.S.C. 151 in the application, the remand shall
be considered a decision by the Board of Patent Appeals
and Interferences as that phrase is used in 35 U.S.C.
154(b)(1)(A)(iii), a decision in the review reversing an
adverse determination of patentability as that phrase is
used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision
in favor of the applicant under § 1.703 (e). A remand by
a panel of the Board of Patent Appeals and Interferences
shall not be considered a decision in the review reversing
an adverse determination of patentability as provided in
this paragraph if there is filed a request for continued
examination under 35 U.S.C. 132(b) that was not first
preceded by the mailing, after such remand, of at least
one of an action under 35 U.S.C. 132 or a notice of
allowance under 35 U .S.C. 151 .
(f) The provisions of this section and §§ 1.703  through
1.705  apply only to original applications, except
applications for a design patent, filed on or after May 29,
2000, and patents issued on such applications.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000;
para. (e) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004]
§ 
1.703Period of adjustment of patent term due to
examination delay.
(a) The period of adjustment under §  1.702(a)  is the
sum of the following periods:
(1) The number of days, if any, in the period
beginning on the day after the date that is fourteen
months after the date on which the application was filed
under 35 U.S.C. 111(a)  or fulfilled the requirements
of 35 U.S.C. 371 and ending on the date of mailing of
either an action under 35 U.S.C. 132, or a notice of
allowance under 35 U.S.C. 151, whichever occurs first;
(2) The number of days, if any, in the period
beginning on the day after the date that is four months
after the date a reply under § 1.111  was filed and ending
on the date of mailing of either an action under
35 U.S.C. 132, or a notice of allowance under 35 U.S.C.
151, whichever occurs first;
(3) The number of days, if any, in the period
beginning on the day after the date that is four months
after the date a reply in compliance with §  1.113(c)
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 was filed and ending on the date of mailing of either
an action under 35 U.S.C. 132, or a notice of allowance
under 35 U.S.C. 151, whichever occurs first;
(4) The number of days, if any, in the period
beginning on the day after the date that is four months
after the date an appeal brief in compliance with §
41.37  of this title was filed and ending on the date of
mailing of any of an examiner’s answer under § 41.39
of this title, an action under 35 U.S.C. 132, or a notice
of allowance under 35 U.S.C. 151, whichever occurs
first;
(5) The number of days, if any, in the period
beginning on the day after the date that is four months
after the date of a final decision by the Board of Patent
Appeals and Interferences or by a Federal court in an
appeal under 35 U.S.C. 141 or a civil action under 35
U.S.C. 145 or 146 where at least one allowable claim
remains in the application and ending on the date of
mailing of either an action under 35 U.S.C. 132 or a
notice of allowance under 35 U.S.C. 151, whichever
occurs first; and
(6) The number of days, if any, in the period
beginning on the day after the date that is four months
after the date the issue fee was paid and all outstanding
requirements were satisfied and ending on the date a
patent was issued.
(b) The period of adjustment under §  1.702(b)  is the
number of days, if any, in the period beginning on the
day after the date that is three years after the date on which
the application was filed under 35 U.S.C. 111(a)  or the
national stage commenced under 35 U.S.C. 371(b) or (f)
in an international application and ending on the date a
patent was issued, but not including the sum of the
following periods:
(1) The number of days, if any, in the period
beginning on the date on which a request for continued
examination of the application under 35 U.S.C. 132(b)
was filed and ending on the date the patent was issued;
(2)
(i) The number of days, if any, in the period
beginning on the date an interference was declared
or redeclared to involve the application in the
interference and ending on the date that the
interference was terminated with respect to the
application; and
(ii) The number of days, if any, in the period
beginning on the date prosecution in the
application was suspended by the Office due to
interference proceedings under 35 U.S.C. 135(a)
not involving the application and ending on the
date of the termination of the suspension;(3)
(i) The number of days, if any, the application
was maintained in a sealed condition under
35 U.S.C. 181;
(ii) The number of days, if any, in the period
beginning on the date of mailing of an examiner’s
answer under § 41.39  of this title in the application
under secrecy order and ending on the date the
secrecy order was removed;
(iii) The number of days, if any, in the period
beginning on the date applicant was notified that
an interference would be declared but for the
secrecy order and ending on the date the secrecy
order was removed; and
(iv) The number of days, if any, in the period
beginning on the date of notification under §  5.3(c)
of this chapter and ending on the date of mailing
of the notice of allowance under 35 U.S.C. 151;
and,
(4) The number of days, if any, in the period
beginning on the date on which a notice of appeal to
the Board of Patent Appeals and Interferences was filed
under 35 U.S.C. 134 and § 41.31  of this title and ending
on the date of the last decision by the Board of Patent
Appeals and Interferences or by a Federal court in an
appeal under 35 U.S.C. 141 or a civil action under 35
U.S.C. 145, or on the date of mailing of either an action
under 35 U.S.C. 132, or a notice of allowance under
35 U.S.C. 151, whichever occurs first, if the appeal did
not result in a decision by the Board of Patent Appeals
and Interferences.
(c) The period of adjustment under §  1.702(c)  is the
sum of the following periods, to the extent that the periods
are not overlapping:
(1) The number of days, if any, in the period
beginning on the date an interference was declared or
redeclared to involve the application in the interference
and ending on the date that the interference was
terminated with respect to the application; and
(2) The number of days, if any, in the period
beginning on the date prosecution in the application
was suspended by the Office due to interference
proceedings under 35 U.S.C. 135(a)  not involving the
application and ending on the date of the termination
of the suspension.
(d) The period of adjustment under §  1.702(d ) is the
sum of the following periods, to the extent that the periods
are not overlapping:
(1) The number of days, if any, the application was
maintained in a sealed condition under 35 U.S.C. 181;
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 (2) The number of days, if any, in the period
beginning on the date of mailing of an examiner’s
answer under § 41.39  of this title in the application
under secrecy order and ending on the date the secrecy
order was removed;
(3) The number of days, if any, in the period
beginning on the date applicant was notified that an
interference would be declared but for the secrecy order
and ending on the date the secrecy order was removed;
and
(4) The number of days, if any, in the period
beginning on the date of notification under §  5.3(c)  of
this chapter and ending on the date of mailing of the
notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under § 1.702 (e) is the
sum of the number of days, if any, in the period beginning
on the date on which a notice of appeal to the Board of
Patent Appeals and Interferences was filed under 35
U.S.C. 134 and § 41.31  of this title and ending on the date
of a final decision in favor of the applicant by the Board
of Patent Appeals and Interferences or by a Federal court
in an appeal under 35 U.S.C. 141 or a civil action under
35 U.S.C. 145.
(f) The adjustment will run from the expiration date
of the patent as set forth in 35 U.S.C. 154(a)(2) . To the
extent that periods of delay attributable to the grounds
specified in § 1.702  overlap, the period of adjustment
granted under this section shall not exceed the actual
number of days the issuance of the patent was delayed.
The term of a patent entitled to adjustment under §  1.702
and this section shall be adjusted for the sum of the
periods calculated under paragraphs (a) through (e) of
this section, to the extent that such periods are not
overlapping, less the sum of the periods calculated under
§ 1.704 . The date indicated on any certificate of mailing
or transmission under §  1.8 shall not be taken into account
in this calculation.
(g) No patent, the term of which has been disclaimed
beyond a specified date, shall be adjusted under §  1.702
and this section beyond the expiration date specified in
the disclaimer.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000;
para. (f) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004;
paras. (a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e) revised, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004]
§ 
1.704Reduction of period of adjustment of patent
term.
(a) The period of adjustment of the term of a patent
under §  1.703(a) thr ough (e)  shall be reduced by a period
equal to the period of time during which the applicant
failed to engage in reasonable efforts to concludeprosecution (processing or examination) of the
application.
(b) With respect to the grounds for adjustment set
forth in §§  1.702(a) thr ough (e) , and in particular the
ground of adjustment set forth in §  1.702(b) , an applicant
shall be deemed to have failed to engage in reasonable
efforts to conclude processing or examination of an
application for the cumulative total of any periods of time
in excess of three months that are taken to reply to any
notice or action by the Office making any rejection,
objection, argument, or other request, measuring such
three-month period from the date the notice or action was
mailed or given to the applicant, in which case the period
of adjustment set forth in §  1.703  shall be reduced by the
number of days, if any, beginning on the day after the
date that is three months after the date of mailing or
transmission of the Office communication notifying the
applicant of the rejection, objection, argument, or other
request and ending on the date the reply was filed. The
period, or shortened statutory period, for reply that is set
in the Office action or notice has no effect on the
three-month period set forth in this paragraph.
(c) Circumstances that constitute a failure of the
applicant to engage in reasonable efforts to conclude
processing or examination of an application also include
the following circumstances, which will result in the
following reduction of the period of adjustment set forth
in § 1.703  to the extent that the periods are not
overlapping:
(1) Suspension of action under §  1.103  at the
applicant’s request, in which case the period of
adjustment set forth in §  1.703  shall be reduced by the
number of days, if any, beginning on the date a request
for suspension of action under §  1.103  was filed and
ending on the date of the termination of the suspension;
(2) Deferral of issuance of a patent under §  1.314 ,
in which case the period of adjustment set forth in §
1.703  shall be reduced by the number of days, if any,
beginning on the date a request for deferral of issuance
of a patent under §  1.314  was filed and ending on the
date the patent was issued;
(3) Abandonment of the application or late payment
of the issue fee, in which case the period of adjustment
set forth in § 1.703  shall be reduced by the number of
days, if any, beginning on the date of abandonment or
the date after the date the issue fee was due and ending
on the earlier of:
(i) The date of mailing of the decision reviving
the application or accepting late payment of the
issue fee; or
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 (ii) The date that is four months after the date
the grantable petition to revive the application or
accept late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding
of abandonment or to revive an application within two
months from the mailing date of a notice of
abandonment, in which case the period of adjustment
set forth in §  1.703  shall be reduced by the number of
days, if any, beginning on the day after the date two
months from the mailing date of a notice of
abandonment and ending on the date a petition to
withdraw the holding of abandonment or to revive the
application was filed;
(5) Conversion of a provisional application under
35 U.S.C. 111(b)  to a nonprovisional application under
35 U.S.C. 111(a)  pursuant to 35 U.S.C. 111(b)(5) , in
which case the period of adjustment set forth in §  1.703
shall be reduced by the number of days, if any,
beginning on the date the application was filed under
35 U.S.C. 111(b)  and ending on the date a request in
compliance with § 1.53(c)(3)  to convert the provisional
application into a nonprovisional application was filed;
(6) Submission of a preliminary amendment or
other preliminary paper less than one month before the
mailing of an Office action under 35 U.S.C. 132 or
notice of allowance under 35 U.S.C. 151 that requires
the mailing of a supplemental Office action or notice
of allowance, in which case the period of adjustment
set forth in §  1.703  shall be reduced by the lesser of:
(i) The number of days, if any, beginning on
the day after the mailing date of the original Office
action or notice of allowance and ending on the
date of mailing of the supplemental Office action
or notice of allowance; or
(ii) Four months;
(7) Submission of a reply having an omission
(§1.135(c)) , in which case the period of adjustment set
forth in §  1.703  shall be reduced by the number of days,
if any, beginning on the day after the date the reply
having an omission was filed and ending on the date
that the reply or other paper correcting the omission
was filed;
(8) Submission of a supplemental reply or other
paper, other than a supplemental reply or other paper
expressly requested by the examiner, after a reply has
been filed, in which case the period of adjustment set
forth in §  1.703 shall be reduced by the number of days,
if any, beginning on the day after the date the initial
reply was filed and ending on the date that the
supplemental reply or other such paper was filed;(9) Submission of an amendment or other paper
after a decision by the Board of Patent Appeals and
Interferences, other than a decision designated as
containing a new ground of rejection under § 41.50  (b)
of this title or statement under § 41.50 (c) of this title,
or a decision by a Federal court, less than one month
before the mailing of an Office action under 35 U.S.C.
132 or notice of allowance under 35 U.S.C. 151 that
requires the mailing of a supplemental Office action
or supplemental notice of allowance, in which case the
period of adjustment set forth in § 1.703  shall be
reduced by the lesser of:
(i) The number of days, if any, beginning on
the day after the mailing date of the original Office
action or notice of allowance and ending on the
mailing date of the supplemental Office action or
notice of allowance; or
(ii) Four months;
(10) Submission of an amendment under §  1.312
or other paper after a notice of allowance has been
given or mailed, in which case the period of adjustment
set forth in § 1.703  shall be reduced by the lesser of:
(i) The number of days, if any, beginning on
the date the amendment under §  1.312  or other
paper was filed and ending on the mailing date of
the Office action or notice in response to the
amendment under §  1.312  or such other paper; or
(ii) Four months; and
(11) Further prosecution via a continuing
application, in which case the period of adjustment set
forth in §  1.703  shall not include any period that is prior
to the actual filing date of the application that resulted
in the patent.
(d)
(1) A paper containing only an information
disclosure statement in compliance with §§ 1.97 and
1.98 will not be considered a failure to engage in
reasonable efforts to conclude prosecution (processing
or examination) of the application under paragraphs
(c)(6) , (c)(8) , (c)(9) , or (c)(10)  of this section if it is
accompanied by a statement that each item of
information contained in the information disclosure
statement:
(i) Was first cited in any communication from
a patent office in a counterpart foreign or
international application or from the Office, and
this communication was not received by any
individual designated in § 1.56(c)  more than thirty
days prior to the filing of the information
disclosure statement; or
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 (ii) Is a communication that was issued by a
patent office in a counterpart foreign or
international application or by the Office, and this
communication was not received by any individual
designated in § 1.56(c)  more than thirty days prior
to the filing of the information disclosure
statement.
(2) The thirty-day period set forth in paragraph
(d)(1)  of this section is not extendable.
A paper containing only an information disclosure
statement in compliance with §§ 1.97 and 1.98 will not
be considered a failure to engage in reasonable efforts to
conclude prosecution (processing or examination) of the
application under paragraphs (c)(6), (c)(8), (c)(9), or
(c)(10) of this section if it is accompanied by a statement
that each item of information contained in the information
disclosure statement was first cited in any communication
from a foreign patent office in a counterpart application
and that this communication was not received by any
individual designated in §  1.56(c)  more than thirty days
prior to the filing of the information disclosure statement.
This thirty-day period is not extendable.
(e) Submission of an application for patent term
adjustment under § 1.705(b)  (with or without request
under §  1.705(c)  for reinstatement of reduced patent term
adjustment) will not be considered a failure to engage in
reasonable efforts to conclude prosecution (processing or
examination) of the application under paragraph (c)(10)
of this section.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000;
para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004;
para. (c)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,
2004; para. (c)(11) redesignated as (c)(12) and (c)(11) added, 72 FR
46716, Aug. 21, 2007 (implementation enjoined and never became
effective); para. (c)(11) removed and (c)(12) redesignated as (c)(11),
74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes
made by the final rules in 72 FR 46716 from the CFR); para. (d) revised,
76 FR 74700, Dec. 1, 2011, effective Dec. 1, 2011]
§ 
1.705Patent term adjustment determination.
(a) The notice of allowance will include notification
of any patent term adjustment under 35 U.S.C. 154(b) .
(b) Any request for reconsideration of the patent term
adjustment indicated in the notice of allowance, except
as provided in paragraph (d) of this section, and any
request for reinstatement of all or part of the term reduced
pursuant to §  1.704(b)  must be by way of an application
for patent term adjustment. An application for patent term
adjustment under this section must be filed no later than
the payment of the issue fee but may not be filed earlier
than the date of mailing of the notice of allowance. An
application for patent term adjustment under this section
must be accompanied by:(1) The fee set forth in §  1.18(e) ; and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the
basis or bases under §  1.702  for the adjustment;
(ii) The relevant dates as specified in §§
1.703(a) thr ough (e)  for which an adjustment is
sought and the adjustment as specified in §
1.703(f)  to which the patent is entitled;
(iii) Whether the patent is subject to a terminal
disclaimer and any expiration date specified in
the terminal disclaimer; and
(iv)
(A) Any circumstances during the
prosecution of the application resulting in
the patent that constitute a failure to
engage in reasonable efforts to conclude
processing or examination of such
application as set forth in § 1.704 ; or
(B) That there were no circumstances
constituting a failure to engage in
reasonable efforts to conclude processing
or examination of such application as set
forth in §  1.704 .
(c) Any application for patent term adjustment under
this section that requests reinstatement of all or part of
the period of adjustment reduced pursuant to §  1.704(b)
for failing to reply to a rejection, objection, argument, or
other request within three months of the date of mailing
of the Office communication notifying the applicant of
the rejection, objection, argument, or other request must
also be accompanied by:
(1) The fee set forth in §  1.18(f) ; and
(2) A showing to the satisfaction of the Director
that, in spite of all due care, the applicant was unable
to reply to the rejection, objection, argument, or other
request within three months of the date of mailing of
the Office communication notifying the applicant of
the rejection, objection, argument, or other request.
The Office shall not grant any request for reinstatement
for more than three additional months for each reply
beyond three months from the date of mailing of the
Office communication notifying the applicant of the
rejection, objection, argument, or other request.
(d) If there is a revision to the patent term adjustment
indicated in the notice of allowance, the patent will
indicate the revised patent term adjustment. If the patent
indicates or should have indicated a revised patent term
adjustment, any request for reconsideration of the patent
term adjustment indicated in the patent must be filed
within two months of the date the patent issued and must
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 comply with the requirements of paragraphs (b)(1) and
(b)(2) of this section. Any request for reconsideration
under this section that raises issues that were raised, or
could have been raised, in an application for patent term
adjustment under paragraph (b) of this section shall be
dismissed as untimely as to those issues.
(e) The periods set forth in this section are not
extendable.
(f) No submission or petition on behalf of a third party
concerning patent term adjustment under 35 U.S.C. 154(b)
will be considered by the Office. Any such submission
or petition will be returned to the third party, or otherwise
disposed of, at the convenience of the Office.
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 18, 2000;
para. (c)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (d) revised, 69 FR 21704, Apr. 22, 2004, effective May 24, 2004]
EXTENSION OF PATENT TERM DUE TO
REGULATORY REVIEW
§ 
1.710Patents subject to extension of the patent term.
(a) A patent is eligible for extension of the patent term
if the patent claims a product as defined in paragraph (b)
of this section, either alone or in combination with other
ingredients that read on a composition that received
permission for commercial marketing or use, or a method
of using such a product, or a method of manufacturing
such a product, and meets all other conditions and
requirements of this subpart.
(b) The term  product  referred to in paragraph (a) of
this section means —
(l) The active ingredient of a new human drug,
antibiotic drug, or human biological product (as those
terms are used in the Federal Food, Drug, and Cosmetic
Act and the Public Health Service Act) including any
salt or ester of the active ingredient, as a single entity
or in combination with another active ingredient; or
(2) The active ingredient of a new animal drug or
veterinary biological product (as those terms are used
in the Federal Food, Drug, and Cosmetic Act and the
Virus-Serum-Toxin Act) that is not primarily
manufactured using recombinant DNA, recombinant
RNA, hybridoma technology, or other processes
including site specific genetic manipulation techniques,
including any salt or ester of the active ingredient, as
a single entity or in combination with another active
ingredient; or
(3) Any medical device, food additive, or color
additive subject to regulation under the Federal Food,
Drug, and Cosmetic Act.[Added 52 FR 9394, Mar. 24, 1987, effective May 26, 1987;
amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 
1.720Conditions for extension of patent term.
The term of a patent may be extended if:
(a) The patent claims a product or a method of using
or manufacturing a product as defined in § 1.710 ;
(b) The term of the patent has never been previously
extended, except for extensions issued pursuant to §§
1.701 , 1.760 , or 1.790 ;
(c) An application for extension is submitted in
compliance with § 1.740 ;
(d) The product has been subject to a regulatory
review period as defined in 35 U .S.C. 156 (g) before its
commercial marketing or use;
(e) The product has received permission for
commercial marketing or use and —
(1) The permission for the commercial marketing
or use of the product is the first received permission
for commercial marketing or use under the provision
of law under which the applicable regulatory review
occurred, or
(2) In the case of a patent other than one directed
to subject matter within § 1.710 (b)(2) claiming a
method of manufacturing the product that primarily
uses recombinant DNA technology in the manufacture
of the product, the permission for the commercial
marketing or use is the first received permission for
the commercial marketing or use of a product
manufactured under the process claimed in the patent,
or
(3) In the case of a patent claiming a new animal
drug or a veterinary biological product that is not
covered by the claims in any other patent that has been
extended, and has received permission for the
commercial marketing or use in non-food-producing
animals and in food-producing animals, and was not
extended on the basis of the regulatory review period
for use in non-food-producing animals, the permission
for the commercial marketing or use of the drug or
product after the regulatory review period for use in
food-producing animals is the first permitted
commercial marketing or use of the drug or product
for administration to a food-producing animal.
(f) The application is submitted within the sixty-day
period beginning on the date the product first received
permission for commercial marketing or use under the
provisions of law under which the applicable regulatory
review period occurred; or in the case of a patent claiming
a method of manufacturing the product which primarily
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 uses recombinant DNA technology in the manufacture of
the product, the application for extension is submitted
within the sixty-day period beginning on the date of the
first permitted commercial marketing or use of a product
manufactured under the process claimed in the patent; or
in the case of a patent that claims a new animal drug or
a veterinary biological product that is not covered by the
claims in any other patent that has been extended, and
said drug or product has received permission for the
commercial marketing or use in non-food-producing
animals, the application for extension is submitted within
the sixty-day period beginning on the date of the first
permitted commercial marketing or use of the drug or
product for administration to a food-producing animal;
(g) The term of the patent, including any interim
extension issued pursuant to § 1.790 , has not expired
before the submission of an application in compliance
with § 1.741 ; and
(h) No other patent term has been extended for the
same regulatory review period for the product.
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987;
paras. (e) & (f) amended, 54 FR 30375, July 20, 1989, effective Aug.
22, 1989; paras. (b) and (g) revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000]
§ 
1.730Applicant for extension of patent term;
signature requirements.
(a) Any application for extension of a patent term
must be submitted by the owner of record of the patent
or its agent and must comply with the requirements of §
1.740 .
(b) If the application is submitted by the patent owner,
the application must be signed either by:
(1) The patent owner in compliance with §  3.73(b)
of this chapter; or
(2) A registered practitioner on behalf of the patent
owner.
(c) If the application is submitted on behalf of the
patent owner by an agent of the patent owner ( e.g., a
licensee of the patent owner), the application must be
signed by a registered practitioner on behalf of the agent.
The Office may require proof that the agent is authorized
to act on behalf of the patent owner.
(d) If the application is signed by a registered
practitioner, the Office may require proof that the
practitioner is authorized to act on behalf of the patent
owner or agent of the patent owner.
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 
1.740Formal requirements for application for
extension of patent term; correction of
informalities.(a) An application for extension of patent term must
be made in writing to the Director. A formal application
for the extension of patent term must include:
(1) A complete identification of the approved
product as by appropriate chemical and generic name,
physical structure or characteristics;
(2) A complete identification of the Federal statute
including the applicable provision of law under which
the regulatory review occurred;
(3) An identification of the date on which the
product received permission for commercial marketing
or use under the provision of law under which the
applicable regulatory review period occurred;
(4) In the case of a drug product, an identification
of each active ingredient in the product and as to each
active ingredient, a statement that it has not been
previously approved for commercial marketing or use
under the Federal Food, Drug, and Cosmetic Act, the
Public Health Service Act, or the Virus-Serum-Toxin
Act, or a statement of when the active ingredient was
approved for commercial marketing or use (either alone
or in combination with other active ingredients), the
use for which it was approved, and the provision of
law under which it was approved.
(5) A statement that the application is being
submitted within the sixty day period permitted for
submission pursuant to § l.720(f)  and an identification
of the date of the last day on which the application
could be submitted;
(6) A complete identification of the patent for which
an extension is being sought by the name of the
inventor, the patent number, the date of issue, and the
date of expiration;
(7) A copy of the patent for which an extension is
being sought, including the entire specification
(including claims) and drawings;
(8) A copy of any disclaimer, certificate of
correction, receipt of maintenance fee payment, or
reexamination certificate issued in the patent;
(9) A statement that the patent claims the approved
product, or a method of using or manufacturing the
approved product, and a showing which lists each
applicable patent claim and demonstrates the manner
in which at least one such patent claim reads on:
(i) The approved product, if the listed claims
include any claim to the approved product;
(ii) The method of using the approved product,
if the listed claims include any claim to the method
of using the approved product; and
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 (iii) The method of manufacturing the
approved product, if the listed claims include any
claim to the method of manufacturing the
approved product;
(10) A statement beginning on a new page of the
relevant dates and information pursuant to
35 U.S.C. 156(g)  in order to enable the Secretary of
Health and Human Services or the Secretary of
Agriculture, as appropriate, to determine the applicable
regulatory review period as follows:
(i) For a patent claiming a human drug,
antibiotic, or human biological product:
(A) The effective date of the
investigational new drug (IND) application
and the IND number;
(B) The date on which a new drug
application (NDA) or a Product License
Application (PLA) was initially submitted
and the NDA or PLA number; and
(C) The date on which the NDA was
approved or the Product License issued;
(ii) For a patent claiming a new animal drug:
(A) The date a major health or
environmental effects test on the drug was
initiated, and any available substantiation
of that date, or the date of an exemption
under subsection (j) of Section 512 of the
Federal Food, Drug, and Cosmetic Act
became effective for such animal drug;
(B) The date on which a new animal
drug application (NADA) was initially
submitted and the NADA number; and
(C) The date on which the NADA was
approved;
(iii) For a patent claiming a veterinary
biological product:
(A) The date the authority to prepare
an experimental biological product under
the Virus-Serum-Toxin Act became
effective;
(B) The date an application for a
license was submitted under the
Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color
additive:
(A) The date a major health or
environmental effects test on the additivewas initiated and any available
substantiation of that date;
(B) The date on which a petition for
product approval under the Federal Food,
Drug and Cosmetic Act was initially
submitted and the petition number; and
(C) The date on which the FDA
published a  Federal Register notice listing
the additive for use;
(v) For a patent claiming a medical device:
(A) The ef
fective date of the
investigational device exemption (IDE)
and the IDE number, if applicable, or the
date on which the applicant began the first
clinical investigation involving the device,
if no IDE was submitted, and any available
substantiation of that date;
(B) The date on which the application
for product approval or notice of
completion of a product development
protocol under Section 515 of the Federal
Food, Drug and Cosmetic Act was initially
submitted and the number of the
application; and
(C) The date on which the application
was approved or the protocol declared to
be completed;
(11) A brief description beginning on a new page
of the significant activities undertaken by the marketing
applicant during the applicable regulatory review period
with respect to the approved product and the significant
dates applicable to such activities;
(12) A statement beginning on a new page that in
the opinion of the applicant the patent is eligible for
the extension and a statement as to the length of
extension claimed, including how the length of
extension was determined;
(13) A statement that applicant acknowledges a
duty to disclose to the Director of the United States
Patent and Trademark Office and the Secretary of
Health and Human Services or the Secretary of
Agriculture any information which is material to the
determination of entitlement to the extension sought
(see  § 1.765 );
(14) The prescribed fee for receiving and acting
upon the application for extension (see §  1.20(j) ); and
(15) The name, address, and telephone number of
the person to whom inquiries and correspondence
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 relating to the application for patent term extension are
to be directed.
(b) The application under this section must be
accompanied by two additional copies of such application
(for a total of three copies).
(c) If an application for extension of patent term is
informal under this section, the Office will so notify the
applicant. The applicant has two months from the mail
date of the notice, or such time as is set in the notice,
within which to correct the informality. Unless the notice
indicates otherwise, this time period may be extended
under the provisions of §  1.136 .
[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987;
para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989;
para. (a)(14), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;
heading, introductory text of paragraph (a), and paras. (a)(9), (a)(10),
(a)(14), (a)(15), (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective
Sept. 8, 2000; paras. (a)(16) and (a)(17) removed, 65 FR 54604, Sept.
8, 2000, effective Sept. 8, 2000; paras. (a) & (a)(13) revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.741Complete application given a filing date;
petition procedure.
(a) The filing date of an application for extension of
a patent term is the date on which a complete application
is received in the Office or filed pursuant to the procedures
set forth in § 1.8 or § 1.10 . A complete application must
include:
(1) An identification of the approved product;
(2) An identification of each Federal statute under
which regulatory review occurred;
(3) An identification of the patent for which an
extension is being sought;
(4) An identification of each claim of the patent
which claims the approved product or a method of
using or manufacturing the approved product;
(5) Sufficient information to enable the Director to
determine under subsections (a) and (b) of 35 U.S.C.
156 the eligibility of a patent for extension, and the
rights that will be derived from the extension, and
information to enable the Director and the Secretary
of Health and Human Services or the Secretary of
Agriculture to determine the length of the regulatory
review period; and
(6) A brief description of the activities undertaken
by the marketing applicant during the applicable
regulatory review period with respect to the approved
product and the significant dates applicable to such
activities.
(b) If an application for extension of patent term is
incomplete under this section, the Office will so notify
the applicant. If applicant requests review of a notice thatan application is incomplete, or review of the filing date
accorded an application under this section, applicant must
file a petition pursuant to this paragraph accompanied by
the fee set forth in §  1.17(f)  within two months of the mail
date of the notice that the application is incomplete, or
the notice according the filing date complained of. Unless
the notice indicates otherwise, this time period may be
extended under the provisions of §  1.136 .
[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987;
para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989;
para. (a) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993;
para. (a) correcting amendment, 61 FR 64027, Dec. 3, 1996; heading,
introductory text of paragraph (a), and paras. (a)(5) and (b) revised, 65
FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(5) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b) revised,
69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.750Determination of eligibility for extension of
patent term.
A determination as to whether a patent is eligible for
extension may be made by the Director solely on the basis
of the representations contained in the application for
extension filed in compliance with § 1.740  or § 1.790 .
This determination may be delegated to appropriate Patent
and Trademark Office officials and may be made at any
time before the certificate of extension is issued. The
Director or other appropriate officials may require from
applicant further information or make such independent
inquiries as desired before a final determination is made
on whether a patent is eligible for extension. In an
application for extension filed in compliance with § 1.740 ,
a notice will be mailed to applicant containing the
determination as to the eligibility of the patent for
extension and the period of time of the extension, if any.
This notice shall constitute the final determination as to
the eligibility and any period of extension of the patent.
A single request for reconsideration of a final
determination may be made if filed by the applicant within
such time as may be set in the notice of final
determination or, if no time is set, within one month from
the date of the final determination. The time periods set
forth herein are subject to the provisions of § 1.136 .
[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987;
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.760Interim extension of patent term under
35 U .S.C. 156 (e)(2).
An applicant who has filed a formal application for
extension in compliance with §  1.740  may request one or
more interim extensions for periods of up to one year each
pending a final determination on the application pursuant
to § 1.750 . Any such request should be filed at least three
months prior to the expiration date of the patent. The
Director may issue interim extensions, without a request
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 by the applicant, for periods of up to one year each until
a final determination is made. The patent owner or agent
will be notified when an interim extension is granted and
notice of the extension will be published in the  Official
Gazette of the United States Patent and Trademark Office.
The notice will be recorded in the official file of the patent
and will be considered as part of the original patent. In
no event will the interim extensions granted under this
section be longer than the maximum period for extension
to which the applicant would be eligible.
[Added, 52 FR 9396, Mar. 24, 1987, effective May 26, 1987;
heading revised, 60 FR 25615, May 12, 1995, effective July 11, 1995;
revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.765Duty of disclosure in patent term extension
proceedings.
(a) A duty of candor and good faith toward the Patent
and Trademark Office and the Secretary of Health and
Human Services or the Secretary of Agriculture rests on
the patent owner or its agent, on each attorney or agent
who represents the patent owner and on every other
individual who is substantively involved on behalf of the
patent owner in a patent term extension proceeding. All
such individuals who are aware, or become aware, of
material information adverse to a determination of
entitlement to the extension sought, which has not been
previously made of record in the patent term extension
proceeding must bring such information to the attention
of the Office or the Secretary, as appropriate, in
accordance with paragraph (b) of this section, as soon as
it is practical to do so after the individual becomes aware
of the information. Information is material where there
is a substantial likelihood that the Office or the Secretary
would consider it important in determinations to be made
in the patent term extension proceeding.
(b) Disclosures pursuant to this section must be
accompanied by a copy of each written document which
is being disclosed. The disclosure must be made to the
Office or the Secretary, as appropriate, unless the
disclosure is material to determinations to be made by
both the Office and the Secretary, in which case duplicate
copies, certified as such, must be filed in the Office and
with the Secretary. Disclosures pursuant to this section
may be made to the Office or the Secretary, as appropriate,
through an attorney or agent having responsibility on
behalf of the patent owner or its agent for the patent term
extension proceeding or through a patent owner acting
on his or her own behalf. Disclosure to such an attorney,
agent or patent owner shall satisfy the duty of any other
individual. Such an attorney, agent or patent owner has
no duty to transmit information which is not material to
the determination of entitlement to the extension sought.(c) No patent will be determined eligible for extension
and no extension will be issued if it is determined that
fraud on the Office or the Secretary was practiced or
attempted or the duty of disclosure was violated through
bad faith or gross negligence in connection with the patent
term extension proceeding. If it is established by clear
and convincing evidence that any fraud was practiced or
attempted on the Office or the Secretary in connection
with the patent term extension proceeding or that there
was any violation of the duty of disclosure through bad
faith or gross negligence in connection with the patent
term extension proceeding, a final determination will be
made pursuant to § 1.750  that the patent is not eligible
for extension.
(d) The duty of disclosure pursuant to this section
rests on the individuals identified in paragraph (a) of this
section and no submission on behalf of third parties, in
the form of protests or otherwise, will be considered by
the Office. Any such submissions by third parties to the
Office will be returned to the party making the
submission, or otherwise disposed of, without
consideration by the Office.
[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 1987,
para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989;
para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]
§ 
1.770Express 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 § 1.750  by filing in the Office, in duplicate,
a written declaration of withdrawal signed by the owner
of record of the patent or its agent. An application may
not be expressly withdrawn after the date permitted for
reply to the final determination on the application. An
express withdrawal pursuant to this section is effective
when acknowledged in writing by the Office. The filing
of an express withdrawal pursuant to this section and its
acceptance by the Office does not entitle applicant to a
refund of the filing fee ( § 1.20 (j)) or any portion thereof.
[Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987; 56
FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR 53131,
Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.775Calculation of patent term extension for a
human drug, antibiotic drug, or human
biological product.
(a) If a determination is made pursuant to § 1.750  that
a patent for a human drug, antibiotic drug, or human
biological product is eligible for extension, the term shall
be extended by the time as calculated in days in the
manner indicated by this section. The patent term
extension will run from the original expiration date of the
patent or any earlier date set by terminal disclaimer ( §
1.321 ).
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 (b) The term of the patent for a human drug, antibiotic
drug or human biological product will be extended by the
length of the regulatory review period for the product as
determined by the Secretary of Health and Human
Services, reduced as appropriate pursuant to paragraphs
(d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a
human drug, antibiotic drug or human biological product
will be determined by the Secretary of Health and Human
Services. Under 35 U .S.C. 156 (g)(1)(B), it is the sum of
—
(1) The number of days in the period beginning on
the date an exemption under subsection (i) of section
505 or subsection (d) of section 507 of the Federal
Food, Drug, and Cosmetic Act became effective for
the approved product and ending on the date an
application was initially submitted for such product
under those sections or under section 351 of the Public
Health Service Act; and
(2) The number of days in the period beginning on
the date the application was initially submitted for the
approved product under section 351 of the Public
Health Service Act, subsection (b) of section 505 or
section 507 of the Federal Food, Drug, and Cosmetic
Act and ending on the date such application was
approved under such section.
(d) The term of the patent as extended for a human
drug, antibiotic drug or human biological product will be
determined by—
(1) Subtracting from the number of days determined
by the Secretary of Health and Human Services to be
in the regulatory review period:
(i) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section which
were on and before the date on which the patent
issued;
(ii) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section during
which it is determined under 35 U .S.C.
156(d)(2)(B) by the Secretary of Health and
Human Services that applicant did not act with
due diligence;
(iii) One-half the number of days remaining
in the period defined by paragraph (c)(1) of this
section after that period is reduced in accordance
with paragraphs (d)(1)(i) and (ii) of this section;
half days will be ignored for purposes of
subtraction;
(2) By adding the number of days determined in
paragraph (d)(1) of this section to the original term of
the patent as shortened by any terminal disclaimer;(3) By adding 14 years to the date of approval of
the application under section 351 of the Public Health
Service Act, or subsection (b) of section 505 or section
507 of the Federal Food, Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the
periods obtained pursuant to paragraphs (d)(2) and
(d)(3) of this section with each other and selecting the
earlier date;
(5) If the original patent was issued after September
24, 1984,
(i) By adding 5 years to the original expiration
date of the patent or any earlier date set by
terminal disclaimer; and
(ii) By comparing the dates obtained pursuant
to paragraphs (d)(4) and (d)(5)(i) of this section
with each other and selecting the earlier date;
(6) If the original patent was issued before
September 24, 1984, and
(i) If no request was submitted for an
exemption under subsection (i) of section 505 or
subsection (d) of section 507 of the Federal Food,
Drug, and Cosmetic Act before September 24,
1984, by—
(A) Adding 5 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer; and
(B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other
and selecting the earlier date; or
(ii) If a request was submitted for an
exemption under subsection (i) of section 505 or
subsection (d) of section 507 of the Federal Food,
Drug, or Cosmetic Act before September 24, 1984
and the commercial marketing or use of the
product was not approved before September 24,
1984, by -
(A) Adding 2 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer, and
(B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other
and selecting the earlier filing date.
[Added, 52 FR 9397, Mar. 24 1987, effective May 26, 1987]
§ 
1.776Calculation of patent term extension for a food
additive or color additive.
(a) If a determination is made pursuant to § 1.750  that
a patent for a food additive or color additive is eligible
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 for extension, the term shall be extended by the time as
calculated in days in the manner indicated by this section.
The patent term extension will run from the original
expiration date of the patent or earlier date set by terminal
disclaimer ( § 1.321 ).
(b) The term of the patent for a food additive or color
additive will be extended by the length of the regulatory
review period for the product as determined by the
Secretary of Health and Human Services, reduced as
appropriate pursuant to paragraphs (d)(1) through (d)(6)
of this section.
(c) The length of the regulatory review period for a
food additive or color additive will be determined by the
Secretary of Health and Human Services. Under 35 U.S.C.
156(g)(2)(B), it is the sum of -
(1) The number of days in the period beginning on
the date a major health or environmental effects test
on the additive was initiated and ending on the date a
petition was initially submitted with respect to the
approved product under the Federal Food, Drug, and
Cosmetic Act requesting the issuance of a regulation
for use of the product; and
(2) The number of days in the period beginning on
the date a petition was initially submitted with respect
to the approved product under the Federal Food, Drug
and Cosmetic Act requesting the issuance of a
regulation for use of the product, and ending on the
date such regulation became effective or, if objections
were filed to such regulation, ending on the date such
objections were resolved and commercial marketing
was permitted or, if commercial marketing was
permitted and later revoked pending further proceedings
as a result of such objections, ending on the date such
proceedings were finally resolved and commercial
marketing was permitted.
(d) The term of the patent as extended for a food
additive or color additive will be determined by
(1) Subtracting from the number of days determined
by the Secretary of Health and Human Services to be
in the regulatory review period:
(i) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section which
were on and before the date on which the patent
issued;
(ii) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section during
which it is determined under 35 U .S.C.
156(d)(2)(B) by the Secretary of Health and
Human Services that applicant did not act with
due diligence;
(iii) The number of days equal to one-half the
number of days remaining in the period definedby paragraph (c)(1) of this section after that period
is reduced in accordance with paragraphs (d)(1)
(i) and (ii) of this section; half days will be ignored
for purposes of subtraction;
(2) By adding the number of days determined in
paragraph (d)(1) of this section to the original term of
the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date a regulation for
use of the product became effective or, if objections
were filed to such regulation, to the date such objections
were resolved and commercial marketing was permitted
or, if commercial marketing was permitted and later
revoked pending further proceedings as a result of such
objections, to the date such proceedings were finally
resolved and commercial marketing was permitted;
(4) By comparing the dates for the ends of the
periods obtained pursuant to paragraphs (d)(2) and
(d)(3) of this section with each other and selecting the
earlier date;
(5) If the original patent was issued after September
24, 1984,
(i) By adding 5 years to the original expiration
date of the patent or earlier date set by terminal
disclaimer; and
(ii) By comparing the dates obtained pursuant
to paragraphs (d)(4) and (d)(5)(i) of this section
with each other and selecting the earlier date;
(6) If the original patent was issued before
September 24, 1984, and
(i) If no major health or environmental effects
test was initiated and no petition for a regulation
or application for registration was submitted
before September 24, 1984, by
(A) Adding 5 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer, and
(B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other
and selecting the earlier date; or
(ii) If a major health or environmental effects
test was initiated or a petition for a regulation or
application for registration was submitted by
September 24, 1984, and the commercial
marketing or use of the product was not approved
before September 24, 1984, by —
(A) Adding 2 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer, and
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 (B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other
and selecting the earlier date.
[Added, 52 FR 9397, Mar. 24, 1987, effective May 26, 1987]
§ 
1.777Calculation of patent term extension for a
medical device.
(a) If a determination is made pursuant to § 1.750  that
a patent for a medical device is eligible for extension, the
term shall be extended by the time as calculated in days
in the manner indicated by this section. The patent term
extension will run from the original expiration date of the
patent or earlier date as set by terminal disclaimer
(§ 1.321 ).
(b) The term of the patent for a medical device will
be extended by the length of the regulatory review period
for the product as determined by the Secretary of Health
and Human Services, reduced as appropriate pursuant to
paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a
medical device will be determined by the Secretary of
Health and Human Services. Under 35 U .S.C.
156(g)(3)(B), it is the sum of
(1) The number of days in the period beginning on
the date a clinical investigation on humans involving
the device was begun and ending on the date an
application was initially submitted with respect to the
device under section 515 of the Federal Food, Drug,
and Cosmetic Act; and
(2) The number of days in the period beginning on
the date the application was initially submitted with
respect to the device under section 515 of the Federal
Food, Drug, and Cosmetic Act, and ending on the date
such application was approved under such Act or the
period beginning on the date a notice of completion of
a product development protocol was initially submitted
under section 515(f)(5) of the Act and ending on the
date the protocol was declared completed under section
515(f)(6) of the Act.
(d) The term of the patent as extended for a medical
device will be determined by —
(1) Subtracting from the number of days determined
by the Secretary of Health and Human Services to be
in the regulatory review period pursuant to paragraph
(c) of this section:
(i) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section which
were on and before the date on which the patent
issued;(ii) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section during
which it is determined under 35 U .S.C.
156(d)(2)(B) by the Secretary of Health and
Human Services that applicant did not act with
due diligence;
(iii) One-half the number of days remaining
in the period defined by paragraph (c)(1) of this
section after that period is reduced in accordance
with paragraphs (d)(1) (i) and (ii) of this section;
half days will be ignored for purposes of
subtraction;
(2) By adding the number of days determined in
paragraph (d)(1) of this section to the original term of
the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of approval of
the application under section 515 of the Federal Food,
Drug, and Cosmetic Act or the date a product
development protocol was declared completed under
section 515(f)(6) of the Act;
(4) By comparing the dates for the ends of the
periods obtained pursuant to paragraphs (d)(2) and
(d)(3) of this section with each other and selecting the
earlier date;
(5) If the original patent was issued after September
24, 1984,
(i) By adding 5 years to the original expiration
date of the patent or earlier date set by terminal
disclaimer; and
(ii) By comparing the dates obtained pursuant
to paragraphs (d)(4) and (d)(5)(i) of this section
with each other and selecting the earlier date;
(6) If the original patent was issued before
September 24, 1984, and
(i) If no clinical investigation on
humans involving the device was begun or no
product development protocol was submitted
under section 515(f)(5) of the Federal Food, Drug,
and Cosmetic Act before September 24, 1984, by
—
(A) Adding 5 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer and
(B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other
and selecting the earlier date; or
(ii) If a clinical investigation on humans
involving the device was begun or a product
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 development protocol was submitted under section
515(f)(5) of the Federal Food, Drug, and Cosmetic
Act before September 24, 1984 and the
commercial marketing or use of the product was
not approved before September 24, 1984, by
(A) Adding 2 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer, and
(B) By comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other
and selecting the earlier date.
[Added, 52 FR 9398, Mar. 24 1987, effective May 26, 1987]
§ 
1.778Calculation of patent term extension for an
animal drug product.
(a) If a determination is made pursuant to § 1.750  that
a patent for an animal drug is eligible for extension, the
term shall be extended by the time as calculated in days
in the manner indicated by this section. The patent term
extension will run from the original expiration date of the
patent or any earlier date set by terminal disclaimer ( §
1.321 ).
(b) The term of the patent for an animal drug will be
extended by the length of the regulatory review period
for the drug as determined by the Secretary of Health and
Human Services, reduced as appropriate pursuant to
paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for an
animal drug will be determined by the Secretary of Health
and Human Services. Under 35 U .S.C. 156 (g)(4)(B), it
is the sum of —
(1) The number of days in the period beginning on
the earlier of the date a major health or environmental
effects test on the drug was initiated or the date an
exemption under subsection (j) of section 512 of the
Federal Food, Drug, and Cosmetic Act became
effective for the approved animal drug and ending on
the date an application was initially submitted for such
animal drug under section 512 of the Federal Food,
Drug, and Cosmetic Act; and
(2) The number of days in the period beginning on
the date the application was initially submitted for the
approved animal drug under subsection (b) of section
512 of the Federal Food, Drug, and Cosmetic Act and
ending on the date such application was approved under
such section.
(d) The term of the patent as extended for an animal
drug will be determined by —(1) Subtracting from the number of days determined
by the Secretary of Health and Human Services to be
in the regulatory review period:
(i) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section that
were on and before the date on which the patent
issued;
(ii) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section during
which it is determined under 35 U .S.C.
156(d)(2)(B) by the Secretary of Health and
Human Services that applicant did not act with
due diligence;
(iii) One-half the number of days remaining
in the period defined by paragraph (c)(1) of this
section after that period is reduced in accordance
with paragraphs (d)(1)(i) and (ii) of this section;
half days will be ignored for purposes of
subtraction;
(2) By adding the number of days determined in
paragraph (d)(1) of this section to the original term of
the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of approval of
the application under section 512 of the Federal Food,
Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the
periods obtained pursuant to paragraphs (d)(2) and
(d)(3) of this section with each other and selecting the
earlier date;
(5) If the original patent was issued after November
16, 1988, by —
(i) Adding 5 years to the original expiration
date of the patent or any earlier date set by
terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to
paragraphs (d)(4) and (d)(5)(i) of this section with
each other and selecting the earlier date;
(6) If the original patent was issued before
November 16, 1988, and
(i) If no major health or environmental effects
test on the drug was initiated and no request was
submitted for an exemption under subsection (j) of
section 512 of the Federal Food, Drug, and
Cosmetic Act before November 16, 1988, by —
(A) Adding 5 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer; and
(B) Comparing the dates obtained
pursuant to paragraphs (d)(4) and
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 (d)(6)(i)(A) of this section with each other
and selecting the earlier date; or
(ii) If a major health or environmental effects
test was initiated or a request for an exemption
under subsection (j) of section 512 of the Federal
Food, Drug, and Cosmetic Act was submitted
before November 16, 1988, and the application
for commercial marketing or use of the animal
drug was not approved before November 16, 1988,
by —
(A) Adding 3 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer, and
(B) Comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other
and selecting the earlier date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 
1.779Calculation of patent term extension for a
veterinary biological product.
(a) If a determination is made pursuant to § 1.750  that
a patent for a veterinary biological product is eligible for
extension, the term shall be extended by the time as
calculated in days in the manner indicated by this section.
The patent term extension will run from the original
expiration date of the patent or any earlier date set by
terminal disclaimer ( § 1.321 ).
(b) The term of the patent for a veterinary biological
product will be extended by the length of the regulatory
review period for the product as determined by the
Secretary of Agriculture, reduced as appropriate pursuant
to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a
veterinary biological product will be determined by the
Secretary of Agriculture. Under 35 U .S.C. 156 (g)(5)(B),
it is the sum of —
(1) The number of days in the period beginning on
the date the authority to prepare an experimental
biological product under the Virus-Serum-Toxin Act
became effective and ending on the date an application
for a license was submitted under the
Virus-Serum-Toxin Act; and
(2) The number of days in the period beginning on
the date an application for a license was initially
submitted for approval under the Virus-Serum-Toxin
Act and ending on the date such license was issued.
(d) The term of the patent as extended for a veterinary
biological product will be determined by —(1) Subtracting from the number of days determined
by the Secretary of Agriculture to be in the regulatory
review period:
(i) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section that
were on and before the date on which the patent
issued;
(ii) The number of days in the periods of
paragraphs (c)(1) and (c)(2) of this section during
which it is determined under 35 U .S.C.
156(d)(2)(B) by the Secretary of Agriculture that
applicant did not act with due diligence;
(iii) One-half the number of days remaining
in the period defined by paragraph (c)(1) of this
section after that period is reduced in accordance
with paragraphs (d)(1)(i) and (ii) of this section;
half days will be ignored for purposes of
subtraction;
(2) By adding the number of days determined in
paragraph (d)(1) of this section to the original term of
the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date of the issuance
of a license under the Virus-Serum-Toxin Act;
(4) By comparing the dates for the ends of the
periods obtained pursuant to paragraphs (d)(2) and
(d)(3) of this section with each other and selecting the
earlier date;
(5) If the original patent was issued after November
16, 1988, by —
(i) Adding 5 years to the original expiration
date of the patent or any earlier date set by
terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to
paragraphs (d)(4) and (d)(5)(i) of this section with
each other and selecting the earlier date;
(6) If the original patent was issued before
November 16, 1988, and
(i) If no request for the authority to prepare an
experimental biological product under the
Virus-Serum-Toxin Act was submitted before
November 16, 1988, by —
(A) Adding 5 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer; and
(B) Comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other
and selecting the earlier date; or
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 (ii) If a request for the authority to prepare an
experimental biological product under the
Virus-Serum-Toxin Act was submitted before
November 16, 1988, and the commercial
marketing or use of the product was not approved
before November 16, 1988, by —
(A) Adding 3 years to the original
expiration date of the patent or earlier date
set by terminal disclaimer; and
(B) Comparing the dates obtained
pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other
and selecting the earlier date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]
§ 
1.780Certificate or order of extension of patent term.
If a determination is made pursuant to §  1.750  that a patent
is eligible for extension and that the term of the patent is
to be extended, a certificate of extension, under seal, or
an order granting interim extension under 35 U.S.C.
156(d)(5) , will be issued to the applicant for the extension
of the patent term. Such certificate or order will be
recorded in the official file of the patent and will be
considered as part of the original patent. Notification of
the issuance of the certificate or order of extension will
be published in the Official Gazette of the United States
Patent and Trademark Office . Notification of the issuance
of the order granting an interim extension under 35 U.S.C.
156(d)(5) , including the identity of the product currently
under regulatory review, will be published in the Official
Gazette of the United States Patent and Trademark  Office
and in the Federal Register . No certificate of, or order
granting, an extension will be issued if the term of the
patent cannot be extended, even though the patent is
otherwise determined to be eligible for extension. In such
situations, the final determination made pursuant to §
1.750  will indicate that no certificate or order will issue.
[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987;
para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§ 
1.785Multiple applications for extension of term of
the same patent or of different patents for the
same regulatory review period for a product.
(a) Only one patent may be extended for a regulatory
review period for any product § 1.720  (h). If more than
one application for extension of the same patent is filed,
the certificate of extension of patent term, if appropriate,
will be issued based upon the first filed application for
extension.
(b) If more than one application for extension is filed
by a single applicant which seeks the extension of theterm of two or more patents based upon the same
regulatory review period, and the patents are otherwise
eligible for extension pursuant to the requirements of this
subpart, in the absence of an election by the applicant,
the certificate of extension of patent term, if appropriate,
will be issued upon the application for extension of the
patent term having the earliest date of issuance of those
patents for which extension is sought.
(c) If an application for extension is filed which seeks
the extension of the term of a patent based upon the same
regulatory review period as that relied upon in one or
more applications for extension pursuant to the
requirements of this subpart, the certificate of extension
of patent term will be issued on the application only if
the patent owner or its agent is the holder of the regulatory
approval granted with respect to the regulatory review
period.
(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.
When an application contains such information, or is
amended to contain such information, it will be considered
in determining whether an application is eligible for an
extension under this section. A request may be made of
any applicant to supply such information within a
non-extendable period of not less than one month
whenever multiple applications for extension of more
than one patent are received and rely upon the same
regulatory review period. Failure to provide such
information within the period for reply set shall be
regarded as conclusively establishing that the applicant
is not the holder of the regulatory approval.
(e) Determinations made under this section shall be
included in the notice of final determination of eligibility
for extension of the patent term pursuant to § 1.750  and
shall be regarded as part of that determination.
[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987;
para. (b) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989;
revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; para. (d)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.790Interim extension of patent term under
35 U .S.C. 156 (d)(5).
(a) An owner of record of a patent or its agent who
reasonably expects that the applicable regulatory review
period described in paragraph (1)(B)(ii), (2)(B)(ii),
(3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that
began for a product that is the subject of such patent may
extend beyond the expiration of the patent term in effect
may submit one or more applications for interim
extensions for periods of up to one year each. The initial
application for interim extension must be filed during the
period beginning 6 months and ending 15 days before the
patent term is due to expire. Each subsequent application
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 for interim extension must be filed during the period
beginning 60 days before and ending 30 days before the
expiration of the preceding interim extension. In no event
will the interim extensions granted under this section be
longer than the maximum period of extension to which
the applicant would be entitled under 35 U .S.C. 156(c) .
(b) A complete application for interim extension under
this section shall include all of the information required
for a formal application under § 1.740  and a complete
application under § 1.741 . Sections (a)(1), (a)(2), (a)(4),
and (a)(6) - (a)(17) of § 1.740  and § 1.741  shall be read
in the context of a product currently undergoing regulatory
review. Sections (a)(3) and (a)(5) of § 1.740  are not
applicable to an application for interim extension under
this section.
(c) The content of each subsequent interim extension
application may be limited to a request for a subsequent
interim extension along with a statement that the
regulatory review period has not been completed along
with any materials or information required under §§ 1.740
and 1.741  that are not present in the preceding interim
extension application.
[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]
§ 
1.791Termination of interim extension granted prior
to regulatory approval of a product for
commercial marketing or use.
Any interim extension granted under 35 U.S.C. 156 (d)(5)
terminates at the end of the 60-day period beginning on
the date on which the product involved receives
permission for commercial marketing or use. If within
that 60-day period the patent owner or its agent files an
application for extension under §§ 1.740  and 1.741
including any additional information required under 35
U.S.C. 156 (d)(1) not contained in the application for
interim extension, the patent shall be further extended in
accordance with the provisions of 35 U .S.C. 156 .
[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]
Subpart G  — Biotechnology Invention Disclosures
DEPOSIT OF BIOLOGICAL MATERIAL
§ 
1.801Biological material.
For the purposes of these regulations pertaining to the
deposit of biological material for purposes of patents for
inventions under 35 U .S.C. 101 , the term biological
material shall include material that is capable of
self-replication either directly or indirectly. Representative
examples include bacteria, fungi including yeast, algae,protozoa, eukaryotic cells, cell lines, hybridomas,
plasmids, viruses, plant tissue cells, lichens and seeds.
Viruses, vectors, cell organelles and other non-living
material existing in and reproducible from a living cell
may be deposited by deposit of the host cell capable of
reproducing the non-living material.
[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]
§ 
1.802Need or opportunity to make a deposit.
(a) Where an invention is, or relies on, a biological
material, the disclosure may include reference to a deposit
of such biological material.
(b) Biological material need not be deposited unless
access to such material is necessary for the satisfaction
of the statutory requirements for patentability under 35
U.S.C. 112 . If a deposit is necessary, it shall be acceptable
if made in accordance with these regulations. Biological
material need not be deposited,  inter alia , if it is known
and readily available to the public or can be made or
isolated without undue experimentation. Once deposited
in a depository complying with these regulations, a
biological material will be considered to be readily
available even though some requirement of law or
regulation of the United States or of the country in which
the depository institution is located permits access to the
material only under conditions imposed for safety, public
health or similar reasons.
(c) The reference to a biological material in a
specification disclosure or the actual deposit of such
material by an applicant or patent owner does not create
any presumption that such material is necessary to satisfy
35 U .S.C. 112  or that deposit in accordance with these
regulations is or was required.
[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]
§ 
1.803Acceptable depository.
(a) A deposit shall be recognized for the purposes of
these regulations if made in
(1) Any International Depositary Authority (IDA)
as established under the Budapest Treaty on the
International Recognition of the Deposit of
Micro-organisms for the Purposes of Patent Procedure,
or
(2) Any other depository recognized to be suitable
by the Office. Suitability will be determined by the
Director on the basis of the administrative and technical
competence, and agreement of the depository to comply
with the terms and conditions applicable to deposits
for patent purposes. The Director may seek the advice
of impartial consultants on the suitability of a
depository. The depository must:
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 (i) Have a continuous existence;
(ii) Exist independent of the control of the
depositor;
(iii) Possess the staff and facilities sufficient
to examine the viability of a deposit and store the
deposit in a manner which ensures that it is kept
viable and uncontaminated;
(iv) Provide for sufficient safety measures to
minimize the risk of losing biological material
deposited with it;
(v) Be impartial and objective;
(vi) Furnish samples of the deposited material
in an expeditious and proper manner; and
(vii) Promptly notify depositors of its inability
to furnish samples, and the reasons why.
(b) A depository seeking status under paragraph (a)(2)
of this section must direct a communication to the Director
which shall:
(1) Indicate the name and address of the depository
to which the communication relates;
(2) Contain detailed information as to the capacity
of the depository to comply with the requirements of
paragraph (a)(2) of this section, including information
on its legal status, scientific standing, staff, and
facilities;
(3) Indicate that the depository intends to be
available, for the purposes of deposit, to any depositor
under these same conditions;
(4) Where the depository intends to accept for
deposit only certain kinds of biological material, specify
such kinds;
(5) Indicate the amount of any fees that the
depository will, upon acquiring the status of suitable
depository under paragraph (a)(2) of this section, charge
for storage, viability statements and furnishings of
samples of the deposit.
(c) A depository having status under paragraph (a)(2)
of this section limited to certain kinds of biological
material may extend such status to additional kinds of
biological material by directing a communication to the
Director in accordance with paragraph (b) of this section.
If a previous communication under paragraph (b) of this
section is of record, items in common with the previous
communication may be incorporated by reference.
(d) Once a depository is recognized to be suitable by
the Director or has defaulted or discontinued its
performance under this section, notice thereof will be
published in the  Official Gazette  of the Patent and
Trademark Office.[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 199;
paras. (a)(2) & (b)-(d) revised, 68 FR 14332, Mar. 25, 2003, effective
May 1, 2003]
§ 
1.804Time of making an original deposit.
(a) Whenever a biological material is specifically
identified in an application for patent as filed, an original
deposit thereof may be made at any time before filing the
application for patent or, subject to § 1.809 , during
pendency of the application for patent.
(b) When the original deposit is made after the
effective filing date of an application for patent, the
applicant must promptly submit a statement from a person
in a position to corroborate the fact, stating that the
biological material which is deposited is a biological
material specifically identified in the application as filed.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990;
para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.805Replacement or supplement of deposit.
(a) A depositor, after receiving notice during the
pendency of an application for patent, application for
reissue patent or reexamination proceeding, that the
depository possessing a deposit either cannot furnish
samples thereof or can furnish samples thereof but the
deposit has become contaminated or has lost its capability
to function as described in the specification, shall notify
the Office in writing, in each application for patent or
patent affected. In such a case, or where the Office
otherwise learns, during the pendency of an application
for patent, application for reissue patent or reexamination
proceeding, that the depository possessing a deposit either
cannot furnish samples thereof or can furnish samples
thereof but the deposit has become contaminated or has
lost its capability to function as described in the
specification, the need for making a replacement or
supplemental deposit will be governed by the same
considerations governing the need for making an original
deposit under the provisions set forth in § 1.802 (b).
A replacement or supplemental deposit made during the
pendency of an application for patent shall not be accepted
unless it meets the requirements for making an original
deposit under these regulations, including the requirement
set forth under § 1.804 (b). A replacement or supplemental
deposit made in connection with a patent, whether or not
made during the pendency of an application for reissue
patent or a reexamination proceeding or both, shall not
be accepted unless a certificate of correction under § 1.323
is requested by the patent owner which meets the terms
of paragraphs (b) and (c) of this section.
(b) A request for certificate of correction under this
section shall not be granted unless the certificate
identifies:
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 (1) The accession number for the replacement or
supplemental deposit;
(2) The date of the deposit; and
(3) The name and address of the depository.
(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 the request:
(1) Includes a statement of the reason for making
the replacement or supplemental deposit;
(2) Includes a statement from a person in a position
to corroborate the fact, and stating that the replacement
or supplemental deposit is of a biological material
which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted
diligently —
(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 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.
(d) A depositor’s failure to replace a deposit, or in the
case of a patent, to diligently replace a deposit and
promptly thereafter request a certificate of correction
which meets the terms of paragraphs (b) and (c) of this
section, after being notified that the depository possessing
the deposit cannot furnish samples thereof, shall cause
the application or patent involved to be treated in any
Office proceeding as if no deposit were made.
(e) In the event a deposit is replaced according to these
regulations, the Office will apply a rebuttable presumption
of identity between the original and the replacement
deposit where a patent making reference to the deposit is
relied upon during any Office proceeding.
(f) A replacement or supplemental deposit made
during the pendency of an application for patent may be
made for any reason.
(g) In no case is a replacement or supplemental deposit
of a biological material necessary where the biologicalmaterial, in accordance with § 1.802 (b), need not be
deposited.
(h) No replacement deposit of a biological material
is necessary where a depository can furnish samples
thereof but the depository for national security, health or
environmental safety reasons is unable to provide samples
to requesters outside of the jurisdiction where the
depository is located.
(i) The Office will not recognize in any Office
proceeding a replacement deposit of a biological material
made by a patent owner where the depository could
furnish samples of the deposit being replaced.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990;
para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§ 
1.806Term of deposit.
A deposit made before or during pendency of an
application for patent shall be made for a term of at least
thirty (30) years and at least five (5) years after the most
recent request for the furnishing of a sample of the deposit
was received by the depository. In any case, samples must
be stored under agreements that would make them
available beyond the enforceable life of the patent for
which the deposit was made.
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]
§ 
1.807Viability of deposit.
(a) A deposit of biological material that is capable of
self-replication either directly or indirectly must be viable
at the time of deposit and during the term of deposit.
Viability may be tested by the depository. The test must
conclude only that the deposited material is capable of
reproduction. No evidence is necessarily required
regarding the ability of the deposited material to perform
any function described in the patent application.
(b) A viability statement for each deposit of a
biological material defined in paragraph (a) of this section
not made under the Budapest Treaty on the International
Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure must be filed in the
application and must contain:
(1) The name and address of the depository;
(2) The name and address of the depositor;
(3) The date of deposit;
(4) The identity of the deposit and the accession
number given by the depository;
(5) The date of the viability test;
(6) The procedures used to obtain a sample if the
test is not done by the depository; and
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 (7) A statement that the deposit is capable of
reproduction.
(c) If a viability test indicates that the deposit is not
viable upon receipt, or the examiner cannot, for scientific
or other valid reasons, accept the statement of viability
received from the applicant, the examiner shall proceed
as if no deposit has been made. The examiner will accept
the conclusion set forth in a viability statement issued by
a depository recognized under § 1.803 (a).
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]
§ 
1.808Furnishing of samples.
(a) A deposit must be made under conditions that
assure that:
(1) Access to the deposit will be available during
pendency of the patent application making reference
to the deposit to one determined by the Director to be
entitled thereto under § 1.14  and 35 U .S.C. 122 , and
(2) Subject to paragraph (b) of this section, all
restrictions imposed by the depositor on the availability
to the public of the deposited material will be
irrevocably removed upon the granting of the patent.
(b) The depositor may contract with the depository to
require that samples of a deposited biological material
shall be furnished only if a request for a sample, during
the term of the patent:
(1) Is in writing or other tangible form and dated;
(2) Contains the name and address of the requesting
party and the accession number of the deposit; and
(3) Is communicated in writing by the depository
to the depositor along with the date on which the
sample was furnished and the name and address of the
party to whom the sample was furnished.
(c) Upon request made to the Office, the Office will
certify whether a deposit has been stated to have been
made under conditions which make it available to the
public as of the issue date of the patent grant provided
the request contains:
(1) The name and address of the depository;
(2) The accession number given to the deposit;
(3) The patent number and issue date of the patent
referring to the deposit; and
(4) The name and address of the requesting party.
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 199;
para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.809Examination procedures.(a) The examiner shall determine pursuant to § 1.104
in each application for patent, application for reissue
patent or reexamination proceeding if a deposit is needed,
and if needed, if a deposit actually made is acceptable for
patent purposes. If a deposit is needed and has not been
made or replaced or supplemented in accordance with
these regulations, the examiner, where appropriate, shall
reject the affected claims under the appropriate provision
of 35 U .S.C. 112 , explaining why a deposit is needed
and/or why a deposit actually made cannot be accepted.
(b) The applicant for patent or patent owner shall reply
to a rejection under paragraph (a) of this section by—
(1) In the case of an applicant for patent, either
making an acceptable original, replacement, or
supplemental deposit, or assuring the Office in writing
that an acceptable deposit will be made; or, in the case
of a patent owner, requesting a certificate of correction
of the patent which meets the terms of paragraphs (b)
and (c) of § 1.805 , or
(2) Arguing why a deposit is not needed under the
circumstances of the application or patent considered
and/or why a deposit actually made should be accepted.
Other replies to the examiner’s action shall be
considered nonresponsive. The rejection will be
repeated until either paragraph (b)(1) of this section is
satisfied or the examiner is convinced that a deposit is
not needed.
(c) If an application for patent is otherwise in
condition for allowance except for a needed deposit and
the Office has received a written assurance that an
acceptable deposit will be made, applicant will be notified
and given a period of time within which the deposit must
be made in order to avoid abandonment. This time period
is not extendable under § 1.136(a) or (b)  if set forth in a
“Notice of Allowability” or in an Office action having a
mail date on or after the mail date of a “Notice of
Allowability” (see § 1.136(c) ).
(d) For each deposit made pursuant to these
regulations, the specification shall contain:
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological
material sufficient to specifically identify it and to
permit examination; and
(4) The name and address of the depository.
(e) Any amendment required by paragraphs (d)(1),
(d)(2) or (d)(4) of this section must be filed before or with
the payment of the issue fee (see § 1.312 ).
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990;
paras. (b) and (c) revised and para. (e) added, 66 FR 21092, Apr. 27,
2001, effective May 29, 2001]
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 APPLICATION DISCLOSURES CONTAINING
NUCLEOTIDE AND/OR AMINO ACID
SEQUENCES
§ 
1.821Nucleotide and/or amino acid sequence
disclosures in patent applications.
(a) Nucleotide and/or amino acid sequences as used
in §§ 1.821  through 1.825  are interpreted to mean an
unbranched sequence of four or more amino acids or an
unbranched sequence of ten or more nucleotides.
Branched sequences are specifically excluded from this
definition. Sequences with fewer than four specifically
defined nucleotides or amino acids are specifically
excluded from this section. “Specifically defined” means
those amino acids other than “Xaa” and those nucleotide
bases other than “n” defined in accordance with the World
Intellectual Property Organization (WIPO) Handbook on
Industrial Property Information and Documentation,
Standard ST.25: Standard for the Presentation of
Nucleotide and Amino Acid Sequence Listings in Patent
Applications (1998), including Tables 1 through 6 in
Appendix 2, herein incorporated by reference. (Hereinafter
“WIPO Standard ST.25 (1998)”). This incorporation by
reference was approved by the Director of the Federal
Register in accordance with 5 U.S.C. 552(a) and 1 CFR
part 51. Copies of WIPO Standard ST.25 (1998) may be
obtained from the World Intellectual Property
Organization; 34 chemin des Colombettes; 1211 Geneva
20 Switzerland. Copies may also be inspected at the
National Archives and Records Administration (NARA).
For information on the availability of this material at
NARA, call 202-741-6030, or go to:
 http://www.archives.gov/federal_register/code_of_federal_regulations/ibr_locations.html.
Nucleotides and amino acids are further defined as
follows:
(1)  Nucleotides:  Nucleotides are intended to
embrace only those nucleotides that can be represented
using the symbols set forth in WIPO Standard ST.25
(1998), Appendix 2, Table 1. Modifications,  e.g.,
methylated bases, may be described as set forth in
WIPO Standard ST.25 (1998), Appendix 2, Table 2,
but shall not be shown explicitly in the nucleotide
sequence.
(2)  Amino acids:  Amino acids are those L-amino
acids commonly found in naturally occurring proteins
and are listed in WIPO Standard ST.25 (1998),
Appendix 2, Table 3. Those amino acid sequences
containing D-amino acids are not intended to be
embraced by this definition. Any amino acid sequence
that contains post-translationally modified amino acids
may be described as the amino acid sequence that is
initially translated using the symbols shown in WIPO
Standard ST.25 (1998), Appendix 2, Table 3 with the
modified positions;  e.g., hydroxylations orglycosylations, being described as set forth in WIPO
Standard ST.25 (1998), Appendix 2, Table 4, but these
modifications shall not be shown explicitly in the amino
acid sequence. Any peptide or protein that can be
expressed as a sequence using the symbols in WIPO
Standard ST.25 (1998), Appendix 2, Table 3 in
conjunction with a description in the Feature section
to describe, for example, modified linkages, cross links
and end caps, non-peptidyl bonds, etc., is embraced by
this definition.
(b) Patent applications which contain disclosures
of nucleotide and/or amino acid sequences, in
accordance with the definition in paragraph (a) of this
section, shall, with regard to the manner in which the
nucleotide and/or amino acid sequences are presented
and described, conform exclusively to the requirements
of §§ 1.821  through 1.825 .
(c) Patent applications which contain disclosures
of nucleotide and/or amino acid sequences must
contain, as a separate part of the disclosure, a paper or
compact disc copy ( see  § 1.52(e) ) disclosing the
nucleotide and/or amino acid sequences and associated
information using the symbols and format in
accordance with the requirements of §§ 1.822  and
1.823 . This paper or compact disc copy is referred to
elsewhere in this subpart as the “Sequence Listing.”
Each sequence disclosed must appear separately in the
“Sequence Listing.” Each sequence set forth in the
“Sequence Listing” must be assigned a separate
sequence identifier. The sequence identifiers must begin
with 1 and increase sequentially by integers. If no
sequence is present for a sequence identifier, the code
“000” must be used in place of the sequence. The
response for the numeric identifier <160> must include
the total number of SEQ ID NOs, whether followed by
a sequence or by the code “000.”
(d) Where the description or claims of a patent
application discuss a sequence that is set forth in the
“Sequence Listing” in accordance with paragraph (c)
of this section, reference must be made to the sequence
by use of the sequence identifier, preceded by “SEQ
ID NO:” in the text of the description or claims, even
if the sequence is also embedded in the text of the
description or claims of the patent application.
(e) A copy of the “Sequence Listing” referred to in
paragraph (c) of this section must also be submitted in
computer readable form (CRF) in accordance with the
requirements of § 1.824 . The computer readable form
must be a copy of the “Sequence Listing” and may not
be retained as a part of the patent application file. If
the computer readable form of a new application is to
be identical with the computer readable form of another
application of the applicant on file in the Office,
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 reference may be made to the other application and
computer readable form in lieu of filing a duplicate
computer readable form in the new application if the
computer readable form in the other application was
compliant with all of the requirements of this subpart.
The new application must be accompanied by a letter
making such reference to the other application and
computer readable form, both of which shall be
completely identified. In the new application, applicant
must also request the use of the compliant computer
readable “Sequence Listing” that is already on file for
the other application and must state that the paper or
compact disc copy of the “Sequence Listing” in the
new application is identical to the computer readable
copy filed for the other application.
(f) In addition to the paper or compact disc copy
required by paragraph (c) of this section and the
computer readable form required by paragraph (e) of
this section, a statement that the “Sequence Listing”
content of the paper or compact disc copy and the
computer readable copy are the same must be submitted
with the computer readable form,  e.g., a statement that
“the sequence listing information recorded in computer
readable form is identical to the written (on paper or
compact disc) sequence listing.”
(g) If any of the requirements of paragraphs (b)
through (f) of this section are not satisfied at the time
of filing under 35 U .S.C. 111 (a) or at the time of
entering the national stage under 35 U .S.C. 371 ,
applicant will be notified and given a period of time
within which to comply with such requirements in order
to prevent abandonment of the application. Any
submission in reply to a requirement under this
paragraph must be accompanied by a statement that
the submission includes no new matter.
(h) If any of the requirements of paragraphs (b)
through (f) of this section are not satisfied at the time
of filing an international application under the Patent
Cooperation Treaty (PCT), which application is to be
searched by the United States International Searching
Authority or examined by the United States
International Preliminary Examining Authority,
applicant will be sent a notice necessitating compliance
with the requirements within a prescribed time period.
Any submission in reply to a requirement under this
paragraph must be accompanied by a statement that
the submission does not include matter which goes
beyond the disclosure in the international application
as filed. If applicant fails to timely provide the required
computer readable form, the United States International
Searching Authority shall search only to the extent that
a meaningful search can be performed without the
computer readable form and the United States
International Preliminary Examining Authority shallexamine only to the extent that a meaningful
examination can be performed without the computer
readable form.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
para. (h) amended, 58 FR 9335, Jan. 14, 1993, effective May 1, 1993;
revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; paras. (c),
(e), and (f) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000
(effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (a) revised,
70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 
1.822Symbols and format to be used for nucleotide
and/or amino acid sequence data.
(a) The symbols and format to be used for nucleotide
and/or amino acid sequence data shall conform to the
requirements of paragraphs (b) through (e) of this section.
(b) The code for representing the nucleotide and/or
amino acid sequence characters shall conform to the code
set forth in the tables in WIPO Standard ST.25 (1998),
Appendix 2, Tables 1 and 3. This incorporation by
reference was approved by the Director of the Federal
Register in accordance with 5 U.S.C. 552(a) and 1 CFR
part 51. Copies of ST.25 may be obtained from the World
Intellectual Property Organization; 34 chemin des
Colombettes; 1211 Geneva 20 Switzerland. Copies may
also be inspected at the National Archives and Records
Administration (NARA). For information on the
availability of this material at NARA, call 202-741-6030,
or go to:
 http://www.archives.gov/federal_register/code_of_federal_regulations/ibr_locations.html.
No code other than that specified in these sections shall
be used in nucleotide and amino acid sequences. A
modified base or modified or unusual amino acid may be
presented in a given sequence as the corresponding
unmodified base or amino acid if the modified base or
modified or unusual amino acid is one of those listed in
WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and
4, and the modification is also set forth in the Feature
section. Otherwise, each occurrence of a base or amino
acid not appearing in WIPO Standard ST.25 (1998),
Appendix 2, Tables 1 and 3, shall be listed in a given
sequence as “n” or “Xaa,” respectively, with further
information, as appropriate, given in the Feature section,
preferably by including one or more feature keys listed
in WIPO Standard ST.25 (1998), Appendix 2, Tables 5
and 6.
(c)  Format representation of nucleotides.  (1) A
nucleotide sequence shall be listed using the lower-case
letter for representing the one-letter code for the
nucleotide bases set forth in WIPO Standard ST.25 (1998),
Appendix 2, Table 1.
(2) The bases in a nucleotide sequence (including
introns) shall be listed in groups of 10 bases except in
the coding parts of the sequence. Leftover bases, fewer
than 10 in number, at the end of noncoding parts of a
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 sequence shall be grouped together and separated from
adjacent groups of 10 or 3 bases by a space.
(3) The bases in the coding parts of a nucleotide
sequence shall be listed as triplets (codons). The amino
acids corresponding to the codons in the coding parts
of a nucleotide sequence shall be typed immediately
below the corresponding codons. Where a codon spans
an intron, the amino acid symbol shall be typed below
the portion of the codon containing two nucleotides.
(4) A nucleotide sequence shall be listed with a
maximum of 16 codons or 60 bases per line, with a
space provided between each codon or group of 10
bases.
(5) A nucleotide sequence shall be presented, only
by a single strand, in the 5 to 3 direction, from left to
right.
(6) The enumeration of nucleotide bases shall start
at the first base of the sequence with number 1. The
enumeration shall be continuous through the whole
sequence in the direction 5 to 3. The enumeration shall
be marked in the right margin, next to the line
containing the one-letter codes for the bases, and giving
the number of the last base of that line.
(7) For those nucleotide sequences that are circular
in configuration, the enumeration method set forth in
paragraph (c)(6) of this section remains applicable with
the exception that the designation of the first base of
the nucleotide sequence may be made at the option of
the applicant.
(d)  Representation of amino acids.  (1) The amino
acids in a protein or peptide sequence shall be listed using
the three-letter abbreviation with the first letter as an upper
case character, as in WIPO Standard ST.25 (1998),
Appendix 2, Table 3.
(2) A protein or peptide sequence shall be listed
with a maximum of 16 amino acids per line, with a
space provided between each amino acid.
(3) An amino acid sequence shall be presented in
the amino to carboxy direction, from left to right, and
the amino and carboxy groups shall not be presented
in the sequence.
(4) The enumeration of amino acids may start at
the first amino acid of the first mature protein, with the
number 1. When presented, the amino acids preceding
the mature protein,  e.g., pre-sequences, pro-sequences,
pre-pro-sequences and signal sequences, shall have
negative numbers, counting backwards starting with
the amino acid next to number 1. Otherwise, the
enumeration of amino acids shall start at the first amino
acid at the amino terminal as number 1. It shall be
marked below the sequence every 5 amino acids. Theenumeration method for amino acid sequences that is
set forth in this section remains applicable for amino
acid sequences that are circular in configuration, with
the exception that the designation of the first amino
acid of the sequence may be made at the option of the
applicant.
(5) An amino acid sequence that contains internal
terminator symbols ( e.g., “Ter”, “*”, or “.”, etc.) may
not be represented as a single amino acid sequence, but
shall be presented as separate amino acid sequences.
(e) A sequence with a gap or gaps shall be presented
as a plurality of separate sequences, with separate
sequence identifiers, with the number of separate
sequences being equal in number to the number of
continuous strings of sequence data. A sequence that is
made up of one or more noncontiguous segments of a
larger sequence or segments from different sequences
shall be presented as a separate sequence.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
revised, 63 FR 29620, June 1, 1998, effective, July 1, 1998; para. (b)
revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 
1.823Requirements for nucleotide and/or amino acid
sequences as part of the application.
(a)
(1) If the “Sequence Listing” required by § 1.821(c)
is submitted on paper: The “Sequence Listing,” setting
forth the nucleotide and/or amino acid sequence and
associated information in accordance with paragraph
(b) of this section, must begin on a new page and must
be titled “Sequence Listing.” The pages of the
“Sequence Listing” preferably should be numbered
independently of the numbering of the remainder of
the application. Each page of the “Sequence Listing”
shall contain no more than 66 lines and each line shall
contain no more than 72 characters. The sheet or sheets
presenting a sequence listing may not include material
other than part of the sequence listing. A fixed-width
font should be used exclusively throughout the
“Sequence Listing.”
(2) If the “Sequence Listing” required by § 1.821(c)
is submitted on compact disc: The “Sequence Listing”
must be submitted on a compact disc in compliance
with § 1.52(e) . The compact disc may also contain table
information if the application contains table information
that may be submitted on a compact disc (§
1.52(e)(1)(iii) ). The specification must contain an
incorporation-by-reference of the Sequence Listing as
required by § 1.52(e)(5) . The presentation of the
“Sequence Listing” and other materials on compact
disc under § 1.821(c)  does not substitute for the
Computer Readable Form that must be submitted on
disk, compact disc, or tape in accordance with § 1.824 .
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 (b) The “Sequence Listing” shall, except as otherwise
indicated, include the actual nucleotide and/or amino acid
sequence, the numeric identifiers and their accompanying
information as shown in the following table. The numeric
identifier shall be used only in the “Sequence Listing.”
The order and presentation of the items of information in
the “Sequence Listing” shall conform to the arrangement
given below. Each item of information shall begin on a
new line and shall begin with the numeric identifier
enclosed in angle brackets as shown. The submission of
those items of information designated with an “M” is
mandatory. The submission of those items of information
designated with an “O” is optional. Numeric identifiers
<110> through <170> shall only be set forth at the
beginning of the “Sequence Listing.” The following table
illustrates the numeric identifiers.
Mandatory (M) or Optional (O) Comments and format Definition Numeric Identifier
M. Preferably max. of 10 names; one name per line; preferable format: Surname, Other Names and/or Initials. Applicant...................... <110>
M. ............................................................. Title of Invention.......... <120>
M when filed prior to assignment or appl. number Personal file reference......................... File Reference............... <130>
M, if available. Specify as: US 07/999,999 or PCT/US96/99999. Current Application Number. <140>
M, if available. Specify as: yyyy-mm-dd...................... Current Filing Date....... <141>
M, if applicable include priority documents under 35 U .S.C. 119  and 120 Specify as: US 07/999,999 or PCT/US96/99999. Prior Application Number. <150>
M, if applicable Specify as: yyyy-mm-dd ..................... Prior Application Filing Date. <151>
M. Count includes total number of SEQ ID NOs................................................. Number of SEQ ID NOs. <160>
O. Name of software used to create the Sequence Listing. Software....................... <170>
M. Response shall be an integer representing the SEQ ID NO shown. SEQ ID NO:#:.............. <210>
M. Respond with an integer expressing the number of bases or amino acid residues. Length........................... <211>
M. Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a nucleotide sequence contains both DNA and RNA fragments, the type shall be “DNA.” In addition, the combined DNA/ RNA molecule shall
be further described in the <220> to <223> feature section.Type.............................. <212>
M. Scientific name, i.e. Genus/ species, Unknown or Artificial Sequence. In addition, the “Unknown” or “Artificial Sequence” organisms shall be further described in the <220> to <223> feature section. Organism...................... <213>
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined
DNA/RNA.Leave blank after <220>. <221-223> provide for a description of points of biological significance in the sequence. Feature.......................... <220>
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence. Provide appropriate identifier for feature, preferably from WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6. Name/Key..................... <221>
Mandatory (M) or Optional (O) Comments and format Definition Numeric Identifier
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence. Specify location within sequence; where appropriate state number of first and last bases/amino acids in feature. Location........................ <222>
M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined
DNA/RNA.Other relevant information; four lines maximum............................................. Other Information......... <223>
O. Leave blank after <300> Publication Information <300>
O. Preferably max. of ten named authors of publication; specify one name per line; preferable format: Surname, Other Names and/or Initials. Authors......................... <301>
O. ............................................................. Title............................... <302>
O. ............................................................. Journal.......................... <303>
O. ............................................................. V olume ......................... <304>
O. ............................................................. Issue ............................. <305>
O. ............................................................. Pages ............................ <306>
O. Journal date on which data published; specify as yyyy- mm-dd, MMM-yyyy or Season- yyyy. Date.............. <307>
O. Accession number assigned by database including database name. Database Accession Number. <308>Mandatory (M) or Optional (O) Comments and format Definition Numeric Identifier
O. Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy. Database Entry Date........ <309>
O. Document number; for patent-type citations only. Specify as, for example, US 07/ 999,999. Patent Document Number. <310>
O. Document filing date, for patent-type citations only; specify as yyyy-mm-dd. Patent Filing Date.............. <311>
O. Document publication date, for patent-type citations only; specify as yyyy-mm-dd. Publication Date................ <312>
O. FROM (position) TO (position)........... Relevant Residues............ <313>
M. SEQ ID NO should follow the numeric identifier and should appear on the line preceding the actual sequence. Sequence....................... <400>
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; heading and
para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000
(effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (a)(1)
revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
§ 
1.824Form and format for nucleotide and/or amino
acid sequence submissions in computer
readable form.
(a) The computer readable form required by § 1.821(e)
shall meet the following requirements:
(1) The computer readable form shall contain a
single “Sequence Listing” as either a diskette, series
of diskettes, or other permissible media outlined in
paragraph (c) of this section.
(2) The “Sequence Listing” in paragraph (a)(l) of
this section shall be submitted in American Standard
Code for Information Interchange (ASCII) text. No
other formats shall be allowed.
(3) The computer readable form may be created by
any means, such as word processors, nucleotide/amino
acid sequence editors’ or other custom computer
programs; however, it shall conform to all requirements
detailed in this section.
(4) File compression is acceptable when using
diskette media, so long as the compressed file is in a
self-extracting format that will decompress on one of
the systems described in paragraph (b) of this section.
(5) Page numbering must not appear within the
computer readable form version of the “Sequence
Listing” file.
(6) All computer readable forms must have a label
permanently affixed thereto on which has been
hand-printed or typed: the name of the applicant, the
title of the invention, the date on which the data were
recorded on the computer readable form, the operating
system used, a reference number, and an application
number and filing date, if known. If multiple diskettes
are submitted, the diskette labels must indicate their
order ( e.g., “1 of X”).
(b) Computer readable form submissions must meet
these format requirements:
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 (1) Computer Compatibility: IBM PC/XT/AT or
Apple Macintosh;
(2) Operating System Compatibility: MS-DOS,
MS-Windows, Unix or Macintosh;
(3) Line Terminator: ASCII Carriage Return plus
ASCII Line Feed; and
(4) Pagination: Continuous file (no “hard page
break” codes permitted).
(c) Computer readable form files submitted may be
in any of the following media:
(1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch,
720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch,
360 Kb storage.
(2) Magnetic tape: 0.5 inch, up to 24000 feet;
Density: 1600 or 6250 bits per inch, 9 track; Format:
Unix tar command; specify blocking factor (not “block
size”); Line Terminator: ASCII Carriage Return plus
ASCII Line Feed.
(3) 8mm Data Cartridge: Format: Unix tar
command; specify blocking factor (not “block size”);
Line Terminator: ASCII Carriage Return plus ASCII
Line Feed.
(4) Compact disc: Format: ISO 9660 or High Sierra
Format.
(5) Magneto Optical Disk: Size/Storage
Specifications: 5.25 inch, 640 Mb.
(d) Computer readable forms that are submitted to the
Office will not be returned to the applicant.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; revised, 65
FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date corrected,
65 FR 78958, Dec. 18, 2000)]
§ 
1.825Amendments to or replacement of sequence
listing and computer readable copy thereof.
(a) Any amendment to a paper copy of the “Sequence
Listing” (§ 1.821(c) ) must be made by the submission of
substitute sheets and include a statement that the substitute
sheets include no new matter. Any amendment to a
compact disc copy of the “Sequence Listing” (§ 1.821(c) )
must be made by the submission of a replacement compact
disc (2 copies) in compliance with § 1.52(e) . Amendments
must also be accompanied by a statement that indicates
support for the amendment in the application, as filed,
and a statement that the replacement compact disc
includes no new matter.
(b) Any amendment to the paper or compact disc copy
of the “Sequence Listing,” in accordance with paragraph
(a) of this section, must be accompanied by a substitute
copy of the computer readable form ( § 1.821 (e)) including
all previously submitted data with the amendmentincorporated therein, accompanied by a statement that the
copy in computer readable form is the same as the
substitute copy of the “Sequence Listing.”
(c) Any appropriate amendments to the “Sequence
Listing” in a patent;  e.g., by reason of reissue or
certificate of correction, must comply with the
requirements of paragraphs (a) and (b) of this section.
(d) If, upon receipt, the computer readable form is
found to be damaged or unreadable, applicant must
provide, within such time as set by the Director, a
substitute copy of the data in computer readable form
accompanied by a statement that the substitute data is
identical to that originally filed.
[Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990;
revised, 63 FR 29620, June 1, 1998, effective July 1, 1998; paras. (a)
and (b) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000
(effective date corrected, 65 FR 78958, Dec. 18, 2000); para. (d) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
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 Subpart H  — Inter Partes Reexamination of Patents
That Issued From an Original Application Filed in
the United States on or After November 29, 1999
PRIOR ART CITATIONS
§ 
1.902Processing of prior art citations during an inter
partes reexamination proceeding.
Citations by the patent owner in accordance with § 1.933
and by an inter partes  reexamination third party requester
under § 1.915  or § 1.948  will be entered in the inter
partes  reexamination file. The entry in the patent file of
other citations submitted after the date of an order for
reexamination pursuant to § 1.931  by persons other than
the patent owner, or the third party requester under either
§ 1.913  or § 1.948 , will be delayed until the inter partes 
reexamination proceeding has been concluded by the
issuance and publication of a reexamination certificate.
See § 1.502  for processing of prior art citations in patent
and reexamination files during an ex parte  reexamination
proceeding filed under § 1.510 .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
REQUIREMENTS FOR INTER PARTES
REEXAMINATION PROCEEDINGS
§ 
1.903Service of papers on parties in inter partes
reexamination.
The patent owner and the third party requester will be
sent copies of Office actions issued during the inter partes 
reexamination proceeding. After filing of a request for
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 inter partes  reexamination by a third party requester, any
document filed by either the patent owner or the third
party requester must be served on every other party in the
reexamination proceeding in the manner provided in §
1.248 . Any document must reflect service or the document
may be refused consideration by the Office. The failure
of the patent owner or the third party requester to serve
documents may result in their being refused consideration.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.904Notice of inter partes reexamination in Official
Gazette.
A notice of the filing of an inter partes  reexamination
request will be published in the Official Gazette . The
notice published in the Official Gazette  under § 1.11(c)
will be considered to be constructive notice of the  inter
partes  reexamination proceeding and  inter partes
reexamination will proceed.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.905Submission of papers by the public in inter
partes reexamination.
Unless specifically provided for, no submissions on behalf
of any third parties other than third party requesters as
defined in 35 U.S.C. 100(e)  will be considered unless
such submissions are in accordance with § 1.915  or
entered in the patent file prior to the date of the order for
reexamination pursuant to § 1.931 . Submissions by third
parties, other than third party requesters, filed after the
date of the order for reexamination pursuant to § 1.931 ,
must meet the requirements of § 1.501  and will be treated
in accordance with § 1.902 . Submissions which do not
meet the requirements of § 1.501  will be returned.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.906Scope of reexamination in inter partes
reexamination proceeding.
(a) Claims in an  inter partes  reexamination
proceeding will be examined on the basis of patents or
printed publications and, with respect to subject matter
added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.
(b) Claims in an  inter partes  reexamination
proceeding will not be permitted to enlarge the scope of
the claims of the patent.
(c) Issues other than those indicated in paragraphs (a)
and (b) of this section will not be resolved in an  inter
partes reexamination proceeding. If such issues are raised
by the patent owner or the third party requester during a
reexamination proceeding, the existence of such issues
will be noted by the examiner in the next Office action,
in which case the patent owner may desire to consider theadvisability of filing a reissue application to have such
issues considered and resolved.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.907Inter partes reexamination prohibited.
(a) Once an order to reexamine has been issued under
§ 1.931 , neither the third party requester, nor its privies,
may file a subsequent request for inter partes 
reexamination of the patent until an inter partes 
reexamination certificate is issued under § 1.997 , unless
authorized by the Director.
(b) Once a final decision has been entered against a
party in a civil action arising in whole or in part under 28
U.S.C. 1338 that the party has not sustained its burden of
proving invalidity of any patent claim-in-suit, then neither
that party nor its privies may thereafter request  inter
partes reexamination of any such patent claim on the basis
of issues which that party, or its privies, raised or could
have raised in such civil action, and an  inter partes
reexamination requested by that party, or its privies, on
the basis of such issues may not thereafter be maintained
by the Office.
(c) If a final decision in an  inter partes reexamination
proceeding instituted by a third party requester is
favorable to patentability of any original, proposed
amended, or new claims of the patent, then neither that
party nor its privies may thereafter request  inter partes
reexamination of any such patent claims on the basis of
issues which that party, or its privies, raised or could have
raised in such  inter partes  reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.913Persons eligible to file, and time for filing, a
request for inter partes reexamination.
(a) Except as provided for in § 1.907 and in paragraph
(b) of this section, any person other than the patent owner
or its privies may, at any time during the period of
enforceability of a patent which issued from an original
application filed in the United States on or after November
29, 1999, file a request for  inter partes reexamination by
the Office of any claim of the patent on the basis of prior
art patents or printed publications cited under § 1.501.
(b) Any request for  inter partes  reexamination
submitted on or after September 16, 2012, will not be
accorded a filing date, and any such request will not be
granted.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised,
76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
§ 
1.915Content of request for inter partes
reexamination.
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 (a) The request must be accompanied by the fee for
requesting inter partes  reexamination set forth in
§ 1.20(c)(2) .
(b) A request for  inter partes  reexamination must
include the following parts:
(1) An identification of the patent by patent number
and every claim for which reexamination is requested.
(2) A citation of the patents and printed publications
which are presented to provide a showing that there is
a reasonable likelihood that the requester will prevail
with respect to at least one of the claims challenged in
the request.
(3) A statement pointing out, based on the cited
patents and printed publications, each showing of a
reasonable likelihood that the requester will prevail
with respect to at least one of the claims challenged in
the request, and a detailed explanation of the pertinency
and manner of applying the patents and printed
publications to every claim for which reexamination
is requested.
(4) A copy of every patent or printed publication
relied upon or referred to in paragraphs (b)(1) through
(3) of this section, accompanied by an English language
translation of all the necessary and pertinent parts of
any non-English language document.
(5) A copy of the entire patent including the front
face, drawings, and specification/claims (in double
column format) for which reexamination is requested,
and a copy of any disclaimer, certificate of correction,
or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one
side of a sheet of paper.
(6) A certification by the third party requester that
a copy of the request has been served in its entirety on
the patent owner at the address provided for in §
1.33(c) . The name and address of the party served must
be indicated. If service was not possible, a duplicate
copy of the request must be supplied to the Office.
(7) A certification by the third party requester that
the estoppel provisions of § 1.907  do not prohibit the
 inter partes  reexamination.
(8) A statement identifying the real party in interest
to the extent necessary for a subsequent person filing
an  inter partes  reexamination request to determine
whether that person is a privy.
(c) If an inter partes  request is filed by an attorney
or agent identifying another party on whose behalf the
request is being filed, the attorney or agent must have a
power of attorney from that party or be acting in a
representative capacity pursuant to § 1.34.(d) If the  inter partes  request does not include the fee
for requesting  inter partes  reexamination required by
paragraph (a) of this section and meet all the requirements
of paragraph (b) of this section, then the person identified
as requesting  inter partes  reexamination will be so
notified and will generally be given an opportunity to
complete the request within a specified time. Failure to
comply with the notice will result in the  inter partes
reexamination request not being granted a filing date, and
will result in placement of the request in the patent file
as a citation if it complies with the requirements of §
1.501.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (d) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006;
para. (d) revised, 71 FR 44219, Aug. 4, 2006, effective Aug. 4, 2006;
para. (c) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007;
paras. (b)(2) and (b)(3) revised, 76 FR 59055, Sept. 23, 2011, effective
Sept. 23, 2011]
§ 
1.919Filing date of request for inter partes
reexamination.
(a) The filing date of a request for inter partes 
reexamination is the date on which the request satisfies
all the requirements for the request set forth in § 1.915 .
(b) If the request is not granted a filing date, the
request will be placed in the patent file as a citation of
prior art if it complies with the requirements of § 1.501 .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 71 FR 9260, Feb. 23, 2006, effective Mar. 27, 2006]
§ 
1.923Examiner’s determination on the request for
inter partes reexamination.
Within three months following the filing date of a request
for inter partes  reexamination under § 1.915 , the
examiner will consider the request and determine whether
or not the request and the prior art establish a reasonable
likelihood that the requester will prevail with respect to
at least one of the claims challenged in the request. The
examiner’s determination will be based on the claims in
effect at the time of the determination, will become a part
of the official file of the patent, and will be mailed to the
patent owner at the address as provided for in § 1.33(c)
and to the third party requester. If the examiner determines
that the request has not established a reasonable likelihood
that the requester will prevail with respect to at least one
of the challenged claims, the examiner shall refuse the
request and shall not order  inter partes  reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; revised,
76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
§ 
1.925Partial refund if request for inter partes
reexamination is not ordered.
Where inter partes  reexamination is not ordered, a refund
of a portion of the fee for requesting inter partes 
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 reexamination will be made to the requester in accordance
with § 1.26(c) .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.927Petition to review refusal to order inter partes
reexamination.
The third party requester may seek review by a petition
to the Director under § 1.181  within one month of the
mailing date of the examiner’s determination refusing to
order inter partes  reexamination. Any such petition must
comply with § 1.181(b) . If no petition is timely filed or
if the decision on petition affirms that a reasonable
likelihood that the requester will prevail with respect to
at least one of the claims challenged in the request has
not been established, the determination shall be final and
nonappealable.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
INTER PARTES REEXAMINATION OF PATENTS
§ 
1.931Order for inter partes reexamination.
(a) If it is found that there is a reasonable likelihood
that the requester will prevail with respect to at least one
of the claims challenged in the request, the determination
will include an order for  inter partes  reexamination of
the patent for resolution of the question of whether the
requester will prevail.
(b) If the order for inter partes  reexamination resulted
from a petition pursuant to § 1.927 , the inter partes 
reexamination will ordinarily be conducted by an
examiner other than the examiner responsible for the
initial determination under § 1.923 .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 76 FR 59055, Sept. 23, 2011, effective Sept. 23, 2011]
INFORMATION DISCLOSURE IN INTER PARTES
REEXAMINATION
§ 
1.933Patent owner duty of disclosure in inter partes
reexamination proceedings.
(a) Each individual associated with the patent owner
in an inter partes  reexamination proceeding has a duty
of candor and good faith in dealing with the Office, which
includes a duty to disclose to the Office all information
known to that individual to be material to patentability in
a reexamination proceeding as set forth in § 1.555(a)  and
(b). The duty to disclose all information known to be
material to patentability in an inter partes  reexamination
proceeding is deemed to be satisfied by filing a paper incompliance with the requirements set forth in § 1.555(a)
and (b).
(b) The responsibility for compliance with this section
rests upon the individuals designated in paragraph (a) of
this section, and no evaluation will be made by the Office
in the reexamination proceeding as to compliance with
this section. If questions of compliance with this section
are raised by the patent owner or the third party requester
during a reexamination proceeding, they will be noted as
unresolved questions in accordance with § 1.906(c) .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
OFFICE ACTIONS AND RESPONSES (BEFORE
THE EXAMINER) IN INTER PARTES
REEXAMINATION
§ 
1.935Initial Office action usually accompanies order
for inter partes reexamination.
The order for  inter partes reexamination will usually be
accompanied by the initial Office action on the merits of
the reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.937Conduct of inter partes reexamination.
(a) All  inter partes  reexamination proceedings,
including any appeals to the Board of Patent Appeals and
Interferences, will be conducted with special dispatch
within the Office, unless the Director makes a
determination that there is good cause for suspending the
reexamination proceeding.
(b) The inter partes  reexamination proceeding will
be conducted in accordance with §§ 1.104  through 1.116 ,
the sections governing the application examination
process, and will result in the issuance of an inter partes 
reexamination certificate under § 1.997 , except as
otherwise provided.
(c) All communications between the Office and the
parties to the  inter partes  reexamination which are
directed to the merits of the proceeding must be in writing
and filed with the Office for entry into the record of the
proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.939Unauthorized papers in inter partes
reexamination
(a) If an unauthorized paper is filed by any party at
any time during the  inter partes reexamination proceeding
it will not be considered and may be returned.
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 (b) Unless otherwise authorized, no paper shall be
filed prior to the initial Office action on the merits of the
 inter partes  reexamination.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.941Amendments by patent owner in inter partes
reexamination.
Amendments by patent owner in inter partes 
reexamination proceedings are made by filing a paper in
compliance with §§ 1.530(d)-(k)  and 1.943 .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.943Requirements of responses, written comments,
and briefs in inter partes reexamination.
(a) The form of responses, written comments, briefs,
appendices, and other papers must be in accordance with
the requirements of § 1.52.
(b) Responses by the patent owner and written
comments by the third party requester shall not exceed
50 pages in length, excluding amendments, appendices
of claims, and reference materials such as prior art
references.
(c) Appellant’s briefs filed by the patent owner and
the third party requester shall not exceed thirty pages or
14,000 words in length, excluding appendices of claims
and reference materials such as prior art references. All
other briefs filed by any party shall not exceed fifteen
pages in length or 7,000 words. If the page limit for any
brief is exceeded, a certificate is required stating the
number of words contained in the brief.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.945Response to Office action by patent owner in
inter partes reexamination.
(a) The patent owner will be given at least thirty days
to file a response to any Office action on the merits of the
 inter partes  reexamination.
(b) Any supplemental response to the Office action
will be entered only where the supplemental response is
accompanied by a showing of sufficient cause why the
supplemental response should be entered. The showing
of sufficient cause must include:
(1) An explanation of how the requirements of §
1.111 (a)(2)(i) are satisfied;
(2) An explanation of why the supplemental
response was not presented together with the original
response to the Office action; and
(3) A compelling reason to enter the supplemental
response.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]§ 
1.947Comments by third party requester to patent
owner’s response in inter partes reexamination.
Each time the patent owner files a response to an Office
action on the merits pursuant to § 1.945 , a third party
requester may once file written comments within a period
of 30 days from the date of service of the patent owner’s
response. These comments shall be limited to issues raised
by the Office action or the patent owner’s response. The
time for submitting comments by the third party requester
may not be extended. For the purpose of filing the written
comments by the third party requester, the comments will
be considered as having been received in the Office as of
the date of deposit specified in the certificate under § 1.8.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.948Limitations on submission of prior art by third
party requester following the order for inter
partes reexamination.
(a) After the inter partes  reexamination order, the
third party requester may only cite additional prior art as
defined under § 1.501  if it is filed as part of a comments
submission under § 1.947  or § 1.951(b)  and is limited to
prior art:
(1) which is necessary to rebut a finding of fact by
the examiner;
(2) which is necessary to rebut a response of the
patent owner; or
(3) which for the first time became known or
available to the third party requester after the filing of
the request for  inter partes reexamination proceeding.
Prior art submitted under paragraph (a)(3) of this
section must be accompanied by a statement as to when
the prior art first became known or available to the third
party requester and must include a discussion of the
pertinency of each reference to the patentability of at
least one claim.
(b) [Reserved]
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.949Examiner’s Office action closing prosecution
in inter partes reexamination.
Upon consideration of the issues a second or subsequent
time, or upon a determination of patentability of all
claims, the examiner shall issue an Office action treating
all claims present in the  inter partes reexamination, which
may be an action closing prosecution. The Office action
shall set forth all rejections and determinations not to
make a proposed rejection, and the grounds therefor. An
Office action will not usually close prosecution if it
includes a new ground of rejection which was not
previously addressed by the patent owner, unless the new
ground was necessitated by an amendment.
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 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.951Options after Office action closing prosecution
in inter partes reexamination.
(a) After an Office action closing prosecution in an
inter partes  reexamination, the patent owner may once
file comments limited to the issues raised in the Office
action closing prosecution. The comments can include a
proposed amendment to the claims, which amendment
will be subject to the criteria of § 1.116  as to whether or
not it shall be admitted. The comments must be filed
within the time set for response in the Office action
closing prosecution.
(b) When the patent owner does file comments, a third
party requester may once file comments responsive to the
patent owner’s comments within 30 days from the date
of service of patent owner’s comments on the third party
requester.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.953Examiner’s Right of Appeal Notice in inter
partes reexamination.
(a) Upon considering the comments of the patent
owner and the third party requester subsequent to the
Office action closing prosecution in an  inter partes
reexamination, or upon expiration of the time for
submitting such comments, the examiner shall issue a
Right of Appeal Notice, unless the examiner reopens
prosecution and issues another Office action on the merits.
(b) Expedited Right of Appeal Notice: At any time
after the patent owner’s response to the initial Office
action on the merits in an  inter partes reexamination, the
patent owner and all third party requesters may stipulate
that the issues are appropriate for a final action, which
would include a final rejection and/or a final determination
favorable to patentability, and may request the issuance
of a Right of Appeal Notice. The request must have the
concurrence of the patent owner and all third party
requesters present in the proceeding and must identify all
of the appealable issues and the positions of the patent
owner and all third party requesters on those issues. If the
examiner determines that no other issues are present or
should be raised, a Right of Appeal Notice limited to the
identified issues shall be issued.
(c) The Right of Appeal Notice shall be a final action,
which comprises a final rejection setting forth each ground
of rejection and/or final decision favorable to patentability
including each determination not to make a proposed
rejection, an identification of the status of each claim, and
the reasons for decisions favorable to patentability and/or
the grounds of rejection for each claim. No amendment
can be made in response to the Right of Appeal Notice.
The Right of Appeal Notice shall set a one-month time
period for either party to appeal. If no notice of appeal isfiled, prosecution in the inter partes  reexamination
proceeding will be terminated, and the Director will
proceed to issue and publish a certificate under § 1.997
in accordance with the Right of Appeal Notice.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
paras. (b) and (c) revised, 72 FR 18892, Apr. 16, 2007, effective May
16, 2007]
INTERVIEWS PROHIBITED IN INTER PARTES
REEXAMINATION
§ 
1.955Interviews prohibited in inter partes
reexamination proceedings.
There will be no interviews in an  inter partes
reexamination proceeding which discuss the merits of the
proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
EXTENSIONS OF TIME, TERMINATING OF
REEXAMINATION PROSECUTION, AND
PETITIONS TO REVIVE IN INTER PARTES
REEXAMINATION
§ 
1.956Patent owner extensions of time in inter partes
reexamination.
The time for taking any action by a patent owner in an
inter partes  reexamination proceeding will be extended
only for sufficient cause and for a reasonable time
specified. Any request for such extension must be filed
on or before the day on which action by the patent owner
is due, but in no case will the mere filing of a request
effect any extension. Any request for such extension must
be accompanied by the petition set forth in § 1.17(g). See
§ 1.304(a)  for extensions of time for filing a notice of
appeal to the U.S. Court of Appeals for the Federal
Circuit.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§ 
1.957Failure to file a timely, appropriate or complete
response or comment in inter partes
reexamination.
(a) If the third party requester files an untimely or
inappropriate comment, notice of appeal or brief in an
 inter partes  reexamination, the paper will be refused
consideration.
(b) If no claims are found patentable, and the patent
owner fails to file a timely and appropriate response in
an inter partes  reexamination proceeding, the prosecution
in the reexamination proceeding will be a terminated
prosecution and the Director will proceed to issue and
publish a certificate concluding the reexamination
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 proceeding under § 1.997  in accordance with the last
action of the Office.
(c) If claims are found patentable and the patent owner
fails to file a timely and appropriate response to any Office
action in an  inter partes  reexamination proceeding,
further prosecution will be limited to the claims found
patentable at the time of the failure to respond, and to any
claims added thereafter which do not expand the scope
of the claims which were found patentable at that time.
(d) When action by the patent owner is a  bona fide
attempt to respond and to advance the prosecution and is
substantially a complete response to the Office action,
but consideration of some matter or compliance with some
requirement has been inadvertently omitted, an
opportunity to explain and supply the omission may be
given.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 
1.958Petition to revive inter partes reexamination
prosecution terminated for lack of patent
owner response.
(a) If a response by the patent owner is not timely
filed in the Office, the delay in filing such response may
be excused if it is shown to the satisfaction of the Director
that the delay was unavoidable. A grantable petition to
accept an unavoidably delayed response must be filed in
compliance with § 1.137(a) .
(b) Any response by the patent owner not timely filed
in the Office may be accepted if the delay was
unintentional. A grantable petition to accept an
unintentionally delayed response must be filed in
compliance with § 1.137(b) .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
heading revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
APPEAL TO THE BOARD OF PATENT APPEALS
AND INTERFERENCES IN INTER PARTES
REEXAMINATION
§ 
1.959Appeal in inter partes reexamination.
Appeals to the Board of Patent Appeals and Interferences
under 35 U.S.C. 134(c) are conducted according to part
41 of this title.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para
(f) added, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised,
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
1.961 -
1.977[Reserved]§ 
1.979Return of Jurisdiction from the Board of
Patent Appeals and Interferences; termination
of appeal proceedings.
(a) Jurisdiction over an  inter partes  reexamination
proceeding passes to the examiner after a decision by the
Board of Patent Appeals and Interferences upon
transmittal of the file to the examiner, subject to each
appellant’s right of appeal or other review, for such further
action as the condition of the  inter partes reexamination
proceeding may require, to carry into effect the decision
of the Board of Patent Appeals and Interferences.
(b) Upon judgment in the appeal before the Board of
Patent Appeals and Interferences, if no further appeal has
been taken (§ 1.983 ), the prosecution in the inter partes 
reexamination proceeding will be terminated and the
Director will issue and publish a certificate under § 1.997
concluding the proceeding. If an appeal to the U.S. Court
of Appeals for the Federal Circuit has been filed, that
appeal is considered terminated when the mandate is
issued by the Court.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
paras. (e) & (f) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,
2004; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
heading and para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective
May 16, 2007]
§ 
1.981Reopening after a final decision of the Board
of Patent Appeals and Interferences.
When a decision by the Board of Patent Appeals and
Interferences on appeal has become final for judicial
review, prosecution of the inter partes  reexamination
proceeding will not be reopened or reconsidered by the
primary examiner except under the provisions of § 41.77
of this title without the written authority of the Director,
and then only for the consideration of matters not already
adjudicated, sufficient cause being shown.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
APPEAL TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT IN
INTER PARTES REEXAMINATION
§ 
1.983Appeal to the United States Court of Appeals
for the Federal Circuit in inter partes
reexamination.
(a) The patent owner or third party requester in an
inter partes  reexamination proceeding who is a party to
an appeal to the Board of Patent Appeals and Interferences
and who is dissatisfied with the decision of the Board of
Patent Appeals and Interferences may, subject to § 41.81 ,
appeal to the U.S. Court of Appeals for the Federal Circuit
and may be a party to any appeal thereto taken from a
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 reexamination decision of the Board of Patent Appeals
and Interferences.
(b) The appellant must take the following steps in
such an appeal:
(1) In the U.S. Patent and Trademark Office, timely
file a written notice of appeal directed to the Director
in accordance with §§ 1.302  and 1.304 ;
(2) In the U.S. Court of Appeals for the Federal
Circuit, file a copy of the notice of appeal and pay the
fee, as provided for in the rules of the U.S. Court of
Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every
other party in the reexamination proceeding in the
manner provided in § 1.248 .
(c) If the patent owner has filed a notice of appeal to
the U.S. Court of Appeals for the Federal Circuit, the third
party requester may cross appeal to the U.S. Court of
Appeals for the Federal Circuit if also dissatisfied with
the decision of the Board of Patent Appeals and
Interferences.
(d) If the third party requester has filed a notice of
appeal to the U.S. Court of Appeals for the Federal
Circuit, the patent owner may cross appeal to the U.S.
Court of Appeals for the Federal Circuit if also dissatisfied
with the decision of the Board of Patent Appeals and
Interferences.
(e) A party electing to participate in an appellant’s
appeal must, within fourteen days of service of the
appellant’s notice of appeal under paragraph (b) of this
section, or notice of cross appeal under paragraphs (c) or
(d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely
file a written notice directed to the Director electing to
participate in the appellant’s appeal to the U.S. Court
of Appeals for the Federal Circuit by mail to, or hand
service on, the General Counsel as provided in § 104.2 ;
(2) In the U.S. Court of Appeals for the Federal
Circuit, file a copy of the notice electing to participate
in accordance with the rules of the U.S. Court of
Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate
on every other party in the reexamination proceeding
in the manner provided in § 1.248 .
(f) Notwithstanding any provision of the rules, in any
reexamination proceeding commenced prior to November
2, 2002, the third party requester is precluded from
appealing and cross appealing any decision of the Board
of Patent Appeals and Interferences to the U.S. Court of
Appeals for the Federal Circuit, and the third party
requester is precluded from participating in any appealtaken by the patent owner to the U.S. Court of Appeals
for the Federal Circuit.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a)
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
CONCURRENT PROCEEDINGS INVOLVING
SAME PATENT IN INTER PARTES
REEXAMINATION
§ 
1.985Notification of prior or concurrent proceedings
in inter partes reexamination.
(a) In any  inter partes reexamination proceeding, the
patent owner shall call the attention of the Office to any
prior or concurrent proceedings in which the patent is or
was involved, including but not limited to interference,
reissue, reexamination, or litigation and the results of such
proceedings.
(b) Notwithstanding any provision of the rules, any
person at any time may file a paper in an  inter partes
reexamination proceeding notifying the Office of a prior
or concurrent proceedings in which the same patent is or
was involved, including but not limited to interference,
reissue, reexamination, or litigation and the results of such
proceedings. Such paper must be limited to merely
providing notice of the other proceeding without
discussion of issues of the current  inter partes
reexamination proceeding. Any paper not so limited will
be returned to the sender.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
§ 
1.987Suspension of inter partes reexamination
proceeding due to litigation.
If a patent in the process of  inter partes reexamination
is or becomes involved in litigation, the Director shall
determine whether or not to suspend the  inter partes
reexamination proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
1.989Merger of concurrent reexamination
proceedings.
(a) If any reexamination is ordered while a prior inter
partes  reexamination proceeding is pending for the same
patent and prosecution in the prior inter partes 
reexamination proceeding has not been terminated, a
decision may be made to merge the two proceedings or
to suspend one of the two proceedings. Where merger is
ordered, the merged examination will normally result in
the issuance and publication of a single reexamination
certificate under § 1.997 .
(b) An inter partes  reexamination proceeding filed
under § 1.913  which is merged with an ex parte 
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 reexamination proceeding filed under § 1.510  will result
in the merged proceeding being governed by §§ 1.902
through 1.997 , except that the rights of any third party
requester of the ex parte  reexamination shall be governed
by §§ 1.510  through 1.560 .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 
1.991Merger of concurrent reissue application and
inter partes reexamination proceeding.
If a reissue application and an inter partes  reexamination
proceeding on which an order pursuant to § 1.931  has
been mailed are pending concurrently on a patent, a
decision may be made to merge the two proceedings or
to suspend one of the two proceedings. Where merger of
a reissue application and an inter partes  reexamination
proceeding is ordered, the merged proceeding will be
conducted in accordance with §§ 1.171  through 1.179 ,
and the patent owner will be required to place and
maintain the same claims in the reissue application and
the inter partes  reexamination proceeding during the
pendency of the merged proceeding. In a merged
proceeding the third party requester may participate to
the extent provided under §§ 1.902  through 1.997  and
41.60  through 41.81 , except that such participation shall
be limited to issues within the scope of  inter partes
reexamination. The examiner’s actions and any responses
by the patent owner or third party requester in a merged
proceeding will apply to both the reissue application and
the  inter partes reexamination proceeding and be
physically entered into both files. Any  inter partes
reexamination proceeding merged with a reissue
application shall be concluded by the grant of the reissued
patent.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§ 
1.993Suspension of concurrent interference and
inter partes reexamination proceeding.
If a patent in the process of inter partes reexamination is
or becomes involved in an interference, the Director may
suspend the inter partes reexamination or the interference.
The Director will not consider a request to suspend an
interference unless a motion under § 41.121 (a)(3) of this
title to suspend the interference has been presented to,
and denied by, an administrative patent judge and the
request is filed within ten (10) days of a decision by an
administrative patent judge denying the motion for
suspension or such other time as the administrative patent
judge may set.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]§ 
1.995Third party requester’s participation rights
preserved in merged proceeding.
When a third party requester is involved in one or more
proceedings, including an  inter partes reexamination
proceeding, the merger of such proceedings will be
accomplished so as to preserve the third party requester’s
right to participate to the extent specifically provided for
in these regulations. In merged proceedings involving
different requesters, any paper filed by one party in the
merged proceeding shall be served on all other parties of
the merged proceeding.
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001]
REEXAMINATION CERTIFICATE IN INTER
PARTES REEXAMINATION
§ 
1.997Issuance and publication of inter partes
reexamination certificate concludes inter partes
reexamination proceeding.
(a) To conclude an  inter partes  reexamination
proceeding, the Director will issue and publish an  inter
partes  reexamination certificate in accordance with 35
U.S.C.  316 setting forth the results of the  inter partes
reexamination proceeding and the content of the patent
following the  inter partes  reexamination proceeding.
(b) A certificate will be issued and published in each
patent in which an inter partes  reexamination proceeding
has been ordered under § 1.931 . Any statutory disclaimer
filed by the patent owner will be made part of the
certificate.
(c) The certificate will be sent to the patent owner at
the address as provided for in § 1.33(c) . A copy of the
certificate will also be sent to the third party requester of
the  inter partes  reexamination proceeding.
(d) If a certificate has been issued and published which
cancels all of the claims of the patent, no further Office
proceedings will be conducted with that patent or any
reissue applications or any reexamination requests relating
thereto.
(e) If the inter partes  reexamination proceeding is
terminated by the grant of a reissued patent as provided
in § 1.991 , the reissued patent will constitute the
reexamination certificate required by this section and 35
U.S.C. 316.
(f) A notice of the issuance of each certificate under
this section will be published in the  Official Gazette .
[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
heading and paras. (a), (b), and (d) revised, 72 FR 18892, Apr. 16, 2007,
effective May 16, 2007]
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 PART  - 3   ASSIGNMENT, RECORDING AND RIGHTS OF
ASSIGNEE
§  3.1 Definitions.
For purposes of this part, the following definitions shall
apply:
 Application  means a national application for patent, an
international patent application that designates the United
States of America, or an application to register a
trademark under section 1 or 44 of the Trademark Act,
15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise
indicated.
 Assignment  means a transfer by a party of all or part of
its right, title and interest in a patent, patent application,
registered mark or a mark for which an application to
register has been filed.
Document  means a document which a party requests to
be recorded in the Office pursuant to § 3.11 and which
affects some interest in an application, patent, or
registration.
 Office  means the United States Patent and Trademark
Office.
Recorded document  means a document which has been
recorded in the Office pursuant to § 3.11 .
 Registration  means a trademark registration issued by
the Office.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
DOCUMENTS ELIGIBLE FOR RECORDING
§  3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and
registrations, accompanied by completed cover sheets as
specified in §§ 3.28  and 3.31, will be recorded in the
Office. Other documents, accompanied by completed
cover sheets as specified in §§ 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 Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR
1959, 3 CFR 1943-1948 Comp., p. 303) requires the
several departments and other executive agencies of the
Government, including Government-owned or
Government-controlled corporations, to forward promptly
to the Director for recording all licenses, assignments, orother interests of the Government in or under patents or
patent applications. Assignments and other documents
affecting title to patents or patent applications and
documents not affecting title to patents or patent
applications required by Executive Order 9424 to be filed
will be recorded as provided in this part.
(c) A joint research agreement or an excerpt of a joint
research agreement will also be recorded as provided in
this part.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) added,
70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (c) revised,
70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005]
§  3.16 Assignability of trademarks prior to filing an
allegation of use.
Before an allegation of use under either 15 U.S.C. 1051(c)
or 15 U.S.C. 1051(d) is filed, an applicant may only assign
an application to register a mark under 15 U.S.C. 1051(b)
to a successor to the applicant’s business, or portion of
the business to which the mark pertains, if that business
is ongoing and existing.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
REQUIREMENTS FOR RECORDING
§  3.21 Identification of patents and patent
applications.
An assignment relating to a patent must identify the patent
by the patent number. An assignment relating to a national
patent application must identify the national patent
application by the application number (consisting of the
series code and the serial number, e.g. , 07/123,456). An
assignment relating to an international patent application
which designates the United States of America must
identify the international application by the international
application number ( e.g. , PCT/US90/01234). If an
assignment of a patent application filed under § 1.53(b)
is executed concurrently with, or subsequent to, the
execution of the patent application, but before the patent
application is filed, it must identify the patent application
by the name of each inventor and the title of the invention
so that there can be no mistake as to the patent application
intended. If an assignment of a provisional application
under § 1.53(c) is executed before the provisional
application is filed, it must identify the provisional
application by the name of each inventor and the title of
the invention so that there can be no mistake as to the
provisional application intended.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised,
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 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 69 FR
29865, May 26, 2004, effective June 25, 2004]
§  3.24 Requirements for documents and cover sheets
relating to patents and patent applications.
(a)   For electronic submissions : Either a copy of the
original document or an extract of the original document
may be submitted for recording. All documents must be
submitted as digitized images in Tagged Image File
Format (TIFF) or another form as prescribed by the
Director. When printed to a paper size of either 21.6 by
27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm
(DIN size A4), the document must be legible and a 2.5
cm (one-inch) margin must be present on all sides.
(b)   For paper or facsimile submissions: Either a copy
of the original document or an extract of the original
document must be submitted for recording. Only one side
of each page may be used. The paper size must be either
21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by
29.7 cm (DIN size A4), and in either case, a 2.5 cm
(one-inch) margin must be present on all sides. For paper
submissions, the paper used should be flexible, strong
white, non-shiny, and durable. The Office will not return
recorded documents, so original documents must not be
submitted for recording.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
heading revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999;
revised, 69 FR 29865, May 26, 2004, effective June 25, 2004; revised,
69 FR 29865, May 26, 2004, effective June 25, 2004]
§  3.25 Recording requirements for trademark
applications and registrations.
(a) Documents affecting title . To record documents
affecting title to a trademark application or registration,
a legible cover sheet (see  §  3.31 ) and one of the following
must be submitted:
(1) A copy of the original document;
(2) A copy of an extract from the document
evidencing the effect on title; or
(3) A statement signed by both the party conveying
the interest and the party receiving the interest
explaining how the conveyance affects title.
(b) Name changes . Only a legible cover sheet is
required ( See  § 3.31).
(c)   All documents . (1)   For electronic submissions :
All documents must be submitted as digitized images in
Tagged Image File Format (TIFF) or another form as
prescribed by the Director. When printed to a paper size
of either 21.6 by 27.9 cm (8 1/2 by 11 inches) or 21.0 by
29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must
be present on all sides.
(2)   For paper or facsimile submissions : All
documents should be submitted on white and non-shinypaper that is either 8 1/2 by 11 inches (21.6 by 27.9
cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch
(2.5 cm) margin on all sides in either case. Only one
side of each page may be used. The Office will not
return recorded documents, so original documents
should not be submitted for recording.
[Added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999;
revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
§  3.26 English language requirement.
The Office will accept and record non-English language
documents only if accompanied by an English translation
signed by the individual making the translation.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  3.27 Mailing address for submitting documents to
be recorded.
Documents and cover sheets submitted by mail for
recordation should be addressed to Mail Stop Assignment
Recordation Services, Director of the United States Patent
and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450, unless they are filed together with
new applications.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised,
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 68 FR
14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 29865,
May 26, 2004, effective June 25, 2004]
§  3.28 Requests for recording.
Each document submitted to the Office for recording must
include a single cover sheet (as specified in § 3.31)
referring either to those patent applications and patents,
or to those trademark applications and registrations,
against which the document is to be recorded. If a
document to be recorded includes interests in, or
transactions involving, both patents and trademarks, then
separate patent and trademark cover sheets, each
accompanied by a copy of the document to be recorded,
must be submitted. If a document to be recorded is not
accompanied by a completed cover sheet, the document
and the incomplete cover sheet will be returned pursuant
to § 3.51 for proper completion, in which case the
document and a completed cover sheet should be
resubmitted.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; revised,
70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
COVER SHEET REQUIREMENTS
§  3.31 Cover sheet content.
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 (a) Each patent or trademark cover sheet required by
§ 3.28 must contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving
the interest;
(3) A description of the interest conveyed or
transaction to be recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark
name changes: Each trademark registration
number and each trademark application number,
if known, against which the Office is to record the
document. If the trademark application number is
not known, a copy of the application or a
reproduction of the trademark must be submitted,
along with an estimate of the date that the Office
received the application; or
(ii) For any other document affecting title to
a trademark or patent application, registration or
patent: Each trademark or patent application
number or each trademark registration number or
patent against which the document is to be
recorded, or an indication that the document is
filed together with a patent application;
(5) The name and address of the party to whom
correspondence concerning the request to record the
document should be mailed;
(6) The date the document was executed;
(7) The signature of the party submitting the
document. For an assignment document or name change
filed electronically, the person who signs the cover
sheet must either:
(i) Place a symbol comprised of letters,
numbers, and/or punctuation marks between
forward slash marks ( e.g. /Thomas O’Malley III/)
in the signature block on the electronic
submission; or
(ii) Sign the cover sheet using some other form
of electronic signature specified by the Director.
(8) For trademark assignments, the entity and
citizenship of the party receiving the interest. In
addition, if the party receiving the interest is a domestic
partnership or domestic joint venture, the cover sheet
must set forth the names, legal entities, and national
citizenship (or the state or country of organization) of
all general partners or active members that compose
the partnership or joint venture.
(b) A cover sheet should not refer to both patents and
trademarks, since any information, including information
about pending patent applications, submitted with arequest for recordation of a document against a trademark
application or trademark registration will become public
record upon recordation.
(c) Each patent cover sheet required by § 3.28  seeking
to record a governmental interest as provided by § 3.11 (b)
must:
(1) Indicate that the document relates to a
Government interest; and
(2) Indicate, if applicable, that the document to be
recorded is not a document affecting title (see §
3.41(b)).
(d) Each trademark cover sheet required by § 3.28
seeking to record a document against a trademark
application or registration should include, in addition to
the serial number or registration number of the trademark,
identification of the trademark or a description of the
trademark, against which the Office is to record the
document.
(e) Each patent or trademark cover sheet required by
§ 3.28 should contain the number of applications, patents
or registrations identified in the cover sheet and the total
fee.
(f) Each trademark cover sheet should include the
citizenship of the party conveying the interest.
(g) The cover sheet required by § 3.28 seeking to
record a joint research agreement or an excerpt of a joint
research agreement as provided by § 3.11(c) must:
(1) Identify the document as a “joint research
agreement” (in the space provided for the description
of the interest conveyed or transaction to be recorded
if using an Office-provided form);
(2) Indicate the name of the owner of the
application or patent (in the space provided for the
name and address of the party receiving the interest if
using an Office-provided form);
(3) Indicate the name of each other party to the joint
research agreement party (in the space provided for the
name of the party conveying the interest if using an
Office-provided form); and
(4) Indicate the date the joint research agreement
was executed.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
para. (c) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
paras. (a)-(b) revised, paras. (d)-(e) added, 64 FR 48900, Sept. 8, 1999,
effective Oct. 30, 1999; para. (a)(7) deleted and para. (a)(8) redesignated
as para. (a)(7), 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002;
paras. (a)(7) & (c)(1) revised and para. (f) added, 69 FR 29865, May
26, 2004, effective June 25, 2004; para (g) added, 70 FR 1818, Jan. 11,
2005, effective Dec. 10, 2004; para. (a)(7)(i) revised, 70 FR 56119,
Sept. 26, 2005, effective Nov. 25, 2005; para. (a)(8) added and para. (f)
revised, 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]
§  3.34 Correction of cover sheet errors.
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 (a) An error in a cover sheet recorded pursuant to
§ 3.11  will be corrected only if:
(1) The error is apparent when the cover sheet is
compared with the recorded document to which it
pertains and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied
by a copy of the document originally submitted for
recording and by the recording fee as set forth in § 3.41.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
para. (b) revised, 69 FR 29865, May 26, 2004, effective June 25, 2004]
FEES
§  3.41 Recording fees.
(a) All requests to record documents must be
accompanied by the appropriate fee. Except as provided
in paragraph (b) of this section, a fee is required for each
application, patent and registration against which the
document is recorded as identified in the cover sheet. The
recording fee is set in § 1.21 (h) of this chapter for patents
and in § 2.6(b)(6) of this chapter for trademarks.
(b) No fee is required for each patent application and
patent against which a document required by Executive
Order 9424 is to be filed if:
(1) The document does not affect title and is so
identified in the cover sheet (see § 3.31 (c)(2)); and
(2) The document and cover sheet are either: Faxed
or electronically submitted as prescribed by the
Director, or mailed to the Office in compliance with §
3.27.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)
amended, 63 FR 48081, Sept. 9, 1998, effective October 9, 1998; para.
(a) corrected, 63 FR 52158, Sept. 10, 1998; para. (b)(2) revised, 69 FR
29865, May 26, 2004, effective June 25, 2004]
DATE AND EFFECT OF RECORDING
§  3.51 Recording date.
The date of recording of a document is the date the
document meeting the requirements for recording set forth
in this part is filed in the Office. A document which does
not comply with the identification requirements of § 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 resubmittedto the Office within the time specified in the letter, the
Office will consider the original date of filing of the
papers as the date of recording of the document. The
procedure set forth in § 1.8  or § 1.10  of this chapter may
be used for resubmissions of returned papers to have the
benefit of the date of deposit in the United States Postal
Service. If the returned papers are not corrected and
resubmitted within the specified period, the date of filing
of the corrected papers will be considered to be the date
of recording of the document. The specified period to
resubmit the returned papers will not be extended.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  3.54 Effect of recording.
The recording of a document pursuant to § 3.11  is not a
determination by the Office of the validity of the
document or the effect that document has on the title to
an application, a patent, or a registration. When necessary,
the Office will determine what effect a document has,
including whether a party has the authority to take an
action in a matter pending before the Office.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
§  3.56 Conditional assignments.
Assignments which are made conditional on
the performance of certain acts or events, such as the
payment of money or other condition subsequent, if
recorded in the Office, are regarded as absolute
assignments for Office purposes until cancelled with the
written consent of all parties or by the decree of a court
of competent jurisdiction. The Office does not determine
whether such conditions have been fulfilled.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
§  3.58 Governmental registers.
(a) The Office will maintain a Departmental Register
to record governmental interests required to be recorded
by Executive Order 9424. This Departmental Register
will not be open to public inspection but will be available
for examination and inspection by duly authorized
representatives of the Government. Governmental interests
recorded on the Departmental Register will be available
for public inspection as provided in § 1.12 .
(b) The Office will maintain a Secret Register to
record governmental interests required to be recorded by
Executive Order 9424. Any instrument to be recorded
will be placed on this Secret Register at the request of the
department or agency submitting the same. No
information will be given concerning any instrument in
such record or register, and no examination or inspection
thereof or of the index thereto will be permitted, except
on the written authority of the head of the department or
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 agency which submitted the instrument and requested
secrecy, and the approval of such authority by the
Director. No instrument or record other than the one
specified may be examined, and the examination must
take place in the presence of a designated official of the
Patent and Trademark Office. When the department or
agency which submitted an instrument no longer requires
secrecy with respect to that instrument, it must be recorded
anew in the Departmental Register.
[Added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
DOMESTIC REPRESENTATIVE
§  3.61 Domestic representative.
If the assignee of a patent, patent application, trademark
application or trademark registration is not domiciled in
the United States, the assignee may designate a domestic
representative in a document filed in the United States
Patent and Trademark Office. The designation should
state the name and address of a person residing within the
United States on whom may be served process or notice
of proceedings affecting the application, patent or
registration or rights thereunder.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 2002]
ACTION TAKEN BY ASSIGNEE
§  3.71 Prosecution by assignee.
(a)  Patents — conducting of prosecution. One or more
assignees as defined in paragraph (b) of this section may,
after becoming of record pursuant to paragraph (c) of this
section, conduct prosecution of a national patent
application or a reexamination proceeding to the exclusion
of either the inventive entity, or the assignee(s) previously
entitled to conduct prosecution.
(b)  Patents  — assignee(s) who can prosecute. The
assignee(s) who may conduct either the prosecution of a
national application for patent or a reexamination
proceeding are:
(1)  A single assignee . An assignee of the entire
right, title and interest in the application or patent being
reexamined who is of record, or
(2)  Partial assignee(s) together or with inventor(s).
All partial assignees, or all partial assignees and
inventors who have not assigned their right, title and
interest in the application or patent being reexamined,
who together own the entire right, title and interest in
the application or patent being reexamined. A partial
assignee is any assignee of record having less than theentire right, title and interest in the application or patent
being reexamined.
(c) Patents — Becoming of record.  An assignee
becomes of record either in a national patent application
or a reexamination proceeding by filing a statement in
compliance with § 3.73(b)  that is signed by a party who
is authorized to act on behalf of the assignee.
(d) Trademarks . The assignee of a trademark
application or registration may prosecute a trademark
application, submit documents to maintain a trademark
registration, or file papers against a third party in reliance
on the assignee’s trademark application or registration,
to the exclusion of the original applicant or previous
assignee. The assignee must establish ownership in
compliance with § 3.73(b) .
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§  3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a
patent application, and any patent that may issue
therefrom, unless there is an assignment. The original
applicant is presumed to be the owner of a trademark
application or registration, unless there is an assignment.
(b)
(1) In order to request or take action in a patent or
trademark matter, the assignee must establish its
ownership of the patent or trademark property of
paragraph (a) of this section to the satisfaction of the
Director. The establishment of ownership by the
assignee may be combined with the paper that requests
or takes the action. Ownership is established by
submitting to the Office a signed statement identifying
the assignee, accompanied by either:
(i) Documentary evidence of a chain of title
from the original owner to the assignee (e.g. , copy
of an executed assignment). For trademark matters
only, the documents submitted to establish
ownership may be required to be recorded
pursuant to § 3.11 in the assignment records of
the Office as a condition to permitting the assignee
to take action in a matter pending before the
Office. For patent matters only, the submission of
the documentary evidence must be accompanied
by a statement affirming that the documentary
evidence of the chain of title from the original
owner to the assignee was or concurrently is being
submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary
evidence of a chain of title from the original owner
to the assignee is recorded in the assignment
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 records of the Office ( e.g., reel and frame
number).
(2) The submission establishing ownership must
show that the person signing the submission is a person
authorized to act on behalf of the assignee by:
(i) Including a statement that the person
signing the submission is authorized to act on
behalf of the assignee; or
(ii) Being signed by a person having apparent
authority to sign on behalf of the assignee,  e.g.,
an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee
must be submitted prior to, or at the same time as, the
paper requesting or taking action is submitted.
(2) If the submission under this section is by an
assignee of less than the entire right, title and interest,
such assignee must indicate the extent (by percentage)
of its ownership interest, or the Office may refuse to
accept the submission as an establishment of ownership.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.
(b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005.]
ISSUANCE TO ASSIGNEE
§  3.81 Issue of patent to assignee.
(a)  With payment of the issue fee :  An application
may issue in the name of the assignee consistent with the
application’s assignment where a request for such issuance
is submitted with payment of the issue fee, provided the
assignment has been previously recorded in the Office.
If the assignment has not been previously recorded, the
request must state that the document has been filed for
recordation as set forth in § 3.11.
(b)  After payment of the issue fee  : Any request for
issuance of an application in the name of the assignee
submitted after the date of payment of the issue fee, and
any request for a patent to be corrected to state the name
of the assignee, must state that the assignment was
submitted for recordation as set forth in § 3.11 before
issuance of the patent, and must include a request for a
certificate of correction under § 1.323  of this chapter
(accompanied by the fee set forth in § 1.20(a)) and the
processing fee set forth in § 1.17 (i) of this chapter.
(c)   Partial assignees . (1) If one or more assignee,
together with one or more inventor, holds the entire right,
title, and interest in the application, the patent may issue
in the names of the assignee and the inventor.(2) If multiple assignees hold the entire right, title,
and interest to the exclusion of all the inventors, the
patent may issue in the names of the multiple assignees.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992;
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised,
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR
29865, May 26, 2004, effective June 25, 2004]
§  3.85 Issue of registration to assignee.
The certificate of registration may be issued to the
assignee of the applicant, or in a new name of the
applicant, provided that the party files a written request
in the trademark application by the time the application
is being prepared for issuance of the certificate of
registration, and the appropriate document is recorded in
the Office. If the assignment or name change document
has not been recorded in the Office, then the written
request must state that the document has been filed for
recordation. The address of the assignee must be made
of record in the application file.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992]
PART  - 4   COMPLAINTS REGARDING INVENTION
PROMOTERS
§  4.1 Complaints Regarding Invention Promoters.
These regulations govern the Patent and Trademark
Office’s (Office) responsibilities under the Inventors’
Rights Act of 1999, which can be found in the U.S. Code
at 35 U.S.C. 297. The Act requires the Office to provide
a forum for the publication of complaints concerning
invention promoters. The Office will not conduct any
independent investigation of the invention promoter.
Although the Act provides additional civil remedies for
persons injured by invention promoters, those remedies
must be pursued by the injured party without the
involvement of the Office.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§  4.2 Definitions.
(a)  Invention Promoter means any person, firm,
partnership, corporation, or other entity who offers to
perform or performs invention promotion services for, or
on behalf of, a customer, and who holds itself out through
advertising in any mass media as providing such services,
but does not include—
(1) Any department or agency of the Federal
Government or of a State or local government;
(2) Any nonprofit, charitable, scientific, or
educational organization qualified under applicable
State law or described under section 170(b)(1)(A) of
the Internal Revenue Code of 1986;
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 (3) Any person or entity involved in the evaluation
to determine commercial potential of, or offering to
license or sell, a utility patent or a previously filed
nonprovisional utility patent application;
(4) Any party participating in a transaction
involving the sale of the stock or assets of a business;
or
(5) Any party who directly engages in the business
of retail sales of products or the distribution of products.
(b)  Customer means any individual who enters into
a contract with an invention promoter for invention
promotion services.
(c)  Contract for Invention Promotion Services  means
a contract by which an invention promoter undertakes
invention promotion services for a customer.
(d)  Invention Promotion Services means the
procurement or attempted procurement for a customer of
a firm, corporation, or other entity to develop and market
products or services that include the invention of the
customer.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§  4.3 Submitting Complaints.
(a) A person may submit a complaint concerning an
invention promoter with the Office. A person submitting
a complaint should understand that the complaint may be
forwarded to the invention promoter and may become
publicly available. The Office will not accept any
complaint that requests that it be kept confidential.
(b) A complaint must be clearly marked, or otherwise
identified, as a complaint under these rules. The complaint
must include:
(1) The name and address of the complainant;
(2) The name and address of the invention
promoter;
(3) The name of the customer;
(4) The invention promotion services offered or
performed by the invention promoter;
(5) The name of the mass media in which the
invention promoter advertised providing such services;
(6) An explanation of the relationship between the
customer and the invention promoter, and
(7) A signature of the complainant.
(c) The complaint should fairly summarize the action
of the invention promoter about which the person
complains. Additionally, the complaint should include
names and addresses of persons believed to be associated
with the invention promoter. Complaints, and any replies,must be addressed to: Mail Stop 24, Commissioner for
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(d) Complaints that do not provide the information
requested in paragraphs (b) and (c) of this section will be
returned. If complainant’s address is not provided, the
complaint will be destroyed.
(e) No originals of documents should be included with
the complaint.
(f) A complaint can be withdrawn by the complainant
or the named customer at any time prior to its publication.
[Para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003]
§  4.4 Invention Promoter Reply.
(a) If a submission appears to meet the requirements
of a complaint, the invention promoter named in the
complaint will be notified of the complaint and given 30
days to respond. The invention promoter’s response will
be made available to the public along with the complaint.
If the invention promoter fails to reply within the 30-day
time period set by the Office, the complaint will be made
available to the public. Replies sent after the complaint
is made available to the public will also be published.
(b) A response must be clearly marked, or otherwise
identified, as a response by an invention promoter. The
response must contain:
(1) The name and address of the invention
promoter;
(2) A reference to a complaint forwarded to the
invention promoter or a complaint previously
published;
(3) The name of the individual signing the response;
and
(4) The title or authority of the individual signing
the response.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§  4.5 Notice by Publication.
If the copy of the complaint that is mailed to the invention
promoter is returned undelivered, then the Office will
publish a Notice of Complaint Received in the  Official
Gazette , the Federal Register, or on the Office’s Internet
home page. The invention promoter will be given 30 days
from such notice to submit a reply to the complaint. If the
Office does not receive a reply from the invention
promoter within 30 days, the complaint alone will become
publicly available.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 2000]
§  4.6 Attorneys and Agents.
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 Complaints against registered patent attorneys and agents
will not be treated under this section, unless a complaint
fairly demonstrates that invention promotion services are
involved. Persons having complaints about registered
patent attorneys or agents should contact the Office of
Enrollment and Discipline at Mail Stop OED, Director
of the United States Patent and Trademark Office, PO
Box 1450, Alexandria, Virginia 22313-1450, and the
attorney discipline section of the attorney’s state licensing
bar if an attorney is involved.
[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.28, 2000;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
PART  - 5   SECRECY OF CERTAIN INVENTIONS AND
LICENSES TO EXPORT AND FILE APPLICATIONS IN
FOREIGN COUNTRIES
SECRECY
§  5.1 Applications and correspondence involving
national security.
(a) All correspondence in connection with this part,
including petitions, should be addressed to: Mail Stop
L&R, Commissioner for Patents, P.O. Box 1450,
Alexandria, Virginia 22313-1450.
(b) Application as used in this part includes
provisional applications filed under 35 U.S.C. 111(b)  (§
1.9(a)(2)  of this chapter), nonprovisional applications
filed under 35 U.S.C. 111(a)  or entering the national stage
from an international application after compliance with
35 U.S.C. 371 (§ 1.9(a)(3) ), or international applications
filed under the Patent Cooperation Treaty prior to entering
the national stage of processing (§ 1.9(b) ).
(c) Patent applications and documents relating thereto
that are national security classified (see § 1.9(i) of this
chapter) and contain authorized national security markings
( e.g., “Confidential,” “Secret” or “Top Secret”) are
accepted by the Office. National security classified
documents filed in the Office must be either hand-carried
to Licensing and Review or mailed to the Office in
compliance with paragraph (a) of this section.
(d) The applicant in a national security classified
patent application must obtain a secrecy order pursuant
to § 5.2(a) . If a national security classified patent
application is filed without a notification pursuant to §
5.2(a) , the Office will set a time period within which
either the application must be declassified, or the
application must be placed under a secrecy order pursuant
to § 5.2(a) , or the applicant must submit evidence of a
good faith effort to obtain a secrecy order pursuant to §
5.2(a)  from the relevant department or agency in order to
prevent abandonment of the application. If evidence of agood faith effort to obtain a secrecy order pursuant to §
5.2(a)  from the relevant department or agency is submitted
by the applicant within the time period set by the Office,
but the application has not been declassified or placed
under a secrecy order pursuant to § 5.2(a) , the Office will
again set a time period within which either the application
must be declassified, or the application must be placed
under a secrecy order pursuant to § 5.2(a) , or the applicant
must submit evidence of a good faith effort to again obtain
a secrecy order pursuant to § 5.2(a)  from the relevant
department or agency in order to prevent abandonment
of the application.
(e) An application will not be published under § 1.211
of this chapter or allowed under § 1.311  of this chapter
if publication or disclosure of the application would be
detrimental to national security. An application under
national security review will not be published at least until
six months from its filing date or three months from the
date the application was referred to a defense agency,
whichever is later. A national security classified patent
application will not be published under § 1.211  of this
chapter or allowed under § 1.311  of this chapter until the
application is declassified and any secrecy order under §
5.2(a)  has been rescinded.
(f) Applications on inventions made outside the United
States and on inventions in which a U.S. Government
defense agency has a property interest will not be made
available to defense agencies.
[43 FR 20470, May 11, 1978; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,
effective Nov. 7, 2000; para. (e) revised, 65 FR 57024, Sept. 20, 2000,
effective Nov. 29, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003,
effective May 1, 2003; para. (a) revised, 69 FR 29865, May 26, 2004,
effective June 25, 2004]
§  5.2 Secrecy order.
(a) When notified by the chief officer of a defense
agency that publication or disclosure of the invention by
the granting of a patent would be detrimental to the
national security, an order that the invention be kept secret
will be issued by the Commissioner for Patents.
(b) 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.
(c) An application disclosing any significant part of
the subject matter of an application under a secrecy order
pursuant to paragraph (a) of this section also falls within
the scope of such secrecy order. Any such application
that is pending before the Office must be promptly
brought to the attention of Licensing and Review, unless
such application is itself under a secrecy order pursuant
to paragraph (a) of this section. Any subsequently filed
application containing any significant part of the subject
matter of an application under a secrecy order pursuant
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 to paragraph (a) of this section must either be hand-carried
to Licensing and Review or mailed to the Office in
compliance with § 5.1(a) .
[24 FR 10381, Dec. 22, 1959; para. (b) revised, paras. (c) and
(d) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para.
(c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  5.3 Prosecution of application under secrecy
orders; withholding patent.
Unless specifically ordered otherwise, action on the
application by the Office and prosecution by the applicant
will proceed during the time an application is under
secrecy order to the point indicated in this section:
(a) National applications under secrecy order which
come to a final rejection must be appealed or otherwise
prosecuted to avoid abandonment. Appeals in such cases
must be completed by the applicant but unless otherwise
specifically ordered by the Commissioner for Patents will
not be set for hearing until the secrecy order is removed.
(b) An interference will not be declared involving a
national application under secrecy order. An applicant
whose application is under secrecy order may suggest an
interference (§ 41.202 (a) of this title), but the Office will
not act on the request while the application remains under
a secrecy order.
(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 § 1.311  of this chapter) does
not require reply by the applicant and places the national
application in a condition of suspension until the secrecy
order is removed. When the secrecy order is removed the
Patent and Trademark Office will issue a notice of
allowance under § 1.311  of this chapter, or take such other
action as may then be warranted.
(d) International applications under secrecy order will
not be mailed, delivered, or otherwise transmitted to the
international authorities or the applicant. International
applications under secrecy order will be processed up to
the point where, if it were not for the secrecy order, record
and search copies would be transmitted to the international
authorities or the applicant.
[43 FR 20470, May 11, 1978; amended 43 FR 28479, June 30,
1978; para. (b) amended 53 FR 23736, June 23, 1988, effective Sept.
12, 1988; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.
1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  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 principalaffected thereby. Such petition may be in letter form, and
it must be in duplicate.
(b) The petition must recite any and all facts that
purport to render the order ineffectual or futile if this is
the basis of the petition. When prior publications or
patents are alleged the petition must give complete data
as to such publications or patents and should be
accompanied by copies thereof.
(c) The petition must identify any contract between
the Government and any of the principals under which
the subject matter of the application or any significant
part thereof was developed or to which the subject matter
is otherwise related. If there is no such contract, the
petition must so state.
(d) 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. Appeal must be taken within
sixty days from the date of the denial, and the party
appealing, as well as the department or agency which
caused the order to be issued, will be notified of the time
and place of hearing.
[24 FR 10381, Dec. 22, 1959; paras. (a) and (d) revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 69 FR 49959,
Aug. 12, 2004, effective Sept. 13, 2004]
§  5.5 Permit to disclose or modification of secrecy
order.
(a) Consent to disclosure, or to the filing of an
application abroad, as provided in 35 U .S.C. 182 , shall
be made by a “permit” or “modification” of the secrecy
order.
(b) Petitions for a permit or modification must fully
recite the reason or purpose for the proposed disclosure.
Where any proposed disclose 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.
(c) In a petition for modification of a secrecy order to
permit filing abroad, all countries in which it is proposed
to file must be made known, as well as all attorneys,
agents and others to whom the material will be consigned
prior to being lodged in the foreign patent office. The
petition should include a statement vouching for the
loyalty and integrity of the proposed disclosees and where
their clearance status in this or the foreign country is
known all details should be given.
(d) Consent to the disclosure of subject matter from
one application under secrecy order may be deemed to
be consent to the disclosure of common subject matter in
other applications under secrecy order so long as the
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 subject matter is not taken out of context in a manner
disclosing material beyond the modification granted in
the first application.
(e) Organizations requiring consent for disclosure of
applications under secrecy order to persons or
organizations in connection with repeated routine
operation may petition for such consent in the form of a
general permit. To be successful such petitions must
ordinarily recite the security clearance status of the
disclosees as sufficient for the highest classification of
material that may be involved.
[24 FR 10381, Dec. 22, 1959; paras. (b) and (e) revised, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  5.6 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§  5.7 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§  5.8 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
LICENSES FOR FOREIGN EXPORTING AND
FILING
§  5.11 License for filing in a foreign country an
application on an invention made in the United
States or for transmitting international
application.
(a) A license from the Commissioner for Patents under
35 U .S.C. 184  is required before filing any application
for patent including any modifications, amendments, or
supplements thereto or divisions thereof or for the
registration of a utility model, industrial design, or model,
in a foreign patent office or any foreign patent agency or
any international agency other than the United States
Receiving Office, if the invention was made in the United
States and:
(1) An application on the invention has been filed
in the United States less than six months prior to the
date on which the application is to be filed, or
(2) No application on the invention has been filed
in the United States.
(b) The license from the Commissioner for Patents
referred to in paragraph (a) would also authorize the
export of technical data abroad for purposes relating to
the preparation, filing or possible filing and prosecution
of a foreign patent application without separately
complying with the regulations contained in 22 CFR parts
121 through 130 (International Traffic in Arms
Regulations of the Department of State), 15 CFR parts730-774 (Regulations of the Bureau of Industry and
Security, Department of Commerce) and 10 CFR part 810
(Foreign Atomic Energy Programs of the Department of
Energy).
(c) Where technical data in the form of a patent
application, or in any form, are 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 for Patents 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 120 through 130
(International Traffic in Arms Regulations of the
Department of State), 15 CFR parts 730-774 (Bureau of
Industry and Security Regulations, Department of
Commerce) and 10 CFR part 810 (Assistance to Foreign
Atomic Energy Activities Regulations of the Department
of Energy) must be complied with unless a license is not
required because a United States application was on file
at the time of export for at least six months without a
secrecy order under § 5.2 being placed thereon. The term
“exported” means export as it is defined in 22 CFR part
120, 15 CFR part 734 and activities covered by 10 CFR
part 810.
(d) If a secrecy order has been issued under § 5.2 , an
application cannot be exported to, or filed in, a foreign
country (including an international agency in a foreign
country), except in accordance with § 5.5 .
(e) No license pursuant to paragraph (a) of this section
is required:
(1) If the invention was not made in the United
States, or
(2) If the corresponding United States application
is not subject to a secrecy order under § 5.2 , and was
filed at least six months prior to the date on which the
application is filed in a foreign country, or
(3) For subsequent modifications, amendments and
supplements containing additional subject matter to,
or divisions of, a foreign patent application if:
(i) A license is not, or was not, required under
paragraph (e)(2) of this section for the foreign
patent application;
(ii) The corresponding United States
application was not required to be made available
for inspection under 35 U .S.C. 181 ; and
(iii) Such modifications, amendments, and
supplements do not, or did not, change the general
nature of the invention in a manner which would
require any corresponding United States
application to be or have been available for
inspection under 35 U .S.C. 181 .
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 (f) A license pursuant to paragraph (a) of this section
can be revoked at any time upon written notification by
the Patent and Trademark Office. An authorization to file
a foreign patent application resulting from the passage of
six months from the date of filing of a United States patent
application may be revoked by the imposition of a secrecy
order.
[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 1924, Jan.
18, 1991, effective Feb. 19, 1991; paras. (b), (c), and (e)(3) revised, 62
FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(c) revised,
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b) and (c)
revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
§  5.12 Petition for license.
(a) Filing of an application for patent for inventions
made in the United States will be considered to include
a petition for license under 35 U .S.C. 184  for the subject
matter of the application. The filing receipt will indicate
if a license is granted. If the initial automatic petition is
not granted, a subsequent petition may be filed under
paragraph (b) of this section.
(b) A petition for license must include the fee set forth
in § 1.17(g) of this chapter, the petitioner’s address, and
full instructions for delivery of the requested license when
it is to be delivered to other than the petitioner. The
petition should be presented in letter form.
[48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, Apr. 4,
1984; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,
2000; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov.
22, 2004]
§  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 § 5.12 (b) must also be accompanied by a legible
copy of the material upon which a license is desired. This
copy will be retained as a measure of the license granted.
[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984;
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  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 § 5.12 (b)
must also identify this application by application number,
filing date, inventor, and title, but a copy of the material
upon which the license is desired is not required. The
subject matter licensed will be measured by the disclosure
of the United States application.
(b) Two or more United States applications should
not be referred to in the same petition for license unless
they are to be combined in the foreign or international
application, in which event the petition should so stateand the identification of each United States application
should be in separate paragraphs.
(c) Where the application to be filed or exported
abroad contains matter not disclosed in the United States
application or applications, including the case where the
combining of two or more United States applications
introduces subject matter not disclosed in any of them, a
copy of the application as it is to be filed in the foreign
country or international application which is to be
transmitted to a foreign international or national agency
for filing in the Receiving Office, must be furnished with
the petition. If however, all new matter in the foreign or
international application to be filed is readily identifiable,
the new matter may be submitted in detail and the
remainder by reference to the pertinent United States
application or applications.
[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 1984; para.
(a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  5.15 Scope of license.
(a) Applications or other materials reviewed pursuant
to §§ 5.12  through 5.14, which were not required to be
made available for inspection by defense agencies under
35 U .S.C. 181 , will be eligible for a license of the scope
provided in this paragraph. This license permits
subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a
foreign patent application, if such changes to the
application do not alter the general nature of the invention
in a manner which would require the United States
application to have been made available for inspection
under 35 U .S.C. 181 . Grant of this license authorizing
the export and filing of an application in a foreign country
or the transmitting of an international application to any
foreign patent agency or international patent agency when
the subject matter of the foreign or international
application corresponds to that of the domestic
application. This license includes authority:
(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 or taking of any action under
paragraphs (a)(1) or (2) of this section does not change
the general nature of the invention disclosed in the
application in a manner which would require such
application to have been made available for inspection
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 under 35 U .S.C. 181  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
through 130; or
(ii) Restricted Data, sensitive nuclear
technology or technology useful in the production
or utilization of special nuclear material or atomic
energy, dissemination of which is subject to
restrictions of the Atomic Energy Act of 1954, as
amended, and the Nuclear Non-Proliferation Act
of 1978, as implemented by the regulations for
Unclassified Activities in Foreign Atomic Energy
Programs, 10 CFR part 810, in effect at the time
of foreign filing.
(b) Applications or other materials which were
required to be made available for inspection under
35 U .S.C. 181  will be eligible for a license of the scope
provided in this paragraph. Grant of this license authorizes
the export and filing of an application in a foreign country
or the transmitting of an international application to any
foreign patent agency or international patent agency.
Further, this license includes authority to export and file
all duplicate and formal papers in foreign countries or
with foreign and international patent agencies and to make
amendments, modifications, and supplements to, file
divisions of, and take any action in the prosecution of the
foreign or international application, provided subject
matter additional to that covered by the license is not
involved.
(c) A license granted under § 5.12 (b) pursuant to
§ 5.13  or § 5.14  shall have the scope indicated in
paragraph (a) of this section, if it is so specified in the
license. A petition, accompanied by the required fee
(§ 1.17 (g) of this chapter), may also be filed to change a
license having the scope indicated in paragraph (b) of this
section to a license having the scope indicated in
paragraph (a) of this section. No such petition will be
granted if the copy of the material filed pursuant to § 5.13
or any corresponding United States application was
required to be made available for inspection under
35 U .S.C. 181 . The change in the scope of a license will
be effective as of the date of the grant of the petition.
(d) In those cases in which no license is required to
file the foreign application or transmit the international
application, no license is required to file papers in
connection with the prosecution of the foreign or
international application not involving the disclosure of
additional subject matter.(e) Any paper filed abroad or transmitted to an
international patent agency following the filing of a
foreign or international application which changes the
general nature of the subject matter disclosed at the time
of filing in a manner which would require such application
to have been made available for inspection under
35 U.S.C. 181  or which involves the disclosure of subject
matter listed in paragraphs (a)(3)(i) or (ii) of this section
must be separately licensed in the same manner as a
foreign or international application. Further, if no license
has been granted under § 5.12 (a) on filing the
corresponding United States application, any paper filed
abroad or with an international patent agency which
involves the disclosure of additional subject matter must
be licensed in the same manner as a foreign or
international application.
(f) Licenses separately granted in connection with two
or more United States applications may be exercised by
combining or dividing the disclosures, as desired,
provided:
(1) Subject matter which changes the general nature
of the subject matter disclosed at the time of filing or
which involves subject matter listed in paragraphs
(a)(3) (i) or (ii) of this section is not introduced and,
(2) In the case where at least one of the licenses
was obtained under § 5.12 (b), additional subject matter
is not introduced.
(g) A license does not apply to acts done before the
license was granted. See § 5.25  for petitions for retroactive
licenses.
[49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and (f), 56 FR
1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. (a)-(c) and (e)
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c)
revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§  5.16 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective
Dec. 1, 1997]
§  5.17 [Reserved]
[49 FR 13463, Apr. 4, 1984; removed and reserved, 62 FR
53131, Oct. 10, 1997, effective Dec. 1, 1997]
§  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 120 through 130); the
articles designated as arms, ammunitions, and implements
of war are enumerated in the U.S. Munitions List (22 CFR
part 121). However, if a patent applicant complies with
regulations issued by the Commissioner for Patents 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
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 application in a foreign country. This exemption from
Department of State regulations is applicable regardless
of whether a license from the Commissioner for Patents
is required by the provisions of §§ 5.11  and 5.12 (22 CFR
part 125).
(b) When a patent application containing subject
matter on the Munitions List (22 CFR part 121) is subject
to a secrecy order under § 5.2  and a petition is made under
§ 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 part 125).
[35 FR 6430., Apr. 22, 1970; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25,
2003, effective May 1, 2003]
§  5.19 Export of technical data.
(a) Under regulations (15 CFR 734.3(b)(1)(v))
established by the Department of Commerce, a license is
not required in any case to file a patent application or part
thereof in a foreign country if the foreign filing is in
accordance with the regulations (§§ 5.11 through 5.25)
of the U.S. Patent and Trademark Office.
(b) An export license is not required for data contained
in a patent application prepared wholly from
foreign-origin technical data where such application is
being sent to the foreign inventor to be executed and
returned to the United States for subsequent filing in the
U.S. Patent and Trademark Office (15 CFR 734.10(a)).
[45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 54504,
Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997; revised, 70 FR 56119, Sept. 26, 2005,
effective Nov. 25, 2005]
§  5.20 Export of technical data relating to sensitive
nuclear technology.
Under regulations (10 CFR 810.7) established by the
United States Department of Energy, an application filed
in accordance with the regulations ( §§ 5.11  through 5.25)
of the Patent and Trademark Office and eligible for
foreign filing under 35 U .S.C. 184 , is considered to be
information available to the public in published form and
a generally authorized activity for the purposes of the
Department of Energy regulations.
[49 FR 13463, Apr. 4, 1984; revised, 62 FR 53131, Oct. 10,
1997, effective Dec. 1, 1997]
§  5.25 Petition for retroactive license.
(a) A petition for retroactive license under 35 U .S.C.
184 shall be presented in accordance with § 5.13  or §
5.14(a), and shall include:
(1) A listing of each of the foreign countries in
which the unlicensed patent application material was
filed,(2) The dates on which the material was filed in
each country,
(3) A verified statement (oath or declaration)
containing:
(i) An averment that the subject matter in
question was not under a secrecy order at the time
it was filed abroad, and that it is not currently
under a secrecy order,
(ii) A showing that the license has been
diligently sought after discovery of the proscribed
foreign filing, and
(iii) An explanation of why the material was
filed abroad through error and without deceptive
intent without the required license under § 5.11
first having been obtained, and
(4) The required fee ( § 1.17 (g) of this chapter).
(b) The explanation in paragraph (a) of this section
must include a showing of facts rather than a mere
allegation of action through error and without deceptive
intent. The showing of facts as to the nature of the error
should include statements by those persons having
personal knowledge of the acts regarding filing in a
foreign country and should be accompanied by copies of
any necessary supporting documents such as letters of
transmittal or instructions for filing. The acts which are
alleged to constitute error without deceptive intent should
cover the period leading up to and including each of the
proscribed foreign filings.
(c) If a petition for a retroactive license is denied, a
time period of not less than thirty days shall be set, during
which the petition may be renewed. Failure to renew the
petition within the set time period will result in a final
denial of the petition. A final denial of a petition stands
unless a petition is filed under § 1.181  within two months
of the date of the denial. If the petition for a retroactive
license is denied with respect to the invention of a pending
application and no petition under § 1.181  has been filed,
a final rejection of the application under 35 U .S.C. 185
will be made.
[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 18,
1991, effective Feb. 19, 1991; para. (c) removed, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997; para. (a)(4) revised, para. (b)
redesignated as para. (c) and para. (b) added, 69 FR 56481, Sept. 21,
2004, effective Nov. 22, 2004]
GENERAL
§  5.31 [Reserved]
[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463,
Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]
§  5.32 [Reserved]
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 [24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 13463,
Apr. 4, 1984; removed and reserved, 62 FR 53131, Oct. 10, 1997,
effective Dec. 1, 1997]
§  5.33 [Reserved]
[49 FR 13463, Apr. 4, 1984; amended, 61 FR 56439, Nov. 1,
1996, effective Dec. 2, 1996; removed and reserved, 62 FR 53131, Oct.
10, 1997, effective Dec. 1, 1997]
I
I  RULES RELATING TO PATENTS
A
Abandoned applications:.........................1.72,1.77,1.163
Abandonment by failure to reply ..................... 1.135
Abandonment during interference.................41.127
Abandonment for failure to pay issue fee ........ 1.316
Express abandonment......................................1.138
Processing and retention fee.........................1.21(1)
Referred to in issued patents..............................1.14
Revival of ......................................................... 1.137
When open to public inspection........................1.14
Abandonment by failure to reply ..................... 1.135
Abandonment during interference.................41.127
Abandonment for failure to pay issue fee ........ 1.316
Express abandonment......................................1.138
Processing and retention fee.........................1.21(1)
Referred to in issued patents..............................1.14
Revival of ......................................................... 1.137
When open to public inspection........................1.14
Abandonment of application. (See Abandoned
applications.)...........................................1.72,1.77,1.163
1.72,1.77,1.163
Abstract of the disclosure........................1.72,1.77,1.163
Access to pending applications (limited)..................1.14
Action by applicant.....................................1.111 - 1.138
Addresses for correspondence with the United States
Patent and Trademark Office ...................................... 1.1
Board of Patent Appeals and
Interferences..............................................1.1(a)(1),
41.10
Board of Patent Appeals and
Interferences..............................................1.1(a)(1),
41.10
Deposit account replenishment ................ 1.25(c)(3),
1.25(c)(4)
Deposit account replenishment ................ 1.25(c)(3),
1.25(c)(4)
Director of the United States Patent and Trademark
Office...............................................................1.1(a)
Director of the United States Patent and Trademark
Office...............................................................1.1(a)
FOIA Officer ..............................102.1(b), 102.4(a)
FOIA Officer ..............................102.1(b), 102.4(a)Generally.........................................................1.1(a)
Generally.........................................................1.1(a)
Licensing and Review ..................................... 5.1(a)
Licensing and Review ..................................... 5.1(a)
Office of the General Counsel...................1.1(a)(3),
102.10(b), 102.29(b)
Office of the General Counsel...................1.1(a)(3),
102.10(b), 102.29(b)
Office of the Solicitor................................1.1(a)(3),
Office of the Solicitor................................1.1(a)(3),
Mail Stops .................................................................
Mail Stop 4 ......................................................... 150.6
Mail Stop 4 ............................................................. 150.6
Mail Stop 8....................................................1.1(a)(3)
Mail Stop 8........................................................1.1(a)(3)
Mail Stop 24 ......................................................4.3(c)
Mail Stop 24 ..........................................................4.3(c)
Mail Stop Assignment Recordation
Services ................................................. 1.1(a)(4), 3.27
Mail Stop Assignment Recordation Services....1.1(a)(4),
3.27
Mail Stop CPA ............................................. 1.53(d)(9)
Mail Stop CPA ................................................. 1.53(d)(9)
Mail Stop Document Services ....................... 1.1(a)(4)
Mail Stop Document Services ........................... 1.1(a)(4)
Mail Stop  Ex parte Reexam .......................... 1.1(c)(1)
Mail Stop  Ex parte Reexam .............................. 1.1(c)(1)
Mail Stop  Inter partes  Reexam ..................... 1.1(c)(2)
Mail Stop  Inter partes  Reexam ......................... 1.1(c)(2)
Mail Stop Interference....................................41.10(b)
Mail Stop Interference........................................41.10(b)
Mail Stop M Correspondence........................1.1(d)(2)
Mail Stop M Correspondence............................1.1(d)(2)
Mail Stop OED.......................................................4.6
Mail Stop OED...........................................................4.6
Mail Stop Patent Ext ..........................................1.1(e)
Mail Stop Patent Ext ..............................................1.1(e)
Mail Stop PCT ......... 1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stop PCT ............. 1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stops .................................................................
Mail Stop 4 ......................................................... 150.6
Mail Stop 4 ............................................................. 150.6
Mail Stop 8....................................................1.1(a)(3)
Mail Stop 8........................................................1.1(a)(3)
Mail Stop 24 ......................................................4.3(c)
Mail Stop 24 ..........................................................4.3(c)
Mail Stop Assignment Recordation
Services ................................................. 1.1(a)(4), 3.27
Mail Stop Assignment Recordation Services....1.1(a)(4),
3.27
Mail Stop CPA ............................................. 1.53(d)(9)
Mail Stop CPA ................................................. 1.53(d)(9)
Mail Stop Document Services ....................... 1.1(a)(4)
Mail Stop Document Services ........................... 1.1(a)(4)
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 Mail Stop  Ex parte Reexam .......................... 1.1(c)(1)
Mail Stop  Ex parte Reexam .............................. 1.1(c)(1)
Mail Stop  Inter partes  Reexam ..................... 1.1(c)(2)
Mail Stop  Inter partes  Reexam ......................... 1.1(c)(2)
Mail Stop Interference....................................41.10(b)
Mail Stop Interference........................................41.10(b)
Mail Stop M Correspondence........................1.1(d)(2)
Mail Stop M Correspondence............................1.1(d)(2)
Mail Stop OED.......................................................4.6
Mail Stop OED...........................................................4.6
Mail Stop Patent Ext ..........................................1.1(e)
Mail Stop Patent Ext ..............................................1.1(e)
Mail Stop PCT ......... 1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stop PCT ............. 1.1(b), 1.417, 1.434(a), 1.480(b)
Maintenance fee payments.........................1.1(d)(1)
Maintenance fee payments.........................1.1(d)(1)
Patent correspondence ................................ 1.1(a)(1)
Patent correspondence ................................ 1.1(a)(1)
Privacy Officer ......................... 102.23(a), 102.24(a)
Privacy Officer ......................... 102.23(a), 102.24(a)
Trademark correspondence .............................. 2.190
Trademark correspondence .............................. 2.190
Adjustment of patent term. (see Patent term adjustment
due to examination delay.) .....................1.42, 1.43, 1.64
1.42, 1.43, 1.64
Administrator, executor, or other legal representative may
make application and receive patent.......1.42, 1.43, 1.64
Admission to practice. (See Attorneys and
agents.)...............................................................41.50(b)
Affidavit (See also Oath in patent application):..41.50(b)
After appeal ..................................................... 41.33
As evidence in a contested case.....................41.154
To disqualify commonly owned patent or published
application as prior art ....................................1.130
Traversing rejections or objections..................1.132
After appeal ..................................................... 41.33
As evidence in a contested case.....................41.154
To disqualify commonly owned patent or published
application as prior art ....................................1.130
Traversing rejections or objections..................1.132
Agents. (See Attorneys and agents.)...................41.50(b)
Allowance and issue of patent: ........................... 41.50(b)
Amendment after allowance............................1.312
Application abandoned for nonpayment of issue
fee....................................................................1.316
Deferral of issuance.........................................1.314
Delayed payment of issue fee..........................1.137
Delivery of patent............................................1.315
Failure to pay issue fee..................... 1.137(c), 1.316
Issuance of patent............................................1.314
Notice of allowance.........................................1.311
Patent to issue upon payment of issue fee .....1.311,
1.314
Patent to lapse if issue fee is not paid in full....1.317Reasons for......................................................1.104
Withdrawal from issue ..................................... 1.313
Amendment after allowance............................1.312
Application abandoned for nonpayment of issue
fee....................................................................1.316
Deferral of issuance.........................................1.314
Delayed payment of issue fee..........................1.137
Delivery of patent............................................1.315
Failure to pay issue fee.....................1.137(c), 1.316
Issuance of patent............................................1.314
Notice of allowance.........................................1.311
Patent to issue upon payment of issue fee .....1.311,
1.314
Patent to lapse if issue fee is not paid in full....1.317
Reasons for......................................................1.104
Withdrawal from issue ..................................... 1.313
Allowed claims, rejection of by Board of Patent Appeals
and Interferences................................................41.50(b)
Amendment:..............................................................1.76
Adding or substituting claims .......................... 1.121
After appeal..........................................41.33, 41.63
After decision on appeal, based on new rejection of
Board of Patent Appeals and
Interferences...........................................41.50(b)(1)
After final action .............................................. 1.116
After final action (transitional procedures)......1.129
After notice of allowance.................................1.312
Copying claim of another application for
interference....................................................41.202
Copying claim of issued patent......................41.202
Deletions and insertions ................................... 1.121
Drawings..........................................................1.121
Manner of making............................................1.121
Not covered by original oath.............................1.67
Numbering of claims.......................................1.126
Of amendments................................................1.121
Of claims .......................................................... 1.121
Of disclosure....................................................1.121
Of drawing ....................................................... 1.121
Of specification................................................1.121
Paper and writing...............................................1.52
Petition from refusal to admit..........................1.127
Preliminary......................................................1.115
Proposed during interference.........................41.121
Provisional application .................................. 1.53(c)
Reexamination proceedings ....1.121(j), 1.530, 1.941
Reissue .............................................. 1.121(i), 1.173
Requisites of..........1.33, 1.111, 1.116, 1.121, 1.125
Right to amend ........................... 1.111, 1.116, 1.127
Signature to ........................................................ 1.33
Substitute specification .................................... 1.125
Time for ........................................................... 1.134
To applications in interference ....................... 41.121
To correct inaccuracies....................................1.121
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 To correspond to original drawing or
specification ..................................................... 1.121
To reissues. ....................................................... 1.173
To save from abandonment..............................1.135
Adding or substituting claims .......................... 1.121
After appeal..........................................41.33, 41.63
After decision on appeal, based on new rejection of
Board of Patent Appeals and
Interferences...........................................41.50(b)(1)
After final action .............................................. 1.116
After final action (transitional procedures)......1.129
After notice of allowance.................................1.312
Copying claim of another application for
interference....................................................41.202
Copying claim of issued patent......................41.202
Deletions and insertions ................................... 1.121
Drawings..........................................................1.121
Manner of making............................................1.121
Not covered by original oath.............................1.67
Numbering of claims.......................................1.126
Of amendments................................................1.121
Of claims .......................................................... 1.121
Of disclosure....................................................1.121
Of drawing ....................................................... 1.121
Of specification................................................1.121
Paper and writing...............................................1.52
Petition from refusal to admit..........................1.127
Preliminary......................................................1.115
Proposed during interference.........................41.121
Provisional application .................................. 1.53(c)
Reexamination proceedings ....1.121(j), 1.530, 1.941
Reissue .............................................. 1.121(i), 1.173
Requisites of..........1.33, 1.111, 1.116, 1.121, 1.125
Right to amend ........................... 1.111, 1.116, 1.127
Signature to ........................................................ 1.33
Substitute specification .................................... 1.125
Time for ........................................................... 1.134
To applications in interference ....................... 41.121
To correct inaccuracies....................................1.121
To correspond to original drawing or
specification ..................................................... 1.121
To reissues. ....................................................... 1.173
To save from abandonment..............................1.135
Amino acid sequences. (See Nucleotide and/or amino
acid sequences.) ........................................................ 1.76
Appeals:....................................................................1.76
Civil Actions under 35 U.S.C. 145, 146, 306..1.303,
1.304
Civil Actions under 35 U.S.C. 145, 146, 306..1.303,
1.304
To the Board of Patent Appeals and
Interferences..........................................41.30-41.54
To the Board of Patent Appeals and
Interferences..........................................41.30-41.54Affidavits after appeal........................................ 41.33
Brief....................................................................41.37
Decision/Action by Board..................................41.50
Return of jurisdiction to examiner .............. 1.197(a)
Termination of proceedings ........................ 1.197(b)
Return of jurisdiction to examiner .................. 1.197(a)
Termination of proceedings ............................ 1.197(b)
Examiner’s answer .............................................. 41.39
Fees.....................................................................41.20
Hearing of ........................................................... 41.47
 Inter partes  reexamination ................................. 41.61
New grounds of rejection...........41.39(a)(2), 41.50(b)
Notice of appeal..................................................41.31
Public inspection or publication of decisions.......1.14
Rehearing ........................................ 41.50(b)(2), 41.52
Reopening after final Board decision ................. 1.198
Reply brief..........................................................41.41
Sanctions...........................................................41.128
What may be appealed ........................................ 41.31
Who may appeal ................................................. 41.31
Affidavits after appeal............................................41.33
Brief........................................................................41.37
Decision/Action by Board......................................41.50
Return of jurisdiction to examiner .................. 1.197(a)
Termination of proceedings ............................ 1.197(b)
Return of jurisdiction to examiner ...................... 1.197(a)
Termination of proceedings ................................ 1.197(b)
Examiner’s answer .................................................. 41.39
Fees.........................................................................41.20
Hearing of ............................................................... 41.47
 Inter partes  reexamination ..................................... 41.61
New grounds of rejection...............41.39(a)(2), 41.50(b)
Notice of appeal......................................................41.31
Public inspection or publication of decisions...........1.14
Rehearing ............................................ 41.50(b)(2), 41.52
Reopening after final Board decision ..................... 1.198
Reply brief..............................................................41.41
Sanctions...............................................................41.128
What may be appealed ............................................ 41.31
Who may appeal ..................................................... 41.31
Affidavits after appeal........................................41.33
Brief....................................................................41.37
Decision/Action by Board..................................41.50
Return of jurisdiction to examiner .............. 1.197(a)
Termination of proceedings ........................ 1.197(b)
Return of jurisdiction to examiner .................. 1.197(a)
Termination of proceedings ............................ 1.197(b)
Examiner’s answer .............................................. 41.39
Fees.....................................................................41.20
Hearing of ........................................................... 41.47
 Inter partes  reexamination ................................. 41.61
New grounds of rejection...........41.39(a)(2), 41.50(b)
Notice of appeal..................................................41.31
Public inspection or publication of decisions.......1.14
Rehearing ........................................ 41.50(b)(2), 41.52
Reopening after final Board decision ................. 1.198
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 Reply brief..........................................................41.41
Sanctions...........................................................41.128
What may be appealed ........................................ 41.31
Who may appeal ................................................. 41.31
Affidavits after appeal............................................41.33
Brief........................................................................41.37
Decision/Action by Board......................................41.50
Return of jurisdiction to examiner .................. 1.197(a)
Termination of proceedings ............................ 1.197(b)
Return of jurisdiction to examiner ...................... 1.197(a)
Termination of proceedings ................................ 1.197(b)
Examiner’s answer .................................................. 41.39
Fees.........................................................................41.20
Hearing of ............................................................... 41.47
 Inter partes  reexamination ..................................... 41.61
New grounds of rejection...............41.39(a)(2), 41.50(b)
Notice of appeal......................................................41.31
Public inspection or publication of decisions...........1.14
Rehearing ............................................ 41.50(b)(2), 41.52
Reopening after final Board decision ..................... 1.198
Reply brief..............................................................41.41
Sanctions...............................................................41.128
What may be appealed ............................................ 41.31
Who may appeal ..................................................... 41.31
To Court of Appeals for the Federal Circuit:............
Fee provided by rules of court............................1.301
From Board of Patent Appeals and
Interferences ........................................................ 1.301
Notice and reasons of appeal..............................1.302
Time for filing notice of appeal...............1.302, 1.304
Fee provided by rules of court................................1.301
From Board of Patent Appeals and Interferences....1.301
Notice and reasons of appeal..................................1.302
Time for filing notice of appeal...................1.302, 1.304
To Court of Appeals for the Federal Circuit:............
Fee provided by rules of court............................1.301
From Board of Patent Appeals and
Interferences ........................................................ 1.301
Notice and reasons of appeal..............................1.302
Time for filing notice of appeal...............1.302, 1.304
Fee provided by rules of court................................1.301
From Board of Patent Appeals and Interferences....1.301
Notice and reasons of appeal..................................1.302
Time for filing notice of appeal...................1.302, 1.304
Applicant for patent:.................................................1.76
Actual inventor or inventors to make application for
patent ........................................................ 1.41, 1.45
Assignee ....................................................... 1.47(b)
Change of (see Correction of inventorship).......1.33
1.33
Correspondence address ................................... 1.33
Daytime telephone number ...............................1.33
Deceased or insane inventor.....................1.42, 1.43
Executor or administrator..................................1.42In a continued prosecution application ....1.53(b)(1),
1.53(d)(4)
In an international application ..............1.421-1.425
Informed of application number .......................1.54
Inventorship in a provisional application
.................................................................. 1.41(a)(2)
Mailing address and residence of inventors may be
provided in oath/declaration or in application data
sheet .........................................................1.63, 1.76
May be represented by an attorney or agent .....1.31
Person making oath or declaration ...................1.64
Personal attendance unnecessary ........................1.2
Required to conduct business with decorum and
courtesy ............................................................... 1.3
Required to report assistance received ................1.4
Who may apply for a patent ..................... 1.41-1.48
Actual inventor or inventors to make application for
patent ........................................................ 1.41, 1.45
Assignee .......................................................1.47(b)
Change of (see Correction of inventorship).......1.33
1.33
Correspondence address ................................... 1.33
Daytime telephone number ...............................1.33
Deceased or insane inventor.....................1.42, 1.43
Executor or administrator..................................1.42
In a continued prosecution application ....1.53(b)(1),
1.53(d)(4)
In an international application ..............1.421-1.425
Informed of application number .......................1.54
Inventorship in a provisional application
.................................................................. 1.41(a)(2)
Mailing address and residence of inventors may be
provided in oath/declaration or in application data
sheet .........................................................1.63, 1.76
May be represented by an attorney or agent .....1.31
Person making oath or declaration ...................1.64
Personal attendance unnecessary ........................1.2
Required to conduct business with decorum and
courtesy ............................................................... 1.3
Required to report assistance received ................1.4
Who may apply for a patent ..................... 1.41-1.48
Application Data sheet..............................................1.76
Application for patent (See also Abandoned applications,
Claims, Drawing, Examination of applications,
Provisional applications, Publication of application,
Published application, Reissues, Specification):....1.5(a),
1.53, 1.54
Access to............................................................1.14
Acknowledgment of filing.................................1.54
Alteration after execution..................................1.52
Alteration before execution...............................1.52
Application number and filing date...................1.54
Arrangement......................................................1.77
Compact disc submissions (see Electronic
documents).........................................................1.14
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 1.14
Confidentiality of applications .......................... 1.14
Continuation or division, reexecution not
required..............................................................1.63
Continued prosecution application................1.53(d)
Filed by facsimile ............................................. 1.6, 1.8
Filed by facsimile ................................................. 1.6, 1.8
Copies of, furnished to applicants.....................1.59
Cross-references to related applications............1.78
Deceased or insane inventor.....................1.42, 1.43
Declaration.........................................................1.68
Duty of disclosure .............................................. 1.56
Examined only when complete..........................1.53
Filed by other than inventor............1.42, 1.43, 1.47,
1.64, 1.421(b)
Filing date .......................................................... 1.53
Filing requirements ............................................ 1.53
Foreign language oath or declaration................1.69
Formulas and tables...........................................1.58
General requisites .............................................. 1.51
Identification required in letters concerning........1.5
Incomplete papers not filed for examination.....1.53
Interlineations, etc., to be indicated...................1.52
Involving national security ................................. 5.1
Language, paper, writing, margin......................1.52
Later filing of oath and filing fee.......................1.53
Missing pages when application filed...........1.53(e)
Must be made by actual inventor, with
exceptions ........................................ 1.41, 1.46, 1.47
Naming of inventors: ......................................... 1.52
Application data sheet ................................1.76(b)(1)
In a continued prosecution application .......1.53(d)(4)
In a provisional application .....1.41(a)(2), 1.51(c)(1),
1.53(c)(1)
In an international application ........................... 1.421
National stage ................................................ 1.497
National stage .................................................... 1.497
Inconsistencies between application data sheet and oath
or declaration ................................................... 1.76(d)
Joint inventors ......................................................1.45
Oath/declaration...........................................1.63(a)(2)
Application data sheet ....................................1.76(b)(1)
In a continued prosecution application ...........1.53(d)(4)
In a provisional application .....1.41(a)(2), 1.51(c)(1),
1.53(c)(1)
In an international application ............................... 1.421
National stage .................................................... 1.497
National stage ........................................................ 1.497
Inconsistencies between application data sheet and oath
or declaration ....................................................... 1.76(d)
Joint inventors ..........................................................1.45
Oath/declaration...............................................1.63(a)(2)
Non-English language.......................................1.52
Nonpublication request ...................................1.213
Numbering of claims ......................................1.126
Numbering of paragraphs ......................1.52, 1.125Original disclosure not expunged ............1.59(a)(2)
Parts filed separately .......................................... 1.54
Parts of application desirably filed together......1.54
Parts of complete application.............................1.51
Processing fees...................................................1.17
Provisional application ...................... 1.9, 1.51, 1.53
Publication of .......................................1.211, 1.219
Published ..................................................1.9, 1.215
Relating to atomic energy .................................. 1.14
Reservation for future application not
permitted ............................................................ 1.79
Retention fee .................................................. 1.53(f)
Secrecy order.................................................5.1-5.5
Status information .............................................. 1.14
Tables and formulas...........................................1.58
To contain but one invention unless
connected ......................................................... 1.141
To whom made ................................................... 1.51
Two or more by same party with conflicting
claims.................................................................1.78
Access to............................................................1.14
Acknowledgment of filing.................................1.54
Alteration after execution..................................1.52
Alteration before execution...............................1.52
Application number and filing date...................1.54
Arrangement......................................................1.77
Compact disc submissions (see Electronic
documents).........................................................1.14
1.14
Confidentiality of applications .......................... 1.14
Continuation or division, reexecution not
required..............................................................1.63
Continued prosecution application................1.53(d)
Filed by facsimile ............................................. 1.6, 1.8
Filed by facsimile ................................................. 1.6, 1.8
Copies of, furnished to applicants.....................1.59
Cross-references to related applications............1.78
Deceased or insane inventor.....................1.42, 1.43
Declaration.........................................................1.68
Duty of disclosure .............................................. 1.56
Examined only when complete..........................1.53
Filed by other than inventor............1.42, 1.43, 1.47,
1.64, 1.421(b)
Filing date .......................................................... 1.53
Filing requirements ............................................ 1.53
Foreign language oath or declaration................1.69
Formulas and tables...........................................1.58
General requisites .............................................. 1.51
Identification required in letters concerning........1.5
Incomplete papers not filed for examination.....1.53
Interlineations, etc., to be indicated...................1.52
Involving national security ................................. 5.1
Language, paper, writing, margin......................1.52
Later filing of oath and filing fee.......................1.53
Missing pages when application filed...........1.53(e)
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 Must be made by actual inventor, with
exceptions ........................................ 1.41, 1.46, 1.47
Naming of inventors: ......................................... 1.52
Application data sheet ................................1.76(b)(1)
In a continued prosecution application .......1.53(d)(4)
In a provisional application .....1.41(a)(2), 1.51(c)(1),
1.53(c)(1)
In an international application ........................... 1.421
National stage ................................................ 1.497
National stage .................................................... 1.497
Inconsistencies between application data sheet and oath
or declaration ................................................... 1.76(d)
Joint inventors ......................................................1.45
Oath/declaration...........................................1.63(a)(2)
Application data sheet ....................................1.76(b)(1)
In a continued prosecution application ...........1.53(d)(4)
In a provisional application .....1.41(a)(2), 1.51(c)(1),
1.53(c)(1)
In an international application ............................... 1.421
National stage .................................................... 1.497
National stage ........................................................ 1.497
Inconsistencies between application data sheet and oath
or declaration ....................................................... 1.76(d)
Joint inventors ..........................................................1.45
Oath/declaration...............................................1.63(a)(2)
Non-English language.......................................1.52
Nonpublication request ...................................1.213
Numbering of claims ......................................1.126
Numbering of paragraphs ......................1.52, 1.125
Original disclosure not expunged ............1.59(a)(2)
Parts filed separately .......................................... 1.54
Parts of application desirably filed together......1.54
Parts of complete application.............................1.51
Processing fees...................................................1.17
Provisional application ...................... 1.9, 1.51, 1.53
Publication of .......................................1.211, 1.219
Published ..................................................1.9, 1.215
Relating to atomic energy .................................. 1.14
Reservation for future application not
permitted ............................................................ 1.79
Retention fee .................................................. 1.53(f)
Secrecy order.................................................5.1-5.5
Status information .............................................. 1.14
Tables and formulas...........................................1.58
To contain but one invention unless
connected ......................................................... 1.141
To whom made ................................................... 1.51
Two or more by same party with conflicting
claims.................................................................1.78
Application number..............................1.5(a), 1.53, 1.54
Arbitration award filing..........................................1.335
Arbitration in a contested case before the Board...41.126
Assignee:................................................................... 1.14
Correspondence held with assignee(s) of entire
interest ....................................................... 3.71, 3.73
Establishing ownership ................................. 3.73(b)May conduct prosecution of application....3.71, 3.73
May make application on behalf of
inventor(s).....................................................1.47(b)
May take action in Board proceeding................41.9
Must consent to application for reissue of
patent ..................................................... 1.171, 1.172
Partial assignee(s)...................1.46, 3.71, 3.73, 3.81
Correspondence held with assignee(s) of entire
interest ....................................................... 3.71, 3.73
Establishing ownership ................................. 3.73(b)
May conduct prosecution of application....3.71, 3.73
May make application on behalf of
inventor(s).....................................................1.47(b)
May take action in Board proceeding................41.9
Must consent to application for reissue of
patent ..................................................... 1.171, 1.172
Partial assignee(s)...................1.46, 3.71, 3.73, 3.81
Assignments and recording:......................................1.14
Abstracts of title, fee for...........................1.19(b)(5)
Conditional assignments .................................... 3.56
Cover sheet required ................................. 3.28, 3.31
Corrections.........................................................3.34
Date of receipt is date of record.........................3.51
Definitions.......................................................1.332
Effect of recording.............................................3.54
Fees...............................................................1.21(h)
Formal requirements .................................. 3.21-3.28
If recorded before payment of issue fee, patent may
issue to assignee ................................................. 3.81
Joint research agreements................3.11(c), 3.31(g)
Mailing address for submitting
documents .......................................... 1.1(a)(4), 3.27
Must be recorded in Patent and Trademark Office to
issue patent to assignee......................................3.81
Must identify patent or application .................... 3.21
Orders for copies of...........................................1.12
Patent may issue to assignee..............................3.81
Recording of assignments .................................. 3.11
Records open to public inspection.....................1.12
Requirements for recording.......................3.21-3.41
What will be accepted for recording..................3.11
Abstracts of title, fee for...........................1.19(b)(5)
Conditional assignments .................................... 3.56
Cover sheet required ................................. 3.28, 3.31
Corrections.........................................................3.34
Date of receipt is date of record.........................3.51
Definitions.......................................................1.332
Effect of recording.............................................3.54
Fees...............................................................1.21(h)
Formal requirements .................................. 3.21-3.28
If recorded before payment of issue fee, patent may
issue to assignee ................................................. 3.81
Joint research agreements................3.11(c), 3.31(g)
Mailing address for submitting
documents .......................................... 1.1(a)(4), 3.27
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 Must be recorded in Patent and Trademark Office to
issue patent to assignee......................................3.81
Must identify patent or application .................... 3.21
Orders for copies of...........................................1.12
Patent may issue to assignee..............................3.81
Recording of assignments .................................. 3.11
Records open to public inspection.....................1.12
Requirements for recording.......................3.21-3.41
What will be accepted for recording..................3.11
Atomic energy applications reported to Department of
Energy.......................................................................1.14
Attorneys and agents: .............................................. 1.335
Acting in representative capacity..............1.33, 1.34
Annual practitioner maintenance fee:................1.36
Registered attorney or agent...........1.21(a)(7), 11.8(d)
Registered attorney or agent...............1.21(a)(7), 11.8(d)
Individual granted limited recognition........1.21(a)(8)
Individual granted limited recognition............1.21(a)(8)
Assignment will not operate as a revocation of
power.................................................................1.36
Certificate of good standing..........................1.21(a)
Complaints...........................................................4.6
Fee on admission...........................................1.21(a)
Office cannot aid in selection of........................1.31
Personal interviews with examiners ................ 1.133
Power of attorney .............................................. 1.32
Power to inspect ................................................ 1.14
Representative capacity ............................ 1.33, 1.34
Required to conduct business with decorum and
courtesy................................................................1.3
Revocation of power......................................1.36(a)
Signature and certificate of attorney.........1.4, 11.18
Withdrawal of.......................................1.36(b), 41.5
Acting in representative capacity..............1.33, 1.34
Annual practitioner maintenance fee:................1.36
Registered attorney or agent...........1.21(a)(7), 11.8(d)
Registered attorney or agent...............1.21(a)(7), 11.8(d)
Individual granted limited recognition........1.21(a)(8)
Individual granted limited recognition............1.21(a)(8)
Assignment will not operate as a revocation of
power.................................................................1.36
Certificate of good standing..........................1.21(a)
Complaints...........................................................4.6
Fee on admission...........................................1.21(a)
Office cannot aid in selection of........................1.31
Personal interviews with examiners ................ 1.133
Power of attorney .............................................. 1.32
Power to inspect ................................................ 1.14
Representative capacity ............................ 1.33, 1.34
Required to conduct business with decorum and
courtesy................................................................ 1.3
Revocation of power......................................1.36(a)
Signature and certificate of attorney.........1.4, 11.18
Withdrawal of.......................................1.36(b), 41.5
Authorization of agents. (See Attorneys and
agents.)....................................................................1.3351.335
Award in arbitration ................................................ 1.335
B
Balance in deposit account........................................1.25
Basic filing fee..........................................................1.16
Benefit of earlier application .................................... 1.78
Bill in equity. (See Civil action.).................................1.3
Biological material. (See Deposit of biological
material.).....................................................................1.3
Board of Patent Appeals and Interferences. (See Appeal
to Board of Patent Appeals and Interferences.) .......... 1.3
Briefs:..........................................................................1.3
In petitions to Director.....................................1.181
On appeal to Board..........................................41.37
In petitions to Director.....................................1.181
On appeal to Board..........................................41.37
Business to be conducted with decorum and
courtesy ....................................................................... 1.3
Business to be transacted in writing............................1.2
C
Certificate of correction...............................1.322, 1.323
Fees....................................................................1.20
Mistakes not corrected.....................................1.325
Fees....................................................................1.20
Mistakes not corrected.....................................1.325
Certificate of mailing (First Class) or transmission.....1.8
Certification effect of presentation to Office .....1.4(d),
11.18
Certified copies of records, papers, etc..........1.4(f), 1.13
Fee for certification.......................................1.19(b)
Fee for certification.......................................1.19(b)
Chemical and mathematical formulae and tables.....1.58
Citation of prior art in patented file........................1.501
Citation of references..............................................1.104
Civil action...................................................1.303, 1.304
Claims (See also Examination of
applications): ................................... 1.6(d)(4), 1.84(a)(2)
Amendment of ................................................. 1.121
Commence on separate sheet or electronic page
......................................................... 1.52(b), 1.75(h)
Conflicting, same applicant or owner................1.78
Date of invention of.........................................1.110
Dependent..........................................................1.75
Design patent ................................................... 1.153
May be in dependent form.................................1.75
More than one permitted....................................1.75
Multiple dependent ............................................ 1.75
Must conform to invention and specification.....1.75
Notice of rejection of ....................................... 1.104
Numbering of ................................................... 1.126
Part of complete application .............................1.51
Plant patent. ..................................................... 1.164
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 Rejection of ...................................................... 1.104
Required.............................................................1.75
Separate from other parts of application.......1.75(h)
Twice rejected before appeal...........................41.31
Amendment of ................................................. 1.121
Commence on separate sheet or electronic page
......................................................... 1.52(b), 1.75(h)
Conflicting, same applicant or owner................1.78
Date of invention of.........................................1.110
Dependent..........................................................1.75
Design patent ................................................... 1.153
May be in dependent form.................................1.75
More than one permitted....................................1.75
Multiple dependent ............................................ 1.75
Must conform to invention and specification.....1.75
Notice of rejection of.......................................1.104
Numbering of ................................................... 1.126
Part of complete application .............................1.51
Plant patent. ..................................................... 1.164
Rejection of ...................................................... 1.104
Required.............................................................1.75
Separate from other parts of application.......1.75(h)
Twice rejected before appeal...........................41.31
Color drawing..................................1.6(d)(4), 1.84(a)(2)
Commissioner of Patents and Trademarks (See Director
of the USPTO.) ..................................................... 1.78(c)
1.78(c)
Common ownership, statement by assignee may be
required ................................................................. 1.78(c)
Compact disc submissions. (See Electronic
documents.).................................................................1.3
1.3
Complaints against examiners, how presented...........1.3
Complaints regarding invention promoters (See Invention
promoters.)................................................................1.93
1.93
Composition of matter, specimens of ingredients may be
required.....................................................................1.93
Computer program listing appendix.........................1.96
Concurrent office proceedings ................................ 1.565
Conflicting claims, same applicant or owner in two or
more applications ...................................................... 1.78
Contested cases before the Board of Patent Appeals and
Interferences.............................................41.100-41.208
Continued examination, request for........................1.114
Fee...................................................................... 1.17
Suspension of action after ...............................1.103
Fee...................................................................... 1.17
Suspension of action after ...............................1.103
Continued prosecution application.......................1.53(d)
Suspension of action in ................................... 1.103
Suspension of action in ................................... 1.103
Continuing application for invention disclosed and
claimed in prior application.............................1.53, 1.63
Control number, display of.....................................1.419Copies of patents, published applications, records,
etc............................................................ 1.11, 1.12, 1.13
Copies of records, fees................................1.19(b), 1.59
Copyright notice in specification.........................1.71(d)
Copyright notice on drawings...............................1.84(s)
Correction, certificate of..............................1.322, 1.323
Correction of inventorship: ...................................... 1.23
In a nonprovisional application.........................1.48
Before filing oath/declaration ........1.41(a)(1), 1.76(c)
By filing oath/declaration ...........................1.76(d)(3)
When filing a continuation or divisional application
.......................................................................... 1.63(d)
When filing a continued prosecution application
..................................................................... 1.53(d)(4)
Before filing oath/declaration ............1.41(a)(1), 1.76(c)
By filing oath/declaration ...............................1.76(d)(3)
When filing a continuation or divisional application
.............................................................................. 1.63(d)
When filing a continued prosecution application
......................................................................... 1.53(d)(4)
In a nonprovisional application.........................1.48
Before filing oath/declaration ........1.41(a)(1), 1.76(c)
By filing oath/declaration ...........................1.76(d)(3)
When filing a continuation or divisional application
.......................................................................... 1.63(d)
When filing a continued prosecution application
..................................................................... 1.53(d)(4)
Before filing oath/declaration ............1.41(a)(1), 1.76(c)
By filing oath/declaration ...............................1.76(d)(3)
When filing a continuation or divisional application
.............................................................................. 1.63(d)
When filing a continued prosecution application
......................................................................... 1.53(d)(4)
In a provisional application...............................1.48
By filing a cover sheet .................................1.48(f)(2)
Without filing a cover sheet ........................1.41(a)(2)
By filing a cover sheet .....................................1.48(f)(2)
Without filing a cover sheet ............................1.41(a)(2)
In a provisional application...............................1.48
By filing a cover sheet .................................1.48(f)(2)
Without filing a cover sheet ........................1.41(a)(2)
By filing a cover sheet .....................................1.48(f)(2)
Without filing a cover sheet ............................1.41(a)(2)
In a reexamination proceeding ........................1.530
In an international application ........................1.472
When entering the national stage ........................ 1.497
When entering the national stage ............................ 1.497
In a reexamination proceeding ........................1.530
In an international application ........................1.472
When entering the national stage ........................ 1.497
When entering the national stage ............................ 1.497
In an issued patent ..........................................1.324
In other than a reissue application .................... 1.48
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 Inconsistencies between application data sheet and
oath or declaration ........................................1.76(d)
Motion to correct inventorship in an interference
.............................................................. 41.121(a)(2)
Supplemental application data sheet(s) ........1.76(c)
In an issued patent ..........................................1.324
In other than a reissue application .................... 1.48
Inconsistencies between application data sheet and
oath or declaration ........................................1.76(d)
Motion to correct inventorship in an interference
.............................................................. 41.121(a)(2)
Supplemental application data sheet(s) ........1.76(c)
Correspondence:.......................................................1.23
Address:...............................................................1.2
Change of correspondence address .................1.33(a)
Established by the office if more than one is specified
.......................................................................... 1.33(a)
Of the U.S. Patent and Trademark Office...............1.1
Change of correspondence address .....................1.33(a)
Established by the office if more than one is specified
.............................................................................. 1.33(a)
Of the U.S. Patent and Trademark Office...................1.1
Business with the Office to be transacted by.......1.2
Discourteous communications not entered..........1.3
Double, with different parties in interest not
allowed...............................................................1.33
Duplicate copies disposed of...............................1.4
Facsimile transmission....................................1.6(d)
Held with attorney or agent...............................1.33
Identification of application or patent in letter relating
to..........................................................................1.5
Involving national security ................................. 5.1
May be held exclusively with assignee(s) of entire
interest ............................................................... 3.71
Nature of..............................................................1.4
Patent owners in reexamination ..................... 1.33(c)
Receipt of letters and papers................................1.6
Rules for conducting in general.....................1.1-1.8
Separate letter for each subject or inquiry...........1.4
Signature requirements ................................... 1.4(d)
When no attorney or agent ................................. 1.33
With attorney or agent after power or authorization
is filed ................................................................ 1.33
Address:...............................................................1.2
Change of correspondence address .................1.33(a)
Established by the office if more than one is specified
.......................................................................... 1.33(a)
Of the U.S. Patent and Trademark Office...............1.1
Change of correspondence address .....................1.33(a)
Established by the office if more than one is specified
.............................................................................. 1.33(a)
Of the U.S. Patent and Trademark Office...................1.1
Business with the Office to be transacted by.......1.2
Discourteous communications not entered..........1.3Double, with different parties in interest not
allowed...............................................................1.33
Duplicate copies disposed of...............................1.4
Facsimile transmission.................................... 1.6(d)
Held with attorney or agent...............................1.33
Identification of application or patent in letter relating
to..........................................................................1.5
Involving national security ................................. 5.1
May be held exclusively with assignee(s) of entire
interest ............................................................... 3.71
Nature of..............................................................1.4
Patent owners in reexamination ..................... 1.33(c)
Receipt of letters and papers................................1.6
Rules for conducting in general.....................1.1-1.8
Separate letter for each subject or inquiry...........1.4
Signature requirements ................................... 1.4(d)
When no attorney or agent ................................. 1.33
With attorney or agent after power or authorization
is filed ................................................................ 1.33
Court of Appeals for the Federal Circuit, appeal to. (See
Appeal to Court of Appeals for the Federal
Circuit.).....................................................................1.23
1.23
Credit card payment..................................................1.23
Cross-reference to related applications ............1.76-1.78
Customer Number ............................................................
Defined.....................................................1.32(a)(4)
Required to establish a Fee Address............1.363(c)
Defined.....................................................1.32(a)(4)
Required to establish a Fee Address............1.363(c)
D
Date of invention of subject matter of individual
claims......................................................................1.110
Day for taking any action or paying any fee falling on
Saturday, Sunday, or Federal holiday.........................1.7
Death or insanity of inventor ............................ 1.42, 1.43
In an international application..............1.422, 1.423
In an international application..............1.422, 1.423
Decision by the Board of Patent Appeals and
Interferences ...........................................................  41.50
Return of jurisdiction to examiner .............. 1.197(a)
Termination of proceedings........................1.197(b)
Return of jurisdiction to examiner .............. 1.197(a)
Termination of proceedings........................1.197(b)
Declaration (See also Oath in patent application):..1.103
Foreign language ............................................... 1.69
In lieu of oath.....................................................1.68
In patent application..........................................1.68
Foreign language ............................................... 1.69
In lieu of oath.....................................................1.68
In patent application..........................................1.68
Deferral of examination .........................................1.103
Definitions:.............................................................1.315
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 Assignment..........................................................3.1
Customer Number ..................................... 1.32(a)(4)
Document.............................................................3.1
Federal holiday within the District of Columbia..1.9
National and international applications...............1.9
National security classified .................................1.9
Nonprofit organization ......................................1.27
Person (for small entity purposes) ....................1.27
Power of Attorney.....................................1.32(a)(1)
Principal....................................................1.32(a)(2)
Published application ..........................................1.9
Recorded document.............................................3.1
Revocation................................................1.32(a)(3)
Service of process............................15 CFR Part 15
Small business concern......................................1.27
Small entity ........................................................ 1.27
Terms under Patent Cooperation Treaty..........1.401
Testimony by employees................15 CFR Part 15a
Assignment..........................................................3.1
Customer Number ..................................... 1.32(a)(4)
Document.............................................................3.1
Federal holiday within the District of Columbia..1.9
National and international applications...............1.9
National security classified .................................1.9
Nonprofit organization ......................................1.27
Person (for small entity purposes) ....................1.27
Power of Attorney.....................................1.32(a)(1)
Principal....................................................1.32(a)(2)
Published application ..........................................1.9
Recorded document.............................................3.1
Revocation................................................1.32(a)(3)
Service of process............................15 CFR Part 15
Small business concern......................................1.27
Small entity ........................................................ 1.27
Terms under Patent Cooperation Treaty..........1.401
Testimony by employees................15 CFR Part 15a
Delivery of patent....................................................1.315
Deposit accounts.......................................................1.25
Fees...............................................................1.21(b)
Fees...............................................................1.21(b)
Deposit of biological material:....................1.52(e), 1.96
Acceptable depository ..................................... 1.803
Biological material ........................................... 1.801
Examination procedures .................................. 1.809
Furnishing of samples...................................... 1.808
Need or opportunity to make a deposit............1.802
Replacement or supplemental deposit.............1.805
Term of deposit................................................1.806
Time of making original deposit......................1.804
Viability of deposit..........................................1.807
Acceptable depository ..................................... 1.803
Biological material ........................................... 1.801
Examination procedures .................................. 1.809
Furnishing of samples......................................1.808
Need or opportunity to make a deposit............1.802Replacement or supplemental deposit.............1.805
Term of deposit................................................1.806
Time of making original deposit......................1.804
Viability of deposit..........................................1.807
Deposit of computer program listings.........1.52(e), 1.96
Depositions (See also Testimony in contested cases before
the Board): .............................................................. 1.515
Certificate of officer to accompany...........41.157(e)
Original filed as exhibit.............................41.157(e)
Person before whom taken ........................ 41.157(e)
Transcripts of.................................41.154(a),41.157
Certificate of officer to accompany...........41.157(e)
Original filed as exhibit.............................41.157(e)
Person before whom taken ........................ 41.157(e)
Transcripts of.................................41.154(a),41.157
Description of invention. (See Specification.)........1.515
Design Patent Applications:....................................1.515
Arrangement of application elements .............. 1.154
Claim................................................................1.153
Drawing...........................................................1.152
Expedited examination ................................... 1.155
Filing fee ....................................................... 1.16(b)
Issue fee ......................................................... 1.18(b)
Oath..................................................................1.153
Rules applicable ............................................... 1.151
Title, description and claim.............................1.153
Arrangement of application elements .............. 1.154
Claim................................................................1.153
Drawing...........................................................1.152
Expedited examination ................................... 1.155
Filing fee ....................................................... 1.16(b)
Issue fee ......................................................... 1.18(b)
Oath..................................................................1.153
Rules applicable ............................................... 1.151
Title, description and claim.............................1.153
Determination of request for  ex parte
reexamination..........................................................1.515
Director of the USPTO (See also Petition to the Director):
................................................................................. 1.121
Address of ...........................................................1.1
Address of ...........................................................1.1
Availability of decisions by ..............................1.14
Availability of decisions by ..............................1.14
Initiates  ex parte reexamination......................1.520
Initiates  ex parte reexamination......................1.520
Disclaimer, statutory:..............................................1.121
Fee.................................................................1.20(d)
Requirements of ............................................... 1.321
Terminal...........................................................1.321
Fee.................................................................1.20(d)
Requirements of ............................................... 1.321
Terminal...........................................................1.321
Disclosure, amendments to add new matter not
permitted.................................................................1.121
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 Discovery in contested cases before the
Board........................................................41.150-41.158
Division. (See Restriction of application.)................1.19
1.19
Document supply fees...............................................1.19
Drawing: ........................................................ 1.56, 1.555
Amendment of ................................................. 1.121
Arrangement of views....................................1.84(i)
Arrows...........................................................1.84(r)
Character of lines ........................................... 1.84(l)
Color ......................... 1.6(d)(4), 1.84(a)(2), 1.165(b)
Content of drawing ............................................ 1.83
Copyright notice ............................................ 1.84(s)
Correction ............................ 1.84(w), 1.85(c), 1.121
Cost of copies of................................................1.19
Design application ........................................... 1.152
Figure for front page.............................1.76, 1.84(j)
Filed with application ........................................ 1.81
Graphics........................................................1.84(d)
Hatching and shading...................................1.84(m)
Holes.............................................................1.84(x)
Identification.................................................1.84(c)
If of an improvement, must show connection with
old structure ....................................................... 1.83
Informal drawings .............................................. 1.85
Ink.............................................................1.84(a)(1)
Lead lines......................................................1.84(q)
Legends.........................................................1.84(o)
Letters............................................................1.84(p)
Location of names ......................................... 1.84(c)
Mask work notice .......................................... 1.84(s)
Must be described in and referred to
specification.......................................................1.74
Must show every feature of the invention..........1.83
No return or release.......................................1.85(b)
Numbering of sheets......................................1.84(t)
Numbering of views ...................................... 1.84(u)
Numbers........................................................1.84(p)
Original should be retained by applicant.......1.81(a)
Paper..............................................................1.84(e)
Part of application papers..................................1.52
Photographs...................................................1.84(b)
Plant patent application...........................1.81, 1.165
Reference characters ............................ 1.74, 1.84(p)
Reissue.............................................................1.173
Release not permitted .................................... 1.85(b)
Required by law when necessary for
understanding.....................................................1.81
Scale..............................................................1.84(k)
Security markings ......................................... 1.84(v)
Shading........................................................1.84(m)
Size of sheet and margins.........................1.84(f),(g)
Standards for drawings......................................1.84
Symbols.........................................................1.84(n)
Views.............................................................1.84(h)
When necessary, part of complete application...1.51Amendment of ................................................. 1.121
Arrangement of views....................................1.84(i)
Arrows...........................................................1.84(r)
Character of lines ........................................... 1.84(l)
Color ......................... 1.6(d)(4), 1.84(a)(2), 1.165(b)
Content of drawing ............................................ 1.83
Copyright notice ............................................ 1.84(s)
Correction ............................ 1.84(w), 1.85(c), 1.121
Cost of copies of................................................1.19
Design application ........................................... 1.152
Figure for front page.............................1.76, 1.84(j)
Filed with application ........................................ 1.81
Graphics........................................................1.84(d)
Hatching and shading...................................1.84(m)
Holes.............................................................1.84(x)
Identification.................................................1.84(c)
If of an improvement, must show connection with
old structure ....................................................... 1.83
Informal drawings .............................................. 1.85
Ink.............................................................1.84(a)(1)
Lead lines......................................................1.84(q)
Legends.........................................................1.84(o)
Letters............................................................1.84(p)
Location of names ......................................... 1.84(c)
Mask work notice .......................................... 1.84(s)
Must be described in and referred to
specification.......................................................1.74
Must show every feature of the invention..........1.83
No return or release.......................................1.85(b)
Numbering of sheets......................................1.84(t)
Numbering of views ...................................... 1.84(u)
Numbers........................................................1.84(p)
Original should be retained by applicant.......1.81(a)
Paper..............................................................1.84(e)
Part of application papers..................................1.52
Photographs...................................................1.84(b)
Plant patent application...........................1.81, 1.165
Reference characters ............................ 1.74, 1.84(p)
Reissue.............................................................1.173
Release not permitted .................................... 1.85(b)
Required by law when necessary for
understanding.....................................................1.81
Scale..............................................................1.84(k)
Security markings.........................................1.84(v)
Shading........................................................1.84(m)
Size of sheet and margins.........................1.84(f),(g)
Standards for drawings......................................1.84
Symbols.........................................................1.84(n)
Views.............................................................1.84(h)
When necessary, part of complete application...1.51
Duty of disclosure .......................................... 1.56, 1.555
Patent term extension.......................................1.765
Patent term extension.......................................1.765
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 E
Election of species..................................................1.146
Electronic documents: ...................................... 1.27, 1.28
Compact disc submissions:.......................................
Amino acid sequences ................. 1.821, 1.823, 1.825
Computer program listings .................................. 1.96
Incorporation by reference in specification .........1.52
Nuclide acid sequences ................ 1.821, 1.823, 1.825
Requirements .......................................................1.52
Submitted as part of permanent record .....1.52, 1.58,
1.96, 1.821, 1.823, 1.825
Tables ................................................................... 1.58
Amino acid sequences ..................... 1.821, 1.823, 1.825
Computer program listings ...................................... 1.96
Incorporation by reference in specification .............1.52
Nuclide acid sequences .................... 1.821, 1.823, 1.825
Requirements ...........................................................1.52
Submitted as part of permanent record ..1.52, 1.58, 1.96,
1.821, 1.823, 1.825
Tables ....................................................................... 1.58
Compact disc submissions:.......................................
Amino acid sequences ................. 1.821, 1.823, 1.825
Computer program listings .................................. 1.96
Incorporation by reference in specification .........1.52
Nuclide acid sequences ................ 1.821, 1.823, 1.825
Requirements .......................................................1.52
Submitted as part of permanent record .....1.52, 1.58,
1.96, 1.821, 1.823, 1.825
Tables ................................................................... 1.58
Amino acid sequences ..................... 1.821, 1.823, 1.825
Computer program listings ...................................... 1.96
Incorporation by reference in specification .............1.52
Nuclide acid sequences .................... 1.821, 1.823, 1.825
Requirements ...........................................................1.52
Submitted as part of permanent record ..1.52, 1.58, 1.96,
1.821, 1.823, 1.825
Tables ....................................................................... 1.58
Employee testimony. (See Testimony by Office
employees.) ...................................................... 1.27, 1.28
1.27, 1.28
Establishing small entity status........................1.27, 1.28
Evidence in contested cases before the Board......41.154
 Ex parte reexamination. (See Reexamination.).......1.42
Examination of applications:....................................1.42
Advancement of examination .......................... 1.102
As to form........................................................1.104
Citation of references.......................................1.104
Completeness of examiner’s action.................1.104
Deferral of ........................................................ 1.103
Examiner’s action............................................1.104
International-type search ................................. 1.104
Nature of examination.....................................1.104
Reasons for allowance.....................................1.104
Reconsideration after rejection if requested.....1.111Reissue.............................................................1.176
Rejection of claims..........................................1.104
Request for continued examination.................1.114
Requirements for information by examiner .....1.105
Suspension of ................................................... 1.103
Advancement of examination .......................... 1.102
As to form........................................................1.104
Citation of references.......................................1.104
Completeness of examiner’s action.................1.104
Deferral of ........................................................ 1.103
Examiner’s action............................................1.104
International-type search ................................. 1.104
Nature of examination.....................................1.104
Reasons for allowance.....................................1.104
Reconsideration after rejection if requested.....1.111
Reissue.............................................................1.176
Rejection of claims..........................................1.104
Request for continued examination.................1.114
Requirements for information by examiner .....1.105
Suspension of ................................................... 1.103
Examiners:................................................................1.42
Answers on appeal ........................................... 41.39
Complaints against...............................................1.3
Interviews with................................................1.133
Answers on appeal ........................................... 41.39
Complaints against...............................................1.3
Interviews with................................................1.133
Executors ................................................................... 1.42
Exhibits. (See Models and exhibits.)...............5.19, 5.20
5.19, 5.20
Export of technical data...................................5.19, 5.20
Express abandonment.............................................1.138
“Express Mail” ................................................... 1.6, 1.10
Date of receipt of.................................................1.6
Petition in regard to...........................................1.10
Date of receipt of.................................................1.6
Petition in regard to...........................................1.10
Expungement............................................................1.59
Extension of patent term (See also Patent term
adjustment): ............................................................ 1.136
Due to examination delay under the URAA (35
U.S.C. 154) ..................................................... 1.701
Due to regulatory review period (35 U.S.C. 156): .....
Applicant for.......................................................1.730
Application for.................................................... 1.740
Calculation of term:.....................................................
Animal drug product.......................................1.778
Food or color additive.....................................1.776
Human drug product.......................................1.775
Medical device................................................1.777
Veterinary biological product.........................1.779
Animal drug product...........................................1.778
Food or color additive.........................................1.776
Human drug product...........................................1.775
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                      - 194 - 
 Medical device....................................................1.777
Veterinary biological product.............................1.779
Applicant for...........................................................1.730
Application for........................................................1.740
Calculation of term:.........................................................
Animal drug product...........................................1.778
Food or color additive.........................................1.776
Human drug product...........................................1.775
Medical device....................................................1.777
Veterinary biological product.............................1.779
Animal drug product...............................................1.778
Food or color additive.............................................1.776
Human drug product...............................................1.775
Medical device........................................................1.777
Veterinary biological product.................................1.779
Certificate of extension.......................................1.780
Conditions for ..................................................... 1.720
Correction of informalities ................................1.740
Determination of eligibility................................1.750
Duty of disclosure...............................................1.765
Filing date of application....................................1.741
Formal requirements .......................................... 1.740
Incomplete application .......................................1.741
Interim extension under 35 U .S.C. 156 (d)(5) .....1.790
Interim extension under 35 U .S.C. 156 (e)(2) .....1.760
Multiple applications .......................................... 1.785
Order granting interim extension .......................1.780
Patents subject to................................................1.710
Signature requirements for application .............. 1.730
Termination of interim extension granted under 35
U.S.C. 156 (d)(5) ................................................. 1.791
Withdrawal of application ................................... 1.770
Certificate of extension...........................................1.780
Conditions for ......................................................... 1.720
Correction of informalities ....................................1.740
Determination of eligibility....................................1.750
Duty of disclosure...................................................1.765
Filing date of application........................................1.741
Formal requirements .............................................. 1.740
Incomplete application ...........................................1.741
Interim extension under 35 U .S.C. 156 (d)(5) ......... 1.790
Interim extension under 35 U .S.C. 156 (e)(2) ......... 1.760
Multiple applications .............................................. 1.785
Order granting interim extension ...........................1.780
Patents subject to....................................................1.710
Signature requirements for application .................. 1.730
Termination of interim extension granted under 35 U.S.C.
156(d)(5).................................................................1.791
Withdrawal of application ....................................... 1.770
Due to examination delay under the URAA (35
U.S.C. 154) ..................................................... 1.701
Due to regulatory review period (35 U.S.C. 156): .....
Applicant for.......................................................1.730
Application for....................................................1.740
Calculation of term:.....................................................
Animal drug product.......................................1.778Food or color additive.....................................1.776
Human drug product.......................................1.775
Medical device................................................1.777
Veterinary biological product.........................1.779
Animal drug product...........................................1.778
Food or color additive.........................................1.776
Human drug product...........................................1.775
Medical device....................................................1.777
Veterinary biological product.............................1.779
Applicant for...........................................................1.730
Application for........................................................1.740
Calculation of term:.........................................................
Animal drug product...........................................1.778
Food or color additive.........................................1.776
Human drug product...........................................1.775
Medical device....................................................1.777
Veterinary biological product.............................1.779
Animal drug product...............................................1.778
Food or color additive.............................................1.776
Human drug product...............................................1.775
Medical device........................................................1.777
Veterinary biological product.................................1.779
Certificate of extension.......................................1.780
Conditions for ..................................................... 1.720
Correction of informalities ................................1.740
Determination of eligibility................................1.750
Duty of disclosure...............................................1.765
Filing date of application....................................1.741
Formal requirements .......................................... 1.740
Incomplete application .......................................1.741
Interim extension under 35 U .S.C. 156 (d)(5) .....1.790
Interim extension under 35 U .S.C. 156 (e)(2) .....1.760
Multiple applications .......................................... 1.785
Order granting interim extension .......................1.780
Patents subject to................................................1.710
Signature requirements for application .............. 1.730
Termination of interim extension granted under 35
U.S.C. 156 (d)(5) ................................................. 1.791
Withdrawal of application ................................... 1.770
Certificate of extension...........................................1.780
Conditions for ......................................................... 1.720
Correction of informalities ....................................1.740
Determination of eligibility....................................1.750
Duty of disclosure...................................................1.765
Filing date of application........................................1.741
Formal requirements .............................................. 1.740
Incomplete application ...........................................1.741
Interim extension under 35 U .S.C. 156 (d)(5) ......... 1.790
Interim extension under 35 U .S.C. 156 (e)(2) ......... 1.760
Multiple applications .............................................. 1.785
Order granting interim extension ...........................1.780
Patents subject to....................................................1.710
Signature requirements for application .................. 1.730
Termination of interim extension granted under 35 U.S.C.
156(d)(5).................................................................1.791
Withdrawal of application ....................................... 1.770
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 Extension of time....................................................1.136
Fees....................................................................1.17
Interference proceedings .................................... 41.4
Fees....................................................................1.17
Interference proceedings .................................... 41.4
F
Facsimile transmission .................................... 1.6(d), 1.8
Federal holiday within the District of Columbia.....1.9(h)
Federal Register, publication of rules in.................1.351
Fees and payment of money:....................................1.11
Credit card.........................................................1.23
Deposit accounts................................................1.25
Document supply fees .......................................1.19
Extension of time...............................................1.17
Fee on appeal to the Court of Appeals for the Federal
Circuit provided by rules of court....................1.301
Fees payable in advance....................................1.22
Foreign filing license petition.......................1.17(g)
For international-type search report..............1.21(e)
Itemization required .......................................... 1.22
Method of payment ............................................ 1.23
Money by mail at risk of sender........................1.23
Money paid by mistake ...................................... 1.26
Necessary for application to be complete..........1.51
Petition fees ................................1.17, 1.181, 41.20
Post allowance ..................................................1.18
Prioritized examination under 37 CFR
1.102(e)..............................................................1.17
Processing fees...................................................1.17
Reexamination request .................................. 1.20(c)
Refunds..............................................................1.26
Relating to international applications .....1.25(b),
1.445, 1.481, 1.482, 1.492
Schedule of fees and charges.....................1.16-1.21
Credit card.........................................................1.23
Deposit accounts................................................1.25
Document supply fees .......................................1.19
Extension of time...............................................1.17
Fee on appeal to the Court of Appeals for the Federal
Circuit provided by rules of court....................1.301
Fees payable in advance....................................1.22
Foreign filing license petition.......................1.17(g)
For international-type search report..............1.21(e)
Itemization required .......................................... 1.22
Method of payment ............................................ 1.23
Money by mail at risk of sender........................1.23
Money paid by mistake ...................................... 1.26
Necessary for application to be complete..........1.51
Petition fees ................................1.17, 1.181, 41.20
Post allowance .................................................. 1.18
Prioritized examination under 37 CFR
1.102(e)..............................................................1.17
Processing fees...................................................1.17
Reexamination request .................................. 1.20(c)Refunds..............................................................1.26
Relating to international applications .....1.25(b),
1.445, 1.481, 1.482, 1.492
Schedule of fees and charges.....................1.16-1.21
Files open to the public.............................................1.11
Filing date of application .......................................... 1.53
Filing, search, and examination fees.........................1.16
Filing in Post Office .................................................. 1.10
Filing of interference settlement agreements........41.205
Final rejection: ............................................................ 1.8
Appeal from.....................................................41.31
Response to...........................................1.113, 1.116
When and how given.......................................1.113
Appeal from.....................................................41.31
Response to...........................................1.113, 1.116
When and how given.......................................1.113
First Class Mail (includes Priority Mail and Express
Mail)............................................................................1.8
Foreign application...................................................1.55
License to file............................................5.11-5.25
License to file............................................5.11-5.25
Foreign country: ................................................. Part 150
Taking oath in .................................................... 1.66
Taking testimony in...................................41.156(b)
Taking oath in .................................................... 1.66
Taking testimony in...................................41.156(b)
Foreign mask work protection............................Part 150
Evaluation of request.......................................150.4
Definition.........................................................150.1
Duration of proclamation.................................150.5
Initiation of evaluation ..................................... 150.2
Mailing address ................................................ 150.6
Submission of requests .................................... 150.3
Evaluation of request.......................................150.4
Definition.........................................................150.1
Duration of proclamation.................................150.5
Initiation of evaluation ..................................... 150.2
Mailing address ................................................ 150.6
Submission of requests .................................... 150.3
Formulas and tables in patent applications...............1.58
Fraud practiced or attempted on Office....................1.56
Freedom of Information Act (FOIA) ................. Part 102
Appeals from initial determinations or untimely
delays ............................................................ 102.10
Business information ...................................... 102.9
Correspondence address ......................102.1, 102.4
Expedited processing ......................................102.6
Fees ............................................................... 102.11
Public reference facilities ...............................102.2
Records ........................................................... 102.3
Responses to requests .....................................102.7
Responsibility for responding ............................102.5
Time limits .........................................................102.6
Responsibility for responding ................................102.5
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 Time limits .............................................................102.6
Appeals from initial determinations or untimely
delays ............................................................ 102.10
Business information ...................................... 102.9
Correspondence address ......................102.1, 102.4
Expedited processing ......................................102.6
Fees ............................................................... 102.11
Public reference facilities ...............................102.2
Records ........................................................... 102.3
Responses to requests .....................................102.7
Responsibility for responding ............................102.5
Time limits .........................................................102.6
Responsibility for responding ................................102.5
Time limits .............................................................102.6
Requirements for making requests..................102.4
Requirements for making requests..................102.4
G
 Gazette . (See  Official Gazette .)................... 1.25, 1.136
1.25, 1.136
General authorization to charge deposit account .....1.25,
1.136
General information and correspondence.............1.1-1.8
Government acquisition of foreign patent rights .....Part
501
Government employee invention ........................ Part 501
Government interest in patent, recording of....3.11, 3.31,
3.41, 3.58
Governmental registers ............................................. 3.58
Guardian of insane person may apply for patent......1.43
H
Hearings: .............................................................. 1.6, 1.7
Before the Board of Patents Appeals and
Interferences....................................................41.47
Fee for appeal hearing.....................................41.20
Before the Board of Patents Appeals and
Interferences....................................................41.47
Fee for appeal hearing.....................................41.20
Holiday, time for action expiring on....................1.6, 1.7
I
Identification of application, patent or registration.....1.5
Inconsistencies between application data sheet and oath
or declaration .......................................................1.76(d)
Incorporation by reference ........................................ 1.57
Information disclosure statement:......................Part 102
At time of filing application..............................1.51
Content of .......................................................... 1.98
Not permitted in provisional applications..........1.51
Reexamination ...................................... 1.555, 1.902
Suspension of action to provide time for
consideration of an IDS in a CPA ..............1.103(b)
Third party submission of..................................1.99To comply with duty of disclosure....................1.97
At time of filing application..............................1.51
Content of .......................................................... 1.98
Not permitted in provisional applications..........1.51
Reexamination ...................................... 1.555, 1.902
Suspension of action to provide time for
consideration of an IDS in a CPA ..............1.103(b)
Third party submission of..................................1.99
To comply with duty of disclosure....................1.97
Information, Public ............................................. Part 102
Insane inventor, application by guardian of..............1.43
 Inter partes reexamination. (See Reexamination.).1.416
Interferences:...........................................................1.416
Abandonment of the contest..........................41.127
Access to applications ................................... 1.11(e)
Addition of patent or application...................41.203
Amendment during ........................................ 41.121
Appeal to the Court of Appeals for the Federal
Circuit. .................................................. 1.301, 1.302
Applicant requests.........................................41.202
Arbitration......................................................41.126
Burden of proof..............................................41.207
Civil action ....................................................... 1.303
Common interests in the invention................41.206
Concession of priority .................................... 41.127
Copying claims from patent..............41.121, 41.202
Declaration of interference............................41.203
Definitions.....................................................41.201
Disclaimer to avoid interference....................41.127
Discovery.......................................................41.150
Extension of time...............................................41.4
In what cases declared ................................... 41.203
Junior party fails to overcome filing date of senior
party...............................................................41.204
Jurisdiction over involved files......................41.103
Manner of service of papers..........................41.106
Motions..........................................................41.121
Notice to file civil action.................................1.303
Notice of declaration......................................41.203
Petitions.............................................................41.3
Presumption as to order of invention.............41.207
Priority Statement .......................................... 41.204
Prosecution by owner of entire interest.............41.9
Records of, when open to public...................1.11(e)
Requests by applicants ................................... 41.202
Review of decision by civil action...................1.303
Same party ..................................................... 41.206
Sanctions ....................................................... 41.128
Secrecy order cases.........................................5.3(b)
Service of papers............................................41.106
Statutory disclaimer by patentee during........41.127
Suggestion of claims for interference............41.202
Suspension of other proceedings...................41.103
Time period for completion...........................41.200
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 Translation of document in foreign
language ......................................................... 41.154
Abandonment of the contest..........................41.127
Access to applications ................................... 1.11(e)
Addition of patent or application...................41.203
Amendment during ........................................ 41.121
Appeal to the Court of Appeals for the Federal
Circuit. .................................................. 1.301, 1.302
Applicant requests.........................................41.202
Arbitration......................................................41.126
Burden of proof..............................................41.207
Civil action ....................................................... 1.303
Common interests in the invention................41.206
Concession of priority .................................... 41.127
Copying claims from patent..............41.121, 41.202
Declaration of interference............................41.203
Definitions.....................................................41.201
Disclaimer to avoid interference....................41.127
Discovery.......................................................41.150
Extension of time...............................................41.4
In what cases declared ................................... 41.203
Junior party fails to overcome filing date of senior
party...............................................................41.204
Jurisdiction over involved files......................41.103
Manner of service of papers..........................41.106
Motions..........................................................41.121
Notice to file civil action.................................1.303
Notice of declaration......................................41.203
Petitions.............................................................41.3
Presumption as to order of invention.............41.207
Priority Statement .......................................... 41.204
Prosecution by owner of entire interest.............41.9
Records of, when open to public...................1.11(e)
Requests by applicants ................................... 41.202
Review of decision by civil action...................1.303
Same party ..................................................... 41.206
Sanctions ....................................................... 41.128
Secrecy order cases.........................................5.3(b)
Service of papers............................................41.106
Statutory disclaimer by patentee during........41.127
Suggestion of claims for interference............41.202
Suspension of other proceedings...................41.103
Time period for completion...........................41.200
Translation of document in foreign
language ......................................................... 41.154
International application. (See Patent Cooperation
Treaty.)....................................................................1.416
1.416
International Preliminary Examining Authority.....1.416
Interview summary.................................................1.133
Interviews with examiner ............................. 1.133, 1.560
Invention promoters: ................................................. 1.55
Complaints regarding....................................4.1-4.6
Publication of ............................................ 4.1, 4.3, 4.5
Reply to ................................................................... 4.4Submission of ......................................................... 4.3
Withdrawal of ......................................................... 4.3
Publication of ................................................ 4.1, 4.3, 4.5
Reply to ....................................................................... 4.4
Submission of ............................................................. 4.3
Withdrawal of ............................................................. 4.3
Complaints regarding....................................4.1-4.6
Publication of ............................................ 4.1, 4.3, 4.5
Reply to ................................................................... 4.4
Submission of ......................................................... 4.3
Withdrawal of ......................................................... 4.3
Publication of ................................................ 4.1, 4.3, 4.5
Reply to ....................................................................... 4.4
Submission of ............................................................. 4.3
Withdrawal of ............................................................. 4.3
Definition.............................................................4.2
Reply to complaint...............................................4.4
Definition.............................................................4.2
Reply to complaint...............................................4.4
Inventor (See also Applicant for patent, Application for
patent):......................................................................1.55
Death or insanity of inventor....................1.42, 1.43
In an international application ................. 1.422, 1.423
In an international application ..................... 1.422, 1.423
Refuses to sign application................................1.47
To make application..................................1.41, 1.45
Unavailable........................................................1.47
Death or insanity of inventor....................1.42, 1.43
In an international application ................. 1.422, 1.423
In an international application ..................... 1.422, 1.423
Refuses to sign application................................1.47
To make application..................................1.41, 1.45
Unavailable........................................................1.47
Inventor’s certificate priority benefit ........................ 1.55
Inventorship and date of invention of the subject matter
of individual claims ................................................. 1.110
Issue fee....................................................................1.18
Issue of patent. (See Allowance and issue of patent.)......
J
Joinder of inventions in one application ................. 1.141
Joint inventors.......................................1.45, 1.47, 1.324
Joint patent to inventor and assignee...............1.46, 3.81
Jurisdiction:......................................................................
After decision by Board of Patent Appeals and
Interferences ......................................... 1.197, 1.198
After notice of allowance.................................1.312
Over involved files ......................................... 41.103
After decision by Board of Patent Appeals and
Interferences ......................................... 1.197, 1.198
After notice of allowance.................................1.312
Over involved files ......................................... 41.103
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Lapsed patents.........................................................1.317
Legal representative of deceased or incapacitated
inventor .................................................... 1.42-1.43, 1.64
Legibility of papers...................................................1.52
Letters to the Office. (See Correspondence.).......1.19(c)
1.19(c)
Library service fee ................................................ 1.19(c)
License and assignment of government interest in
patent ....................................................... 3.11, 3.31, 3.41
License for foreign filing..................................5.11-5.15
List of U.S. patents classified in a subclass, cost
of...........................................................................1.19(d)
Local delivery box rental......................................1.21(d)
Lost files .................................................................. 1.251
M
Mail Stops ................................................................ 1.20
Mail Stop 4 .....................................................150.6
Mail Stop 8.................................................1.1(a)(3)
Mail Stop 24....................................................4.3(c)
Mail Stop Assignment Recordation
Services .............................................. 1.1(a)(4), 3.27
Mail Stop Document Services....................1.1(a)(4)
Mail Stop  Ex parte Reexam.......................1.1(c)(1)
Mail Stop  Inter partes Reexam ................1.1(c)(2)
Mail Stop Interference ...............................41.10(b)
Mail Stop L&R ...................................................5.1
Mail Stop M Correspondence ....................1.1(d)(2)
Mail Stop OED ...................................................4.6
Mail Stop Patent Ext ......................................1.1(e)
Mail Stop PCT .....1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stop 4 .....................................................150.6
Mail Stop 8.................................................1.1(a)(3)
Mail Stop 24....................................................4.3(c)
Mail Stop Assignment Recordation
Services .............................................. 1.1(a)(4), 3.27
Mail Stop Document Services....................1.1(a)(4)
Mail Stop  Ex parte Reexam.......................1.1(c)(1)
Mail Stop  Inter partes Reexam ................1.1(c)(2)
Mail Stop Interference ...............................41.10(b)
Mail Stop L&R ...................................................5.1
Mail Stop M Correspondence ....................1.1(d)(2)
Mail Stop OED ...................................................4.6
Mail Stop Patent Ext ......................................1.1(e)
Mail Stop PCT .....1.1(b), 1.417, 1.434(a), 1.480(b)
Maintenance fees ...................................................... 1.20
Acceptance of delayed payment of..................1.378
Address for payments ................................ 1.1(d)(1)
Address for correspondence (at PTO)........1.1(d)(2)
Address for correspondence (applicant’s) ......1.363
Review of decision refusing to accept.............1.377
Submission of..................................................1.366
Time for payment of........................................1.362Acceptance of delayed payment of..................1.378
Address for payments ................................ 1.1(d)(1)
Address for correspondence (at PTO)........1.1(d)(2)
Address for correspondence (applicant’s) ......1.363
Review of decision refusing to accept.............1.377
Submission of..................................................1.366
Time for payment of........................................1.362
Mask work notice in specification.......................1.71(d)
Mask work notice on drawing..............................1.84(s)
Mask work protection, foreign ........................... Part 150
Microorganisms. (See Deposit of biological
material.)...................................................................1.25
1.25
Minimum balance in deposit accounts......................1.25
Missing pages when application filed..................1.53(e)
Mistake in patent, certificate thereof issued.1.322, 1.323
Models and exhibits:.............................................41.121
Copies of ............................................................ 1.95
Disposal without notice unless return arrangements
made...................................................................1.94
If on examination model found necessary request
therefor will be made.........................................1.91
In contested cases..........................................41.154
May be required ................................................. 1.91
Model not generally admitted in application or
patent..................................................................1.91
Not to be taken from the Office except in custody of
sworn employee ................................................. 1.95
Return of ............................................................ 1.94
Working model may be required.......................1.91
Copies of ............................................................ 1.95
Disposal without notice unless return arrangements
made...................................................................1.94
If on examination model found necessary request
therefor will be made.........................................1.91
In contested cases..........................................41.154
May be required ................................................. 1.91
Model not generally admitted in application or
patent..................................................................1.91
Not to be taken from the Office except in custody of
sworn employee ................................................. 1.95
Return of ............................................................ 1.94
Working model may be required.......................1.91
Money. (See Fees and payment of money.)..........41.121
41.121
Motions in interferences.......................................41.121
To take testimony in foreign country........41.156(b)
To take testimony in foreign country........41.156(b)
N
Name of Applicant or Inventor (see Applicant for patent,
Application for patent, Inventor).............................1.121
1.121
New matter inadmissible in application..................1.121
New matter inadmissible in reissue ........................ 1.173
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 Non-English language specification fee ................ 1.17(i)
Nonprofit organization: ....................................................
Definition...........................................................1.27
Small entity status..............................................1.27
Definition...........................................................1.27
Small entity status..............................................1.27
Notice:..............................................................................
Of allowance of application.............................1.311
Of appeal to the Court of Appeals for the Federal
Circuit ................................................... 1.301, 1.302
Of arbitration award.........................................1.335
Of defective  ex parte  reexamination
request.........................................................1.510(c)
Of declaration of interference........................41.203
Of oral hearings before the Board of Patent Appeals
and Interferences .............................................. 41.47
Of rejection of an application..........................1.104
Of taking testimony...................................41.157(c)
Of allowance of application.............................1.311
Of appeal to the Court of Appeals for the Federal
Circuit ................................................... 1.301, 1.302
Of arbitration award.........................................1.335
Of defective  ex parte  reexamination
request.........................................................1.510(c)
Of declaration of interference........................41.203
Of oral hearings before the Board of Patent Appeals
and Interferences .............................................. 41.47
Of rejection of an application..........................1.104
Of taking testimony...................................41.157(c)
Nucleotide and/or amino acid sequences:........................
Amendments to ................................................ 1.825
Disclosure in patent applications.....................1.821
Form and format for computer readable form..1.824
Format for sequence data ................................. 1.822
Replacement of................................................1.825
Requirements...................................................1.823
Submission on compact disc .......1.52, 1.821, 1.823
Symbols...........................................................1.822
Amendments to ................................................ 1.825
Disclosure in patent applications.....................1.821
Form and format for computer readable form..1.824
Format for sequence data ................................. 1.822
Replacement of................................................1.825
Requirements...................................................1.823
Submission on compact disc .......1.52, 1.821, 1.823
Symbols...........................................................1.822
O
Oath in patent application. (See also Declaration):.1.175
Apostles ............................................................. 1.66
Before whom taken in foreign countries...........1.66
Before whom taken in United States.................1.66
By administrator or executor...........1.42, 1.63, 1.64
By guardian of insane person..........1.43, 1.63, 1.64Certificate of Officer administering ................... 1.66
Continuation-in-part......................................1.63(e)
Declaration.........................................................1.68
Foreign language ............................................... 1.69
International application..................................1.497
Inventor’s Certificate.........................................1.63
Made by inventor.......................................1.41,1.63
Made by someone other than inventor .........1.64(b)
Officers authorized to administer oaths.............1.66
Part of complete application..............................1.51
Person making ................................................... 1.64
Plant patent application .................................... 1.162
Requirements of ................................................. 1.63
Ribboned to other papers...................................1.66
Sealed.................................................................1.66
Signature to......................................1.63, 1.64, 1.67
Supplemental .................................................... 1.67
To acknowledge duty of disclosure....................1.63
When taken abroad to seal all papers ................ 1.66
Apostles ............................................................. 1.66
Before whom taken in foreign countries...........1.66
Before whom taken in United States.................1.66
By administrator or executor...........1.42, 1.63, 1.64
By guardian of insane person..........1.43, 1.63, 1.64
Certificate of Officer administering ................... 1.66
Continuation-in-part......................................1.63(e)
Declaration.........................................................1.68
Foreign language ............................................... 1.69
International application..................................1.497
Inventor’s Certificate.........................................1.63
Made by inventor.......................................1.41,1.63
Made by someone other than inventor .........1.64(b)
Officers authorized to administer oaths.............1.66
Part of complete application..............................1.51
Person making ................................................... 1.64
Plant patent application .................................... 1.162
Requirements of ................................................. 1.63
Ribboned to other papers...................................1.66
Sealed.................................................................1.66
Signature to......................................1.63, 1.64, 1.67
Supplemental .................................................... 1.67
To acknowledge duty of disclosure....................1.63
When taken abroad to seal all papers ................ 1.66
Oath or declaration in reissue application...............1.175
Oath or declaration....................................................1.73
Plant patent application .................................... 1.162
When international application enters national
stage.................................................................1.497
Plant patent application .................................... 1.162
When international application enters national
stage.................................................................1.497
Object of the invention..............................................1.73
Office action time for reply.....................................1.134
Office fees. (See Fees and payment of money.)..........1.2
1.2
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 Official action, based exclusively upon the written
record..........................................................................1.2
Official business, should be transacted in writing......1.2
 Official Gazette:.........................................................1.2
Amendments to rules published in..................1.351
Announces request for reexamination .....1.11(c),
1.904
Notice of filing application to nonsigning
inventor..............................................................1.47
Notice of issuance of  ex parte  reexamination
certificate.....................................................1.570(f)
Notice of issuance of  inter partes  reexamination
certificate.........................................................1.997
Amendments to rules published in..................1.351
Announces request for reexamination .....1.11(c),
1.904
Notice of filing application to nonsigning
inventor..............................................................1.47
Notice of issuance of  ex parte  reexamination
certificate.....................................................1.570(f)
Notice of issuance of  inter partes  reexamination
certificate.........................................................1.997
Oral statements ............................................................ 1.2
P
Payment of fees, Method..........................................1.23
Paper, definition of ...................................................... 1.9
Papers (requirements to become part of Office permanent
records).....................................................................1.52
Papers not received on Saturday, Sunday, or
holidays.......................................................................1.6
Patent application. (See Application for patent and
Provisional patent applications.) ................... 1.702-1.705
Patent application publication. (See Published
application.)..................................................1.702-1.705
Patent attorneys and agents. (See Attorneys and
agents.)..........................................................1.702-1.705
Patent Cooperation Treaty: ........................... 1.702-1.705
Access to international application files ......1.14(g)
Amendments and corrections during international
processing........................................................1.471
Amendments during international preliminary
examination......................................................1.485
Applicant for international application............1.421
Changes in person, name or address, where
filed................................................... 1.421(f), 1.472
Conduct of international preliminary
examination......................................................1.484
Copies of international application files ......1.14(g)
Definition of terms ........................................... 1.401
Delays in meeting time limits..........................1.468
Demand for international preliminary
examination......................................................1.480
Designation of States.......................................1.432
Entry into national stage ....................... 1.491, 1.495Examination at national stage..........................1.496
Fees:............................................................1.421(b)
Authorization to charge fees under 37 CFR 1.16
.......................................................................... 1.25(b)
Due on filing of international application. .....1.431(c)
Failure to pay results in withdrawal of
application ........................................... 1.431(d), 1.432
Filing, processing and search fees ...................... 1.445
International Filing Fee ................... 1.431(c), 1.445(b)
International preliminary examination.....1.481, 1.482
National stage........................................1.25(b), 1.492
Refunds...............................................................1.446
Authorization to charge fees under 37 CFR 1.16
.............................................................................. 1.25(b)
Due on filing of international application. ......... 1.431(c)
Failure to pay results in withdrawal of
application ............................................... 1.431(d), 1.432
Filing, processing and search fees .......................... 1.445
International Filing Fee ....................... 1.431(c), 1.445(b)
International preliminary examination.........1.481, 1.482
National stage............................................1.25(b), 1.492
Refunds...................................................................1.446
Filing by other than inventor ....................... 1.421(b)
International application requirements ............ 1.431
Abstract...............................................................1.438
Claims.................................................................1.436
Description..........................................................1.435
Drawings.............................................................1.437
Physical requirements.........................................1.433
Request...............................................................1.434
Abstract...................................................................1.438
Claims.....................................................................1.436
Description..............................................................1.435
Drawings.................................................................1.437
Physical requirements.............................................1.433
Request...................................................................1.434
International Bureau ........................................ 1.415
International Preliminary Examining
Authority..........................................................1.416
Inventor deceased ............................................. 1.422
Inventor insane or legally incapacitated ........... 1.423
Inventors, joint ................................. 1.421(b), 1.497
National stage in the United States:.................1.497
Commencement..................................................1.491
Commencement......................................................1.491
Entry ........................................................ 1.491, 1.495
Entry ............................................................ 1.491, 1.495
Examination........................................................1.496
Examination............................................................1.496
Fees....................................................... 1.25(b); 1.492
Fees........................................................... 1.25(b); 1.492
Oath or declaration at national stage...............1.497
Priority, claim for ......................... 1.55, 1.451, 1.452
Record copy to International Bureau, transmittal
procedures........................................................1.461
Representation by attorney or agent................1.455
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 Time limits for processing applications .....1.465,
1.468
United States as: .......................................................
Designated or Elected Office..............................1.414
International Searching Authority.......................1.413
Receiving Office ................................................. 1.412
Designated or Elected Office..................................1.414
International Searching Authority...........................1.413
Receiving Office ..................................................... 1.412
Unity of invention: ....................................................
Before International Searching Authority .....1.475,
1.476
Before International Preliminary Examining
Authority.............................................................1.488
National stage .......................................... 1.475, 1.499
Protest to lack of......................................1.477, 1.489
Before International Searching Authority .....1.475, 1.476
Before International Preliminary Examining
Authority.................................................................1.488
National stage .............................................. 1.475, 1.499
Protest to lack of..........................................1.477, 1.489
Access to international application files ......1.14(g)
Amendments and corrections during international
processing........................................................1.471
Amendments during international preliminary
examination......................................................1.485
Applicant for international application............1.421
Changes in person, name or address, where
filed................................................... 1.421(f), 1.472
Conduct of international preliminary
examination......................................................1.484
Copies of international application files ......1.14(g)
Definition of terms ........................................... 1.401
Delays in meeting time limits..........................1.468
Demand for international preliminary
examination......................................................1.480
Designation of States.......................................1.432
Entry into national stage ....................... 1.491, 1.495
Examination at national stage..........................1.496
Fees:............................................................1.421(b)
Authorization to charge fees under 37 CFR 1.16
.......................................................................... 1.25(b)
Due on filing of international application. .....1.431(c)
Failure to pay results in withdrawal of
application ........................................... 1.431(d), 1.432
Filing, processing and search fees ...................... 1.445
International Filing Fee ................... 1.431(c), 1.445(b)
International preliminary examination.....1.481, 1.482
National stage........................................1.25(b), 1.492
Refunds...............................................................1.446
Authorization to charge fees under 37 CFR 1.16
.............................................................................. 1.25(b)
Due on filing of international application. ......... 1.431(c)
Failure to pay results in withdrawal of
application ............................................... 1.431(d), 1.432
Filing, processing and search fees .......................... 1.445International Filing Fee ....................... 1.431(c), 1.445(b)
International preliminary examination.........1.481, 1.482
National stage ............................................ 1.25(b), 1.492
Refunds...................................................................1.446
Filing by other than inventor ....................... 1.421(b)
International application requirements ............ 1.431
Abstract...............................................................1.438
Claims.................................................................1.436
Description..........................................................1.435
Drawings.............................................................1.437
Physical requirements.........................................1.433
Request...............................................................1.434
Abstract...................................................................1.438
Claims.....................................................................1.436
Description..............................................................1.435
Drawings.................................................................1.437
Physical requirements.............................................1.433
Request...................................................................1.434
International Bureau ........................................ 1.415
International Preliminary Examining
Authority..........................................................1.416
Inventor deceased ............................................. 1.422
Inventor insane or legally incapacitated ........... 1.423
Inventors, joint ................................. 1.421(b), 1.497
National stage in the United States:.................1.497
Commencement..................................................1.491
Commencement......................................................1.491
Entry ........................................................ 1.491, 1.495
Entry ............................................................ 1.491, 1.495
Examination........................................................1.496
Examination............................................................1.496
Fees....................................................... 1.25(b); 1.492
Fees........................................................... 1.25(b); 1.492
Oath or declaration at national stage...............1.497
Priority, claim for ......................... 1.55, 1.451, 1.452
Record copy to International Bureau, transmittal
procedures........................................................1.461
Representation by attorney or agent................1.455
Time limits for processing applications .....1.465,
1.468
United States as: .......................................................
Designated or Elected Office..............................1.414
International Searching Authority.......................1.413
Receiving Office ................................................. 1.412
Designated or Elected Office..................................1.414
International Searching Authority...........................1.413
Receiving Office ..................................................... 1.412
Unity of invention: ....................................................
Before International Searching Authority .....1.475,
1.476
Before International Preliminary Examining
Authority.............................................................1.488
National stage .......................................... 1.475, 1.499
Protest to lack of......................................1.477, 1.489
Before International Searching Authority .....1.475, 1.476
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 Before International Preliminary Examining
Authority.................................................................1.488
National stage .............................................. 1.475, 1.499
Protest to lack of..........................................1.477, 1.489
Patent term adjustment due to examination
delay .............................................................. 1.702-1.705
Application for ................................................ 1.705
Determination ................................................. 1.705
Grounds for .....................................................1.702
Period of adjustment ....................................... 1.703
Reduction of period of adjustment .................1.704
Application for ................................................ 1.705
Determination ................................................. 1.705
Grounds for .....................................................1.702
Period of adjustment ....................................... 1.703
Reduction of period of adjustment .................1.704
Patent term extension due to examination delay .....1.701
Patent term extension due to regulatory review period.
(See Extension of patent term due to regulatory review
period (35 U.S.C. 156).)............................................1.23
Patents (See also Allowance and issue of patent):.....1.23
Available for license or sale, publication of
notice..............................................................1.21(i)
Certified copies of..............................................1.13
Correction of errors in.....1.171, 1.322, 1.323, 1.324
Delivery of ....................................................... 1.315
Disclaimer........................................................1.321
Identification required in letters concerning........1.5
Lapsed, for nonpayment of issue fee...............1.317
Obtainable by civil action................................1.303
Price of copies....................................................1.19
Records of, open to public........................1.11, 1.12
Reissuing of, when defective.................1.171-1.178
Available for license or sale, publication of
notice..............................................................1.21(i)
Certified copies of..............................................1.13
Correction of errors in.....1.171, 1.322, 1.323, 1.324
Delivery of ....................................................... 1.315
Disclaimer........................................................1.321
Identification required in letters concerning........1.5
Lapsed, for nonpayment of issue fee...............1.317
Obtainable by civil action................................1.303
Price of copies....................................................1.19
Records of, open to public........................1.11, 1.12
Reissuing of, when defective.................1.171-1.178
Payment of fees ......................................................... 1.23
Personal attendance unnecessary................................1.2
Petition for reissue.......................................1.171, 1.172
Petition to the Director: ............................. 1.84(b), 1.152
Fees....................................................................1.17
For delayed payment of issue fee.................... 1.137
For expungement of papers................................1.59
For extension of time.......................................1.136
For license for foreign filing..............................5.12
For the revival of an abandoned application.....1.137From formal objections or requirements .....1.113,
1.181
From requirement for restriction..........1.129, 1.144
General requirements ....................................... 1.181
In interferences .................................................. 41.3
In reexamination .............................................. 1.181
If examiner refused the  ex parte request.......1.515(c)
If examiner refused the  ex parte request...........1.515(c)
On refusal of examiner to admit amendment...1.127
Questions not specifically provided for ........... 1.182
Suspension of rules..........................................1.183
Petition to accept an unintentionally delayed claim for
domestic priority ....................... 1.78(a)(3), 1.78(a)(6)
Petition to accept an unintentionally delayed claim for
foreign priority ................................................ 1.55(c)
Petition to accept an unintentionally delayed claim for
domestic priority ........................... 1.78(a)(3), 1.78(a)(6)
Petition to accept an unintentionally delayed claim for
foreign priority .................................................... 1.55(c)
To exercise supervisory authority....................1.181
To make special...............................................1.102
Untimely unless filed within two months .......1.181
Fees....................................................................1.17
For delayed payment of issue fee....................1.137
For expungement of papers................................1.59
For extension of time.......................................1.136
For license for foreign filing..............................5.12
For the revival of an abandoned application.....1.137
From formal objections or requirements .....1.113,
1.181
From requirement for restriction..........1.129, 1.144
General requirements ....................................... 1.181
In interferences .................................................. 41.3
In reexamination .............................................. 1.181
If examiner refused the  ex parte request.......1.515(c)
If examiner refused the  ex parte request...........1.515(c)
On refusal of examiner to admit amendment...1.127
Questions not specifically provided for ........... 1.182
Suspension of rules..........................................1.183
Petition to accept an unintentionally delayed claim for
domestic priority ....................... 1.78(a)(3), 1.78(a)(6)
Petition to accept an unintentionally delayed claim for
foreign priority ................................................ 1.55(c)
Petition to accept an unintentionally delayed claim for
domestic priority ........................... 1.78(a)(3), 1.78(a)(6)
Petition to accept an unintentionally delayed claim for
foreign priority .................................................... 1.55(c)
To exercise supervisory authority.................... 1.181
To make special...............................................1.102
Untimely unless filed within two months .......1.181
Photographs ............................................... 1.84(b), 1.152
Plant patent applications:..........................................1.20
Applicant..........................................................1.162
Claim................................................................1.164
Declaration.......................................................1.162
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 Description.......................................................1.162
Drawings..........................................................1.165
Examination.....................................................1.167
Fee for copies.....................................................1.19
Filing fee.......................................................1.16(c)
Issue fee ......................................................... 1.18(c)
Oath..................................................................1.162
Rules applicable ............................................... 1.161
Specification and arrangement of application
elements .......................................................... 1.163
Specimens........................................................1.166
Applicant..........................................................1.162
Claim................................................................1.164
Declaration.......................................................1.162
Description.......................................................1.162
Drawings..........................................................1.165
Examination.....................................................1.167
Fee for copies.....................................................1.19
Filing fee.......................................................1.16(c)
Issue fee ......................................................... 1.18(c)
Oath..................................................................1.162
Rules applicable ............................................... 1.161
Specification and arrangement of application
elements .......................................................... 1.163
Specimens........................................................1.166
Post issuance and reexamination fees.......................1.20
Post Office receipt as filing date...............................1.10
Postal emergency or interruption....................1.10(g)-(i)
Power of attorney. (See Attorneys or agents.)......1.14(c)
1.14(c)
Power to inspect ..................................................1.14(c)
Preliminary amendments .......................................1.115
Preliminary Examining Authority, International.....1.416
Preserved in confidence, applications..............1.12, 1.14
Exceptions (status, access or copies available) ...1.14
Exceptions (status, access or copies available) ...1.14
Prior art citation in patented files............................1.501
Prior art statement: ....................................... 1.130, 1.131
Content of .......................................................... 1.98
To comply with duty of disclosure....................1.97
Content of .......................................................... 1.98
To comply with duty of disclosure....................1.97
Prior invention, affidavit or declaration of to overcome
rejection ........................................................ 1.130, 1.131
Priority, right of, under treaty or law: ................Part 102
Domestic benefit claim:............................................
Cross-reference to related application(s) .....1.76-1.78
Filing fee must be paid in provisional application
.............................................................................. 1.78
Indication of whether international application was
published in English ................................... 1.78(a)(2)
May be in first sentence of application or on application
data sheet .............................................................1.78
Petition to accept, unintentionally delayed...........1.78Translation of non-English language provisional
application required ............................................. 1.78
Waived if not timely .............................................1.78
Cross-reference to related application(s) .........1.76-1.78
Filing fee must be paid in provisional application ....1.78
Indication of whether international application was
published in English .......................................1.78(a)(2)
May be in first sentence of application or on application
data sheet .................................................................1.78
Petition to accept, unintentionally delayed...............1.78
Translation of non-English language provisional
application required ................................................. 1.78
Waived if not timely .................................................1.78
Foreign priority claim: .............................................
Filed after issue fee has been paid .......................1.55
May be on application data sheet or in oath/declaration
.......................................................................... 1.63(c)
Petition to accept, unintentionally delayed ..........1.55
Priority document ................................................1.55
Filed after issue fee has been paid ...........................1.55
May be on application data sheet or in oath/declaration
.............................................................................. 1.63(c)
Petition to accept, unintentionally delayed ..............1.55
Priority document ....................................................1.55
Time for claiming ................................................. 1.55
Time for claiming ..................................................... 1.55
Domestic benefit claim:............................................
Cross-reference to related application(s) .....1.76-1.78
Filing fee must be paid in provisional application
.............................................................................. 1.78
Indication of whether international application was
published in English ...................................1.78(a)(2)
May be in first sentence of application or on application
data sheet .............................................................1.78
Petition to accept, unintentionally delayed...........1.78
Translation of non-English language provisional
application required ............................................. 1.78
Waived if not timely .............................................1.78
Cross-reference to related application(s) .........1.76-1.78
Filing fee must be paid in provisional application ....1.78
Indication of whether international application was
published in English .......................................1.78(a)(2)
May be in first sentence of application or on application
data sheet .................................................................1.78
Petition to accept, unintentionally delayed...............1.78
Translation of non-English language provisional
application required ................................................. 1.78
Waived if not timely .................................................1.78
Foreign priority claim: .............................................
Filed after issue fee has been paid .......................1.55
May be on application data sheet or in oath/declaration
.......................................................................... 1.63(c)
Petition to accept, unintentionally delayed ..........1.55
Priority document ................................................1.55
Filed after issue fee has been paid ...........................1.55
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 May be on application data sheet or in oath/declaration
.............................................................................. 1.63(c)
Petition to accept, unintentionally delayed ..............1.55
Priority document ....................................................1.55
Time for claiming ................................................. 1.55
Time for claiming ..................................................... 1.55
Privacy Act .........................................................Part 102
Denial of access to records ...........................102.25
Definitions .................................................... 102.22
Disclosure of records .......................102.25, 102.30
Exemptions ...................................... 102.33, 102.34
Fees................................................................102.31
Grant of access to records .............................102.25
Inquiries ........................................................ 102.23
Medical records ............................................102.26
Penalties.........................................................102.32
Requests for records .....................................102.24
Requests for correction or amendment .........102.27
Appeal of initial adverse determination ...........102.29
Review of requests ...........................................102.28
Appeal of initial adverse determination ...............102.29
Review of requests ...............................................102.28
Denial of access to records ...........................102.25
Definitions .................................................... 102.22
Disclosure of records .......................102.25, 102.30
Exemptions ...................................... 102.33, 102.34
Fees................................................................102.31
Grant of access to records .............................102.25
Inquiries ........................................................ 102.23
Medical records ............................................102.26
Penalties.........................................................102.32
Requests for records .....................................102.24
Requests for correction or amendment .........102.27
Appeal of initial adverse determination ...........102.29
Review of requests ...........................................102.28
Appeal of initial adverse determination ...............102.29
Review of requests ...............................................102.28
Processing and retention fee ..................... 1.21(l), 1.53(f)
Proclamation as to protection of foreign mask
works .................................................................. Part 150
Protests to grants of patent......................................1.291
Provisional applications: ..................................... Part 102
Claiming the benefit of......................................1.78
Converting a nonprovisional to a
provisional.....................................................1.53(c)
Converting a provisional to a nonprovisional
....................................................................... 1.53(c)
Cover sheet required by § 1.51(c)(1) may be a § 1.76
application data sheet ............................... 1.53(c)(1)
Filing date ...................................................... 1.53(c)
Filing fee ....................................................... 1.16(d)
General requisites .......................................... 1.51(c)
Later filing of fee and cover sheet.................1.53(g)
Names of inventor(s) ...............................1.41(a)(2)
Application data sheet ........................ 1.53(c)(1), 1.76Correction of ........................................................1.48
Cover sheet ...............................1.51(c)(1), 1.53(c)(1)
Joint inventors ......................................................1.45
Application data sheet ............................ 1.53(c)(1), 1.76
Correction of ............................................................1.48
Cover sheet ...................................1.51(c)(1), 1.53(c)(1)
Joint inventors ..........................................................1.45
No right of priority........................................1.53(c)
No examination .............................................. 1.53(i)
Papers concerning, should identify provisional
application as such, by application number.....1.5(f)
Parts of complete provisional application.....1.51(c)
Processing fees...................................................1.17
Revival of ......................................................... 1.137
When abandoned ............................................ 1.53(i)
Claiming the benefit of......................................1.78
Converting a nonprovisional to a
provisional.....................................................1.53(c)
Converting a provisional to a nonprovisional
....................................................................... 1.53(c)
Cover sheet required by § 1.51(c)(1) may be a § 1.76
application data sheet ............................... 1.53(c)(1)
Filing date ...................................................... 1.53(c)
Filing fee ....................................................... 1.16(d)
General requisites .......................................... 1.51(c)
Later filing of fee and cover sheet.................1.53(g)
Names of inventor(s) ...............................1.41(a)(2)
Application data sheet ........................ 1.53(c)(1), 1.76
Correction of ........................................................1.48
Cover sheet ...............................1.51(c)(1), 1.53(c)(1)
Joint inventors ......................................................1.45
Application data sheet ............................ 1.53(c)(1), 1.76
Correction of ............................................................1.48
Cover sheet ...................................1.51(c)(1), 1.53(c)(1)
Joint inventors ..........................................................1.45
No right of priority........................................1.53(c)
No examination .............................................. 1.53(i)
Papers concerning, should identify provisional
application as such, by application number.....1.5(f)
Parts of complete provisional application.....1.51(c)
Processing fees...................................................1.17
Revival of ......................................................... 1.137
When abandoned ............................................ 1.53(i)
Provisional rights ................................................ Part 102
Submission of international publication or English
translation thereof pursuant to 35 U.S.C. 154(d)(4)
......................................................................... 1.417
Submission of international publication or English
translation thereof pursuant to 35 U.S.C. 154(d)(4)
......................................................................... 1.417
Public Information .............................................. Part 102
Public use proceedings............................................1.292
Fee..................................................................1.17(j)
Fee..................................................................1.17(j)
Publication of application ...................................... 1.211
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 Early publication ............................................. 1.219
Express abandonment to avoid publication .....1.138
Fee...................................................................... 1.18
Nonpublication request ...................................1.213
Publication of redacted copy ..........................1.217
Republication .................................................. 1.221
V oluntary publication ......................................1.221
Early publication ............................................. 1.219
Express abandonment to avoid publication .....1.138
Fee...................................................................... 1.18
Nonpublication request ...................................1.213
Publication of redacted copy ..........................1.217
Republication .................................................. 1.221
V oluntary publication ......................................1.221
Published application .......................................................
Access to ..................................................1.11, 1.14
Certified copies of .............................................1.13
Contents .......................................................... 1.215
Definition ............................................................ 1.9
Records of, open to public ....................... 1.11, 1.12
Republication of .............................................. 1.221
Third party submission in ................................. 1.99
Access to ..................................................1.11, 1.14
Certified copies of .............................................1.13
Contents .......................................................... 1.215
Definition ............................................................ 1.9
Records of, open to public ....................... 1.11, 1.12
Republication of .............................................. 1.221
Third party submission in ................................. 1.99
R
Reasons for allowance............................................1.104
Reconsideration of Office action............................1.112
Reconstruction of lost files.....................................1.251
Recording of assignments. (See Assignments and
recording.).........................................................1.11-1.15
1.11-1.15
Records of the Patent and Trademark Office.....1.11-1.15
Reexamination: ............................................ 1.74, 1.84(p)
Announcement in O.G. ................................. 1.11(c)
Correction of inventorship ..............................1.530
Correspondence address................................1.33(c)
 Ex parte  proceedings: ..................................... 1.104
Amendments, manner of making.........1.121(j), 1.530
Appeal to Board..................................................41.31
Appeal to C.A.F.C. .............................................1.301
Civil action under 35 U .S.C. 145 ........................ 1.303
Concurrent with interference, reissue, other
reexamination, litigation, or office
proceeding(s)......................................................1.565
Conduct of. ......................................................... 1.550
Duty of disclosure in...........................................1.555
Examiner’s determination to grant or refuse request
for........................................................................1.515
Extensions of time in......................................1.550(c)Initiated by the Director ...................................... 1.520
Interviews in.......................................................1.560
Issuance and publication of certificate
concludes............................................................1.570
Order for reexamination by examiner.................1.525
Patent owner’s statement..........................1.530, 1.540
Processing of prior art citations during ............... 1.502
Reply to patent owner’s statement to third party
requester ................................................... 1.535, 1.540
Request for..........................................................1.510
Scope of..............................................................1.552
Service of papers ................................................. 1.248
Amendments, manner of making.............1.121(j), 1.530
Appeal to Board......................................................41.31
Appeal to C.A.F.C. .................................................1.301
Civil action under 35 U .S.C. 145 ............................ 1.303
Concurrent with interference, reissue, other
reexamination, litigation, or office proceeding(s) ...1.565
Conduct of. ............................................................. 1.550
Duty of disclosure in...............................................1.555
Examiner’s determination to grant or refuse request
for............................................................................1.515
Extensions of time in..........................................1.550(c)
Initiated by the Director .......................................... 1.520
Interviews in...........................................................1.560
Issuance and publication of certificate concludes....1.570
Order for reexamination by examiner.....................1.525
Patent owner’s statement..............................1.530, 1.540
Processing of prior art citations during ................... 1.502
Reply to patent owner’s statement to third party
requester ....................................................... 1.535, 1.540
Request for..............................................................1.510
Scope of..................................................................1.552
Service of papers ..................................................... 1.248
Examiner’s action............................................1.104
Fee.................................................................1.20(c)
Fees may be charged to deposit account............1.25
Identification in letter ...................................... 1.5(d)
 Inter partes proceedings.......................1.902-1.997
Amendments, manner of making .....1.121(j), 1.530,
1.941
Appeal to Board..................................................41.61
Appeal to C.A.F.C. .............................................1.983
Civil action under 35 U.S.C. 145 not
available.........................................................1.303(d)
Concurrent with interference, reissue, other
reexamination, litigation, or office
proceeding(s) ........................................... 1.565, 1.985
Conduct of. ......................................................... 1.937
Duty of disclosure in................................1.555, 1.923
Examiner’s determination to grant or refuse request
for.............................................................1.923-1.927
Extensions of time in .......................................... 1.956
Filing date of request for.....................................1.919
Issuance of certificate at conclusion of...............1.997
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 Merged with concurrent reexamination
proceedings.........................................................1.989
Merged with reissue application.........................1.991
Notice of, in the  Official Gazette.......................1.904
Persons eligible to file request for ...................... 1.903
Processing of prior art citations during ............... 1.902
Scope of..............................................................1.906
Service of papers ...................................... 1.248, 1.903
Submission of papers by the public....................1.905
Subsequent requests for ...................................... 1.907
Suspension due to concurrent interference.........1.993
Suspension due to litigation................................1.987
Amendments, manner of making ...1.121(j), 1.530, 1.941
Appeal to Board......................................................41.61
Appeal to C.A.F.C. .................................................1.983
Civil action under 35 U.S.C. 145 not available...1.303(d)
Concurrent with interference, reissue, other
reexamination, litigation, or office proceeding(s) ..1.565,
1.985
Conduct of. ............................................................. 1.937
Duty of disclosure in....................................1.555, 1.923
Examiner’s determination to grant or refuse request
for.................................................................1.923-1.927
Extensions of time in .............................................. 1.956
Filing date of request for.........................................1.919
Issuance of certificate at conclusion of...................1.997
Merged with concurrent reexamination
proceedings.............................................................1.989
Merged with reissue application.............................1.991
Notice of, in the  Official Gazette...........................1.904
Persons eligible to file request for .......................... 1.903
Processing of prior art citations during ................... 1.902
Scope of..................................................................1.906
Service of papers .......................................... 1.248, 1.903
Submission of papers by the public........................1.905
Subsequent requests for .......................................... 1.907
Suspension due to concurrent interference.............1.993
Suspension due to litigation....................................1.987
Announcement in O.G. ................................. 1.11(c)
Correction of inventorship ..............................1.530
Correspondence address................................1.33(c)
 Ex parte  proceedings: ..................................... 1.104
Amendments, manner of making.........1.121(j), 1.530
Appeal to Board..................................................41.31
Appeal to C.A.F.C. .............................................1.301
Civil action under 35 U .S.C. 145 ........................ 1.303
Concurrent with interference, reissue, other
reexamination, litigation, or office
proceeding(s)......................................................1.565
Conduct of. ......................................................... 1.550
Duty of disclosure in...........................................1.555
Examiner’s determination to grant or refuse request
for........................................................................1.515
Extensions of time in......................................1.550(c)
Initiated by the Director ...................................... 1.520
Interviews in.......................................................1.560Issuance and publication of certificate
concludes............................................................1.570
Order for reexamination by examiner.................1.525
Patent owner’s statement..........................1.530, 1.540
Processing of prior art citations during ............... 1.502
Reply to patent owner’s statement to third party
requester ................................................... 1.535, 1.540
Request for..........................................................1.510
Scope of..............................................................1.552
Service of papers ................................................. 1.248
Amendments, manner of making.............1.121(j), 1.530
Appeal to Board......................................................41.31
Appeal to C.A.F.C. .................................................1.301
Civil action under 35 U .S.C. 145 ............................ 1.303
Concurrent with interference, reissue, other
reexamination, litigation, or office proceeding(s) ...1.565
Conduct of. ............................................................. 1.550
Duty of disclosure in...............................................1.555
Examiner’s determination to grant or refuse request
for............................................................................1.515
Extensions of time in..........................................1.550(c)
Initiated by the Director .......................................... 1.520
Interviews in...........................................................1.560
Issuance and publication of certificate concludes....1.570
Order for reexamination by examiner.....................1.525
Patent owner’s statement..............................1.530, 1.540
Processing of prior art citations during ................... 1.502
Reply to patent owner’s statement to third party
requester ....................................................... 1.535, 1.540
Request for..............................................................1.510
Scope of..................................................................1.552
Service of papers ..................................................... 1.248
Examiner’s action............................................1.104
Fee.................................................................1.20(c)
Fees may be charged to deposit account............1.25
Identification in letter ...................................... 1.5(d)
 Inter partes proceedings.......................1.902-1.997
Amendments, manner of making .....1.121(j), 1.530,
1.941
Appeal to Board..................................................41.61
Appeal to C.A.F.C. .............................................1.983
Civil action under 35 U.S.C. 145 not
available.........................................................1.303(d)
Concurrent with interference, reissue, other
reexamination, litigation, or office
proceeding(s) ........................................... 1.565, 1.985
Conduct of. ......................................................... 1.937
Duty of disclosure in................................1.555, 1.923
Examiner’s determination to grant or refuse request
for.............................................................1.923-1.927
Extensions of time in .......................................... 1.956
Filing date of request for.....................................1.919
Issuance of certificate at conclusion of...............1.997
Merged with concurrent reexamination
proceedings.........................................................1.989
Merged with reissue application.........................1.991
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 Notice of, in the  Official Gazette.......................1.904
Persons eligible to file request for ...................... 1.903
Processing of prior art citations during ............... 1.902
Scope of..............................................................1.906
Service of papers ...................................... 1.248, 1.903
Submission of papers by the public....................1.905
Subsequent requests for ...................................... 1.907
Suspension due to concurrent interference.........1.993
Suspension due to litigation................................1.987
Amendments, manner of making ...1.121(j), 1.530, 1.941
Appeal to Board......................................................41.61
Appeal to C.A.F.C. .................................................1.983
Civil action under 35 U.S.C. 145 not available...1.303(d)
Concurrent with interference, reissue, other
reexamination, litigation, or office proceeding(s) ..1.565,
1.985
Conduct of. ............................................................. 1.937
Duty of disclosure in....................................1.555, 1.923
Examiner’s determination to grant or refuse request
for.................................................................1.923-1.927
Extensions of time in .............................................. 1.956
Filing date of request for.........................................1.919
Issuance of certificate at conclusion of...................1.997
Merged with concurrent reexamination
proceedings.............................................................1.989
Merged with reissue application.............................1.991
Notice of, in the  Official Gazette...........................1.904
Persons eligible to file request for .......................... 1.903
Processing of prior art citations during ................... 1.902
Scope of..................................................................1.906
Service of papers .......................................... 1.248, 1.903
Submission of papers by the public........................1.905
Subsequent requests for .......................................... 1.907
Suspension due to concurrent interference.............1.993
Suspension due to litigation....................................1.987
Information Disclosure Statements.........1.98, 1.555
Open to public...............................................1.11(d)
Reconsideration before final action.................1.112
Refund of fee.....................................................1.26
Reply to action.................................................1.111
Revival of terminated or limited reexamination
prosecution ...................................................... 1.137
Information Disclosure Statements.........1.98, 1.555
Open to public...............................................1.11(d)
Reconsideration before final action.................1.112
Refund of fee.....................................................1.26
Reply to action.................................................1.111
Revival of terminated or limited reexamination
prosecution ...................................................... 1.137
Reference characters in drawings................1.74, 1.84(p)
References cited on examination............................1.104
Refund of money paid by mistake............................1.26
International applications ................................1.446
Later establishment of small entity status ......... 1.28
Time period for requesting ...............................1.26International applications ................................1.446
Later establishment of small entity status ......... 1.28
Time period for requesting ...............................1.26
Register of Government interest in patents...............3.58
Rehearing:...............................................................41.41
On appeal to Board..........................................41.52
Request for, time for appeal after action on.....1.304
On appeal to Board..........................................41.52
Request for, time for appeal after action on.....1.304
Reissues:.................................................................41.41
Amendments....................................................1.173
Applicants, assignees.......................................1.172
Application for reissue.....................................1.171
Application made and sworn to by inventor, if
living................................................................1.172
Continuing duty of applicant...........................1.178
Declaration.......................................................1.175
Drawings..........................................................1.173
Examination of reissue....................................1.176
Filed during  ex parte  reexamination ............... 1.565
Filed during  inter partes reexamination.........1.985
Filing fee ............................................................ 1.16
Filing of announcement in  Official Gazette ......1.11
Grounds for and requirements ............... 1.171-1.178
Issue fee ......................................................... 1.18(a)
Multiple applications for reissue of a single patent
......................................................................... 1.177
Oath..................................................................1.175
Open to public .................................................... 1.11
Original patent surrendered ............................. 1.178
Restriction........................................................1.176
Specification....................................................1.173
Take precedence in order of examination........1.176
To contain no new matter.................................1.173
What must accompany application .......1.171, 1.172
Amendments....................................................1.173
Applicants, assignees.......................................1.172
Application for reissue.....................................1.171
Application made and sworn to by inventor, if
living................................................................1.172
Continuing duty of applicant...........................1.178
Declaration.......................................................1.175
Drawings..........................................................1.173
Examination of reissue....................................1.176
Filed during  ex parte  reexamination ............... 1.565
Filed during  inter partes reexamination.........1.985
Filing fee ............................................................ 1.16
Filing of announcement in  Official Gazette ......1.11
Grounds for and requirements ............... 1.171-1.178
Issue fee ......................................................... 1.18(a)
Multiple applications for reissue of a single patent
......................................................................... 1.177
Oath..................................................................1.175
Open to public .................................................... 1.11
Original patent surrendered ............................. 1.178
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 Restriction........................................................1.176
Specification....................................................1.173
Take precedence in order of examination........1.176
To contain no new matter.................................1.173
What must accompany application .......1.171, 1.172
Rejection:................................................................41.41
After two rejections appeal may be taken from
examiner to Board ............................................ 41.31
Applicant will be notified of rejection with reasons
and references .................................................. 1.104
Based on commonly owned prior art, how
overcome..........................................................1.130
Examiner may rely on admissions by applicant or
patent owner, or facts within examiner’s
knowledge........................................................1.104
Final.................................................................1.113
Formal objections............................................1.104
On account of invention shown by others but not
claimed, how overcome...................................1.131
References will be cited...................................1.104
Requisites of notice of.....................................1.104
After two rejections appeal may be taken from
examiner to Board ............................................ 41.31
Applicant will be notified of rejection with reasons
and references .................................................. 1.104
Based on commonly owned prior art, how
overcome..........................................................1.130
Examiner may rely on admissions by applicant or
patent owner, or facts within examiner’s
knowledge........................................................1.104
Final.................................................................1.113
Formal objections............................................1.104
On account of invention shown by others but not
claimed, how overcome...................................1.131
References will be cited...................................1.104
Requisites of notice of.....................................1.104
Reply brief .............................................................. 41.41
Reply to Office action:.........................................1.34(a)
Abandonment for failure to.............................1.135
By applicant or patent owner...........................1.111
Substantially complete ..................................... 1.135
Supplemental ................................................... 1.111
Time for ........................................................... 1.134
Abandonment for failure to.............................1.135
By applicant or patent owner...........................1.111
Substantially complete ..................................... 1.135
Supplemental ................................................... 1.111
Time for ........................................................... 1.134
Representative capacity ........................................ 1.34(a)
Request for continued examination........................1.114
Fee...................................................................... 1.17
Suspension of action after................................1.103
Fee...................................................................... 1.17
Suspension of action after................................1.103
Request for reconsideration .................................... 1.112Request for  ex parte reexamination.......................1.510
Request for  inter partes reexamination.......1.913-1.927
Requirement for submission of information ........... 1.105
Reservation clauses not permitted............................1.79
Restriction of application...................1.141-1.146, 1.176
Claims to nonelected invention withdrawn......1.142
Constructive election ....................................... 1.145
Petition from requirements for..............1.129, 1.144
Provisional election.........................................1.143
Reconsideration of requirement.......................1.143
Requirement for...............................................1.142
Subsequent presentation of claims for different
invention..........................................................1.145
Claims to nonelected invention withdrawn......1.142
Constructive election ....................................... 1.145
Petition from requirements for..............1.129, 1.144
Provisional election.........................................1.143
Reconsideration of requirement.......................1.143
Requirement for...............................................1.142
Subsequent presentation of claims for different
invention..........................................................1.145
Retention fee ............................................ 1.21(l), 1.53(f)
Return of correspondence.......................................1.5(a)
Revival of abandoned application, terminated or limited
reexamination prosecution, or lapsed patent ..........1.137
Unavoidable abandonment fee.......................1.17(l)
Unintentional abandonment fee ................... 1.17(m)
Unavoidable abandonment fee.......................1.17(l)
Unintentional abandonment fee ................... 1.17(m)
Revocation of power of attorney or authorization of
agent.....................................................................1.36(a)
Rules of Practice:.............................................................
Amendments to rules will be published...........1.351
Amendments to rules will be published...........1.351
S
Saturday, when last day falls on..................................1.7
Secrecy order........................................................5.1-5.5
Sequences: ................................................................... 1.5
Amendments to sequence listing and computer
readable copy...................................................1.825
Disclosure requirements.......................1.821, 1.823
Sequence data, symbols and format.................1.822
Submissions in computer readable form..........1.824
Submissions on compact disc in lieu of paper...1.52,
1.821, 1.823
Amendments to sequence listing and computer
readable copy...................................................1.825
Disclosure requirements.......................1.821, 1.823
Sequence data, symbols and format.................1.822
Submissions in computer readable form..........1.824
Submissions on compact disc in lieu of paper...1.52,
1.821, 1.823
Serial number of application.......................................1.5
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 Service of notices:...................................................1.248
In interference cases......................................41.106
Of appeal to the U.S. Court of Appeals for the Federal
Circuit..............................................................1.301
In interference cases......................................41.106
Of appeal to the U.S. Court of Appeals for the Federal
Circuit..............................................................1.301
Service of papers.....................................................1.248
Service of process...................................15 CFR Part 15
Shortened period for reply......................................1.134
Signature: ............................................ 1.1(a)(3), 1.302(c)
EFS character coded...................................1.4(d)(3)
Handwritten................................................1.4(d)(1)
Implicit certifications ........................... 1.4(d), 11.18
S-signature..................................................1.4(d)(2)
EFS character coded...................................1.4(d)(3)
Handwritten................................................1.4(d)(1)
Implicit certifications ........................... 1.4(d), 11.18
S-signature..................................................1.4(d)(2)
To a written assertion of small entity status
.................................................................. 1.27(c)(2)
To amendments and other papers .................1.33(b)
To an application for extension of patent term
......................................................................... 1.730
To a written assertion of small entity status
.................................................................. 1.27(c)(2)
To amendments and other papers .................1.33(b)
To an application for extension of patent term
......................................................................... 1.730
To express abandonment .................................. 1.138
To oath ............................................................... 1.63
To reissue oath or declaration .......................... 1.172
When copy is acceptable.....................................1.4
To express abandonment .................................. 1.138
To oath ............................................................... 1.63
To reissue oath or declaration .......................... 1.172
When copy is acceptable.....................................1.4
Small business concern: ..................... 1.1(a)(3), 1.302(c)
Definition...........................................................1.27
Small entity status..............................................1.27
Definition...........................................................1.27
Small entity status..............................................1.27
Small entity: ....................................... 1.1(a)(3), 1.302(c)
Definition...........................................................1.27
Errors in status excused.....................................1.28
Fraud on the office ............................................1.27
License to Federal agency.................................1.27
Statement ........................................................... 1.27
Statement in parent application ......................... 1.27
Status establishment..................................1.27, 1.28
Status update............................................. 1.27, 1.28
Definition...........................................................1.27
Errors in status excused.....................................1.28
Fraud on the office ............................................1.27License to Federal agency.................................1.27
Statement ........................................................... 1.27
Statement in parent application ......................... 1.27
Status establishment..................................1.27, 1.28
Status update.............................................1.27, 1.28
Solicitor’s address ............................... 1.1(a)(3), 1.302(c)
Species of invention claimed.......................1.141, 1.146
Specification (See also Application for patent,
Claims):.....................................................................1.93
Abstract .............................................................. 1.72
Amendments to.....................................1.121, 1.125
Arrangement of............................1.77, 1.154, 1.163
Best mode .......................................................... 1.71
Claim..................................................................1.75
Commence on separate sheet.........................1.71(f)
Contents of ................................................ 1.71-1.75
Copyright notice ............................................ 1.71(d)
Cross-references to other applications...............1.78
Description of the invention...............................1.71
If defective, reissue to correct ............... 1.171-1.178
Mask work notice..........................................1.71(d)
Must conclude with specific and distinct claim..1.75
Must point out new improvements specifically..1.71
Must refer by figures to drawings......................1.74
Must set forth the precise invention...................1.71
Object of the invention.......................................1.73
Order of arrangement in framing.......................1.77
Paper, writing, margins......................................1.52
Paragraph numbering ......................................... 1.52
Part of complete application..............................1.51
Reference to drawings.......................................1.74
Requirements of........................................1.71-1.75
Reservation clauses not permitted.....................1.79
Separate from other parts of application........1.71(f)
Substitute.........................................................1.125
Summary of the invention .................................. 1.73
Title of the invention..........................................1.72
To be rewritten, if necessary............................1.125
Abstract .............................................................. 1.72
Amendments to.....................................1.121, 1.125
Arrangement of............................1.77, 1.154, 1.163
Best mode .......................................................... 1.71
Claim .................................................................. 1.75
Commence on separate sheet.........................1.71(f)
Contents of ................................................ 1.71-1.75
Copyright notice ............................................ 1.71(d)
Cross-references to other applications...............1.78
Description of the invention...............................1.71
If defective, reissue to correct ............... 1.171-1.178
Mask work notice..........................................1.71(d)
Must conclude with specific and distinct claim..1.75
Must point out new improvements specifically..1.71
Must refer by figures to drawings......................1.74
Must set forth the precise invention...................1.71
Object of the invention.......................................1.73
Order of arrangement in framing.......................1.77
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 Paper, writing, margins......................................1.52
Paragraph numbering ......................................... 1.52
Part of complete application..............................1.51
Reference to drawings.......................................1.74
Requirements of........................................1.71-1.75
Reservation clauses not permitted.....................1.79
Separate from other parts of application........1.71(f)
Substitute.........................................................1.125
Summary of the invention .................................. 1.73
Title of the invention..........................................1.72
To be rewritten, if necessary............................1.125
Specimens. (See Models and exhibits.)....................1.93
1.93
Specimens of composition of matter to be furnished when
required.....................................................................1.93
Specimens of plants................................................1.166
Statement of status as small entity ............................ 1.27
Status information ..................................................... 1.14
Statutory disclaimer fee........................................1.20(d)
Statutory invention registrations ............................. 1.293
Examination.....................................................1.294
Publication of ................................................... 1.297
Review of decision finally refusing to
publish..............................................................1.295
Withdrawal of request for publication of.........1.296
Examination.....................................................1.294
Publication of ................................................... 1.297
Review of decision finally refusing to
publish..............................................................1.295
Withdrawal of request for publication of.........1.296
Submission of international publication or English
translation thereof pursuant to 35 U.S.C. 154(d)(4)
................................................................................. 1.417
Sufficient funds in deposit account...........................1.25
Suit in equity. (See Civil action.)..............................1.73
1.73
Summary of invention...............................................1.73
Sunday, when last day falls on....................................1.7
Supervisory authority, petition to Director to
exercise....................................................................1.181
Supplemental oath /declaration ................................1.67
Surcharge for oath or basic filing fee filed after filing
date........................................................... 1.16(f), 1.53(f)
Suspension of action...............................................1.103
Suspension of rules.................................................1.183
Symbols for drawings ........................................... 1.84(n)
Symbols for nucleotide and/or amino acid sequence
data..........................................................................1.822
T
Tables in patent applications.....................................1.58
Terminal disclaimer ................................................ 1.321
Testimony by Office employees............15 CFR Part 15a
Testimony in contested cases before the
Board........................................................41.156-41.158Compelling testimony and production...........41.156
Expert testimony............................................ 41.158
Taking testimony ............................................ 41.157
Compelling testimony and production...........41.156
Expert testimony............................................41.158
Taking testimony ............................................ 41.157
Third party submission in published application .....1.99
Time expiring on Saturday, Sunday, or holiday..........1.7
Time for claiming benefit of prior (domestic) application
................................................................................... 1.78
Time for claiming foreign priority ...........................1.55
Time for filing preliminary amendment to ensure entry
thereof ....................................................................1.115
Time for payment of issue fee.................................1.311
Time for payment of publication fee.......................1.311
Time for reply by applicant...............1.134, 1.135, 1.136
Time for reply to Office action....................1.134, 1.136
Time for requesting a refund ..................................... 1.26
Time, periods of .......................................................... 1.7
Timely filing of correspondence........................1.8, 1.10
Title of invention.......................................................1.72
Title reports, fee for .............................................. 1.19(b)
Transitional procedures...........................................1.129
U
Unavoidable abandonment ...................................... 1.137
Unintentional abandonment .................................... 1.137
United States as ....................................................... 1.251
Designated Office ............................................ 1.414
Elected Office .................................................. 1.414
International Preliminary Examining
Authority..........................................................1.416
International Searching Authority....................1.413
Receiving Office .............................................. 1.412
Designated Office ............................................ 1.414
Elected Office .................................................. 1.414
International Preliminary Examining
Authority..........................................................1.416
International Searching Authority....................1.413
Receiving Office .............................................. 1.412
Unlocatable files.....................................................1.251
Unsigned continuation or divisional application .....1.53,
1.63
Use of file of parent application...........................1.53(d)
W
Waiver of confidentiality.................................1.53(d)(6)
Withdrawal from issue ............................................ 1.313
Withdrawal of attorney or agent...........................1.36(b)
Withdrawal of request for statutory invention
registration..............................................................1.296
PART  - 10   REPRESENTATION OF OTHERS BEFORE THE
PATENT AND TRADEMARK OFFICE
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 §  10.1 Definitions.
This part governs solely the practice of patent, trademark,
and other law before the Patent and Trademark Office.
Nothing in this part shall be construed to preempt the
authority of each State to regulate the practice of law,
except to the extent necessary for the Patent and
Trademark Office to accomplish its federal objectives.
Unless otherwise clear from the context, the following
definitions apply to this part:
(a) Affidavit  means affidavit, declaration under
35 U .S.C. 25 (see § 1.68  and § 2.20 of this subchapter),
or statutory declaration under 28 U.S.C. 1746.
(b)  Application includes an application for a design,
plant, or utility patent, an application to reissue any patent,
and an application to register a trademark.
(c)  Attorney  or  lawyer  means an individual who is
a member in good standing of the bar of any United States
court or the highest court of any State. A “non-lawyer”
is a person who is not an attorney or lawyer.
(d) Canon  is defined in § 10.20 (a).
(e) Confidence  is defined in § 10.57 (a).
(f)  Differing interests include every interest that may
adversely affect either the judgment or the loyalty of a
practitioner to a client, whether it be a conflicting,
inconsistent, diverse, or other interest.
(g)  Director  means the Director of Enrollment and
Discipline.
(h) Disciplinary Rule  is defined in § 10.20 (b).
(i)  Employee of a tribunal  includes all employees of
courts, the Office, and other adjudicatory bodies.
(j) Giving information  within the meaning of
§ 10.23 (c) (2) includes making (1) a written statement or
representation or (2) an oral statement or representation.
(k)  Law firm  includes a professional legal corporation
or a partnership.
(l)  Legal counsel  means practitioner.
(m)  Legal profession  includes the individuals who
are lawfully engaged in practice of patent, trademark, and
other law before the Office.
(n)  Legal service  means any legal service which may
lawfully be performed by a practitioner before the Office.
(o)  Legal System  includes the Office and courts and
adjudicatory bodies which review matters on which the
Office has acted.
(p)  Office  means Patent and Trademark Office.(q)  Person  includes a corporation, an association, a
trust, a partnership, and any other organization or legal
entity.
(r)  Practitioner  means (1) an attorney or agent
registered to practice before the Office in patent cases or
(2) an individual authorized under 5 U.S.C. 500(b) or
otherwise as provided by this subchapter, to practice
before the Office in trademark cases or other non-patent
cases. A “suspended or excluded practitioner” is a
practitioner who is suspended or excluded under § 10.156.
A “non-practitioner” is an individual who is not a
practitioner.
(s) A  proceeding before the Office  includes an
application, a reexamination, a protest, a public use
proceeding, a patent interference, an  inter partes
trademark proceeding, or any other proceeding which is
pending before the Office.
(t)  Professional legal corporation  means a
corporation authorized by law to practice law for profit.
(u)  Registration means registration to practice before
the Office in patent cases.
(v)  Respondent  is defined in § 10.134(a)(1).
(w) Secret  is defined in § 10.57 (a).
(x) Solicit  is defined in § 10.33 .
(y)  State includes the District of Columbia, Puerto
Rico, and other federal territories and possessions.
(z)  Tribunal  includes courts, the Office, and other
adjudicatory bodies.
(aa)  United States  means the United States of
America, its territories and possessions.
[Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985]
§  10.2 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.3 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.4 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 73 FR 59513, Oct. 9, 2008, effective Oct. 9,
2008]
INDIVIDUALS ENTITLED TO PRACTICE
BEFORE THE PATENT AND TRADEMARK
OFFICE
§  10.5 [Reserved]
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                      - 212 - 
 [Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.6 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; paras.
(d) & (e) removed 53 FR 38948, Oct. 4, 1988, effective Nov. 4, 1988;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.7 [Reserved]
[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.8 [Reserved]
[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985;
removed and reserved, 69 FR 35427, June 24, 2004, effective July 26,
2004]
§  10.9 [Reserved]
[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985; para.
(c) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c)
amended, 60 FR 21438, May 2, 1995, effective June 1, 1995; removed
and reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 
10.10[Reserved]
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
revised 53 FR 38950, Oct. 4, 1988, effective Nov. 4, 1988; corrected
53 FR 41278, Oct. 20, 1988; removed and reserved, 69 FR 35427, June
24, 2004, effective July 26, 2004]
§ 
10.11Removing names from the register.
A letter may be addressed to any individual on the
register, at the address of which separate notice was last
received by the Director, for the purpose of ascertaining
whether such individual desires to remain on the register.
The name of any individual failing to reply and give any
information requested by the Director within a time limit
specified will be removed from the register and the names
of individuals so removed will be published in the Official
Gazette. The name of any individual so removed may be
reinstated on the register as may be appropriate and upon
payment of the fee set forth in § 1.21(a)(3) of this
subchapter.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
revised, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 
10.12 -
10.19[Reserved]
PATENT AND TRADEMARK OFFICE CODE OF
PROFESSIONAL RESPONSIBILITY
§ 
10.20Canons and Disciplinary Rules.(a) Canons are set out in §§ 10.21 , 10.30 , 10.46 , 10.56 ,
10.61 , 10.76 , 10.83, 10.100 , and 10.110 . Canons are
statements of axiomatic norms, expressing in general
terms the standards of professional conduct expected of
practitioners in their relationships with the public, with
the legal system, and with the legal profession.
(b) Disciplinary Rules are set out in §§ 10.22 -10.24 ,
10.31 -10.40 , 10.47 -10.57 , 10.62 -10.68 , 10.77 , 10.78 ,
10.84 , 10.85 , 10.87 -10.89 , 10.92 , 10.93, 10.101 -10.103 ,
10.111 , and 10.112 . Disciplinary Rules are mandatory in
character and state the minimum level of conduct below
which no practitioner can fall without being subjected to
disciplinary action.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.21Canon 1.
A practitioner should assist in maintaining the integrity
and competence of the legal profession.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.22Maintaining integrity and competence of the
legal profession.
(a) A practitioner is subject to discipline if the
practitioner has made a materially false statement in, or
if the practitioner has deliberately failed to disclose a
material fact requested in connection with, the
practitioner’s application for registration or membership
in the bar of any United States court or any State court or
his or her authority to otherwise practice before the Office
in trademark and other non-patent cases.
(b) A practitioner shall not further the application for
registration or membership in the bar of any United States
court, State court, or administrative agency of another
person known by the practitioner to be unqualified in
respect to character, education, or other relevant attribute.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.23Misconduct.
(a) A practitioner shall not engage in disreputable or
gross misconduct.
(b) A practitioner shall not:
(1) Violate a Disciplinary Rule.
(2) Circumvent a Disciplinary Rule through actions
of another.
(3) Engage in illegal conduct involving moral
turpitude.
(4) Engage in conduct involving dishonesty, fraud,
deceit, or misrepresentation.
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 (5) Engage in conduct that is prejudicial to the
administration of justice.
(6) Engage in any other conduct that adversely
reflects on the practitioner’s fitness to practice before
the Office.
(c) Conduct which constitutes a violation of
paragraphs (a) and (b) of this section includes, but is not
limited to:
(1) Conviction of a criminal offense involving
moral turpitude, dishonesty, or breach of trust.
(2) Knowingly giving false or misleading
information or knowingly participating in a material
way in giving false or misleading information, to:
(i) A client in connection with any immediate,
prospective, or pending business before the Office.
(ii) The Office or any employee of the Office.
(3) Misappropriation of, or failure to properly or
timely remit, funds received by a practitioner or the
practitioner’s firm from a client to pay a fee which the
client is required by law to pay to the Office.
(4) Directly or indirectly improperly influencing,
attempting to improperly influence, offering or agreeing
to improperly influence, or attempting to offer or agree
to improperly influence an official action of any
employee of the Office by:
(i) Use of threats, false accusations, duress, or
coercion,
(ii) An offer of any special inducement or
promise of advantage, or
(iii) Improperly bestowing of any gift, favor,
or thing of value.
(5) Suspension or disbarment from practice as an
attorney or agent on ethical grounds by any duly
constituted authority of a State or the United States or,
in the case of a practitioner who resides in a foreign
country or is registered under § 11.6(c), by any duly
constituted authority of:
(i) A State,
(ii) The United States, or
(iii) The country in which the practitioner
resides.
(6) Knowingly aiding or abetting a practitioner
suspended or excluded from practice before the Office
in engaging in unauthorized practice before the Office
under § 11.58 .
(7) Knowingly withholding from the Office
information identifying a patent or patent applicationof another from which one or more claims have been
copied. See § 41.202 (a)(1) of this title.
(8) Failing to inform a client or former client or
failing to timely notify the Office of an inability to
notify a client or former client of correspondence
received from the Office or the client’s or former
client’s opponent in an  inter partes proceeding before
the Office when the correspondence (i) could have a
significant effect on a matter pending before the Office,
(ii) is received by the practitioner on behalf of a client
or former client and (iii) is correspondence of which a
reasonable practitioner would believe under the
circumstances the client or former client should be
notified.
(9) Knowingly misusing a “Certificate of Mailing
or Transmission” under § 1.8  of this chapter.
(10) Knowingly violating or causing to be violated
the requirements of § 1.56  or § 1.555  of this subchapter.
(11) Except as permitted by § 1.52(c)  of this
chapter, knowingly filing or causing to be filed an
application containing any material alteration made in
the application papers after the signing of the
accompanying oath or declaration without identifying
the alteration at the time of filing the application papers.
(12) Knowingly filing, or causing to be filed, a
frivolous complaint alleging a violation by a
practitioner of the Patent and Trademark Office Code
of Professional Responsibility.
(13) Knowingly preparing or prosecuting or
providing assistance in the preparation or prosecution
of a patent application in violation of an undertaking
signed under § 11.10 (b).
(14) Knowingly failing to advise the Director in
writing of any change which would preclude continued
registration under § 11.6.
(15) Signing a paper filed in the Office in violation
of the provisions of § 11.18  or making a scandalous or
indecent statement in a paper filed in the Office.
(16) Willfully refusing to reveal or report
knowledge or evidence to the Director contrary to §
10.24  or § 11.22 (b).
(17) Representing before the Office in a patent case
either a joint venture comprising an inventor and an
invention developer or an inventor referred to the
registered practitioner by an invention developer when
(i) the registered practitioner knows, or has been
advised by the Office, that a formal complaint filed by
a Federal or State agency, based on any violation of
any law relating to securities, unfair methods of
competition, unfair or deceptive acts or practices, mail
fraud, or other civil or criminal conduct, is pending
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 before a Federal or State court or Federal or State
agency, or has been resolved unfavorably by such court
or agency, against the invention developer in
connection with invention development services and
(ii) the registered practitioner fails to fully advise the
inventor of the existence of the pending complaint or
unfavorable resolution thereof prior to undertaking or
continuing representation of the joint venture or
inventor. “Invention developer” means any person, and
any agent, employee, officer, partner, or independent
contractor thereof, who is not a registered practitioner
and who advertises invention development services in
media of general circulation or who enters into
contracts for invention development services with
customers as a result of such advertisement. “Invention
development services” means acts of invention
development required or promised to be performed, or
actually performed, or both, by an invention developer
for a customer. “Invention  development” means the
evaluation, perfection, marketing, brokering, or
promotion of an invention on behalf of a customer by
an invention developer, including a patent search,
preparation of a patent application, or any other act
done by an invention developer for consideration
toward the end of procuring or attempting to procure
a license, buyer, or patent for an invention. “Customer”
means any individual who has made an invention and
who enters into a contract for invention development
services with an invention developer with respect to
the invention by which the inventor becomes obligated
to pay the invention developer less than $5,000 (not to
include any additional sums which the invention
developer is to receive as a result of successful
development of the invention). “Contract for invention
development services” means a contract for invention
development services with an invention developer with
respect to an invention made by a customer by which
the inventor becomes obligated to pay the invention
developer less than $5,000 (not to include any
additional sums which the invention developer is to
receive as a result of successful development of the
invention).
(18) In the absence of information sufficient to
establish a reasonable belief that fraud or inequitable
conduct has occurred, alleging before a tribunal that
anyone has committed a fraud on the Office or engaged
in inequitable conduct in a proceeding before the
Office.
(19) Action by an employee of the Office contrary
to the provisions set forth in § 11.10 (d).
(20) Knowing practice by a Government employee
contrary to applicable Federal conflict of interest laws,
or regulations of the Department, agency, or
commission employing said individual.(d) A practitioner who acts with reckless indifference
to whether a representation is true or false is chargeable
with knowledge of its falsity. Deceitful statements of
half-truths or concealment of material facts shall be
deemed actual fraud within the meaning of this part.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985;
amended 50 FR 25073, June 17, 1985; 50 FR 25980, June 24, 1985;
paras. (c)(13), (19) & (20), 53 FR 38950, Oct. 4, 1988, effective Nov.
4, 1988; corrected 53 FR 41278, Oct. 20, 1988; paras. (c)(10) & (c)(11),
57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c)(9)
amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para.
(c)(9) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996;
para. (c)(15) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,
1997; para. (c)(11) revised, 65 FR 54604, Sept. 8, 2000, effective Nov.
7, 2000; para (c)(7) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.
13, 2004; paras. (c)(5), (c)(6), (c)(13) through (c)(16), and (c)(19)
revised, 73 FR 59513, Oct. 9, 2008, effective Oct. 9, 2008]
§ 
10.24Disclosure of information to authorities.
(a) A practitioner possessing unprivileged knowledge
of a violation of a Disciplinary Rule shall report such
knowledge to the Director.
(b) A practitioner possessing unprivileged knowledge
or evidence concerning another practitioner, employee of
the Office, or a judge shall reveal fully such knowledge
or evidence upon proper request of a tribunal or other
authority empowered to investigate or act upon the
conduct of practitioners, employees of the Office, or
judges.
[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.25 -
10.29[Reserved]
§ 
10.30Canon 2.
A practitioner should assist the legal profession in
fulfilling its duty to make legal counsel available.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.31Communications concerning a practitioner’s
services.
(a) No practitioner shall with respect to any
prospective business before the Office, by word, circular,
letter, or advertising, with intent to defraud in any manner,
deceive, mislead, or threaten any prospective applicant
or other person having immediate or prospective business
before the Office.
(b) A practitioner may not use the name of a Member
of either House of Congress or of an individual in the
service of the United States in advertising the
practitioner’s practice before the Office.
(c) Unless authorized under § 11.14 (b), a non-lawyer
practitioner shall not hold himself or herself out as
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 authorized to practice before the Office in trademark
cases.
(d) Unless a practitioner is an attorney, the practitioner
shall not hold himself or herself out:
(1) To be an attorney or lawyer or
(2) As authorized to practice before the Office in
non-patent and trademark cases.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985; para.
(c) revised, 73 FR 59513, Oct. 9, 2008, effective Oct. 9, 2008]
§ 
10.32Advertising.
(a) Subject to § 10.31 , a practitioner may advertise
services through public media, including a telephone
directory, legal directory, newspaper, or other periodical,
radio, or television, or through written communications
not involving solicitation as defined by § 10.33 .
(b) A practitioner shall not give anything of value to
a person for recommending the practitioner’s services,
except that a practitioner may pay the reasonable cost of
advertising or written communication permitted by this
section and may pay the usual charges of a not-for-profit
lawyer referral service or other legal service organization.
(c) Any communication made pursuant to this section
shall include the name of at least one practitioner
responsible for its content.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.33Direct contact with prospective clients.
A practitioner may not solicit professional employment
from a prospective client with whom the practitioner has
no family or prior professional relationship, by mail,
in-person, or otherwise, when a significant motive for the
practitioner’s doing so is the practitioner’s pecuniary gain
under circumstances evidencing undue influence,
intimidation, or overreaching. The term “solicit” includes
contact in person, by telephone or telegraph, by letter or
other writing, or by other communication directed to a
specific recipient, but does not include letters addressed
or advertising circulars distributed generally to persons
not specifically known to need legal services of the kind
provided by the practitioner in a particular matter, but
who are so situated that they might in general find such
services useful.
[Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 1985]
§ 
10.34Communication of fields of practice.
A registered practitioner may state or imply that the
practitioner is a specialist as follows:(a) A registered practitioner who is an attorney may
use the designation “Patents,” “Patent Attorney,” “Patent
Lawyer,” “Registered Patent Attorney,” or a substantially
similar designation.
(b) A registered practitioner who is not an attorney
may use the designation “Patents,” “Patent Agent,”
“Registered Patent Agent,” or a substantially similar
designation, except that any practitioner who was
registered prior to November 15, 1938, may refer to
himself or herself as a “patent attorney.”
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.35Firm names and letterheads.
(a) A practitioner shall not use a firm name, letterhead,
or other professional designation that violates § 10.31 . A
trade name may be used by a practitioner in private
practice if it does not imply a current connection with a
government agency or with a public or charitable legal
services organization and is not otherwise in violation of
§ 10.31 .
(b) Practitioners may state or imply that they practice
in a partnership or other organization only when that is
the fact.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.36Fees for legal services.
(a) A practitioner shall not enter into an agreement
for, charge, or collect an illegal or clearly excessive fee.
(b) A fee is clearly excessive when, after a review of
the facts, a practitioner of ordinary prudence would be
left with a definite and firm conviction that the fee is in
excess of a reasonable fee. Factors to be considered as
guides in determining the reasonableness of a fee include
the following:
(1) The time and labor required, the novelty and
difficulty of the questions involved, and the skill
requisite to perform the legal service properly.
(2) The likelihood, if apparent to the client, that the
acceptance of the particular employment will preclude
other employment by the practitioner.
(3) The fee customarily charged for similar legal
services.
(4) The amount involved and the results obtained.
(5) The time limitations imposed by the client or
by the circumstances.
(6) The nature and length of the professional
relationship with the client.
(7) The experience, reputation, and ability of the
practitioner or practitioners performing the services.
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 (8) Whether the fee is fixed or contingent.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.37Division of fees among practitioners.
(a) A practitioner shall not divide a fee for legal
services with another practitioner who is not a partner in
or associate of the practitioner’s law firm or law office,
unless:
(1) The client consents to employment of the other
practitioner after a full disclosure that a division of fees
will be made.
(2) The division is made in proportion to the
services performed and responsibility assumed by each.
(3) The total fee of the practitioners does not clearly
exceed reasonable compensation for all legal services
rendered to the client.
(b) This section does not prohibit payment to a former
partner or associate pursuant to a separation or retirement
agreement.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.38Agreements restricting the practice of a
practitioner.
(a) A practitioner shall not be a party to or participate
in a partnership or employment agreement with another
practitioner that restricts the right of a practitioner to
practice before the Office after the termination of a
relationship created by the agreement, except as a
condition to payment of retirement benefits.
(b) In connection with the settlement of a controversy
or suit, a practitioner shall not enter into an agreement
that restricts the practitioner’s right to practice before the
Office.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.39Acceptance of employment.
A practitioner shall not accept employment on behalf of
a person if the practitioner knows or it is obvious that
such person wishes to:
(a) Bring a legal action, commence a proceeding
before the Office, conduct a defense, assert a position in
any proceeding pending before the Office, or otherwise
have steps taken for the person, merely for the purpose
of harassing or maliciously injuring any other person.
(b) Present a claim or defense in litigation or any
proceeding before the Office that it is not warranted under
existing law, unless it can be supported by good faith
argument for an extension, modification, or reversal of
existing law.[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.40Withdrawal from employment.
(a) A practitioner shall not withdraw from
employment in a proceeding before the Office without
permission from the Office (see §§ 1.36  and 2.19 of this
subchapter). In any event, a practitioner shall not withdraw
from employment until the practitioner has taken
reasonable steps to avoid foreseeable prejudice to the
rights of the client, including giving due notice to his or
her client, allowing time for employment of another
practitioner, delivering to the client all papers and property
to which the client is entitled, and complying with
applicable laws and rules. A practitioner who withdraws
from employment shall refund promptly any part of a fee
paid in advance that has not been earned.
(b)  Mandatory withdrawal . A practitioner
representing a client before the Office shall withdraw
from employment if:
(1) The practitioner knows or it is obvious that the
client is bringing a legal action, commencing a
proceeding before the Office, conducting a defense, or
asserting a position in litigation or any proceeding
pending before the Office, or is otherwise having steps
taken for the client, merely for the purpose of harassing
or maliciously injuring any person;
(2) The practitioner knows or it is obvious that the
practitioner’s continued employment will result in
violation of a Disciplinary Rule;
(3) The practitioner’s mental or physical condition
renders it unreasonably difficult for the practitioner to
carry out the employment effectively; or
(4) The practitioner is discharged by the client.
(c)  Permissive withdrawal.  If paragraph (b) of this
section is not applicable, a practitioner may not request
permission to withdraw in matters pending before the
Office unless such request or such withdrawal is because:
(1) The petitioner’s client:
(i) Insists upon presenting a claim or defense
that is not warranted under existing law and cannot
be supported by good faith argument for an
extension, modification, or reversal of existing
law;
(ii) Personally seeks to pursue an illegal course
of conduct;
(iii) Insists that the practitioner pursue a course
of conduct that is illegal or that is prohibited under
a Disciplinary Rule;
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 (iv) By other conduct renders it unreasonably
difficult for the practitioner to carry out the
employment effectively;
(v) Insists, in a matter not pending before a
tribunal, that the practitioner engage in conduct
that is contrary to the judgment and advice of the
practitioner but not prohibited under the
Disciplinary Rule; or
(vi) Has failed to pay one or more bills
rendered by the practitioner for an unreasonable
period of time or has failed to honor an agreement
to pay a retainer in advance of the performance
of legal services.
(2) The practitioner’s continued employment is
likely to result in a violation of a Disciplinary Rule;
(3) The practitioner’s inability to work with
co-counsel indicates that the best interests of the client
likely will be served by withdrawal;
(4) The practitioner’s mental or physical condition
renders it difficult for the practitioner to carry out the
employment effectively;
(5) The practitioner’s client knowingly and freely
assents to termination of the employment; or
(6) The practitioner believes in good faith, in a
proceeding pending before the Office, that the Office
will find the existence of other good cause for
withdrawal.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.41 -
10.45[Reserved]
§ 
10.46Canon 3.
A practitioner should assist in preventing the unauthorized
practice of law.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.47Aiding unauthorized practice of law.
(a) A practitioner shall not aid a non-practitioner in
the unauthorized practice of law before the Office.
(b) A practitioner shall not aid a suspended or
excluded practitioner in the practice of law before the
Office.
(c) A practitioner shall not aid a non-lawyer in the
unauthorized practice of law.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]§ 
10.48Sharing legal fees.
A practitioner or a firm of practitioners shall not share
legal fees with a non-practitioner except that:
(a) An agreement by a practitioner with the
practitioner’s firm, partner, or associate may provide for
the payment of money, over a reasonable period of time
after the practitioner’s death, to the practitioner’s estate
or to one or more specified persons.
(b) A practitioner who undertakes to complete
unfinished legal business of a deceased practitioner may
pay to the estate of the deceased practitioner that
proportion of the total compensation which fairly
represents the services rendered by the deceased
practitioner.
(c) A practitioner or firm of practitioners may include
non-practitioner employees in a compensation or
retirement plan, even though the plan is based in whole
or in part on a profit-sharing arrangement, providing such
plan does not circumvent another Disciplinary Rule.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985; para.
(b) revised, 58 FR 54511, Oct. 22, 1993, effective June 3, 1994]
§ 
10.49Forming a partnership with a non-practitioner.
A practitioner shall not form a partnership with a
nonpractitioner if any of the activities of the partnership
consist of the practice of patent, trademark, or other law
before the Office.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.50 -
10.55[Reserved]
§ 
10.56Canon 4.
A practitioner should preserve the confidences and secrets
of a client.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.57Preservation of confidences and secrets of a
client.
(a) “Confidence” refers to information protected by
the attorney-client or agent-client privilege under
applicable law. “Secret” refers to other information gained
in the professional relationship that the client has
requested be held inviolate or the disclosure of which
would be embarrassing or would be likely to be
detrimental to the client.
(b) Except when permitted under paragraph (c) of this
section, a practitioner shall not knowingly:
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 (1) Reveal a confidence or secret of a client.
(2) Use a confidence or secret of a client to the
disadvantage of the client.
(3) Use a confidence or secret of a client for the
advantage of the practitioner or of a third person, unless
the client consents after full disclosure.
(c) A practitioner may reveal:
(1) Confidences or secrets with the consent of the
client affected but only after a full disclosure to the
client.
(2) Confidences or secrets when permitted under
Disciplinary Rules or required by law or court order.
(3) The intention of a client to commit a crime and
the information necessary to prevent the crime.
(4) Confidences or secrets necessary to establish
or collect the practitioner’s fee or to defend the
practitioner or the practitioner’s employees or
associates against an accusation of wrongful conduct.
(d) A practitioner shall exercise reasonable care to
prevent the practitioner’s employees, associates, and
others whose services are utilized by the practitioner from
disclosing or using confidences or secrets of a client,
except that a practitioner may reveal the information
allowed by paragraph (c) of this section through an
employee.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.58 -
10.60[Reserved]
§ 
10.61Canon 5.
A practitioner should exercise independent professional
judgment on behalf of a client.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.62Refusing employment when the interest of the
practitioner may impair the practitioner’s
independent professional judgment.
(a) Except with the consent of a client after full
disclosure, a practitioner shall not accept employment if
the exercise of the practitioner’s professional judgment
on behalf of the client will be or reasonably may be
affected by the practitioner’s own financial, business,
property, or personal interests.
(b) A practitioner shall not accept employment in a
proceeding before the Office if the practitioner knows or
it is obvious that the practitioner or another practitioner
in the practitioner’s firm ought to sign an affidavit to be
filed in the Office or be called as a witness, except thatthe practitioner may undertake the employment and the
practitioner or another practitioner in the practitioner’s
firm may testify:
(1) If the testimony will relate solely to an
uncontested matter.
(2) If the testimony will relate solely to a matter of
formality and there is no reason to believe that
substantial evidence will be offered in opposition to
the testimony.
(3) If the testimony will relate solely to the nature
and value of legal services rendered in the case by the
practitioner or the practitioner’s firm to the client.
(4) As to any matter, if refusal would work a
substantial hardship on the client because of the
distinctive value of the practitioner or the practitioner’s
firm as counsel in the particular case.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.63Withdrawal when the practitioner becomes a
witness.
(a) If, after undertaking employment in a proceeding
in the Office, a practitioner learns or it is obvious that the
practitioner or another practitioner in the practitioner’s
firm ought to sign an affidavit to be filed in the Office or
be called as a witness on behalf of a practitioner’s client,
the practitioner shall withdraw from the conduct of the
proceeding and the practitioner’s firm, if any, shall not
continue representation in the proceeding, except that the
practitioner may continue the representation and the
practitioner or another practitioner in the practitioner’s
firm may testify in the circumstances enumerated in
paragraphs (1) through (4) of § 10.62 (b).
(b) If, after undertaking employment in a proceeding
before the Office, a practitioner learns or it is obvious that
the practitioner or another practitioner in the practitioner’s
firm may be asked to sign an affidavit to be filed in the
Office or be called as a witness other than on behalf of
the practitioner’s client, the practitioner may continue the
representation until it is apparent that the practitioner’s
affidavit or testimony is or may be prejudicial to the
practitioner’s client.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.64Avoiding acquisition of interest in litigation or
proceeding before the Office.
(a) A practitioner shall not acquire a proprietary
interest in the subject matter of a proceeding before the
Office which the practitioner is conducting for a client,
except that the practitioner may:
(1) Acquire a lien granted by law to secure the
practitioner’s fee or expenses; or
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 (2) Contract with a client for a reasonable
contingent fee; or
(3) In a patent case, take an interest in the patent
as part or all of his or her fee.
(b) While representing a client in connection with a
contemplated or pending proceeding before the Office, a
practitioner shall not advance or guarantee financial
assistance to a client, except that a practitioner may
advance or guarantee the expenses of going forward in a
proceeding before the Office including fees required by
law to be paid to the Office, expenses of investigation,
expenses of medical examination, and costs of obtaining
and presenting evidence, provided the client remains
ultimately liable for such expenses. A practitioner may,
however, advance any fee required to prevent or remedy
an abandonment of a  client’s application by reason of an
act or omission attributable to the practitioner and not to
the client, whether or not the client is ultimately liable for
such fee.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.65Limiting business relations with a client.
A practitioner shall not enter into a business transaction
with a client if they have differing interests therein and
if the client expects the practitioner to exercise
professional judgment therein for the protection of the
client, unless the client has consented after full disclosure.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.66Refusing to accept or continue employment if
the interests of another client may impair the
independent professional judgment of the
practitioner.
(a) A practitioner shall decline proffered employment
if the exercise of the practitioner’s independent
professional judgment in behalf of a client will be or is
likely to be adversely affected by the acceptance of the
proffered employment, or if it would be likely to involve
the practitioner in representing differing interests, except
to the extent permitted under paragraph (c) of this section.
(b) A practitioner shall not continue multiple
employment if the exercise of the practitioner’s
independent professional judgment in behalf of a client
will be or is likely to be adversely affected by the
practitioner’s representation of another client, or if it
would be likely to involve the practitioner in representing
differing interests, except to the extent permitted under
paragraph (c) of this section.
(c) In the situations covered by paragraphs (a) and (b)
of this section, a practitioner may represent multiple
clients if it is obvious that the practitioner can adequatelyrepresent the interest of each and if each consents to the
representation after full disclosure of the possible effect
of such representation on the exercise of the practitioner’s
independent professional judgment on behalf of each.
(d) If a practitioner is required to decline employment
or to withdraw from employment under a Disciplinary
Rule, no partner, or associate, or any other practitioner
affiliated with the practitioner or the practitioner’s firm,
may accept or continue such employment unless otherwise
ordered by the Director or Commissioner.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.67Settling similar claims of clients.
A practitioner who represents two or more clients shall
not make or participate in the making of an aggregate
settlement of the claims of or against the practitioner’s
clients, unless each client has consented to the settlement
after being advised of the existence and nature of all the
claims involved in the proposed settlement, of the total
amount of the settlement, and of the participation of each
person in the settlement.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.68Avoiding influence by others than the client.
(a) Except with the consent of the practitioner’s client
after full disclosure, a practitioner shall not:
(1) Accept compensation from one other than the
practitioner’s client for the practitioner’s legal services
to or for the client.
(2) Accept from one other than the practitioner’s
client any thing of value related to the practitioner’s
representation of or the practitioner’s employment by
the client.
(b) A practitioner shall not permit a person who
recommends, employs, or pays the practitioner to render
legal services for another, to direct or regulate the
practitioner’s professional judgment in rendering such
legal services.
(c) A practitioner shall not practice with or in the form
of a professional corporation or association authorized to
practice law for a profit, if a non-practitioner has the right
to direct or control the professional judgment of a
practitioner.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.69 -
10.75[Reserved]
§ 
10.76Canon 6.
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 A practitioner should represent a client competently.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.77Failing to act competently.
A practitioner shall not:
(a) Handle a legal matter which the practitioner knows
or should know that the practitioner is not competent to
handle, without associating with the practitioner another
practitioner who is competent to handle it.
(b) Handle a legal matter without preparation adequate
in the circumstances.
(c) Neglect a legal matter entrusted to the practitioner.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.78Limiting liability to client.
A practitioner shall not attempt to exonerate himself or
herself from, or limit his or her liability to, a client for his
or her personal malpractice.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.79 -
10.82[Reserved]
§ 
10.83Canon 7.
A practitioner should represent a client zealously within
the bounds of the law.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.84Representing a client zealously.
(a) A practitioner shall not intentionally:
(1) Fail to seek the lawful objectives of a client
through reasonable available means permitted by law
and the Disciplinary Rules, except as provided by
paragraph (b) of this section. A practitioner does not
violate the provisions of this section, however, by
acceding to reasonable requests of opposing counsel
which do not prejudice the rights of the client, by being
punctual in fulfilling all professional commitments, by
avoiding offensive tactics, or by treating with courtesy
and consideration all persons involved in the legal
process.
(2) Fail to carry out a contract of employment
entered into with a client for professional services, but
a practitioner may withdraw as permitted under §§
10.40 , 10.63 , and 10.66 .(3) Prejudice or damage a client during the course
of a professional relationship, except as required under
this part.
(b) In representation of a client, a practitioner may:
(1) Where permissible, exercise professional
judgment to waive or fail to assert a right or position
of the client.
(2) Refuse to aid or participate in conduct that the
practitioner believes to be unlawful, even though there
is some support for an argument that the conduct is
legal.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.85Representing a client within the bounds of the
law.
(a) In representation of a client, a practitioner shall
not:
(1) Initiate or defend any proceeding before the
Office, assert a position, conduct a defense, delay a
trial or proceeding before the Office, or take other
action on behalf of the practitioner’s client when the
practitioner knows or when it is obvious that such
action would serve merely to harass or maliciously
injure another.
(2) Knowingly advance a claim or defense that is
unwarranted under existing law, except that a
practitioner may advance such claim or defense if it
can be supported by good faith argument for an
extension, modification, or reversal of existing law.
(3) Conceal or knowingly fail to disclose that which
the practitioner is required by law to reveal.
(4) Knowingly use perjured testimony or false
evidence.
(5) Knowingly make a false statement of law or
fact.
(6) Participate in the creation or preservation of
evidence when the practitioner knows or it is obvious
that the evidence is false.
(7) Counsel or assist a client in conduct that the
practitioner knows to be illegal or fraudulent.
(8) Knowingly engage in other illegal conduct or
conduct contrary to a Disciplinary Rule.
(b) A practitioner who receives information clearly
establishing that:
(1) A client has, in the course of the representation,
perpetrated a fraud upon a person or tribunal shall
promptly call upon the client to rectify the same, and
if the client refuses or is unable to do so the practitioner
shall reveal the fraud to the affected person or tribunal.
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 (2) A person other than a client has perpetrated a
fraud upon a tribunal shall promptly reveal the fraud
to the tribunal.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.86[Reserved]
§ 
10.87Communicating with one of adverse interest.
During the course of representation of a client, a
practitioner shall not:
(a) Communicate or cause another to communicate
on the subject of the representation with a party the
practitioner knows to be represented by another
practitioner in that matter unless the practitioner has the
prior consent of the other practitioner representing such
other party or is authorized by law to do so. It is not
improper, however, for a practitioner to encourage a client
to meet with an opposing party for settlement discussions.
(b) Give advice to a person who is not represented by
a practitioner other than the advice to secure counsel, if
the interests of such person are or have a reasonable
possibility of being in conflict with the interests of the
practitioner’s client.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.88Threatening criminal prosecution.
A practitioner shall not present, participate in presenting,
or threaten to present criminal charges solely to obtain an
advantage in any prospective or pending proceeding
before the Office.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.89Conduct in proceedings.
(a) A practitioner shall not disregard or advise a client
to disregard any provision of this Subchapter or a decision
of the Office made in the course of a proceeding before
the Office, but the practitioner may take appropriate steps
in good faith to test the validity of such provision or
decision.
(b) In presenting a matter to the Office, a practitioner
shall disclose:
(1) Controlling legal authority known to the
practitioner to be directly adverse to the position of the
client and which is not disclosed by opposing counsel
or an employee of the Office.
(2) Unless privileged or irrelevant, the identities of
the client the practitioner represents and of the persons
who employed the practitioner.(c) In appearing in a professional capacity before a
tribunal, a practitioner shall not:
(1) State or allude to any matter that the practitioner
has no reasonable basis to believe is relevant to the
case or that will not be supported by admissible
evidence.
(2) Ask any question that the practitioner has no
reasonable basis to believe is relevant to the case and
that is intended to degrade a witness or other person.
(3) Assert the practitioner’s personal knowledge of
the facts in issue, except when testifying as a witness.
(4) Assert the practitioner’s personal opinion as to
the justness of a cause, as to the credibility of a witness,
as to the culpability of a civil litigant, or as to the guilt
or innocence of an accused; but the practitioner may
argue, on the practitioner’s analysis of the evidence,
for any position or conclusion with respect to the
matters stated herein.
(5) Engage in undignified or discourteous conduct
before the Office (see § 1.3  of the subchapter).
(6) Intentionally or habitually violate any provision
of this subchapter or established rule of evidence.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.90 -
10.91[Reserved]
§ 
10.92Contact with witnesses.
(a) A practitioner shall not suppress any evidence that
the practitioner or the practitioner’s client has a legal
obligation to reveal or produce.
(b) A practitioner shall not advise or cause a person
to be secreted or to leave the jurisdiction of a tribunal for
the purpose of making the person unavailable as a witness
therein.
(c) A practitioner shall not pay, offer to pay,
or acquiesce in payment of compensation to a
witness contingent upon the content of the witness’
affidavit, testimony or the outcome of the case. But a
practitioner may advance, guarantee, or acquiesce in the
payment of:
(1) Expenses reasonably incurred by a witness in
attending, testifying, or making an affidavit.
(2) Reasonable compensation to a witness for the
witness’ loss of time in attending, testifying, or making
an affidavit.
(3) A reasonable fee for the professional services
of an expert witness.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
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 § 
10.93Contact with officials.
(a) A practitioner shall not give or lend anything of
value to a judge, official, or employee of a tribunal under
circumstances which might give the appearance that the
gift or loan is made to influence official action.
(b) In an adversary proceeding, including any  inter
partes  proceeding before the Office, a practitioner shall
not communicate, or cause another to communicate, as
to the merits of the cause with a judge, official, or Office
employee before whom the proceeding is pending, except:
(1) In the course of official proceedings in the
cause.
(2) In writing if the practitioner promptly delivers
a copy of the writing to opposing counsel or to the
adverse party if the adverse party is not represented by
a practitioner.
(3) Orally upon adequate notice to opposing counsel
or to the adverse party if the adverse party is not
represented by a practitioner.
(4) As otherwise authorized by law.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.94 -
10.99[Reserved]
§ 
10.100Canon 8.
A practitioner should assist in improving the legal system.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.101Action as a public official.
(a) A practitioner who holds public office shall not:
(1) Use the practitioner’s public position to obtain,
or attempt to obtain, a special advantage in legislative
matters for the practitioner or for a client under
circumstances where the practitioner knows or it is
obvious that such action is not in the public interest.
(2) Use the practitioner’s public position to
influence, or attempt to influence, a tribunal to act in
favor of the practitioner or of a client.
(3) Accept any thing of value from any person when
the practitioner knows or it is obvious that the offer is
for the purpose of influencing the practitioner’s action
as a public official.
(b) A practitioner who is an officer or employee of
the United States shall not practice before the Office in
patent cases except as provided in § 10.10 (c) and (d).[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985; para.
(b) amended, 54 FR 6520, Feb. 13, 1989]
§ 
10.102Statements concerning officials.
(a) A practitioner shall not knowingly make false
statements of fact concerning the qualifications of a
candidate for election or appointment to a judicial office
or to a position in the Office.
(b) A practitioner shall not knowingly make false
accusations against a judge, other adjudicatory officer, or
employee of the Office.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.103Practitioner candidate for judicial office.
A practitioner who is a candidate for judicial office shall
comply with applicable provisions of law.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.104[Reserved]
-
10.109
§ 
10.110Canon 9.
A practitioner should avoid even the appearance of
professional impropriety.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.111Avoiding even the appearance of impropriety.
(a) A practitioner shall not accept private employment
in a matter upon the merits of which he or she has acted
in a judicial capacity.
(b) A practitioner shall not accept private employment
in a matter in which he or she had personal responsibility
while a public employee.
(c) A practitioner shall not state or imply that the
practitioner is able to influence improperly or upon
irrelevant grounds any tribunal, legislative body, or public
official.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985]
§ 
10.112Preserving identity of funds and property of
client.
(a) All funds of clients paid to a practitioner or a
practitioner’s firm, other than advances for costs and
expenses, shall be deposited in one or more identifiable
bank accounts maintained in the United States or, in the
case of a practitioner having an office in a foreign country
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 or registered under § 11.6(c), in the United States or the
foreign country.
(b) No funds belonging to the practitioner or the
practitioner’s firm shall be deposited in the bank accounts
required by paragraph (a) of this section except as follows:
(1) Funds reasonably sufficient to pay bank charges
may be deposited therein.
(2) Funds belonging in part to a client and in part
presently or potentially to the practitioner or the
practitioner’s firm must be deposited therein, but the
portion belonging to the practitioner or the
practitioner’s firm may be withdrawn when due unless
the right of the practitioner or the practitioner’s firm
to receive it is disputed by the  client, in which event
the disputed portion shall not be withdrawn until the
dispute is finally resolved.
(c) A practitioner shall:
(1) Promptly notify a client of the receipt of the
client’s funds, securities, or other properties.
(2) Identify and label securities and properties of a
client promptly upon receipt and place them in a safe
deposit box or other place of safekeeping as soon as
practicable.
(3) Maintain complete records of all funds,
securities, and other properties of a client coming into
the possession of the practitioner and render appropriate
accounts to the client regarding the funds, securities,
or other properties.
(4) Promptly pay or deliver to the client as
requested by a client the funds, securities, or other
properties in the possession of the practitioner which
the client is entitled to receive.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985; para.
(a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005]
§ 
10.113[Reserved]
-
10.170
PART  - 11   REPRESENTATION OF OTHERS BEFORE THE
UNITED STATES PATENT AND TRADEMARK OFFICE
Subpart A  — General Provisions
GENERAL INFORMATION
§  11.1 Definitions.
This part governs solely the practice of patent, trademark,
and other law before the United States Patent andTrademark Office. Nothing in this part shall be construed
to preempt the authority of each State to regulate the
practice of law, except to the extent necessary for the
United States Patent and Trademark Office to accomplish
its Federal objectives. Unless otherwise clear from the
context, the following definitions apply to this part:
 Attorney or  lawyer means an individual who is a member
in good standing of the highest court of any State,
including an individual who is in good standing of the
highest court of one State and not under an order of any
court or Federal agency suspending, enjoining, restraining,
disbarring or otherwise restricting the attorney from
practice before the bar of another State or Federal agency.
A  non-lawyer means a person who is not an attorney or
lawyer.
 Belief or  believes means that the person involved actually
supposed the fact in question to be true. A person’s belief
may be inferred from circumstances.
 Conviction or  convicted means any confession to a crime;
a verdict or judgment finding a person guilty of a crime;
any entered plea, including  nolo contendre or Alford
plea, to a crime; or receipt of deferred adjudication
(whether judgment or sentence has been entered or not)
for an accused or pled crime.
 Crime  means any offense declared to be a felony or
misdemeanor by Federal or State law in the jurisdiction
where the act occurs.
 Data sheet means a form used to collect the name,
address, and telephone information from individuals
recognized to practice before the Office in patent matters.
 Disqualified means any action that prohibits a practitioner
from participating in or appearing before the program or
agency, regardless of how long the prohibition lasts or
the specific terminology used.
 Federal agency  means any authority of the executive
branch of the Government of the United States.
 Federal program means any program established by an
Act of Congress or administered by a Federal agency.
 Fiscal year means the time period from October 1st
through the ensuing September 30th.
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  Fraud  or  fraudulent means conduct having a purpose to
deceive and not merely negligent misrepresentation or
failure to apprise another of relevant information.
 Good moral character and reputation  means the
possession of honesty and truthfulness, trustworthiness
and reliability, and a professional commitment to the legal
process and the administration of justice, as well as the
condition of being regarded as possessing such qualities.
 Grievance means a written submission from any source
received by the OED Director that presents possible
grounds for discipline of a specified practitioner.
 Knowingly,  known, or  knows means actual knowledge
of the fact in question. A person’s knowledge may be
inferred from circumstances.
Mandatory Disciplinary Rule  is a rule identified in §
10.20(b)  of this chapter as a Disciplinary Rule.
 Matter  means any litigation, administrative proceeding,
lobbying activity, application, claim, investigation,
controversy, arrest, charge, accusation, contract,
negotiation, estate or family relations practice issue,
request for a ruling or other determination, or any other
matter covered by the conflict of interest rules of the
appropriate Government entity.
 OED  means the Office of Enrollment and Discipline.
 OED Director  means the Director of the Office of
Enrollment and Discipline.
 OED Director’s representatives means attorneys within
the USPTO Office of General Counsel who act as
representatives of the OED Director.
 Office  means the United States Patent and Trademark
Office.
 Practitioner  means:
(1) An attorney or agent registered to practice before
the Office in patent matters,
(2) An individual authorized under 5 U.S.C. 500(b)
or otherwise as provided by § 10.14(b), (c), and (e) of this
subchapter, to practice before the Office in trademark
matters or other non-patent matters, or
(3) An individual authorized to practice before the
Office in a patent case or matters under § 11.9(a) or (b). Proceeding before the Office means an application for
patent, an application for reissue, a reexamination, a
protest, a public use matter, an  inter partes  patent matter,
correction of a patent, correction of inventorship, an
application to register a trademark, an  inter partes
trademark matter, an appeal, a petition, and any other
matter that is pending before the Office.
 Reasonable or  reasonably when used in relation to
conduct by a practitioner means the conduct of a
reasonably prudent and competent practitioner.
 Registration  means registration to practice before the
Office in patent proceedings.
 Roster means a list of individuals who have been
registered as either a patent attorney or patent agent.
 Serious crime  means:
(1) Any criminal offense classified as a felony under
the laws of the United States, any state or any foreign
country where the crime occurred; or
(2) Any crime a necessary element of which, as
determined by the statutory or common law definition of
such crime in the jurisdiction where the crime occurred,
includes interference with the administration of justice,
false swearing, misrepresentation, fraud, willful failure
to file income tax returns, deceit, bribery, extortion,
misappropriation, theft, or an attempt or a conspiracy or
solicitation of another to commit a “serious crime.”
 Significant evidence of rehabilitation means satisfactory
evidence that is significantly more probable than not that
there will be no recurrence in the foreseeable future of
the practitioner’s prior disability or addiction.
 State  means any of the 50 states of the United States of
America, the District of Columbia, and any
Commonwealth or territory of the United States of
America.
 Substantial  when used in reference to degree or extent
means a material matter of clear and weighty importance.
 Suspend  or  suspension means a temporary debarring
from practice before the Office or other jurisdiction.
 United States  means the United States of America, and
the territories and possessions the United States of
America.
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  USPTO Director means the Director of the United States
Patent and Trademark Office, or an employee of the
Office delegated authority to act for the Director of the
United States Patent and Trademark Office in matters
arising under this part.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; definition
of “grievance” added, 77 FR 45247, July 31, 2012, effective August
30, 2012]
§  11.2 Director of the Office of Enrollment and
Discipline.
(a)  Appointment. The USPTO Director shall appoint
a Director of the Office of Enrollment and Discipline
(OED Director). In the event of a vacancy in the office
of the OED Director, the USPTO Director may designate
an employee of the Office to serve as acting OED
Director. The OED Director shall be an active member
in good standing of the bar of the highest court of a State.
(b)  Duties . The OED Director shall:
(1) Supervise staff as may be necessary for the
performance of the OED Director’s duties.
(2) Receive and act upon applications for
registration, prepare and grade the examination
provided for in § 11.7(b), maintain the register provided
for in § 11.5, and perform such other duties in
connection with enrollment and recognition of attorneys
and agents as may be necessary.
(3) Conduct investigations into the moral character
and reputation of any individual seeking to be registered
as an attorney or agent, or of any individual seeking
limited recognition, deny registration or recognition of
individuals failing to demonstrate possession of good
moral character and reputation, and perform such other
duties in connection with enrollment matters and
investigations as may be necessary.
(4) Conduct investigations of matters involving
possible grounds for discipline of practitioners coming
to the attention of the OED Director. Except in matters
meriting summary dismissal, no disposition under §
11.22(h)  shall be recommended or undertaken by the
OED Director until the accused practitioner shall have
been afforded an opportunity to respond to a reasonable
inquiry by the OED Director.
(5) With the consent of a panel of three members
of the Committee on Discipline, initiate disciplinary
proceedings under § 11.32  and perform such other
duties in connection with investigations and disciplinary
proceedings as may be necessary.
(6) Oversee the preliminary screening of
information and close investigations as provided for in
§ 11.22 .(7) [Reserved]
(c) Petition to OED Director regarding enrollment
or recognition . Any petition from any action or
requirement of the staff of OED reporting to the OED
Director shall be taken to the OED Director accompanied
by payment of the fee set forth in  § 1.21(a)(5)(i) of this
chapter. Any such petition not filed within sixty days from
the mailing date of the action or notice from which relief
is requested will be dismissed as untimely. The filing of
a petition will neither stay the period for taking other
action which may be running, nor stay other proceedings.
The petitioner may file a single request for reconsideration
of a decision within thirty days of the date of the decision.
Filing a request for reconsideration stays the period for
seeking review of the OED Director’s decision until a
final decision on the request for reconsideration is issued.
A final decision by the OED Director may be reviewed
in accordance with the provisions of paragraph (d) of this
section.
(d) Review of OED Director’s decision regarding
enrollment or recognition . A party dissatisfied with a
final decision of the OED Director regarding enrollment
or recognition may seek review of the decision upon
petition to the USPTO Director accompanied by payment
of the fee set forth in § 1.21(a)(5)(ii)  of this chapter. Any
such petition to the USPTO Director waives a right to
seek reconsideration from the OED Director. Any petition
not filed within thirty days after the final decision of the
OED Director may be dismissed as untimely. Briefs or
memoranda, if any, in support of the petition shall
accompany the petition. The petition will be decided on
the basis of the record made before the OED Director.
The USPTO Director in deciding the petition will consider
no new evidence. Copies of documents already of record
before the OED Director shall not be submitted with the
petition. An oral hearing will not be granted except when
considered necessary by the USPTO Director. Any request
for reconsideration of the decision of the USPTO Director
may be dismissed as untimely if not filed within thirty
days after the date of said decision.
(e)  Petition to USPTO Director in disciplinary
matters . Petition may be taken to the USPTO Director to
invoke the supervisory authority of the USPTO Director
in appropriate circumstances in disciplinary matters. Any
such petition must contain a statement of the facts
involved and the point or points to be reviewed and the
action requested. Briefs or memoranda, if any, in support
of the petition must accompany the petition. Where facts
are to be proven, the proof in the form of affidavits or
declarations (and exhibits, if any) must accompany the
petition. The OED Director may be directed by the
USPTO Director to file a reply to the petition, supplying
a copy to the petitioner. An oral hearing will not be
granted except when considered necessary by the USPTO
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 Director. The mere filing of a petition will not stay an
investigation, disciplinary proceeding or other
proceedings. Any petition under this part not filed within
thirty days of the mailing date of the action or notice from
which relief is requested may be dismissed as untimely.
Any request for reconsideration of the decision of the
USPTO Director may be dismissed as untimely if not
filed within thirty days after the date of said decision.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
paras. (a), (b)(4), (c) and (d) revised, paras. (b)(5), (b)(6) and (e) added,
73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§  11.3 Suspension of rules.
(a) In an extraordinary situation, when justice requires,
any requirement of the regulations of this Part which is
not a requirement of statute may be suspended or waived
by the USPTO Director or the designee of the USPTO
Director,  sua sponte , or on petition by any party,
including the OED Director or the OED Director’s
representative, subject to such other requirements as may
be imposed.
(b) No petition under this section shall stay a
disciplinary proceeding unless ordered by the USPTO
Director or a hearing officer.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
Subpart B  — Recognition To Practice Before the
USPTO
PATENTS, TRADEMARKS, AND OTHER
NON-PATENT LA W
§  11.4 [Reserved]
[Reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§  11.5 Register of attorneys and agents in patent
matters; practice before the office.
(a) A register of attorneys and agents is kept in the
Office on which are entered the names of all individuals
recognized as entitled to represent applicants having
prospective or immediate business before the Office in
the preparation and prosecution of patent applications.
Registration in the Office under the provisions of this part
shall entitle the individuals so registered to practice before
the Office only in patent matters.
(b)  Practice before the Office . Practice before the
Office includes, but is not limited to, law-related service
that comprehends any matter connected with the
presentation to the Office or any of its officers or
employees relating to a client’s rights, privileges, duties,
or responsibilities under the laws or regulations
administered by the Office for the grant of a patent or
registration of a trademark, or for enrollment ordisciplinary matters. Such presentations include preparing
necessary documents in contemplation of filing the
documents with the Office, corresponding and
communicating with the Office, and representing a client
through documents or at interviews, hearings, and
meetings, as well as communicating with and advising a
client concerning matters pending or contemplated to be
presented before the Office. Nothing in this section
proscribes a practitioner from employing or retaining
non-practitioner assistants under the supervision of the
practitioner to assist the practitioner in matters pending
or contemplated to be presented before the Office.
(1)  Practice before the Office in patent matters .
Practice before the Office in patent matters includes,
but is not limited to, preparing and prosecuting any
patent application, consulting with or giving advice to
a client in contemplation of filing a patent application
or other document with the Office, drafting the
specification or claims of a patent application; drafting
an amendment or reply to a communication from the
Office that may require written argument to establish
the patentability of a claimed invention; drafting a reply
to a communication from the Office regarding a patent
application; and drafting a communication for a public
use, interference, reexamination proceeding, petition,
appeal to or any other proceeding before the Board of
Patent Appeals and Interferences, or other proceeding.
Registration to practice before the Office in patent cases
sanctions the performance of those services which are
reasonably necessary and incident to the preparation
and prosecution of patent applications or other
proceeding before the Office involving a patent
application or patent in which the practitioner is
authorized to participate. The services include:
(i) Considering the advisability of relying upon
alternative forms of protection which may be
available under state law, and
(ii) Drafting an assignment or causing an
assignment to be executed for the patent owner in
contemplation of filing or prosecution of a patent
application for the patent owner, where the
practitioner represents the patent owner after a
patent issues in a proceeding before the Office,
and when drafting the assignment the practitioner
does no more than replicate the terms of a
previously existing oral or written obligation of
assignment from one person or party to another
person or party.
(2)  Practice before the Office in trademark matters.
Practice before the Office in trademark matters
includes, but is not limited to, consulting with or giving
advice to a client in contemplation of filing a trademark
application or other document with the Office;
preparing and prosecuting an application for trademark
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 registration; preparing an amendment which may
require written argument to establish the registrability
of the mark; and conducting an opposition, cancellation,
or concurrent use proceeding; or conducting an appeal
to the Trademark Trial and Appeal Board.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§  11.6 Registration of attorneys and agents.
(a)  Attorneys . Any citizen of the United States who
is an attorney and who fulfills the requirements of this
part may be registered as a patent attorney to practice
before the Office. When appropriate, any alien who is an
attorney, who lawfully resides in the United States, and
who fulfills the requirements of this part may be registered
as a patent attorney to practice before the Office, provided
that such registration is not inconsistent with the terms
upon which the alien was admitted to, and resides in, the
United States and further provided that the alien may
remain registered only:
(1) If the alien continues to lawfully reside in the
United States and registration does not become
inconsistent with the terms upon which the alien
continues to lawfully reside in the United States, or
(2) If the alien ceases to reside in the United States,
the alien is qualified to be registered under paragraph
(c) of this section. See also §  11.9 (b).
(b)  Agents . Any citizen of the United States who is
not an attorney, and who fulfills the requirements of this
part may be registered as a patent agent to practice before
the Office. When appropriate, any alien who is not an
attorney, who lawfully resides in the United States, and
who fulfills the requirements of this part may be registered
as a patent agent to practice before the Office, provided
that such registration is not inconsistent with the terms
upon which the alien was admitted to, and resides in, the
United States, and further provided that the alien may
remain registered only:
(1) If the alien continues to lawfully reside in the
United States and registration does not become
inconsistent with the terms upon which the alien
continues to lawfully reside in the United States or
(2) If the alien ceases to reside in the United States,
the alien is qualified to be registered under paragraph
(c) of this section. See also §  11.9 (b).
(c) Foreigners . Any foreigner not a resident of the
United States who shall file proof to the satisfaction of
the OED Director that he or she is registered and in good
standing before the patent office of the country in which
he or she resides and practices, and who is possessed of
the qualifications stated in §  11.7 , may be registered as a
patent agent to practice before the Office for the limitedpurpose of presenting and prosecuting patent applications
of applicants located in such country, provided that the
patent office of such country allows substantially
reciprocal privileges to those admitted to practice before
the Office. Registration as a patent agent under this
paragraph shall continue only during the period that the
conditions specified in this paragraph obtain. Upon notice
by the patent office of such country that a patent agent
registered under this section is no longer registered or no
longer in good standing before the patent office of such
country, and absent a showing of cause why his or her
name should not be removed from the register, the OED
Director shall promptly remove the name of the patent
agent from the register and publish the fact of removal.
Upon ceasing to reside in such country, the patent agent
registered under this section is no longer qualified to be
registered under this section, and the OED Director shall
promptly remove the name of the patent agent from the
register and publish the fact of removal.
(d) Board of Patent Appeals and Interferences
matters . For action by a person who is not registered in
a proceeding before the Board of Patent Appeals and
Interferences, see § 41.5(a) of this title.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
para. (d) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  11.7 Requirements for registration.
(a) No individual will be registered to practice before
the Office unless he or she has:
(1) Applied to the USPTO Director in writing by
completing an application for registration form supplied
by the OED Director and furnishing all requested
information and material; and
(2) Established to the satisfaction of the OED
Director that he or she:
(i) Possesses good moral character and
reputation;
(ii) Possesses the legal, scientific, and
technical qualifications necessary for him or her
to render applicants valuable service; and
(iii) Is competent to advise and assist patent
applicants in the presentation and prosecution of
their applications before the Office.
(b)
(1) To enable the OED Director to determine
whether an individual has the qualifications specified
in paragraph (a)(2) of this section, the individual shall:
(i) File a complete application for registration
each time admission to the registration
examination is requested. A complete application
for registration includes:
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 (A) An application for registration
form supplied by the OED Director
wherein all requested information and
supporting documents are furnished,
(B) Payment of the fees required by §
1.21(a)(1) of this subchapter,
(C) Satisfactory proof of scientific and
technical qualifications, and
(D) For aliens, provide proof that
recognition is not inconsistent with the
terms of their visa or entry into the United
States;
(ii) Pass the registration examination, unless
the taking and passing of the examination is
waived as provided in paragraph (d) of this
section. Unless examination is waived pursuant
to paragraph (d) of this section, each individual
seeking registration must take and pass the
registration examination to enable the OED
Director to determine whether the individual
possesses the legal and competence qualifications
specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of
this section. An individual failing the examination
may, upon receipt of notice of failure from OED,
reapply for admission to the examination. An
individual failing the examination must wait thirty
days after the date the individual last took the
examination before retaking the examination. An
individual reapplying shall:
(A) File a completed application for
registration form wherein all requested
information and supporting documents are
furnished,
(B) Pay the fees required by §  1.21
(a)(1) of this subchapter, and
(C) For aliens, provide proof that
recognition is not inconsistent with the
terms of their visa or entry into the United
States; and
(iii) Provide satisfactory proof of possession
of good moral character and reputation.
(2) An individual failing to file a complete
application for registration will not be admitted to the
examination and will be notified of the incompleteness.
Applications for registration that are incomplete as
originally submitted will be considered only when they
have been completed and received by OED, provided
that this occurs within sixty days of the mailing date
of the notice of incompleteness. Thereafter, a new and
complete application for registration must be filed.Only an individual approved as satisfying the
requirements of paragraphs (b)(1)(i)(A), (b)(1)(i)(B),
(b)(1)(i)(C) and (b)(1)(i)(D) of this sect i on may be
admitted to the examination.
(3) If an individual does not reapply until more than
one year after the mailing date of a notice of failure,
that individual must again comply with paragraph
(b)(1)(i) of this section.
(c) Each individual seeking registration is responsible
for updating all information and answers submitted in or
with the application for registration based upon anything
occurring between the date the application for registration
is signed by the individual, and the date he or she is
registered or recognized to practice before the Office in
patent matters. The update shall be filed within thirty days
after the date of the occasion that necessitates the update.
(d)  Waiver of the Registration Examination for
Former Office Employees .
(1)  Former patent examiners who by July 26, 2004,
had not actively served four years in the patent
examining corps, and were serving in the corps at the
time of their separation. The OED Director may waive
the taking of a registration examination in the case of
any individual meeting the requirements of paragraph
(b)(1)(i)(C) of this section who is a former patent
examiner but by July 26, 2004, had not served four
years in the patent examining corps, if the individual
demonstrates that he or she:
(i) Actively served in the patent examining
corps of the Office and was serving in the corps
at the time of separation from the Office,
(ii) Received a certificate of legal competency
and negotiation authority;
(iii) After receiving the certificate of legal
competency and negotiation authority, was rated
at least fully successful in each quality
performance element of his or her performance
plan for the last two complete fiscal years as a
patent examiner; and
(iv) Was not under an oral or written warning
regarding the quality performance elements at the
time of separation from the patent examining
corps.
(2)  Former patent examiners who on July 26, 2004,
had actively served four years in the patent examining
corps, and were serving in the corps at the time of their
separation . The OED Director may waive the taking
of a registration examination in the case of any
individual meeting the requirements of paragraph
(b)(1)(i)(C) of this section who is a former patent
examiner and by July 26, 2004, had served four years
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 in the patent examining corps, if the individual
demonstrates that he or she:
(i) Actively served for at least four years in
the patent examining corps of the Office by July
26, 2004, and was serving in the corps at the time
of separation from the Office;
(ii) Was rated at least fully successful in each
quality performance element of his or her
performance plan for the last two complete fiscal
years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning
regarding the quality performance elements at the
time of separation from the patent examining
corps.
(3)  Certain former Office employees who were not
serving in the patent examining corps upon their
separation from the Office . The OED Director may
waive the taking of a registration examination in the
case of a former Office employee meeting the
requirements of paragraph (b)(1)(i)(C) of this section
who by petition demonstrates possession of the
necessary legal qualifications to render to patent
applicants and others valuable service and assistance
in the preparation and prosecution of their applications
or other business before the Office by showing that he
or she has:
(i) Exhibited comprehensive knowledge of
patent law equivalent to that shown by passing
the registration examination as a result of having
been in a position of responsibility in the Office
in which he or she:
(A) Provided substantial guidance on
patent examination policy, including the
development of rule or procedure changes,
patent examination guidelines, changes to
the Manual of Patent Examining
Procedure, development of training or
testing materials for the patent examining
corps, or development of materials for the
registration examination or continuing
legal education; or
(B) Represented the Office in patent
cases before Federal courts; and
(ii) Was rated at least fully successful in each
quality performance element of his or her
performance plan for said position for the last two
complete rating periods in the Office, and was not
under an oral or written warning regarding such
performance elements at the time of separation
from the Office.(4) To be eligible for consideration for waiver, an
individual formerly employed by the Office within the
scope of one of paragraphs (d)(1), (d)(2) or (d)(3) of
this section must file a complete application for
registration and pay the fee required by § 1.21(a)(1)(i)
of this subchapter within two years of the individual’s
date of separation from the Office. All other individuals
formerly employed by the Office, including former
examiners, filing an application for registration or fee
more than two years after separation from the Office,
are required to take and pass the registration
examination. The individual or former examiner must
pay the examination fee required by §  1.21 (a)(1)(ii) of
this subchapter within thirty days after notice of
non-waiver.
(e) Examination results . Notification of the
examination results is final. Within sixty days of the
mailing date of a notice of failure, the individual is entitled
to inspect, but not copy, the questions and answers he or
she incorrectly answered. Review will be under
supervision. No notes may be taken during such review.
Substantive review of the answers or questions may not
be pursued by petition for regrade. An individual who
failed the examination has the right to retake the
examination an unlimited number of times upon payment
of the fees required by §  1.21  (a)(1)(i) and (ii) of this
subchapter, and a fee charged by a commercial entity
administering the examination.
(f) Application for reciprocal recognition . An
individual seeking reciprocal recognition under §  11.6
(c), in addition to satisfying the provisions of paragraphs
(a) and (b) of this section, and the provisions of §  11.8 (c),
shall pay the application fee required by § 1.21(a)(1)(i)
of this subchapter upon filing an application for
registration.
(g)  Investigation of good moral character and
reputation. (1) Every individual seeking recognition shall
answer all questions in the application for registration and
request(s) for comments issued by OED; disclose all
relevant facts, dates and information; and provide verified
copies of documents relevant to his or her good moral
character and reputation. An individual who is an attorney
shall submit a certified copy of each of his or her State
bar applications and moral character determinations, if
available.
(2)
(i) If the OED Director receives information
from any source that reflects adversely on the
good moral character or reputation of an individual
seeking registration or recognition, the OED
Director shall conduct an investigation into the
good moral character and reputation of that
individual. The investigation will be conducted
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 after the individual has passed the registration
examination, or after the registration examination
has been waived for the individual, as applicable.
An individual failing to timely answer questions
or respond to an inquiry by OED shall be deemed
to have withdrawn his or her application, and shall
be required to reapply, pass the examination, and
otherwise satisfy all the requirements of this
section. No individual shall be certified for
registration or recognition by the OED Director
until, to the satisfaction of the OED Director, the
individual demonstrates his or her possession of
good moral character and reputation.
(ii) The OED Director, in considering an
application for registration by an attorney, may
accept a State bar’s character determination as
meeting the requirements set forth in paragraph
(g) of this section if, after review, the Office finds
no substantial discrepancy between the
information provided with his or her application
for registration and the State bar application and
moral character determination, provided that
acceptance is not inconsistent with other rules and
the requirements of 35 U .S.C. 2 (b)(2)(D).
(h)  Good moral character and reputation . Evidence
showing lack of good moral character and reputation may
include, but is not limited to, conviction of a felony or a
misdemeanor identified in paragraph (h)(1) of this section,
drug or alcohol abuse; lack of candor; suspension or
disbarment on ethical grounds from a State bar; and
resignation from a State bar while under investigation.
(1) Conviction of felony or misdemeanor . An
individual who has been convicted of a felony or a
misdemeanor involving moral turpitude, breach of trust,
interference with the administration of justice, false
swearing, misrepresentation, fraud, deceit, bribery,
extortion, misappropriation, theft, or conspiracy to
commit any felony or misdemeanor, is presumed not
to be of good moral character and reputation in the
absence of a pardon or a satisfactory showing of reform
and rehabilitation, and shall file with his or her
application for registration the fees required by §
1.21(a)(1)(ii) and (a)(10) of this subchapter. The OED
Director shall determine whether individuals convicted
of said felony or misdemeanor provided satisfactory
proof of reform and rehabilitation.
(i) An individual who has been convicted of
a felony or a misdemeanor identified in paragraph
(h)(1) of this section shall not be eligible to apply
for registration during the time of any sentence
(including confinement or commitment to
imprisonment), deferred adjudication, and period
of probation or parole as a result of the conviction,and for a period of two years after the date of
completion of the sentence, deferred adjudication,
and period of probation or parole, whichever is
later.
(ii) The following presumptions apply to the
determination of good moral character and
reputation of an individual convicted of said
felony or misdemeanor:
(A) The court record or docket entry
of conviction is conclusive evidence of
guilt in the absence of a pardon or a
satisfactory showing of reform or
rehabilitation; and
(B) An individual convicted of a
felony or any misdemeanor identified in
paragraph (h)(1) of this section is
conclusively deemed not to have good
moral character and reputation, and shall
not be eligible to apply for registration for
a period of two years after completion of
the sentence, deferred adjudication, and
period of probation or parole, whichever
is later.
(iii) The individual, upon applying for
registration, shall provide satisfactory evidence
that he or she is of good moral character and
reputation.
(iv) Upon proof that a conviction has been set
aside or reversed, the individual shall be eligible
to file a complete application for registration and
the fee required by § 1.21(a)(1)(ii) of this
subchapter and, upon passing the registration
examination, have the OED Director determine,
in accordance with paragraph (h)(1) of this
section, whether, absent the conviction, the
individual possesses good moral character and
reputation.
(2)  Good moral character and reputation involving
drug or alcohol abuse . An individual’s record is
reviewed as a whole to see if there is a drug or alcohol
abuse issue. An individual appearing to abuse drugs or
alcohol may be asked to undergo an evaluation, at the
individual’s expense, by a qualified professional
approved by the OED Director. In instances where,
before an investigation commences, there is evidence
of a present abuse or an individual has not established
a record of recovery, the OED Director may request
the individual to withdraw his or her application, and
require the individual to satisfactorily demonstrate that
he or she is complying with treatment and undergoing
recovery.
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 (3)  Moral character and reputation involving lack
of candor. An individual’s lack of candor in disclosing
facts bearing on or relevant to issues concerning good
moral character and reputation when completing the
application or any time thereafter may be found to be
cause to deny registration on moral character and
reputation grounds.
(4)  Moral character and reputation involving
suspension, disbarment, or resignation from a
profession .
(i) An individual who has been disbarred or
suspended from practice of law or other
profession, or has resigned in lieu of a disciplinary
proceeding (excluded or disbarred on consent)
shall be ineligible to apply for registration as
follows:
(A) An individual who has been
disbarred from practice of law or other
profession, or has resigned in lieu of a
disciplinary proceeding (excluded or
disbarred on consent) shall be ineligible
to apply for registration for a period of five
years from the date of disbarment or
resignation.
(B) An individual who has been
suspended on ethical grounds from the
practice of law or other profession shall
be ineligible to apply for registration until
expiration of the period of suspension.
(C) An individual who was not only
disbarred, suspended or resigned in lieu
of a disciplinary proceeding, but also
convicted in a court of a felony, or of a
crime involving moral turpitude or breach
of trust, shall be ineligible to apply for
registration until the conditions in
paragraphs (h)(1) and (h)(4) of this section
are fully satisfied.
(ii) An individual who has been disbarred or
suspended, or who resigned in lieu of a
disciplinary proceeding shall file an application
for registration and the fees required by §
1.21(a)(1)(ii) and (a)(10) of this subchapter;
provide a full and complete copy of the
proceedings that led to the disbarment, suspension,
or resignation; and provide satisfactory proof that
he or she possesses good moral character and
reputation. The following presumptions shall
govern the determination of good moral character
and reputation of an individual who has been
licensed to practice law or other profession in any
jurisdiction and has been disbarred, suspended onethical grounds, or allowed to resign in lieu of
discipline, in that jurisdiction.
(A) A copy of the record resulting in
disbarment, suspension or resignation is
 prima facie  evidence of the matters
contained in the record, and the imposition
of disbarment or suspension, or the
acceptance of the resignation of the
individual shall be deemed conclusive that
the individual has committed professional
misconduct.
(B) The individual is ineligible for
registration and is deemed not to have
good moral character and reputation
during the period of the imposed
discipline.
(iii) The only defenses available with regard
to an underlying disciplinary matter resulting in
disbarment, suspension on ethical grounds, or
resignation in lieu of a disciplinary proceeding
are set out below, and must be shown to the
satisfaction of the OED Director:
(A) The procedure in the disciplinary
court was so lacking in notice or
opportunity to be heard as to constitute a
deprivation of due process;
(B) There was such infirmity of proof
establishing the misconduct as to give rise
to the clear conviction that the Office
could not, consistently with its duty,
accept as final the conclusion on that
subject; or
(C) The finding of lack of good moral
character and reputation by the Office
would result in grave injustice.
(i)  Factors that may be taken into consideration
when evaluating rehabilitation of an individual seeking
a moral character and reputation determination . The
factors enumerated below are guidelines to assist the
OED Director in determining whether an individual
has demonstrated rehabilitation from an act of
misconduct or moral turpitude. The factors include:
(1) The nature of the act of misconduct,
including whether it involved moral turpitude,
whether there were aggravating or mitigating
circumstances, and whether the activity was an
isolated event or part of a pattern;
(2) The age and education of the individual at
the time of the misconduct and the age and
education of the individual at the present time;
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 (3) The length of time that has passed between
the misconduct and the present, absent any
involvement in any further acts of moral turpitude,
the amount of time and the extent of rehabilitation
being dependent upon the nature and seriousness
of the act of misconduct under consideration;
(4) Restitution by the individual to any person
who suffered monetary losses through acts or
omissions of the individual;
(5) Expungement of a conviction;
(6) Successful completion or early discharge
from probation or parole;
(7) Abstinence from the use of controlled
substances or alcohol for not less than two years
if the specific misconduct was attributable in part
to the use of a controlled substance or alcohol,
where abstinence may be demonstrated by, but is
not necessarily limited to, enrolling in and
complying with a self-help or professional
treatment program;
(8) If the specific misconduct was attributable
in part to a medically recognized mental disease,
disorder or illness, proof that the individual sought
professional assistance, and complied with the
treatment program prescribed by the professional,
and submitted letters from the treating
psychiatrist/psychologist verifying that the
medically recognized mental disease, disorder or
illness will not impede the individual’s ability to
competently practice before the Office;
(9) Payment of the fine imposed in connection
with any criminal conviction;
(10) Correction of behavior responsible in
some degree for the misconduct;
(11) Significant and conscientious
involvement in programs designed to provide
social benefits or to ameliorate social problems;
and
(12) Change in attitude from that which
existed at the time of the act of misconduct in
question as evidenced by any or all of the
following:
(i) Statements of the individual;
(ii) Statements from persons familiar
with the individual’s previous misconduct
and with subsequent attitudes and
behavioral patterns;
(iii) Statements from probation or
parole officers or law enforcementofficials as to the individual’s social
adjustments; and
(iv) Statements from persons
competent to testify with regard to
neuropsychiatry or emotional disturbances.
(j)  Notice to Show Cause . The OED Director shall
inquire into the good moral character and reputation of
an individual seeking registration, providing the individual
with the opportunity to create a record on which a decision
is made. If, following inquiry and consideration of the
record, the OED Director is of the opinion that the
individual seeking registration has not satisfactorily
established that he or she possesses good moral character
and reputation, the OED Director shall issue to the
individual a notice to show cause why the individual’s
application for registration should not be denied.
(1) The individual shall be given no less than ten
days from the date of the notice to reply. The notice
shall be given by certified mail at the address appearing
on the application if the address is in the United States,
and by any other reasonable means if the address is
outside the United States.
(2) Following receipt of the individual’s response,
or in the absence of a response, the OED Director shall
consider the individual’s response, if any, and the
record, and determine whether, in the OED Director’s
opinion, the individual has sustained his or her burden
of satisfactorily demonstrating that he or she possesses
good moral character and reputation.
(k) Reapplication for registration . An individual who
has been refused registration for lack of good moral
character or reputation may reapply for registration two
years after the date of the decision, unless a shorter period
is otherwise ordered by the USPTO Director. An
individual, who has been notified that he or she is under
investigation for good moral character and reputation may
elect to withdraw his or her application for registration,
and may reapply for registration two years after the date
of withdrawal. Upon reapplication for registration, the
individual shall pay the fees required by §  1.21 (a)(1)(ii)
and (a)(10) of this subchapter, and has the burden of
showing to the satisfaction of the OED Director his or
her possession of good moral character and reputation as
prescribed in paragraph (b) of this section. Upon
reapplication for registration, the individual also shall
complete successfully the examination prescribed in
paragraph (b) of this section, even though the individual
has previously passed a registration examination.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§  11.8 Oath and registration fee.
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 (a) After an individual passes the examination, or the
examination is waived, the OED Director shall promptly
publish a solicitation for information concerning the
individual’s good moral character and reputation. The
solicitation shall include the individual’s name, and
business or communication postal address.
(b) An individual shall not be registered as an attorney
under §  11.6 (a), registered as an agent under §  11.6 (b) or
(c), or granted limited recognition under §  11.9 (b) unless
within two years of the mailing date of a notice of passing
registration examination or of waiver of the examination
the individual files with the OED Director a completed
Data Sheet, an oath or declaration prescribed by the
USPTO Director, and the registration fee set forth in §
1.21(a)(2) of this subchapter. An individual seeking
registration as an attorney under § 11.6(a) must provide
a certificate of good standing of the bar of the highest
court of a State that is no more than six months old.
(c) An individual who does not comply with the
requirements of paragraph (b) of this section within the
two-year period will be required to retake the registration
examination.
(d) Annual practitioner maintenance fee . A registered
patent attorney or agent shall annually pay to the USPTO
Director a practitioner maintenance fee in the amount set
forth in § 1.21(a)(7) of this subchapter. Individuals granted
limited recognition under paragraph (b) of § 11.9 shall
annually pay to the USPTO Director a practitioner
maintenance fee in the amount set forth in § 1.21(a)(8)
of this subchapter. Adequate notice shall be published
and sent to practitioners in advance of the due date for
payment of the annual practitioner maintenance fee.
Payment shall be for the fiscal year in which the annual
practitioner maintenance fee is assessed. Payment shall
be due by the last day of the payment period. Persons
newly registered or granted limited recognition shall not
be liable for the annual practitioner maintenance fee
during the fiscal year in which they are first registered or
granted limited recognition. Failure to comply with the
provisions of this paragraph (d) shall require the OED
Director to subject a practitioner to a delinquency fee
penalty set forth in § 11.11 (b)(1), and further financial
penalties and administrative suspension as set forth in §
11.11 (b)(2) and (b)(3).
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
para. (d) added, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008]
§  11.9 Limited recognition in patent matters.
(a) Any individual not registered under §  11.6  may,
upon a showing of circumstances which render it
necessary or justifiable, and that the individual is of good
moral character and reputation, be given limited
recognition by the OED Director to prosecute as attorney
or agent a specified patent application or specified patentapplications. Limited recognition under this paragraph
shall not extend further than the application or applications
specified. Limited recognition shall not be granted while
individuals who have passed the examination or for whom
the examination has been waived are awaiting registration
to practice before the Office in patent matters.
(b) A nonimmigrant alien residing in the United States
and fulfilling the provisions of §  11.7 (a) and (b) may be
granted limited recognition if the nonimmigrant alien is
authorized by the Bureau of Citizenship and Immigration
Services to be employed or trained in the United States
in the capacity of representing a patent applicant by
presenting or prosecuting a patent application. Limited
recognition shall be granted for a period consistent with
the terms of authorized employment or training. Limited
recognition shall not be granted or extended to a
non-United States citizen residing abroad. If granted,
limited recognition shall automatically expire upon the
nonimmigrant alien’s departure from the United States.
(c) An individual not registered under §  11.6  may, if
appointed by an applicant, prosecute an international
patent application only before the United States
International Searching Authority and the United States
International Preliminary Examining Authority, provided
that the individual has the right to practice before the
national office with which the international application
is filed as provided in PCT Art. 49, Rule 90 and § 1.455
of this subchapter, or before the International Bureau
when the USPTO is acting as Receiving Office pursuant
to PCT Rules  83.1 bis and 90.1.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 
11.10Restrictions on practice in patent matters.
(a) Only practitioners who are registered under §  11.6
or individuals given limited recognition under §  11.9 (a)
or (b) are permitted to prosecute patent applications of
others before the Office; or represent others in any
proceedings before the Office.
(b)  Post employment agreement of former Office
employee . No individual who has served in the patent
examining corps or elsewhere in the Office may practice
before the Office after termination of his or her service,
unless he or she signs a written undertaking agreeing:
(1) To not knowingly act as agent or attorney for,
or otherwise represent, or assist in any manner the
representation of, any other person:
(i) Before the Office,
(ii) In connection with any particular patent
or patent application,
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 (iii) In which said employee participated
personally and substantially as an employee of
the Office; and
(2) To not knowingly act within two years after
terminating employment by the Office as agent or
attorney for, or otherwise represent, or assist in any
manner the representation of any other person:
(i) Before the Office,
(ii) In connection with any particular patent
or patent application,
(iii) If such patent or patent application was
pending under the employee’s official
responsibility as an officer or employee within a
period of one year prior to the termination of such
responsibility.
(3) The words and phrases in paragraphs (b)(1) and
(b)(2) of this section are construed as follows:
(i)  Represent and  representation mean acting
as patent attorney or patent agent or other
representative in any appearance before the Office,
or communicating with an employee of the Office
with intent to influence.
(ii)  Assist in any manner  means aid or help
another person on a particular patent or patent
application involving representation.
(iii)  Particular patent or patent application
means any patent or patent application, including,
but not limited to, a provisional, substitute,
international, continuation, divisional,
continuation-in-part, or reissue patent application,
as well as any protest, reexamination, petition,
appeal, or interference based on the patent or
patent application.
(iv) Participate personally and substantially .
(A) Basic requirements. The restrictions of §
11.10 (a)(1) apply only to those patents and patent
applications in which a former Office employee
had “personal and substantial participation,”
exercised “through decision, approval,
disapproval, recommendation, the rendering of
advice, investigation or otherwise.” To  participate
personally  means directly, and includes the
participation of a subordinate when actually
directed by the former Office employee in the
patent or patent application.  Substantially  means
that the employee’s involvement must be of
significance to the matter, or form a basis for a
reasonable appearance of such significance. It
requires more than official responsibility,
knowledge, perfunctory involvement, or
involvement on an administrative or peripheralissue. A finding of substantiality should be based
not only on the effort devoted to a patent or patent
application, but also on the importance of the
effort. While a series of peripheral involvements
may be insubstantial, the single act of approving
or participation in a critical step may be
substantial. It is essential that the participation be
related to a “particular patent or patent
application.” ( See paragraph (b)(3)(iii) of this
section.)
(B) Participation on ancillary matters.
An Office employee’s participation on
subjects not directly involving the
substantive merits of a patent or patent
application may not be “substantial,” even
if it is time-consuming. An employee
whose official responsibility is the review
of a patent or patent application solely for
compliance with administrative control or
budgetary considerations and who reviews
a particular patent or patent application
for such a purpose should not be regarded
as having participated substantially in the
patent or patent application, except when
such considerations also are the subject of
the employee’s proposed representation.
(C) Role of official responsibility in
determining substantial participation.
 Official responsibility  is defined in
paragraph (b)(3)(v) of this section.
“Personal and substantial participation” is
different from “official responsibility.”
One’s responsibility may, however, play
a role in determining the “substantiality”
of an Office employee’s participation.
(v)  Official responsibility  means the direct
administrative or operating authority, whether
intermediate or final, and either exercisable alone
or with others, and either personally or through
subordinates, to approve, disapprove, or otherwise
direct Government actions.
(A) Determining official
responsibility. Ordinarily, those areas
assigned by statute, regulation, Executive
Order, job description, or delegation of
authority determine the scope of an
employee’s “official responsibility”. All
particular matters under consideration in
the Office are under the “official
responsibility” of the Director of the
Office, and each is under that of any
intermediate supervisor having
responsibility for an employee who
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 actually participates in the patent or patent
application within the scope of his or her
duties. A patent examiner would have
“official responsibility” for the patent
applications assigned to him or her.
(B) Ancillary matters and official
responsibility.  Administrative  authority
as used in paragraph (v) of this section
means authority for planning, organizing
and controlling a patent or patent
application rather than authority to review
or make decisions on ancillary aspects of
a patent or patent application such as the
regularity of budgeting procedures, public
or community relations aspects, or equal
employment opportunity considerations.
Responsibility for such an ancillary
consideration does not constitute official
responsibility for the particular patent or
patent application, except when such a
consideration is also the subject of the
employee’s proposed representation.
(C) Duty to inquire. In order for a
former employee,  e.g., former patent
examiner, to be barred from representing
or assisting in representing another as to
a particular patent or patent application,
he or she need not have known, while
employed by the Office, that the patent or
patent application was pending under his
or her official responsibility. The former
employee has a reasonable duty of inquiry
to learn whether the patent or patent
application had been under his or her
official responsibility. Ordinarily, a former
employee who is asked to represent
another on a patent or patent application
will become aware of facts sufficient to
suggest the relationship of the prior matter
to his or her former office,  e.g.,
technology center, group or art unit. If so,
he or she is under a duty to make further
inquiry. It would be prudent for an
employee to maintain a record of only
patent application numbers of the
applications actually acted upon by
decision or recommendation, as well as
those applications under the employee’s
official responsibility which he or she has
not acted upon.
(D) Self-disqualification. A former
employee,  e.g., former patent examiner,
cannot avoid the restrictions of this sectionthrough self-disqualification with respect
to a patent or patent application for which
he or she otherwise had official
responsibility. However, an employee who
through self-disqualification does not
participate personally and substantially in
a particular patent or patent application is
not subject to the lifetime restriction of
paragraph (b)(1) of this section.
(vi)  Pending means that the matter was in fact
referred to or under consideration by persons
within the employee’s area of official
responsibility.
(4) Measurement of the two-year restriction period.
The two-year period under paragraph (b)(2) of this
section is measured from the date when the employee’s
official responsibility in a particular area ends, not from
the termination of service in the Office, unless the two
occur simultaneously. The prohibition applies to all
particular patents or patent applications subject to such
official responsibility in the one-year period before
termination of such responsibility.
(c)  Former employees of the Office . This section
imposes restrictions generally parallel to those imposed
in 18 U.S.C. 207(a) and (b)(1). This section, however,
does not interpret these statutory provisions or any other
post-employment restrictions that may apply to former
Office employees, and such former employees should not
assume that conduct not prohibited by this section is
otherwise permissible. Former employees of the Office,
whether or not they are practitioners, are encouraged to
contact the Department of Commerce for information
concerning applicable post-employment restrictions.
(d) An employee of the Office may not prosecute or
aid in any manner in the prosecution of any patent
application before the Office.
(e) Practice before the Office by Government
employees is subject to any applicable conflict of interest
laws, regulations or codes of professional responsibility.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 
11.11Administrative suspension, inactivation,
resignation, and readmission.
(a) A registered attorney or agent must notify the OED
Director of his or her postal address for his or her office,
up to three e-mail addresses where he or she receives
e-mail, and business telephone number, as well as every
change to any of said addresses or telephone numbers
within thirty days of the date of the change. A registered
attorney or agent shall, in addition to any notice of change
of address and telephone number filed in individual patent
applications, separately file written notice of the change
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 of address or telephone number to the OED Director. A
registered practitioner who is an attorney in good standing
with the bar of the highest court of one or more States
shall provide the OED Director with the State bar
identification number associated with each membership.
The OED Director shall publish from the roster a list
containing the name, postal business addresses, business
telephone number, registration number, and registration
status as an attorney or agent of each registered
practitioner recognized to practice before the Office in
patent cases.
(b) Administrative suspension.  (1) Whenever it
appears that a registered patent attorney, a registered
patent agent or a person granted limited recognition under
§ 11.9(b) has failed to comply with § 11.8(d), the OED
Director shall publish and send a notice to the attorney,
agent or person granted limited recognition advising of
the noncompliance, the consequence of being
administratively suspended under paragraph (b)(5) of this
section if noncompliance is not timely remedied, and the
requirements for reinstatement under paragraph (f) of this
section. The notice shall be published and sent to the
attorney, agent or person granted limited recognition by
mail to the last postal address furnished under paragraph
(a) of this section or by e-mail addressed to the last e-mail
addresses furnished under paragraph (a) of this section.
The notice shall demand compliance and payment of a
delinquency fee set forth in § 1.21(a)(9)(i) of this
subchapter within sixty days after the date of such notice.
(2) In the event a registered patent attorney,
registered patent agent or person granted limited
recognition fails to comply with the notice of paragraph
(b)(1) of this section within the time allowed, the OED
Director shall publish and send in the manner provided
for in paragraph (b)(1) of this section to the attorney,
agent, or person granted limited recognition a Rule to
Show Cause why his or her registration or recognition
should not be administratively suspended, and he or
she no longer be permitted to practice before the Office
in patent matters or in any way hold himself or herself
out as being registered or authorized to practice before
the Office in patent matters. The OED Director shall
file a copy of the Rule to Show Cause with the USPTO
Director.
(3) Within 30 days of the OED Director’s sending
the Rule to Show Cause identified in § 11.11 (b)(2), the
registered patent attorney, registered patent agent or
person granted limited recognition may file a response
to the Rule to Show Cause with the USPTO Director.
The response must set forth the factual and legal bases
why the person should not be administratively
suspended. The registered patent attorney, registered
patent agent or person granted limited recognition shall
serve the OED Director with a copy of the response atthe time it is filed with the USPTO Director. Within
ten days of receiving a copy of the response, the OED
Director may file a reply with the USPTO Director that
includes documents demonstrating that the notice
identified in § 11.11 (b)(1) was published and sent to
the practitioner in accordance with § 11.11 (b)(1). A
copy of the reply by the OED Director shall be served
on the registered patent attorney, registered patent agent
or person granted limited recognition. When acting on
the Rule to Show Cause, if the USPTO Director
determines that there are no genuine issues of material
fact regarding the Office’s compliance with the notice
requirements under this section or the failure of the
person to pay the requisite fees, the USPTO Director
shall enter an order administratively suspending the
registered patent attorney, registered patent agent or
person granted limited recognition. Otherwise, the
USPTO Director shall enter an appropriate order
dismissing the Rule to Show Cause. Nothing herein
shall permit an administratively suspended registered
patent attorney, registered patent agent or person
granted limited recognition to seek a stay of the
administrative suspension during the pendency of any
review of the USPTO Director’s final decision.
(4) An administratively suspended attorney, agent
or person granted limited recognition remains
responsible for paying his or her annual practitioner
maintenance fee required by § 11.8(d).
(5) An administratively suspended attorney, agent
or person granted limited recognition is subject to
investigation and discipline for his or her conduct prior
to, during, or after the period he or she was
administratively suspended.
(6) An administratively suspended attorney, agent
or person granted limited recognition is prohibited from
practicing before the Office in patent cases while
administratively suspended. An attorney, agent or
person granted limited recognition who knows he or
she has been administratively suspended under this
section will be subject to discipline for failing to
comply with the provisions of this paragraph.
(c) Administrative Inactivation.  (1) Any registered
practitioner who shall become employed by the Office
shall comply with § 10.40  of this subchapter for
withdrawal from the applications, patents, and trademark
matters wherein he or she represents an applicant or other
person, and notify the OED Director in writing of said
employment on the first day of said employment. The
name of any registered practitioner employed by the
Office shall be endorsed on the roster as administratively
inactive. The practitioner shall not be responsible for
payments of the annual practitioner maintenance fee each
complete fiscal year while the practitioner is in
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 administratively inactive status. Upon separation from
the Office, the practitioner may request reactivation by
completing and filing an application, Data Sheet, signing
a written undertaking required by § 11.10 , and paying the
fee set forth in § 1.21(a)(1)(i) of this subchapter. Upon
restoration to active status, the practitioner shall be
responsible for paying the annual practitioner maintenance
fee for the fiscal year in which the practitioner is restored
to active status. An administratively inactive practitioner
remains subject to the provisions of the Mandatory
Disciplinary Rules identified in § 10.20 (b) of this
subchapter, and to proceedings and sanctions under §§
11.19  through 11.58  for conduct that violates a provision
of the Mandatory Disciplinary Rules identified in §
10.20 (b) of this subchapter prior to or during employment
at the Office. If, within 30 days after separation from the
Office, the practitioner does not request active status or
another status, the practitioner will be endorsed on the
roster as voluntarily inactive and be subject to the
provisions of paragraph (d) of this section.
(2) Any registered practitioner who is a judge of a
court of record, full-time court commissioner, U.S.
bankruptcy judge, U.S. magistrate judge, or a retired
judge who is eligible for temporary judicial assignment
and is not engaged in the practice of law may request,
in writing, that his or her name be endorsed on the
roster as administratively inactive. Upon acceptance
of the request, the OED Director shall endorse the name
of the practitioner as administratively inactive. The
practitioner shall not be responsible for payment of the
annual practitioner maintenance fee for each complete
fiscal year the practitioner is in administratively
inactive status. Following separation from the bench,
the practitioner may request restoration to active status
by completing and filing an application, Data Sheet,
signing a written undertaking required by § 11.10 , and
paying the fee set forth in § 1.21(a)(1)(i) of this
subchapter. Upon restoration to active status, the
practitioner shall be responsible for paying the annual
practitioner maintenance fee for the fiscal year in which
the practitioner is restored to active status.
(d)   Voluntary Inactivation . (1) Except as provided
in paragraph (d)(4) of this section, any registered
practitioner may voluntarily enter inactive status by filing
a request, in writing, that his or her name be endorsed on
the roster as voluntarily inactive. Upon acceptance of the
request, the OED Director shall endorse the name as
voluntarily inactive.
(2) A registered practitioner in voluntary inactive
status shall be responsible for payment of the annual
practitioner maintenance fee for voluntary inactive
status set forth in § 1.21(a)(7)(ii) of this subchapter for
each complete fiscal year the practitioner continues to
be in voluntary inactive status.(3) A registered practitioner who seeks or enters
into voluntary inactive status is subject to investigation
and discipline for his or her conduct prior to, during,
or after the period of his or her inactivation.
(4) A registered practitioner who is in arrears in
paying annual practitioner maintenance fees or under
administrative suspension for annual practitioner
maintenance fee delinquency is ineligible to seek or
enter into voluntary inactive status.
(5) A registered practitioner in voluntary inactive
status is prohibited from practicing before the Office
in patent cases while in voluntary inactive status. A
practitioner in voluntary inactive status will be subject
to discipline for failing to comply with the provisions
of this paragraph. Upon acceptance of the request for
voluntary inactive status, the practitioner must comply
with the provisions of § 10.40  of this subchapter.
(6) Any registered practitioner whose name has
been endorsed as voluntarily inactive pursuant to
paragraph (d)(1) of this section and is not under
investigation, not subject to a disciplinary proceeding,
and not in arrears for the annual practitioner
maintenance fee for voluntary inactive status may be
restored to active status on the register as may be
appropriate provided that the practitioner files a written
request for restoration, a completed application for
registration on a form supplied by the OED Director
furnishing all requested information and material,
including information and material pertaining to the
practitioner’s moral character and reputation under §
11.7(a)(2)(i) during the period of inactivation, a
declaration or affidavit attesting to the fact that the
practitioner has read the most recent revisions of the
patent laws and the rules of practice before the Office,
and pays the fees set forth in §§ 1.21(a)(7)(iii) and (iv)
of this subchapter.
(e)  Resignation .  A registered practitioner or a
practitioner recognized under § 11.14 (c), who is neither
under investigation under § 11.22  for a possible violation
of the Mandatory Disciplinary Rules identified in §
10.20 (b) of Part 10 of this subchapter, subject to discipline
under §§ 11.24  or 11.25 , nor a practitioner against whom
no probable cause has been found by a panel of the
Committee on Discipline under § 11.23 (b), may resign
by notifying the OED Director in writing that he or she
desires to resign. Upon acceptance in writing by the OED
Director of such notice, that registered practitioner or
practitioner under § 11.14  shall no longer be eligible to
practice before the Office but shall continue to file a
change of address for five years thereafter in order that
he or she may be located in the event information
regarding the practitioner’s conduct comes to the attention
of the OED Director or any grievance is made about his
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 or her conduct while he or she engaged in practice before
the Office. The name of any registered practitioner whose
resignation is accepted shall be removed from the register,
endorsed as resigned, and notice thereof published in the
Official Gazette. Upon acceptance of the resignation by
the OED Director, the practitioner must comply with the
provisions of § 10.40  of this subchapter.
(f) Administrative reinstatement.  (1) Any registered
practitioner who has been administratively suspended
pursuant to paragraph (b) of this section, or who has
resigned pursuant to paragraph (e) of this section, may
be reinstated on the register provided the practitioner has
applied for reinstatement on an application form supplied
by the OED Director, demonstrated compliance with the
provisions of §§ 11.7(a)(2)(i) and (iii), and paid the fees
set forth in §§ 1.21(a)(7)(i), (a)(9)(i) and (a)(9)(ii) of this
subchapter. Any person granted limited recognition who
has been administratively suspended pursuant to paragraph
(b) of this section may have their recognition reactivated
provided the practitioner has applied for reinstatement on
an application form supplied by the OED Director,
demonstrated compliance with the provisions of §§
11.7(a)(2)(i) and (iii), and paid the fees set forth in §§
1.21(a)(8)(i), (a)(9)(i) and (a)(9)(ii) of this subchapter. A
practitioner who has resigned or was administratively
suspended for two or more years before the date the Office
receives a completed application from the person who
resigned or was administratively suspended must also
pass the registration examination under § 11.7(b)(1)(ii).
Any reinstated practitioner is subject to investigation and
discipline for his or her conduct that occurred prior to,
during, or after the period of his or her administrative
suspension or resignation.
(2) Any registered practitioner whose registration
has been administratively inactivated pursuant to
paragraph (c) of this section may be reinstated to the
register as may be appropriate provided within two
years after his or her employment with the Office
ceases or within two years after his or her employment
in a judicial capacity ceases the following is filed with
the OED Director: a request for reinstatement, a
completed application for registration on a form
supplied by the OED Director furnishing all requested
information and material, and the fee set forth in §
1.21(a)(9)(ii) of this subchapter. Any registered
practitioner inactivated or reinstated is subject to
investigation and discipline for his or her conduct
before, during, or after the period of his or her
inactivation.
[Added, 69 FR 35427, June 24, 2004, effective July 26, 2004;
revised, 73 FR 67750, Nov. 17, 2008, effective Dec. 17, 2008]
§ 
11.12 -
11.13[Reserved]§ 
11.14Individuals who may practice before the Office
in trademarks and other non-patent matters.
(a) Attorneys . Any individual who is an attorney as
defined in § 11.1  may represent others before the Office
in trademark and other non-patent matters. An attorney
is not required to apply for registration or recognition to
practice before the Office in trademark and other
non-patent matters. Registration as a patent practitioner
does not itself entitle an individual to practice before the
Office in trademark matters.
(b)  Non-lawyers . Individuals who are not attorneys
are not recognized to practice before the Office in
trademark and other non-patent matters, except that
individuals not attorneys who were recognized to practice
before the Office in trademark matters under this chapter
prior to January 1, 1957, will be recognized as agents to
continue practice before the Office in trademark matters.
Except as provided in the preceding sentence, registration
as a patent agent does not itself entitle an individual to
practice before the Office in trademark matters.
(c)  Foreigners . Any foreign attorney or agent not a
resident of the United States who shall file a written
application for reciprocal recognition under paragraph (f)
of this section and prove to the satisfaction of the OED
Director that he or she is registered or in good standing
before the patent or trademark office of the country in
which he or she resides and practices and is possessed of
good moral character and reputation, may be recognized
for the limited purpose of representing parties located in
such country before the Office in the presentation and
prosecution of trademark matters, provided: the patent or
trademark office of such country allows substantially
reciprocal privileges to those permitted to practice in
trademark matters before the Office. Recognition under
this paragraph shall continue only during the period that
the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section
shall not be construed as sanctioning or authorizing the
performance of any act regarded in the jurisdiction where
performed as the unauthorized practice of law.
(e) No individual other than those specified in
paragraphs (a), (b), and (c) of this section will be
permitted to practice before the Office in trademark
matters on behalf of a client. Any individual may appear
in a trademark or other non-patent matter in his or her
own behalf. Any individual may appear in a trademark
matter for:
(1) A firm of which he or she is a member,
(2) A partnership of which he or she is a partner,
or
(3) A corporation or association of which he or she
is an officer and which he or she is authorized to
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 represent, if such firm, partnership, corporation, or
association is a party to a trademark proceeding pending
before the Office.
(f) Application for reciprocal recognition . An
individual seeking reciprocal recognition under paragraph
(c) of this section, in addition to providing evidence
satisfying the provisions of paragraph (c) of this section,
shall apply in writing to the OED Director for reciprocal
recognition, and shall pay the application fee required by
§ 1.21(a)(1)(i) of this subchapter.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.15Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office
may be suspended, excluded, or reprimanded in
accordance with the provisions of this Part. Any
practitioner who is suspended or excluded under this Part
shall not be entitled to practice before the Office in patent,
trademark, or other non-patent matters while suspended
or excluded.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.16 -
11.17[Reserved]
§ 
11.18Signature and certificate for correspondence
filed in the Office.
(a) For all documents filed in the Office in patent,
trademark, and other non-patent matters, and all
documents filed with a hearing officer in a disciplinary
proceeding, except for correspondence that is required to
be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must
bear a signature, personally signed by such practitioner,
in compliance with § 1.4 (d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in
a disciplinary proceeding (whether by signing, filing,
submitting, or later advocating) any paper, the party
presenting such paper, whether a practitioner or
non-practitioner, is certifying that—
(1) All statements made therein of the party’s own
knowledge are true, all statements made therein on
information and belief are believed to be true, and all
statements made therein are made with the knowledge
that whoever, in any matter within the jurisdiction of
the Office, knowingly and willfully falsifies, conceals,
or covers up by any trick, scheme, or device a material
fact, or knowingly and willfully makes any false,
fictitious, or fraudulent statements or representations,
or knowingly and willfully makes or uses any false
writing or document knowing the same to contain anyfalse, fictitious, or fraudulent statement or entry, shall
be subject to the penalties set forth under 18 U .S.C.
1001  and any other applicable criminal statute, and
violations of the provisions of this section may
jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge,
information and belief, formed after an inquiry
reasonable under the circumstances,
(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 any proceeding before the Office;
(ii) The 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.
(c) Violations of any of paragraphs (b)(2)(i) through
(iv) of this section are, after notice and reasonable
opportunity to respond, subject to such sanctions or
actions as deemed appropriate by the USPTO Director,
which may include, but are not limited to, any
combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the
Director of Enrollment and Discipline for appropriate
action;
(3) Precluding a party or practitioner from
submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending
paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this
section may also be subject to disciplinary action.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
Subpart C  — Investigations and Disciplinary
Proceedings; Jurisdiction, Sanctions, Investigations,
and Proceedings
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 § 
11.19Disciplinary jurisdiction; Jurisdiction to
transfer to disability inactive status.
(a) All practitioners engaged in practice before the
Office; all practitioners administratively suspended; all
practitioners registered to practice before the Office in
patent cases; all practitioners inactivated; all practitioners
authorized under § 11.6(d) to take testimony; and all
practitioners transferred to disability inactive status,
reprimanded, suspended, or excluded from the practice
of law by a duly constituted authority, including by the
USPTO Director, are subject to the disciplinary
jurisdiction of the Office. Practitioners who have resigned
shall also be subject to such jurisdiction with respect to
conduct undertaken prior to the resignation and conduct
in regard to any practice before the Office following the
resignation.
(b)  Grounds for discipline; Grounds for transfer to
disability inactive status . The following, whether done
individually by a practitioner or in concert with any other
person or persons and whether or not done in the course
of providing legal services to a client, or in a matter
pending before the Office, constitute grounds for
discipline or grounds for transfer to disability inactive
status.
(1) Grounds for discipline include:
(i) Conviction of a serious crime;
(ii) Discipline on ethical grounds imposed in
another jurisdiction or disciplinary disqualification
from participating in or appearing before any
Federal program or agency;
(iii) Failure to comply with any order of a
Court disciplining a practitioner, or any final
decision of the USPTO Director in a disciplinary
matter;
(iv) Violation of a Mandatory Disciplinary
Rule identified in § 10.20 (b) of Part 10 of this
Subchapter; or
(v) Violation of the oath or declaration taken
by the practitioner. See § 11.8.
(2) Grounds for transfer to disability inactive status
include:
(i) Being transferred to disability inactive
status in another jurisdiction;
(ii) Being judicially declared incompetent,
being judicially ordered to be involuntarily
committed after a hearing on the grounds of
insanity, incompetency or disability, or being
placed by court order under guardianship or
conservatorship; or
(iii) Filing a motion requesting a disciplinary
proceeding be held in abeyance because thepractitioner is suffering from a disability or
addiction that makes it impossible for the
practitioner to adequately defend the charges in
the disciplinary proceeding.
(c) Petitions to disqualify a practitioner in ex parte or
inter partes matters in the Office are not governed by §§
11.19  through 11.60  and will be handled on a case-by-case
basis under such conditions as the USPTO Director deems
appropriate.
(d) The OED Director may refer the existence of
circumstances suggesting unauthorized practice of law to
the authorities in the appropriate jurisdiction(s).
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.20Disciplinary sanctions; Transfer to disability
inactive status.
(a)  Types of discipline . The USPTO Director, after
notice and opportunity for a hearing, and where grounds
for discipline exist, may impose on a practitioner the
following types of discipline:
(1) Exclusion from practice before the Office;
(2) Suspension from practice before the Office for
an appropriate period of time;
(3) Reprimand or censure; or
(4)  Probation . Probation may be imposed  in lieu
of or in addition to any other disciplinary sanction. Any
conditions of probation shall be stated in writing in the
order imposing probation. The order shall also state
whether, and to what extent, the practitioner shall be
required to notify clients of the probation. The order
shall establish procedures for the supervision of
probation. Violation of any condition of probation shall
be cause for the probation to be revoked, and the
disciplinary sanction to be imposed for the remainder
of the probation period. Revocation of probation shall
occur only after an order to show cause why probation
should not be revoked is resolved adversely to the
practitioner.
(b)  Conditions imposed with discipline . When the
USPTO Director imposes discipline, the practitioner may
be required to make restitution either to persons
financially injured by the practitioner’s conduct or to an
appropriate client’s security trust fund, or both, as a
condition of probation or of reinstatement. Such restitution
shall be limited to the return of unearned practitioner fees
or misappropriated client funds. Any other reasonable
condition may also be imposed, including a requirement
that the practitioner take and pass a professional
responsibility examination.
(c)  Transfer to disability inactive status. The USPTO
Director, after notice and opportunity for a hearing may,
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 and where grounds exist to believe a practitioner has been
transferred to disability inactive status in another
jurisdiction, or has been judicially declared incompetent;
judicially ordered to be involuntarily committed after a
hearing on the grounds of incompetency or disability, or
placed by court order under guardianship or
conservatorship, transfer the practitioner to disability
inactive status.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.21Warnings.
A warning is neither public nor a disciplinary sanction.
The OED Director may conclude an investigation with
the issuance of a warning. The warning shall contain a
brief statement of facts and Mandatory Disciplinary Rules
identified in § 10.20 (b) of Part 10 of this Subchapter
relevant to the facts.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.22Investigations.
(a) The OED Director is authorized to investigate
possible grounds for discipline. An investigation may be
initiated when the OED Director receives a grievance,
information or evidence from any source suggesting
possible grounds for discipline. Neither unwillingness
nor neglect by a grievant to prosecute a charge, nor
settlement, compromise, or restitution with the grievant,
shall in itself justify abatement of an investigation.
(b) Any person possessing information or evidence
concerning possible grounds for discipline of a
practitioner may report the information or evidence to the
OED Director. The OED Director may request that the
report be presented in the form of an affidavit or
declaration.
(c) [Reserved]
(d)  Preliminary screening of information or evidence.
The OED Director shall examine all information or
evidence concerning possible grounds for discipline of a
practitioner.
(e)  Notification of investigation . The OED Director
shall notify the practitioner in writing of the initiation of
an investigation into whether a practitioner has engaged
in conduct constituting possible grounds for discipline.
(f)  Request for information and evidence by OED
Director .
(1) In the course of the investigation, the OED
Director may request information and evidence
regarding possible grounds for discipline of a
practitioner from:(i) The grievant,
(ii) The practitioner, or
(iii) Any person who may reasonably be
expected to provide information and evidence
needed in connection with the grievance or
investigation.
(2) The OED Director may request information and
evidence regarding possible grounds for discipline of
a practitioner from a non-grieving client either after
obtaining the consent of the practitioner or upon a
finding by a Contact Member of the Committee on
Discipline, appointed in accordance with § 11.23 (d),
that good cause exists to believe that the possible
ground for discipline alleged has occurred with respect
to non-grieving clients. Neither a request for, nor
disclosure of, such information shall constitute a
violation of any of the Mandatory Disciplinary Rules
identified in § 10.20(b) of this subchapter.
(g) Where the OED Director makes a request under
paragraph (f)(2) of this section to a Contact Member of
the Committee on Discipline, such Contact Member shall
not, with respect to the practitioner connected to the OED
Director’s request, participate in the Committee on
Discipline panel that renders a probable cause
determination under paragraph (b)(1) of this section
concerning such practitioner, and that forwards the
probable cause finding and recommendation to the OED
Director under paragraph (b)(2) of this section.
(h)  Disposition of investigation . Upon the conclusion
of an investigation, the OED Director may:
(1) Close the investigation without issuing a
warning, or taking disciplinary action;
(2) Issue a warning to the practitioner;
(3) Institute formal charges upon the approval of
the Committee on Discipline; or
(4) Enter into a settlement agreement with the
practitioner and submit the same for approval of the
USPTO Director.
(i)  Closing investigation without issuing a warning
or taking disciplinary action . The OED Director shall
terminate an investigation and decline to refer a matter
to the Committee on Discipline if the OED Director
determines that:
(1) The information or evidence is unfounded;
(2) The information or evidence relates to matters
not within the jurisdiction of the Office;
(3) As a matter of law, the conduct about which
information or evidence has been obtained does not
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 constitute grounds for discipline, even if the conduct
may involve a legal dispute; or
(4) The available evidence is insufficient to
conclude that there is probable cause to believe that
grounds exist for discipline.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008;
para. (c) removed and reserved, 77 FR 45247, July 31, 2012, effective
August 30, 2012]
§ 
11.23Committee on Discipline.
(a) The USPTO Director shall appoint a Committee
on Discipline. The Committee on Discipline shall consist
of at least three employees of the Office. None of the
Committee members shall report directly or indirectly to
the OED Director or any employee designated by the
USPTO Director to decide disciplinary matters. Each
Committee member shall be a member in good standing
of the bar of the highest court of a State. The Committee
members shall select a Chairperson from among
themselves. Three Committee members will constitute a
panel of the Committee.
(b)  Powers and duties of the Committee on Discipline.
The Committee shall have the power and duty to:
(1) Meet in panels at the request of the OED
Director and, after reviewing evidence presented by
the OED Director, by majority vote of the panel,
determine whether there is probable cause to bring
charges under § 11.32  against a practitioner; and
(2) Prepare and forward its own probable cause
findings and recommendations to the OED Director.
(c) No discovery shall be authorized of, and no
member of the Committee on Discipline shall be required
to testify about deliberations of, the Committee on
Discipline or of any panel.
(d) The Chairperson shall appoint the members of the
panels and a Contact Member of the Committee on
Discipline.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.24Reciprocal discipline.
(a) Notification of OED Director . Within thirty days
of being publicly censured, publicly reprimanded,
subjected to probation, disbarred or suspended by another
jurisdiction, or being disciplinarily disqualified from
participating in or appearing before any Federal program
or agency, a practitioner subject to the disciplinary
jurisdiction of the Office shall notify the OED Director
in writing of the same. A practitioner is deemed to be
disbarred if he or she is disbarred, excluded on consent,
or has resigned in lieu of a disciplinary proceeding. Upon
receiving notification from any source or otherwiselearning that a practitioner subject to the disciplinary
jurisdiction of the Office has been so publicly censured,
publicly reprimanded, subjected to probation, disbarred,
suspended or disciplinarily disqualified, the OED Director
shall obtain a certified copy of the record or order
regarding the public censure, public reprimand, probation,
disbarment, suspension or disciplinary disqualification
and file the same with the USPTO Director. The OED
Director shall, in addition, without Committee on
Discipline authorization, file with the USPTO Director a
complaint complying with § 11.34  against the practitioner
predicated upon the public censure, public reprimand,
probation, disbarment, suspension or disciplinary
disqualification. The OED Director shall request the
USPTO Director to issue a notice and order as set forth
in paragraph (b) of this section.
(b) Notification served on practitioner . Upon receipt
of a certified copy of the record or order regarding the
practitioner being so publicly censured, publicly
reprimanded, subjected to probation, disbarred, suspended
or disciplinarily disqualified together with the complaint,
the USPTO Director shall issue a notice directed to the
practitioner in accordance with § 11.35  and to the OED
Director containing:
(1) A copy of the record or order regarding the
public censure, public reprimand, probation,
disbarment, suspension or disciplinary disqualification;
(2) A copy of the complaint; and
(3) An order directing the practitioner to file a
response with the USPTO Director and the OED
Director, within forty days of the date of the notice
establishing a genuine issue of material fact predicated
upon the grounds set forth in paragraphs (d)(1)(i)
through (d)(1)(iv) of this section that the imposition of
the identical public censure, public reprimand,
probation, disbarment, suspension or disciplinary
disqualification would be unwarranted and the reasons
for that claim.
(c)  Effect of stay in another jurisdiction. In the event
the public censure, public reprimand, probation,
disbarment, suspension imposed by another jurisdiction
or disciplinary disqualification imposed in the Federal
program or agency has been stayed, any reciprocal
discipline imposed by the USPTO may be deferred until
the stay expires.
(d)  Hearing and discipline to be imposed .
(1) The USPTO Director shall hear the matter on
the documentary record unless the USPTO Director
determines that an oral hearing is necessary. After
expiration of the forty days from the date of the notice
pursuant to provisions of paragraph (b) of this section,
the USPTO Director shall consider any timely filed
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 response and shall impose the identical public censure,
public reprimand, probation, disbarment, suspension
or disciplinary disqualification unless the practitioner
clearly and convincingly demonstrates, and the USPTO
Director finds there is a genuine issue of material fact
that:
(i) The procedure elsewhere was so lacking
in notice or opportunity to be heard as to constitute
a deprivation of due process;
(ii) There was such infirmity of proof
establishing the conduct as to give rise to the clear
conviction that the Office could not, consistently
with its duty, accept as final the conclusion on
that subject;
(iii) The imposition of the same public
censure, public reprimand, probation, disbarment,
suspension or disciplinary disqualification by the
Office would result in grave injustice; or
(iv) Any argument that the practitioner was
not publicly censured, publicly reprimanded,
placed on probation, disbarred, suspended or
disciplinarily disqualified.
(2) If the USPTO Director determines that there is
no genuine issue of material fact, the USPTO Director
shall enter an appropriate final order. If the USPTO
Director is unable to make such determination because
there is a genuine issue of material fact, the USPTO
Director shall enter an appropriate order:
(i) Referring the complaint to a hearing officer
for a formal hearing and entry of an initial decision
in accordance with the other rules in this part, and
(ii) Directing the practitioner to file an answer
to the complaint in accordance with § 11.36 .
(e) Adjudication in another jurisdiction or Federal
agency or program . In all other respects, a final
adjudication in another jurisdiction or Federal agency or
program that a practitioner, whether or not admitted in
that jurisdiction, has been guilty of misconduct shall
establish a prima facie case by clear and convincing
evidence that the practitioner violated 37 CFR 10.23 , as
further identified under 37 CFR 10.23 (c)(5), (or any
successor regulation identifying such public censure,
public reprimand, probation, disbarment, suspension or
disciplinary disqualification as a basis for a disciplinary
proceeding in this Office).
(f) Reciprocal discipline —action where practice has
ceased . Upon request by the practitioner, reciprocal
discipline may be imposed nunc pro tunc  only if the
practitioner promptly notified the OED Director of his or
her censure, public reprimand, probation, disbarment,
suspension or disciplinary disqualification in anotherjurisdiction, and establishes by clear and convincing
evidence that the practitioner voluntarily ceased all
activities related to practice before the Office and
complied with all provisions of § 11.58 . The effective
date of any public censure, public reprimand, probation,
suspension, disbarment or disciplinary disqualification
imposed nunc pro tunc shall be the date the practitioner
voluntarily ceased all activities related to practice before
the Office and complied with all provisions of § 11.58 .
(g) Reinstatement following reciprocal discipline
proceeding . A practitioner may petition for reinstatement
under conditions set forth in § 11.60  no sooner than
completion of the period of reciprocal discipline imposed,
and compliance with all provisions of § 11.58 .
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.25Interim suspension and discipline based upon
conviction of committing a serious crime.
(a) Notification of OED Director . Upon being
convicted of a crime in a court of the United States or any
State, or violating a criminal law of a foreign country, a
practitioner subject to the disciplinary jurisdiction of the
Office shall notify the OED Director in writing of the
same within thirty days from the date of such conviction.
Upon being advised or learning that a practitioner subject
to the disciplinary jurisdiction of the Office has been
convicted of a crime, the OED Director shall make a
preliminary determination whether the crime constitutes
a serious crime warranting interim suspension. If the crime
is a serious crime, the OED Director shall file with the
USPTO Director proof of the conviction and request the
USPTO Director to issue a notice and order set forth in
paragraph (b)(2) of this section. The OED Director shall
in addition, without Committee on Discipline
authorization, file with the USPTO Director a complaint
against the practitioner complying with § 11.34  predicated
upon the conviction of a serious crime. If the crime is not
a serious crime, the OED Director shall process the matter
in the same manner as any other information or evidence
of a possible violation of a Mandatory Disciplinary Rule
identified in § 10.20  (b) of this subchapter coming to the
attention of the OED Director.
(b)  Interim suspension and referral for disciplinary
proceeding . All proceedings under this section shall be
handled as expeditiously as possible.
(1) The USPTO Director has authority to place a
practitioner on interim suspension after hearing the
request for interim suspension on the documentary
record.
(2)  Notification served on practitioner  . Upon
receipt of a certified copy of the court record, docket
entry or judgment demonstrating that the practitioner
has been so convicted together with the complaint, the
USPTO Director shall forthwith issue a notice directed
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 to the practitioner in accordance with §§ 11.35 (a), (b)
or (c), and to the OED Director, containing:
(i) A copy of the court record, docket entry,
or judgment of conviction;
(ii) A copy of the complaint; and
(iii) An order directing the practitioner to file
a response with the USPTO Director and the OED
Director, within forty days of the date of the
notice, establishing that there is a genuine issue
of material fact that the crime did not constitute
a serious crime, the practitioner is not the
individual found guilty of the crime, or that the
conviction was so lacking in notice or opportunity
to be heard as to constitute a deprivation of due
process.
(3) Hearing and final order on request for interim
suspension . The request for interim suspension shall
be heard by the USPTO Director on the documentary
record unless the USPTO Director determines that the
practitioner’s response establishes a genuine issue of
material fact that: The crime did not constitute a serious
crime, the practitioner is not the person who committed
the crime, or that the conviction was so lacking in
notice or opportunity to be heard as to constitute a
deprivation of due process. If the USPTO Director
determines that there is no genuine issue of material
fact regarding the defenses set forth in the preceding
sentence, the USPTO Director shall enter an appropriate
final order regarding the OED Director’s request for
interim suspension regardless of the pendency of any
criminal appeal. If the USPTO Director is unable to
make such determination because there is a genuine
issue of material fact, the USPTO Director shall enter
a final order dismissing the request and enter a further
order referring the complaint to a hearing officer for a
hearing and entry of an initial decision in accordance
with the other rules in this part and directing the
practitioner to file an answer to the complaint in
accordance with § 11.36 .
(4)  Termination . The USPTO Director has
authority to terminate an interim suspension. In the
interest of justice, the USPTO Director may terminate
an interim suspension at any time upon a showing of
extraordinary circumstances, after affording the OED
Director an opportunity to respond to the request to
terminate interim suspension.
(5)  Referral for disciplinary proceeding  . Upon
entering a final order imposing interim suspension, the
USPTO Director shall refer the complaint to a hearing
officer to conduct a formal disciplinary proceeding.
The formal disciplinary proceeding, however, shall be
stayed by the hearing officer until all direct appealsfrom the conviction are concluded. Review of the initial
decision of the hearing officer shall be pursuant to §
11.55 .
(c) Proof  of conviction and guilt —(1)  Conviction in
the United States . For purposes of a hearing for interim
suspension and a hearing on the formal charges in a
complaint filed as a consequence of the conviction, a
certified copy of the court record, docket entry, or
judgment of conviction in a court of the United States or
any State shall establish a prima facie case by clear and
convincing evidence that the practitioner was convicted
of a serious crime and that the conviction was not lacking
in notice or opportunity to be heard as to constitute a
deprivation of due process.
(2)  Conviction in a foreign country . For purposes
of a hearing for interim suspension and on the formal
charges filed as a result of a finding of guilt, a certified
copy of the court record, docket entry, or judgment of
conviction in a court of a foreign country shall establish
a prima facie case by clear and convincing evidence
that the practitioner was convicted of a serious crime
and that the conviction was not lacking in notice or
opportunity to be heard as to constitute a deprivation
of due process. However, nothing in this paragraph
shall preclude the practitioner from demonstrating by
clear and convincing evidence in any hearing on a
request for interim suspension there is a genuine issue
of material fact to be considered when determining if
the elements of a serious crime were committed in
violating the criminal law of the foreign country and
whether a disciplinary sanction should be entered.
(d) Crime determined not to be serious crime . If the
USPTO Director determines that the crime is not a serious
crime, the complaint shall be referred to the OED Director
for investigation under § 11.22  and processing as is
appropriate.
(e)  Reinstatement —(1)  Upon reversal or setting
aside a finding of guilt or a conviction . If a practitioner
suspended solely under the provisions of paragraph (b)
of this section demonstrates that the underlying finding
of guilt or conviction of serious crimes has been reversed
or vacated, the order for interim suspension shall be
vacated and the practitioner shall be placed on active
status unless the finding of guilt was reversed or the
conviction was set aside with respect to less than all
serious crimes for which the practitioner was found guilty
or convicted. The vacating of the interim suspension will
not terminate any other disciplinary proceeding then
pending against the practitioner, the disposition of which
shall be determined by the hearing officer before whom
the matter is pending, on the basis of all available
evidence other than the finding of guilt or conviction.
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 (2) Following conviction of a serious crime . Any
practitioner convicted of a serious crime and disciplined
in whole or in part in regard to that conviction, may
petition for reinstatement under conditions set forth in
§ 11.60  no sooner than five years after being discharged
following completion of service of his or her sentence,
or after completion of service under probation or parole,
whichever is later.
(f) Notice to clients and others of interim suspension .
An interim suspension under this section shall constitute
a suspension of the practitioner for the purpose of § 11.58 .
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008
]
§ 
11.26Settlement.
Before or after a complaint under § 11.34  is filed, a
settlement conference may occur between the OED
Director and the practitioner. Any offers of compromise
and any statements made during the course of settlement
discussions shall not be admissible in subsequent
proceedings. The OED Director may recommend to the
USPTO Director any settlement terms deemed
appropriate, including steps taken to correct or mitigate
the matter forming the basis of the action, or to prevent
recurrence of the same or similar conduct. A settlement
agreement shall be effective only upon entry of a final
decision by the USPTO Director.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.27Exclusion on consent.
(a)  Required affidavit . The OED Director may confer
with a practitioner concerning possible violations by the
practitioner of the Rules of Professional Conduct whether
or not a disciplinary proceeding has been instituted. A
practitioner who is the subject of an investigation or a
pending disciplinary proceeding based on allegations of
grounds for discipline, and who desires to resign, may
only do so by consenting to exclusion and delivering to
the OED Director an affidavit declaring the consent of
the practitioner to exclusion and stating:
(1) That the practitioner’s consent is freely and
voluntarily rendered, that the practitioner is not being
subjected to coercion or duress, and that the practitioner
is fully aware of the implications of consenting to
exclusion;
(2) That the practitioner is aware that there is
currently pending an investigation into, or a proceeding
involving allegations of misconduct, the nature of
which shall be specifically set forth in the affidavit to
the satisfaction of the OED Director;(3) That the practitioner acknowledges that, if and
when he or she applies for reinstatement under § 11.60 ,
the OED Director will conclusively presume, for the
limited purpose of determining the application for
reinstatement, that:
(i) The facts upon which the investigation or
complaint is based are true, and
(ii) The practitioner could not have
successfully defended himself or herself against
the allegations in the investigation or charges in
the complaint.
(b) Action by the USPTO Director . Upon receipt of
the required affidavit, the OED Director shall file the
affidavit and any related papers with the USPTO Director
for review and approval. Upon such approval, the USPTO
Director will enter an order excluding the practitioner on
consent and providing other appropriate actions. Upon
entry of the order, the excluded practitioner shall comply
with the requirements set forth in § 11.58 .
(c) When an affidavit under paragraph (a) of this
section is received after a complaint under § 11.34  has
been filed, the OED Director shall notify the hearing
officer. The hearing officer shall enter an order
transferring the disciplinary proceeding to the USPTO
Director, who may enter an order excluding the
practitioner on consent.
(d) Reinstatement . Any practitioner excluded on
consent under this section may not petition for
reinstatement for five years. A practitioner excluded on
consent who intends to reapply for admission to practice
before the Office must comply with the provisions of §
11.58 , and apply for reinstatement in accordance with §
11.60 . Failure to comply with the provisions of § 11.58
constitutes grounds for denying an application for
reinstatement.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.28Incapacitated practitioners in a disciplinary
proceeding.
(a)  Holding in abeyance a disciplinary proceeding
because of incapacitation due to a current disability or
addiction  —
(1)  Practitioner’s motion.  In the course of a
disciplinary proceeding under § 11.32 , but before the
date set by the hearing officer for a hearing, the
practitioner may file a motion requesting the hearing
officer to enter an order holding such proceeding in
abeyance based on the contention that the practitioner
is suffering from a disability or addiction that makes
it impossible for the practitioner to adequately defend
the charges in the disciplinary proceeding.
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 (i) Content of practitioner's motion.  The
practitioner’s motion shall, in addition to any other
requirement of § 11.43 , include or have attached
thereto:
(A) A brief statement of all material
facts;
(B) Affidavits, medical reports, official
records, or other documents and the
opinion of at least one medical expert
setting forth and establishing any of the
material facts on which the practitioner is
relying;
(C) A statement that the practitioner
acknowledges the alleged incapacity by
reason of disability or addiction;
(D) Written consent that the
practitioner be transferred to disability
inactive status if the motion is granted;
and
(E) A written agreement by the
practitioner to not practice before the
Office in patent, trademark or other
non-patent cases while on disability
inactive status.
(ii)   Response . The OED Director’s response
to any motion hereunder shall be served and filed
within thirty days after service of the practitioner’s
motion unless such time is shortened or enlarged
by the hearing officer for good cause shown, and
shall set forth the following:
(A) All objections, if any, to the
actions requested in the motion;
(B) An admission, denial or allegation
of lack of knowledge with respect to each
of the material facts in the practitioner’s
motion and accompanying documents; and
(C) Affidavits, medical reports, official
records, or other documents setting forth
facts on which the OED Director intends
to rely for purposes of disputing or
denying any material fact set forth in the
practitioner’s papers.
(2) Disposition of practitioner ’ s motion . The
hearing officer shall decide the motion and any
response thereto. The motion shall be granted upon a
showing of good cause to believe the practitioner to be
incapacitated as alleged. If the required showing is
made, the hearing officer shall enter an order holding
the disciplinary proceeding in abeyance. In the case of
addiction to drugs or intoxicants, the order may providethat the practitioner will not be returned to active status
absent satisfaction of specified conditions. Upon receipt
of the order, the OED Director shall transfer the
practitioner to disability inactive status, give notice to
the practitioner, cause notice to be published, and give
notice to appropriate authorities in the Office that the
practitioner has been placed on disability inactive
status. The practitioner shall comply with the provisions
of § 11.58 , and shall not engage in practice before the
Office in patent, trademark and other non-patent law
until a determination is made of the practitioner’s
capability to resume practice before the Office in a
proceeding under paragraph (c) or paragraph (d) of this
section. A practitioner on disability inactive status must
seek permission from the OED Director to engage in
an activity authorized under § 11.58 (e). Permission
will be granted only if the practitioner has complied
with all the conditions of §§ 11.58 (a) through 11.58 (d)
applicable to disability inactive status. In the event that
permission is granted, the practitioner shall fully
comply with the provisions of § 11.58 (e).
(b)   Motion for reactivation . Any practitioner
transferred to disability inactive status in a disciplinary
proceeding may file with the hearing officer a motion for
reactivation once a year beginning at any time not less
than one year after the initial effective date of inactivation,
or once during any shorter interval provided by the order
issued pursuant to paragraph (a)(2) of this section or any
modification thereof. If the motion is granted, the
disciplinary proceeding shall resume under such schedule
as may be established by the hearing officer.
(c)  Contents of motion for reactivation. A motion by
the practitioner for reactivation alleging that a practitioner
has recovered from a prior disability or addiction shall be
accompanied by all available medical reports or similar
documents relating thereto. The hearing officer may
require the practitioner to present such other information
as is necessary.
(d)  OED Director ’ s motion to resume disciplinary
proceeding held in abeyance.  (1) The OED Director,
having good cause to believe a practitioner is no longer
incapacitated, may file a motion requesting the hearing
officer to terminate a prior order holding in abeyance any
pending proceeding because of the practitioner’s disability
or addiction. The hearing officer shall decide the matter
presented by the OED Director’s motion hereunder based
on the affidavits and other admissible evidence attached
to the OED Director’s motion and the practitioner’s
response. The OED Director bears the burden of showing
by clear and convincing evidence that the practitioner is
able to defend himself or herself. If there is any genuine
issue as to one or more material facts, the hearing officer
will hold an evidentiary hearing.
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 (2) The hearing officer, upon receipt of the OED
Director’s motion under paragraph (d)(1) of this
section, may direct the practitioner to file a response.
If the hearing officer requires the practitioner to file a
response, the practitioner must present clear and
convincing evidence that the prior self-alleged disability
or addiction continues to make it impossible for the
practitioner to defend himself or herself in the
underlying proceeding being held in abeyance.
(e)  Action by the hearing officer . If, in deciding a
motion under paragraph (b) or (d) of this section, the
hearing officer determines that there is good cause to
believe the practitioner is not incapacitated from
defending himself or herself, or is not incapacitated from
practicing before the Office, the hearing officer shall take
such action as is deemed appropriate, including the entry
of an order directing the reactivation of the practitioner
and resumption of the disciplinary proceeding.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008
]
§ 
11.29Reciprocal transfer or initial transfer to
disability inactive status.
(a)  Notification of OED Director.
(1) Transfer to disability inactive status in another
jurisdiction as grounds for reciprocal transfer by the
Office. Within thirty days of being transferred to
disability inactive status in another jurisdiction, a
practitioner subject to the disciplinary jurisdiction of
the Office shall notify the OED Director in writing of
the transfer. Upon notification from any source that a
practitioner subject to the disciplinary jurisdiction of
the Office has been transferred to disability inactive
status in another jurisdiction, the OED Director shall
obtain a certified copy of the order. The OED Director
shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be
transferred to disability inactive status, including
the specific grounds therefor; and
(iii) A request that the USPTO Director issue
a notice and order as set forth in paragraph (b) of
this section.
(2)  Involuntary commitment, adjudication of
incompetency or court ordered placement under
guardianship or conservatorship as grounds for initial
transfer to disability inactive status . Within thirty days
of being judicially declared incompetent, being
judicially ordered to be involuntarily committed after
a hearing on the grounds of incompetency or disability,
or being placed by court order under guardianship or
conservatorship in another jurisdiction, a practitionersubject to the disciplinary jurisdiction of the Office
shall notify the OED Director in writing of such judicial
action. Upon notification from any source that a
practitioner subject to the disciplinary jurisdiction of
the Office has been subject to such judicial action, the
OED Director shall obtain a certified copy of the order.
The OED Director shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be
transferred to disability inactive status, including
the specific grounds therefor; and
(iii) A request that the USPTO Director issue
a notice and order as set forth in paragraph (b) of
this section.
(b) Notice served on practitioner . Upon receipt of a
certified copy of an order or declaration issued by another
jurisdiction demonstrating that a practitioner subject to
the disciplinary jurisdiction of the Office has been
transferred to disability inactive status, judicially declared
incompetent, judicially ordered to be involuntarily
committed after a judicial hearing on the grounds of
incompetency or disability, or placed by court order under
guardianship or conservatorship, together with the OED
Director’s request, the USPTO Director shall issue a
notice, comporting with § 11.35 , directed to the
practitioner containing:
(1) A copy of the order or declaration from the other
jurisdiction,
(2) A copy of the OED Director’s request; and
(3) An order directing the practitioner to file a
response with the USPTO Director and the OED
Director, within 30 days from the date of the notice,
establishing a genuine issue of material fact supported
by an affidavit and predicated upon the grounds set
forth in § 11.29 (d)(1) through (4) that a transfer to
disability inactive status would be unwarranted and the
reasons therefor.
(c)  Effect of stay of transfer, judicially declared
incompetence, judicially ordered involuntarily
commitment on the grounds of incompetency or disability,
or court-ordered placement under guardianship or
conservatorship . In the event the transfer, judicially
declared incompetence, judicially ordered involuntary
commitment on the grounds of incompetency or disability,
or court-ordered placement under guardianship or
conservatorship in the other jurisdiction has been stayed
there, any reciprocal transfer or transfer by the Office
may be deferred until the stay expires.
(d)  Hearing and transfer to disability inactive status.
The request for transfer to disability inactive status shall
be heard by the USPTO Director on the documentary
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 record unless the USPTO Director determines that there
is a genuine issue of material fact, in which case the
USPTO Director may deny the request. Upon the
expiration of 30 days from the date of the notice pursuant
to the provisions of paragraph (b) of this section, the
USPTO Director shall consider any timely filed response
and impose the identical transfer to disability inactive
status based on the practitioner’s transfer to disability
status in another jurisdiction, or shall transfer the
practitioner to disability inactive status based on judicially
declared incompetence, judicially ordered involuntary
commitment on the grounds of incompetency or disability,
or court-ordered placement under guardianship or
conservatorship, unless the practitioner demonstrates by
clear and convincing evidence, or the USPTO Director
finds there is a genuine issue of material fact by clear and
convincing evidence that:
(1) The procedure was so lacking in notice or
opportunity to be heard as to constitute a deprivation
of due process;
(2) There was such infirmity of proof establishing
the transfer to disability status, judicial declaration of
incompetence, judicial order for involuntary
commitment on the grounds of incompetency or
disability, or placement by court order under
guardianship or conservatorship that the USPTO
Director could not, consistent with Office’s duty, accept
as final the conclusion on that subject;
(3) The imposition of the same disability status or
transfer to disability status by the USPTO Director
would result in grave injustice; or
(4) The practitioner is not the individual transferred
to disability status, judicially declared incompetent,
judicially ordered for involuntary commitment on the
grounds of incompetency or disability, or placed by
court order under guardianship or conservatorship.
(5) If the USPTO Director determines that there is
no genuine issue of material fact with regard to any of
the elements of paragraphs (d)(1) through (4) of this
section, the USPTO Director shall enter an appropriate
final order. If the USPTO Director is unable to make
that determination because there is a genuine issue of
material fact, the USPTO Director shall enter an
appropriate order dismissing the OED Director’s
request for such reason.
(e)  Adjudication in other jurisdiction . In all other
aspects, a final adjudication in another jurisdiction that a
practitioner be transferred to disability inactive status, is
judicially declared incompetent, is judicially ordered to
be involuntarily committed on the grounds of
incompetency or disability, or is placed by court order
under guardianship or conservatorship shall establish thedisability for purposes of a reciprocal transfer to or
transfer to disability status before the Office.
(f) A practitioner who is transferred to disability
inactive status under this section shall be deemed to have
been refused recognition to practice before the Office for
purposes of 35 U.S.C. 32.
(g) Order imposing reciprocal transfer to disability
inactive status or order imposing initial transfer to
disability inactive status . An order by the USPTO
Director imposing reciprocal transfer to disability inactive
status, or transferring a practitioner to disability inactive
status shall be effective immediately, and shall be for an
indefinite period until further order of the USPTO
Director. A copy of the order transferring a practitioner
to disability inactive status shall be served upon the
practitioner, the practitioner’s guardian, and/or the director
of the institution to which the practitioner has been
committed in the manner the USPTO Director may direct.
A practitioner reciprocally transferred or transferred to
disability inactive status shall comply with the provisions
of § 11.58 , and shall not engage in practice before the
Office in patent, trademark and other non-patent law
unless and until reinstated to active status.
(h)  Confidentiality of proceeding; Orders to be
public —(1)  Confidentiality of p roceeding . All
proceedings under this section involving allegations of
disability of a practitioner shall be kept confidential until
and unless the USPTO Director enters an order
reciprocally transferring or transferring the practitioner
to disability inactive status.
(2)  Orders to be public . The OED Director shall
publicize any reciprocal transfer to disability inactive
status or transfer to disability inactive status in the same
manner as for the imposition of public discipline.
(i) Employment of practitioners on disability inactive
status . A practitioner on disability inactive status must
seek permission from the OED Director to engage in an
activity authorized under § 11.58 (e). Permission will be
granted only if the practitioner has complied with all the
conditions of §§ 11.58 (a) through 11.58 (d) applicable to
disability inactive status. In the event that permission is
granted, the practitioner shall fully comply with the
provisions of § 11.58 (e).
(j)  Reinstatement from disability inactive status . (1)
 Generally . No practitioner reciprocally transferred or
transferred to disability inactive status under this section
may resume active status except by order of the OED
Director.
(2)  Petition. A practitioner reciprocally transferred
or transferred to disability inactive status shall be
entitled to petition the OED Director for transfer to
active status once a year, or at whatever shorter
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 intervals the USPTO Director may direct in the order
transferring or reciprocally transferring the practitioner
to disability inactive status or any modification thereof.
(3)  Examination . Upon the filing of a petition for
transfer to active status, the OED Director may take or
direct whatever action is deemed necessary or proper
to determine whether the incapacity has been removed,
including a direction for an examination of the
practitioner by qualified medical or psychological
experts designated by the OED Director. The expense
of the examination shall be paid and borne by the
practitioner.
(4)  Required disclosure, waiver of privilege. With
the filing of a petition for reinstatement to active status,
the practitioner shall be required to disclose the name
of each psychiatrist, psychologist, physician and
hospital or other institution by whom or in which the
practitioner has been examined or treated for the
disability since the transfer to disability inactive status.
The practitioner shall furnish to the OED Director
written consent to the release of information and
records relating to the incapacity if requested by the
OED Director.
(5)  Learning in the law, examination . The OED
Director may direct that the practitioner establish proof
of competence and learning in law, which proof may
include passing the registration examination.
(6)  Granting of petition for transfer to active
status . The OED Director shall grant the petition for
transfer to active status upon a showing by clear and
convincing evidence that the incapacity has been
removed.
(7)  Reinstatement in other jurisdiction . If a
practitioner is reciprocally transferred to disability
inactive status on the basis of a transfer to disability
inactive status in another jurisdiction, the OED Director
may dispense with further evidence that the disability
has been removed and may immediately direct
reinstatement to active status upon such terms as are
deemed proper and advisable.
(8)  Judicial declaration of competency . If a
practitioner is transferred to disability inactive status
on the basis of a judicially declared incompetence,
judicially ordered involuntary commitment on the
grounds of incompetency or disability, or court-ordered
placement under guardianship or conservatorship has
been declared to be competent, the OED Director may
dispense with further evidence that the incapacity to
practice law has been removed and may immediately
direct reinstatement to active status.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]§ 
11.30 -
11.31[Reserved]
§ 
11.32Instituting a disciplinary proceeding.
If after conducting an investigation under § 11.22 (a), the
OED Director is of the opinion that grounds exist for
discipline under §§ 11.19 (b)(3) through (5), the OED
Director, after complying where necessary with the
provisions of 5 U.S.C. 558(c), shall convene a meeting
of a panel of the Committee on Discipline. The panel of
the Committee on Discipline shall then determine as
specified in § 11.23 (b) whether a disciplinary proceeding
shall be instituted. If the panel of the Committee on
Discipline determines that probable cause exists to bring
charges under §§ 11.19 (b)(3) through (5), the OED
Director shall institute a disciplinary proceeding by filing
a complaint under § 11.34 .
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.33[Reserved]
§ 
11.34Complaint.
(a) A complaint instituting a disciplinary proceeding
under §§ 11.25 (b)(4) or 11.32  shall:
(1) Name the practitioner who may then be referred
to as the “respondent”;
(2) Give a plain and concise description of the
respondent’s alleged grounds for discipline;
(3) State the place and time, not less than thirty
days from the date the complaint is filed, for filing an
answer by the respondent;
(4) State that a decision by default may be entered
if an answer is not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly
informs the respondent of any grounds for discipline, and
where applicable, the Mandatory Disciplinary Rules
identified in § 10.20 (b) of this subchapter that form the
basis for the disciplinary proceeding so that the respondent
is able to adequately prepare a defense.
(c) The complaint shall be filed in the manner
prescribed by the USPTO Director.
(d)  Time for filing a complaint . A complaint shall be
filed within one year after the date on which the OED
Director receives a grievance forming the basis of the
complaint. No complaint shall be filed more than ten years
after the date on which the misconduct forming the basis
for the proceeding occurred.
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 (e)  Tolling agreements. The one-year period for filing
a complaint under paragraph (d) of this section shall be
tolled if the involved practitioner and the OED Director
agree in writing to such tolling.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008;
paras. (d) and (e) added, 77 FR 45247, July 31, 2012, effective August
30, 2012]
§ 
11.35Service of complaint.
(a) A complaint may be served on a respondent in any
of the following methods:
(1) By delivering a copy of the complaint personally
to the respondent, in which case the individual who
gives the complaint to the respondent shall file an
affidavit with the OED Director indicating the time and
place the complaint was delivered to the respondent.
(2) By mailing a copy of the complaint by “Express
Mail,” first-class mail, or any delivery service that
provides ability to confirm delivery or attempted
delivery to:
(i) A respondent who is a registered
practitioner at the address provided to OED
pursuant to § 11.11 , or
(ii) A respondent who is a nonregistered
practitioner at the last address for the respondent
known to the OED Director.
(3) By any method mutually agreeable to the OED
Director and the respondent.
(4) In the case of a respondent who resides outside
the United States, by sending a copy of the complaint
by any delivery service that provides ability to confirm
delivery or attempted delivery, to:
(i) A respondent who is a registered
practitioner at the address provided to OED
pursuant to § 11.11 ; or
(ii) A respondent who is a nonregistered
practitioner at the last address for the respondent
known to the OED Director.
(b) If a copy of the complaint cannot be delivered to
the respondent through any one of the procedures in
paragraph (a) of this section, the OED Director shall serve
the respondent by causing an appropriate notice to be
published in the Official Gazette for two consecutive
weeks, in which case, the time for filing an answer shall
be thirty days from the second publication of the notice.
Failure to timely file an answer will constitute an
admission of the allegations in the complaint in
accordance with paragraph (d) of § 11.36 , and the hearing
officer may enter an initial decision on default.(c) If the respondent is known to the OED Director
to be represented by an attorney under § 11.40 (a), a copy
of the complaint shall be served on the attorney in lieu of
service on the respondent in the manner provided for in
paragraph (a) or (b) of this section.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.36Answer to complaint.
(a)  Time for answer . An answer to a complaint shall
be filed within the time set in the complaint but in no
event shall that time be less than thirty days from the date
the complaint is filed.
(b)   With whom filed . The answer shall be filed in
writing with the hearing officer at the address specified
in the complaint. The hearing officer may extend the time
for filing an answer once for a period of no more than
thirty days upon a showing of good cause, provided a
motion requesting an extension of time is filed within
thirty days after the date the complaint is served on
respondent. A copy of the answer, and any exhibits or
attachments thereto, shall be served on the OED Director.
(c)  Content . The respondent shall include in the
answer a statement of the facts that constitute the grounds
of defense and shall specifically admit or deny each
allegation set forth in the complaint. The respondent shall
not deny a material allegation in the complaint that the
respondent knows to be true or state that respondent is
without sufficient information to form a belief as to the
truth of an allegation, when in fact the respondent
possesses that information. The respondent shall also state
affirmatively in the answer special matters of defense and
any intent to raise a disability as a mitigating factor. If
respondent intends to raise a special matter of defense or
disability, the answer shall specify the defense or
disability, its nexus to the misconduct, and the reason it
provides a defense or mitigation. A respondent who fails
to do so cannot rely on a special matter of defense or
disability. The hearing officer may, for good cause, allow
the respondent to file the statement late, grant additional
hearing preparation time, or make other appropriate
orders.
(d)  Failure to deny allegations in complaint . Every
allegation in the complaint that is not denied by a
respondent in the answer shall be deemed to be admitted
and may be considered proven. The hearing officer at any
hearing need receive no further evidence with respect to
that allegation.
(e)  Default judgment. Failure to timely file an answer
will constitute an admission of the allegations in the
complaint and may result in entry of default judgment.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
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 § 
11.37[Reserved]
§ 
11.38Contested case.
Upon the filing of an answer by the respondent, a
disciplinary proceeding shall be regarded as a contested
case within the meaning of 35 U.S.C. 24. Evidence
obtained by a subpoena issued under 35 U.S.C. 24 shall
not be admitted into the record or considered unless leave
to proceed under 35 U.S.C. 24 was previously authorized
by the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.39Hearing officer; appointment; responsibilities;
review of interlocutory orders; stays.
(a)  Appointment . A hearing officer, appointed by the
USPTO Director under 5 U.S.C. 3105 or 35 U.S.C. 32,
shall conduct disciplinary proceedings as provided by this
Part.
(b)  Independence of the Hearing Officer .
(1) A hearing officer appointed in accordance with
paragraph (a) of this section shall not be subject to first
level or second level supervision by either the USPTO
Director or OED Director, or his or her designee.
(2) A hearing officer appointed in accordance with
paragraph (a) of this section shall not be subject to
supervision of the person(s) investigating or prosecuting
the case.
(3) A hearing officer appointed in accordance with
paragraph (a) of this section shall be impartial, shall
not be an individual who has participated in any manner
in the decision to initiate the proceedings, and shall not
have been employed under the immediate supervision
of the practitioner.
(4) A hearing officer appointed in accordance with
paragraph (a) of this section shall be admitted to
practice law and have suitable experience and training
conducting hearings, reaching a determination, and
rendering an initial decision in an equitable manner.
(c)  Responsibilities . The hearing officer shall have
authority, consistent with specific provisions of these
regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant
evidence, and examine witnesses;
(4) Authorize the taking of a deposition of a witness
in lieu of personal appearance of the witness before the
hearing officer;(5) Determine the time and place of any hearing
and regulate its course and conduct;
(6) Hold or provide for the holding of conferences
to settle or simplify the issues;
(7) Receive and consider oral or written arguments
on facts or law;
(8) Adopt procedures and modify procedures for
the orderly disposition of proceedings;
(9) Make initial decisions under §§ 11.25  and 11.54 ;
and
(10) Perform acts and take measures as necessary
to promote the efficient, timely, and impartial conduct
of any disciplinary proceeding.
(d) Time for making initial decision . The hearing
officer shall set times and exercise control over a
disciplinary proceeding such that an initial decision under
§ 11.54  is normally issued within nine months of the date
a complaint is filed. The hearing officer may, however,
issue an initial decision more than nine months after a
complaint is filed if there exist circumstances, in his or
her opinion, that preclude issuance of an initial decision
within nine months of the filing of the complaint.
(e)  Review of interlocutory orders . The USPTO
Director will not review an interlocutory order of a
hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a
controlling question of procedure or law as to
which there is a substantial ground for a difference
of opinion, and
(ii) That an immediate decision by the USPTO
Director may materially advance the ultimate
termination of the disciplinary proceeding, or
(2) In an extraordinary situation where the USPTO
Director deems that justice requires review.
(f)  Stays pending review of interlocutory order. If the
OED Director or a respondent seeks review of an
interlocutory order of a hearing officer under paragraph
(b)(2) of this section, any time period set by the hearing
officer for taking action shall not be stayed unless ordered
by the USPTO Director or the hearing officer.
(g) The hearing officer shall engage in no ex parte
discussions with any party on the merits of the complaint,
beginning with appointment and ending when the final
agency decision is issued.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.40Representative for OED Director or
respondent.
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 (a) A respondent may represent himself or herself, or
be represented by an attorney before the Office in
connection with an investigation or disciplinary
proceeding. The attorney shall file a written declaration
that he or she is an attorney within the meaning of § 11.1
and shall state:
(1) The address to which the attorney wants
correspondence related to the investigation or
disciplinary proceeding sent, and
(2) A telephone number where the attorney may be
reached during normal business hours.
(b) The Deputy General Counsel for Intellectual
Property and Solicitor, and attorneys in the Office of the
Solicitor shall represent the OED Director. The attorneys
representing the OED Director in disciplinary proceedings
shall not consult with the USPTO Director, the General
Counsel, the Deputy General Counsel for General Law,
or an individual designated by the USPTO Director to
decide disciplinary matters regarding the proceeding. The
General Counsel and the Deputy General Counsel for
General Law shall remain screened from the investigation
and prosecution of all disciplinary proceedings in order
that they shall be available as counsel to the USPTO
Director in deciding disciplinary proceedings unless
access is appropriate to perform their duties. After a final
decision is entered in a disciplinary proceeding, the OED
Director and attorneys representing the OED Director
shall be available to counsel the USPTO Director, the
General Counsel, and the Deputy General Counsel for
General Law in any further proceedings.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.41Filing of papers.
(a) The provisions of §§ 1.8 and 2.197 of this
subchapter do not apply to disciplinary proceedings. All
papers filed after the complaint and prior to entry of an
initial decision by the hearing officer shall be filed with
the hearing officer at an address or place designated by
the hearing officer.
(b) All papers filed after entry of an initial decision
by the hearing officer shall be filed with the USPTO
Director. A copy of the paper shall be served on the OED
Director. The hearing officer or the OED Director may
provide for filing papers and other matters by hand, by
“Express Mail,” or by other means.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.42Service of papers.
(a) All papers other than a complaint shall be served
on a respondent who is represented by an attorney by:(1) Delivering a copy of the paper to the office of
the attorney; or
(2) Mailing a copy of the paper by first-class mail,
“Express Mail,” or other delivery service to the attorney
at the address provided by the attorney under §
11.40 (a)(1); or
(3) Any other method mutually agreeable to the
attorney and a representative for the OED Director.
(b) All papers other than a complaint shall be served
on a respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the
respondent; or
(2) Mailing a copy of the paper by first-class mail,
“Express Mail,” or other delivery service to the
respondent at the address to which a complaint may be
served or such other address as may be designated in
writing by the respondent; or
(3) Any other method mutually agreeable to the
respondent and a representative of the OED Director.
(c) A respondent shall serve on the representative for
the OED Director one copy of each paper filed with the
hearing officer or the OED Director. A paper may be
served on the representative for the OED Director by:
(1) Delivering a copy of the paper to the
representative; or
(2) Mailing a copy of the paper by first-class mail,
“Express Mail,” or other delivery service to an address
designated in writing by the representative; or
(3) Any other method mutually agreeable to the
respondent and the representative.
(d) Each paper filed in a disciplinary proceeding shall
contain therein a certificate of service indicating:
(1) The date on which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may
require that a paper be served by hand or by “Express
Mail.”
(f) Service by mail is completed when the paper
mailed in the United States is placed into the custody of
the U.S. Postal Service.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.43Motions.
Motions, including all prehearing motions commonly
filed under the Federal Rules of Civil Procedure, shall be
filed with the hearing officer. The hearing officer will
determine whether replies to responses will be authorized
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 and the time period for filing such a response. No motion
shall be filed with the hearing officer unless such motion
is supported by a written statement by the moving party
that the moving party or attorney for the moving party
has conferred with the opposing party or attorney for the
opposing party in an effort in good faith to resolve by
agreement the issues raised by the motion and has been
unable to reach agreement. If, prior to a decision on the
motion, the parties resolve issues raised by a motion
presented to the hearing officer, the parties shall promptly
notify the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.44Hearings.
(a) The hearing officer shall preside over hearings in
disciplinary proceedings. The hearing officer shall set the
time and place for the hearing. In cases involving an
incarcerated respondent, any necessary oral hearing may
be held at the location of incarceration. Oral hearings will
be stenographically recorded and transcribed, and the
testimony of witnesses will be received under oath or
affirmation. The hearing officer shall conduct the hearing
as if the proceeding were subject to 5 U.S.C. 556. A copy
of the transcript of the hearing shall become part of the
record. A copy of the transcript shall be provided to the
OED Director and the respondent at the expense of the
Office.
(b) If the respondent to a disciplinary proceeding fails
to appear at the hearing after a notice of hearing has been
given by the hearing officer, the hearing officer may deem
the respondent to have waived the right to a hearing and
may proceed with the hearing in the absence of the
respondent.
(c) A hearing under this section will not be open to
the public except that the hearing officer may grant a
request by a respondent to open his or her hearing to the
public and make the record of the disciplinary proceeding
available for public inspection,  provided , a protective
order is entered to exclude from public disclosure
information which is privileged or confidential under
applicable laws or regulations.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.45Amendment of pleadings.
The OED Director may, without Committee on Discipline
authorization, but with the authorization of the hearing
officer, amend the complaint to include additional charges
based upon conduct committed before or after the
complaint was filed. If amendment of the complaint is
authorized, the hearing officer shall authorize amendment
of the answer. Any party who would otherwise beprejudiced by the amendment will be given reasonable
opportunity to meet the allegations in the complaint or
answer as amended, and the hearing officer shall make
findings on any issue presented by the complaint or
answer as amended.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.46 -
11.48[Reserved]
§ 
11.49Burden of proof.
In a disciplinary proceeding, the OED Director shall have
the burden of proving the violation by clear and
convincing evidence and a respondent shall have the
burden of proving any affirmative defense by clear and
convincing evidence.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.50Evidence.
(a)  Rules of evidence. The rules of evidence prevailing
in courts of law and equity are not controlling in hearings
in disciplinary proceedings. However, the hearing officer
shall exclude evidence that is irrelevant, immaterial, or
unduly repetitious.
(b) Depositions . Depositions of witnesses taken
pursuant to § 11.51  may be admitted as evidence.
(c)  Government documents . Official documents,
records, and papers of the Office, including, but not
limited to, all papers in the file of a disciplinary
investigation, are admissible without extrinsic evidence
of authenticity. These documents, records, and papers
may be evidenced by a copy certified as correct by an
employee of the Office.
(d)  Exhibits. If any document, record, or other paper
is introduced in evidence as an exhibit, the hearing officer
may authorize the withdrawal of the exhibit subject to
any conditions the hearing officer deems appropriate.
(e)  Objections. Objections to evidence will be in short
form, stating the grounds of objection. Objections and
rulings on objections will be a part of the record. No
exception to the ruling is necessary to preserve the rights
of the parties.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.51Depositions.
(a) Depositions for use at the hearing in lieu of
personal appearance of a witness before the hearing officer
may be taken by respondent or the OED Director upon a
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 showing of good cause and with the approval of, and
under such conditions as may be deemed appropriate by,
the hearing officer. Depositions may be taken upon oral
or written questions, upon not less than ten days’ written
notice to the other party, before any officer authorized to
administer an oath or affirmation in the place where the
deposition is to be taken. The parties may waive the
requirement of ten days’ notice and depositions may then
be taken of a witness at a time and place mutually agreed
to by the parties. When a deposition is taken upon written
questions, copies of the written questions will be served
upon the other party with the notice, and copies of any
written cross-questions will be served by hand or “Express
Mail” not less than five days before the date of the taking
of the deposition unless the parties mutually agree
otherwise. A party on whose behalf a deposition is taken
shall file a copy of a transcript of the deposition signed
by a court reporter with the hearing officer and shall serve
one copy upon the opposing party. Expenses for a court
reporter and preparing, serving, and filing depositions
shall be borne by the party at whose instance the
deposition is taken. Depositions may not be taken to
obtain discovery, except as provided for in paragraph (b)
of this section.
(b) When the OED Director and the respondent agree
in writing, a deposition of any witness who will appear
voluntarily may be taken under such terms and conditions
as may be mutually agreeable to the OED Director and
the respondent. The deposition shall not be filed with the
hearing officer and may not be admitted in evidence
before the hearing officer unless he or she orders the
deposition admitted in evidence. The admissibility of the
deposition shall lie within the discretion of the hearing
officer who may reject the deposition on any reasonable
basis including the fact that demeanor is involved and
that the witness should have been called to appear
personally before the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008
§ 
11.52Discovery.
Discovery shall not be authorized except as follows:
(a) After an answer is filed under § 11.36  and when
a party establishes that discovery is reasonable and
relevant, the hearing officer, under such conditions as he
or she deems appropriate, may order an opposing party
to:
(1) Answer a reasonable number of written requests
for admission or interrogatories;
(2) Produce for inspection and copying a reasonable
number of documents; and(3) Produce for inspection a reasonable number of
things other than documents.
(b) Discovery shall not be authorized under paragraph
(a) of this section of any matter which:
(1) Will be used by another party solely for
impeachment;
(2) Is not available to the party under 35 U.S.C.
122;
(3) Relates to any other disciplinary proceeding;
(4) Relates to experts except as the hearing officer
may require under paragraph (e) of this section;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions,
opinions, or legal theories of any attorney or other
representative of a party.
(c) The hearing officer may deny discovery requested
under paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party
required to produce the discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public;
(i) Equally to the parties; or
(iii) To the party seeking the discovery
through another source.
(d) Prior to authorizing discovery under paragraph (a)
of this section, the hearing officer shall require the party
seeking discovery to file a motion (§ 11.43 ) and explain
in detail, for each request made, how the discovery sought
is reasonable and relevant to an issue actually raised in
the complaint or the answer.
(e) The hearing officer may require parties to file and
serve, prior to any hearing, a pre-hearing statement that
contains:
(1) A list (together with a copy) of all proposed
exhibits to be used in connection with a party’s
case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the
individual will be qualified as an expert;
(ii) A statement as to the subject matter on
which the expert is expected to testify; and
(iii) A statement of the substance of the facts
and opinions to which the expert is expected to
testify;
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 (4) Copies of memoranda reflecting respondent’s
own statements to administrative representatives.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.53Proposed findings and conclusions;
post-hearing memorandum.
Except in cases in which the respondent has failed to
answer the complaint or amended complaint, the hearing
officer, prior to making an initial decision, shall afford
the parties a reasonable opportunity to submit proposed
findings and conclusions and a post-hearing memorandum
in support of the proposed findings and conclusions.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.54Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision
in the case. The decision will include:
(1) A statement of findings of fact and conclusions
of law, as well as the reasons or bases for those findings
and conclusions with appropriate references to the
record, upon all the material issues of fact, law, or
discretion presented on the record, and
(2) An order of default judgment, of suspension or
exclusion from practice, of reprimand, or an order
dismissing the complaint. The hearing officer shall
transmit a copy of the decision to the OED Director
and to the respondent. After issuing the decision, the
hearing officer shall transmit the entire record to the
OED Director. In the absence of an appeal to the
USPTO Director, the decision of the hearing officer,
including a default judgment, will, without further
proceedings, become the decision of the USPTO
Director thirty days from the date of the decision of the
hearing officer.
(b) The initial decision of the hearing officer shall
explain the reason for any default judgment, reprimand,
suspension, or exclusion. In determining any sanction,
the following four factors must be considered if they are
applicable:
(1) Whether the practitioner has violated a duty
owed to a client, to the public, to the legal system, or
to the profession;
(2) Whether the practitioner acted intentionally,
knowingly, or negligently;
(3) The amount of the actual or potential injury
caused by the practitioner’s misconduct; and
(4) The existence of any aggravating or mitigating
factors.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]§ 
11.55Appeal to the USPTO Director.
(a) Within thirty days after the date of the initial
decision of the hearing officer under §§ 11.25  or 11.54 ,
either party may appeal to the USPTO Director. The
appeal shall include the appellant’s brief. If more than
one appeal is filed, the party who files the appeal first is
the appellant for purpose of this rule. If appeals are filed
on the same day, the respondent is the appellant. If an
appeal is filed, then the OED Director shall transmit the
entire record to the USPTO Director. Any cross-appeal
shall be filed within fourteen days after the date of service
of the appeal pursuant to § 11.42 , or thirty days after the
date of the initial decision of the hearing officer,
whichever is later. The cross-appeal shall include the
cross-appellant’s brief. Any appellee or cross-appellee
brief must be filed within thirty days after the date of
service pursuant to § 11.42  of an appeal or cross-appeal.
Any reply brief must be filed within fourteen days after
the date of service of any appellee or cross-appellee brief.
(b) An appeal or cross-appeal must include exceptions
to the decisions of the hearing officer and supporting
reasons for those exceptions. Any exception not raised
will be deemed to have been waived and will be
disregarded by the USPTO Director in reviewing the
initial decision.
(c) All briefs shall:
(1) Be filed with the USPTO Director at the address
set forth in § 1.1(a)(3)(ii) of this subchapter and served
on the opposing party;
(2) Include separate sections containing a concise
statement of the disputed facts and disputed points of
law; and
(3) Be typed on 8 1/2 by 11-inch paper, and comply
with Rule 32(a)(4)-(6) of the Federal Rules of Appellate
Procedure.
(d) An appellant’s, cross-appellant’s, appellee’s, and
cross-appellee’s brief shall be no more than thirty pages
in length, and comply with Rule 28(a)(2), (3), and (5)
through (10) of the Federal Rules of Appellate Procedure.
Any reply brief shall be no more than fifteen pages in
length, and shall comply with Rule 28 (a)(2), (3), (8), and
(9) of the Federal Rules of Appellate Procedure.
(e) The USPTO Director may refuse entry of a
nonconforming brief.
(f) The USPTO Director will decide the appeal on the
record made before the hearing officer.
(g) Unless the USPTO Director permits, no further
briefs or motions shall be filed.
(h) The USPTO Director may order reopening of a
disciplinary proceeding in accordance with the principles
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 that govern the granting of new trials. Any request to
reopen a disciplinary proceeding on the basis of newly
discovered evidence must demonstrate that the newly
discovered evidence could not have been discovered by
due diligence.
(i) In the absence of an appeal by the OED Director,
failure by the respondent to appeal under the provisions
of this section shall result in the initial decision being
final and effective thirty days from the date of the initial
decision of the hearing officer.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.56Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from
an initial decision of the hearing officer. On appeal from
the initial decision, the USPTO Director has authority to
conduct a de novo review of the factual record. The
USPTO Director may affirm, reverse, or modify the initial
decision or remand the matter to the hearing officer for
such further proceedings as the USPTO Director may
deem appropriate. In making a final decision, the USPTO
Director shall review the record or the portions of the
record designated by the parties. The USPTO Director
shall transmit a copy of the final decision to the OED
Director and to the respondent.
(b) A final decision of the USPTO Director may
dismiss a disciplinary proceeding, reverse or modify the
initial decision, reprimand a practitioner, or may suspend
or exclude the practitioner from practice before the Office.
A final decision suspending or excluding a practitioner
shall require compliance with the provisions of § 11.58 .
The final decision may also condition the reinstatement
of the practitioner upon a showing that the practitioner
has taken steps to correct or mitigate the matter forming
the basis of the action, or to prevent recurrence of the
same or similar conduct.
(c) The respondent or the OED Director may make a
single request for reconsideration or modification of the
decision by the USPTO Director if filed within twenty
days from the date of entry of the decision. No request
for reconsideration or modification shall be granted unless
the request is based on newly discovered evidence or error
of law or fact, and the requestor must demonstrate that
any newly discovered evidence could not have been
discovered any earlier by due diligence. Such a request
shall have the effect of staying the effective date of the
order of discipline in the final decision. The decision by
the USPTO Director is effective on its date of entry.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.57Review of final decision of the USPTO
Director.(a) Review of the final decision by the USPTO
Director in a disciplinary case may be had, subject to §
11.55 (d), by a petition filed in accordance with 35 U.S.C.
32. The Respondent must serve the USPTO Director with
the petition. Respondent must serve the petition in
accordance with Rule 4 of the Federal Rules of Civil
Procedure and § 104.2  of this Title.
(b) Except as provided for in § 11.56 (c), an order for
discipline in a final decision will not be stayed except on
proof of exceptional circumstances.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.58Duties of disciplined or resigned practitioner,
or practitioner on disability inactive status.
(a) An excluded, suspended or resigned practitioner,
or practitioner transferred to disability inactive status shall
not engage in any practice of patent, trademark and other
non-patent law before the Office. An excluded, suspended
or resigned practitioner will not be automatically
reinstated at the end of his or her period of exclusion or
suspension. An excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status must comply with the provisions of this
section and § 11.60  to be reinstated. Failure to comply
with the provisions of this section may constitute both
grounds for denying reinstatement or readmission; and
cause for further action, including seeking further
exclusion, suspension, and for revocation of any pending
probation.
(b) Unless otherwise ordered by the USPTO Director,
any excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status shall:
(1) Within thirty days after the date of entry of the
order of exclusion, suspension, acceptance of
resignation, or transfer to disability inactive status:
(i) File a notice of withdrawal as of the
effective date of the exclusion, suspension,
acceptance of resignation, or transfer to disability
inactive status in each pending patent and
trademark application, each pending
reexamination and interference proceeding, and
every other matter pending in the Office, together
with a copy of the notices sent pursuant to
paragraphs (b) and (c) of this section;
(ii) Provide notice to all State and Federal
jurisdictions and administrative agencies to which
the practitioner is admitted to practice and all
clients the practitioner represents having
immediate or prospective business before the
Office in patent, trademark and other non-patent
matters of the order of exclusion, suspension,
acceptance of resignation, or transferred to
disability inactive status and of the practitioner’s
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 consequent inability to act as a practitioner after
the effective date of the order; and that, if not
represented by another practitioner, the client
should act promptly to substitute another
practitioner, or to seek legal advice elsewhere,
calling attention to any urgency arising from the
circumstances of the case;
(iii) Provide notice to the practitioner(s) for
all opposing parties (or, to the parties in the
absence of a practitioner representing the parties)
in matters pending before the Office of the
practitioner’s exclusion, suspension, resignation,
or transfer to disability inactive status and, that as
a consequence, the practitioner is disqualified from
acting as a practitioner regarding matters before
the Office after the effective date of the
suspension, exclusion, resignation or transfer to
disability inactive status, and state in the notice
the mailing address of each client of the excluded,
suspended or resigned practitioner, or practitioner
transferred to disability inactive status who is a
party in the pending matter;
(iv) Deliver to all clients having immediate or
prospective business before the Office in patent,
trademark or other non-patent matters any papers
or other property to which the clients are entitled,
or shall notify the clients and any co-practitioner
of a suitable time and place where the papers and
other property may be obtained, calling attention
to any urgency for obtaining the papers or other
property;
(v) Relinquish to the client, or other
practitioner designated by the client, all funds for
practice before the Office, including any legal fees
paid in advance that have not been earned and any
advanced costs not expended;
(vi) Take any necessary and appropriate steps
to remove from any telephone, legal, or other
directory any advertisement, statement, or
representation which would reasonably suggest
that the practitioner is authorized to practice
patent, trademark, or other non-patent law before
the Office; and
(vii) Serve all notices required by paragraphs
(b)(1)(ii) and (b)(1)(iii) of this section by certified
mail, return receipt requested, unless mailed
abroad. If mailed abroad, all notices shall be
served with a receipt to be signed and returned to
the practitioner.
(2) Within forty-five days after entry of the order
of suspension, exclusion, or of acceptance of
resignation, the practitioner shall file with the OEDDirector an affidavit of compliance certifying that the
practitioner has fully complied with the provisions of
the order, this section, and with the Mandatory
Disciplinary Rules identified in § 10.20 (b) of this
subchapter for withdrawal from representation.
Appended to the affidavit of compliance shall be:
(i) A copy of each form of notice, the names
and addresses of the clients, practitioners, courts,
and agencies to which notices were sent, and all
return receipts or returned mail received up to the
date of the affidavit. Supplemental affidavits shall
be filed covering subsequent return receipts and
returned mail. Such names and addresses of clients
shall remain confidential unless otherwise ordered
by the USPTO Director;
(ii) A schedule showing the location, title and
account number of every bank account designated
as a client or trust account, deposit account in the
Office, or other fiduciary account, and of every
account in which the practitioner holds or held as
of the entry date of the order any client, trust, or
fiduciary funds for practice before the Office;
(iii) A schedule describing the practitioner’s
disposition of all client and fiduciary funds for
practice before the Office in the practitioner’s
possession, custody or control as of the date of
the order or thereafter;
(iv) Such proof of the proper distribution of
said funds and the closing of such accounts as has
been requested by the OED Director, including
copies of checks and other instruments;
(v) A list of all other State, Federal, and
administrative jurisdictions to which the
practitioner is admitted to practice; and
(vi) An affidavit describing the precise nature
of the steps taken to remove from any telephone,
legal, or other directory any advertisement,
statement, or representation which would
reasonably suggest that the practitioner is
authorized to practice patent, trademark, or other
non-patent law before the Office. The affidavit
shall also state the residence or other address of
the practitioner to which communications may
thereafter be directed, and list all State and Federal
jurisdictions, and administrative agencies to which
the practitioner is admitted to practice. The OED
Director may require such additional proof as is
deemed necessary. In addition, for the period of
discipline, an excluded or suspended practitioner,
or a practitioner transferred to disability inactive
status shall continue to file a statement in
accordance with § 11.11 , regarding any change
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 of residence or other address to which
communications may thereafter be directed, so
that the excluded or suspended practitioner, or
practitioner transferred to disability inactive status
may be located if a grievance is received regarding
any conduct occurring before or after the exclusion
or suspension. The practitioner shall retain copies
of all notices sent and shall maintain complete
records of the steps taken to comply with the
notice requirements.
(3) Not hold himself or herself out as authorized to
practice law before the Office.
(4) Not advertise the practitioner’s availability or
ability to perform or render legal services for any
person having immediate or prospective business before
the Office as to that business.
(5) Not render legal advice or services to any person
having immediate or prospective business before the
Office as to that business.
(6) Promptly take steps to change any sign
identifying the practitioner’s or the practitioner’s firm’s
office and the practitioner’s or the practitioner’s firm’s
stationery to delete therefrom any advertisement,
statement, or representation which would reasonably
suggest that the practitioner is authorized to practice
law before the Office.
(c) An excluded, suspended or resigned practitioner,
or practitioner transferred to disability inactive status after
entry of the order of exclusion or suspension, acceptance
of resignation, or transfer to disability inactive status shall
not accept any new retainer regarding immediate or
prospective business before the Office, or engage as a
practitioner for another in any new case or legal matter
regarding practice before the Office. The excluded,
suspended or resigned practitioner, or practitioner
transferred to disability inactive status shall be granted
limited recognition for a period of thirty days. During the
thirty-day period of limited recognition, the excluded,
suspended or resigned practitioner, or practitioner
transferred to disability inactive status shall conclude
work on behalf of a client on any matters that were
pending before the Office on the date of entry of the order
of exclusion or suspension, or acceptance of resignation.
If such work cannot be concluded, the excluded,
suspended or resigned practitioner, or practitioner
transferred to disability inactive status shall so advise the
client so that the client may make other arrangements.
(d)  Required records . An excluded, suspended or
resigned practitioner, or practitioner transferred to
disability inactive status shall keep and maintain records
of the various steps taken under this section, so that in
any subsequent proceeding proof of compliance with thissection and with the exclusion or suspension order will
be available. The OED Director will require the
practitioner to submit such proof as a condition precedent
to the granting of any petition for reinstatement.
(e) An excluded, suspended or resigned practitioner,
or practitioner on disability inactive status who aids
another practitioner in any way in the other practitioner’s
practice of law before the Office, may, under the direct
supervision of the other practitioner, act as a paralegal
for the other practitioner or perform other services for the
other practitioner which are normally performed by
laypersons, provided:
(1) The excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status is a salaried employee of:
(i) The other practitioner;
(ii) The other practitioner’s law firm; or
(iii) A client-employer who employs the other
practitioner as a salaried employee;
(2) The other practitioner assumes full professional
responsibility to any client and the Office for any work
performed by the excluded, suspended or resigned
practitioner for the other practitioner;
(3) The excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status does not:
(i) Communicate directly in writing, orally,
or otherwise with a client of the other practitioner
in regard to any immediate or prospective business
before the Office;
(ii) Render any legal advice or any legal
services to a client of the other practitioner in
regard to any immediate or prospective business
before the Office; or
(iii) Meet in person or in the presence of the
other practitioner in regard to any immediate or
prospective business before the Office, with:
(A) Any Office employee in
connection with the prosecution of any
patent, trademark, or other case;
(B) Any client of the other practitioner,
the other practitioner’s law firm, or the
client-employer of the other practitioner;
or
(C) Any witness or potential witness
whom the other practitioner, the other
practitioner’s law firm, or the other
practitioner’s client-employer may or
intends to call as a witness in any
proceeding before the Office. The term
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 “witness” includes individuals who will
testify orally in a proceeding before, or
sign an affidavit or any other document to
be filed in, the Office.
(f) When an excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status acts as a paralegal or performs services
under paragraph (e) of this section, the practitioner shall
not thereafter be reinstated to practice before the Office
unless:
(1) The practitioner shall have filed with the OED
Director an affidavit which:
(i) Explains in detail the precise nature of all
paralegal or other services performed by the
excluded, suspended or resigned practitioner, or
practitioner transferred to disability inactive status,
and
(ii) Shows by clear and convincing evidence
that the excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status has complied with the provisions
of this section and all Mandatory Disciplinary
Rules identified in § 10.20 (b) of this subchapter;
and
(2) The other practitioner shall have filed with the
OED Director a written statement which:
(i) Shows that the other practitioner has read
the affidavit required by paragraph (d)(1) of this
section and that the other practitioner believes
every statement in the affidavit to be true, and
(ii) States why the other practitioner believes
that the excluded, suspended or resigned
practitioner, or practitioner transferred to disability
inactive status has complied with paragraph (c)
of this section.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.59Dissemination of disciplinary and other
information.
(a) The OED Director shall inform the public of the
disposition of each matter in which public discipline has
been imposed, and of any other changes in a practitioner’s
registration status. Public discipline includes exclusion,
as well as exclusion on consent; suspension; and public
reprimand. Unless otherwise ordered by the USPTO
Director, the OED Director shall give notice of public
discipline and the reasons for the discipline to disciplinary
enforcement agencies in the State where the practitioner
is admitted to practice, to courts where the practitioner is
known to be admitted, and the public. If public discipline
is imposed, the OED Director shall cause a final decisionof the USPTO Director to be published. Final decisions
of the USPTO Director include default judgments. See §
11.54 (a)(2). If a private reprimand is imposed, the OED
Director shall cause a redacted version of the final
decision to be published.
(b) Records available to the public . Unless the
USPTO Director orders that the proceeding or a portion
of the record be kept confidential, the OED Director’s
records of every disciplinary proceeding where a
practitioner is reprimanded, suspended, or excluded,
including when said sanction is imposed by default
judgment, shall be made available to the public upon
written request, except that information may be withheld
as necessary to protect the privacy of third parties or as
directed in a protective order issued pursuant to §
11.44 (c). The record of a proceeding that results in a
practitioner’s transfer to disability inactive status shall
not be available to the public.
(c) Access to records of exclusion by consent . Unless
the USPTO Director orders that the proceeding or a
portion of the record be kept confidential, an order
excluding a practitioner on consent under § 11.27  and the
affidavit required under paragraph (a) of § 11.27  shall be
available to the public, except that information in the order
or affidavit may be withheld as necessary to protect the
privacy of third parties or as directed in a protective order
under § 11.44 (c). The affidavit required under paragraph
(a) of § 11.27  shall not be used in any other proceeding
except by order of the USPTO Director or upon written
consent of the practitioner.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.60Petition for reinstatement.
(a)  Restrictions on reinstatement . An excluded,
suspended or resigned practitioner shall not resume
practice of patent, trademark, or other non-patent law
before the Office until reinstated by order of the OED
Director or the USPTO Director.
(b) Petition for reinstatement . An excluded or
suspended practitioner shall be eligible to apply for
reinstatement only upon expiration of the period of
suspension or exclusion and the practitioner’s full
compliance with § 11.58 . An excluded practitioner shall
be eligible to apply for reinstatement no earlier than at
least five years from the effective date of the exclusion.
A resigned practitioner shall be eligible to petition for
reinstatement and must show compliance with § 11.58
no earlier than at least five years from the date the
practitioner’s resignation is accepted and an order is
entered excluding the practitioner on consent.
(c) Review of reinstatement petition . An excluded,
suspended or resigned practitioner shall file a petition for
reinstatement accompanied by the fee required by §
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 1.21(a)(10) of this subchapter. The petition for
reinstatement shall be filed with the OED Director. An
excluded or suspended practitioner who has violated any
provision of § 11.58  shall not be eligible for reinstatement
until a continuous period of the time in compliance with
§ 11.58  that is equal to the period of suspension or
exclusion has elapsed. A resigned practitioner shall not
be eligible for reinstatement until compliance with § 11.58
is shown. If the excluded, suspended or resigned
practitioner is not eligible for reinstatement, or if the OED
Director determines that the petition is insufficient or
defective on its face, the OED Director may dismiss the
petition. Otherwise the OED Director shall consider the
petition for reinstatement. The excluded, suspended or
resigned practitioner seeking reinstatement shall have the
burden of proof by clear and convincing evidence. Such
proof shall be included in or accompany the petition, and
shall establish:
(1) That the excluded, suspended or resigned
practitioner has the good moral character and
reputation, competency, and learning in law required
under § 11.7 for admission;
(2) That the resumption of practice before the
Office will not be detrimental to the administration of
justice or subversive to the public interest; and
(3) That the suspended practitioner has complied
with the provisions of § 11.58  for the full period of
suspension, that the excluded practitioner has complied
with the provisions of § 11.58  for at least five
continuous years, or that the resigned practitioner has
complied with § 11.58  upon acceptance of the
resignation.
(d)  Petitions for reinstatement —  Action by the OED
Director granting reinstatement . (1) If the excluded,
suspended or resigned practitioner is found to have
complied with paragraphs(c)(1) through (c)(3) of this
section, the OED Director shall enter an order of
reinstatement, which shall be conditioned on payment of
the costs of the disciplinary proceeding to the extent set
forth in paragraphs (d)(2) and (3) of this section.
(2)  Payment of costs of disciplinary proceedings .
Prior to reinstatement to practice, the excluded or
suspended practitioner shall pay the costs of the
disciplinary proceeding. The costs imposed pursuant
to this section include all of the following:
(i) The actual expense incurred by the OED
Director or the Office for the original and copies
of any reporter’s transcripts of the disciplinary
proceeding, and any fee paid for the services of
the reporter;(ii) All expenses paid by the OED Director or
the Office which would qualify as taxable costs
recoverable in civil proceedings; and
(iii) The charges determined by the OED
Director to be “reasonable costs” of investigation,
hearing, and review. These amounts shall serve
to defray the costs, other than fees for services of
attorneys and experts, of the Office of Enrollment
and Discipline in the preparation or hearing of the
disciplinary proceeding, and costs incurred in the
administrative processing of the disciplinary
proceeding.
(3) An excluded or suspended practitioner may
be granted relief, in whole or in part, only from
an order assessing costs under this section or may
be granted an extension of time to pay these costs,
in the discretion of the OED Director, upon
grounds of hardship, special circumstances, or
other good cause.
(e) Petitions for reinstatement  — Action by the OED
Director denying reinstatement . If the excluded,
suspended or resigned practitioner is found unfit to resume
the practice of patent law before the Office, the OED
Director shall first provide the excluded, suspended or
resigned practitioner with an opportunity to show cause
in writing why the petition should not be denied. Failure
to comply with § 11.12  (c) shall constitute unfitness. If
unpersuaded by the showing, the OED Director shall deny
the petition. The OED Director may require the excluded,
suspended or resigned practitioner, in meeting the
requirements of § 11.7, to take and pass an examination
under § 11.7 (b), ethics courses, and/or the Multistate
Professional Responsibility Examination. The OED
Director shall provide findings, together with the record.
The findings shall include on the first page, immediately
beneath the caption of the case, a separate section entitled
“Prior Proceedings” which shall state the docket number
of the original disciplinary proceeding in which the
exclusion or suspension was ordered.
(f)  Resubmission of petitions for reinstatement . If a
petition for reinstatement is denied, no further petition
for reinstatement may be filed until the expiration of at
least one year following the denial unless the order of
denial provides otherwise.
(g)  Reinstatement proceedings open to public .
Proceedings on any petition for reinstatement shall be
open to the public. Before reinstating any excluded or
suspended practitioner, the OED Director shall publish a
notice of the excluded or suspended practitioner’s petition
for reinstatement and shall permit the public a reasonable
opportunity to comment or submit evidence with respect
to the petition for reinstatement.
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 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.61Savings clause.
(a) A disciplinary proceeding based on conduct
engaged in prior to September 15, 2008 may be instituted
subsequent to such effective date, if such conduct would
continue to justify suspension or exclusion under the
provisions of this part.
(b) No practitioner shall be subject to a disciplinary
proceeding under this part based on conduct engaged in
before the effective date hereof if such conduct would not
have been subject to disciplinary action before September
15, 2008.
(c) Sections 11.24 , 11.25 , 11.28  and 11.34  through
11.57  shall apply to all proceedings in which the
complaint is filed on or after the effective date of these
regulations. Section 11.26  and 11.27  shall apply to matters
pending on or after September 15, 2008.
(d) Sections 11.58  through 11.60  shall apply to all
cases in which an order of suspension or exclusion is
entered or resignation is accepted on or after September
15, 2008.
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§ 
11.62
-11.99[Reserved]
II
II  RULES RELATING TO REPRESENTATION OF
OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
A
Address change ............................................ 10.11, 11.11
Advertising ................................................... 10.31, 10.32
Agents, registration of ............................................... 11.6
Agreements restricting practice..............................10.38
Aliens ............................................................... 11.6, 11.9
Applicant for patent, representation of..........1.31, 11.10
Attorneys, recognition of to practice in trademark
cases........................................................................11.14
Attorneys, registration of to practice in patent
cases ................................................................. 11.6, 11.7
B
Breach of trust.........................................................10.23
Business transactions or relations with client.........10.65
C
Candidate for judicial office.................................10.103
Canons and disciplinary rules ................... 10.20 - 10.112
Certificate of mailing.......................................1.8, 10.23Certification effect of signature..............................11.18
Circumventing a disciplinary rule, amendment......10.23
Code of Professional Responsibility ......... 10.20 - 10.112
Coercion, Use of.....................................................10.23
Committee on Discipline .......................................... 10.4
Communicating with person having adverse
interest.....................................................................10.67
Communications concerning practitioner’s
service.....................................................................10.31
Compensation for legal services.............................10.68
Competence .................................................. 10.76, 10.77
Complaint instituting disciplinary proceedings......11.34
Concealment of material information ..................... 10.23
Conduct in proceeding before Office......................10.89
Conduct prejudicial to the administration of
justice......................................................................10.23
Conflict of interest..................................................10.66
Conviction of criminal offense................................10.23
D
Deceit ...................................................................... 10.23
Decisions of the USPTO Director................11.56, 11.57
Definitions:.............................................................10.34
Affidavit.............................................................10.1
Agent..................................................................11.6
Application........................................................10.1
Attorney or lawyer.............................................11.1
Canon...............................................................10.20
Confidence ....................................................... 10.57
Differing interests..............................................10.1
Director of Enrollment and Discipline..............10.1
Disciplinary rule..............................................10.20
Disqualified........................................................11.1
Excessive legal fees ......................................... 10.36
Excluded practitioner ......................................... 10.1
Federal agency ................................................... 11.1
Federal program ................................................. 11.1
Giving information ............................................ 10.1
Invention development services ....................... 10.23
Law firm ............................................................ 10.1
Legal counsel ..................................................... 10.1
Legal profession ................................................. 10.1
Legal service ...................................................... 10.1
Legal system......................................................10.1
Mandatory Disciplinary Rule............................11.1
Non-practitioner.................................................10.1
Office.................................................................10.1
Person................................................................10.1
Practitioner.........................................................10.1
Proceeding before the Office ............................. 10.1
Professional legal corporation ........................... 10.1
Registration........................................................10.1
Respondent......................................................11.34
Secret .................................................... 10.33, 10.57
Serious crime ..................................................... 11.1
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 State .......................................................... 10.1, 11.1
Suspended practitioner.......................................10.1
Tribunal..............................................................10.1
United States ...................................................... 10.1
Affidavit.............................................................10.1
Agent..................................................................11.6
Application........................................................10.1
Attorney or lawyer.............................................11.1
Canon...............................................................10.20
Confidence ....................................................... 10.57
Differing interests..............................................10.1
Director of Enrollment and Discipline..............10.1
Disciplinary rule..............................................10.20
Disqualified........................................................11.1
Excessive legal fees.........................................10.36
Excluded practitioner ......................................... 10.1
Federal agency ................................................... 11.1
Federal program ................................................. 11.1
Giving information ............................................ 10.1
Invention development services ....................... 10.23
Law firm ............................................................ 10.1
Legal counsel ..................................................... 10.1
Legal profession ................................................. 10.1
Legal service ...................................................... 10.1
Legal system......................................................10.1
Mandatory Disciplinary Rule............................11.1
Non-practitioner.................................................10.1
Office.................................................................10.1
Person................................................................10.1
Practitioner.........................................................10.1
Proceeding before the Office ............................. 10.1
Professional legal corporation ........................... 10.1
Registration........................................................10.1
Respondent......................................................11.34
Secret .................................................... 10.33, 10.57
Serious crime ..................................................... 11.1
State .......................................................... 10.1, 11.1
Suspended practitioner.......................................10.1
Tribunal..............................................................10.1
United States ...................................................... 10.1
Designation as registered attorney or agent............10.34
Direct contact with prospective clients...................10.33
Director of Enrollment and Discipline:...................10.40
Appointment......................................................11.2
Duties................................................................. 11.2
Review of decisions of OED Director...............11.2
Appointment......................................................11.2
Duties.................................................................11.2
Review of decisions of OED Director...............11.2
Discharge of attorney or agent by client.................10.40
Disciplinary proceedings and investigations:..........10.89
Amendment of pleadings.................................11.45
Answer to complaint ........................................ 11.36
Appeal to the USPTO Director........................11.55
Burden of proof................................................11.49Certificate of mailing...........................................1.8
Committee on Discipline ................................. 11.23
Complaint........................................................11.34
Contested case.................................................11.38
Deliberations of Committee on Discipline........10.4
Discovery in Disciplinary Proceedings............11.52
Duties of disciplined or resigned practitioner...11.58
Exclusion on consent.......................................11.27
Filing papers after complaint filed...................11.41
Hearing officer ................................................. 11.39
Hearings...........................................................11.44
Incapacitated practitioners ............................... 11.28
Initial decision of hearing officer....................11.54
Instituting disciplinary proceeding..................11.32
Investigations of violations of disciplinary rules
......................................................................... 11.22
Post hearing memorandum..............................11.53
Reciprocal discipline.......................................11.24
Reciprocal transfer ........................................... 11.29
Reinstatement of suspended or excluded
practitioner ....................................................... 11.60
Representative for OED Director/respondent...11.40
Review of decision denying reinstatement of
practitioner.........................................................11.2
Review of interlocutory orders by hearing
officer...............................................................11.39
Savings clause..................................................11.61
Service of complaint........................................11.35
Service of papers..............................................11.42
Settlement of complaint...................................11.26
Warnings..........................................................11.21
Amendment of pleadings.................................11.45
Answer to complaint ........................................ 11.36
Appeal to the USPTO Director........................11.55
Burden of proof................................................11.49
Certificate of mailing...........................................1.8
Committee on Discipline ................................. 11.23
Complaint........................................................11.34
Contested case ................................................. 11.38
Deliberations of Committee on Discipline........10.4
Discovery in Disciplinary Proceedings............11.52
Duties of disciplined or resigned practitioner...11.58
Exclusion on consent.......................................11.27
Filing papers after complaint filed...................11.41
Hearing officer ................................................. 11.39
Hearings...........................................................11.44
Incapacitated practitioners ............................... 11.28
Initial decision of hearing officer....................11.54
Instituting disciplinary proceeding..................11.32
Investigations of violations of disciplinary rules
......................................................................... 11.22
Post hearing memorandum..............................11.53
Reciprocal discipline.......................................11.24
Reciprocal transfer ........................................... 11.29
Reinstatement of suspended or excluded
practitioner ....................................................... 11.60
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 Representative for OED Director/respondent...11.40
Review of decision denying reinstatement of
practitioner.........................................................11.2
Review of interlocutory orders by hearing
officer...............................................................11.39
Savings clause..................................................11.61
Service of complaint........................................11.35
Service of papers..............................................11.42
Settlement of complaint...................................11.26
Warnings..........................................................11.21
Disciplinary rule violation......................................10.89
Disclosure of...................10.23, 10.24, 10.84, 10.85
Disclosure of...................10.23, 10.24, 10.84, 10.85
Discourteous conduct..............................................10.89
Discovery in disciplinary proceedings:...................10.37
Deliberations of committee on discipline..........10.4
Depositions......................................................11.51
Discovery.........................................................11.52
Evidence..........................................................11.50
Motions filed with hearing officer...................11.43
Deliberations of committee on discipline..........10.4
Depositions......................................................11.51
Discovery.........................................................11.52
Evidence..........................................................11.50
Motions filed with hearing officer...................11.43
Division of legal fees..............................................10.37
Duress, use of..........................................................10.23
Duty to make counsel available..............................10.30
E
Employment:...........................................................10.36
Acceptance.......................................................10.39
Failure to carry out contract ............................. 10.84
Refusing employment ................ 10.62, 10.63, 10.66
Withdrawal from employment....10.40, 10.63, 10.66
Acceptance.......................................................10.39
Failure to carry out contract ............................. 10.84
Refusing employment ................ 10.62, 10.63, 10.66
Withdrawal from employment....10.40, 10.63, 10.66
Excessive legal fees.................................................10.36
F
Failure to disclose material fact with regard to
registration..............................................................10.22
Failure to notify client.............................................10.23
False accusations ..................................................... 10.23
False statements concerning officials...................10.102
Favors, improperly bestowing ................................. 10.23
Fees:........................................................................10.35
Annual practitioner maintenance fee:....1.21(a)(9)(i)
Registered attorney or agent...........1.21(a)(7), 11.8(d)
Registered attorney or agent...............1.21(a)(7), 11.8(d)
Individual granted limited recognition........1.21(a)(8)
Individual granted limited recognition............1.21(a)(8)Delinquency..........................................1.21(a)(9)(i)
Petition to review decision of Director of Enrollment
and Discipline ........................................... 1.21(a)(5)
Registration for admission to
examination..............................................1.21(a)(1)
Registration to practice.............................1.21(a)(2)
Reinstatement......................................1.21(a)(9)(ii)
Annual practitioner maintenance fee:....1.21(a)(9)(i)
Registered attorney or agent...........1.21(a)(7), 11.8(d)
Registered attorney or agent...............1.21(a)(7), 11.8(d)
Individual granted limited recognition........1.21(a)(8)
Individual granted limited recognition............1.21(a)(8)
Delinquency..........................................1.21(a)(9)(i)
Petition to review decision of Director of Enrollment
and Discipline ........................................... 1.21(a)(5)
Registration for admission to
examination..............................................1.21(a)(1)
Registration to practice.............................1.21(a)(2)
Reinstatement......................................1.21(a)(9)(ii)
Firm name, use of...................................................10.35
Fitness to practice before the Office.......................10.23
Foreigners ............................................. 11.6, 11.9, 11.14
Former Patent and Trademark Office employees ...10.23,
11.7, 11.10
Fraud or inequitable conduct.......................10.23, 10.85
Frivolous complaint ................................................ 10.23
Funds of client, preserving identity of..................10.112
G
Gift, improperly bestowing ..................................... 10.23
Government employees, registration of to practice in
patent cases.............................................................11.10
I
Illegal conduct involving moral turpitude...............10.23
Illegal fees for services...........................................10.36
Improper alteration of patent application................10.23
Improper execution of oath or declaration..............10.23
Improper influence .................................................. 10.23
Improper signature .................................................. 10.23
Improperly bestowing thing of value......................10.23
Incompetence ............................................... 10.77, 10.78
Indecent statement, making of. ............................... 10.23
Independent professional judgment, exercise of .....10.61,
10.62, 10.66, 10.68
Individual unqualified in respect to character, education,
etc................................................................... 10.22, 11.7
Influence by others than client................................10.68
Information precluding registration, failure to
disclose....................................................................10.22
Integrity and competence of the legal profession,
maintaining of ......................................................... 10.22
Interest in litigation or proceeding before Office, acquiring
of............................................................................. 10.64
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 J
Joint venture............................................................10.23
Judicial office, candidate for ................................. 10.103
L
Legal fees: ............................................................. 10.100
Division of ....................................................... 10.37
Failure to pay...................................................10.40
Sharing of ......................................................... 10.48
Division of ....................................................... 10.37
Failure to pay...................................................10.40
Sharing of ......................................................... 10.48
Legal system, assistance in improving the............10.100
Letterheads, use of .................................................. 10.35
Limited recognition to practice in patent matters.....11.9
M
Malpractice, limiting client’s liability ..................... 10.78
Materially false statements in application for
registration..............................................................10.22
Misappropriation of funds.......................................10.23
Misconduct..............................................................10.23
Misrepresentations ....................................... 10.22, 10.23
Multiple employment..............................................10.66
N
Neglecting legal matters .......................................... 10.77
Non-practitioner, formation of partnership with.....10.49
O
Oath requirement......................................................11.8
Officials, contact with.............................................10.93
P
Petitions: ...................................................... 10.56, 10.57
Reinstatement..................................................11.60
Review of final decision of USPTO Director...11.57
Review decision of Director of Enrollment and
Discipline...........................................................11.2
Suspension of rules........................................10.170
Reinstatement..................................................11.60
Review of final decision of USPTO Director...11.57
Review decision of Director of Enrollment and
Discipline...........................................................11.2
Suspension of rules........................................10.170
Preserve secrets and confidence of client.....10.56, 10.57
Professional impropriety, avoiding appearance
of.............................................................. 10.110, 10.111
Promise of advantage, offer of................................10.23
Property of client...................................................10.112
Proprietary interest in subject matter......................10.64
Publication in  Official Gazette...............................10.11R
Recognition to practice before the Patent and Trademark
Office:...................................................................10.112
Agents ....................................... 11.511.611.7, 11.14
Aliens ............................................. 11.6, 11.7, 11.14
Attorneys ............................... 11.5, 11.6, 11.7, 11.14
Change of address, requirement to notify
Director ................................................. 10.11, 11.11
Examination for registration in patent cases......11.7
Examination fees ...................................... 1.21, 11.7
Foreigners ...................................... 11.6, 11.9, 11.14
Former Patent and Trademark Office
employees .................................... 10.23, 11.7, 11.10
Government employees........................10.23, 11.10
Limited recognition in patent cases...................11.9
Non-lawyers, recognition in trademark cases...11.14
Recognition for representation...............1.34, 11.14
Refusal to recognize practitioner.....................11.15
Register of attorneys and agents in patent
cases ................................................................... 11.5
Registration fee .................................................. 1.21
Registration number...........................................1.34
Removal of attorneys and agents from the
register.............................................................10.11
Representation by registered attorney or agent in
patent cases........................................................1.31
Requirements for registration............................11.7
Review of Director’s decision refusing
registration.........................................................11.2
Trademark cases .............................................. 11.14
Unauthorized representation by an agent .....10.31,
11.10
Agents ....................................... 11.511.611.7, 11.14
Aliens ............................................. 11.6, 11.7, 11.14
Attorneys ............................... 11.5, 11.6, 11.7, 11.14
Change of address, requirement to notify
Director ................................................. 10.11, 11.11
Examination for registration in patent cases......11.7
Examination fees ...................................... 1.21, 11.7
Foreigners ...................................... 11.6, 11.9, 11.14
Former Patent and Trademark Office
employees .................................... 10.23, 11.7, 11.10
Government employees........................10.23, 11.10
Limited recognition in patent cases...................11.9
Non-lawyers, recognition in trademark cases...11.14
Recognition for representation...............1.34, 11.14
Refusal to recognize practitioner.....................11.15
Register of attorneys and agents in patent
cases ................................................................... 11.5
Registration fee .................................................. 1.21
Registration number...........................................1.34
Removal of attorneys and agents from the
register.............................................................10.11
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 Representation by registered attorney or agent in
patent cases........................................................1.31
Requirements for registration............................11.7
Review of Director’s decision refusing
registration.........................................................11.2
Trademark cases .............................................. 11.14
Unauthorized representation by an agent .....10.31,
11.10
Records, property and funds of client, maintaining
of...........................................................................10.112
Reinstatement after removal from the register........10.11
Reinstatement of excluded or suspended
practitioner..............................................................11.60
Representing client within bounds of the law.........10.85
S
Scandalous statements, making of..........................10.23
Secrets and confidence, preservation of clients .....10.56,
10.57
Settlement of claims of clients................................10.67
Sharing legal fees....................................................10.48
Signature and certificate of practitioner..................11.18
Solicitation ................................................... 10.32, 10.33
Statement concerning officials, making false.......10.102
Suspension of practitioner.......................................10.23
Based on conviction of a serious crime...........11.25
Based on conviction of a serious crime...........11.25
Rules..................................................................11.3
Rules..................................................................11.3
T
Threats of criminal prosecution..............................10.88
Threats, use of.........................................................10.23
U
Unauthorized practice ............ 10.23, 10.31, 10.46, 10.47
Undignified conduct ................................................ 10.89
V
Violating duty of candor and good faith.................10.23
Violation of disciplinary rule, misconduct..............10.23
W
Withdrawal from employment................................10.40
Witnesses ..................................................... 10.63, 10.92
Z
Zealously representing the client.................10.83, 10.84
PART  - 15   [Reserved]
[Part 15 removed and reserved, 61 FR 42807, Aug. 19, 1996]
PART  - 15a   [Reserved][Part 15a removed and reserved, 61 FR 42807, Aug. 19, 1996]
PART  - 41   PRACTICE BEFORE THE BOARD OF PATENT
APPEALS AND INTERFERENCES
Subpart A  — General Provisions
§  41.1 Policy.
(a) Scope . Part 41 governs proceedings before the
Board of Patent Appeals and Interferences. Sections 1.1
to 1.36 and 1.181  to 1.183  of this title also apply to
practice before the Board, as do other sections of part 1
of this title that are incorporated by reference into part
41.
(b)  Construction . The provisions of Part 41 shall be
construed to secure the just, speedy, and inexpensive
resolution of every proceeding before the Board.
(c)  Decorum. Each party must act with courtesy and
decorum in all proceedings before the Board, including
interactions with other parties.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§  41.2 Definitions.
Unless otherwise clear from the context, the following
definitions apply to proceedings under this part:
Affidavit  means affidavit, declaration under §  1.68  of this
title, or statutory declaration under 28 U.S.C. 1746. A
transcript of an ex parte deposition may be used as an
affidavit in a contested case.
 Board means the Board of Patent Appeals and
Interferences and includes:
(1) For a final Board action:
(i) In an appeal or contested case, a panel of the
Board.
(ii) In a proceeding under §  41.3 , the Chief
Administrative Patent Judge or another official acting
under an express delegation from the Chief
Administrative Patent Judge.
(2) For non-final actions, a Board member or
employee acting with the authority of the Board.
 Board member  means the Under Secretary of Commerce
for Intellectual Property and Director of the United States
Patent and Trademark Office, the Deputy Under Secretary
of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark
Office, the Commissioner for Patents, the Commissioner
for Trademarks, and the administrative patent judges.
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 Contested case  means a Board proceeding other than an
appeal under 35 U .S.C. 134  or a petition under §  41.3 .
An appeal in an  inter partes reexamination is not a
contested case.
 Final  means, with regard to a Board action, final for the
purposes of judicial review. A decision is final only if:
(1)  In a panel proceeding . The decision is rendered
by a panel, disposes of all issues with regard to the party
seeking judicial review, and does not indicate that further
action is required; and
(2)  In other proceedings . The decision disposes of
all issues or the decision states it is final. Hearing means
consideration of the issues of record.  Rehearing  means
reconsideration. Office  means United States Patent and
Trademark Office. Panel  means at least three Board
members acting in a panel proceeding. Panel proceeding
means a proceeding in which final action is reserved by
statute to at least three Board members, but includes a
non-final portion of such a proceeding whether
administered by a panel or not. Party , in this part, means
any entity participating in a Board proceeding, other than
officers and employees of the Office, including:
(1) An appellant;
(2) A participant in a contested case;
(3) A petitioner; and
(4) Counsel for any of the above, where context
permits.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  41.3 Petitions.
(a)  Deciding official . Petitions must be addressed to
the Chief Administrative Patent Judge. A panel or an
administrative patent judge may certify a question of
policy to the Chief Administrative Patent Judge for
decision. The Chief Administrative Patent Judge may
delegate authority to decide petitions.
(b) Scope . This section covers petitions on matters
pending before the Board (§§ 41.35, 41.64 ,  41.103 , and
41.205 ); otherwise, see §§ 1.181  to 1.183 of this title. The
following matters are not subject to petition:
(1) Issues committed by statute to a panel, and
(2) In pending contested cases, procedural issues.
See § 41.121 (a)(3) and §  41.125 (c).
(c) Petition fee . The fee set in §  41.20 (a) must
accompany any petition under this section except no fee
is required for a petition under this section seeking
supervisory review.(d)  Effect on proceeding. The filing of a petition does
not stay the time for any other action in a Board
proceeding.
(e)  Time for action .
(1) Except as otherwise provided in this part or as
the Board may authorize in writing, a party may:
(i) File the petition within 14 days from the
date of the action from which the party is
requesting relief, and
(ii) File any request for reconsideration of a
petition decision within 14 days of the decision
on petition or such other time as the Board may
set.
(2) A party may not file an opposition or a reply to
a petition without Board authorization.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (e)(1) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30,
2004]
§  41.4 Timeliness.
(a)  Extensions of time . Extensions of time will be
granted only on a showing of good cause except as
otherwise provided by rule.
(b) Late filings . (1) A late filing that results in either
an application becoming abandoned or a reexamination
prosecution becoming terminated under §§ 1.550 (d) or
1.957 (b) of this title or limited under § 1.957 (c) of this
title may be revived as set forth in § 1.137  of this title.
(2) A late filing that does not result in either an
application becoming abandoned or a reexamination
prosecution becoming terminated under §§ 1.550 (d) or
1.957 (b) of this title or limited under § 1.957 (c) of this
title will be excused upon a showing of excusable
neglect or a Board determination that consideration on
the merits would be in the interest of justice.
(c)  Scope. This section governs all proceedings before
the Board, but does not apply to filings related to Board
proceedings before or after the Board has jurisdiction,
such as:
(1) Extensions during prosecution (see §  1.136  of
this title),
(2) Filing of a brief or request for oral hearing (see
§§ 41.37 , 41.41 , 41.47, 41.67 , 41.68 , 41.71  and 41.73 ),
or
(3) Seeking judicial review (see §§ 1.301  to  1.304
of this title).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (b) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§  41.5 Counsel.
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 While the Board has jurisdiction:
(a)  Appearance pro hac vice . The Board may
authorize a person other than a registered practitioner to
appear as counsel in a specific proceeding.
(b)  Disqualification . (1) The Board may disqualify
counsel in a specific proceeding after notice and an
opportunity to be heard.
(2) A decision to disqualify is not final for the
purposes of judicial review until certified by the Chief
Administrative Patent Judge.
(c) Withdrawal . Counsel may not withdraw from a
proceeding before the Board unless the Board authorizes
such withdrawal. See § 10.40  of this title regarding
conditions for withdrawal.
(d)  Procedure . The Board may institute a
proceeding under this section on its own or a party in
a contested case may request relief under this section.
(e) Referral to the Director of Enrollment and
Discipline . Possible violations of the disciplinary rules
in part 11 of this subchapter may be referred to the
Office of Enrollment and Discipline for investigation.
See § 11.22  of this subchapter.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (e) revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15, 2008]
§  41.6 Public availability of Board records.
(a) Publication . (1) Generally . Any Board action is
available for public inspection without a party’s
permission if rendered in a file open to the public pursuant
to § 1.11  of this title or in an application that has been
published in accordance with §§  1.211  to 1.221  of this
title. The Office may independently publish any Board
action that is available for public inspection.
(2)  Determination of special circumstances . Any
Board action not publishable under paragraph (a)(1) of
this section may be published or made available for
public inspection if the Director believes that special
circumstances warrant publication and a party does
not, within two months after being notified of the
intention to make the action public, object in writing
on the ground that the action discloses the objecting
party’s trade secret or other confidential information
and states with specificity that such information is not
otherwise publicly available. If the action discloses
such information, the party shall identify the deletions
in the text of the action considered necessary to protect
the information. If the affected party considers that the
entire action must be withheld from the public to
protect such information, the party must explain why.
The party will be given time, not less than twenty days,
to request reconsideration and seek court review beforeany contested portion of the action is made public over
its objection.
(b)  Record of proceeding . (1) The record of a Board
proceeding is available to the public unless a patent
application not otherwise available to the public is
involved.
(2) Notwithstanding paragraph (b)(1) of this
section, after a final Board action in or judgment in a
Board proceeding, the record of the Board proceeding
will be made available to the public if any involved file
is or becomes open to the public under § 1.11 of this
title or an involved application is or becomes published
under §§ 1.211  to 1.221  of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  41.7 Management of the record.
(a) The Board may expunge any paper directed to a
Board proceeding, or filed while an application or patent
is under the jurisdiction of the Board, that is not
authorized under this part or in a Board order, or that is
filed contrary to a Board order.
(b) A party may not file a paper previously filed in
the same Board proceeding, not even as an exhibit or
appendix, without Board authorization or as required by
rule.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  41.8 Mandatory notices.
(a) In an appeal brief (§§  41.37 , 41.67 , or  41.68 ) or
at the initiation of a contested case (§ 41.101 ), and within
20 days of any change during the proceeding, a party must
identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that
could affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review
of a Board proceeding must file a notice with the Board
of the judicial review within 20 days of the filing of the
complaint or the notice of appeal. The notice to the Board
must include a copy of the complaint or notice of appeal.
See also §§ 1.301  to 1.304  of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  41.9 Action by owner.
(a)  Entire interest . An owner of the entire interest in
an application or patent involved in a Board proceeding
may act in the proceeding to the exclusion of the inventor
(see 3.73 (b) of this title).
(b)  Part interest . An owner of a part interest in an
application or patent involved in a Board proceeding may
petition to act in the proceeding to the exclusion of an
inventor or a co-owner. The petition must show the
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 inability or refusal of an inventor or co-owner to prosecute
the proceeding or other cause why it is in the interest of
justice to permit the owner of a part interest to act in the
proceeding. An order granting the petition may set
conditions on the actions of the parties during the
proceeding.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.10Correspondence addresses.
Except as the Board may otherwise direct,
(a) Appeals . Correspondence in an application or a
patent involved in an appeal (subparts B and C of this
part) during the period beginning when an appeal
docketing notice is issued and ending when a decision
has been rendered by the Board, as well as any request
for rehearing of a decision by the Board, shall be mailed
to: Board of Patent Appeals and Interferences, United
States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450. Notices of appeal,
appeal briefs, reply briefs, requests for oral hearing, as
well as all other correspondence in an application or a
patent involved in an appeal to the Board for which an
address is not otherwise specified, should be addressed
as set out in § 1.1 (a)(1)(i) of this title.
(b)  Contested cases . Mailed correspondence in
contested cases (subpart D of this part) shall be sent to
Mail Stop INTERFERENCE, Board of Patent Appeals
and Interferences, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.11Ex parte communications in inter partes
proceedings.
An  ex parte  communication about an inter partes
reexamination (subpart C of this part) or about a contested
case (subparts D and E of this part) with a Board member,
or with a Board employee assigned to the proceeding, is
not permitted.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.12Citation of authority.
(a) For any United States Supreme Court decision,
citation to the United States Reports is preferred.
(b) For any decision other than a United States
Supreme Court decision, citation to the West Reporter
System is preferred.
(c) Citations to authority must include pinpoint
citations whenever a specific holding or portion of an
authority is invoked.(d) Non-binding authority should be used sparingly.
If the authority is not an authority of the Office and is not
reproduced in the United States Reports or the West
Reporter System, a copy of the authority should be
provided.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
revised, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.20Fees.
(a)
 Petition fee . The fee for filing a petition under this
part is: $400.00
(b)  Appeal fees . (1) For filing a notice of appeal from
the examiner to the Board:
By a small entity (§ 1.27(a) of this title) $270.00
By other than a small entity .$540.00
(2) In addition to the fee for filing a notice of
appeal, for filing a brief in support of an appeal:
By a small entity (§ 1.27(a) of this title) $270.00
By other than a small entity $540.00
(3) For filing a request for an oral hearing before
the Board in an appeal under 35 U .S.C. 134 :
By a small entity (§ 1.27(a) $540.00
By other than a small entity $1,080.00
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
paras. (b)(1) through (b)(3) revised, 69 FR 52604, Aug. 27, 2004,
effective Oct. 1, 2004; para. (b)(3) corrected, 69 FR 55505, Sept. 15,
2004, effective Oct. 1, 2004; para. (a) revised, 69 FR 56481, Sept. 21,
2004, effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27,
2005, effective Dec. 8, 2004; paras. (b)(1) through (b)(3) revised, 72
FR 46899, Aug. 22, 2007, effective Sept. 30, 2007; para. (b) revised,
73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]
Subpart B  — Ex Parte Appeals
§ 
41.30Definitions.
In addition to the definitions in § 41.2, the following
definitions apply to proceedings under this subpart unless
otherwise clear from the context:
 Applicant  means either the applicant in a national
application for a patent or the applicant in an application
for reissue of a patent.
 Evidence  means something (including testimony,
documents and tangible objects) that tends to prove or
disprove the existence of an alleged fact, except that for
the purpose of this subpart  Evidence does not include
dictionaries, which may be cited before the Board.
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 Owner  means the owner of the patent undergoing ex parte
reexamination under § 1.510  of this title.
 Proceeding  means either a national application for a
patent, an application for reissue of a patent, or an  ex
parte  reexamination proceeding. Appeal to the Board in
an  inter partes  reexamination proceeding is controlled
by subpart C of this part.
 Record means the items listed in the content listing of
the Image File Wrapper of the official file of the
application or reexamination proceeding on appeal or the
official file of the Office if other than the Image File
Wrapper, excluding amendments, Evidence, and other
documents that were not entered. In the case of an issued
patent being reissued or reexamined, the  Record further
includes the  Record of the patent being reissued or
reexamined.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
definitions for “evidence” and “record” added, 76 FR 72270, Nov. 22,
2011, effective January 23, 2012]
§ 
41.31Appeal to Board.
(a)  Who may appeal and how to file an appeal . An
appeal is taken to the Board by filing a notice of appeal.
(1) Every applicant, any of whose claims has been
twice rejected, may appeal from the decision of the
examiner to the Board by filing a notice of appeal
accompanied by the fee set forth in § 41.20 (b)(1) within
the time period provided under § 1.134  of this title for
reply.
(2) Every owner of a patent under ex parte 
reexamination filed under § 1.510  of this title before
November 29, 1999, any of whose claims has been
twice rejected, may appeal from the decision of the
examiner to the Board by filing a notice of appeal
accompanied by the fee set forth in § 41.20 (b)(1) within
the time period provided under §  1.134  of this title for
reply.
(3) Every owner of a patent under ex parte 
reexamination filed under § 1.510  of this title on or
after November 29, 1999, any of whose claims has
been finally (§ 1.113  of this title) rejected, may appeal
from the decision of the examiner to the Board by filing
a notice of appeal accompanied by the fee set forth in
§ 41.20 (b)(1) within the time period provided under §
1.134  of this title for reply.
(b) The signature requirements of §§ 1.33 and 11.18(a)
of this title do not apply to a notice of appeal filed under
this section.(c) An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and
entered by the Office. Questions relating to matters not
affecting the merits of the invention may be required to
be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1)
through (a)(3) of this section are extendable under the
provisions of § 1.136 of this title for patent applications
and § 1.550 (c) of this title for  ex parte  reexamination
proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (a) introductory text, para. (b), and para. (c) first sentence revised,
76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.33Amendments and affidavits or other Evidence
after appeal.
(a) Amendments filed after the date of filing an appeal
pursuant to § 41.31 (a)(1) through (a)(3) and prior to the
date a brief is filed pursuant to § 41.37  may be admitted
as provided in § 1.116  of this title.
(b) Amendments filed on or after the date of filing a
brief pursuant to § 41.37  may be admitted:
(1) To cancel claims, where such cancellation does
not affect the scope of any other pending claim in the
proceeding, or
(2) To rewrite dependent claims into independent
form.
(c) All other amendments filed after the date of filing
an appeal pursuant to § 41.31(a)(1) through (a)(3) will
not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i), and 41.50(b)(1).
(d)
(1) An affidavit or other Evidence filed after the
date of filing an appeal pursuant to § 41.31(a)(1)
through (a)(3) and prior to the date of filing a brief
pursuant to § 41.37 may be admitted if the examiner
determines that the affidavit or other Evidence
overcomes all rejections under appeal and that a
showing of good and sufficient reasons why the
affidavit or other Evidence is necessary and was not
earlier presented has been made.
(2) All other affidavits or other Evidence filed after
the date of filing an appeal pursuant to § 41.31(a)(1)
through (a)(3) will not be admitted except as permitted
by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
section heading and paras. (c) and (d) revised, 76 FR 72270, Nov. 22,
2011, effective January 23, 2012]
§ 
41.35Jurisdiction over appeal.
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 (a)  Beginning of jurisdiction . Jurisdiction over the
proceeding passes to the Board upon the filing of a reply
brief under § 41.41 or the expiration of the time in which
to file such a reply brief, whichever is earlier.
(b)  End of jurisdiction. The jurisdiction of the Board
ends when:
(1) The Director or the Board enters a remand order
( see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision ( see § 41.2)
and judicial review is sought or the time for seeking
judicial review has expired,
(3) An express abandonment which complies with
§ 1.138 of this title is recognized,
(4) A request for continued examination is filed
which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under
§§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the
Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to §
41.40(b) or in response to a new ground of rejection
entered in a decision of the Board (see § 41.50(b)(1)).
(c)  Remand ordered by the Director. Prior to the entry
of a decision on the appeal by the Board (see § 41.50),
the Director may sua sponte order the proceeding
remanded to the examiner.
(d)  Documents filed during Board's jurisdiction .
Except for petitions authorized by this part, consideration
of any information disclosure statement or petition filed
while the Board possesses jurisdiction over the proceeding
will be held in abeyance until the Board's jurisdiction
ends.
(e)  Administrative remands ordered by the Board . If,
after receipt and review of the proceeding, the Board
determines that the file is not complete or is not in
compliance with the requirements of this subpart, the
Board may relinquish jurisdiction to the examiner or take
other appropriate action to permit completion of the file.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
revised, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.37Appeal brief.
(a)  Timing and fee .
(1) Appellant must file a brief under this section
within two months from the date of filing the notice of
appeal under § 41.31 .
(2) The brief must be accompanied by the fee set
forth in § 41.20 (b)(2)
(b)  Failure to file a brief. On failure to file the brief,
accompanied by the requisite fee, within the periodspecified in paragraph (a) of this section, the appeal will
stand dismissed.
(c)  Content of appeal brief .
(1) Except as otherwise provided in this paragraph,
the brief shall contain the following items under
appropriate headings and in the order indicated in
paragraphs (c)(1)(i) through (v) of this section, except
that a brief filed by an appellant who is not represented
by a registered practitioner need only substantially
comply with paragraphs (c)(1)(i), (c)(1)(ii), (c)(1)(iv),
and (c)(1)(v) of this section:
(i)  Real party in interest . A statement
identifying by name the real party in interest at
the time the appeal brief is filed, except that such
statement is not required if the named inventor or
inventors are themselves the real party in interest.
If an appeal brief does not contain a statement of
the real party in interest, the Office may assume
that the named inventor or inventors are the real
party in interest.
(ii)  Related appeals and interferences . A
statement identifying by application, patent, appeal
or interference number all other prior and pending
appeals, interferences or judicial proceedings
(collectively, ``related cases'') which satisfy all of
the following conditions: Involve an application
or patent owned by the appellant or assignee, are
known to appellant, the appellant's legal
representative, or assignee, and may be related to,
directly affect or be directly affected by or have
a bearing on the Board's decision in the pending
appeal, except that such statement is not required
if there are no such related cases. If an appeal brief
does not contain a statement of related cases, the
Office may assume that there are no such related
cases.
(iii)  Summary of claimed subject matter . A
concise explanation of the subject matter defined
in each of the rejected independent claims, which
shall refer to the specification in the Record by
page and line number or by paragraph number,
and to the drawing, if any, by reference characters.
For each rejected independent claim, and for each
dependent claim argued separately under the
provisions of paragraph (c)(1)(iv) of this section,
if the claim contains a means plus function or step
plus function recitation as permitted by 35 U.S.C.
112, sixth paragraph, then the concise explanation
must identify the structure, material, or acts
described in the specification in the Record as
corresponding to each claimed function with
reference to the specification in the Record by
page and line number or by paragraph number,
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 and to the drawing, if any, by reference characters.
Reference to the patent application publication
does not satisfy the requirements of this paragraph.
(iv)  Argument . The arguments of appellant
with respect to each ground of rejection, and the
basis therefor, with citations of the statutes,
regulations, authorities, and parts of the Record
relied on. The arguments shall explain why the
examiner erred as to each ground of rejection
contested by appellant. Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or
authorities not included in the appeal brief will be
refused consideration by the Board for purposes
of the present appeal. Each ground of rejection
contested by appellant must be argued under a
separate heading, and each heading shall
reasonably identify the ground of rejection being
contested ( e.g., by claim number, statutory basis,
and applied reference, if any). For each ground of
rejection applying to two or more claims, the
claims may be argued separately (claims are
considered by appellant as separately patentable),
as a group (all claims subject to the ground of
rejection stand or fall together), or as a subgroup
(a subset of the claims subject to the ground of
rejection stand or fall together). When multiple
claims subject to the same ground of rejection are
argued as a group or subgroup by appellant, the
Board may select a single claim from the group
or subgroup and may decide the appeal as to the
ground of rejection with respect to the group or
subgroup on the basis of the selected claim alone.
Notwithstanding any other provision of this
paragraph, the failure of appellant to separately
argue claims which appellant has grouped together
shall constitute a waiver of any argument that the
Board must consider the patentability of any
grouped claim separately. Under each heading
identifying the ground of rejection being
contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate
subheading that identifies the claim(s) by number.
A statement which merely points out what a claim
recites will not be considered an argument for
separate patentability of the claim.
(v)  Claims appendix. An appendix containing
a copy of the claims involved in the appeal.
(2) A brief shall not include any new or
non-admitted amendment, or any new or non-admitted
affidavit or other Evidence.  See § 1.116 of this title
for treatment of amendments, affidavits or other
evidence filed after final action but before or on the
same date of filing an appeal and § 41.33 for treatmentof amendments, affidavits or other Evidence filed after
the date of filing the appeal. Review of an examiner's
refusal to admit an amendment or Evidence is by
petition to the Director.  See § 1.181 of this title.
(d)  Notice of non-compliance. If a brief is filed which
does not comply with all the requirements of paragraph
(c) of this section, appellant will be notified of the reasons
for non-compliance and given a time period within which
to file an amended brief. If appellant does not, within the
set time period, file an amended brief that overcomes all
the reasons for non-compliance stated in the notification,
the appeal will stand dismissed. Review of a determination
of non-compliance is by petition to the Chief
Administrative Patent Judge.  See § 41.3.
(e) Extensions of time .The time periods set forth in
this section are extendable under the provisions of § 1.136
of this title for patent applications and § 1.550 (c) of this
title for  ex parte  reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
headings of paragraphs (a), (b), (c), (d) and (e) revised, para. (c) revised;
para. (d) second sentence revised and new third and fourth sentences
added, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.39Examiner’s answer.
(a)  Content of examiner's answer . The primary
examiner may, within such time as may be directed by
the Director, furnish a written answer to the appeal brief.
(1) An examiner's answer is deemed to incorporate
all of the grounds of rejection set forth in the Office
action from which the appeal is taken (as modified by
any advisory action and pre-appeal brief conference
decision), unless the examiner's answer expressly
indicates that a ground of rejection has been withdrawn.
(2) An examiner's answer may include a new
ground of rejection. For purposes of the examiner's
answer, any rejection that relies upon any Evidence not
relied upon in the Office action from which the appeal
is taken (as modified by any advisory action) shall be
designated by the primary examiner as a new ground
of rejection. The examiner must obtain the approval of
the Director to furnish an answer that includes a new
ground of rejection.
(b)  Appellant's response to new ground of rejection .
If an examiner’s answer contains a rejection designated
as a new ground of rejection, appellant must within two
months from the date of the examiner’s answer exercise
one of the following two options to avoid sua sponte
dismissal of the appeal as to the claims subject to the new
ground of rejection:
(1)  Reopen prosecution . Request that prosecution
be reopened before the primary examiner by filing a
reply under § 1.111 of this title with or without
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 amendment or submission of affidavits (§§ 1.130, 1.131
or 1.132 of this of this title) or other Evidence. Any
amendment or submission of affidavits or other
Evidence must be relevant to the new ground of
rejection. A request that complies with this paragraph
will be entered and the application or the patent under
 ex parte  reexamination will be reconsidered by the
examiner under the provisions of § 1.112 of this title.
Any request that prosecution be reopened under this
paragraph will be treated as a request to withdraw the
appeal.
(2) Maintain appeal . Request that the appeal be
maintained by filing a reply brief as set forth in § 41.41 .
Such a reply brief must address as set forth in §
41.37(c)(1)(iv) each new ground of rejection and should
follow the other requirements of a brief as set forth in
§ 41.37(c). A reply brief may not be accompanied by
any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of
this of this title) or other Evidence. If a reply brief filed
pursuant to this section is accompanied by any
amendment, affidavit or other Evidence, it shall be
treated as a request that prosecution be reopened before
the primary examiner under paragraph (b)(1) of this
section.
(c) Extensions of time . Extensions of time under §
1.136  (a) of this title for patent applications are not
applicable to the time period set forth in this section. See
§ 1.136  (b) of this title for extensions of time to reply for
patent applications and § 1.550  (c) of this title for
extensions of time to reply for  ex parte  reexamination
proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (a) revised, heading added to (b) introductory text, (b)(1) first two
sentences revised, (b)(2) second, third and fourth sentences revised, and
heading added to para.(c), 76 FR 72270, Nov. 22, 2011, effective January
23, 2012]
§ 
41.40Tolling of time period to file a reply brief.
(a)  Timing. Any request to seek review of the primary
examiner's failure to designate a rejection as a new ground
of rejection in an examiner's answer must be by way of
a petition to the Director under § 1.181 of this title filed
within two months from the entry of the examiner's
answer and before the filing of any reply brief. Failure of
appellant to timely file such a petition will constitute a
waiver of any arguments that a rejection must be
designated as a new ground of rejection.
(b)  Petition granted and prosecution reopened . A
decision granting a petition under § 1.181 to designate a
new ground of rejection in an examiner's answer will
provide a two-month time period in which appellant must
file a reply under § 1.111 of this title to reopen the
prosecution before the primary examiner. On failure totimely file a reply under § 1.111, the appeal will stand
dismissed.
(c)  Petition not granted and appeal maintained . A
decision refusing to grant a petition under § 1.181 of this
title to designate a new ground of rejection in an
examiner's answer will provide a two-month time period
in which appellant may file only a single reply brief under
§ 41.41.
(d)  Withdrawal of petition and appeal maintained .
If a reply brief under § 41.41 is filed within two months
from the date of the examiner's answer and on or after the
filing of a petition under § 1.181 to designate a new
ground of rejection in an examiner's answer, but before
a decision on the petition, the reply brief will be treated
as a request to withdraw the petition and to maintain the
appeal.
(e)  Extensions of time . Extensions of time under §
1.136(a) of this title for patent applications are not
applicable to the time period set forth in this section. See
§ 1.136(b) of this title for extensions of time to reply for
patent applications and § 1.550(c) of this title for
extensions of time to reply for ex parte reexamination
proceedings.
[Added, 76 FR 72270, Nov. 22, 2011, effective January 23,
2012]
§ 
41.41Reply brief.
(a)  Timing . Appellant may file only a single reply
brief to an examiner's answer within the later of two
months from the date of either the examiner's answer, or
a decision refusing to grant a petition under § 1.181 of
this title to designate a new ground of rejection in an
examiner's answer.
(b)  Content .
(1) A reply brief shall not include any new or
non-admitted amendment, or any new or non-admitted
affidavit or other Evidence. See § 1.116 of this title for
amendments, affidavits or other evidence filed after
final action but before or on the same date of filing an
appeal and § 41.33 for amendments, affidavits or other
Evidence filed after the date of filing the appeal.
(2) Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner's answer,
including any designated new ground of rejection, will
not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
(c) Extensions of time . Extensions of time under §
1.136  (a) of this title for patent applications are not
applicable to the time period set forth in this section. See
§ 1.136  (b) of this title for extensions of time to reply for
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 patent applications and § 1.550  (c) of this title for
extensions of time to reply for ex parte reexamination
proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
paras. (a) and (b) revised and heading added to (c), 76 FR 72270, Nov.
22, 2011, effective January 23, 2012]
§ 
41.43[Removed]
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
removed, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.47Oral hearing.
(a) An oral hearing should be requested only in those
circumstances in which appellant considers such a hearing
necessary or desirable for a proper presentation of the
appeal. An appeal decided on the briefs without an oral
hearing will receive the same consideration by the Board
as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must
file, as a separate paper captioned "REQUEST FOR
ORAL HEARING," a written request for such hearing
accompanied by the fee set forth in § 41.20(b)(3) within
two months from the date of the examiner's answer or on
the date of filing of a reply brief, whichever is earlier.
(c) If no request and fee for oral hearing have been
timely filed by appellant as required by paragraph (b) of
this section, the appeal will be assigned for consideration
and decision on the briefs without an oral hearing.
(d) If appellant has complied with all the requirements
of paragraph (b) of this section, a date for the oral hearing
will be set, and due notice thereof given to appellant. If
an oral hearing is held, 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. A
hearing will be held as stated in the notice, and oral
argument will ordinarily be limited to twenty minutes for
appellant and fifteen minutes for the primary examiner
unless otherwise ordered.
(e)
(1) Appellant will argue first and may reserve time
for rebuttal. At the oral hearing, appellant may only
rely on Evidence that has been previously entered and
considered by the primary examiner and present
argument that has been relied upon in the brief or reply
brief except as permitted by paragraph (e)(2) of this
section. The primary examiner may only rely on
argument and Evidence relied upon in an answer except
as permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or
the primary examiner may rely on a new argument
based upon a recent relevant decision of either the
Board or a Federal Court.(f) Notwithstanding the submission of a request for
oral hearing complying with this rule, if the Board decides
that a hearing is not necessary, the Board will so notify
appellant.
(g) Extensions of time under § 1.136 (a) of this title
for patent applications are not applicable to the time
periods set forth in this section. See § 1.136 (b) of this title
for extensions of time to reply for patent applications and
§ 1.550 (c) of this title for extensions of time to reply for
 ex parte  reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (b) revised and (e)(1) second and third sentences revised, 76 FR
72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.50Decisions and other actions by the Board.
(a)
(1)  Affirmance and reversal . The Board, in its
decision, may affirm or reverse the decision of the
examiner in whole or in part on the grounds and on the
claims specified by the examiner. The affirmance of
the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground
specifically reversed. The Board may also remand an
application to the examiner.
(2) If a substitute examiner's answer is written in
response to a remand by the Board for further
consideration of a rejection pursuant to paragraph (a)(1)
of this section, the appellant must within two months
from the date of the substitute examiner's answer
exercise one of the following two options to avoid sua
sponte dismissal of the appeal as to the claims subject
to the rejection for which the Board has remanded the
proceeding:
(i)  Reopen prosecution . Request that
prosecution be reopened before the examiner by
filing a reply under § 1.111 of this title with or
without amendment or submission of affidavits
(§§ 1.130, 1.131 or 1.132 of this title) or other
Evidence. Any amendment or submission of
affidavits or other Evidence must be relevant to
the issues set forth in the remand or raised in the
substitute examiner's answer. A request that
complies with this paragraph (a) will be entered
and the application or the patent under ex parte
reexamination will be reconsidered by the
examiner under the provisions of § 1.112 of this
title. Any request that prosecution be reopened
under this paragraph will be treated as a request
to withdraw the appeal.
(ii)  Maintain appeal . Request that the appeal
be maintained by filing a reply brief as provided
in § 41.41. If such a reply brief is accompanied
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 by any amendment, affidavit or other Evidence,
it shall be treated as a request that prosecution be
reopened before the examiner under paragraph
(a)(2)(i) of this section.
(b)  New ground of rejection . Should the Board have
knowledge of any grounds not involved in the appeal for
rejecting any pending claim, it may include in its opinion
a statement to that effect with its reasons for so holding,
and designate such a statement as a new ground of
rejection of the claim. A new ground of rejection pursuant
to this paragraph shall not be considered final for judicial
review. When the Board enters such a non-final decision,
the appellant, within two months from the date of the
decision, must exercise one of the following two options
with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1)  Reopen prosecution . Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event
the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner
unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject
the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2)  Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any
new ground of rejection and state with particularity the
points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
(c)  Review of undesignated new ground of rejection.
Any request to seek review of a panel's failure to designate
a new ground of rejection in its decision must be raised
by filing a request for rehearing as set forth in § 41.52.
Failure of appellant to timely file such a request for
rehearing will constitute a waiver of any arguments that
a decision contains an undesignated new ground of
rejection.
(d)  Request for briefing and information. The Board
may order appellant to additionally brief any matter that
the Board considers to be of assistance in reaching a
reasoned decision on the pending appeal. Appellant will
be given a time period within which to respond to such
an order. Failure to timely comply with the order may
result in the sua sponte dismissal of the appeal.(e)  Remand not final action . Whenever a decision of
the Board includes a remand, that decision shall not be
considered final for judicial review. When appropriate,
upon conclusion of proceedings on remand before the
examiner, the Board may enter an order otherwise making
its decision final for judicial review.
(f)  Extensions of time . Extensions of time under §
1.136(a) of this title for patent applications are not
applicable to the time periods set forth in this section. See
§ 1.136(b) of this title for extensions of time to reply for
patent applications and § 1.550(c) of this title for
extensions of time to reply for  ex parte  reexamination
proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
revised, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.52Rehearing.
(a)
(1) Appellant may file a single request for rehearing
within two months of the date of the original decision
of the Board. No request for rehearing from a decision
on rehearing will be permitted, unless the rehearing
decision so modified the original decision as to become,
in effect, a new decision, and the Board states that a
second request for rehearing would be permitted. The
request for rehearing must state with particularity the
points believed to have been misapprehended or
overlooked by the Board. Arguments not raised, and
Evidence not previously relied upon, pursuant to §§
41.37, 41.41, or 41.47 are not permitted in the request
for rehearing except as permitted by paragraphs (a)(2)
through (a)(4) of this section. When a request for
rehearing is made, the Board shall render a decision on
the request for rehearing. The decision on the request
for rehearing is deemed to incorporate the earlier
opinion reflecting its decision for appeal, except for
those portions specifically withdrawn on rehearing,
and is final for the purpose of judicial review, except
when noted otherwise in the decision on rehearing.
(2) Appellant may present a new argument based
upon a recent relevant decision of either the Board or
a Federal Court.
(3) New arguments responding to a new ground of
rejection designated pursuant to § 41.50(b) are
permitted.
(4) New arguments that the Board's decision
contains an undesignated new ground of rejection are
permitted.
(b) Extensions of time under § 1.136 (a) of this title
for patent applications are not applicable to the time
period set forth in this section. See § 1.136 (b) of this title
for extensions of time to reply for patent applications and
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 § 1.550 (c) of this title for extensions of time to reply for
ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
(a)(1) fourth sentence, (a)(2) and (a)(3) revised and (a)(4) added, 76 FR
72270, Nov. 22, 2011, effective January 23, 2012]
§ 
41.54Action following decision.
After decision by the Board, jurisdiction over an
application or patent under ex parte reexamination
proceeding passes to the examiner, subject to appellant's
right of appeal or other review, for such further action by
appellant or by the examiner, as the condition of the
application or patent under ex parte reexamination
proceeding may require, to carry into effect the decision.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
revised, 76 FR 72270, Nov. 22, 2011, effective January 23, 2012]
Subpart C  — Inter Partes Appeals
§ 
41.60Definitions.
In addition to the definitions in § 41.2, the following
definitions apply to proceedings under this subpart unless
otherwise clear from the context:
Appellant  means any party, whether the owner or a
requester, filing a notice of appeal or cross appeal under
§ 41.61 . If more than one party appeals or cross appeals,
each appealing or cross appealing party is an appellant
with respect to the claims to which his or her appeal or
cross appeal is directed.
Filing  means filing with a certificate indicating service
of the document under § 1.903  of this title.
Owner  means the owner of the patent undergoing inter
partes  reexamination under § 1.915  of this title.
 Proceeding  means an  inter partes reexamination
proceeding. Appeal to the Board in an  ex parte
reexamination proceeding is controlled by subpart B of
this part. An  inter partes  reexamination proceeding is
not a contested case subject to subpart D.
Requester  means each party, other than the owner, who
requested that the patent undergo inter partes 
reexamination under § 1.915  of this title.
Respondent  means any requester responding under §
41.68  to the appellant’s brief of the owner, or the owner
responding under § 41.68  to the appellant’s brief of anyrequester. No requester may be a respondent to the
appellant brief of any other requester.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.61Notice of appeal and cross appeal to Board.
(a)
(1) Upon the issuance of a Right of Appeal Notice
under § 1.953  of this title, the owner may appeal to the
Board with respect to the final rejection of any claim
of the patent by filing a notice of appeal within the time
provided in the Right of Appeal Notice and paying the
fee set forth in § 41.20 (b)(1).
(2) Upon the issuance of a Right of Appeal Notice
under § 1.953  of this title, the requester may appeal to
the Board with respect to any final decision favorable
to the patentability, including any final determination
not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent by filing
a notice of appeal within the time provided in the Right
of Appeal Notice and paying the fee set forth in §
41.20 (b)(1).
(b)
(1) Within fourteen days of service of a requester’s
notice of appeal under paragraph (a)(2) of this section
and upon payment of the fee set forth in § 41.20 (b)(1),
an owner who has not filed a notice of appeal may file
a notice of cross appeal with respect to the final
rejection of any claim of the patent.
(2) Within fourteen days of service of an owner’s
notice of appeal under paragraph (a)(1) of this section
and upon payment of the fee set forth in §  41.20  (b)(1),
a requester who has not filed a notice of appeal may
file a notice of cross appeal with respect to any final
decision favorable to the patentability, including any
final determination not to make a proposed rejection,
of any original, proposed amended, or new claim of
the patent.
(c) The notice of appeal or cross appeal in the
proceeding must identify the appealed claim(s) and must
be signed by the owner, the requester, or a duly authorized
attorney or agent.
(d) An appeal or cross appeal, when taken, must be
taken from all the rejections of the claims in a Right of
Appeal Notice which the patent owner proposes to contest
or from all the determinations favorable to patentability,
including any final determination not to make a proposed
rejection, in a Right of Appeal Notice which a requester
proposes to contest. Questions relating to matters not
affecting the merits of the invention may be required to
be settled before an appeal is decided.
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 (e) The time periods for filing a notice of appeal or
cross appeal may not be extended.
(f) If a notice of appeal or cross appeal is timely filed
but does not comply with any requirement of this section,
appellant will be notified of the reasons for
non-compliance and given a non-extendable time period
within which to file an amended notice of appeal or cross
appeal. If the appellant does not then file an amended
notice of appeal or cross appeal within the set time period,
or files a notice which does not overcome all the reasons
for non-compliance stated in the notification of the reasons
for non-compliance, that appellant’s appeal or cross appeal
will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.63Amendments and affidavits or other evidence
after appeal.
(a) Amendments filed after the date of filing an appeal
pursuant to § 41.61  canceling claims may be admitted
where such cancellation does not affect the scope of any
other pending claim in the proceeding.
(b) All other amendments filed after the date of filing
an appeal pursuant to § 41.61  will not be admitted except
as permitted by § 41.77 (b)(1).
(c) Affidavits or other evidence filed after the date of
filing an appeal pursuant to § 41.61  will not be admitted
except as permitted by reopening prosecution under §
41.77 (b)(1).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.64Jurisdiction over appeal in inter partes
reexamination.
(a) Jurisdiction over the proceeding passes to the
Board upon transmittal of the file, including all briefs and
examiner’s answers, to the Board.
(b) If, after receipt and review of the proceeding, the
Board determines that the file is not complete or is not in
compliance with the requirements of this subpart, the
Board may relinquish jurisdiction to the examiner or take
other appropriate action to permit completion of the file.
(c) Prior to the entry of a decision on the appeal by
the Board, the Director may sua sponte order the
proceeding remanded to the examiner.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.66Time for filing briefs.
(a) An appellant’s brief must be filed no later than
two months from the latest filing date of the last-filed
notice of appeal or cross appeal or, if any party to the
proceeding is entitled to file an appeal or cross appeal but
fails to timely do so, no later than two months from the
expiration of the time for filing (by the last party entitledto do so) such notice of appeal or cross appeal. The time
for filing an appellant’s brief or an amended appellant’s
brief may not be extended.
(b) Once an appellant’s brief has been properly filed,
any brief must be filed by respondent within one month
from the date of service of the appellant’s brief. The time
for filing a respondent’s brief or an amended respondent’s
brief may not be extended.
(c) The examiner will consider both the appellant’s
and respondent’s briefs and may prepare an examiner’s
answer under § 41.69 .
(d) Any appellant may file a rebuttal brief under §
41.71  within one month of the date of the examiner’s
answer. The time for filing a rebuttal brief or an amended
rebuttal brief may not be extended.
(e) No further submission will be considered and any
such submission will be treated in accordance with § 1.939
of this title.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.67Appellant’s brief.
(a)
(1) Appellant(s) may once, within time limits for
filing set forth in § 41.66 , file a brief and serve the brief
on all other parties to the proceeding in accordance
with § 1.903  of this title.
(2) The brief must be signed by the appellant, or
the appellant’s duly authorized attorney or agent and
must be accompanied by the requisite fee set forth in
§ 41.20 (b)(2).
(b) An appellant’s appeal shall stand dismissed upon
failure of that appellant to file an appellant’s brief,
accompanied by the requisite fee, within the time allowed
under § 41.66 (a).
(c)
(1) The appellant’s brief shall contain the following
items under appropriate headings and in the order
indicated in paragraphs (c)(1)(i) through (c)(1)(xi) of
this section.
(i)  Real party in interest . A statement
identifying by name the real party in interest.
(ii)  Related appeals and interferences . A
statement identifying by application, patent, appeal
or interference number all other prior and pending
appeals, interferences or judicial proceedings
known to appellant, the appellant’s legal
representative, or assignee which may be related
to, directly affect or be directly affected by or have
a bearing on the Board’s decision in the pending
appeal. Copies of any decisions rendered by a
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 court or the Board in any proceeding identified
under this paragraph must be included in an
appendix as required by paragraph (c)(1)(xi) of
this section.
(iii)  Status of claims. A statement of the status
of all the claims in the proceeding (e.g., rejected,
allowed or confirmed, withdrawn, objected to,
canceled). If the appellant is the owner, the
appellant must also identify the rejected claims
whose rejection is being appealed. If the appellant
is a requester, the appellant must identify the
claims that the examiner has made a determination
favorable to patentability, which determination is
being appealed.
(iv)  Status of amendments. A statement of the
status of any amendment filed subsequent to the
close of prosecution.
(v)  Summary of claimed subject matter . A
concise explanation of the subject matter defined
in each of the independent claims involved in the
appeal, which shall refer to the specification by
column and line number, and to the drawing(s),
if any, by reference characters. For each
independent claim involved in the appeal and for
each dependent claim argued separately under the
provisions of paragraph (c)(1)(vii) of this section,
every means plus function and step plus function
as permitted by 35 U.S.C. 112, sixth paragraph,
must be identified and the structure, material, or
acts described in the specification as
corresponding to each claimed function must be
set forth with reference to the specification by
page and line number, and to the drawing, if any,
by reference characters.
(vi)  Issues to be reviewed on appeal . A
concise statement of each issue presented for
review. No new ground of rejection can be
proposed by a third party requester appellant,
unless such ground was withdrawn by the
examiner during the prosecution of the proceeding,
and the third party requester has not yet had an
opportunity to propose it as a third party requester
proposed ground of rejection.
(vii) Argument . The contentions of appellant
with respect to each issue presented for review in
paragraph (c)(1)(vi) of this section, and the basis
therefor, with citations of the statutes, regulations,
authorities, and parts of the record relied on. Any
arguments or authorities not included in the brief
permitted under this section or §§ 41.68  and 41.71
will be refused consideration by the Board, unless
good cause is shown. Each issue must be treatedunder a separate heading. If the appellant is the
patent owner, for each ground of rejection in the
Right of Appeal Notice which appellant contests
and which applies to two or more claims, the
claims may be argued separately or as a group.
When multiple claims subject to the same ground
of rejection are argued as a group by appellant,
the Board may select a single claim from the group
of claims that are argued together to decide the
appeal with respect to the group of claims as to
the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision
of this paragraph, the failure of appellant to
separately argue claims which appellant has
grouped together shall constitute a waiver of any
argument that the Board must consider the
patentability of any grouped claim separately. Any
claim argued separately should be placed under a
subheading identifying the claim by number.
Claims argued as a group should be placed under
a subheading identifying the claims by number.
A statement which merely points out what a claim
recites will not be considered an argument for
separate patentability of the claim.
(viii)  Claims appendix . An appendix
containing a copy of the claims to be reviewed on
appeal.
(ix) Evidence appendix . An appendix
containing copies of any evidence submitted
pursuant to §§ 1.130 , 1.131 , or 1.132  of this title
or of any other evidence entered by the examiner
and relied upon by appellant in the appeal, along
with a statement setting forth where in the record
that evidence was entered in the record by the
examiner. Reference to unentered evidence is not
permitted in the brief. See § 41.63 for treatment
of evidence submitted after appeal. This appendix
may also include copies of the evidence relied
upon by the examiner in any ground of rejection
to be reviewed on appeal.
(x)  Related proceedings appendix . An
appendix containing copies of decisions rendered
by a court or the Board in any proceeding
identified pursuant to paragraph (c)(1)(ii) of this
section.
(xi)  Certificate of service . A certification that
a copy of the brief has been served in its entirety
on all other parties to the reexamination
proceeding. The names and addresses of the
parties served must be indicated.
(2) A brief shall not include any new or
non-admitted amendment, or any new or non-admitted
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 affidavit or other evidence. See § 1.116  of this title for
amendments, affidavits or other evidence filed after
final action but before or on the same date of filing an
appeal and § 41.63  for amendments, affidavits or other
evidence after the date of filing the appeal.
(d) If a brief is filed which does not comply with all
the requirements of paragraph (a) and paragraph (c) of
this section, appellant will be notified of the reasons for
non-compliance and given a non-extendable time period
within which to file an amended brief. If appellant does
not file an amended brief within the set time period, or
files an amended brief which does not overcome all the
reasons for non-compliance stated in the notification, that
appellant’s appeal will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.68Respondent’s brief.
(a)
(1) Respondent(s) in an appeal may once, within
the time limit for filing set forth in §  41.66 , file a
respondent brief and serve the brief on all parties in
accordance with § 1.903  of this title.
(2) The brief must be signed by the party, or the
party’s duly authorized attorney or agent, and must be
accompanied by the requisite fee set forth in §
41.20 (b)(2).
(3) The respondent brief shall be limited to issues
raised in the appellant brief to which the respondent
brief is directed.
(4) A requester’s respondent brief may not address
any brief of any other requester.
(b)
(1) The respondent brief shall contain the following
items under appropriate headings and in the order here
indicated, and may include an appendix containing only
those portions of the record on which reliance has been
made.
(i)  Real Party in Interest . A statement
identifying by name the real party in interest.
(ii)  Related Appeals and Interferences . A
statement identifying by application, patent, appeal
or interference number all other prior and pending
appeals, interferences or judicial proceedings
known to respondent, the respondent’s legal
representative, or assignee which may be related
to, directly affect or be directly affected by or have
a bearing on the Board’s decision in the pending
appeal. Copies of any decisions rendered by a
court or the Board in any proceeding identified
under this paragraph must be included in anappendix as required by paragraph (b)(1)(ix) of
this section.
(iii)  Status of claims . A statement accepting
or disputing appellant’s statement of the status of
claims. If appellant’s statement of the status of
claims is disputed, the errors in appellant’s
statement must be specified with particularity.
(iv)  Status of amendments . A statement
accepting or disputing appellant’s statement of
the status of amendments. If appellant’s statement
of the status of amendments is disputed, the errors
in appellant’s statement must be specified with
particularity.
(v)  Summary of claimed subject matter . A
statement accepting or disputing appellant’s
summary of the subject matter defined in each of
the independent claims involved in the appeal. If
appellant’s summary of the subject matter is
disputed, the errors in appellant’s summary must
be specified.
(vi)  Issues to be reviewed on appeal . A
statement accepting or disputing appellant’s
statement of the issues presented for review. If
appellant’s statement of the issues presented for
review is disputed, the errors in appellant’s
statement must be specified. A counter statement
of the issues for review may be made. No new
ground of rejection can be proposed by a requester
respondent.
(vii)  Argument . A statement accepting or
disputing the contentions of appellant with each
of the issues presented by the appellant for review.
If a contention of the appellant is disputed, the
errors in appellant’s argument must be specified,
stating the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the
record relied on. Each issue must be treated under
a separate heading. An argument may be made
with each of the issues stated in the counter
statement of the issues, with each counter-stated
issue being treated under a separate heading.
(viii) Evidence appendix . An appendix
containing copies of any evidence submitted
pursuant to §§ 1.130 , 1.131 , or 1.132  of this title
or of any other evidence entered by the examiner
and relied upon by respondent in the appeal, along
with a statement setting forth where in the record
that evidence was entered in the record by the
examiner. Reference to unentered evidence is not
permitted in the respondent’s brief. See § 41.63
for treatment of evidence submitted after appeal.
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 (ix)  Related proceedings appendix . An
appendix containing copies of decisions rendered
by a court or the Board in any proceeding
identified pursuant to paragraph (b)(1)(ii) of this
section.
(x)  Certificate of service. A certification that
a copy of the respondent brief has been served in
its entirety on all other parties to the reexamination
proceeding. The names and addresses of the
parties served must be indicated.
(2) A respondent brief shall not include any new
or non-admitted amendment, or any new or
non-admitted affidavit or other evidence. See § 1.116
of this title for amendments, affidavits or other evidence
filed after final action but before or on the same date
of filing an appeal and § 41.63  for amendments,
affidavits or other evidence filed after the date of filing
the appeal.
(c) If a respondent brief is filed which does not
comply with all the requirements of paragraph (a)
and paragraph (b) of this section, respondent will be
notified of the reasons for non-compliance and given a
non-extendable time period within which to file an
amended brief. If respondent does not file an amended
respondent brief within the set time period, or files an
amended respondent brief which does not overcome all
the reasons for non-compliance stated in the notification,
the respondent brief and any amended respondent brief
by that respondent will not be considered.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.69Examiner’s answer.
(a) The primary examiner may, within such time as
directed by the Director, furnish a written answer to the
owner’s and/or requester’s appellant brief or respondent
brief including, as may be necessary, such explanation of
the invention claimed and of the references relied upon,
the grounds of rejection, and the reasons for patentability,
including grounds for not adopting any proposed rejection.
A copy of the answer shall be supplied to the owner and
all requesters. If the primary examiner determines that
the appeal does not comply with the provisions of §§
41.61 , 41.66 , 41.67  and 41.68  or does not relate to an
appealable action, the primary examiner shall make such
determination of record.
(b) An examiner’s answer may not include a new
ground of rejection.
(c) An examiner’s answer may not include a new
determination not to make a proposed rejection of a claim.(d) Any new ground of rejection, or any new
determination not to make a proposed rejection, must be
made in an Office action reopening prosecution.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.71Rebuttal brief.
(a) Within one month of the examiner’s answer, any
appellant may once file a rebuttal brief.
(b)
(1) The rebuttal brief of the owner may be directed
to the examiner’s answer and/or any respondent brief.
(2) The rebuttal brief of the owner shall not include
any new or non-admitted amendment, or an affidavit
or other evidence. See § 1.116  of this title for
amendments, affidavits or other evidence filed after
final action but before or on the same date of filing an
appeal and § 41.63  for amendments, affidavits or other
evidence filed after the date of filing the appeal.
(c)
(1) The rebuttal brief of any requester may be
directed to the examiner’s answer and/or the respondent
brief of the owner.
(2) The rebuttal brief of a requester may not be
directed to the respondent brief of any other requester.
(3) No new ground of rejection can be proposed by
a requester.
(4) The rebuttal brief of a requester shall not include
any new or non-admitted affidavit or other evidence.
See § 1.116(d) of this title for affidavits or other
evidence filed after final action but before or on the
same date of filing an appeal and § 41.63 (c) for
affidavits or other evidence filed after the date of filing
the appeal.
(d) The rebuttal brief must include a certification that
a copy of the rebuttal brief has been served in its entirety
on all other parties to the proceeding. The names and
addresses of the parties served must be indicated.
(e) If a rebuttal brief is timely filed under paragraph
(a) of this section but does not comply with all the
requirements of paragraphs (a) through (d) of this section,
appellant will be notified of the reasons for
non-compliance and provided with a non-extendable
period of one month within which to file an amended
rebuttal brief. If the appellant does not file an amended
rebuttal brief during the one-month period, or files an
amended rebuttal brief which does not overcome all the
reasons for non-compliance stated in the notification, that
appellant’s rebuttal brief and any amended rebuttal brief
by that appellant will not be considered.
[Added, 69 FR 4995 9, Aug. 12, 2004, effective Sept. 13, 2004]
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 § 
41.73Oral hearing.
(a) An oral hearing should be requested only in those
circumstances in which an appellant or a respondent
considers such a hearing necessary or desirable for a
proper presentation of the appeal. An appeal decided on
the briefs without an oral hearing will receive the same
consideration by the Board as an appeal decided after an
oral hearing.
(b) If an appellant or a respondent desires an oral
hearing, he or she must file, as a separate paper captioned
“REQUEST FOR ORAL HEARING,” a written request
for such hearing accompanied by the fee set forth in §
41.20 (b)(3) within two months after the date of the
examiner’s answer. The time for requesting an oral
hearing may not be extended. The request must include
a certification that a copy of the request has been served
in its entirety on all other parties to the proceeding. The
names and addresses of the parties served must be
indicated.
(c) If no request and fee for oral hearing have been
timely filed by appellant or respondent as required by
paragraph (b) of this section, the appeal will be assigned
for consideration and decision on the briefs without an
oral hearing.
(d) If appellant or respondent has complied with all
the requirements of paragraph (b) of this section, a hearing
date will be set, and notice given to the owner and all
requesters. If an oral hearing is held, 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. The notice shall set a
non-extendable period within which all requests for oral
hearing shall be submitted by any other party to the appeal
desiring to participate in the oral hearing. A hearing will
be held as stated in the notice, and oral argument will be
limited to thirty minutes for each appellant or respondent
who has requested an oral hearing, and twenty minutes
for the primary examiner unless otherwise ordered. No
appellant or respondent will be permitted to participate
in an oral hearing unless he or she has requested an oral
hearing and submitted the fee set forth in § 41.20 (b)(3).
(e)
(1) At the oral hearing, each appellant and
respondent may only rely on evidence that has been
previously entered and considered by the primary
examiner and present argument that has been relied
upon in the briefs except as permitted by paragraph
(e)(2) of this section. The primary examiner may only
rely on argument and evidence relied upon in an answer
except as permitted by paragraph (e)(2) of this section.
The Board will determine the order of the arguments
presented at the oral hearing.(2) Upon a showing of good cause, appellant,
respondent and/or the primary examiner may rely on
a new argument based upon a recent relevant decision
of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for
oral hearing complying with this rule, if the Board decides
that a hearing is not necessary, the Board will so notify
the owner and all requesters.
[Added, 69 FR 4 9959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.77Decisions and other actions by the Board.
(a) The Board of Patent Appeals and Interferences,
in its decision, may affirm or reverse each decision of the
examiner on all issues raised on each appealed claim, or
remand the reexamination proceeding to the examiner for
further consideration. The reversal of the examiner’s
determination not to make a rejection proposed by the
third party requester constitutes a decision adverse to the
patentability of the claims which are subject to that
proposed rejection which will be set forth in the decision
of the Board of Patent Appeals and Interferences as a new
ground of rejection under paragraph (b) of this section.
The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any
ground specifically reversed.
(b) Should the Board reverse the examiner’s
determination not to make a rejection proposed by a
requester, the Board shall set forth in the opinion in
support of its decision a new ground of rejection; or
should the Board have knowledge of any grounds not
raised in the appeal for rejecting any pending claim, it
may include in its opinion a statement to that effect with
its reasons for so holding, which statement shall constitute
a new ground of rejection of the claim. Any decision
which includes a new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
When the Board makes a new ground of rejection, the
owner, within one month from the date of the decision,
must exercise one of the following two options with
respect to the new ground of rejection to avoid termination
of the appeal proceeding as to the rejected claim:
(1)   Reopen prosecution . The owner may file a
response requesting reopening of prosecution before
the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.
(2) Request rehearing . The owner may request that
the proceeding be reheard under § 41.79  by the Board
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
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 misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
(c) Where the owner has filed a response requesting
reopening of prosecution under paragraph (b)(1) of this
section, any requester, within one month of the date of
service of the owner’s response, may once file comments
on the response. Such written comments must be limited
to the issues raised by the Board’s opinion reflecting its
decision and the owner’s response. Any requester that
had not previously filed an appeal or cross appeal and is
seeking under this subsection to file comments or a reply
to the comments is subject to the appeal and brief fees
under § 41.20 (b)(1) and (2), respectively, which must
accompany the comments or reply.
(d) Following any response by the owner under
paragraph (b)(1) of this section and any written comments
from a requester under paragraph (c) of this section, the
proceeding will be remanded to the examiner. The
statement of the Board shall be binding upon the examiner
unless an amendment or new evidence not previously of
record is made which, in the opinion of the examiner,
overcomes the new ground of rejection stated in the
decision. The examiner will consider any owner response
under paragraph (b)(1) of this section and any written
comments by a requester under paragraph (c) of this
section and issue a determination that the rejection is
maintained or has been overcome.
(e) Within one month of the examiner’s determination
pursuant to paragraph (d) of this section, the owner or
any requester may once submit comments in response to
the examiner’s determination. Within one month of the
date of service of comments in response to the examiner’s
determination, the owner and any requesters may file a
reply to the comments. No requester reply may address
the comments of any other requester reply. Any requester
that had not previously filed an appeal or cross appeal
and is seeking under this subsection to file comments or
a reply to the comments is subject to the appeal and brief
fees under §  41.20  (b)(1) and (2), respectively, which
must accompany the comments or reply.
(f) After submission of any comments and any reply
pursuant to paragraph (e) of this section, or after time has
expired, the proceeding will be returned to the Board
which shall reconsider the matter and issue a new
decision. The new decision is deemed to incorporate the
earlier decision, except for those portions specifically
withdrawn.
(g) The time period set forth in paragraph (b) of this
section is subject to the extension of time provisions of
§ 1.956  of this title when the owner is responding under
paragraph (b)(1) of this section. The time period set forth
in paragraph (b) of this section may not be extended whenthe owner is responding under paragraph (b)(2) of this
section. The time periods set forth in paragraphs (c) and
(e) of this section may not be extended.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.79Rehearing.
(a) Parties to the appeal may file a request for
rehearing of the decision within one month of the date of:
(1) The original decision of the Board under §
41.77 (a),
(2) The original § 41.77 (b) decision under the
provisions of § 41.77 (b)(2),
(3) The expiration of the time for the owner to take
action under § 41.77 (b)(2), or
(4) The new decision of the Board under § 41.77 (f).
(b)
(1) The request for rehearing must state with
particularity the points believed to have been
misapprehended or overlooked in rendering the Board’s
opinion reflecting its decision. Arguments not raised
in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted
in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a
recent relevant decision of either the Board or a Federal
Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77 (b) are permitted.
(c) Within one month of the date of service of any
request for rehearing under paragraph (a) of this section,
or any further request for rehearing under paragraph (d)
of this section, the owner and all requesters may once file
comments in opposition to the request for rehearing or
the further request for rehearing. The comments in
opposition must be limited to the issues raised in the
request for rehearing or the further request for rehearing.
(d) If a party to an appeal files a request for rehearing
under paragraph (a) of this section, or a further request
for rehearing under this section, the Board shall render a
decision on the request for rehearing. The decision on the
request for rehearing is deemed to incorporate the earlier
opinion reflecting its decision for appeal, except for those
portions specifically withdrawn on rehearing and is final
for the purpose of judicial review, except when noted
otherwise in the decision on rehearing. If the Board
opinion reflecting its decision on rehearing becomes, in
effect, a new decision, and the Board so indicates, then
any party to the appeal may, within one month of the new
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 decision, file a further request for rehearing of the new
decision under this subsection. Such further request for
rehearing must comply with paragraph (b) of this section.
(e) The times for requesting rehearing under paragraph
(a) of this section, for requesting further rehearing under
paragraph (c) of this section, and for submitting comments
under paragraph (b) of this section may not be extended.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.81Action following decision.
The parties to an appeal to the Board may not appeal to
the U.S. Court of Appeals for the Federal Circuit under
§ 1.983  of this title until all parties’ rights to request
rehearing have been exhausted, at which time the decision
of the Board is final and appealable by any party to the
appeal to the Board.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
Subpart D  — Contested Cases
§ 
41.100Definitions.
In addition to the definitions in § 41.2, the following
definitions apply to proceedings under this subpart:
 Business day  means a day other than a Saturday, Sunday,
or Federal holiday within the District of Columbia.
 Involved  means the Board has declared the patent
application, patent, or claim so described to be a subject
of the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.101Notice of proceeding.
(a) Notice of a contested case will be sent to every
party to the proceeding. The entry of the notice initiates
the proceeding.
(b) When the Board is unable to provide actual notice
of a contested case on a party through the correspondence
address of record for the party, the Board may authorize
other modes of notice, including:
(1) Sending notice to another address associated
with the party, or
(2) Publishing the notice in the Official Gazette of
the United States Patent and Trademark Office.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.102Completion of examination.Before a contested case is initiated, except as the Board
may otherwise authorize, for each involved application
and patent:
(a) Examination or reexamination must be completed,
and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested
case, and
(2) Would be involved in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.103Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file
when the Board initiates a contested case. Other
proceedings for the involved file within the Office are
suspended except as the Board may order.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.104Conduct of contested cases.
(a) The Board may determine a proper course of
conduct in a proceeding for any situation not specifically
covered by this part and may enter non-final orders to
administer the proceeding.
(b) An administrative patent judge may waive or
suspend in a proceeding the application of any rule in this
subpart, subject to such conditions as the administrative
patent judge may impose.
(c) Times set in this subpart are defaults. In the event
of a conflict between a time set by rule and a time set by
order, the time set by order is controlling. Action due on
a day other than a business day may be completed on the
next business day unless the Board expressly states
otherwise.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.106Filing and service.
(a)  General format requirements. (1) The paper used
for filings must be durable and white. A party must choose
to file on either A4-sized paper or 8½ inch x 11 inch paper
except in the case of exhibits that require a larger size in
order to preserve details of the original. A party may not
switch between paper sizes in a single proceeding. Only
one side of the paper may be used.
(2) In papers, including affidavits, created for the
proceeding:
(i) Markings must be in black ink or must
otherwise provide an equivalently permanent,
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 dark, high-contrast image on the paper. The
quality of printing must be equivalent to the
quality produced by a laser printer. Either a
proportional or monospaced font may be used,
but the proportional font must be 12-point or
larger and a monospaced font must not contain
more than 4 characters per centimeter (10
characters per inch). Case names must be
underlined or italicized.
(ii) Double spacing must be used except in
headings, tables of contents, tables of authorities,
indices, signature blocks, and certificates of
service. Block quotations may be single-spaced
and must be indented. Margins must be at least
2.5 centimeters (1 inch) on all sides.
(b)  Papers other than exhibits —
(1)  Cover sheet.
(i) The cover sheet must include the caption
the Board specifies for the proceeding, a header
indicating the party and contact information for
the party, and a title indicating the sequence and
subject of the paper. For example, “JONES
MOTION 2, For benefit of an earlier application”.
(ii) If the Board specifies a color other than
white for the cover sheet, the cover sheet must be
that color.
(2) Papers must have two 0.5 cm (¼ inch) holes
with centers 1 cm (½ inch) from the top of the page
and 7 cm (2¾ inch) apart, centered horizontally on the
page.
(3)  Incorporation by reference; combined papers .
Arguments must not be incorporated by reference from
one paper into another paper. Combined motions,
oppositions, replies, or other combined papers are not
permitted.
(4) Exhibits . Additional requirements for exhibits
appear in § 41.154 (c).
(c)  Working copy . Every paper filed must be
accompanied by a working copy marked “APJ Copy”.
(d)  Specific filing forms. (1)  Filing by mail. A paper
filed using the EXPRESS MAIL® service of the United
States Postal Service will be deemed to be filed as of
“date-in” on the EXPRESS MAIL® mailing label;
otherwise, mail will be deemed to be filed as of the
stamped date of receipt at the Board.
(2)  Other modes of filing. The Board may authorize
other modes of filing, including electronic filing and
hand filing, and may set conditions for the use of such
other modes.(e)  Service . (1) Papers filed with the Board, if not
previously served, must be served simultaneously on every
opposing party except as the Board expressly directs.
(2) If a party is represented by counsel, service must
be on counsel.
(3) Service must be by EXPRESS MAIL® or by
means at least as fast and reliable as EXPRESS
MAIL®. Electronic service is not permitted without
Board authorization.
(4) The date of service does not count in computing
the time for responding.
(f)  Certificate of service . (1) Papers other than
exhibits must include a certificate of service as a separate
page at the end of each paper that must be served on an
opposing party.
(2) Exhibits must be accompanied by a certificate
of service, but a single certificate may accompany any
group of exhibits submitted together.
(3) A certificate of service must state:
(i) The date and manner of service,
(ii) The name and address of every person
served, and
(iii) For exhibits filed as a group, the name
and number of each exhibit served.
(4) A certificate made by a person other than a
registered patent practitioner must be in the form of an
affidavit.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.108Lead counsel.
(a) A party may be represented by counsel. The Board
may require a party to appoint a lead counsel. If counsel
is not of record in a party’s involved application or patent,
then a power of attorney for that counsel for the party’s
involved application or patent must be filed with the
notice required in paragraph (b) of this section.
(b) Within 14 days of the initiation of each contested
case, each party must file a separate notice identifying its
counsel, if any, and providing contact information for
each counsel identified or, if the party has no counsel,
then for the party. Contact information must, at a
minimum, include:
(1) A mailing address;
(2) An address for courier delivery when the
mailing address is not available for such delivery (for
example, when the mailing address is a Post Office
box);
(3) A telephone number;
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 (4) A facsimile number; and
(5) An electronic mail address.
(c) A party must promptly notify the Board of any
change in the contact information required in paragraph
(b) of this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.109Access to and copies of Office records.
(a) Request for access or copies . Any request from
a party for access to or copies of Office records directly
related to a contested case must be filed with the Board.
The request must precisely identify the records and in the
case of copies include the appropriate fee set under §
1.19(b) of this title.
(b)  Authorization of access and copies . Access and
copies will ordinarily only be authorized for the following
records:
(1) The application file for an involved patent;
(2) An involved application; and
(3) An application for which a party has been
accorded benefit under subpart E of this part.
(c)  Missing or incomplete copies. If a party does not
receive a complete copy of a record within 21 days of the
authorization, the party must promptly notify the Board.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.110Filing claim information.
(a)  Clean copy of claims . Within 14 days of the
initiation of the proceeding, each party must file a clean
copy of its involved claims and, if a biotechnology
material sequence is a limitation, a clean copy of the
sequence.
(b)  Annotated copy of claims . Within 28 days of the
initiation of the proceeding, each party must:
(1) For each involved claim having a limitation that
is illustrated in a drawing or biotechnology material
sequence, file an annotated copy of the claim indicating
in bold face between braces ({}) where each limitation
is shown in the drawing or sequence.
(2) For each involved claim that contains a
means-plus-function or step-plus-function limitation
in the form permitted under 35 U .S.C. 112 (6), file an
annotated copy of the claim indicating in bold face
between braces ({}) the specific portions of the
specification that describe the structure, material, or
acts corresponding to each claimed function.
(c) Any motion to add or amend a claim must include:
(1) A clean copy of the claim,(2) A claim chart showing where the disclosure of
the patent or application provides written description
of the subject matter of the claim, and
(3) Where applicable, a copy of the claims
annotated according to paragraph (b) of this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.120Notice of basis for relief.
(a) The Board may require a party to provide a notice
stating the relief it requests and the basis for its entitlement
to relief. The Board may provide for the notice to be
maintained in confidence for a limited time.
(b)  Effect . If a notice under paragraph (a) of this
section is required, a party will be limited to filing
substantive motions consistent with the notice.
Ambiguities in the notice will be construed against the
party. A notice is not evidence except as an admission by
a party-opponent.
(c)  Correction . A party may move to correct its
notice. The motion should be filed promptly after the
party becomes aware of the basis for the correction. A
correction filed after the time set for filing notices will
only be entered if entry would serve the interests of
justice.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.121Motions.
(a)  Types of motions —
(1)  Substantive motions. Consistent with the notice
of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
(i) To redefine the scope of the contested case,
(ii) To change benefit accorded for the
contested subject matter, or
(iii) For judgment in the contested case.
(2)  Responsive motions. The Board may authorize
a party to file a motion to amend or add a claim, to
change inventorship, or otherwise to cure a defect
raised in a notice of requested relief or in a substantive
motion.
(3)  Miscellaneous motions.  Any request for relief
other than a substantive or responsive motion must be
filed as a miscellaneous motion.
(b)  Burden of proof . The party filing the motion has
the burden of proof to establish that it is entitled to the
requested relief.
(c)  Content of motions; oppositions and replies.
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 (1) Each motion must be filed as a separate paper
and must include:
(i) A statement of the precise relief requested,
(ii) A statement of material facts (see
paragraph (d) of this section), and
(iii) A full statement of the reasons for the
relief requested, including a detailed explanation
of the significance of the evidence and the
governing law, rules, and precedent.
(2)  Compliance with rules . Where a rule in part 1
of this title ordinarily governs the relief sought, the
motion must make any showings required under that
rule in addition to any showings required in this part.
(3) The Board may order additional showings or
explanations as a condition for filing a motion.
(d)  Statement of material facts. (1) Each material fact
shall be set forth as a separate numbered sentence with
specific citations to the portions of the record that support
the fact.
(2) The Board may require that the statement of
material facts be submitted as a separate paper.
(e)  Claim charts . Claim charts must be used in
support of any paper requiring the comparison of a claim
to something else, such as another claim, prior art, or a
specification. Claim charts must accompany the paper as
an appendix. Claim charts are not a substitute for
appropriate argument and explanation in the paper.
(f) The Board may order briefing on any issue that
could be raised by motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.122Oppositions and replies.
(a) Oppositions and replies must comply with the
content requirements for motions and must include a
statement identifying material facts in dispute. Any
material fact not specifically denied shall be considered
admitted.
(b) All arguments for the relief requested in a motion
must be made in the motion. A reply may only respond
to arguments raised in the corresponding opposition.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.123Default filing times.
(a) A  motion, other than a miscellaneous motion, may
only be filed according to a schedule the Board sets. The
default times for acting are:
(1) An  opposition  is due 30 days after service of
the motion.(2) A  reply  is due 30 days after service of the
opposition.
(3) A  responsive motion  is due 30 days after the
service of the motion.
(b)  Miscellaneous motions.
(1) If no time for filing a specific miscellaneous
motion is provided in this part or in a Board order:
(i) The opposing party must be consulted prior
to filing the miscellaneous motion, and
(ii) If an opposing party plans to oppose the
miscellaneous motion, the movant may not file
the motion without Board authorization. Such
authorization should ordinarily be obtained
through a telephone conference including the
Board and every other party to the proceeding.
Delay in seeking relief may justify a denial of the
motion.
(2) An opposition may not be filed without
authorization. The default times for acting are:
(i) An  opposition  to a miscellaneous motion
is due five business days after service of the
motion.
(ii) A  reply  to a miscellaneous motion
opposition is due three business days after service
of the opposition.
(c)  Exhibits . Each exhibit must be filed and served
with the first paper in which it is cited except as the Board
may otherwise order.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.124Oral argument.
(a)  Request for oral argument . A party may request
an oral argument on an issue raised in a paper within five
business days of the filing of the paper. The request must
be filed as a separate paper and must specify the issues
to be considered.
(b)  Copies for panel . If an oral argument is set for a
panel, the movant on any issue to be argued must provide
three working copies of the motion, the opposition, and
the reply. Each party is responsible for providing three
working copies of its exhibits relating to the motion.
(c)  Length of argument. If a request for oral argument
is granted, each party will have a total of 20 minutes to
present its arguments, including any time for rebuttal.
(d)  Demonstrative exhibits  must be served at least
five business days before the oral argument and filed no
later than the time of the oral argument.
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 (e)  Transcription . The Board encourages the use of
a transcription service at oral arguments but, if such a
service is to be used, the Board must be notified in
advance to ensure adequate facilities are available and a
transcript must be filed with the Board promptly after the
oral argument.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.125Decision on motions.
(a)  Order of consideration . The Board may take up
motions for decisions in any order, may grant, deny, or
dismiss any motion, and may take such other action
appropriate to secure the just, speedy, and inexpensive
determination of the proceeding. A decision on a motion
may include deferral of action on an issue until a later
point in the proceeding.
(b)  Interlocutory decisions . A decision on motions
without a judgment is not final for the purposes of judicial
review. A panel decision on an issue will govern further
proceedings in the contested case.
(c)  Rehearing —(1) Time for request. A request for
rehearing of a decision on a motion must be filed within
fourteen days of the decision.
(2)  No tolling. The filing of a request for rehearing
does not toll times for taking action.
(3)  Burden on rehearing . The burden of showing
a decision should be modified lies with the party
attacking the decision. The request must specifically
identify:
(i) All matters the party believes to have been
misapprehended or overlooked, and
(ii) The place where the matter was previously
addressed in a motion, opposition, or reply.
(4)  Opposition; reply. Neither an opposition nor a
reply to a request for rehearing may be filed without
Board authorization.
(5)  Panel rehearing . If a decision is not a panel
decision, the party requesting rehearing may request
that a panel rehear the decision. A panel rehearing a
procedural decision will review the decision for an
abuse of discretion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.126Arbitration.
(a) Parties to a contested case may resort to binding
arbitration to determine any issue in a contested case. The
Office is not a party to the arbitration. The Board is not
bound and may independently determine questions of
patentability, jurisdiction, and Office practice.(b) The Board will not authorize arbitration unless:
(1) It is to be conducted according to Title 9 of the
United States Code.
(2) The parties notify the Board in writing of their
intention to arbitrate.
(3) The agreement to arbitrate:
(i) Is in writing,
(ii) Specifies the issues to be arbitrated,
(iii) Names the arbitrator, or provides a date
not more than 30 days after the execution of the
agreement for the selection of the arbitrator, and
(iv) Provides that the arbitrator’s award shall
be binding on the parties and that judgment
thereon can be entered by the Board.
(4) A copy of the agreement is filed within 20 days
after its execution.
(5) The arbitration is completed within the time the
Board sets.
(c) The parties are solely responsible for the selection
of the arbitrator and the conduct of proceedings before
the arbitrator.
(d) Issues not disposed of by the arbitration will be
resolved in accordance with the procedures established
in this subpart.
(e) The Board will not consider the arbitration award
unless it:
(1) Is binding on the parties,
(2) Is in writing,
(3) States in a clear and definite manner each issue
arbitrated and the disposition of each issue, and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award
may not take actions inconsistent with the award. If the
award is dispositive of the contested subject matter for a
party, the Board may enter judgment as to that party.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.127Judgment.
(a)  Effect within Office —(1)  Estoppel . A judgment
disposes of all issues that were, or by motion could have
properly been, raised and decided. A losing party who
could have properly moved for relief on an issue, but did
not so move, may not take action in the Office after the
judgment that is inconsistent with that party’s failure to
move, except that a losing party shall not be estopped
with respect to any contested subject matter for which
that party was awarded a favorable judgment.
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 (2)  Final disposal of claim . Adverse judgment
against a claim is a final action of the Office requiring
no further action by the Office to dispose of the claim
permanently.
(b)  Request for adverse judgment . A party may at
any time in the proceeding request judgment against itself.
Actions construed to be a request for adverse judgment
include:
(1) Abandonment of an involved application such
that the party no longer has an application or patent
involved in the proceeding,
(2) Cancellation or disclaiming of a claim such that
the party no longer has a claim involved in the
proceeding,
(3) Concession of priority or unpatentability of the
contested subject matter, and
(4) Abandonment of the contest.
(c)  Recommendation . The judgment may include a
recommendation for further action by the examiner or by
the Director. If the Board recommends rejection of a claim
of an involved application, the examiner must 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.
(d)  Rehearing. A party dissatisfied with the judgment
may file a request for rehearing within 30 days of the
entry of the judgment The request must specifically
identify all matters the party believes to have been
misapprehended or overlooked, and the place where the
matter was previously addressed in a motion, opposition
or reply.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (d) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 
41.128Sanctions.
(a) The Board may impose a sanction against a party
for misconduct, including:
(1) Failure to comply with an applicable rule or
order in the proceeding;
(2) Advancing a misleading or frivolous request
for relief or argument; or
(3) Engaging in dilatory tactics.
(b) Sanctions include entry of:
(1) An order holding certain facts to have been
established in the proceeding;
(2) An order expunging, or precluding a party from
filing, a paper;(3) An order precluding a party from presenting or
contesting a particular issue;
(4) An order precluding a party from requesting,
obtaining, or opposing discovery;
(5) An order excluding evidence;
(6) An order awarding compensatory expenses,
including attorney fees;
(7) An order requiring terminal disclaimer of patent
term; or
(8) Judgment in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.150Discovery.
(a)  Limited discovery . A party is not entitled to
discovery except as authorized in this subpart. The parties
may agree to discovery among themselves at any time.
(b)  Automatic discovery.
(1) Within 21 days of a request by an opposing
party, a party must:
(i) Serve a legible copy of every requested
patent, patent application, literature reference, and
test standard mentioned in the specification of the
party’s involved patent or application, or
application upon which the party will rely for
benefit, and, if the requested material is in a
language other than English, a translation, if
available, and
(ii) File with the Board a notice (without
copies of the requested materials) of service of
the requested materials.
(2) Unless previously served, or the Board orders
otherwise, any exhibit cited in a motion or in testimony
must be served with the citing motion or testimony.
(c)  Additional discovery . (1) A party may request
additional discovery. The requesting party must show that
such additional discovery is in the interests of justice. The
Board may specify conditions for such additional
discovery.
(2) When appropriate, a party may obtain
production of documents and things during cross
examination of an opponent’s witness or during
testimony authorized under § 41.156 .
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.151Admissibility.
Evidence that is not taken, sought, or filed in accordance
with this subpart shall not be admissible.
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 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.152Applicability of the Federal Rules of Evidence.
(a)  Generally . Except as otherwise provided in this
subpart, the Federal Rules of Evidence shall apply to
contested cases.
(b)  Exclusions . Those portions of the Federal Rules
of Evidence relating to criminal proceedings, juries, and
other matters not relevant to proceedings under this
subpart shall not apply.
(c)  Modifications in terminology . Unless otherwise
clear from context, the following terms of the Federal
Rules of Evidence shall be construed as indicated:
 Appellate court  means United States Court
of Appeals for the Federal Circuit or a United States
district court when judicial review is under 35 U .S.C.
146.
 Civil action ,  civil proceeding ,  action , and  trial
mean contested case.
 Courts of the United States ,  U.S. Magistrate ,
 court ,  trial court , and  trier of fact  mean Board.
 Hearing  means:
(i) In Federal Rule of Evidence 703, the time
when the expert testifies.
(ii) In Federal Rule of Evidence 804(a)(5), the
time for taking testimony.
 Judge  means the Board.
 Judicial notice  means official notice.
 Trial or hearing  means, in Federal Rule of
Evidence 807, the time for taking testimony.
(d) The Board, in determining foreign law, may
consider any relevant material or source, including
testimony, whether or not submitted by a party or
admissible under the Federal Rules of Evidence.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.153Records of the Office.
Certification is not necessary as a condition to
admissibility when the evidence to be submitted is a
record of the Office to which all parties have access.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.154Form of evidence.
(a) Evidence consists of affidavits, transcripts of
depositions, documents, and things. All evidence must
be submitted in the form of an exhibit.(b)  Translation required . When a party relies on a
document or is required to produce a document in a
language other than English, a translation of the document
into English and an affidavit attesting to the accuracy of
the translation must be filed with the document.
(c)
(1) Each exhibit must have an exhibit label with a
unique number in a range assigned by the Board, the
names of the parties, and the proceeding number in the
following format:
JONES EXHIBIT 2001Jones v. SmithContested Case
104,999
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in
sequence, and
(ii) The exhibit label must be affixed to the
lower right corner of the first page of the exhibit
without obscuring information on the first page
or, if obscuring is unavoidable, affixed to a
duplicate first page.
(d)  Exhibit list . Each party must maintain an exhibit
list with the exhibit number and a brief description of
each exhibit. If the exhibit is not filed, the exhibit list
should note that fact. The Board may require the filing of
a current exhibit list prior to acting on a motion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (c)(1) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30,
2004]
§ 
41.155Objection; motion to exclude; motion in limine.
(a)   Deposition . Objections to deposition evidence
must be made during the deposition. Evidence to cure the
objection must be provided during the deposition unless
the parties to the deposition stipulate otherwise on the
deposition record.
(b)   Other than deposition . For evidence other than
deposition evidence:
(1)   Objection . Any objection must be served
within five business days of service of evidence, other
than deposition evidence, to which the objection is
directed.
(2)  Supplemental evidence.  The party relying on
evidence for which an objection is timely served may
respond to the objection by serving supplemental
evidence within ten business days of service of the
objection.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (b) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 2004]
§ 
41.156Compelling testimony and production.
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 (a)  Authorization required. A party seeking to compel
testimony or production of documents or things must file
a miscellaneous motion for authorization. The
miscellaneous motion must describe the general relevance
of the testimony, document, or thing and must:
(1) In the case of testimony, identify the witness
by name or title, and
(2) In the case of a document or thing, the general
nature of the document or thing.
(b)  Outside the United States . For testimony or
production sought outside the United States, the motion
must also:
(1)  In the case of testimony. (i) Identify the foreign
country and explain why the party believes the witness
can be compelled to testify in the foreign country,
including a description of the procedures that will be
used to compel the testimony in the foreign country
and an estimate of the time it is expected to take to
obtain the testimony; and
(ii) Demonstrate that the party has made
reasonable efforts to secure the agreement of the
witness to testify in the United States but has been
unsuccessful in obtaining the agreement, even
though the party has offered to pay the expenses
of the witness to travel to and testify in the United
States.
(2)  In the case of production of a document or
thing . (i) Identify the foreign country and explain why
the party believes production of the document or thing
can be compelled in the foreign country, including a
description of the procedures that will be used to
compel production of the document or thing in the
foreign country and an estimate of the time it is
expected to take to obtain production of the document
or thing; and
(ii) Demonstrate that the party has made
reasonable efforts to obtain the agreement of the
individual or entity having possession, custody,
or control of the document to produce the
document or thing in the United States but has
been unsuccessful in obtaining that agreement,
even though the party has offered to pay the
expenses of producing the document or thing in
the United States.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.157Taking testimony.
(a)  Form . Direct testimony must be submitted in the
form of an affidavit except when the testimony is
compelled under 35 U .S.C. 24 , in which case it may be
in the form of a deposition transcript.(b)  Time and location . (1)  Uncompelled direct
testimony  may be taken at any time; otherwise, testimony
may only be taken during such time period as the Board
may authorize.
(2)  Other testimony . (i) Except as the Board
otherwise orders, authorized testimony may be taken
at any reasonable time and location within the United
States before any disinterested official authorized to
administer oaths at that location.
(ii) Testimony outside the United States may
only be taken as the Board specifically directs.
(c)  Notice of deposition . (1) Prior to the taking of
testimony, all parties to the proceeding must agree on the
time and place for taking testimony. If the parties cannot
agree, the party seeking the testimony must initiate a
conference with the Board to set a time and place.
(2) Cross-examination should ordinarily take place
after any supplemental evidence relating to the direct
testimony has been filed and more than a week before
the filing date for any paper in which the
cross-examination testimony is expected to be used. A
party requesting cross-examination testimony of more
than one witness may choose the order in which the
witnesses are to be cross-examined.
(3) In the case of direct testimony, at least three
business days prior to the conference in paragraph
(c)(1) of this section, the party seeking the direct
testimony must serve:
(i) A list and copy of each document under
the party’s control and on which the party intends
to rely, and
(ii) A list of, and proffer of reasonable access
to, any thing other than a document under the
party’s control and on which the party intends to
rely.
(4) Notice of the deposition must be filed at least
two business days before a deposition. The notice limits
the scope of the testimony and must list:
(i) The time and place of the deposition,
(ii) The name and address of the witness,
(iii) A list of the exhibits to be relied upon
during the deposition, and
(iv) A general description of the scope and
nature of the testimony to be elicited.
(5)  Motion to quash . Objection to a defect in the
notice is waived unless a miscellaneous motion to quash
is promptly filed.
(d)  Deposition in a foreign language. If an interpreter
will be used during the deposition, the party calling the
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 witness must initiate a conference with the Board at least
five business days before the deposition.
(e)  Manner of taking testimony . (1) Each witness
before giving a deposition shall be duly sworn according
to law by the officer before whom the deposition is to be
taken. The officer must be authorized to take testimony
under 35 U .S.C. 23 .
(2) The testimony shall be taken in answer to
interrogatories with any questions and answers recorded
in their regular order by the officer, or by some other
disinterested person in the presence of the officer,
unless the presence of the officer is waived on the
record by agreement of all parties.
(3) Any exhibits relied upon must be numbered
according to the numbering scheme assigned for the
contested case and must, if not previously served, be
served at the deposition.
(4) All objections made at the time of the deposition
to the qualifications of the officer taking the deposition,
the manner of taking it, the evidence presented, the
conduct of any party, and any other objection to the
proceeding shall be noted on the record by the officer.
Evidence objected to shall be taken subject to a ruling
on the objection.
(5) When the testimony has been transcribed, the
witness shall read and sign (in the form of an affidavit)
a transcript of the deposition unless:
(i) The parties otherwise agree in writing,
(ii) The parties waive reading and signature
by the witness on the record at the deposition, or
(iii) The witness refuses to read or sign the
transcript of the deposition.
(6) The officer shall prepare a certified transcript
by attaching to the transcript of the deposition a
certificate in the form of an affidavit signed and sealed
by the officer. Unless the parties waive any of the
following requirements, in which case the certificate
shall so state, the certificate must state:
(i) The witness was duly sworn by the officer
before commencement of testimony by the
witness;
(ii) The transcript is a true record of the
testimony given by the witness;
(iii) The name of the person who recorded the
testimony and, if the officer did not record it,
whether the testimony was recorded in the
presence of the officer;
(iv) The presence or absence of any opponent;(v) The place where the deposition was taken
and the day and hour when the deposition began
and ended;
(vi) The officer has no disqualifying interest,
personal or financial, in a party; and
(vii) If a witness refuses to read or sign the
transcript, the circumstances under which the
witness refused.
(7) The officer must promptly provide a copy of
the transcript to all parties. The proponent of the
testimony must file the original as an exhibit.
(8) Any objection to the content, form, or manner
of taking the deposition, including the qualifications
of the officer, is waived unless made on the record
during the deposition and preserved in a timely filed
miscellaneous motion to exclude.
(f)  Costs . Except as the Board may order or the
parties may agree in writing, the proponent of the
testimony shall bear all costs associated with the
testimony, including the reasonable costs associated with
making the witness available for the cross-examination.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.158Expert testimony; tests and data.
(a) Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is
entitled to little or no weight. Testimony on United States
patent law will not be admitted.
(b) If a party relies on a technical test or data from
such a test, the party must provide an affidavit explaining:
(1) Why the test or data is being used,
(2) How the test was performed and the data was
generated,
(3) How the data is used to determine a value,
(4) How the test is regarded in the relevant art, and
(5) Any other information necessary for the Board
to evaluate the test and data.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
Subpart E  — Patent Interferences
§ 
41.200Procedure; pendency.
(a) A patent interference is a contested case subject
to the procedures set forth in subpart D of this part.
(b) [Reserved]
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 (c) Patent interferences shall be administered such
that pendency before the Board is normally no more than
two years.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;
para. (b) removed and reserved, 75 FR 19958, Apr. 15, 2010, effective
Apr. 15, 2010]
§ 
41.201Definitions.
In addition to the definitions in §§ 41.2 and 41.100 , the
following definitions apply to proceedings under this
subpart:
 Accord benefit means Board recognition that a patent
application provides a proper constructive reduction to
practice under 35 U .S.C. 102 (g)(1).
 Constructive reduction to practice means a described
and enabled anticipation under 35 U .S.C. 102 (g)(1) in a
patent application of the subject matter of a count.
 Earliest constructive reduction to practice  means the
first constructive reduction to practice that has been
continuously disclosed through a chain of patent
applications including in the involved application or
patent. For the chain to be continuous, each subsequent
application must have been co-pending under  35 U .S.C.
120 or 121 or timely filed under 35 U.S.C. 119  or 365 (a).
 Count  means the Board’s description of the
interfering subject matter that sets the scope of admissible
proofs on priority. Where there is more than one count,
each count must describe a patentably distinct invention.
 Involved claim  means, for the purposes of  35
U.S.C.135 (a), a claim that has been designated as
corresponding to the count.
Senior party  means the party entitled to the
presumption under § 41.207 (a)(1) that it is the prior
inventor. Any other party is a  junior party .
 Threshold issue  means an issue that, if resolved in
favor of the movant, would deprive the opponent of
standing in the interference. Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first
made after the publication of the movant’s application
or issuance of the movant’s patent:
(i) Repose under 35 U .S.C. 135 (b) in view of
the movant’s patent or published application, or
(ii) Unpatentability for lack of written
description under 35 U. S.C. 112 (1) of an involved
application claim where the applicant suggested,
or could have suggested, an interference under §
41.202 (a).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]§ 
41.202Suggesting an interference.
(a)  Applicant . An applicant, including a reissue
applicant, may suggest an interference with another
application or a patent. The suggestion must:
(1) Provide sufficient information to identify the
application or patent with which the applicant seeks an
interference,
(2) Identify all claims the applicant believes
interfere, propose one or more counts, and show how
the claims correspond to one or more counts,
(3) For each count, provide a claim chart comparing
at least one claim of each party corresponding to the
count and show why the claims interfere within the
meaning of § 41.203 (a),
(4) Explain in detail why the applicant will prevail
on priority,
(5) If a claim has been added or amended to
provoke an interference, provide a claim chart showing
the written description for each claim in the applicant’s
specification, and
(6) For each constructive reduction to practice for
which the applicant wishes to be accorded benefit,
provide a chart showing where the disclosure provides
a constructive reduction to practice within the scope
of the interfering subject matter.
(b) Patentee . A patentee cannot suggest an
interference under this section but may, to the extent
permitted under § 1.99 and § 1.291  of this title, alert the
examiner of an application claiming interfering subject
matter to the possibility of an interference.
(c)  Examiner. An examiner may require an applicant
to add a claim to provoke an interference. Failure to
satisfy the requirement within a period (not less than one
month) the examiner sets will operate as a concession of
priority for the subject matter of the claim. If the
interference would be with a patent, the applicant must
also comply with paragraphs (a)(2) through (a)(6) of this
section. The claim the examiner proposes to have added
must, apart from the question of priority under 35 U .S.C.
102 (g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed
by another applicant or patentee.
(d)  Requirement to show priority under 35 U.S.C.
102(g) .(1) When an applicant has an earliest constructive
reduction to practice that is later than the apparent earliest
constructive reduction to practice for a patent or published
application claiming interfering subject matter, the
applicant must show why it would prevail on priority.
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 (2) If an applicant fails to show priority under
paragraph (d)(1) of this section, an administrative patent
judge may nevertheless declare an interference to place
the applicant under an order to show cause why
judgment should not be entered against the applicant
on priority. New evidence in support of priority will
not be admitted except on a showing of good cause.
The Board may authorize the filing of motions to
redefine the interfering subject matter or to change the
benefit accorded to the parties.
(e)  Sufficiency of showing . (1) A showing of priority
under this section is not sufficient unless it would, if
unrebutted, support a determination of priority in favor
of the party making the showing.
(2) When testimony or production necessary to
show priority is not available without authorization
under § 41.150 (c) or § 41.156 (a), the showing shall
include:
(i) Any necessary interrogatory, request for
admission, request for production, or deposition
request, and
(ii) A detailed proffer of what the response to
the interrogatory or request would be expected to
be and an explanation of the relevance of the
response to the question of priority.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.203Declaration.
(a)  Interfering subject matter. An interference exists
if the subject matter of a claim of one party would, if prior
art, have anticipated or rendered obvious the subject
matter of a claim of the opposing party and vice versa.
(b)  Notice of declaration . An administrative patent
judge declares the patent interference on behalf of the
Director. A notice declaring an interference identifies:
(1) The interfering subject matter;
(2) The involved applications, patents, and claims;
(3) The accorded benefit for each count; and
(4) The claims corresponding to each count.
(c)  Redeclaration . An administrative patent judge
may redeclare a patent interference on behalf of the
Director to change the declaration made under paragraph
(b) of this section.
(d) A party may suggest the addition of a patent or
application to the interference or the declaration of an
additional interference. The suggestion should make the
showings required under §  41.202 (a) of this part.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]§ 
41.204Notice of basis for relief.
(a)  Priority statement . (1) A party may not submit
evidence of its priority in addition to its accorded benefit
unless it files a statement setting forth all bases on which
the party intends to establish its entitlement to judgment
on priority.
(2) The priority statement must:
(i) State the date and location of the party’s
earliest corroborated conception,
(ii) State the date and location of the party’s
earliest corroborated actual reduction to practice,
(iii) State the earliest corroborated date on
which the party’s diligence began, and
(iv) Provide a copy of the earliest document
upon which the party will rely to show conception.
(3) If a junior party fails to file a priority statement
overcoming a senior party’s accorded benefit, judgment
shall be entered against the junior party absent a
showing of good cause.
(b)  Other substantive motions. The Board may require
a party to list the motions it intends to file, including
sufficient detail to place the Board and the opponent on
notice of the precise relief sought.
(c)  Filing and service . The Board will set the times
for filing and serving statements required under this
section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.205Settlement agreements.
(a)  Constructive notice; time for filing . Pursuant to
35 U .S.C. 135 (c), an agreement or understanding,
including collateral agreements referred to therein, made
in connection with or in contemplation of the termination
of an interference must be filed prior to the termination
of the interference between the parties to the agreement.
After a final decision is entered by the Board, an
interference is considered terminated when no appeal ( 35
U.S.C. 141 ) or other review ( 35 U .S.C. 146 ) has been or
can be taken or had. If an appeal to the U.S. Court of
Appeals for the Federal Circuit (under 35 U .S.C. 141 ) or
a civil action (under 35 U .S.C. 146 ) has been filed the
interference is considered terminated when the appeal or
civil action is terminated. A civil action is terminated
when the time to appeal the judgment expires. An appeal
to the U.S. Court of Appeals for the Federal Circuit,
whether from a decision of the Board or a judgment in a
civil action, is terminated when the mandate is issued by
the Court.
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 (b)  Untimely filing. The Chief Administrative Patent
Judge may permit the filing of an agreement under
paragraph (a) of this section up to six months after
termination upon petition and a showing of good cause
for the failure to file prior to termination.
(c)  Request to keep separate . Any party to an
agreement under paragraph (a) of this section may request
that the agreement be kept separate from the interference
file. The request must be filed with or promptly after the
agreement is filed.
(d)  Access to agreement . Any person, other than a
representative of a Government agency, may have access
to an agreement kept separate under paragraph (c) of this
section only upon petition and on a showing of good
cause. The agreement will be available to Government
agencies on written request.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.206Common interests in the invention.
An administrative patent judge may decline to declare,
or if already declared the Board may issue judgment in,
an interference between an application and another
application or patent that are commonly owned.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.207Presumptions.
(a)  Priority —(1)  Order of invention . Parties are
presumed to have invented interfering subject matter in
the order of the dates of their accorded benefit for each
count. If two parties are accorded the benefit of the same
earliest date of constructive reduction to practice, then
neither party is entitled to a presumption of priority with
respect to the other such party.
(2)  Evidentiary standard . Priority may be proved
by a preponderance of the evidence except a party must
prove priority by clear and convincing evidence if the
date of its earliest constructive reduction to practice is
after the issue date of an involved patent or the
publication date under 35 U.S.C. 122 (b) of an involved
application or patent.
(b)  Claim correspondence . (1) For the purposes of
determining priority and derivation, all claims of a party
corresponding to the count are presumed to stand or fall
together. To challenge this presumption, a party must file
a timely substantive motion to have a corresponding claim
designated as not corresponding to the count. No
presumption based on claim correspondence regarding
the grouping of claims exists for other grounds of
unpatentability.(2) A claim corresponds to a count if the subject
matter of the count, treated as prior art to the claim,
would have anticipated or rendered obvious the subject
matter of the claim.
(c)  Cross-applicability of prior art . When a motion
for judgment of unpatentability against an opponent’s
claim on the basis of prior art is granted, each of the
movant’s claims corresponding to the same count as the
opponent’s claim will be presumed to be unpatentable in
view of the same prior art unless the movant in its motion
rebuts this presumption.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 
41.208Content of substantive and responsive motions.
The general requirements for motions in contested cases
are stated at § 41.121 (c).
(a) In an interference, substantive motions must:
(1) Raise a threshold issue,
(2) Seek to change the scope of the definition of
the interfering subject matter or the correspondence of
claims to the count,
(3) Seek to change the benefit accorded for the
count, or
(4) Seek judgment on derivation or on priority.
(b) To be sufficient, a motion must provide a showing,
supported with appropriate evidence, such that, if
unrebutted, it would justify the relief sought. The burden
of proof is on the movant.
(c)  Showing patentability . (1) A party moving to add
or amend a claim must show the claim is patentable.
(2) A party moving to add or amend a count must
show the count is patentable over prior art.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
SUBCHAPTER  — ADMINISTRATION
PART  - 102   DISCLOSURE OF GOVERNMENT INFORMATION
Subpart A  — Freedom of Information Act
§ 
102.1General.
(a) The information in this part is furnished for the
guidance of the public and in compliance with the
requirements of the Freedom of Information Act (FOIA),
as amended (5 U.S.C. 552). This part sets forth the
procedures the United States Patent and Trademark Office
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 (USPTO) follows to make publicly available the materials
and indices specified in 5 U.S.C. 552(a)(2) and records
requested under 5 U.S.C. 552(a)(3). Information routinely
provided to the public as part of a regular USPTO activity
(for example, press releases issued by the Office of Public
Affairs) may be provided to the public without following
this part. USPTO’s policy is to make discretionary
disclosures of records or information exempt from
disclosure under FOIA whenever disclosure would not
foreseeably harm an interest protected by a FOIA
exemption, but this policy does not create any right
enforceable in court.
(b) As used in this subpart,  FOIA Officer  means the
USPTO employee designated to administer FOIA for
USPTO. To ensure prompt processing of a request,
correspondence should be addressed to the FOIA Officer,
United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450, or delivered by
hand to 10B20, Madison Building East, 600 Dulany
Street, Alexandria, Virginia.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (b) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 
102.2Public reference facilities.
(a) USPTO maintains a public reference facility that
contains the records FOIA requires to be made regularly
available for public inspection and copying; furnishes
information and otherwise assists the public concerning
USPTO operations under FOIA; and receives and
processes requests for records under FOIA. The FOIA
Officer is responsible for determining which of USPTO’s
records are required to be made available for public
inspection and copying, and for making those records
available in USPTO’s reference and records inspection
facility. The FOIA Officer shall maintain and make
available for public inspection and copying a current
subject-matter index of USPTO’s public inspection facility
records. Each index shall be updated regularly, at least
quarterly, with respect to newly included records. In
accordance with 5 U.S.C. 552(a)(2), USPTO has
determined that it is unnecessary and impracticable to
publish quarterly, or more frequently, and distribute copies
of the index and supplements thereto. The public reference
facility is located in the Public Search Room, Madison
Building East, First Floor, 600 Dulany Street, Alexandria,
Virginia.
(b) The FOIA Officer shall also make public
inspection facility records created by USPTO on or after
November 1, 1996, available electronically through
USPTO’s World Wide Web site (http://www.uspto.gov).
Information available at the site shall include:(1) The FOIA Officer’s index of the public
inspection facility records, which indicates which
records are available electronically; and
(2) The general index referred to in paragraph (c)(3)
of this section.
(c) USPTO maintains and makes available for public
inspection and copying:
(1) A current index providing identifying
information for the public as to any matter that is
issued, adopted, or promulgated after July 4, 1967, and
that is retained as a record and is required to be made
available or published. Copies of the index are available
upon request after payment of the direct cost of
duplication;
(2) Copies of records that have been released and
that the FOIA Officer determines, because of their
subject matter, have become or are likely to become
the subject of subsequent requests for substantially the
same records;
(3) A general index of the records described in
paragraph (c)(2) of this section;
(4) Final opinions and orders, including concurring
and dissenting opinions made in the adjudication of
cases;
(5) Those statements of policy and interpretations
that have been adopted by USPTO and are not
published in the  Federal Register  ; and
(6) Administrative staff manuals and instructions
to staff that affect a member of the public.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (a) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010]
§ 
102.3Records under FOIA.
(a) Records under FOIA include all Government
records, regardless of format, medium or physical
characteristics, and include electronic records and
information, audiotapes, videotapes, and photographs.
(b) There is no obligation to create, compile, or obtain
from outside USPTO a record to satisfy a FOIA request.
With regard to electronic data, the issue of whether
records are created or merely extracted from an existing
database is not always apparent. When responding to
FOIA requests for electronic data where creation of a
record or programming becomes an issue, USPTO shall
undertake reasonable efforts to search for the information
in electronic format.
(c) USPTO officials may, upon request, create and
provide new information pursuant to user fee statutes,
such as the first paragraph of 15 U.S.C. 1525, or in
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 accordance with authority otherwise provided by law.
This is outside the scope of FOIA.
(d) The FOIA Officer shall preserve all
correspondence pertaining to the requests received under
this subpart, as well as copies of all requested records,
until disposition or destruction is authorized by Title 44
of the United States Code or a National Archives and
Records Administration’s General Records Schedule. The
FOIA Officer shall not dispose of records while they are
the subject of a pending request, appeal, or lawsuit under
FOIA.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.4Requirements for making requests.
(a) A request for USPTO records that are not
customarily made available to the public as part of
USPTO’s regular informational services must be
in writing, and shall be processed under FOIA, regardless
of whether FOIA is mentioned in the request. Requests
should be sent to the USPTO FOIA Officer, United States
Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450 (records FOIA requires to be made
regularly available for public inspection and copying are
addressed in § 102.2(c) ). For the quickest handling, the
request letter and envelope should be marked “Freedom
of Information Act Request.” For requests for records
about oneself, § 102.24  contains additional requirements.
For requests for records about another individual, either
a written authorization signed by that individual
permitting disclosure of those records to the requester or
proof that individual is deceased (for example, a copy of
a death certificate or an obituary) facilitates processing
the request.
(b) The records requested must be described in enough
detail to enable USPTO personnel to locate them with a
reasonable amount of effort. Whenever possible, a request
should include specific information about each record
sought, such as the date, title or name, author, recipient,
and subject matter of the record, and the name and
location of the office where the record is located. Also,
if records about a court case are sought, the title of the
case, the court in which the case was filed, and the nature
of the case should be included. If known, any file
designations or descriptions for the requested records
should be included. In general, the more specifically the
request describes the records sought, the greater the
likelihood that USPTO will locate those records. If the
FOIA Officer determines that a request does not
reasonably describe records, the FOIA Officer will inform
the requester what additional information is needed or
why the request is otherwise insufficient. The FOIA
Officer also may give the requester an opportunity to
discuss the request so that it may be modified to meet the
requirements of this section.[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
102.5Responsibility for responding to requests.
(a)  In general . Except as stated in paragraph (b) of
this section, the USPTO will process FOIA requests
directed to USPTO. In determining records responsive to
a request, the FOIA Officer shall include only those
records within USPTO’s possession and control as of the
date the FOIA Officer receives the request.
(b)  Consultations and referrals. If the FOIA Officer
receives a request for a record in USPTO’s possession in
which another Federal agency subject to FOIA has the
primary interest, the FOIA Officer shall refer the record
to that agency for direct response to the requester. The
FOIA Officer shall consult with another Federal agency
before responding to a requester if the FOIA Officer
receives a request for a record in which another Federal
agency subject to FOIA has a significant interest, but not
the primary interest; or another Federal agency not subject
to FOIA has the primary interest or a significant interest.
Ordinarily, the agency that originated a record will be
presumed to have the primary interest in it.
(c)  Notice of referral . Whenever a FOIA Officer
refers a document to another Federal agency for direct
response to the requester, the FOIA Officer will ordinarily
notify the requester in writing of the referral and inform
the requester of the name of the agency to which the
document was referred.
(d)  Timing of responses to consultations and
referrals . All consultations and referrals shall be handled
according to the date the FOIA request was received by
the first Federal agency.
(e)  Agreements regarding consultations and referrals.
The FOIA Officer may make agreements with other
Federal agencies to eliminate the need for consultations
or referrals for particular types of records.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.6Time limits and expedited processing.
(a)  In general . The FOIA Officer ordinarily shall
respond to requests according to their order of receipt.
(b) Initial response and appeal.  Subject to paragraph
(c)(1) of this section, an initial response shall be made
within 20 working days ( i.e.,  excluding Saturdays,
Sundays, and legal public holidays) of the receipt of a
request for a record under this part by the proper FOIA
Officer identified in accordance with § 102.5(a) , and an
appeal shall be decided within 20 working days of its
receipt by the Office of the General Counsel.
(c)  Unusual circumstances .
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 (1) In unusual circumstances as specified in
paragraph (c)(2) of this section, the FOIA Officer may
extend the time limits in paragraph (b) of this section
by notifying the requester in writing as soon as
practicable of the unusual circumstances and of the
date by which processing of the request is expected to
be completed. Extensions of time for the initial
determination and extensions on appeal may not exceed
a total of ten working days, unless the requester agrees
to a longer extension, or the FOIA Officer provides the
requester with an opportunity either to limit the scope
of the request so that it may be processed within the
applicable time limit, or to arrange an alternative time
frame for processing the request or a modified request.
(2) As used in this section,  unusual circumstances,
means, but only to the extent reasonably necessary to
properly process the particular request:
(i) The need to search for and collect the
requested records from field facilities or other
establishments separate from the office processing
the request;
(ii) The need to search for, collect, and
appropriately examine a voluminous amount of
separate and distinct records that are the subject
of a single request; or
(iii) The need for consultation, which shall be
conducted with all practicable speed, with another
Federal agency having a substantial interest in the
determination of the request.
(3) Unusual circumstances do not include a delay
that results from a predictable workload of requests,
unless USPTO demonstrates reasonable progress in
reducing its backlog of pending requests. Refusal to
reasonably modify the scope of a request or arrange an
alternate time frame may affect a requester’s ability to
obtain judicial review.
(4) If the FOIA Officer reasonably believes that
multiple requests submitted by a requester, or by a
group of requesters acting in concert, constitute a single
request that would otherwise involve unusual
circumstances, and the requests involve clearly related
matters, the FOIA Officer may aggregate them.
Multiple requests involving unrelated matters will not
be aggregated.
(d)  Multitrack processing .
(1) The FOIA Officer may use two or more
processing tracks by distinguishing between simple
and more complex requests based on the number of
pages involved, or some other measure of the amount
of work and/or time needed to process the request, and
whether the request qualifies for expedited processing
as described in paragraph (e) of this section.(2) The FOIA Officer may provide requesters in a
slower track with an opportunity to limit the scope of
their requests in order to qualify for faster processing.
The FOIA Officer may contact the requester by
telephone or by letter, whichever is most efficient in
each case.
(e)  Expedited processing .
(1) Requests and appeals shall be taken out of order
and given expedited treatment whenever it is
determined they involve:
(i) Circumstances in which the lack of
expedited treatment could reasonably be expected
to pose an imminent threat to the life or physical
safety of an individual;
(ii) The loss of substantial due process rights;
(iii) A matter of widespread and exceptional
media interest in which there exist questions about
the Government’s integrity that affect public
confidence; or
(iv) An urgency to inform the public about an
actual or alleged Federal Government activity, if
made by a person primarily engaged in
disseminating information.
(2) A request for expedited processing may be made
at the time of the initial request for records or at any
later time. For a prompt determination, a request for
expedited processing should be sent to the FOIA
Officer.
(3) A requester who seeks expedited processing
must submit a statement, certified to be true and correct
to the best of that person’s knowledge and belief,
explaining in detail the basis for requesting expedited
processing. For example, a requester within the
category described in paragraph (e)(1)(iv) of this
section, if not a full-time member of the news media,
must establish that he or she is a person whose main
professional activity or occupation is information
dissemination, though it need not be his or her sole
occupation. A requester within the category described
in paragraph (e)(1)(iv) of this section must also
establish a particular urgency to inform the public about
the Government activity involved in the request, beyond
the public’s right to know about Government activity
generally. The formality of certification may be waived
as a matter of administrative discretion.
(4) Within ten calendar days of receipt of a request
for expedited processing, the FOIA Officer will decide
whether to grant it and shall notify the requester of the
decision. If a request for expedited treatment is granted,
the request shall be given priority and processed as
soon as practicable. If a request for expedited
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 processing is denied, any appeal of that decision shall
be acted on expeditiously.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.7Responses to requests.
(a) Grants of requests . If the FOIA Officer makes a
determination to grant a request in whole or in part, the
FOIA Officer will notify the requester in writing. The
FOIA Officer will inform the requester in the notice of
any fee charged under § 102.11  and disclose records to
the requester promptly upon payment of any applicable
fee. Records disclosed in part shall be marked or annotated
to show each applicable FOIA exemption and the amount
of information deleted, unless doing so would harm an
interest protected by an applicable exemption. The
location of the information deleted shall also be indicated
on the record, if feasible.
(b) Adverse determinations of requests . If the FOIA
Officer makes an adverse determination regarding a
request, the FOIA Officer will notify the requester of that
determination in writing. An adverse determination is a
denial of a request in any respect, namely: A
determination to withhold any requested record in whole
or in part; a determination that a requested record does
not exist or cannot be located; a determination that a
record is not readily reproducible in the form or format
sought by the requester; a determination that what has
been requested is not a record subject to FOIA (except
that a determination under § 102.11(j)  that records are to
be made available under a fee statute other than FOIA is
not an adverse determination); a determination against
the requester on any disputed fee matter, including a
denial of a request for a fee waiver; or a denial of a request
for expedited treatment. Each denial letter shall be signed
by the FOIA Officer and shall include:
(1) The name and title or position of the denying
official;
(2) A brief statement of the reason(s) for the denial,
including applicable FOIA exemption(s);
(3) An estimate of the volume of records or
information withheld, in number of pages or some other
reasonable form of estimation. This estimate need not
be provided if the volume is otherwise indicated
through deletions on records disclosed in part, or if
providing an estimate would harm an interest protected
by an applicable FOIA exemption; and
(4) A statement that the denial may be appealed,
and a list of the requirements for filing an appeal under
§ 102.10(b) .
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]§ 
102.9Business Information.
(a)  In general . Business information obtained by
USPTO from a submitter will be disclosed under FOIA
only under this section.
(b)  Definitions . For the purposes of this section:
(1)  Business information  means commercial or
financial information, obtained by USPTO from a
submitter, which may be protected from disclosure
under FOIA exemption 4 (5 U.S.C. 552(b)(4)).
(2)  Submitter  means any person or entity outside
the Federal Government from whom USPTO obtains
business information, directly or indirectly. The term
includes corporations; state, local and tribal
governments; and foreign governments.
(c)  Designation of business information. A submitter
of business information should designate by appropriate
markings, either at the time of submission or at a
reasonable time thereafter, any portions of its submission
that it considers to be protected from disclosure under
FOIA exemption 4. These designations will expire ten
years after the date of the submission unless the submitter
requests, and provides justification for, a longer
designation period.
(d)  Notice to submitters . The FOIA Officer shall
provide a submitter with prompt written notice of a FOIA
request or administrative appeal that seeks its business
information whenever required under paragraph (e) of
this section, except as provided in paragraph (h) of this
section, in order to give the submitter an opportunity under
paragraph (f) of this section to object to disclosure of any
specified portion of that information. Such written notice
shall be sent via certified mail, return receipt requested,
or similar means. The notice shall either describe the
business information requested or include copies of the
requested records containing the information. When
notification of a large number of submitters is required,
notification may be made by posting or publishing the
notice in a place reasonably likely to accomplish
notification.
(e)  When notice is required. Notice shall be given to
the submitter whenever:
(1) The information has been designated in good
faith by the submitter as protected from disclosure
under FOIA exemption 4; or
(2) The FOIA Officer has reason to believe that the
information may be protected from disclosure under
FOIA exemption 4.
(f)  Opportunity to object to disclosure . The FOIA
Officer shall allow a submitter seven working days ( i.e.,
excluding Saturdays, Sundays, and legal public holidays)
from the date of receipt of the written notice described in
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 paragraph (d) of this section to provide the FOIA Officer
with a detailed statement of any objection to disclosure.
The statement must specify all grounds for withholding
any portion of the information under any exemption of
FOIA and, in the case of exemption 4, it must show why
the information is a trade secret or commercial or financial
information that is privileged or confidential. If a
submitter fails to respond to the notice within the time
specified, the submitter will be considered to have no
objection to disclosure of the information. Information a
submitter provides under this paragraph may itself be
subject to disclosure under FOIA.
(g)  Notice of intent to disclose . The FOIA Officer
shall consider a submitter’s objections and specific
grounds under FOIA for nondisclosure in deciding
whether to disclose business information. If the FOIA
Officer decides to disclose business information over the
objection of a submitter, the FOIA Officer shall give the
submitter written notice via certified mail, return receipt
requested, or similar means, which shall include:
(1) A statement of reason(s) why the submitter’s
objections to disclosure were not sustained;
(2) A description of the business information to be
disclosed; and
(3) A statement that the FOIA Officer intends to
disclose the information seven working days from the
date the submitter receives the notice.
(h)  Exceptions to notice requirements . The notice
requirements of paragraphs (d) and (g) of this section
shall not apply if:
(1) The FOIA Officer determines that the
information should not be disclosed;
(2) The information has been lawfully published
or has been officially made available to the public;
(3) Disclosure of the information is required by
statute (other than FOIA) or by a regulation issued in
accordance with Executive Order 12600; or
(4) The designation made by the submitter under
paragraph (c) of this section appears obviously
frivolous, in which case the FOIA Officer shall provide
the submitter written notice of any final decision to
disclose the information seven working days from the
date the submitter receives the notice.
(i)  Notice of FOIA lawsuit.  Whenever a requester
files a lawsuit seeking to compel the disclosure of business
information, the FOIA Officer shall promptly notify the
submitter.
(j)  Corresponding notice to requesters . Whenever a
FOIA Officer provides a submitter with notice and an
opportunity to object to disclosure under paragraph (d)
of this section, the FOIA Officer shall also notify therequester(s). Whenever a submitter files a lawsuit seeking
to prevent the disclosure of business information, the
FOIA Officer shall notify the requester(s).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.10Appeals from initial determinations or
untimely delays.
(a) If a request for records is initially denied in whole
or in part, or has not been timely determined, or if a
requester receives an adverse initial determination
regarding any other matter under this subpart (as described
in § 102.7(b) ), the requester may file a written appeal,
which must be received by the Office of General Counsel
within thirty calendar days of the date of the written denial
or, if there has been no determination, may be submitted
anytime after the due date, including the last extension
under § 102.6(c) , of the determination.
(b) Appeals shall be decided by a Deputy General
Counsel. Appeals should be addressed to the General
Counsel, United States Patent and Trademark Office, PO
Box 1450, Alexandria, Virginia 22313-1450. Both the
letter and the appeal envelope should be clearly marked
“Freedom of Information Appeal”. The appeal must
include a copy of the original request and the initial denial,
if any, and may include a statement of the reasons why
the records requested should be made available and why
the initial denial, if any, was in error. No opportunity for
personal appearance, oral argument or hearing on appeal
is provided.
(c) If an appeal is granted, the person making the
appeal shall be immediately notified and copies of the
releasable documents shall be made available promptly
thereafter upon receipt of appropriate fees determined in
accordance with § 102.11 .
(d) If no determination of an appeal has been sent to
the requester within the twenty-working-day period
specified in § 102.6(b)  or the last extension thereof, the
requester is deemed to have exhausted his administrative
remedies with respect to the request, giving rise to a right
of judicial review under 5 U.S.C. 552(a)(6)(C). If the
person making a request initiates a civil action against
USPTO based on the provision in this paragraph, the
administrative appeal process may continue.
(e) A determination on appeal shall be in writing and,
when it denies records in whole or in part, the letter to
the requester shall include:
(1) A brief explanation of the basis for the denial,
including a list of applicable FOIA exemptions and a
description of how the exemptions apply;
(2) A statement that the decision is final;
(3) Notification that judicial review of the denial
is available in the United States district court for the
district in which the requester resides or has its
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 principal place of business, the United States District
Court for the Eastern District of Virginia, or the District
of Columbia; and
(4) The name and title or position of the official
responsible for denying the appeal.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
102.11Fees.
(a)  In general . USPTO shall charge for processing
requests under FOIA in accordance with paragraph (c) of
this section, except when fees are limited under paragraph
(d) of this section or when a waiver or reduction of fees
is granted under paragraph (k) of this section. USPTO
shall collect all applicable fees before sending copies of
requested records to a requester. Requesters must pay fees
by check or money order made payable to the Treasury
of the United States.
(b)  Definitions . For purposes of this section:
(1)  Commercial use request means a request from
or on behalf of a person who seeks information for a
use or purpose that furthers his or her commercial,
trade, or profit interests, which can include furthering
those interests through litigation. The FOIA Officer
shall determine, whenever reasonably possible, the use
to which a requester will put the requested records.
When it appears that the requester will put the records
to a commercial use, either because of the nature of the
request itself or because the FOIA Officer has
reasonable cause to doubt a requester’s stated use, the
FOIA Officer shall provide the requester a reasonable
opportunity to submit further clarification.
(2)  Direct costs  means those expenses USPTO
incurs in searching for and duplicating (and, in the case
of commercial use requests, reviewing) records to
respond to a FOIA request. Direct costs include, for
example, the labor costs of the employee performing
the work (the basic rate of pay for the employee, plus
16 percent of that rate to cover benefits). Not included
in direct costs are overhead expenses such as the costs
of space and heating or lighting of the facility in which
the records are kept.
(3)  Duplication  means the making of a copy of a
record, or of the information contained in it, necessary
to respond to a FOIA request. Copies may take the form
of paper, microform, audiovisual materials, or
electronic records (for example, magnetic tape or disk),
among others. The FOIA Officer shall honor a
requester’s specified preference of form or format of
disclosure if the record is readily reproducible with
reasonable efforts in the requested form or format.(4)  Educational institution  means a preschool, a
public or private elementary or secondary school, an
institution of undergraduate higher education, an
institution of graduate higher education, an institution
of professional education, or an institution of vocational
education, that operates a program of scholarly
research. To be in this category, a requester must show
that the request is authorized by and is made under the
auspices of a qualifying institution, and that the records
are sought to further scholarly research rather than for
a commercial use.
(5)  Noncommercial scientific institution  means an
institution that is not operated on a “commercial” basis,
as that term is defined in paragraph (b)(1) of this
section, and that is operated solely for the purpose of
conducting scientific research, the results of which are
not intended to promote any particular product or
industry. To be in this category, a requester must show
that the request is authorized by and is made under the
auspices of a qualifying institution and that the records
are sought to further scientific research rather than for
a commercial use.
(6)  Representative of the news media, or news
media requester  means any person actively gathering
news for an entity that is organized and operated to
publish or broadcast news to the public. The term
“news” means information that is about current events
or that would be of current interest to the public.
Examples of news media entities include television or
radio stations broadcasting to the public at large and
publishers of periodicals (but only if they can qualify
as disseminators of “news”) that make their products
available for purchase or subscription by the general
public. For “freelance” journalists to be regarded as
working for a news organization, they must demonstrate
a solid basis for expecting publication through that
organization. A publication contract would be the
clearest proof, but the FOIA Officer shall also look to
the past publication record of a requester in making
this determination. To be in this category, a requester
must not be seeking the requested records for a
commercial use. However, a request for records
supporting the news-dissemination function of the
requester shall not be considered to be for a commercial
use.
(7)  Review  means the examination of a record
located in response to a request in order to determine
whether any portion of it is exempt from disclosure. It
also includes processing any record for disclosure—for
example, doing all that is necessary to redact it and
prepare it for disclosure. Review costs are recoverable
even if a record ultimately is not disclosed. Review
time does not include time spent resolving general legal
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 or policy issues regarding the application of
exemptions.
(8)  Search  means the process of looking for and
retrieving records or information responsive to a
request. It includes page-by-page or line-by-line
identification of information within records and also
includes reasonable efforts to locate and retrieve
information from records maintained in electronic form
or format. The FOIA Officer shall ensure that searches
are done in the most efficient and least expensive
manner reasonably possible.
(c)  Fees. In responding to FOIA requests, the FOIA
Officer shall charge the fees summarized in chart form
in paragraphs (c)(1) and (c)(2) of this section and
explained in paragraphs (c)(3) through (c)(5) of this
section, unless a waiver or reduction of fees has been
granted under paragraph (k) of this section.
(1) The four categories and chargeable fees are:
Chargeable fees Category
Search, Review, and Duplication. (i) Commercial Use Requesters
Duplication (excluding the cost of
the first 100 pages).(ii) Educational and
Non-commercial Scientific Institution
Requesters
Duplication (excluding the cost of
the first 100 pages).(iii) Representatives of the News
Media
Search and Duplication (excluding
the cost of the first 2 hours of search
and 100 pages).(iv) All Other Requesters
(2)  Uniform fee schedule .
Rate Service
Actual salary rate of employee
involved, plus 16 percent of salary
rate.(i) Manual search
Actual direct cost, including
operator time.(ii) Computerized search
$.15 per page Actual direct cost,
including operator time(iii) Duplication of records: (A)
Paper copy reproduction (B) Other
reproduction ( e.g., computer disk or
printout, microfilm, microfiche, or
microform)
Actual salary rate of employee
conducting review, plus 16 percent of
salary rate.(iv) Review of records (includes
preparation for release,  i.e. excising)
(3)  Search .(i) Search fees shall be charged for all
requests—other than requests made by educational
institutions, noncommercial scientific institutions,
or representatives of the news media—subject to
the limitations of paragraph (d) of this section.
The FOIA Officer will charge for time spent
searching even if no responsive records are located
or if located records are entirely exempt from
disclosure. Search fees shall be the direct costs of
conducting the search by the involved employees
(ii) For computer searches of records,
requesters will be charged the direct costs of
conducting the search, although certain requesters
(as provided in paragraph (d)(1) of this section)
will be charged no search fee and certain other
requesters (as provided in paragraph (d)(3) of this
section) are entitled to the cost equivalent of two
hours of manual search time without charge. These
direct costs include the costs, attributable to the
search, of operating a central processing unit and
operator/programmer salary.
(4)  Duplication . Duplication fees will be charged
to all requesters, subject to the limitations of paragraph
(d) of this section. For a paper photocopy of a record
(no more than one copy of which need be supplied),
the fee shall be $.15 cents per page. For copies
produced by computer, such as tapes or printouts, the
FOIA Officer shall charge the direct costs, including
operator time, of producing the copy. For other forms
of duplication, the FOIA Officer will charge the direct
costs of that duplication.
(5)  Review . Review fees shall be charged to
requesters who make a commercial use request. Review
fees shall be charged only for the initial record
review—the review done when the FOIA Officer
determines whether an exemption applies to a particular
record at the initial request level. No charge will be
made for review at the administrative appeal level for
an exemption already applied. However, records
withheld under an exemption that is subsequently
determined not to apply may be reviewed again to
determine whether any other exemption not previously
considered applies, and the costs of that review are
chargeable. Review fees shall be the direct costs of
conducting the review by the involved employees.
(d)  Limitations on charging fees.
(1) No search fee will be charged for requests by
educational institutions, noncommercial scientific
institutions, or representatives of the news media.
(2) No search fee or review fee will be charged for
a quarter-hour period unless more than half of that
period is required for search or review.
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 (3) Except for requesters seeking records for a
commercial use, the FOIA Officer will provide without
charge:
(i) The first 100 pages of duplication (or the
cost equivalent); and
(ii) The first two hours of search (or the cost
equivalent).
(4) Whenever a total fee calculated under paragraph
(c) of this section is $20.00 or less for any request, no
fee will be charged.
(5) The provisions of paragraphs (d) (3) and (4) of
this section work together. This means that for
requesters other than those seeking records for a
commercial use, no fee will be charged unless the cost
of the search in excess of two hours plus the cost of
duplication in excess of 100 pages totals more than
$20.00.
(e)  Notice of anticipated fees over $20.00. When the
FOIA Officer determines or estimates that the fees to be
charged under this section will be more than $20.00, the
FOIA Officer shall notify the requester of the actual or
estimated fees, unless the requester has indicated a
willingness to pay fees as high as those anticipated. If
only a portion of the fee can be estimated readily, the
FOIA Officer shall advise the requester that the estimated
fee may be only a portion of the total fee. If the FOIA
Officer has notified a requester that actual or estimated
fees are more than $20.00, the FOIA Officer shall not
consider the request received or process it further until
the requester agrees to pay the anticipated total fee. Any
such agreement should be in writing. A notice under this
paragraph shall offer the requester an opportunity to
discuss the matter with USPTO personnel in order to
reformulate the request to meet the requester’s needs at
a lower cost.
(f)  Charges for other services . Apart from the other
provisions of this section, the FOIA Officer shall
ordinarily charge the direct cost of special services. Such
special services could include certifying that records are
true copies or sending records by other than ordinary mail.
(g)  Charging interest . The FOIA Officer shall charge
interest on any unpaid bill starting on the 31st calendar
day following the date of billing the requester. Interest
charges shall be assessed at the rate provided in 31 U.S.C.
3717 and accrue from the date of the billing until payment
is received by the FOIA Officer. The FOIA Officer shall
follow the provisions of the Debt Collection Improvement
Act of 1996 (Pub. L. 104-134), as amended, and its
administrative procedures, including the use of consumer
reporting agencies, collection agencies, and offset.
(h)  Aggregating requests . If a FOIA Officer
reasonably believes that a requester or a group ofrequesters acting together is attempting to divide a request
into a series of requests for the purpose of avoiding fees,
the FOIA Officer may aggregate those requests and charge
accordingly. The FOIA Officer may presume that multiple
requests of this type made within a 30-calendar-day period
have been made in order to avoid fees. If requests are
separated by a longer period, the FOIA Officer shall
aggregate them only if a solid basis exists for determining
that aggregation is warranted under all the circumstances
involved. Multiple requests involving unrelated matters
shall not be aggregated.
(i)  Advance payments.
(1) For requests other than those described in
paragraphs (i)(2) and (3) of this section, the FOIA
Officer shall not require the requester to make an
advance payment: a payment made before work is
begun or continued on a request. Payment owed for
work already completed ( i.e., a payment before copies
are sent to a requester) is not an advance payment.
(2) If the FOIA Officer determines or estimates that
a total fee to be charged under this section will be more
than $250.00, the requester must pay the entire
anticipated fee before beginning to process the request,
unless the FOIA Officer receives a satisfactory
assurance of full payment from a requester who has a
history of prompt payment.
(3) If a requester has previously failed to pay a
properly charged FOIA fee to USPTO or another
responsible Federal agency within 30 calendar days of
the date of billing, the FOIA Officer shall require the
requester to pay the full amount due, plus any
applicable interest, and to make an advance payment
of the full amount of any anticipated fee, before the
FOIA Officer begins to process a new request or
continues to process a pending request from that
requester.
(4) In cases in which the FOIA Officer requires
payment under paragraphs (i)(2) or (3) of this section,
the request shall not be considered received and further
work will not be done on it until the required payment
is received.
(5) Upon the completion of processing of a request,
when a specific fee is determined to be payable and
appropriate notice has been given to the requester, the
FOIA Officer shall make records available to the
requester only upon receipt of full payment of the fee.
(j)  Other statutes specifically providing for fees. The
fee schedule of this section does not apply to fees charged
under any statute (except for FOIA) that specifically
requires USPTO or another responsible Federal agency
to set and collect fees for particular types of records. If
records responsive to requests are maintained for
distribution by agencies operating such statutorily based
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 fee schedule programs, the FOIA Officer shall inform
requesters of how to obtain records from those sources.
(k)  Requirements for waiver or reduction of fees .
(1) Records responsive to a request will be
furnished without charge or at a charge reduced below
that established under paragraph (c) of this section if
the FOIA Officer determines, based on all available
information, that the requester has demonstrated that:
(i) Disclosure of the requested information is
in the public interest because it is likely to
contribute significantly to public understanding
of the operations or activities of the Government;
and
(ii) Disclosure of the information is not
primarily in the commercial interest of the
requester.
(2) To determine whether the first fee waiver
requirement is met, the FOIA Officer shall consider
the following factors:
(i)  The subject of the request : whether the
subject of the requested records concerns the
operations or activities of the Government. The
subject of the requested records must concern
identifiable operations or activities of the Federal
Government, with a connection that is direct and
clear, not remote or attenuated.
(ii)  The informative value of the information
to be disclosed:  whether the disclosure is “likely
to contribute” to an understanding of Government
operations or activities. The disclosable portions
of the requested records must be meaningfully
informative about Government operations or
activities in order to be “likely to contribute” to
an increased public understanding of those
operations or activities. The disclosure of
information that already is in the public domain,
in either a duplicative or a substantially identical
form, would not be likely to contribute to such
understanding.
(iii)  The contribution to an understanding of
the subject by the public likely to result from
disclosure:  whether disclosure of the requested
information will contribute to the understanding
of a reasonably broad audience of persons
interested in the subject, as opposed to the
individual understanding of the requester. A
requester’s expertise in the subject area and ability
and intention to effectively convey information
to the public shall be considered. It shall be
presumed that a representative of the news media
satisfies this consideration. It shall be presumed
that a requester who merely provides informationto media sources does not satisfy this
consideration.
(iv)  The significance of the contribution to
public understanding:  whether the disclosure is
likely to contribute “significantly” to public
understanding of Government operations or
activities. The public’s understanding of the
subject in question prior to the disclosure must be
significantly enhanced by the disclosure.
(3) To determine whether the second fee waiver
requirement is met, the FOIA Officer shall consider
the following factors:
(i)  The existence and magnitude of a
commercial interest : whether the requester has a
commercial interest that would be furthered by
the requested disclosure. The FOIA Officer shall
consider any commercial interest of the requester
(with reference to the definition of “commercial
use request” in paragraph (b)(1) of this section),
or of any person on whose behalf the requester
may be acting, that would be furthered by the
requested disclosure. Requesters shall be given
an opportunity to provide explanatory information
regarding this consideration.
(ii)  The primary interest in disclosure:
whether any identified commercial interest of the
requester is sufficiently large, in comparison with
the public interest in disclosure, that disclosure is
“primarily in the commercial interest of the
requester.” A fee waiver or reduction is justified
if the public interest standard (paragraph (k)(1)(i)
of this section) is satisfied and the public interest
is greater than any identified commercial interest
in disclosure. The FOIA Officer ordinarily shall
presume that if a news media requester has
satisfied the public interest standard, the public
interest is the primary interest served by disclosure
to that requester. Disclosure to data brokers or
others who merely compile and market
Government information for direct economic
return shall not be presumed to primarily serve
the public interest.
(4) If only some of the records to be released satisfy
the requirements for a fee waiver, a waiver shall be
granted for those records.
(5) Requests for the waiver or reduction of fees
should address the factors listed in paragraphs (k)(2)
and (3) of this section, insofar as they apply to each
request.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
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 Subpart B  — Privacy Act
§ 
102.21Purpose and scope.
(a) The purpose of this subpart is to establish policies
and procedures for implementing the Privacy Act of 1974,
as amended (5 U.S.C. 552a) (the Act). The main
objectives are to facilitate full exercise of rights conferred
on individuals under the Act and to ensure the protection
of privacy as to individuals on whom USPTO maintains
records in systems of records under the Act. USPTO
accepts the responsibility to act promptly and in
accordance with the Act upon receipt of any inquiry,
request or appeal from a citizen of the United States or
an alien lawfully admitted for permanent residence into
the United States, regardless of the age of the individual.
Further, USPTO accepts the obligations to maintain only
such information on individuals as is relevant and
necessary to the performance of its lawful functions, to
maintain that information with such accuracy, relevancy,
timeliness, and completeness as is reasonably necessary
to assure fairness in determinations made by USPTO
about the individual, to obtain information from the
individual to the extent practicable, and to take every
reasonable step to protect that information from
unwarranted disclosure. USPTO will maintain no record
describing how an individual exercises rights guaranteed
by the First Amendment unless expressly authorized by
statute or by the individual about whom the record is
maintained or unless pertinent to and within the scope of
an authorized law enforcement activity. An individual’s
name and address will not be sold or rented by USPTO
unless such action is specifically authorized by law;
however, this provision shall not be construed to require
the withholding of names and addresses otherwise
permitted to be made public.
(b) This subpart is administered by the Privacy Officer
of USPTO.
(c) Matters outside the scope of this subpart include
the following:
(1) Requests for records which do not pertain to
the individual making the request, or to the individual
about whom the request is made if the requester is the
parent or guardian of the individual;
(2) Requests involving information pertaining to
an individual which is in a record or file but not within
the scope of a system of records notice published in
the Federal Register;
(3) Requests to correct a record where a grievance
procedure is available to the individual either by
regulation or by provision in a collective bargaining
agreement with USPTO, and the individual has
initiated, or has expressed in writing the intention ofinitiating, such grievance procedure. An individual
selecting the grievance procedure waives the use of the
procedures in this subpart to correct or amend a record;
and,
(4) Requests for employee-employer services and
counseling which were routinely granted prior to
enactment of the Act, including, but not limited to, test
calculations of retirement benefits, explanations of
health and life insurance programs, and explanations
of tax withholding options.
(d) Any request for records which pertains to the
individual making the request, or to the individual about
whom the request is made if the requester is the parent or
guardian of the individual, shall be processed under the
Act and this subpart and under the Freedom of
Information Act and USPTO’s implementing regulations
at Subpart A of this part, regardless whether the Act or
the Freedom of Information Act is mentioned in the
request.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.22Definitions.
(a) All terms used in this subpart which are defined
in 5 U.S.C. 552a shall have the same meaning herein.
(b) As used in this subpart:
(1)  Act means the “Privacy Act of 1974, as
amended (5 U.S.C. 552a)”.
(2)  Appeal  means a request by an individual to
review and reverse an initial denial of a request by that
individual for correction or amendment.
(3)  USPTO  means the United States Patent and
Trademark Office.
(4)  Inquiry  means either a request for general
information regarding the Act and this subpart or a
request by an individual (or that individual’s parent or
guardian) that USPTO determine whether it has any
record in a system of records which pertains to that
individual.
(5)  Person means any human being and also shall
include but not be limited to, corporations, associations,
partnerships, trustees, receivers, personal
representatives, and public or private organizations.
(6)  Privacy Officer  means a USPTO employee
designated to administer this subpart.
(7)  Request for access  means a request by an
individual or an individual’s parent or guardian to see
a record which is in a particular system of records and
which pertains to that individual.
(8)  Request for correction or amendment  means
the request by an individual or an individual’s parent
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 or guardian that USPTO change (either by correction,
amendment, addition or deletion) a particular record
in a system of records which pertains to that individual.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.23Procedures for making inquiries.
(a) Any individual, regardless of age, who is a citizen
of the United States or an alien lawfully admitted for
permanent residence into the United States may submit
an inquiry to USPTO. The inquiry should be made either
in person at 10B20, Madison Building East, 600 Dulany
Street, Alexandria, Virginia, or by mail addressed to the
Privacy Officer, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450,
or to the official identified in the notification procedures
paragraph of the systems of records notice published in
the  Federal Register . If an individual believes USPTO
maintains a record pertaining to that individual but does
not know which system of records might contain such a
record, the USPTO Privacy Officer will provide assistance
in person or by mail.
(b) Inquiries submitted by mail should include the
words “PRIV ACY ACT INQUIRY” in capital letters at
the top of the letter and on the face of the envelope. If the
inquiry is for general information regarding the Act and
this subpart, no particular information is required. USPTO
reserves the right to require compliance with the
identification procedures appearing at § 102.24(d)  where
circumstances warrant. If the inquiry is a request that
USPTO determine whether it has, in a given system of
records, a record which pertains to the individual, the
following information should be submitted:
(1) Name of individual whose record is sought;
(2) Individual whose record is sought is either a
U.S. citizen or an alien lawfully admitted for permanent
residence;
(3) Identifying data that will help locate the record
(for example, maiden name, occupational license
number, period or place of employment, etc.);
(4) Record sought, by description and by record
system name, if known;
(5) Action requested (that is, sending information
on how to exercise rights under the Act; determining
whether requested record exists; gaining access to
requested record; or obtaining copy of requested
record);
(6) Copy of court guardianship order or minor’s
birth certificate, as provided in § 102.24(f)(3) , but only
if requester is guardian or parent of individual whose
record is sought;(7) Requester’s name (printed), signature, address,
and telephone number (optional);
(8) Date; and,
(9) Certification of request by notary or other
official, but only if
(i) Request is for notification that requested
record exists, for access to requested record or for
copy of requested record;
(ii) Record is not available to any person under
5 U.S.C. 552; and
(iii) Requester does not appear before an
employee of USPTO for verification of identity.
(c) Any inquiry which is not addressed as specified
in paragraph (a) of this section or which is not marked as
specified in paragraph (b) of this section will be so
addressed and marked by USPTO personnel and
forwarded immediately to the Privacy Officer. An inquiry
which is not properly addressed by the individual will not
be deemed to have been “received” for purposes of
measuring the time period for response until actual receipt
by the Privacy Officer. In each instance when an inquiry
so forwarded is received, the Privacy Officer shall notify
the individual that his or her inquiry was improperly
addressed and the date the inquiry was received at the
proper address.
(d)
(1) Each inquiry received shall be acted upon
promptly by the Privacy Officer. Every effort will be
made to respond within ten working days ( i.e.,
excluding Saturdays, Sundays and legal public
holidays) of the date of receipt. If a response cannot be
made within ten working days, the Privacy Officer shall
send an acknowledgment during that period providing
information on the status of the inquiry and asking for
such further information as may be necessary to process
the inquiry. The first correspondence sent by the
Privacy Officer to the requester shall contain USPTO’s
control number assigned to the request, as well as a
note that the requester should use that number in all
future contacts in order to facilitate processing. USPTO
shall use that control number in all subsequent
correspondence.
(2) If the Privacy Officer fails to send an
acknowledgment within ten working days, as provided
above, the requester may ask the General Counsel to
take corrective action. No failure of the Privacy Officer
to send an acknowledgment shall confer administrative
finality for purposes of judicial review.
(e) An individual shall not be required to state a reason
or otherwise justify his or her inquiry.
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 (f) Special note should be taken of the fact that certain
agencies are responsible for publishing notices of systems
of records having Government-wide application to other
agencies, including USPTO. The agencies known to be
publishing these general notices and the types of records
covered therein appear in an appendix to this part. The
provisions of this section, and particularly paragraph (a)
of this section, should be followed in making inquiries
with respect to such records. Such records in USPTO are
subject to the provisions of this part to the extent indicated
in the appendix to this part. The exemptions, if any,
determined by an agency publishing a general notice shall
be invoked and applied by USPTO after consultation, as
necessary, with that other agency.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (a) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 
102.24Procedures for making requests for records.
(a) Any individual, regardless of age, who is a citizen
of the United States or an alien lawfully admitted for
permanent residence into the United States may submit
a request for access to records to USPTO. The request
should be made either in person at 10B20, Madison
Building East, 600 Dulany Street, Alexandria, Virginia,
or by mail addressed to the Privacy Officer, United States
Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450.
(b) Requests submitted by mail should include the
words “PRIV ACY ACT REQUEST” in capital letters at
the top of the letter and on the face of the envelope. Any
request which is not addressed as specified in paragraph
(a) of this section or which is not marked as specified in
this paragraph will be so addressed and marked by
USPTO personnel and forwarded immediately to the
Privacy Officer. A request which is not properly addressed
by the individual will not be deemed to have been
“received” for purposes of measuring time periods for
response until actual receipt by the Privacy Officer. In
each instance when a request so forwarded is received,
the Privacy Officer shall notify the individual that his or
her request was improperly addressed and the date when
the request was received at the proper address.
(c) If the request follows an inquiry under § 102.23
in connection with which the individual’s identity was
established by USPTO, the individual need only indicate
the record to which access is sought, provide the USPTO
control number assigned to the request, and sign and date
the request. If the request is not preceded by an inquiry
under § 102.23 , the procedures of this section should be
followed.
(d) The requirements for identification of individuals
seeking access to records are as follows:(1)  In person . Each individual making a request in
person shall be required to present satisfactory proof
of identity. The means of proof, in the order of
preference and priority, are:
(i) A document bearing the individual’s
photograph (for example, driver’s license, passport
or military or civilian identification card);
(ii) A document, preferably issued for
participation in a federally sponsored program,
bearing the individual’s signature (for example,
unemployment insurance book, employer’s
identification card, national credit card, and
professional, craft or union membership card);
and
(iii) A document bearing neither the
photograph nor the signature of the individual,
preferably issued for participation in a federally
sponsored program (for example, Medicaid card).
In the event the individual can provide no suitable
documentation of identity, USPTO will require a
signed statement asserting the individual’s identity
and stipulating that the individual understands the
penalty provision of 5 U.S.C. 552a(i)(3) recited
in § 102.32(a) . In order to avoid any unwarranted
disclosure of an individual’s records, USPTO
reserves the right to determine the adequacy of
proof of identity offered by any individual,
particularly when the request involves a sensitive
record.
(2) Not in person . If the individual making a
request does not appear in person before the Privacy
Officer or other employee authorized to determine
identity, a certification of a notary public or equivalent
officer empowered to administer oaths must accompany
the request under the circumstances prescribed in §
102.23(b)(9) . The certification in or attached to the
letter must be substantially in accordance with the
following text:
City of _________________County of
____________________:ss(Name of individual), who
affixed (his) (her) signature below in my presence, came
before me, a (title), in and for the aforesaid County and
State, this _______ day of _________________, 20__,
and established (his) (her) identity to my satisfaction.My
commission expires _________________.(Signature)
(3) Parents of minors and legal guardians . An
individual acting as the parent of a minor or the legal
guardian of the individual to whom a record pertains
shall establish his or her personal identity in the same
manner prescribed in either paragraph (d)(1) or (d)(2)
of this section. In addition, such other individual shall
establish his or her identity in the representative
capacity of parent or legal guardian. In the case of the
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 parent of a minor, the proof of identity shall be a
certified or authenticated copy of the minor’s birth
certificate. In the case of a legal guardian of an
individual who has been declared incompetent due to
physical or mental incapacity or age by a court of
competent jurisdiction, the proof of identity shall be a
certified or authenticated copy of the court’s order. For
purposes of the Act, a parent or legal guardian may
represent only a living individual, not a decedent. A
parent or legal guardian may be accompanied during
personal access to a record by another individual,
provided the provisions of § 102.25(f)  are satisfied.
(e) When the provisions of this subpart are alleged to
impede an individual in exercising his or her right to
access, USPTO will consider, from an individual making
a request, alternative suggestions regarding proof of
identity and access to records.
(f) An individual shall not be required to state a reason
or otherwise justify his or her request for access to a
record.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003;
para. (a) revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
§ 
102.25Disclosure of requested records to individuals.
(a)
(1) The Privacy Officer shall act promptly upon
each request. Every effort will be made to respond
within ten working days ( i.e., excluding Saturdays,
Sundays, and legal public holidays) of the date of
receipt. If a response cannot be made within ten
working days due to unusual circumstances, the Privacy
Officer shall send an acknowledgment during that
period providing information on the status of the
request and asking for any further information that may
be necessary to process the request. “Unusual
circumstances” shall include circumstances in which
(i) A search for and collection of requested
records from inactive storage, field facilities or
other establishments is required;
(ii) A voluminous amount of data is involved;
(iii) Information on other individuals must be
separated or expunged from the particular record;
or
(iv) Consultations with other agencies having
a substantial interest in the determination of the
request are necessary.
(2) If the Privacy Officer fails to send an
acknowledgment within ten working days, as provided
above in paragraph (a) of this section, the requester
may ask the General Counsel to take corrective action.No failure of the Privacy Officer to send an
acknowledgment shall confer administrative finality
for purposes of judicial review.
(b)  Grant of access —
(1)  Notification . An individual shall be granted
access to a record pertaining to him or her, except
where the provisions of paragraph (g)(1) of this section
apply. The Privacy Officer will notify the individual
of a determination to grant access, and provide the
following information:
(i) The methods of access, as set forth in
paragraph (b)(2) of this section;
(ii) The place at which the record may be
inspected;
(iii) The earliest date on which the record may
be inspected and the period of time that the records
will remain available for inspection. In no event
shall the earliest date be later than thirty calendar
days from the date of notification;
(iv) The estimated date by which a copy of
the record could be mailed and the estimate of
fees pursuant to § 102.31 . In no event shall the
estimated date be later than thirty calendar days
from the date of notification;
(v) The fact that the individual, if he or she
wishes, may be accompanied by another individual
during personal access, subject to the procedures
set forth in paragraph (f) of this section; and,
(vi) Any additional requirements needed to
grant access to a specific record.
(2)  Methods of access.  The following methods of
access to records by an individual may be available
depending on the circumstances of a given situation:
(i) Inspection in person may be had in a
location specified by the Privacy Officer during
business hours;
(ii) Transfer of records to a Federal facility
more convenient to the individual may be
arranged, but only if the Privacy Officer
determines that a suitable facility is available, that
the individual’s access can be properly supervised
at that facility, and that transmittal of the records
to that facility will not unduly interfere with
operations of USPTO or involve unreasonable
costs, in terms of both money and manpower; and
(iii) Copies may be mailed at the request of
the individual, subject to payment of the fees
prescribed in § 102.31 . USPTO, on its own
initiative, may elect to provide a copy by mail, in
which case no fee will be charged the individual.
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 (c) Access to medical records is governed by the
provisions of § 102.26 .
(d) USPTO will supply such other information and
assistance at the time of access as to make the record
intelligible to the individual.
(e) USPTO reserves the right to limit access to copies
and abstracts of original records, rather than the original
records. This election would be appropriate, for example,
when the record is in an automated data media such as
tape or diskette, when the record contains information on
other individuals, and when deletion of information is
permissible under exemptions (for example, 5 U.S.C.
552a(k)(2)). In no event shall original records of USPTO
be made available to the individual except under the
immediate supervision of the Privacy Officer or the
Privacy Officer’s designee.
(f) Any individual who requests access to a record
pertaining to that individual may be accompanied by
another individual of his or her choice. “Accompanied”
includes discussion of the record in the presence of the
other individual. The individual to whom the record
pertains shall authorize the presence of the other
individual in writing. The authorization shall include the
name of the other individual, a specific description of the
record to which access is sought, the USPTO control
number assigned to the request, the date, and the signature
of the individual to whom the record pertains. The other
individual shall sign the authorization in the presence of
the Privacy Officer. An individual shall not be required
to state a reason or otherwise justify his or her decision
to be accompanied by another individual during personal
access to a record.
(g)  Initial denial of access —
(1)  Grounds . Access by an individual to a record
which pertains to that individual will be denied only
upon a determination by the Privacy Officer that:
(i) The record is exempt under § 102.33  or §
102.34 , or exempt by determination of another
agency publishing notice of the system of records,
as described in § 102.23(f) ;
(ii) The record is information compiled in
reasonable anticipation of a civil action or
proceeding;
(iii) The provisions of § 102.26  pertaining to
medical records temporarily have been invoked;
or
(iv) The individual has unreasonably failed to
comply with the procedural requirements of this
part.
(2)  Notification . The Privacy Officer shall give
notice of denial of access to records to the individual
in writing and shall include the following information:(i) The Privacy Officer’s name and title or
position;
(ii) The date of the denial;
(iii) The reasons for the denial, including
citation to the appropriate section of the Act and
this part;
(iv) The individual’s opportunities, if any, for
further administrative consideration, including the
identity and address of the responsible official. If
no further administrative consideration within
USPTO is available, the notice shall state that the
denial is administratively final; and
(v) If stated to be administratively final within
USPTO, the individual’s right to judicial review
provided under 5 U.S.C. 552a(g)(1), as limited by
5 U.S.C. 552a(g)(5).
(3)  Administrative review . When an initial denial
of a request is issued by the Privacy Officer, the
individual’s opportunities for further consideration
shall be as follows:
(i) As to denial under paragraph (g)(1)(i) of
this section, two opportunities for further
consideration are available in the alternative:
(A) If the individual contests the
application of the exemption to the
records, review procedures in §
102.25(g)(3)(ii)  shall apply; or
(B) If the individual challenges the
exemption itself, the procedure is a
petition for the issuance, amendment, or
repeal of a rule under 5 U.S.C. 553(e). If
the exemption was determined by USPTO,
such petition shall be filed with the
General Counsel. If the exemption was
determined by another agency (as
described in § 102.23(f) ), USPTO will
provide the individual with the name and
address of the other agency and any relief
sought by the individual shall be that
provided by the regulations of the other
agency. Within USPTO, no such denial is
administratively final until such a petition
has been filed by the individual and
disposed of on the merits by the General
Counsel.
(ii) As to denial under paragraphs (g)(1)(ii) of
this section, (g)(1)(iv) of this section or (to the
limited extent provided in paragraph (g)(3)(i)(A)
of this section) paragraph (g)(1)(i) of this section,
the individual may file for review with the General
Counsel, as indicated in the Privacy Officer’s
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 initial denial notification. The procedures
appearing in § 102.28  shall be followed by both
the individual and USPTO to the maximum extent
practicable.
(iii) As to denial under paragraph (g)(1)(iii)
of this section, no further administrative
consideration within USPTO is available because
the denial is not administratively final until
expiration of the time period indicated in §
102.26(a) .
(h) If a request is partially granted and partially
denied, the Privacy Officer shall follow the appropriate
procedures of this section as to the records within the
grant and the records within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.26Special procedures: Medical records.
(a) No response to any request for access to medical
records by an individual will be issued by the Privacy
Officer for a period of seven working days ( i.e., excluding
Saturdays, Sundays, and legal public holidays) from the
date of receipt.
(b) USPTO has published as a routine use, for all
systems of records containing medical records,
consultations with an individual’s physician or
psychologist if, in the sole judgment of USPTO, disclosure
could have an adverse effect upon the individual. The
mandatory waiting period set forth in paragraph (a) of
this section will permit exercise of this routine use in
appropriate cases. USPTO will pay no cost of any such
consultation.
(c) In every case of a request by an individual for
access to medical records, the Privacy Officer shall:
(1) Inform the individual of the waiting period
prescribed in paragraph (a) of this section;
(2) Obtain the name and address of the individual’s
physician and/or psychologist, if the individual consents
to give them;
(3) Obtain specific, written consent for USPTO to
consult the individual’s physician and/or psychologist
in the event that USPTO believes such consultation is
advisable, if the individual consents to give such
authorization;
(4) Obtain specific, written consent for USPTO to
provide the medical records to the individual’s
physician or psychologist in the event that USPTO
believes access to the record by the individual is best
effected under the guidance of the individual’s
physician or psychologist, if the individual consents to
give such authorization; and(5) Forward the individual’s medical record to
USPTO’s medical expert for review and a
determination on whether consultation with or
transmittal of the medical records to the individual’s
physician or psychologist is warranted. If the
consultation with or transmittal of such records to the
individual’s physician or psychologist is determined
to be warranted, USPTO’s medical expert shall so
consult or transmit. Whether or not such a consultation
or transmittal occurs, USPTO’s medical officer shall
provide instruction to the Privacy Officer regarding the
conditions of access by the individual to his or her
medical records.
(d) If an individual refuses in writing to give the
names and consents set forth in paragraphs (c)(2) through
(c)(4) of this section and USPTO has determined that
disclosure could have an adverse effect upon the
individual, USPTO shall give the individual access to said
records by means of a copy, provided without cost to the
requester, sent registered mail return receipt requested.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.27Procedures for making requests for correction
or amendment.
(a) Any individual, regardless of age, who is a citizen
of the United States or an alien lawfully admitted for
permanent residence into the United States may submit
a request for correction or amendment to USPTO. The
request should be made either in person or by mail
addressed to the Privacy Officer who processed the
individual’s request for access to the record, and to whom
is delegated authority to make initial determinations on
requests for correction or amendment. The office of the
Privacy Officer is open to the public between the hours
of 9 a.m. and 4 p.m., Monday through Friday (excluding
legal public holidays).
(b) Requests submitted by mail should include the
words “PRIV ACY ACT REQUEST” in capital letters at
the top of the letter and on the face of the envelope. Any
request which is not addressed as specified in paragraph
(a) of this section or which is not marked as specified in
this paragraph will be so addressed and marked by
USPTO personnel and forwarded immediately to the
Privacy Officer. A request which is not properly addressed
by the individual will not be deemed to have been
“received” for purposes of measuring the time period for
response until actual receipt by the Privacy Officer. In
each instance when a request so forwarded is received,
the Privacy Officer shall notify the individual that his or
her request was improperly addressed and the date the
request was received at the proper address.
(c) Since the request, in all cases, will follow a request
for access under § 102.25 , the individual’s identity will
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 be established by his or her signature on the request and
use of the USPTO control number assigned to the request.
(d) A request for correction or amendment should
include the following:
(1) Specific identification of the record sought to
be corrected or amended (for example, description,
title, date, paragraph, sentence, line and words);
(2) The specific wording to be deleted, if any;
(3) The specific wording to be inserted or added,
if any, and the exact place at which to be inserted or
added; and
(4) A statement of the basis for the requested
correction or amendment, with all available supporting
documents and materials which substantiate
the statement. The statement should identify the
criterion of the Act being invoked, that is, whether the
information in the record is unnecessary, inaccurate,
irrelevant, untimely or incomplete.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.28Review of requests for correction or
amendment.
(a)
(1)
(i) Not later than ten working days
(i.e.,  excluding Saturdays, Sundays and legal
public holidays) after receipt of a request to
correct or amend a record, the Privacy Officer
shall send an acknowledgment providing an
estimate of time within which action will be taken
on the request and asking for such further
information as may be necessary to process the
request. The estimate of time may take into
account unusual circumstances as described in
§ 102.25(a) . No acknowledgment will be sent if
the request can be reviewed, processed, and the
individual notified of the results of review (either
compliance or denial) within the ten working days.
Requests filed in person will be acknowledged in
writing at the time submitted.
(ii) If the Privacy Officer fails to send the
acknowledgment within ten working days, as
provided in paragraph (a)(1)(i) of this section, the
requester may ask the General Counsel to take
corrective action. No failure of the Privacy Officer
to send an acknowledgment shall confer
administrative finality for purposes of judicial
review.
(2) Promptly after acknowledging receipt of a
request, or after receiving such further information as
might have been requested, or after arriving at adecision within the ten working days, the Privacy
Officer shall either:
(i) Make the requested correction or
amendment and advise the individual in writing
of such action, providing either a copy of the
corrected or amended record or a statement as to
the means whereby the correction or amendment
was effected in cases where a copy cannot be
provided (for example, erasure of information
from a record maintained only in magnetically
recorded computer files); or
(ii) Inform the individual in writing that his
or her request is denied and provide the following
information:
(A) The Privacy Officer’s name and
title or position;
(B) The date of the denial;
(C) The reasons for the denial,
including citation to the appropriate
sections of the Act and this subpart; and
(D) The procedures for appeal of the
denial as set forth in § 102.29 , including
the address of the General Counsel.
(3) The term  promptly in this section means within
thirty working days ( i.e., excluding Saturdays,
Sundays, and legal public holidays). If the Privacy
Officer cannot make the determination within thirty
working days, the individual will be advised in writing
of the reason therefor and of the estimated date by
which the determination will be made.
(b) Whenever an individual’s record is corrected or
amended pursuant to a request by that individual, the
Privacy Officer shall be responsible for notifying all
persons and agencies to which the corrected or amended
portion of the record had been disclosed prior to its
correction or amendment, if an accounting of such
disclosure required by the Act was made. The notification
shall require a recipient agency maintaining the record to
acknowledge receipt of the notification, to correct or
amend the record, and to apprise any agency or person to
which it had disclosed the record of the substance of the
correction or amendment.
(c) The following criteria will be considered by the
Privacy Officer in reviewing a request for correction or
amendment:
(1) The sufficiency of the evidence submitted by
the individual;
(2) The factual accuracy of the information;
(3) The relevance and necessity of the information
in terms of purpose for which it was collected;
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 (4) The timeliness and currency of the information
in light of the purpose for which it was collected;
(5) The completeness of the information in terms
of the purpose for which it was collected;
(6) The degree of risk that denial of the request
could unfairly result in determinations adverse to the
individual;
(7) The character of the record sought to be
corrected or amended; and
(8) The propriety and feasibility of complying with
the specific means of correction or amendment
requested by the individual.
(d) USPTO will not undertake to gather evidence for
the individual, but does reserve the right to verify the
evidence which the individual submits.
(e) Correction or amendment of a record requested
by an individual will be denied only upon a determination
by the Privacy Officer that:
(1) The individual has failed to establish, by a
preponderance of the evidence, the propriety of the
correction or amendment in light of the criteria set forth
in paragraph (c) of this section;
(2) The record sought to be corrected or amended
is part of the official record in a terminated judicial,
quasi-judicial, or quasi-legislative proceeding to which
the individual was a party or participant;
(3) The information in the record sought to be
corrected or amended, or the record sought to be
corrected or amended, is the subject of a pending
judicial, quasi-judicial, or quasi-legislative proceeding
to which the individual is a party or participant;
(4) The correction or amendment would violate a
duly enacted statute or promulgated regulation; or
(5) The individual has unreasonably failed to
comply with the procedural requirements of this part.
(f) If a request is partially granted and partially denied,
the Privacy Officer shall follow the appropriate procedures
of this section as to the records within the grant and the
records within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.29Appeal of initial adverse determination on
correction or amendment.
(a) When a request for correction or amendment has
been denied initially under § 102.28 , the individual may
submit a written appeal within thirty working days ( i.e.,
excluding Saturdays, Sundays and legal public holidays)
after the date of the initial denial. When an appeal is
submitted by mail, the postmark is conclusive as to
timeliness.(b) An appeal should be addressed to the General
Counsel, United States Patent and Trademark Office, PO
Box 1450, Alexandria, Virginia 22313-1450. An appeal
should include the words “PRIV ACY APPEAL” in capital
letters at the top of the letter and on the face of the
envelope. An appeal not addressed and marked as
provided herein will be so marked by USPTO personnel
when it is so identified and will be forwarded immediately
to the General Counsel. An appeal which is not properly
addressed by the individual will not be deemed to have
been “received” for purposes of measuring the time
periods in this section until actual receipt by the General
Counsel. In each instance when an appeal so forwarded
is received, the General Counsel shall notify the individual
that his or her appeal was improperly addressed and the
date when the appeal was received at the proper address.
(c) The individual’s appeal shall include a statement
of the reasons why the initial denial is believed to be in
error and USPTO’s control number assigned to the
request. The appeal shall be signed by the individual. The
record which the individual requests be corrected or
amended and all correspondence between the Privacy
Officer and the requester will be furnished by the Privacy
Officer who issued the initial denial. Although the
foregoing normally will comprise the entire record on
appeal, the General Counsel may seek additional
information necessary to assure that the final
determination is fair and equitable and, in such instances,
disclose the additional information to the individual to
the greatest extent possible, and provide an opportunity
for comment thereon.
(d) No personal appearance or hearing on appeal will
be allowed.
(e) The General Counsel shall act upon the appeal and
issue a final determination in writing not later than thirty
working days ( i.e. , excluding Saturdays, Sundays and
legal public holidays) from the date on which the appeal
is received, except that the General Counsel may extend
the thirty days upon deciding that a fair and equitable
review cannot be made within that period, but only if the
individual is advised in writing of the reason for the
extension and the estimated date by which a final
determination will issue. The estimated date should not
be later than the sixtieth working day after receipt of the
appeal unless unusual circumstances, as described in §
102.25(a) , are met.
(f) If the appeal is determined in favor of the
individual, the final determination shall include the
specific corrections or amendments to be made and a copy
thereof shall be transmitted promptly both to the
individual and to the Privacy Officer who issued the initial
denial. Upon receipt of such final determination, the
Privacy Officer promptly shall take the actions set forth
in § 102.28(a)(2)(i) and (b) .
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 (g) If the appeal is denied, the final determination
shall be transmitted promptly to the individual and state
the reasons for the denial. The notice of final
determination also shall inform the individual of the
following:
(1) The right of the individual under the Act to file
a concise statement of reasons for disagreeing with the
final determination. The statement ordinarily should
not exceed one page and USPTO reserves the right to
reject a statement of excessive length. Such a statement
shall be filed with the General Counsel. It should
provide the USPTO control number assigned to the
request, indicate the date of the final determination and
be signed by the individual. The General Counsel shall
acknowledge receipt of such statement and inform the
individual of the date on which it was received.
(2) The facts that any such disagreement statement
filed by the individual will be noted in the disputed
record, that the purposes and uses to which the
statement will be put are those applicable to the record
in which it is noted, and that a copy of the statement
will be provided to persons and agencies to which the
record is disclosed subsequent to the date of receipt of
such statement;
(3) The fact that USPTO will append to any such
disagreement statement filed by the individual, a copy
of the final determination or summary thereof which
also will be provided to persons and agencies to which
the disagreement statement is disclosed; and,
(4) The right of the individual to judicial review of
the final determination under 5 U.S.C. 552a(g)(1)(A),
as limited by 5 U.S.C. 552a(g)(5).
(h) In making the final determination, the General
Counsel shall employ the criteria set forth in § 102.28(c )
and shall deny an appeal only on the grounds set forth in
§ 102.28(e) .
(i) If an appeal is partially granted and partially
denied, the General Counsel shall follow the appropriate
procedures of this section as to the records within the
grant and the records within the denial.
(j) Although a copy of the final determination or a
summary thereof will be treated as part of the individual’s
record for purposes of disclosure in instances where the
individual has filed a disagreement statement, it will not
be subject to correction or amendment by the individual.
(k) The provisions of paragraphs (g)(1) through (g)(3)
of this section satisfy the requirements of 5 U.S.C.
552a(e)(3).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000;
para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
102.30Disclosure of record to person other than the
individual to whom it pertains.(a) USPTO may disclose a record pertaining to an
individual to a person other than the individual to whom
it pertains only in the following instances:
(1) Upon written request by the individual,
including authorization under § 102.25(f) ;
(2) With the prior written consent of the individual;
(3) To a parent or legal guardian under 5 U.S.C.
552a(h);
(4) When required by the Act and not covered
explicitly by the provisions of 5 U.S.C. 552a(b); and
(5) When permitted under 5 U.S.C. 552a(b)(1)
through (12), which read as
follows:1____________________________________
1 5 U.S.C. 552a(b)(4) has no application
within USPTO.
____________________________________
(i) To those officers and employees of the
agency which maintains the record who have a
need for the record in the performance of their
duties;
(ii) Required under 5 U.S.C. 552;
(iii) For a routine use as defined in 5 U.S.C.
552a(a)(7) and described under 5 U.S.C.
552a(e)(4)(D);
(iv) To the Bureau of the Census for purposes
of planning or carrying out a census or survey or
related activity pursuant to the provisions of
Title 13;
(v) To a recipient who has provided the agency
with advance adequate written assurance that the
record will be used solely as a statistical research
or reporting record, and the record is to be
transferred in a form that is not individually
identifiable;
(vi) To the National Archives and Records
Administration as a record which has sufficient
historical or other value to warrant its continued
preservation by the United States Government, or
for evaluation by the Archivist of the United States
or the designee of the Archivist to determine
whether the record has such value;
(vii) To another agency or to an
instrumentality of any governmental jurisdiction
within or under the control of the United States
for a civil or criminal law enforcement activity if
the activity is authorized by law, and if the head
of the agency or instrumentality has made a
written request to the agency which maintains the
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 record specifying the particular portion desired
and the law enforcement activity for which the
record is sought;
(viii) To a person pursuant to a showing of
compelling circumstances affecting the health or
safety of an individual if upon such disclosure
notification is transmitted to the last known
address of such individual;
(ix) To either House of Congress, or, to the
extent of matter within its jurisdiction, any
committee or subcommittee thereof, any joint
committee of Congress or subcommittee of any
such joint committee;
(x) To the Comptroller General, or any of his
authorized representatives, in the course of the
performance of the duties of the General
Accounting Office;
(xi) Pursuant to the order of a court of
competent jurisdiction; or
(xii) To a consumer reporting agency in
accordance with section 3711(e) of Title 31.
(b) The situations referred to in paragraph (a)(4) of
this section include the following:
(1) 5 U.S.C. 552a(c)(4) requires dissemination of
a corrected or amended record or notation of a
disagreement statement by USPTO in certain
circumstances;
(2) 5 U.S.C. 552a(d) requires disclosure of records
to the individual to whom they pertain, upon request;
and
(3) 5 U.S.C. 552a(g) authorizes civil action by an
individual and requires disclosure by USPTO to the
court.
(c) The Privacy Officer shall make an accounting of
each disclosure by him of any record contained in a
system of records in accordance with 5 U.S.C. 552a(c)
(1) and (2). Except for a disclosure made under 5 U.S.C.
552a(b)(7), the Privacy Officer shall make such
accounting available to any individual, insofar as it
pertains to that individual, on request submitted in
accordance with § 102.24 . The Privacy Officer shall make
reasonable efforts to notify any individual when any
record in a system of records is disclosed to any person
under compulsory legal process, promptly upon being
informed that such process has become a matter of public
record.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.31Fees.The only fees to be charged to or collected from an
individual under the provisions of this part are for
duplication of records at the request of the individual. The
Privacy Officer shall charge fees for duplication of records
under the Act in the same way in which they charge
duplication fees under § 102.11 , except as provided in
this section.
(a) No fees shall be charged or collected for the
following: Search for and retrieval of the records; review
of the records; copying at the initiative of USPTO without
a request from the individual; transportation of records
and personnel; and first-class postage.
(b) It is the policy of USPTO to provide an individual
with one copy of each record corrected or amended
pursuant to his or her request without charge as evidence
of the correction or amendment.
(c) As required by the United States Office of
Personnel Management in its published regulations
implementing the Act, USPTO will charge no fee for a
single copy of a personnel record covered by that agency’s
Government-wide published notice of systems of records.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.32Penalties.
(a) The Act provides, in pertinent part:
Any person who knowingly and willfully
requests or obtains any record concerning an
individual from an agency under false pretenses
shall be guilty of a misdemeanor and fined not more
than $5,000. (5 U.S.C. 552a(i)(3)).
(b) A person who falsely or fraudulently attempts to
obtain records under the Act also may be subject to
prosecution under such other criminal statutes as 18
U.S.C. 494, 495 and 1001 .
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.33General exemptions.
(a) Individuals may not have access to records
maintained by USPTO but which were provided by
another agency which has determined by regulation that
such information is subject to general exemption under
5 U.S.C. 552a(j). If such exempt records are within a
request for access, USPTO will advise the individual of
their existence and of the name and address of the source
agency. For any further information concerning the record
and the exemption, the individual must contact that source
agency.
(b) The general exemption determined to be necessary
and proper with respect to systems of records maintained
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 by USPTO, including the parts of each system to be
exempted, the provisions of the Act from which they are
exempted, and the justification for the exemption, is as
follows:  Investigative Records—Contract and Grant
Frauds and Employee Criminal
Misconduct—COMMERCE/DEPT.—12.  Pursuant to 5
U.S.C. 552a(j)(2), these records are hereby determined
to be exempt from all provisions of the Act, except 5
U.S.C. 552a (b), (c) (1) and (2), (e)(4) (A) through (F),
(e) (6), (7), (9), (10), and (11), and (i). These exemptions
are necessary to ensure the proper functions of the law
enforcement activity, to protect confidential sources of
information, to fulfill promises of confidentiality, to
prevent interference with law enforcement proceedings,
to avoid the disclosure of investigative techniques, to
avoid the endangering of law enforcement personnel, to
avoid premature disclosure of the knowledge of criminal
activity and the evidentiary bases of possible enforcement
actions, and to maintain the integrity of the law
enforcement process.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
§ 
102.34Specific exemptions.
(a)
(1) Some systems of records under the Act which
are maintained by USPTO contain, from time-to-time,
material subject to the exemption appearing at 5 U.S.C.
552a(k)(1), relating to national defense and foreign
policy materials. The systems of records published in
the  Federal Register by USPTO which are within this
exemption are: COMMERCE/PAT-TM-6,
COMMERCE/PAT-TM-7, COMMERCE/PAT-TM-8,
COMMERCE/PAT-TM-9.
(2) USPTO hereby asserts a claim to exemption of
such materials wherever they might appear in such
systems of records, or any systems of records, at present
or in the future. The materials would be exempt from
5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4) (G), (H), and
(I), and (f) to protect materials required by Executive
order to be kept secret in the interest of the national
defense and foreign policy.
(b) The specific exemptions determined to be
necessary and proper with respect to systems of records
maintained by USPTO, including the parts of each system
to be exempted, the provisions of the Act from which they
are exempted, and the justification for the exemption, are
as follows:
(1)
(i) Exempt under 5 U.S.C. 552a(k)(2). The
systems of records exempt (some only
conditionally), the sections of the Act from which
exempted, and the reasons therefor are as follows:(A) Investigative Records—Contract
and Grant Frauds and Employee Criminal
Misconduct—COMMERCE/DEPT—12,
but only on condition that the general
exemption claimed in § 102.33(b)(3)  is
held to be invalid;
(B) Investigative Records—Persons
Within the Investigative Jurisdiction of
USPTO—COMMERCE/DEPT-13;
(C) Litigation, Claims and
Administrative Proceeding
Records—COMMERCE/DEPT-14;
(D) Attorneys and Agents Registered
to Practice Before the
Office—COMMERCE/PAT-TM-1;
(E) Complaints, Investigations and
Disciplinary Proceedings Relating to
Registered Patent Attorneys and
Agents—COMMERCE/PAT-TM-2; and
(F) Non-Registered Persons Rendering
Assistance to Patent
Applicants—COMMERCE/PAT-TM-5.
(ii) The foregoing are exempted from 5 U.S.C.
552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and (I), and
(f). The reasons for asserting the exemption are
to prevent subjects of investigation from
frustrating the investigatory process, to insure the
proper functioning and integrity of law
enforcement activities, to prevent disclosure of
investigative techniques, to maintain the ability
to obtain necessary information, to fulfill
commitments made to sources to protect their
identities and the confidentiality of information
and to avoid endangering these sources and law
enforcement personnel. Special note is taken of
the fact that the proviso clause in this exemption
imports due process and procedural protections
for the individual. The existence and general
character of the information exempted will be
made known to the individual to whom it pertains.
(2)
(i) Exempt under 5 U.S.C. 552a(k)(5). The
systems of records exempt (some only
conditionally), the sections of the act from which
exempted, and the reasons therefor are as follows:
(A) Investigative Records—Contract
and Grant Frauds and Employee Criminal
Misconduct—COMMERCE/DEPT-12,
but only on condition that the general
exemption claimed in § 102.33(b)(3)  is
held to be invalid;
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 (B) Investigative Records—Persons
Within the Investigative Jurisdiction of
USPTO—COMMERCE/DEPT-13; and
(C) Litigation, Claims, and
Administrative Proceeding
Records—COMMERCE/DEPT-14.
(ii) The foregoing are exempted from 5 U.S.C.
552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and (I), and
(f). The reasons for asserting the exemption are
to maintain the ability to obtain candid and
necessary information, to fulfill commitments
made to sources to protect the confidentiality of
information, to avoid endangering these sources
and, ultimately, to facilitate proper selection or
continuance of the best applicants or persons for
a given position or contract. Special note is made
of the limitation on the extent to which this
exemption may be asserted. The existence and
general character of the information exempted
will be made known to the individual to whom it
pertains.
(c) At the present time, USPTO claims no exemption
under 5 U.S.C. 552a(k)(3), (4), (6) and (7).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
Other federal agency Category of records
Office of Personnel
Management.2Federal Personnel Records
Department of Labor.3 Federal Employee
Compensation Act Program
Equal Employment
Opportunity Commission.4Equal Employment
Opportunity Appeal
Complaints
Merit Systems Protection
Board.5Formal Complaints/Appeals
of Adverse Personnel Actions
1 Other than systems of records noticed by the Department
of Commerce. Where the system of records applies only to
USPTO, these regulations apply. Where the system of records
applies generally to components of the Department of
Commerce, the regulations of that department attach at the
point of any denial for access or for correction or amendment.
2 The provisions of this part do not apply to these records
covered by notices of systems of records published by the
Office of Personnel Management for all agencies. The
regulations of OPM alone apply.
3 The provisions of this part apply only initially to these
records covered by notices of systems of records publishedOther federal agency Category of records
by the U.S. Department of Labor for all agencies. The
regulations of that department attach at the point of any
denial for access or for correction or amendment.
4 The provisions of this part do not apply to these records
covered by notices of systems of records published by the
Equal Employment Opportunity Commission for all agencies.
The regulations of the Commission alone apply.
5 The provisions of this part do not apply to these records
covered by notices of systems of records published by the
Merit Systems Protection Board for all agencies. The
regulations of the Board alone apply.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 2000]
PART  - 104   LEGAL PROCESSES
Subpart A  — General Provisions
§ 
104.1Definitions.
 Demand means a request, order, or subpoena for
testimony or documents for use in a legal proceeding.
Director  means the Under Secretary of Commerce for
Intellectual Property and Director of the United States
Patent and Trademark Office ( see  § 1.9(j) ).
 Document means any record, paper, and other property
held by the Office, including without limitation, official
letters, telegrams, memoranda, reports, studies, calendar
and diary entries, maps, graphs, pamphlets, notes, charts,
tabulations, analyses, statistical or informational
accumulations, any kind of summaries of meetings and
conversations, film impressions, magnetic tapes, and
sound or mechanical reproductions.
 Employee means any current or former officer or
employee of the Office.
 Legal proceeding means any pretrial, trial, and posttrial
stages of existing or reasonably anticipated judicial or
administrative actions, hearings, investigations, or similar
proceedings before courts, commissions, boards or other
tribunals, foreign or domestic. This phrase includes all
phases of discovery as well as responses to formal or
informal requests by attorneys or others involved in legal
proceedings.
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  Office means the United States Patent and Trademark
Office, including any operating unit in the United States
Patent and Trademark Office, and its predecessors, the
Patent Office and the Patent and Trademark Office.
 Official business means the authorized business of the
Office.
 General Counsel means the General Counsel of the
Office.
  Testimony means a statement in any form, including
personal appearances before a court or other legal tribunal,
interviews, depositions, telephonic, televised, or
videotaped statements or any responses given during
discovery or similar proceedings, which response would
involve more than the production of documents, including
a declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
 United States means the Federal Government, its
departments and agencies, individuals acting on behalf
of the Federal Government, and parties to the extent they
are represented by the United States.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001;
second sentence revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003]
§ 
104.2Address for mail and service; telephone
number.
(a) Mail under this part should be addressed to the
Office of the General Counsel, United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450.
(b) Service by hand should be made during business
hours to the Office of the General Counsel, 10B20,
Madison Building East, 600 Dulany Street, Alexandria,
Virginia.
(c) The Office of the General Counsel may be reached
by telephone at 571–272–7000 during business hours.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001;
paras. (b) and (c) revised, 70 FR 10488, Mar. 4, 2005, effective Mar.
4, 2005; para. (a) revised, 75 FR 36294, June 25, 2010, effective June
25, 2010]
§ 
104.3Waiver of rules.
In extraordinary situations, when the interest of justice
requires, the General Counsel may waive or suspend the
rules of this part,  sua sponte or on petition of an interested
party to the Director, subject to such requirements as the
General Counsel may impose. Any such petition must be
accompanied by a petition fee of $130.00.[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001;
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§ 
104.4Relationship of this Part to the Federal Rules
of Civil or Criminal Procedure.
Nothing in this part waives or limits any requirement
under the Federal Rules of Civil or Criminal Procedure.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart B  — Service of Process
§ 
104.11Scope and purpose.
(a) This subpart sets forth the procedures to be
followed when a summons and complaint is served on
the Office or on the Director or an employee in his or her
official capacity.
(b) This subpart is intended, and should be construed,
to ensure the efficient administration of the Office and
not to impede any legal proceeding.
(c) This subpart does not apply to subpoenas, the
procedures for which are set out in subpart C.
(d) This subpart does not apply to service of process
made on an employee personally on matters not related
to official business of the Office or to the official
responsibilities of the employee.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.12Acceptance of service of process.
(a) Any summons and complaint to be served in
person or by registered or certified mail or as otherwise
authorized by law on the Office, on the Director, or on
an employee in his or her official capacity, shall be served
as indicated in §  104.2 .
(b) Any employee of the Office served with a
summons and complaint shall immediately notify, and
shall deliver the summons and complaint to, the Office
of the General Counsel.
(c) Any employee receiving a summons and complaint
shall note on the summons and complaint the date, hour,
and place of service and whether service was by hand or
by mail.
(d) When a legal proceeding is brought to hold an
employee personally liable in connection with an action
taken in the conduct of official business, rather than liable
in an official capacity, the employee by law is to be served
personally with process.  See Fed. R. Civ. P .  4(e). An
employee sued personally for an action taken in the
conduct of official business shall immediately notify and
deliver a copy of the summons and complaint to the
General Counsel.
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 (e) An employee sued personally in connection with
official business may be represented by the Department
of Justice at its discretion (28 CFR 50.15 and 50.16).
(f) The Office will only accept service of process for
an employee in the employee’s official capacity.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart C  — Employee Testimony and Production
of Documents in Legal Proceedings
§ 
104.21Scope and purpose.
(a) This subpart sets forth the policies and procedures
of the Office regarding the testimony of employees as
witnesses in legal proceedings and the production or
disclosure of information contained in Office documents
for use in legal proceedings pursuant to a demand.
(b)  Exceptions. This subpart does not apply to any
legal proceeding in which:
(1) An employee is to testify regarding facts or
events that are unrelated to official business; or
(2) A former employee is to testify as an expert in
connection with a particular matter in which the former
employee did not participate personally while at the
Office.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.22Demand for testimony or production of
documents.
(a) Whenever a demand for testimony or for the
production of documents is made upon an employee, the
employee shall immediately notify the Office of the
General Counsel at the telephone number or addresses in
§104.2  and make arrangements to send the subpoena to
the General Counsel promptly.
(b) An employee may not give testimony, produce
documents, or answer inquiries from a person not
employed by the Office regarding testimony or documents
subject to a demand or a potential demand under the
provisions of this subpart without the approval of the
General Counsel. The General Counsel may authorize the
provision of certified copies not otherwise available under
Part 1 of this title subject to payment of applicable fees
under § 1.19.
(c)
(1)  Demand for testimony or documents .  A
demand for the testimony of an employee under this
subpart shall be addressed to the General Counsel as
indicated in § 104.2 .
(2) Subpoenas . A subpoena for employee testimony
or for a document shall be served in accordance with
the Federal Rules of Civil or Criminal Procedure orapplicable state procedure, and a copy of the subpoena
shall be sent to the General Counsel as indicated in §
104.2 .
(3)  Affidavits . Except when the United States is a
party, every demand shall be accompanied by an
affidavit or declaration under 28 U.S.C. 1746 or
35 U.S.C. 25(b) setting forth the title of the legal
proceeding, the forum, the requesting party’s interest
in the legal proceeding, the reason for the demand, a
showing that the desired testimony or document is not
reasonably available from any other source, and, if
testimony is requested, the intended use of the
testimony, a general summary of the desired testimony,
and a showing that no document could be provided and
used in lieu of testimony.
(d) Failure of the attorney to cooperate in good faith
to enable the General Counsel to make an informed
determination under this subpart may serve as a basis for
a determination not to comply with the demand.
(e) A determination under this subpart to comply or
not to comply with a demand is not a waiver or an
assertion of any other ground for noncompliance,
including privilege, lack of relevance, or technical
deficiency.
(f)  Noncompliance. If the General Counsel makes a
determination not to comply, he or she will seek
Department of Justice representation for the employee
and will attempt to have the subpoena modified or
quashed. If Department of Justice representation cannot
be arranged, the employee should appear at the time and
place set forth in the subpoena. In such a case, the
employee should produce a copy of these rules and state
that the General Counsel has advised the employee not
to provide the requested testimony nor to produce the
requested document. If a legal tribunal rules that the
demand in the subpoena must be complied with, the
employee shall respectfully decline to comply with the
demand, citing  United States ex rel. Touhy v.  Ragen,
340 U.S. 462 (1951).
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.23Expert or opinion testimony.
(a)
(1) If the General Counsel authorizes an employee
to give testimony in a legal proceeding not involving
the United States, the testimony, if otherwise proper,
shall be limited to facts within the personal knowledge
of the employee. Employees, with or without
compensation, shall not provide expert testimony in
any legal proceedings regarding Office information,
subjects, or activities except on behalf of the United
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 States or a party represented by the United States
Department of Justice.
(2) The General Counsel may authorize an
employee to appear and give the expert or opinion
testimony upon the requester showing, pursuant to
§104.3  of this part, that exceptional circumstances
warrant such testimony and that the anticipated
testimony will not be adverse to the interest of the
Office or the United States.
(b)
(1) If, while testifying in any legal proceeding, an
employee is asked for expert or opinion testimony
regarding Office information, subjects, or activities,
which testimony has not been approved in advance in
writing in accordance with the regulations in this
subpart, the witness shall:
(i) Respectfully decline to answer on the
grounds that such expert or opinion testimony is
forbidden by this subpart;
(ii) Request an opportunity to consult with the
General Counsel before giving such testimony;
and
(iii) Explain that upon such consultation,
approval for such testimony may be provided.
(2) If the tribunal conducting the proceeding then
orders the employee to provide expert or opinion
testimony regarding Office information, subjects, or
activities without the opportunity to consult with the
General Counsel, the employee shall respectfully refuse
to provide such testimony, citing  United States ex rel.
Touhy v. Ragen, 340 U.S. 462 (1951).
(c) If an employee is unaware of the regulations in
this subpart and provides expert or opinion testimony
regarding Office information, subjects, or activities in a
legal proceeding without the aforementioned consultation,
the employee shall, as soon after testifying as possible,
inform the General Counsel that such testimony was given
and provide a written summary of the expert or opinion
testimony provided.
(d)  Proceeding where the United States is a party. In
a proceeding in which the United States is a party or is
representing a party, an employee may not testify as an
expert or opinion witness for any party other than the
United States.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.24Demands or requests in legal proceedings for
records protected by confidentiality statutes.
Demands in legal proceedings for the production of
records, or for the testimony of employees regarding
information protected by the confidentiality provisionsof the Patent Act (35 U.S.C. 122), the Privacy Act (5
U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or
any other confidentiality statute, must satisfy the
requirements for disclosure set forth in those statutes and
associated rules before the records may be provided or
testimony given.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart D  — Employee Indemnification
§ 
104.31Scope.
The procedure in this subpart shall be followed if a civil
action or proceeding is brought, in any court, against an
employee (including the employee’s estate) for personal
injury, loss of property, or death, resulting from the
employee’s activities while acting within the scope of the
employee’s office or employment. When the employee
is incapacitated or deceased, actions required of an
employee should be performed by the employee’s
executor, administrator, or comparable legal
representative.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.32Procedure for requesting indemnification.
(a) After being served with process or pleadings in
such an action or proceeding, the employee shall within
five (5) calendar days of receipt, deliver to the General
Counsel all such process and pleadings or an attested true
copy thereof, together with a fully detailed report of the
circumstances of the incident giving rise to the court
action or proceeding.
(b)
(1) An employee may request indemnification to
satisfy a verdict, judgment, or award entered against
that employee only if the employee has timely satisfied
the requirements of paragraph (a) of this section.
(2) No request for indemnification will be
considered unless the employee has submitted a written
request through the employee’s supervisory chain to
the General Counsel with:
(i) Appropriate documentation, including
copies of the verdict, judgment, appeal bond,
award, or settlement proposal;
(ii) The employee’s explanation of how the
employee was acting within the scope of the
employee’s employment; and;
(iii) The employee’s statement of whether the
employee has insurance or any other source of
indemnification.
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 [Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
Subpart E  — Tort Claims
§ 
104.41Procedure for filing claims.
Administrative claims against the Office filed pursuant
to the administrative claims provision of the Federal Tort
Claims Act (28 U.S.C. 2672) and the corresponding
Department of Justice regulations (28 CFR Part 14) shall
be filed with the General Counsel as indicated in § 104.2 .
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
§ 
104.42Finality of settlement or denial of claims.
Only a decision of the Director or the General Counsel
regarding settlement or denial of any claim under this
subpart may be considered final for the purpose of judicial
review.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 12, 2001]
SUBCHAPTER  — PROTECTION OF
FOREIGN MASK WORKS
PART  - 150   REQUESTS FOR PRESIDENTIAL
PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
§ 
150.1Definitions.
(a) Director  means the Under Secretary of Commerce
for Intellectual Property and Director of the United States
Patent and Trademark Office ( see  § 1.9(j) ).
(b)  Foreign government  means the duly-constituted
executive of a foreign nation, or an international or
regional intergovernmental organization which has been
empowered by its member states to request issuance of
Presidential proclamations on their behalf under this part.
(c)  Interim order  means an order issued by the
Secretary of Commerce under 17 U.S.C. 914.
(d)  Mask work  means a series of related images,
however fixed or encoded —
(1) Having or representing the predetermined,
three-dimensional pattern of metallic, insulating, or
semiconductor material present or removed from the
layers of a semiconductor chip product; and
(2) In which series the relation of the images to one
another is that each image has the pattern of the surface
of one form of the semiconductor chip product.
(e)  Presidential proclamation means an action by the
President extending to foreign nationals, domiciliariesand sovereign authorities the privilege of applying for
registrations for mask works pursuant to 17 U.S.C. 902.
(f)  Request means a request by a foreign government
for the issuance of a Presidential proclamation.
(g)  Proceeding  means a proceeding to issue an
interim order extending protection to foreign nationals,
domiciliaries and sovereign authorities under 17 U.S.C.
Chapter 9.
(h)  Secretary  means the Secretary of Commerce.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
150.2Initiation of evaluation.
(a) The Director independently or as directed by the
Secretary, may initiate an evaluation of the propriety of
recommending the issuance, revision, suspension or
revocation of a section 902 proclamation.
(b) The Director shall initiate an evaluation of the
propriety of recommending the issuance of a section 902
proclamation upon receipt of a request from a foreign
government.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
§ 
150.3Submission of requests.
(a) Requests for the issuance of a section 902
proclamation shall be submitted by foreign governments
for review by the Director.
(b) Requests for issuance of a proclamation shall
include:
(1) A copy of the foreign law or legal rulings that
provide protection for U.S. mask works which provide
a basis for the request.
(2) A copy of any regulations or administrative
orders implementing the protection.
(3) A copy of any laws, regulations, or
administrative orders establishing or regulating the
registration (if any) of mask works.
(4) Any other relevant laws, regulations, or
administrative orders.
(5) All copies of laws, legal rulings, regulations, or
administrative orders submitted must be in unedited,
full-text form, and if possible, must be reproduced from
the original document.
(6) All material submitted must be in the original
language, and if not in English, must be accompanied
by a certified English translation.
[Added, 53 FR 24447, June 29, 1988, effective August 1, 1988;
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]
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 § 
150.4Evaluation.
(a) Upon submission of a request by a foreign
government for the issuance of a section 902
proclamation, if an interim order under section 914 has
not been issued, the Director may initiate a section 914
proceeding if additional information is required.
(b) If an interim order under section 914 has been
issued, the information obtained during the section 914
proceeding will be used in evaluating the request for a
section 902 proclamation.
(c) After the Director receives the request of a foreign
government for a section 902 proclamation, or after a
determination is made by the Director to initiate
independently an evaluation pursuant to § 150.2(a)  of this
part, a notice will be published in the  Federal Register
to request relevant and material comments on the
adequacy and effectiveness of the protection afforded
U.S. mask works under the system of law described in
the notice. Comments should include detailed explanations
of any alleged deficiencies in the foreign law or any
alleged deficiencies in its implementation. If the alleged
deficiencies include problems in administration such as
registration, the respondent should include as specifically
as possible full detailed explanations, including dates for
and the nature of any alleged problems. Comments shall
be submitted to the Director within sixty (60) days of the
publication of the  Federal Register  notice.
(d) The Director shall notify the Register of
Copyrights and the Committee on the Judiciary of the
Senate and the House of Representatives of the initiation
of an evaluation under these regulations.
(e) If the written comments submitted by any party
present relevant and material reasons why a proclamation
should not issue, the Director will:
(1) Contact the party raising the issue for
verification and any needed additional information;
(2) Contact the requesting foreign government to
determine if the issues raised by the party can be
resolved; and,
(i) If the issues are resolved, continue with the
evaluation; or,
(ii) If the issues cannot be resolved on this
basis, hold a public hearing to gather additional
information.
(f) The comments, the section 902 request,
information obtained from a section 914 proceeding, if
any, and information obtained in a hearing held pursuant
to paragraph (e)(ii) of this section, if any, will be evaluated
by the Director.(g) The Director will forward the information to the
Secretary, together with an evaluation and a draft
recommendation.
(h) The Secretary will forward a recommendation
regarding the issuance of a section 902 proclamation to
the President.
[Added, 53 FR 24448, June 29, 1988, effective August 1, 1988;
paras. (a) & (c)-(f) revised, 68 FR 14332, Mar. 25, 2003, effective May
1, 2003]
§ 
150.5Duration of proclamation.
(a) The recommendation for the issuance of a
proclamation may include terms and conditions regarding
the duration of the proclamation.
(b) Requests for the revision, suspension or revocation
of a proclamation may be submitted by any interested
party. Requests for revision, suspension or revocation of
a proclamation will be considered in substantially the
same manner as requests for the issuance of a section 902
proclamation.
[Added 53 FR 24448, June 29, 1988, effective August 1, 1988]
§ 
150.6Mailing address.
Requests and all correspondence pursuant to these
guidelines shall be addressed to: Mail Stop Congressional
Relations, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450.
[Added 53 FR 24448, June 29, 1988, effective Aug. 1, 1988;
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised,
70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005]
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