R-1 Rev. 8, July 2010Appendix R  Patent Rules
Title 37 - Code of Federal Regulations 
Patents, Trademarks, and Copyrights
CHAPTER I — 
CHAPTER I — UNITED STATES PATENT 
AND TRADEMARK OFFICE, 
DEPARTMENT OF COMMERCE
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 pertaini ng to pat
ents 
PRACTICE BEFORE THE 
PATENT AND TRADEMARK OFFICE
10 Representation of others before the Patent and 
Trademark Office 
11 Representation of others before the United States  
Patent and Trademark OfficeIndex II - Rules relating to pract ice before the United States 
Patent and Trademark Office15 [Reserved]
15a [Reserved]
41 Practice before the Board of Patent Appeals and 
Interferences
SUBCHAPTER B — ADMINISTRATION
100  [Reserved]
101  [Reserved]
102  Disclosure of government information
104  Legal processes SUBCHAPTER C—PROTECTION OF 
FOREIGN MASK WORKS
150 Requests for Presidential proclamations pursuant  
to 17 U.S.C. 902(a)(2)
_______________________________________________
SUBCHAPTER A - GENERAL 
PART 1 - RULES OF PRACTICE IN 
PATENT CASES 
Subpart A - General Provisions 
GENERAL INFORMATION AND
CORRESPONDENCE 
Sec.1.1 Addresses for non-tradem ark corresp ondence with 
the United States Patent  and Trademark Office. 
1.2  Business to be transacted in w
riting.  
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 transm ission
.  
1.9 Definitions. 
1.10 Filing of papers and fees by “Expres s 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 cer tified copies. 
1.14 Patent applications preserved in confidence.1.15 [Reserved]
IP/N/1/USA/D/2 
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Page 3MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-2FEES AND PAYMENT OF MONEY 
1.16 National application fili ng, 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 Method 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 en titl
ement 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.  
Subpart B - National Processing Provision
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 mathemat ical formulae a nd tables. 
1.59 Expungement of i
nformation or copy of papers in 
application file.  
1.60 [Reserved]  1.61 [R eserved]  
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 an d abstract. 
1.73 Summary of the invention. 1.74 Reference to drawings. 1.75 Claim(s).
1.76 Application data sheet. 
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Page 4PATENT RULES
R-3 Rev. 8, July 20101.77 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 
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.  
AFFIDAVITS 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. 
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Page 5MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-4TIME 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 
reexamination proc eeding,  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 Origi n
al 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 Return of jurisdiction from the Board of Patent 
Appeals a nd Interferences; termination of 
proceedings. 
1.198 Reopening after a final decision of the Board of 
Patent Appeals and Interferences. 
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 Voluntary publication or republication of patent 
application publication. 
IP/N/1/USA/D/2 
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Page 6PATENT RULES
R-5 Rev. 8, July 2010MISCELLANEOUS PROVISIONS 
1.248 Service of papers; manner of service; proof of 
service in cases other than interferences. 
1.251 Unlocatable file.
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 applicat ion 
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 st
atutory 
invention registration.  
1.297 Publication of statutory i nven
tion 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 correct ion 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 p a
tent. 
 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 Internat ional Searching Authority.  
IP/N/1/USA/D/2 
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Page 7MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-61.414 The United States Patent  and Trademark Office as a 
Designated Office or Elected Office.  
1.415 The International Bureau.  
1.416 The United States In ternational Preliminary 
Exami ning Authority. 
1.417 Submission of tran sl
ation of international 
publicat ion.  
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.  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 trans mittal 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 In ternational 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 
Internatio nal Searchin
g 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 
prelim inary examination.  
1.488 Determination of unity of invention before the 
International Preliminary Examining Authority
. 
IP/N/1/USA/D/2 
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Page 8PATENT RULES
R-7 Rev. 8, July 20101.489 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 unde r 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 REEXAMINATION 
1.510 Request for ex parte  reexamination.  
1.515 Determination of the request for ex parte  
reexamination.  
1.520 Ex pa rte reexamination at the initiative of  
the Director.   
1.525 Order for ex parte
 reexamina tion.  
1.530 Statement by patent owner in ex parte  
reexamination; amendmen t by patent owne r in ex 
part
e or inter partes reexamination; inventorshi p
 
change in ex parte  or inter partes  reexamination.  
1.535 Reply by third party requester in ex par te 
reexamination.  
1.540 Consideration of responses in ex parte  
reexamination.   
1.550 Conduct of ex par te reexamination 
proceedings.  
1.552 Scope of reexamination in ex parte reexamination 
proceedings.  
1.555 Informat ion
 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  reex
amination proceeding. 
1.570 Issuance of ex parte reexamination certificate  
after ex parte
 reexaminat ion 
proceedings.
 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 de lay. 
1.704 Reduction of period of adjustment of paten t
 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 g
iven 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.  
IP/N/1/USA/D/2 
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Page 9MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-81.776 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 t e
rm extension for a veterinary 
biological product. 
1.780 Certificate or order of extension of patent term.  
1.785 Multiple applications  for ext
ension of term of the 
same paten t or of different patents for the same 
regulatory review period for a product.  
1.790 Interim exten
sion 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 co mputer readable form.  
1.825  Amendments to or replacement of sequence listi ng  
and computer reada
ble copy thereof.
 Appendix A - Sample Sequence Listing
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
1.902 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 int er  
partes  reexamination.
1.906 Scope of reexamination in inter partes 
reexamination proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file request for inter partes  
reexamination.
1.915 Content of requ
est for inter partes  reexamination.
1.919 Fili
ng date of request for inter partes  reexamination.
1.923 Examiner’s determin atio
n on the request for inter 
partes ree
xamination.
1.925 Partial refund if request for inter pa
rtes 
reexamination is not ordered.
1.927 Petiti
on 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.
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Page 10PATENT RULES
R-9 Rev. 8, July 2010OFFICE 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 comment s
, and 
briefs in inter partes reexamination.
1.945 Response to Office action by patent ow
ner 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 thi r
d  
party requester following the order for inter  
partes  reexamination.
1.949 Examiner’s Office actio n closing prosecution in 
inter partes  reexamination.
1.951 Options aft e
r 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, TERMINATION 
OF PROCEEDINGS, 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 parte
s reexamination.
1.958 Petition to revive terminated inter partes 
reexamination or claims terminated for lack of  
patent owner response.APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES IN
INTER PARTES  REEXAMINATION
1.959 Appeal in i nter partes reexamination.
1.961 [Reserved]
1.962 [Reserved]  
1.963 [Reserved]  
1.965 [Reserved]  
1.967 [Reserved]  
1.969 [Reserved]  
1.971 [Reserved]  
1.973 [Reserved]  
1.975 [Reserved]  
1.977 [Reserved]  
1.979 Return of Jurisdiction from the Board of Patent 
Appeals a nd Interferences; termination of 
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.
1.991
Merger of concurrent reissue application  an
d inter 
partes  reexamination proceeding.
1.993 Suspension of conc urrent interference and inter 
partes ree
xamination proceeding.
1.995 Third party requester’s pa rticipation rights preserved 
in mer
ged proceedin g.
IP/N/1/USA/D/2 
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Page 11§ 1.1 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-10REEXAMINATION CERTIFICATE IN
INTER PARTES  REEXAMINATION
1.997 Issuance and publication of inter partes 
reexamination certificate concludes inter partes 
rexamination proceeding.
SUBCHAPTER A – GENERAL
PART 1 — RULES OF PRACTICE IN 
PATENT CASES
Subpart A — General Provisions
GENERAL INFORMATION AND 
CORRESPONDENCE
§  1.1 Addresses for non-trademark correspon -
dence with the United States Patent and 
Trademark Office.
(a) In general.  Except as provided in para -
graphs (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 Trade -
mark Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450” or to specific ar eas within the Office as 
set out in paragraphs (a)(1),  and (a)(3)(iii) of this sec -
tion. When appropriate, co rrespondence should also 
be marked for the attention of a particular office or 
individual.
(1) Patent corres
pondence .
(i) In general.  All correspondence con -
cerning patent matters processed by or
ganizations 
reporting to the Commission er for Patents should be 
addressed to: Commissioner for Pa
tents,  
PO Box 
1450, Alexandria, Virgin ia
 22313-1450.
(ii) Board of Patent Appeals and Interfer -
ences . See § 41.10 of this title. Notices of appeal, 
appeal briefs, reply briefs, re quests for oral hearing, as 
well as all other corresponden ce 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 para graph (a)(1)(i) of this sec -
tion.
(2) [Reserved](3) Office of General Counsel corr espon -
den
ce.— 
(i) Litigati on and service . Correspondence 
relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as 
provided in §  104.2.
(ii) Disciplinary pr oceedings.  Correspon -
denc e to
 counsel for th
e Director of the Office of 
Enrollment and Discipline re lating to disciplinary pro -
ceedings pending before a H earing 
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, V i
rginia 22313-1450.
(iii) Solicitor , in general. Correspondence 
to the Office of the Solicitor not otherwise provided 
for shall be addressed to: Ma il 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 pro -
vided for, including  correspo
ndence to the General 
Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent 
and T
rademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450.
(v) Impr oper correspondence.  Correspon -
dence 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 O f
fice, and may be returned.
(4) Office of Public Records corr espondence .
(i) Assignm
ents. All patent-related docu -
ments submitted by mail to be recorded by Assign -
ment Services Division, exc ept for do
cuments file d 
together with 
a new applica tion, should be addressed 
to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Tradema rk 
Of
fice, 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 St ates Pate
nt and Trademark Office, 
P.O. Box 1450, Alexandria, Virginia 22313-1450.
(5) Office of Enr ollment and Discipline cor -
respondence . All correspondence directed to the 
Office of Enrollment and Discipline concerning 
enrollment, registration, and investigation matters 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 12PATENT RULES § 1.3
R-11 Rev. 8, July 2010should be addressed to Mail Stop OED, Director of 
the 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 appli -
cations during the internatio nal stage a
nd prior to the 
assignment of a national serial number should be 
additionally marked “Mail Stop PCT.”
(c) For r eex
amination proceedings. 
(1) Requests for ex parte  reexamination 
(original request papers) and all subs equ
ent ex parte
reexamination corresponde n
ce 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  reexam ination 
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 maintenanc e fees in patents not 
submitted electronically ov er the Internet, and corre-
spondence related to maintenanc e 
fees may be 
addressed to: Director of the United States Patent and 
Tra
demark 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 T radema
rk Office should be 
additionally marked “Mail Stop Patent Ext.” When 
appropriate, the communi cation 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 16
413, May 9,1988; para. (h) added, 54 FR 37588, 
Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20
195, 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 te xt and para. (a)(4) revised, 
para. (a)(2) removed and reserved, and note fo llo
wing 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, effec -
tive 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) rev
ised 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 atten -
dance of applicants or their attorneys  
or agents at the 
Patent and Trademark Office is unnecessary. The 
action of the Pate
nt and Trademark Office will be 
based exclusively on the writt en 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 a ttorneys or agents are 
required to conduct thei r business with the United 
Stat
es Patent and Trademark Office with decorum and 
courtesy. Papers presented in  violation of this require -
ment will be submitted to th e 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 co rres
pondence 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, effec -
tive July 30, 2003]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 13§ 1.4 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-12§  1.4 Nature of correspondence and signature 
requirements.
(a) Correspondence with the Patent and Trade -
mark Office comprises:
(1) Correspondence rela ting 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 re cords, transmis
sion of  assignments for recording, 
and the like, and
(2) Correspondence in and relating to a par-
ticular application or other proceeding in the Office. 
See particularly the rules relating to the filing, pro -
cessing, or other proceedings of national applications 
in subpart B, §§ 1.31  
to 1.378; of international appli -
cations in subpart C, §§ 1.401 to 1. 49
9; of ex parte
reexaminations of patents in  subpart D, §§ 1.501 to 
1.570; of extension of patent term in subpart F, §§ 1.71
0 to 1.785; of inter partes reexaminations of pat-
ents in subpart H, §§ 1.902 to 1.997; and of the Board 
of Patent Appeals and Interf erences 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, o r
 other proceeding must be furnished for 
each file to which the paper pertains, ev
en though the 
contents of the papers filed in two or more files may be identical. The filing of  duplicate copies of corre -
spondence in the file of an application, patent, or other proceeding should be avoided, except in situa-
tions in which the Office requires the filing of dupli -
cate copies. The Of fice may dispose of duplica
te 
copies of correspondence in th e file of an application, 
patent, or other proceeding.
(c) Since different matters may be  considered 
b
y different branches or sections of the United States 
Patent and Trademark Offic e
, 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 pe rson’
s signature, must:
(i) Be an original, that is, have an original 
handwritten signature persona lly 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 
or
iginal. In the event that a copy of the original is 
filed, the original should be retained as evidence of 
authenticity. If a question of au
thenticity arises, the 
Office may require submission of the original.
(2) S-signature . An S-signature is a signature 
inserted between forward sl ash marks, but not a hand -
written signature as defined by § 1.4(d)(1). An S-sig -
nature includes any signature made by electronic or 
mechanical means, and a n
y other mode of making or 
applying a signature not covered by a handwritten sig -
nature of § 1.4(d)(1). Correspondence being
 filed in 
the Office in paper, by fa csimile transmission as pro -
vided in § 1.6(d), or via the Office electronic filing 
system as an attachment as pr ovided in § 1.6(a)(4), for 
a patent application, patent, or a reexamination pro -
ceeding
 may be S-signature signed instead of being 
personally si gned
 (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 cons ist 
only of 
letters, or Arabic numerals, or both, with appropri -
ate spaces and commas, peri ods, apostrophes, or 
hyphens for punctuation, and the person signing th
e 
correspondence must insert his  
or her own S-signa -
ture with a first single forward slash mark before, 
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)), 
signin
g pursuant to §§ 1.33 (b)(1) or 1.33(b)(2), must 
supply his/her registration nu mber either as part of the 
S-signature, or immedia t
ely 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 registratio n 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-s i 
gna-
ture, 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 situa tions to assist in the filing 
of correspondence for a cer tain purpose and to meet 
certain requirements for pa tent 
applications and pro -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 14PATENT RULES § 1.4
R-13 Rev. 8, July 2010ceedings. Use of the form s 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, term inal disclaimer forms, peti -
tion forms, and nonpublicatio n request forms) may be 
made. The existing text of a form, other than a certifi -
cation 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 certificati
on under § 
11.18(b) of this chapter that the existing text and any 
certification statements on the form have not been 
altered other than permitte d by EFS-Web customiza -
tion.
(4) Certifications . (i) Section 11.18 certifica -
tions : The presentation to the Office (whether by sign -
ing, filing, submitting, or later advocating) of any 
paper by a party, whether a practitioner or 
non-practi -
tioner, const itutes a certifi
cation under §  1
1.18(b) of 
this subcha pter
. Violations of § 11.18(b)(2) of this 
subchapter by a party, whether a practitioner or non-
practitioner, may result in th e 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 :
(A) Of another : A person submit ting a 
document signed by anothe r under paragraph (d)(2) 
of 
this section is obligated to  have a reasonable basis to 
believe that the person wh ose signature is present on 
the document was actually inserted by that person, 
and should retain evidence of authenticity of the sig -
nature.
(B) Self certification : The person insert -
ing 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 
he
r own sign atur
e.
(C) Sanctions : Violations of the certifi -
cations as to the signature of another or a person’s  
ow
n signature, set forth in  paragraphs (d)(4)(ii)(A) 
and (B) of this section, may result in the imposition of 
sanctions under § 1
1.18(c) and (d) of this chapter.(e) Correspondence requiring a person’s signa -
ture and relating to regist ration practice before the 
Patent and Trademark Office in patent cases , enroll -
men
t and disciplinary investigations, or disciplinary 
proceedings must be submitte d 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 pho -
tocopy or facsimile transmis sion, of the certification 
is not acceptable.
(g) An ap plicant wh
o has not made of record a 
registered attorne y or agent may be
 required to state 
whether assistance was received in the preparation or 
prosecution of th e p
atent 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 speci -
fication and amendmen ts or other papers to be filed in 
the Patent and T r 
ademark Office, as well as other 
assistance in such matte rs, but does not include 
merely making drawings by draftsmen or steno -
graphic services in typing papers.
(h) Ratification/confirmation/evidence of au -
thenticity : The Office may require ratification, confir -
mation (which includes submission of a duplicate 
document but with a proper signature), or evidence of 
authen ticity of a 
signature, such as wh e
n the Office 
has reasonable doubt as to the authenticity (veracity) 
of the signature, e.g., where there are variations of a 
signature, or where the signature and the typed or printed name, do not clearly identify the person sign -
ing.
[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, 1 997; paras. (a)(2) and (d)(1) revised, 64 FR 48900, 
Sept. 8, 1999, effective O c
t. 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, effec -
tive May 1, 2003; para. (d)(1)(iii) removed and reserved, 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 15§ 1.5 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-14paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and 
(d)(1)(ii) revised, 68 FR 482 86, Aug. 13, 2003, effective 
Sept. 12, 2003; para. (a)(2) re vised, 69  FR 4
9959, 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 applica-
tion, or patent-related proceeding.
(a) No correspondence relating to an applica -
tion 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 
conc
erns a previously filed application for a patent, it 
must identify on the top pa ge in a conspicuous loca -
tion, 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 applica -
tion by the Patent and Trad emark Office, or the inter -
nati
onal application number of the international 
application. Any correspondence not containing such 
identification will be returned to the sender where a return addre ss is availabl e. 
The returned correspon -
dence will be accompanied with a cover letter which will indicate to the sender that if the returned corre -
spondence is resubmitted t o
 the Patent and Trademark 
Office within two weeks of the mail date on the cover 
letter, the original date of receipt of the correspon -
dence 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 § 1.1 0
 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 retu rned 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 th e returned correspondence 
will not be extended. In ad dition to the application 
number, all letters directed to the Patent and Trade -
mark Office concerning applications for patent should also state the name of the applicant, the title of the 
invention, the date of filing the same, and, if known, 
the group art unit or other unit within the Patent and 
Trademark Office responsible for considering the let -
ter 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 pat
entee, 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 proceed -
ing should identify it as su ch by the number of the 
patent undergoing reexamin ation, the reexamination 
request control number a ssigne
d to such proceeding, 
and, if kn own
, the group art unit and name of the 
examiner to which it been assigned.
(e) [Reserved](f) When a paper concerns a provisional appli -
cation, 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, effec-tive Oct. 30, 1999; section heading revised, para. (c) removed and reserved, 68 FR 48286, Aug. 13, 2003, effec -
tive Sept. 12, 2003; para. (e) removed and reserved, 69 FR 
49
959, 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 wi th t
he date of receipt 
except as follows:
(1) The Patent and Trademark Office is not 
open for the filing of corre spondence 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 electroni cally under paragraph (a)(4) 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 16PATENT RULES § 1.6
R-15 Rev. 8, July 2010of this section, no correspondence is received in the 
Office on Saturdays, Sund ays, 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 Un ited States Postal Service.
(3) Correspondence transmitted by facsimile 
to the P atent and Trademark Office will be stamped 
with the date on which the comple te tra
nsmission is 
received in the Pate nt a
nd Trademark Office unless 
that date is a Saturday, Sunday, or Federal holiday 
within the District of Co lumbia, in which case the 
date stamped will be the ne xt 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 sy stem 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) Corr espondence delivered by hand . In addi -
tion to being mailed, correspondence may b e de
liv-
ered by hand during hours the Office is open to 
receive correspondence.
(d) Facsimile transmission . Except in the cases 
enumerated below, correspondence, inc l
uding autho -
rizations to charge
 a depo sit account, may be trans -
mitted by facsimile. The receipt date accorded to the 
correspondence will be the date on which the com-
plete transmission is received in the United States Patent a n
d Tra d
emark Office, unless that date is a Sat -
ur
day, Sunday, or Federal holiday within the District 
of Columbia. See §  1.6(a)(3). To facilitate proper pro -
cessing, each transmission session should be limited 
to correspondence to be filed in a single application or 
other procee ding be
fore 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 interfer -
ence proceeding, or the patent number of a patent should be entered as a part of the sender’ s id
entifica -
tion on a facsimile cover sheet. Facsimile transmis -
sions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:(1) C o
rrespondence 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) throug h (D) and (F), and 
§ 1.8(a)(2)(iii)(A), except that a continued prosecu -
tion application under §  1.53
(d) may be tran
smitted to 
the Office by facsimile;
(4) Color drawings submitted under §§ 1.81,
1.83 through 1.85, 1 .15
2, 1.165,  1
.173, or 1.437; 
(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 chap ter and directly related 
to the 
secrecy order content of the application;
(7) [Reserved]
(8) [Reserved]
(9) In c o
ntested cases before the Board of 
Patent Appeals and Interferences except as the Board 
may expressly a
uthorize.
(e) [Reserved]
(f) Facsimile transmission of a patent applica -
tion under §  1.53(d). In the event that the O
ffice has 
no evidence of receipt of an application under 
§ 1.53(d) (a continued prosecutio n ap
plication) trans -
mitted to the Office by facsimile transmission, the 
party who transmitted the ap plication under § 1.53(d) 
may petition the Director to  accord the application 
under § 1.53(d) a f iling date as of the date the applica -
tion 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 th e previo
us 
transmission of the application under §  1.53(d) 
promptly after becoming aware that the Office has no 
evidence of receipt of the applicat
ion under § 1.53(d);
(ii) Supplies an additi onal copy of the pre -
viously transmitted applicat ion under § 1.53(d); and
(iii) Includes a statement which attests on a 
personal knowledge basis or to the satisfacti
on of the 
Director to the previous t ra
nsmission of the applica -
tion un der §
 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 
IP/N/1/USA/D/2 
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Page 17§ 1.7 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-16into being after the complete  transmission and within 
one business day of the comp lete transmission of the 
application under §  1.53(d).
(2) The Office may require additional evi -
dence 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 correspon -
dence required by § 1.495 via the Office electronic fil -
ing system . In the eve
nt that the Offic
e has no 
evidence of receipt of the national stage correspon -
dence requ ire
d by  
§ 1.49
5, which was submitted to 
the Office by the Office el ectronic filing system, the 
party who submitted the correspondence may petition 
the Director to accord the national stage correspon -
dence a receipt date as of the date the correspondence 
is shown to have  been officially submitted to the 
Office.  
(1) T
he petition of this paragraph (g) requires 
that the party who submitte d such national stage cor -
respondence:  
(i) Informs the Office of the previous sub -
missio n of the co
rrespondence promptly after be com-
ing a
ware that the Office h as no evidence of receipt of 
the correspondence under § 1.495; 
(ii) Supplies an addition al cop
y 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 of
fi-
cially submitted; and  
(iv) Supplies a copy of an acknowledg -
ment receipt generated by th e Office electronic filing 
system, or equivalent evidence, confirming the sub -
mission to support the statement of paragraph 
(g)(1)(iii) of this section. 
(2) T he Of
fice may require additional evi -
dence to determine if the national stage correspon -
dence 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, effec -tive Oct. 30, 1999; para.(d)(9) revised, 65 FR 54604, Sept. 8, 200 0, 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) a nd (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 p a
ying 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 holiday. See 
§ 1.304 for time for appeal or for commencing civil 
action.
(b) If the day that is twelve months after the fil -
ing date of a provisional ap plication 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 pend ency shall 
be extended to the next suc -
ceeding secular or business day which is not a Satur -
day, 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 situatio ns enumerated in para -
graph (a)(2) of this section or as otherwise expressly 
excluded in this chapter, correspondence required to 
be filed in the U.S. Patent and Trad emark Of
fice 
within a set period of time will be considered as being timely filed if the procedure described in thi s
 section 
is followed. The actual date of receipt will be used for 
all other purposes.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 18PATENT RULES § 1.8
R-17 Rev. 8, July 2010(1) Correspondence will be considered as 
being timely filed if:
(i) The correspondence is mailed or trans -
mitted 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) T
ransmitted via the Office electronic 
filing system in accordance with § 1.6(a)(4); and 
(ii) The  corresponde
nce includes a certifi -
cate for each piece of correspondence stating the date 
of deposit or transmission. The person signing the  
cer-
tificate should have reasonabl e basis to expect that the 
correspondence would be mailed or transmitted on or before the date indicated.
(2) The pro
cedure described in paragraph 
(a)(1) of this section does not apply to, and no benefit 
will be given to a Certificate of Mailing or Transmis -
sion on
, the following:
(i) Relative to Patents and Patent Appli -
cations—
(A) The filing of a national patent appli -
cation specification and drawing or other correspon -
den
ce for the purpose of obtaining an application 
filing date, including a request for a continued prose -
cution application under §  1.53(d);
(B)
[Reserved]
(C) Papers filed in contested cases 
before the Board of Patent Appeals and In terfere
nces, 
which are governed by § 41.106 (f) of this title;
(D) The filing of an international appli-
cation for patent;
(E) The filing of co rrespondence in an 
internationa l application be fore the U.S. Receiving 
Office, the U.S. International Searching Authority, or 
the U.S. International Pr eliminary Examining Author -
ity;
(F) The filing of a copy of the interna -
tional a
pplication 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) Correspondenc e filed in 
connection 
with a disciplinary proceeding under part 1 1
 of th is 
chapter
.
(B) [Reserved]
(b) In the event that correspondence is consid -
ered 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 elap se
d from 
the time of mailing or transmitting of the correspon -
dence, or after the applic ation is held to be aban -
doned, 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 corresponde nce will be considered 
timely if the party who forwarded such  correspon -
den
ce:
(1) Informs the Of fice
 of the previous mail -
ing or transmission of the correspondence promptly 
after becoming aware that the Office has no evidence of receipt of th
e correspondence;
(2) Supplies an additiona l copy of the previ -
ously mailed or transmitted correspondence and cer -
tificate; and
(3) Includes a statement that attests on a per-
sonal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission 
or submission. If the correspondence was sent by fac -
simile transmission, a copy of the se nding unit’
s 
report confirming transmi ssion may be used to sup -
port this statement. If the correspondence was trans -
mitted 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) T he Of
fice may require additional evidence 
to determine if the corre spondence 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, 198 
5; 
52 FR 20046, May 28, 1987; subp aras. (a)(2)(xiv)-(xvi), 
54 FR 37588, Sept. 11, 19 89, ef
fective Nov. 16, 1989; 
revised, 58  FR 54494, Oct. 22, 1993, ef fect
ive Nov. 22, 
1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, ef fec-
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 19§ 1.9 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-18tive 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 Ap r
. 
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 st age from an international 
application after complianc e with 35 U.S. C. 37
1.
(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. nati onal applicat
ion 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 internatio nal 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 applica tion 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 officia lly 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 in terest of  
national defense or 
foreign policy and, in fact, properly classified pursu -
ant 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 Secre t
ary of 
Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
(k) Paper as used in th is chapter means a docu -
ment that may exist in electr onic form, or in physical 
form, and therefore does not necessarily imply physi -
cal 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, ef fec-
ti
ve 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 deliv -
ered by the “Express Mail Post Office to Addressee” 
service of the Unite
d States Postal Service (USPS) 
will be considered filed w ith 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 “Exp ress Mail” label or other 
official USPS notation. If the USPS deposit date can -
not be determined, the correspondence will be 
accorded the USPTO receipt date as the filing date. 
See § 1.6( a).
(b
) Correspondence should be deposite d 
di
rectly with an employee of the USPS to ensure that 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 20PATENT RULES § 1.10
R-19 Rev. 8, July 2010the person depositing the correspondence receives a 
legible copy of the “Express Mail” mailing label with 
the “date-in” clearly marked. Persons dealing indi -
rectly with the employees of the USPS (such as by 
deposit in an “Express Mail” drop box) do so at the 
risk of 
not receiving a copy of the “Express Mail” 
mailing label with the desired “date-in” clearly 
marked. The paper(s) or fee(s) that constitute the cor-
respondence should also include the “Express Mail” 
mailing label number thereon.  See paragraphs (c), (d) 
and (e) of this section.
(c) Any person filing corr espondence under this 
section that was received by the Office
 and delivered 
by the “Express Mail Post Office to Addresse
e” ser -
vice of the USPS, who can show that there is a dis -
crepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Expre ss Mail” 
mai
ling label or other official USPS notation, may 
petition the Director to a ccord the correspondence a 
filing date as of the “date- in” on the “Express Mail” 
mailing label or other official USPS notation, pro-
vided 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” mail -
ing label was placed on the paper(s) or fee(s) that con-
stitute the correspondence prior to the original 
mailing by “Express Mail;” and
(3) The petition includes a true copy of the 
“Express Mail” mai ling labe l showing the “date-in,” 
and of any other official notation by the USPS relied 
upon  to sh
ow the date of depo sit.
(d)
Any person filing corr espondence under this 
section that was received by the Office and delivered by the “Express Mail Post Office to Ad dresse
e” ser -
vice of the USPS, who can sh ow that the “date-in” on 
the “Express Mail” mailing label or other official notation entered by the US PS was incorrectly entered 
or omitted by the USPS, may petition the Director to accord the correspondence a f iling date as of t h
e 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” mail -
ing label was placed on the paper(s) or fee(s) that con -
stitute 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 fi
ling date was the date the correspondence 
was deposite d in 
the “Express Mail Post Office to 
Addressee” service prior to th e last scheduled pickup 
for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or 
that came into being after deposit and within one busi -
ness day of the deposit of the correspondence in the 
“Expre ss Mail Post Office to Addressee” service of 
the USP S.
(e)
Any person mailing correspondence 
addressed as set out in § 1.1(a) to the Office with suf-
ficient postage utilizing the “Express Mail Post Office 
to Addressee” service of th e USPS but not received 
by t
he 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) T
he number of the “Express Mail” mail -
ing label was placed on the paper(s) or fee(s) that con -
stitute the correspondence prior to the original 
mailing by “Express Mail”;
(3) The petition includes  a copy of the origi -
nally deposited paper(s) or fee(s) that con
stitute 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 offi -
cial notation by the USPS re lied 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 of ficial 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 includ es a statement which 
establishes, to the satisfaction of the Director, the 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 21§ 1.10 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-20original deposit of the correspondence and that the 
copies of the correspondence, the copy of the 
“Express Mail” mailing la bel, 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” mail -
ing label, returned postcard receipt, and official nota -
tion entered by the USPS.
(f) The Office may requir e additional evidence 
to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in ques -
tion.
(g) Any person who mails correspondence 
addressed as set out in § 1.1 (a) to the Office with suf -
ficient postage utilizing the “Express Mail P
ost Office 
to Addressee” service of the USPS, but has the corre-
spondence returned by  the
 USPS due to an interrup -
tion or emergency in “Express Mail” service, may 
petition t h
e Director to consider such correspondence 
as filed on a particular date in the Office, provided 
that:
(1) The petition is filed prompt
ly after the 
person becomes aware of the re turn of 
the correspon -
dence;
(2) The number of the “Express Mail” mail -
ing label was p laced on
 the paper(s) or fee(s) that con-
stitute the correspondence prior to the original 
mailing by “Express Mail”;
(3) The petition includ es the original corre -
spondence or a copy of the original correspondence showing the number of the “Express Mail” mailing 
label thereo
n and a copy of the “Express Mail” mail -
ing label showing the “date-in”; and
(4) The petition includes a statement which 
establishes, to the satisfaction of the Director, the 
original deposit of th e co
rrespondence and that the 
correspondence or copy of the correspondence is the 
original corre
spondence or a true copy of the corre -
spondence originally depos ited with the USPS on the 
requested filing date. Th e Office may require addi -
tional evidence to determ ine if the correspondence 
was returned by the USPS due to an interruption or 
emergency in “Express Mail” service.
(h) Any person who atte mpts to mail correspon -
dence addressed as set out in 
§ 1.1 (a) to the Office 
with sufficient postage utilizing the “Express Mail Post Office to Addresse
e” service of the USPS, but 
has the correspondence refused  by an employee of the USPS due to an int
erruption or emergency in 
“Express Mail” service, may petition the Director to consider suc
h 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 correspon -
dence;
(2) The number of the “Express Mail” mail -
ing label was placed on the paper(s) or fee(s) that con -
stitute t h
e correspondence prior to the attempted 
mailing by “Express Mail”;
(3) The petition includ es the original corre -
spondence or a copy of th e 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 t
he corre -
spondence with the USPS wh ich establis hes, to the 
satisfaction of t
he Director, the original attempt to 
deposit the correspondence and tha
t the correspon -
dence or copy of the correspo n
dence 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 correspon -
dence was refused by an employee of the USPS due  to 
an interruption or emer gency in “Express Mail” ser-
vice.
(i) Any person  attemptin g to file corre -
spondence under this s ectio n that was
 unable to be 
deposited with the USPS du e to an interruption or 
emergency in “Express Mail” service which has been 
so designated by the Director, may petition the Direc -
tor to consider such correspondence as filed on a par -
ticular date in the Office, provided that:
(1) T he petition is filed in a manner desig -
nated b
y the Director promptly after the person 
becomes aware of the designated interruption or 
emergency in “Express Mail” service;
(2) The petition includ es the original corre -
spondence or a copy o f
 the original correspondence; 
and
(3) The petition includ es a statement which 
establishes, to the satisfaction of the Director, that the 
correspondence would have been deposited w i
th the 
USPS but for the designated interruption or emer -
gency in “Express Mail” service, and that the corre -
spondence or copy of the correspondence is the 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 22PATENT RULES § 1.12
R-21 Rev. 8, July 2010original correspondence or a true copy of the corre -
spondence 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) rev ised, 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 inven tion registration are open to 
inspection by the public, an d co
pies may be obtained 
upon the payment of the fee set forth in § 1.19(b)(2). If an application was publis hed in redacted form pur -
suant to § 1.217, the comp lete file wrapper and con -
tents of the patent application will not be available if: 
The requirements of paragr aphs (d)(1), (d)(2), and 
(d
)(3) of § 1.217 have been met in  
the application; and 
the application is still pendin g. 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 in spection by the public, and 
related papers in the appl ic
ation file, are open to 
inspection by the public, an d copies may be furnished 
upon paying the fee therefor. The filing of reissue 
applications, other than continued prosecution appli -
cations under §  1.53(d) of reissue ap plications, will be 
announced in the Official Gazette . The announcement 
shall include at least the filing date, reissue applica -
tion and original patent nu mbers, title, class and sub -
class, n am
e of the inventor, name o
f the owner of 
record, name of the attorney or agent of record, and 
examining group to which th e reissue application is 
assigned.(c) All requests for reexam ination for which all 
the requ irements of § 1
.510 or § 1.915 have been
 sat-
isfied will be announced in the Official Gazette. Any 
reexaminations at the initia tive of the Director pursu -
ant to § 1.520 will also be announced in the Official Gazette . The announcement shall include at least the 
date of the r
equest, if any, the reexamination request 
cont
rol 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 i
n the patent or reexamination file are open to 
inspection by the general pu blic, 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 cop -
ies 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, effec -
tive Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 
57024, Sept. 2 0
, 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, effec -
tive Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c) rev
ised, 71 FR 
44219, Aug. 4, 2006, effective Aug. 4, 2006]
§  1.12 Assignment records open to public 
inspection.
(a)(1) Separate assignment  records are mainta ined 
in the United S tates Patent and T radema rk Of fice for 
patents  and tradema rks. The
 assignment records, 
relating to original or re issue 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 ob tained upon request and 
payment of the fee set forth in  § 1.19 of this chapter. 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 23§ 1.13 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-22See § 2.200 of this chapter regarding trademark 
assignment records.
(2) All records of assignments of patents 
recorded before May 1, 19 57, are maintained by the 
National Archives and Records Administration (NARA). The records are open  to public inspection. 
Certified and uncertified copies of those ass ignment 
records
 are provided by NARA upon request and pay -
ment of the fees required by NARA.
(b) Assignment records, digests, and indexes 
relating to any pending or abandoned patent applica -
tion, which is open to the pu blic pursuant to § 1.11 or 
for which copies  or ac
cess may be supplied pursuant 
to § 1.14, are available to the public.  Copi
es 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 seeki ng such information is a 
bona fide prospective or actual purchaser, mortgagee, 
or licensee of such application, unless it shall be nec -
essary 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 pen
ding or abandoned patent application preserved in 
confidence under §  1.14, or any information wi th 
respect thereto, must:
(1)
Be in the form of a petition including the 
fee set forth in § 1.17(g); or
(2) Include written auth ority granting access 
to the member of the public  to the particular assign -
ment records from the ap plicant or applicant’s 
assignee or attorney
 or agen t o
f record.
(d) An orde r for a co
py of an assignment or 
other document should identify the reel and frame 
number where the assignment or document is recorded. If a document is i
dentified without specify -
ing 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, an d of any records, books, 
papers, or drawings within the jurisdiction of the 
United States Patent and Trademark Office a n
d open 
to the public, will be furn ished by the United States 
Patent and T rademark 
Office to any person, and cop -
ies of other records or papers will be furnished to per -
sons entitled thereto, upon payment of the appropriate 
fee. See § 2.201 of this chapter regarding copies of 
trademark records.
(b) C
ertified copies of patents, patent applica -
tion publications, and trademark registrations and of any records, books, papers, or drawings within the 
jurisdiction of the United St ates Patent and Trademark 
Office and open
 to the pu blic 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 confi-
dence.
(a) Confidentiality of pate nt applicati on infor -
mation. Patent applications that have not been pub -
lished under 35 U.S.C. 122(b) are generally pr ese
rved 
in confidence pursuant to 35 U.S.C. 122(a). Informa -
tion concerning the filing, pendency , 
or subject matter 
of an application for patent , including status informa -
tion, and access to the application, will only be given 
to the public as set forth in § 1.11 or in this section.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 24PATENT RULES § 1.14
R-23 Rev. 8, July 2010(1) Records associated with patent applica -
tions (see paragraph (g) for international applications) 
may be available in the following situations:
(i) Patented applications and statuto r
y 
invention registrations. The file of an application that 
has issued as a patent or published as a statutory 
inventi
on 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 su ch 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 ab ando ned applicati on th at has been 
published as a pa tent ap
plication publication is avail -
able to the public as set fo rth in § 1.11(a). A copy of 
the application-as-filed, the file contents of the pub-lished application, or a specif ic document in the file  of 
th
e published application may be p r
ovided to any per -
son upon request, and payment of the appropriate fee 
set forth in § 1.19(b).
(iii) Published pending applications. A 
copy of the application-as-f iled, the file contents of 
the application, or a specific document in the file of a pending ap
plication that has been published as a 
patent application publicatio n 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 th e patent application publi -
cation, the copy of the specification, drawings, and 
papers may be limited to a redacted copy. The Office 
will not provide access to th e paper file of a pending 
application that has be en
 published, except as pro -
vided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications 
(including provisional applications) that ar e 
identi -
fied or relied upon. The file contents of an unpub -
lished, abandoned application may be m ad
e available 
to the public if the application is identified in a U.S. 
patent, a statutory in
vention registration, a U.S. patent 
application publication, or  an international patent 
application publication of an  international application 
that was published in acc ordance with PCT Article 
21(2). An application is considered to have been iden -
tified in a document, such as  a patent, when the appli -
cation number or serial number and filing date, first 
named inventor, title and filing date or other applica -
tion specific information are provided in the text of the pat e
nt, but not when th e same identification is 
made in a paper 
in the file co ntents of the patent and is 
not included in t
he printed patent. Also, the file con-
tents may be made available to the public, upon a 
written request, if benefit of the abandoned applica -
tion is claimed under 35 U.S.C. 119(e), 12 0, 1
21, or 
365 in an application that has issued as a U.S. 
patent,  or has published as a statutor y in
vention regis-
tration, a U.S. patent application publication, or an international patent applica tion that was published in 
accordance with PCT Article 21(2). A copy of the 
application-as-filed, the file  contents of the applica -
tion, or a specific document in the file  of the
 applica -
tion may be provided to any person upon written 
request, and payment of the appropriate fee (§ 
1.19(b)).
(v) Unpublished pending applications 
(including provisional app lications) whose benefit is 
claimed. A co py
 of the file contents of an unpu bli
shed 
pending application may be provided to any person, upon written request and pa yment 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 as a U.S. patent, an 
application that has publishe d as a statutory invention 
registration, a U.S. patent application publication, or 
an international patent ap plication publication that 
was published in accordance  with PCT Article 21(2). 
A copy of the application- as-filed, or a specific docu -
ment in the file of the pend ing application may al so be 
provided to any person upon written request, and pay -
ment of the appropriate fe e (§ 1.19(b)). The Office 
will not provide access to the paper file of a pending 
application,  ex
cept as provided in paragraph  (c) o
r (i) 
of this section.
(vi) Unpublished pending applications 
(including provisional applic ations) that are incorpo -
rated by reference or otherwis e identified . A co
py of 
the application as originally  filed of an unpublished  
pen
ding application may be provided to any person, 
upon written request and pa yment of the appropriate 
fee (§ 1.19(b)), if the app lication is incorporated by 
reference or otherwise identi fied in a U.S. patent, a 
statutory invention registration, a U.S. patent applica -
tion publication, or an inte rnational patent application 
publication that was published in accordance with 
PCT Article 21(2). The Office will not  
provide access 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 25§ 1.14 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-24to the paper file of a pend ing 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 pub-
lished or patented, that are not the subject of a benefit 
claim under 35 U.S.C. 119(e), 120, 121, or 365 in  an 
applica
tion that has issued as a U.S. patent, a
n appli -
cation that has published as a statutory invention reg -
istration, a U.S. patent app lication publication, or an 
international patent applic ation publication that was 
published in accordance w ith PCT Article 21(2), or 
are not identified in a U.S. patent, a statutory inven-
tion registration, a U.S. pate nt application publication, 
or an in te
rnational patent  application that was pub -
lished in accordance with PCT Article 21(2), are not available to the public. If an  application is identified 
in the file contents of anot her application, but not the 
publishe d patent app
lication or patent itself, a granted 
petition for access (see paragraph (i)) or a power to 
inspect (see para
graph (c)) is necessary to obtain the 
application, or a copy of the application.
(2) Information concerning a patent applica -
tion may be communicated to the public if the patent 
application is identified in  a published patent docu -
ment or in an application a
s set forth in paragraphs 
(a)(1)(i) through (a)(1)(vi) of  this section. The infor -
mation that may be commun icated to the public ( i.e., 
status information) includes:
(i) Whether the application is pending, 
abandoned, or patente d
;
(ii) Whether the application has been pub -
lished 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 p
lus the six-digit serial 
number); or 
(B) The six-digit serial number plus  an
y 
one of the filing date of th e 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 
unde r 3
5 U.S.C. 119(e), 120,  121 or 365 of the appli -
cation), and if there are
 any such applications, the 
numerical identifier of the application, the specified 
relationship between the applications ( e.g., continua -tion), whether the applicatio n is pending, abandoned 
or patented , a
nd whether the application has been 
pub
lished under 35 U.S.C. 122(b). 
(b) Electronic access to an application.  Where 
a copy of the application fi le or access to the applica -
tion may be made available pursuant to this section, 
the Office may at its discretion provide access to only an electronic copy of the  
specification, draw ings, and 
file contents of the applicati
on. 
(c) Power to inspect a pending or abandoned 
application . Access to an application may be provided 
to any person if the applica tion file is available, and 
the application contai ns written authority ( e.g., a 
power to inspect) granting access to s u
ch 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 purs uant to § 3.71 of this 
chapter); or 
(4) A registered attorney or agent named in 
the pap
ers accompanying the application papers filed 
under § 1.53 or the national stage documents filed 
under § 1.4
95, if an executed oath or declaration pur -
suant to § 1.63 or § 1.497 has not been filed.
(d) Applications reported to Department of 
Energy . Applications for patents which appear to dis -
close, purport to disclose or  do disclose inventions or 
discoveries relating to atom ic ener
gy are reported to 
the Department of Energy, which Department will be 
gi
ven access to the applications. Such reporting does 
not constitute a determinatio n 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 pub -
lic inspection may be publis hed or made  ava
ilable for 
public inspection if:
(1) The Director believes the decision 
invol ves an interpretation of  patent laws or regula -
tions that would be of precedential value; and
(2) T
he applicant is given notice and an 
opportunity to object in wr iting within two months on 
the ground that the decision discloses a trade secret or 
other confidential informa tion. Any objection must 
identify the deletions in 
the text of the decision con -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 26PATENT RULES § 1.14
R-25 Rev. 8, July 2010sidered necessary to protect the information, or 
explain why the entire decision must be withheld 
from the public to protect su ch information. An appli-
cant or party will be given tim e, 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 appli cation will be published in 
the Official Gazette in accordance w
ith § 1.47(c). 
(g) International applications . (1) Copies of 
international application f iles for international appli -
cations which designate the U.S. and which have b
een 
published in accordance w ith PCT Article 21(2), or 
copies of a document in 
such application files, will be 
furnished in accordance with PCT Articles 30 and 38and PCT Rules 94.2 and 94.3, upon written request 
including a showing that the publication of the appli -
cation 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 applica tion kept by the Of
fice in 
its capacity as the Receiving Office , 
see PCT Article 
12(1)), the international app lication was filed with the 
U.S. Receiving Office;
(ii) With respect to the Search Copy (the 
copy of an international ap plication kept by the Office 
in its capacity as the Inte rnational Searching Author -
ity, see PCT Arti cle 12(1)), the U.S. acted as the Inter -
nati
onal Searching Authority, except for the written 
opinion of the International Searching Authority which shall not be available until the expiration of 
thirty months from th e priority date; or
(iii) With respect to the E
xamination 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 app lication which 
has been filed in the United States Patent and Trade -
mark Office pursuant to 35  U.S.C. 154(d)(4) will be 
furnished upon wri tten
 request including a showin g 
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 pe rmitted 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, cop -
ies of an international application-as-filed under para -
graph (a) of this section will  not be provided prior to 
the international publication of the application pursu -
ant to PCT Article 21(2).
(5) Ac cess
 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 Fore ign 
Intellectual Property 
Office.   
(1) Access to the application-as-filed may be 
provid e
d to any foreign intellectual property office 
participating with t h
e Offi ce in a bilateral or multilat -
eral priority document exchange agreement (partici-pating foreign intellectual property office), if the 
application contains written authority granting such 
access. Written authority under this paragraph should be submitted prior to fili ng a subsequent foreign 
application with a particip ating intellectual property 
of
fice in which priority is claimed to the patent appli -
cation.
(2) W ri
tten authority provided under para -
graph (h)(1) of this section must include the title of the invention (§ 1.71(a)), comply with the require -
ments of paragraph (c) of this section, and be submit -
ted o n
 a separate document (§ 1.4(c)).
(3) Written authority provided under para -
graph (h)(1) of this section will be treated as authoriz-
ing the Office to provide to all participating foreign 
intell ectual property offices indicated in the written 
authority in accordance w ith their respective agree -
ments with the Office:
(i) A copy of the application-as-filed; 
and 
IP/N/1/USA/D/2 
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Page 27§ 1.15 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-26(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 applica -
tion if necessary to carry out an Act of Congress or if warranted by other sp ec
ial circumstances. Any peti -
tion by a member of the public seeking access to, or 
copies of, all or part of any pend in
g or abandoned 
application preserved in confidence pursuant to para -
graph (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 exis t 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, effec -
tive Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effec -
tive 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 2373 3, June 
23, 1988; 
para. (e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effec -
tive 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, 
199
6; 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, effectiv e Nov
. 7, 2000; paras. (a), (b), (c), 
(e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000, effec -
tive Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 18, 200 0; 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) cor -
rected, 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, De c. 22
, 2003, effective Jan. 21, 
2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effec -
tive 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)(v ii)
, (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 t he application is 
submitted in compliance with  the Of fic
e electronic fil-
ing 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 
Decemb er 8, 2004:
By a small entity (§ 1.27(a)). . . . $110.00By other than a small entity . . . . $220.00
IP/N/1/USA/D/2 
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Page 28PATENT RULES § 1.16
R-27 Rev. 8, July 2010(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  
applica -
tion:
By a small entity (§ 1.27(a))  . . . .$110.00
By other than a small entity . . . . $220.00
(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 ap plication filed before Dece
mber 
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 
fe
e, the search fee, the ex amination fee, 
or the oath or 
declaration on a date later than the filing date of the 
application, except pr ovisional 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 fil -
ing date of the prov isional application::
By a small entity (§ 1.27(a))  . . . . $25.00By other than a smal l entity
. . . . . $50.00
(h) In addition to the basic filing fee in an appli -
cation, other than a provisio nal applicati on, for filing 
or later presentation at any other time of eac h claim in 
independ ent fo rm in ex cess 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 appli -
cation, other than a provisio nal application, for filing 
or later presentation at any other time of each claim 
(whether dependent or inde pendent) 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 appli -
cation, other than a provisio nal application, that con -
tains, or is amended to co ntain, a multiple dependent 
claim, per application:
By a small entity (§ 1. 27(a))  . . . $195.00By other t h
an a small entity . . . . 
$390.00
(k) Search fee for each application filed under 
35 U.S.C. 1 1
1 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  pate
nt:
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 De cember 8, 2004, for an original plant pa te
nt:
By a small entity (§ 1.27(a))  . . . $165.00By 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 t
han a small entity . . . . $540.00
(o) Examination fee for e ach application filed 
under 35 U.S.C. 111 on or after December 8, 2 0
04, for 
an original patent, except de sign, 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 e ach appli cation 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 e ach appli cation 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 e ach appli cation 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 specificatio n and d
rawings of which exceed 
100 sheets of paper, for ea ch additional 50 sheets or 
fraction thereof:
By a small entity (§  1.27(a)) . . . $135.00
By other than a small entity . . . . $270.00
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 29§ 1.17 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-28[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) and (k) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 200 1; 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]
§  1.17 Patent applic ation 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) [Reserved]
(d) [Reserved]
(e) To request continued examination pursuan t 
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 unde r one of the following 
sections which refers to this paragraph: .
 . . . . .$400.00.
§ 1.36(a)—for revocation of a power of attor -
ney 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 qu
estion not specifi -
cally provided for. 
§ 1.183—to suspend the rules. 
§ 1.378(e)—for reconsideration of decision on 
petiti on refusing to accept delayed payment of main -
tenance fee in an expired patent. 
§ 1.741(b)—to accord a filing date to an appli -
cation under § 1.740 for extension of a patent
 term. 
(g) For filing a petition under one of the follow-
ing sections which refers to this paragraph: . . . $200.00
§ 1.12—for access to an assignment record. 
§ 1.14—for access to an ap plication. 
§ 
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 exten -
sion for extension of time when the provisions of §
1.136 (a) are not available. 
§ 1.295—for review of refusal to publish a stat -
utory inven tion
 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 refu si
ng 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 i
n ex parte reexamination proceed -
ings. 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 30PATENT RULES § 1.17
R-29 Rev. 8, July 2010§ 1.956—for patent owner requests for exten -
sion of time in inter partes  reexamination proceed-
ings. 
§ 5.12—for expedited handling of a  
foreign fil -
ing license. 
§ 5.15—for changing the scope of a license. 
§ 5.25—for retroactive license.
(h) For filing a petition under one of the follow -
ing sections which refers to this p aragraph . . $130.00
§ 1.19(g)—to  
request documents in a form 
other than provided in this part.
§ 1.84— f
or accepting color drawings or photo -
graphs.
§ 1.91—for entry of a model or exhibit.
§ 1.102(d)—to make an  application special.
§ 1.138(c)—to expressly abandon an applica -
tion to avoid publication.  
§ 1.313—to withdraw an application from 
issue.  
§ 1.314—to defer issuance of a patent.  
(i) Processing fee fo r taki
ng action under one 
of the following sections which refers to this para -
graph: . . . . . . . . . . . . . . . . . . . . . . . . . . $130.00
§ 1.28(c)(3)— for pr
ocessing a non-itemized fee 
deficiency based on an error in small entity status.  
§ 1.41—for sup p
lying 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 in
ventorship, except in 
provisi onal applications.  
§ 1.52(d)—for processing a nonprovisional 
applicati on filed with 
a specification in a language 
other than English.  
§ 1.53(b)(3)—to convert a provisional applica -
tion filed under § 1.53(c) into a no np
rovisional appli -
cation under § 1.53(b).  
§ 1.55—for entry of late priority papers.  
§1.71(g)(2)—for processing a belated amend -
ment under § 1.71(g).  
§ 1.99(e)—for processing a belated submission 
under § 1.99.  
§ 1.103(b)—for requesting limited suspension 
of
 action, continued pros ecution application for a 
design patent (§   1.53(d)).  
§ 1.
103(c)—for requesting limited suspension 
of action, request for continued examination (§  
1.1
14).   § 1.103(d)—for requesting deferred examina -
tion 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 submitte d for the patent applica -
tion publication.  
§ 1.221—for requesting vol unt
ary publication 
or republication of an application.  
§ 1.291(c)(5)—fo r p
rocessing a second or sub-
sequent 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 inven tive 
entity dif
ferent from the inve ntive entity set forth in 
the international stage.  
§ 3.81—for a patent to issue to assignee, assign-
ment 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) F or filing a request for expedited examina -
tion 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, 13 3, 36
4, 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 reexamina -
tion 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 fo r the revival of an 
unintentionally abandoned application, for the unin -
tentionally del
ayed payment of the fee for issuing a 
patent, or for the revival of  an unintentionally termi -
nated reexamination pr oceed
ing 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 amou nt of the application basic filing 
fee paid.      
(o) For requesting publication of a statutory 
invention registration afte r the mailing of the first 
examiner’s action pursuant to § 1.1 0
4 . . . . . $1,840.00 
reduced by the amou nt of the application basic filing 
fee paid.      
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 31§ 1.17 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-30(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 para -
graph  . . . . . . . . . . . . . . . . . . . . . . . . . . . $50.00
§ 1.41—to supply the name or n
ames of the 
inventor or inventors after the filing date without a 
cover sheet as prescribed by § 1.51(c)(1) in a provi -
sional application
§ 1.48—for correction of in vento
rship in a pro-
visional 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 rejec -
tio
n 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 smal l entity
. . . . $810.00
(t) For the acceptance of an unintentionally 
delayed claim fo
r 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 priori
ty 
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, effec -
tive Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, Dec. 12, 19 84, effective Feb. 11, 1985; paras. (h), (n) and 
(c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1 985; 
 50 
FR 31824, Aug. 6, 1985, effectiv e 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, effec -
tive 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, 19 95, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective 
Oct. 1, 1995; par a
s. (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) rev ised, paras. (e)
-(g) reserved, 62  FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) cor -
rected, 62 FR 61235, Nov.  17, 19
97, effective Dec. 1, 1997; 
paras. (a)-(d), (l) and (m) re vised, 63 FR 67578, Dec. 8, 
1998, effective Nov. 10, 1998; paras. (r) and (s) revised, 63 
FR 6
7578, 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, 200 0); paras. (a)-(e), (m), (r) 
and (s) revi
sed, 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) 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 eff ective); 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, effec -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 32PATENT RULES § 1.19
R-31 Rev. 8, July 2010tive Oct. 14, 2009 (to remove changes made by the final 
rules in 72 FR 46716 from the CFR)]
§  1.18 Patent post allo wance (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 de sign 
pa
tent:
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, effec -
tive Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, 
effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11 , 
199
5, 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; head -
ing 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, ef fecti
ve 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, effective Jan. 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 fo llowing patent-related doc-
uments upon payment of the fees indicated. Paper 
copies will be in black an d white unless the original 
docume nt is
 in color, a c
olor 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 p
ortion of a 
patent application publica tion or patent, including a 
design patent, statutory invention registratio n, or 
defensiv
e 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) C
olor 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 pa per 
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 o
r portion thereof of file wrap per and
 con-
tents  . . . . . . . . . . . . . . . . . . . . . $40.00.
(D) Individual application documents, 
other than application as filed, per document . $25.00.
(ii) If p r
ovided 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.
IP/N/1/USA/D/2 
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Page 33§ 1.20 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-32(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 elec-
tronic medium as specified in paragraph (b)(1)(ii) of 
this section:
(A) Application as filed: . . . . . . . $20.00.
(B) Fil
e 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 con -
tents 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 avai la
ble 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 
phys ical elec
tronic medium in the single order of 
paragraph (b)(2)(i) of this sec tion:. . . .
 . . . . . . $15.00.
(ii) If provided electronically other than on 
a physical electronic medium  per order: . . . . . $ 55.00.
(3)
Copy of Office records, except cop-
ies available under paragrap h (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 provid -
ing to
 libraries copies of all patents issued annually, 
per annum  . . . . . . . . . . . .
 . . . . . . . . . . . . . . . $50.00
(d) For list of all U n
ited States patents and stat -
utory invention registrations in a subclass. . . . . $3.00
(e) Uncertified statement as to status of the pay-
ment of maintenance fees due on a patent or
 expira-
tion 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 Di rector, will be decided in 
accordance with the merits of ea ch situation. Any 
pe
tition seeking a decision under this se ction
 must be 
accompanied by the petition fee set forth in § 1.17 (h) and, if the petition is gran ted, 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, 199 1; 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, 199 7; paras. (a)(1)(i) through 
(a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective Dec. 2, 1999; introductory te xt 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
(1) F
or filing a request for ex  parte reexami -
nation (§ 1.510(a)) . . . . . . . . . . . . . . . . . . . .$2,520.00
(2) For filing a request for inter par tes reex -
amination (§ 1.915(a)) . . . . . . . . . . .
 . . . . . .$8,800.00
(3) For filing with a request for reexamina -
tion 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 un de
r 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 reexamina -
tion or later presentation at any other time of each 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 34PATENT RULES § 1.20
R-33 Rev. 8, July 2010claim (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) indi -
cates 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 exc ess
 claims fees required by para-
graphs (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 p a
ragraphs  (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 o r 
 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 o r
 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 o r
 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 p ayin
g a maintenance fee dur -
ing the six-month grace period following the expira -
tion 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 o n
 or after December 12, 1980:
By a small entity (§ 1.27(a))  . . . . $65.00By 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) S
ubsequent application for interim exten -
sion 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 
65
142, 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, effec-tive Sept. 20, 1993; paras. (c), (e) -(g), (i)(1) and (j), 59 FR 
43736, Aug. 25, 199 4, ef
fective 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; pa ras. 
(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, 199 7; paras. (d)-(g) revised, 
63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. 
(e) revi sed, 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 
IP/N/1/USA/D/2 
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Page 35§ 1.21 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-34Sept. 30, 2007; paras. (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 attorn eys and agents:
(l) For admission to examination fo r regis -
tration to practice:
(i)
Application Fee (non-refund -
able)  .  . . 
. . . . . . . . . . . . . . . . . . . . $40.00
(ii) Registration examination fee
(A) For test administration by commer-
cial entity  . . . . . . . . . . . . . . . . . . . . .$200.00
(B) For test administration by the 
USPTO  . . . . . . . . . . . . . . . . . . . . .$450.00
(2) On registration to practice or gran t of lim -
ited recognition under § 1
1.9(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) Fo r
 review of decision:
(i)  By the Director of Enrollment and 
Disciplin e under § 11.2(c) . . . . . . . . . . . . . . . $130.00
(ii)  Of the Director of Enrollment and Dis -
cipline under § 1 1
.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 activ
e 
status from voluntary inactive status . . . . . . . . $93.00
(8) Annual practitioner maintenance fee for 
individual  granted limited re cognition  . . . . . $118.00
(9)(i)     Delinquency fee . . . . . . . .  . . 
. . $50.00
(ii) Administrative reinstatement 
fee  . . . . . . . . . .  . . 
. . . . . . . . . . $100.00
(10) On application by a person for recogni -
tion or regis t
ration after disbarment or suspension on 
ethical grounds, or resignation pending disciplinary 
proceedings in any other jurisd ict
ion; on application 
by a person for recognition or registration who is asserting rehabilitation fro m prior conduct that 
resulted in an adverse decisi on in the Office regarding 
the person’s moral character ; and on application by a 
person for recognition or registration after being con -
victed of a felony or crim e involving mo ral turpitude 
or breach of fiduciary duty ; on petition for reinstate -
ment by a person excluded or suspended on ethical 
grounds, or excluded on consent from practice before 
the Office  . . . . . . . .
 . . . . . . . . . . . . . . .$1,600.00
(b) D eposit accounts:
(1)
For establishing a deposit ac -
count  . . . . . . . . . . . . . . . . . . . . . . . . . $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 ea ch month whe
n 
the balance at the end of the month is below 
$300 for  restricted subscription deposit accounts 
used exclusively fo r su
bscription 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 pre -
paring an internat ional ty pe s
earch 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
(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 publica -
tion in the Official Gazette  of a notice of the avail a
bil-
ity of an application or a patent for licensing or sale:
Each application or patent  . . . . . . $25.00
(j)
Labor charges for services, per hour or frac -
tion thereof  . . . . . . . . . .
 . . . . . . . . . . . . . . . . . $40.00
(k) For items and services that the Director 
finds may be supplied, for which fees are not speci -
fied by statute or by this part, such charges as may be 
determined by the Director with respect to e
ach 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
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 36PATENT RULES § 1.23
R-35 Rev. 8, July 2010(n) For handling an ap plication 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; 5
4 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, effec -
tive 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 O c
t. 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, 19 97; 
 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, effec -
tive 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, effec-
tive 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 adva nce; that is, at the time of 
requestin
g any action by the Office for which a fee or 
charge is payable with the exception that under § 1.53applications for patent may be assigned a filing date 
without payment of the basic filing fee.
(b) All fees paid to the United S tates Patent and 
Trademark Office must be itemized in e ach individual 
app
lication, 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, effec -
tive 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. doll
ars and in the 
form of a c ashier’s or certified check, Treasury note, 
national bank notes, or United S t
ates 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 Trade-
mark Office. (Checks made payable to the Commis -
sioner of Patents and Tradem arks will continue to be 
accepted.) Payments from fo reign countries must be 
payable and immediately negotiable in the United 
States for the full amount of the fee required. Money sent to the Of
fice by mail will be at the risk of the 
sender, and letters containing money should be regis -
tered with the United States Postal Service.
(b) Payments of money required for United 
States Patent and Trademark Office fees ma y a
lso 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.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 37§ 1.24 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-36[43 FR 20462, May 11, 1978; revised, 64 FR 48900, 
Sept. 8, 1999, effective Oct. 30, 1999; revised, 65 FR 
33452, May 24, 2000, ef fecti
ve June 5, 2000; para. (b) 
revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 2004]
§  1.24 [Reserved]
[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, effec -
tive 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, effecti ve Nov
. 29, 2000]
§  1.25 Deposit accounts.
(a) For the convenience of attorneys, and the 
general public in paying any fees due, in ordering ser -
vic
es 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 estab -
lishing
 a deposit account § 1.21(b)(1)). A minimum 
deposit of $1,000 is required for paying any fee due or in ordering any servic es o
ffered by the Office. How -
ever, a minimum deposit of $300 may be paid to 
establish a restricted subscription deposit account 
used exclusively for subscription order of patent cop -
ies as issued. At the end of each month, a de
posit 
account statement will be rendered. A remittance must be made promptly upon  receipt of the stat ement 
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 accept ed. 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. Fo r 
restricte
d 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, internationa l application processing, 
petition, and post-issuance fees may be charged 
against these accounts if sufficient funds are on deposit to cover suc h
 fees. A general authorization to 
charge all fees, or only ce rtain 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 interna tional 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 pursu -
ant to § 1.510 or § 1.913 and any other fees required 
in a re examination proceeding  in a patent may also be 
filed with the request for reexamination. An authori-
zation to charge a fee to a deposit a ccount w
ill not be 
considered payment of the fe e on the date the authori -
zation to charge the fee is effective as to the particular 
fee to be charged unless sufficient funds are pre sent in 
the account to cover 
the fee.
(c) A deposit account holder may replenish the 
deposit account by subm itting a payment to the 
United S
tates Patent and Trademark Office. A pay -
ment to replenish a deposit account m
ust 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 Reserv e Fedwire System, which requires 
that the following informa tion be provided to the 
deposit account holder
’s bank or financial institution:
(i)  Name of the Bank, which is Treas 
NYC (T reasury New York City);
(ii) Bank Routing Code, which is 
02
1030004;
(iii) United States Patent and Trademark 
Office account number with  the Department of the 
Treasury
, which is 13100001; an
d
(iv) The deposit account h o
lder’s com-
pany name and deposit account number.
(2) A payment to replenish a deposit account 
may be submitted by electronic funds t ransfer 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 A v
enue, Suite  300, Alexandria, Vir -
ginia 22314.
[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 
41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 38PATENT RULES § 1.27
R-37 Rev. 8, July 2010Aug. 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, effec -
tive May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 22, 200 4, effective Aug. 23, 2004; para. (c)(4) revi sed, 
70 
FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4) re moved, 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 ex ce
ss of that required. A change of pur -
pose 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 Of
fice 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 Direct or may require such infor -
mation, or use the bankin g information on the pay -
ment 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 wa s
 paid, except as 
otherwise provided in this pa ragraph or in § 1.28(a). If 
the Office charges a deposit account by an amount other than an amount spec ifically indicated in an 
authorization (§ 1.25(b)), an y request for refund based 
upon such charge must be filed within two years from the date of the deposit ac count 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  reexamina -
tions filed under § 1.510, a refund of $1,690 will be 
made to the reexamination requester. For inter partes
reexaminations filed un de
r § 1.913 ,
 a refund of 
$7,970 will be made to th e 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, reexamina tion refunds will be issued 
in the form that the orig inal 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 (implementa -
tion enjoined and never became effective); paras. (a) and 
(b) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 
2009 (to remo
ve changes made by the final rules in 72 FR 
46716 from the CFR)]
§  1.27 Definition of small entities and establish -
ing status as a small entity to permit pay -
ment 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 cha p
ter means any party (person, small 
business co
ncern, 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 in ven
tor or other indi-
vidual ( e.g., an individual to whom an inventor has 
transferred so me 
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 righ ts in the invention. An 
inventor or other individual who has transferred some rights 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 transf erred to them also qualify 
for small entity status either as a person, small busi -
ness concern, or nonprofit organization under this sec -
tion.
IP/N/1/USA/D/2 
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Page 39§ 1.27 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-38(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, conv ey, or 
license, any rights 
in the invention to any person, concern, or organiza -
tion which would not qualify fo r small entity status as 
a person, small business concern, or nonprofit organi -
zation; and
(ii) Meets the size standards se t forth in 13 
CFR 12
1.801 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, conv ey, or 
license, any rights 
in the invention to any person, concern, or organiza -
tion which would not qualify as a person, small busi -
ness 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 In
ternal Revenue 
Code of 19 86 (26 U.S.C. 5 01(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 educa -
tional organization qualifie d under a nonprofit organi -
zation statute of a state of this country (35 U.S.C. 201
(i)); or
(D) Any nonprofit orga niza
tion located 
in a foreign country which would qualify as a non -
profit organization under paragraphs (a)(3)(ii)(B) of 
this section or (a)(3)(ii)(C) of  this section if it were 
located in this country.
(4)  License to a Fe de
ral agency . (i) For per -
sons under paragraph (a)(1) of th
is section, a license 
to the Government result
ing from a rights determina -
tion under Executive Order 10096 does not constitute 
a license so as to prohibit claiming small entity status.(ii) For small business concerns and non -
profit organizations un der paragraph
s (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) do es 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 ob ligation to transfer rights in the 
invention for the 
purposes of paragraphs (a)(1) 
through (a)(3) of this sectio n unless the security inter -
est 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 paragrap h (c) o
f this 
section will be accorded sm all entity status by the 
Office in the particular app lication or patent in which 
entitlement to small ent ity st
atus was asserted. Estab -
lishment of small entity stat us allows the payment of 
certain reduced patent fees pursuant to 35 U.S.C. 
41(h)(1).
(2) Submission of an 
original utility applica -
tion in compliance with the Office electronic filing 
system by an applicant who has properly asserted 
entitlement to small entity status pursuant to para -
graph (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  pa
rty 
(person, small business concern or  no
nprofit organi -
zation
) should make a determination, pursuant to 
paragraph (f) of this sectio n, 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 
entitl
ement to small entity st atus, 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 entitle -
ment to small entity status. A written assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this 
section); and
IP/N/1/USA/D/2 
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Page 40PATENT RULES § 1.27
R-39 Rev. 8, July 2010(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 f ile 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 identi-
fied as an invent or 
(even though a § 1.63 executed 
oath or declaration has not been submitted), notwith -
standing § 1.33(b)(4), who can also file the written assertion pursuant to the exce ption under § 1.33 (b
) of 
this part; or
(iii) An assignee of an undivided part inter -
est, no twithstand
ing §§ 1.33(b)(3) and 3.73(b) of 
this chapter, but the partial assignee cannot file 
the assertion without resort to  a party ide ntified under 
§ 1.33(b) of this part.
(3)  Assertion by payment of the small entity 
basic filing or basic national fee . The paymen
t, by 
any party, of the exac t 
amount of one of the small 
entity basic filing fees set fo rth 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 sm all entity basic filing or 
basic national fee under paragraph (c)(3) of this sec -
tion that is not applicable to  that applicat ion, any bal -
ance of the small 
entity fee th at is applicable to that 
application will be due along with the appropriate sur -
charge 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) will 
not be treated as a written assertion of entitlement to 
small entity status and will not be sufficient to estab -
lish small entity status in  an 
application or a patent.(4) Assertion required in related, continuing, 
and reissue application s
. Status as a small entity must 
be specifically established by an assertion in each 
related, continuing and re issue 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 app lications or patents. The 
refiling of an application under § 1.53 as a continua -
tion, divisional, or continuation-in-part application (including a continued pr osecution 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 co ntinuing or reissue appli -
cation.
(d) When small entity fees can be paid . Any fee, 
other than t
he small entity basic filing fees and the 
small entity national fees of paragraph (c)(3) of this section, can be paid in th e small entity amount only 
if it is submitted with , or subsequent t
o, the submis -
sion 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 ap plication 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 asse rtion of small entity sta -
tus, 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 enti -
tlement to pay small entity fees . Prior to submitting an 
assertion of entitlement to sm
all entity status in an 
application,  includ
ing a related, cont inui
ng, or reissue 
application, a determina tion of such entitlement 
should be made pursuant to the requirements of para -
graph (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 ques -
tion any assertion of small entity  status that is made in 
accordance with the
 requiremen ts of this section, but 
note paragraph (h) of this section.
IP/N/1/USA/D/2 
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Page 41§ 1.28 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-40(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 fe
e 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 iden -
tified 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 pr acticed on the Office .
(1) Any attempt to frau dulently establish sta -
tus 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 sma
ll entity, or pa
ying fees as 
a small entity, shall be consid ered as a fraud practiced 
or attempte d on the Of
fice.
[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, Ja n. 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 late r establishment of 
small entity status . A refund pursuant to § 1.26, based 
on establishment of small en tity status, of a portion of 
fees timely paid in full prio r 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 no
t 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 . 
(1) The three-month pe riod for requesting a 
refund, pursuant to paragraph (a) of this section, starts 
on the date that a full fee has been paid;
(2) T he
 date when a deficiency payment is 
paid in full det e
rmines the amount of deficiency that 
is due, pursuant to  para
graph (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 dis -
covered that such status as a small entity was estab -
lished in error,  or 
that thro ugh error the Of fice was not 
notified of a loss of ent itlement to small entit y status 
as required by § 1.27(g)(2),  the error will be excused 
upon: compliance with the separa te submis sion and 
itemi zation requirements of paragraphs (c)(1) and 
(c)(2) of this section, a nd th e deficien cy paymen t 
requirement o f p
aragraph (c)(2) of this section:
(1) Separate submission required for each 
application or patent . Any paper submitted under this 
paragraph must be limi t
ed to the deficiency payment 
(all fees paid in error), requ ired by paragraph (c)(2) of 
this section, for one application or one patent. Where more than one application or patent is involved, sepa -
rate submissions of deficiency payments ( e.g., 
checks) and itemizations are required for each appli -
cation or patent. See § 1.4(b).
(2) Payment of deficiency owed . The defi -
ciency owed, resulting from the previous erroneous 
payment of small entity fees, must be paid.
(i) Calculation of th e deficiency owed . 
The
 deficiency owed for each previous fee errone -
ously paid as a small entity is the difference between 
the current fee amount (for other than a small entity) 
on the date the defic i
ency  is paid in full and the 
amount of the previous e rroneous (small entity) fee 
payment. The total deficien cy payment owed is the 
sum of  th
e 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 
IP/N/1/USA/D/2 
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Page 42PATENT RULES § 1.32
R-41 Rev. 8, July 2010was paid in error and the time the deficiency is paid in 
full, the deficiency owed is equal to the amount (pre -
viously) 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 statu -
tory filing fee, two-month extension of time fee) along with the current fee amou nt 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-mon th ex
tension of 
time fees erroneously paid as  a small entity but on dif -
ferent 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 in
dividual deficiency 
owed amounts set forth in paragraph (c)(2)(ii)(C) of 
this section.
(3) Failure to comply  with r
equirements . If 
the requirements of paragr aphs (c)(1) and (c)(2) of 
this section are not compli ed with, such failure will 
either: be treated as an authorization for the Office to process the deficiency payment and charge the pro -
cessing fee set forth in § 1.17 (i), or 
result in a require -
ment for compliance w ithin a one-month non-
extendable time period 
und
er § 1.136(a) to avoid the 
return of the fee deficiency paper, at the option of the 
Office.
(d) Payment of deficiency operates as notifica -
tion of loss of status . Any deficiency payment (based 
on a previous erroneous paym ent 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 inven -
tors.
An applicant for patent may file and prosecute his 
or her own case, or he or she may give a p o
wer of 
attorney so as to be represented by one or more patent 
practitioners or joint inve ntors. The United States 
Patent and Trademark Office cannot aid in the selec-tion of a patent practitioner.
[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 docu -
ment by
 which a principal authorizes one or more 
patent practi tioners or joint inventors to act on his or 
her b
ehalf.
(3) Principal means either an applicant for 
patent (§ 1.41(b)) or an assi gnee of entire interes t
 of 
the applic ant
 for patent or in a reexamination proceed-
ing, 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 pate nt 
pr
actitioner 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 corre -
spondence address for the pate nt application, patent or 
other patent proceeding would be the address associ -
ated with the Cust
omer Number;
IP/N/1/USA/D/2 
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Page 43§ 1.33 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-42(ii) Designate the fee address (§ 1.363) of a 
patent such that the fee ad dress for the patent would 
be the address associated w ith 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 
compli ance with (c) of this section;
(3) Give the representative power to act on 
behalf of the principal; and
(4) Be signed by the ap plicant for patent (§ 
1.41(b)) or the
 assignee of th e entire interest of the 
applicant.
(c) A power of atto
rney may only name as rep -
resentative:
(1) One or more join
t 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 pra c-
titi
oner. Except as provided  in 
paragraph (c)(1) or 
(c)(2) of this section, the Office will not recognize more than ten patent practitio ners 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 at torney 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 appli -
cations, reexamination proceedings, and 
other proceedings.
(a) Corr espondence address and daytime tele -
phone numb er
. When filing an application, a corre -
spondence address must be set forth in either an 
application data sheet (§ 1.76 ), or else
where, in a 
clearly identifiable manner , in any paper submitted 
with an application fili ng. If 
no correspondence 
address is specified, the Office may treat the mailing 
address of th
e 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 com -
munications relating to the applicatio n to the person 
associated with the correspondence address. For cor-
respondence submitted via the Office’s electronic fil -
ing s
ystem, however, an electronic ac kn
owledgment 
receipt will be sent to the submitter. The Office will 
generally not engage in double correspondence with 
an applicant and a 
patent pr actitioner, or with more 
than one patent practitione r except as deemed neces -
sary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the speci fied 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 tele -
phone number should be supplied in a clearly identifi -
able manner and may be changed by any party who may change the correspo ndence address. The corre -
spondence address may be changed as follows:
(1) Prior to filing of § 1.63 oath or declara -
tio
n by any of the inventors. If a § 1.63 oath or decla -
ration 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 pape rs may also change the 
correspondence ad dress. 
Thus, the inventor(s), any 
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 fili ng of an appl
ication,  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 . Amend -
ments 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);
IP/N/1/USA/D/2 
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Page 44PATENT RULES § 1.36
R-43 Rev. 8, July 2010(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) A ll 
notices, official letters, and other com -
munications for the patent owner or owners in a reex -
amination proceeding will be directed to the 
correspondence address. Amendments and other 
papers filed in a reexamin ation proceeding on  behalf 
of th
e 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 repre sentative capacity under the 
provisions of  § 1.34. Double correspondence with the 
patent owner or owners and the patent owner’s attor -
ney or agent, or with more than one attorney or agent, 
will not be undertaken.
(d) A “correspondence address” or ch a
nge 
thereto may be filed with the Patent and Trademark 
Office during the enforceable life of the patent. The 
“correspondence address” will be used in an y corre -
sponde
nce relating to maintenance fees unless a sepa -
rate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee pur -
poses.
(e) A change of address filed in a patent appli -
cation or patent does not cha
nge 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, effec -
tive Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, 
effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53131, O c
t. 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, effec -
tive May 1, 2003; (a) introductory text, (b) introductory text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, 
May 26, 2004, effecti v 
e 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 practitione r acting in a representa -
tive capacity appears in person or signs a paper in 
practice
 before the United States Patent and Trade-
mark Offic e 
in a patent case, his or her personal 
appearance or signature sh all constitute a representa -
tion 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; with -
drawal of patent attorney or agent.
(a) A power of attorney, pursuant to § 1.32(b), 
may be revoked at any stag e in the proceedings of a 
case by an applican t for pa tent (§ 
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 pr actitioners 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 proceed ing, fewer than all the 
owners of the entire interest  of a patent) may revoke 
the power of attorney only upon a showing of suffi -
cient cause, and payment of the petition fee set forth 
in § 1.17(f). A patent prac titioner will be notified of 
the revocation of the power of attorney. Where power 
of attorney is given to the patent practitioners associ-
ated with a Customer Numb er (§ 1.32(c)(2)), the prac -
titioners so appointed will al
so be notified of the 
revocation of the power of attorney when the power 
of attorney to  all of the practi
tioners associated with 
IP/N/1/USA/D/2 
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Page 45§ 1.41 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-44the Customer Number is revoked. The notice of revo -
cation will be mailed to th e correspondence address 
for the application (§ 1.33) in effect before the revoca-
tion. An assignment will not of itself operate as a 
revocation of a power previously given , bu
t the 
assignee of the entire interest of the applicant may revoke previous po wers o
f 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 wit hdraw as atto
rney or agent of record 
upon application to and approval by the Director. The 
applicant or patent owner will be notified of the with -
drawal of the registered patent attorney or patent 
agent. Where powe r of a ttorne y is give n to the patent 
practitioners associated with  a Customer Number , a 
request to delete all of the patent practi tioners associ -
ated with the Customer Numbe r may not be  granted if 
an applicant has given powe r of attorne y to the patent 
practitioners associated with the Customer Number in 
an application 
that has an Office action to which a 
reply is due, but insuf f
icient 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, effec -
tive Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 26, 200 5, 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 nonp ro
visional 
application is that inventorsh ip set forth in the oath or 
declaration as prescribed by § 1.63, except as pro-
vided for in §§ 1.53(d)(4) a nd 1.63(d). If an oath or 
declaration as prescribed by §  
1.63 is not filed during 
the penden cy 
of a nonprovi sional application, the 
inventorship is that inventor ship set forth in the appli -
cation papers filed pursuant to § 1.53(b), unless appli-cant files a paper, including the processing fee set forth in § 1.17(i), supplying or changing the name or 
names of the inventor or inv
entors.
(2) The inventorship of a provisional applica -
tion is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as pre -
scribed by § 1.51(c)(1) is not filed during the pen-
dency o f
 a provisional applic ation, 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 n a
me or names 
of the inventor or inventors.
(3) In a nonprovisional application filed 
without an oath or declara tion as
 prescribed by § 1.63
or a provisional applica tion filed without a cover 
sheet as prescribed by § 1.51(c)(1), the name, resi -
dence, and citizenship o f
 each person believed to be 
an actual inventor should be provided when the appli -
cation  papers p
ursuant to § 1.53(b) or § 1.53(c) are 
filed.
(4) The inventorship of an international 
application entering th e 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 92b is. See § 1.497(d) and (f) 
for filing an oath or declar ation naming an inventive 
entity different from the inve ntive entity named in the 
international appl ication, or  
if a change to the inven -
tive entity has been ef fected under 
PCT Rule 92bis
subsequent to the executio n of any declaration filed 
under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply 
to an international applic ation 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 ap ply
ing 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 inven-
tors, but an oath or decl aration 
for the application 
(§  1.63) can only be made in accordance with § 1.64.
(d) A showing may be re
quired from the person 
filing the application that the filing was authorized 
where such authorizatio n comes into question.
IP/N/1/USA/D/2 
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Page 46PATENT RULES § 1.47
R-45 Rev. 8, July 2010[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 
1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effec -
tive Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7,  2000; para. (a)(4) revised, 
67 FR 5 20, Jan
. 4, 2002, effective Apr. 1, 2002]
§  1.42 When the inventor is dead.
In case of the death of the inventor, the legal repre -
sentative (executor, administrator, etc.) of the 
deceased inventor may make the necessary oath or 
declaration, and appl y fo
r and obtain the patent. 
Where the inventor dies du ring the time intervening 
between the filing of the ap plication 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.
In case an inventor is insane or otherwise legally 
incapacitated, the legal re presentative (guardian, con -
servator, etc.) of such inventor may make the neces -
sary oath or  decl
aration, 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 decla -
ration: neither of them alone, nor less than the entire number, can apply for a pa tent for an invention 
invented by them jointly
, except as provide d 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 ty pe 
o
r amount of contribution, or
(3) Each inventor did not
 make a contribu-
tion to the subject matter of every claim of the appli -
cation.(c) If multiple inventors are named in a nonpro -
visional 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 
applicatio
n 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 ma tter disclosed in the provi -
sional 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, effec -
tive Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 
27, 1983; 50 FR 9379, Mar. 7,  19
85, 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 applica-
tion must still be made or authorized to be made, and 
an oath or decla r
ation sign ed, by the inventor or one 
of the persons mentioned i n
 §§ 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 refu ses to join in an appli -
cation for patent or ca nn
ot be found or reached after 
diligent effort, the application may be made by the other inventor on b e
half 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 pertin ent facts, the fee set forth 
in § 1.17(g), and the last known address of the non-signing inventor. The nonsigning inventor may subse -
quently join in the applicat ion by filing an oath or 
declaration complying with § 1. 63.
(b
) Whenever all of the inventors refuse to exe -
cute 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 
IP/N/1/USA/D/2 
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Page 47§ 1.48 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-46the invention, or who otherwise shows sufficient pro-
prietary interest in the ma tter justifying such action, 
may make application for pa tent on behalf of and as 
agent for all the inventors. The oath or declaration in such an application must be accompanied by a peti -
tion 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 , th
e 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 filin g 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 peti -
tion under this section, and publish notice of the filing 
of the application in the Official Gazette. The Office 
may dispense with this no tice provision in a continua -
tion or divisional applicatio n, if notice regarding the 
fili
ng of the prior application was given to the non -
signing 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 applica -
tion, pursuant to 35 U.S.C. 116.
(a) Nonprovisional applic ation after oath/dec -
laration filed . If the inventive entity is set forth in 
error in an executed § 1.63 oath or declaration in a 
nonprovisiona l
 application,  and such error arose with -
out any deceptive intention on the part of the person 
named as an inventor in error or on the part of the per-
son
 who through error was not named as an inventor, 
the inventorship of the nonprovisional application may be amended to na me o
nly the actual inventor or 
inventors. 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 
adde d as
 an inventor and from each person being 
deleted as an inventor that the error in inventorship 
occurred without deceptive int
ention on his or her 
part;(3) An oath or declaration by the actual 
inventor or inventors as required by § 1.63 or as per -
mitted 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 con -
sent of the assignee (see § 3.73(b) of this chapter).
(b) Nonprovisional application—fewer inven -
tors due to amendment or can ce
llation of claims. If 
the correct inventors are named in a nonprovisional 
application, and the prosecu tio
n of the nonprovisional 
application results in the amendment or cancellation of claims so that fewer than  all of the currently named 
inventors  are the ac
tual in ventors of the invention 
being claimed in the nonprov isional 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 in ventorship that identifies 
the named inventor or inventors being deleted and 
acknowledges that the inventor’s invent ion 
is no 
longer being claimed in the nonprovisional applica -
tion; and
(2) The processing fee set forth in § 1.17(i).
(c) Nonprovisional app lication—inventors 
added for claims to previously unclaimed subject mat -
ter. If a nonprovisional application dis c
loses 
unclaimed subject matter by an inventor or inventors 
not named in the applicatio n, the application may be 
amended to a d
d claims to the subject matter and name 
the correct inventors for th e 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 occu rred with
out deceptive intention on his or 
her part;
(3) An oath or declarati on 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
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Page 48PATENT RULES § 1.51
R-47 Rev. 8, July 2010(5) If an assignment has been executed by 
any of the original named inventors, the written con -
sent of the assignee (see § 3.73(b) of this chapter).
(d) Provisional applicat ion—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 provi -
sional application may be am ended to add the name or 
names of the omitt
ed inventor or inventors. Amend -
ment of the inventorship requires:
(1) A request, signed by a party set forth in §  
1.33(b), to correct the inve ntorship that identifies the 
inventor or inventors being added and sta t
es that the 
inventorship error occurre d without deceptive inten -
tion on the part of the omitted inventor or inventors; 
and
(2) The processing fee set  forth in § 1.17(q).
(e) Provisional applicati on—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 per -
sons, an amendment may be filed in the provisional 
application deleting the name or names of the person or persons who were erroneou
sly named. Amendment 
of the inventorship requires:
(1) A request to correct the inventorship that 
sets fo rth the desired inventorship chan g
e;
(2) A statement by the person or persons 
whose name or names are being deleted that the inventorship error occurre d without deceptive inten -
tion 
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 con -
sent of the assignee (see § 3.73(b) of this chapter).
(f)(1)  Nonprovisional application—filing exe -
cuted oath/decl a
ration corrects inventorship . If the 
correct inventor or inventors are not named on filing a 
no
nprovisiona l
 application under § 1.53(b) without an 
executed oath or declaration under § 1.63 by any of 
the inventors, the first subm ission of an executed oath 
or declaration under § 1.63 by any of the inventors 
during the pendency of the application will act to cor -
rect the earlier identification of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declar ation to enter the national 
stage under 35 U.S.C. 371 nami ng an inventive entity 
di
fferent from the inventive entity set forth in the 
international stage.
(2) Provisional application filing cover sheet 
corrects inventorship.  If the correct inventor or inven -
tors are not named on filing a provisional application 
without a cover sheet under § 1.51(c)(1), the later sub -
mission of a cover sheet under § 1.51(c)(1) during the 
pendency of the applicatio n will act to correc t
 the ear-
lier identification of inventorship.
(g) Additional informatio n 
may be required . 
The Office may require such other information as may be deemed appropriate un der 
the particular circum -
stances surrounding the corr ection of inventorship.
(h) Reissue applications not covered . The pro -
visions of this section do no t apply to reissue applica -
tions. See §
§ 1.171 and 1.175 for correction of 
inventorship in a patent via a reissue applicati
on.
(i) Correction of inventorship in patent . See § 
1.324 for correction of inv e
ntorship in  a patent.
(j) Corr
ection of inventorship in a contested 
case before the Board of Patent Appeals and Interfer -
ences . In a  c
ontested case under part 41, subpart D, of 
this title, a request for corre ction of an application 
must be in the form of a motion under § 41.12 1
(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 2 019
5, 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 Trade-
mark Office.
(b) A
 complete application filed under 
§ 1.53(b) or § 1.53(d) comprises:
IP/N/1/USA/D/2 
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Page 49§ 1.52 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-48(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 applic ation 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 appli -
cation,
(ii) The n
ame or names of the invento r
 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 numb er of 
th
e attorney or agent (if applicable),
(vi) The docket number u s
ed 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 
inventi
on was made by an agency of the U.S. Govern -
ment or under a contract with an agency of the U.S. Govern me
nt);
(2) A specification as prescribed by the first 
paragraph of 35  U.S.C. 112, see § 1.71;
(3) Drawings, w
hen necessary, see §§  1.81 to 
1.85
; and
(4) The prescribed filing fee and application 
size fee, see § 1.16.
(d) Applicants are encourag ed to file an infor -
mation disclosure statemen
t in nonprovisional appli -
cations . Se
e § 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, 198 3, 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; revise d, 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, com -
pact disc specifications.
(a) Papers that are to become a part of the per -
manent United States Patent and Trademark Office 
records in the file of a patent application or a reexam -
ination 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 Of fice re
cords in the file of a 
patent application or reexamination proceeding, must 
be on sheets of paper that are the same size, not per-
manently bound together, and: 
(i) Flexible, strong, smooth, non-shiny, 
durable, and white;
( i i ) E i t h e r  2 1 . 0  c m  b y  2 9 .
7  c m  ( D I N  s i z e  
A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with 
each sheet including a  top ma r
gin 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 ori -
entation;
(iv) Plainly and legibly written either by a 
typewriter or machine printe r 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 b
y use of photographic, 
electrostatic, photo-offset, and microfilming pro -
cesses a
nd electronic capture by use of digital imag -
ing 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 Unit ed
 States Patent and 
Trademark Office should have  no holes in the sheets 
as submitted. 
(3) The provisions of this paragraph and 
paragrap h (b) of this section do not apply to the pre-
printed information on paper forms provided by the 
Of
fice, or to the copy of the patent submitted on paper 
in double column format as  the specification in a reis -
sue application or request for reexamination.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 50PATENT RULES § 1.52
R-49 Rev. 8, July 2010(4) See § 1.58 for chemical and mathematical 
formulae and tables, and § 1.84 for drawings. 
(5) Papers that are s ubmitted el ectronically 
to the Office must be formatted and transmitted in 
compliance with the Office’s electronic filing system 
requirements. 
(b) The application (specifi cation, including the 
claims, drawings, and  
oath o
r declaration) or r e
ex-
amination proceeding and any amendments or correc -
tions to the application or reexamination proceeding .
(1) The application or proceeding and an
y 
amendments or corrections to the applic ation (includ -
ing any translation submitted pursuant to pa ragrap
h 
(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 para -
graph (a) of this section; and
(ii) Be in the English language or be 
accompanied by a translation of the application and a 
translation of any corrections  or amendments into the 
English language to
gether with a statement that the 
translation is accurate.
(2) The specification (including the abstract 
and cla ims) for other than reissue applications and 
reexamination proceedings, and any amendments for 
applications (inclu din
g reissue applications) and reex -
amination proceedings to th e 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, T imes Roman, or Courie r, preferably a 
font size of 12) lettering style having capital lett ers 
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  abstrac
t must  commence on a sepa-
rate physical sheet or elec tronic page or be submitted 
as the first page of the patent in a reissue application 
or reexamination pro ceeding (§ 1.72(b)). 
(5)
Other than in a reissue application or 
reexamination proceeding, th e pages of the specifica -
tion including claims and abstract must be numbered 
conse c
utively, starting with  1, the numbers being cen -
trally located above or pr eferably below, the text. (6) Other than in a reissue application or 
reex
amination proceeding, the paragraphs of the spec-
ification, other than in the c
laims or abstract, may be 
numbered at the time the application is fil e
d, and 
should be individually and consecutively numbered 
using Arabic numerals, so as to unambiguou sly id
en-
tify each paragraph. The numb er should consist of at 
least four numerals enclosed in square brackets, 
including leading zeros ( e.g., [0001]). The numbers 
and e
nclosing 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 approxi -
mately four spaces, shou ld follow the number . Non -
text elements ( e.g., tables, mathematical or chemical 
formulae, chemical structures
, and se
quence data) are 
considered part of the numb ered paragraph around or 
above the elements, and sh ould 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 abov e the list, and should not 
be independently 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 sig n 
ing of any accompanying oath or 
declaration pursuant to § 1.63 referring to those appli -
cation papers and should be dated and initialed or 
signed by the applicant on the same sheet of paper. 
Application papers containi ng alte rations made after 
th
e signing of an oath or declaration referring to those 
application papers must be supported by a supplemen -
tal oath or declaration under § 1.67. In either situation, a substitute specification (§ 1.125) is required if the 
application papers do not co mply with paragraphs (a) 
and (b) of this section.
(2)
After the signing of the oath or declara -
tion referring to the applic ation papers, amendments 
may only be made in the manner provided by §  
1.121.
(3) N
otwithstanding the provisions of this 
paragraph, if an oath or de claration is a copy of the 
oath or declaration from a prior application, the appli -
cation for which such copy  is submitted may contain 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 51§ 1.52 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-50alterations 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 nonpro -
visional appli c
ation is filed in a language other than 
English, an English langua ge translation of the non-
English language applicatio n, a statement that the 
translation is acc
urate, and the processing fee set forth 
in § 1.17(i) are required. If these items are not filed 
with the application, app licant will be notified and 
given a perio d
 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 p r
ovisional appli cation will not be required 
in the provisional application. See § 1.78(a) for the 
requirements for claiming the benefit of such provi-sional application in a n onprovisional application.
(e) Electronic documents that are to become 
part of the permanent Unit ed States Pate n
t and Trade -
mark Office records in the file of a patent application 
or
 reexamination proceeding.
(1) The following documents may be su bmit
-
ted 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, whe r
e a table page is a 
page prin
ted on paper in conformance with paragraph 
(b) of this section and § 1.58(c).
(2) A compact disc as u sed 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 stan -dard, and the contents of each  compact disc must be in 
compliance with the American Standard Code for Information Interchange (A SCII). CD-R discs must 
be finalized so that they are closed to further writing 
to the CD-R.
(ii) Each compact disc must be e nclosed in 
a hard compact disc c
ase within an unsealed padded 
and protective mailing envel ope and accompanied by 
a transmittal letter on paper in accordance with para -
graph (a) of this section.  The transmittal letter must 
list for 
each compact disc the machine format ( e.g., 
IBM-PC, Macintosh), the operating system compati -
bility ( e.g., MS-D OS, MS-W
indows, Macintosh, 
Unix), a list of files contained on th
e compact disc 
including their names, sizes in bytes, a n
d dates of cre -
ation, plus any other specia l information that is neces -
sary to identify, maintain, and interpret ( e.g., tables in 
landscape orientation should be identified as land -
scape orient atio
n or be id entified when inquired 
about) the information on the compact disc. Compact 
discs submitted to the Office will not be returned to 
the applicant.
(4) A
ny compact disc must be submitted 
in duplicate unless it contains only the “Sequence 
Listing” in computer re adable
 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 
must include a sta
tement that the two co mpac
t 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 amend -
ment to the information on a compact disc must be by 
way of a replacement compact disc in compliance with this paragraph contai ning the substitute informa -
tion, and must be accompanie d by a statement that the 
replacement compact disc contains no new matter. The co
mpact disc and co
py 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 incor -
poration-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 c
reation 
and their sizes in bytes. The Office may require appli -
cant to amend the specification to include in the paper 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 52PATENT RULES § 1.53
R-51 Rev. 8, July 2010portion any part of the specification previously sub -
mitted on compact disc.
(6) A compact disc must also be labeled with 
the following information:
(i) The name of each inventor (if k
nown);
(ii) Title of the invention;
(iii) The docket numb er, or application 
number if known, used by the person filin g th
e appli-
cation to identify the application; and
(iv) A creation date of the compact disc.(v) If multiple compac t discs ar e submit -
ted, the label shall indicate their order ( e.g. “1 of X”).
(vi) An indication that the disk is “Copy 1” 
or “Copy 2” of th e su
bmission. See paragraph (b)(4) 
of thi s
 section.
(7) If a file is unreadable  on 
both copies of 
the disc, the unreadable file  will be treated as not hav -
ing been submitted. A file is unreadable if, for exam -
ple, it is of a format tha t does not comply with the 
requ
irements of paragraph (e )(3) of this section, it is 
corrupted by a computer viru s, or it is written onto a 
defective compact disc.
(f)(1) Any sequence listi ng in an electronic 
med
ium in compliance with §§ 1.52(e) and 1.82 1(c) 
or (e), an
d any computer program listing filed in an 
electronic medium in complia nce with §§  1.52(e) and 
1.96, will be excluded when  determining the applica -
tion size fee required by § 1.16(s) or § 1.492(j). For 
purposes of determining the application size fee 
required by § 1.16(s) or § 1.492(j), for an application 
the 
specification and drawin gs of which, excluding 
any sequence listing in compliance with § 1.821(c) or (e), and any computer prog ram listing filed in an elec -
tronic medium in complia nce with §§ 1.52(e) and 
1.96, are submitted in whole o r 
 in part on an elec -
tronic medium other than the Office electronic filing 
system, each three kilobyte s of content submitted on 
an electronic medium shall be counted as a sheet of 
paper.
(2) Except as otherwise provided in this para-
gr
aph, 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 
pa
per present in the specification and drawings of the 
application when entered into the Office file wrapper after being rendered by th e 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, 19 92, ef
fective 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) revise d, 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 applica -
tion number for identification purposes.
(b) Applicati on filing 
requirements - Nonprovi-
sional application . The filing date of an application 
for 
patent filed under this section, ex ce
pt for a provi-
sional application under paragraph (c) of this section 
or a continued prosecution application under para -
graph (d) of this section, is the date on w
hich a speci -
fication as prescribed by 35  U.S.C. 112 containing a 
description pursuant to § 1. 71 and at lea s
t one claim 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 53§ 1.53 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-52pursuant 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 con tinuing application, which 
may be a continuation, divisional, or co ntin
uation-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 subjec t matter not disclosed in 
the prior application) or a continuation or divi s
ional 
application
 naming an inventor not named in the prior 
application must be filed under this paragraph.
(c) Application filing r equirements - Provi -
sional application . The filing date of a provisional 
application is the date on which a specification as pre -
scribed by the  firs
t paragraph of 35  U.S.C. 11 2,
 and 
any drawing required by §  1.81(a) are filed in the 
Patent and Trademark Office. No amendment, other 
than to make the provisiona l application comply with 
the pa
tent statute and all applicable regulations, may 
be made to the provisional application aft
er the filing 
date of the provis ional application.
(1) A provisional application must also 
include the cover sheet required by § 1.51(c)(1), 
which may be an ap
plication data sheet (§ 1.76), or a 
cover letter identifying the application as a provi-sional application. Otherwis e, the applic ation will be 
treated as an application filed under paragraph (b) of 
this section.
(2) An application for patent filed under 
pa
ragraph (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 conver -
sion will not entitle applican t to a refund of the fees 
that were properly paid in the application filed under 
paragraph (b) of this 
section. Such a request for con -
version 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 appli -
cation filed u nd
er parag r
aph (b) of this section;
(iii) Expiration of twelve months after the 
filing date of the applicatio n 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 und
er paragraph (b) of this sectio n.
(3)
A provisional app lication 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 c o
nversion of a pro -
visional application to a nonprovisional a pplication 
will not result in either the refund of any fee properly 
paid in the provisional appl ication or the application 
of any such fee to the filing fee, or any other fee, for 
the nonprovisional  
application. Conversion of a provi-
sional application to a nonprovisional application 
under this paragraph will result in the term of any patent to issue from the ap plication being measured 
from at least the filing date of the provisional applica -
tion for which conv ersi
on is requested. Thus, appli -
cants should consider avoi ding this adverse patent 
term impact by filing a no nprovisional application 
claiming the benefit of the provisional application 
under 35 U.S.C. 119(e) (rather than converting the 
provisional application into a nonprovi si
onal applica -
tion pursuant to this paragr aph). A request to convert 
a provisional application to  a nonprovisional applica -
tion must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one 
claim as pre
scribed 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 pre scribed by the se
cond para -
graph of 35 U.S.C.112. T
he nonprovisional applica -
tion resulting from conversi on of a provisional 
application must also incl ude the filing fee, search 
fee, and examination fee for a nonprovisional applica -
tion, an oath or declara tion 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 nonpro -
visional application or 
the oath or declaration was not 
present on the filing date accorded the resulting non -
provisional application ( i.e., the filing date of the orig -
inal provisional application). A request to convert a 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 54PATENT RULES § 1.53
R-53 Rev. 8, July 2010provisional application to a nonprovisional applica -
tion must also be filed prior to the earliest of:
(i) Abandonment of the provisional appli -
cation filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the 
filing date of the provisional application filed under 
paragrap h
 (c) of this section.
(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. 12
0, 121 or 365(c) or §  1.78 of any 
other application. No claim f o
r 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 requ est 
under §  1.293 for a statutory invention 
registration may be filed in a provisional application. 
The requirements of §§  1.821 through 1.825 regard -
ing application disc losures containing 
nucleotide and/
or amino acid sequences are not mandatory for provi-
sional applications.
(d) Application filing r e
quirements - Continued 
prosecution (nonprovisional) ap plicati
on.
(1) A continuation or divisional application 
(but not a continuation-in-part) of a prior nonprovi -
sional application may be filed as a continued prose -
cution applicat
ion under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisi onal 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 pr ior application;
(B) Abandonment of the prior applica -
tion; or
(C) Termination of procee dings on the 
prior application.
(2)
The filing date of a continued prosecution 
application is the date on which a request on a sepa -
rate paper for an applicatio n under this paragr aph
 is 
filed. An application filed under this paragraph:
(i) Must identify the prior application;(ii) Discloses  and c
laims only subject mat -
ter disclosed in th e prior application;
(iii) Names as inventor s the same inventors 
named in the prior applicatio n on the date the applica -tion under this paragraph was fil e
d, except as pro-
vided 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 applic ation, including the specifi -
cation, drawings and oath or declaration from the 
prior application, to cons titute t
he new application, 
and will be assigned the application number of the 
prior application for identification purposes; and
(v) Is a reques t to expressly a
bandon the 
prior application as of the f iling date of the request for 
an application under this paragraph.
(3) The filing fee, search fee, and examina -
tion fee for a continued pr osecution 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 fe e 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, provid ed that the request for an 
application under this para graph when filed is accom -
panied by a statement requesting deletion of the name or names of the person or persons who 
 are not inven-
tors of the invention bein g claimed in the new appli -
cation. No person may b
e named as an inventor in an 
application filed under th is paragraph who was not 
named as  an in
ventor in th e 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 matte r that would have been 
new matter in the prior ap plication. Any new specifi -
cation filed with the request for an application under this paragraph will not be co nsidered part of the origi-
nal application papers, but will be treated as a substi -
tute specification in  accordance  
with §  1.125.
(6) The filing of a co ntinued prosecution 
application under this para graph will be construed to 
include a waiver of confid entiality by th e applicant 
un
der 35 U.S.C. 122 to the extent that any member of  
the publi
c, who is entitled under the provisions of 
§ 1.14 to access to, copies of, or information concern -
ing either the prior appli cation or any continuing  
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graph, 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 a pplication under this 
paragraph is the specific refe rence require
d by 
35 U.S.C. 120 to every applic ation assigned the appli -
cation number identified in  such request. No amend -
ment in  an
 application under this paragraph may
 
delete this specific refere nce to any prior application.
(8)
In addition to identifying the application 
number of the prior applica tion, applicant should fur -
nish in the request for an application under this para -
graph the following information relating to the prior 
application to the best of his or her ability:
(i) T itle of 
invention;
(ii) Name of applicant(s); and
(iii) Corr espondence address.
(9)
See § 1.103(b) for r
equesting a limited 
suspe nsion of action 
in an application filed under this 
paragraph.
(e) Failure to meet filing date requirements .
(1) If an application deposited under para -
graph (b), (c), or (d) of this section does not meet the 
requirements of such paragraph to 
be entitled to a fil -
ing date, applicant will be so notified, if a correspon -
dence 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  do
es no t meet the requirements of 
that paragraph because the application in which the 
request was filed is not a desi gn application, and if the 
application in which the request was filed was itself 
filed on or after June 8, 1995, the request for an appli -
cation under paragraph (d) of this section will be treated as a reque st for continued examination under § 
1.114.
(2) Any request for review of a notification 
pursuant to paragraph (e)(1) of this section, or a noti -
fication that the original ap plication papers lack a por -
tio
n of the specification or drawing(s), must be b y
 
way of a petition pursuant to  this paragraph accompa -
nied by the fee set forth in § 1.17(f). In the absence of 
a timely (§ 1.181(f)) petition pursuant to this para -
graph, 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 fil -
ing 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 w ithin the given time period 
or otherwise t imely 
(§ 1.181(f)) take action pursuant 
to this paragraph, proceedin gs in the application will 
be considered termina t
ed. Where procee
dings in an 
application are terminated pu rsuant to this paragraph, 
the application may be di sposed of, and any 
filing 
fees, less the handling fee set forth in §  1.21(n), will 
be refunded.
(f) Completion of applica tion subsequent to fil -
ing—Nonprovisional (including continued prosecu -
tion or reissue) application .
(1) If an application which has been a ccorde
d 
a filing date pursuant to pa ragraph (b) or (d) of this 
section does not include the basic filing fee, the search fee, or the  examina tion fee, or if an applicati
on which 
has been accorded a filing date pursuant to paragraph 
(b) of this section does not include an oath or declara -
tion 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 with in which to pay the basic 
filing fee, search fee, and exam ination fee, file an oath 
or declaration i n
 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 pa ragraph (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 §§ 1.6
3, 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 with in which to pay the basic 
filing fee, search fee, and exam ination 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 multip le 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 amendmen t 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 
IP/N/1/USA/D/2 
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R-55 Rev. 8, July 2010on later presentation of th e amendment necessitating a 
fee or additional fee under § 1.16(s), the fee required 
by § 1.16(s) must be paid pr ior to the expiration of the 
time period set for reply by the Office in any notice of 
fee deficiency in orde r to avoid abandonment.
(4) This paragraph applies to continuation or 
divisional applications under paragraphs (b ) o
r (d) of 
this section and to conti nuation-in-part applications 
under paragraph (b) of this section. See § 1.63(d) con -
cerning the submission of a copy of the oath or decla -
ration from the prior applica tion for a continuation or 
divisional application under paragraph (b) of
 this sec -
tion.
(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 fil-
ing—Pr ovisional
 application .
(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 corresponde nc
e 
address (§ 1.33(a)), applicant will be notified and 
given a period of time within which to pay the basic filing fee, file a cove r s
heet (§ 1.51(c)(1)), and pay the 
surcharge required by § 1.16(g) to avoid abandon -
ment.
(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 provid
ed a corre -
spondence address  (§ 1.33(a
)), applicant has two 
months from the fi
ling date of the application 
within  which to pay the basic filing fee, file a cover 
sheet (§  1.51(c)(1)), and pay the surcharge requ ired 
b
y § 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 orde r 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 - Non-
provisional (including co ntinued prosecution) appli -cation . An application for a patent filed under 
paragraphs (b) or (d) of th is section will not be placed 
on the files for examination until all its required parts, 
complying with 
the rule s relating thereto, are 
received, except that certain minor informalities may 
be waived s
ubject to subsequent correction whenever 
required.
(i) Subsequent treatment of application - Provi -
sional application . A provisional application for a 
patent filed under paragrap h (c) of this section will 
not be placed on the file s for examination and will 
become abandoned no later than twelve months after 
its filing date pursuant to 35  U.S.C. 1
11(b)(1).
(j) Filing date of i
nternational application . The 
filing date of an internatio nal application designating 
the United States of America is treated as the filing date in the United St ates of America 
under PCT Arti -
cle 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, effec -
tive Feb. 4, 1998 (adopted as final, 63 FR 36184, Jul. 2, 1998); paras. (c)(3), (c)(4) a nd (d) revised, 65 FR 14865, 
Mar. 20, 2000, ef fect
ive 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, effec -
tive 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, 20
03; 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)]
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Rev. 8, July 2010 R-56§  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; other -
wise, 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 com -
p
letion of an application.
(b) Applicant wil l 
be informed of the applica -
tion number and filing date by  a filing receipt, unless 
the application is an appli cation 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, effec -
tive 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 speci -
fied in 35 U.S.C. 119(a) through (d) and (f), 172, and 
365(a
) and (b).
(1)(i)  In an original application fi led under 
35 U.S.C. 111(a), the claim for priority must be pre -
sented during the penden cy 
of the application, and 
within the later of four months from the actual filing 
date of the application or sixteen months from the fil -
ing date of the prior fore ign application. This time 
period is not ex tend
able. 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 o
f the 
application for which priority  is claimed, by 
specify -
ing the application number , country (or intellectual 
property authority), day, mont h, and year of its filing. 
The time periods in this para graph do not apply in an 
applicati
on under 35 U.S.C. 111(a) if the application 
is:
(A) A design application; or
(B) An application filed before Novem -
ber 29, 2000.
(ii) In an application that entered the 
national stage from an intern ational application after 
compliance with 35 U.S.C. 371, the claim for priority 
must be made during the pendency of the ap p
lication 
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 applica tion 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 accompa -
nied 
by the processing fee se t 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 applica -
tion be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:
(i) When the application becomes in -
volved in an interference (see § 41.202 of this title),
(ii) When  ne
cessary to overcome the da te
 
of a reference relied upon by the exam
iner, or
(iii) When deemed necessary by the exam -
iner.
(4)
(i) An English language  translation of a non-
English language foreign ap plication 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 refe rence relied upon by the examine
r, or
(C) When specifically required by the 
examiner.
(ii) If an Engl
ish 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 c
ertain circumstances claim priority on the 
basis o f
 one or mo re ap
plications for an inventor’s  
cert
ificate in a country granting both inventor’s certif -
icates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in 
such a country under 35 U. S.C. 119(d), the applicant 
when submitting a claim for su ch right as specified in 
paragraph (a) of this section,  shall include an affidavit 
or decla ration. 
The affida vit or declaration must 
include a specific statement that, upon an investiga -
tion, 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 certifi -
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Page 58PATENT RULES § 1.56
R-57 Rev. 8, July 2010cate 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. 11 9(a)-(d) or 365(a) not pre -
sented within the time period  provided by paragraph 
(a) of thi s
 section is consid ered to have been  waiv
ed. 
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 pr operty authority), and the 
day, month, and year of its  filing was unintentionally 
delayed. A petition to accept a delayed claim for pri -
ority 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 appl ica-
tion, unless previously submi
tted;
(2) The surcharge set forth i n
 § 1.17(t); and
(3) A statement that th e entire dela y between 
the date the claim was due under paragraph (a)(1) of this section and the date th e claim was filed was unin -
tentional. The Director ma y require additional infor -
mation where there is a question whether the 
delay 
was unintentional.
(d)(1) The requirement in this section for the cer -
tified copy of the foreign application will be consi d-
ered satisfied if:
(i)
The applicant files a request, in a sepa -
rate document, that the Of fice ob
tain a copy of the 
foreign application from a foreign int e
llectual prop -
erty office participating with the Office in a bilateral 
or multilateral priority do cument exchange agreement 
(participating foreign intellectual property office (see 
§ 1.14 (h)(1));
(ii) The foreign applic ation is identified 
in the oath or declaration (Sec. 1.63 (c)) o
r an applica -
tion 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. Su ch
 a request should be 
made within the later of four months from the filing 
date of the application or sixteen months from the fil -
ing date of the foreign application.
(2) If the foreign application was filed at a 
foreign intellectual property office that is not partici -pating with the Office in a priority document 
exchange agreement, but a c o
py of the foreign appli -
cation was filed in an application subsequently filed in a parti c
ipating foreign intellectual property office, 
the request under para gra
ph (d)(1)(i) of this section 
must identify the participating foreign intellectual property office and the application number of the sub-sequent 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, effec -
tive Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57 024, Sept. 20, 2000, effective Nov. 29 , 20
00; 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 na ture is affected with a 
public interest. The public interest is best served, and 
the most e
ffective patent examination occurs when, at 
the time an application is being examined, the Office 
is aware of and evaluates the teachings of all informa -
tion material to patentabilit y. Each individual associ-
ated with the filing and prosecution of a patent 
application has a duty of candor
 and good  fai
th in 
dealing with the Office, which includes a duty to dis -
close to the Office all info rmation known to that indi-
vidual to be material to pate ntability as defined in this 
section. The duty to disclose  
information exists with 
respect to each pending claim until the claim is can -
celled  or withdrawn 
from co nsideration, or the appli -
cation becomes abandoned. Information material 
to the patentability of a claim that is cancelled or 
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Page 59§ 1.57 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-58withdrawn from consideration need not be submitted 
if the information is not ma terial to the patentability 
of any claim remaining under consideration in the application. There is no duty to submit information 
which is not material to th e patentability of any exist -
ing claim. The duty to disclose all information known to be material to patentab ility is deemed to be satis -
fied if all information known to be material to patent -
ability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner pre-scribed by §§ 1.97(b)-(d) and 1.98. However, no 
patent will be granted on an application in 
connection 
with which fraud on the Of fice was pra
cticed or 
attempted or the duty of disclosure was violated 
through ba
d faith or intentional misconduct. The 
Office encourages applican ts to carefully examine:
(1) Prior art cited in search reports of a for -
eign patent office in a counterpart application, and
(2) The closest information over which indi-
viduals associated with the filing or prosecution of a 
patent application believe  any pending claim patent -
ably defines, to make sure  that any material informa -
tion c
ontained therein is disclosed to the Office.
(b) Under this section, in formation is material 
to patentability when it i s
 not cumulative to informa -
tion 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 unpat-
entability of a claim; or
(2) It refutes, or is inconsi
stent with, a posi-
tion the applicant takes in:
(i) Oppo sing
 an argu me
nt of unpatentabil -
ity relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie  case of unpatentab ility is established 
when the information compels a conclusion that a claim is unpatentable unde r the preponderance of 
evi-
dence, burden-of-proof standa rd, giving each term in 
the claim its broadest reasonable construction consis -
tent with the specification, and before any consider -
ation is given to evidence which may be submitted in 
an attempt to establish a contrary conclu si
on of pat -
entability.
(c) Individuals associated with the filing or 
prosecution of  a pa
tent application within the mean -
ing of this section are:
(1) Each inventor named in the application;(2) Each attorney or agent who prepares or 
prosecu
tes the application; and
(3) Every other person who is substantiv ely
 
involved in t h
e preparation or prosecution of the 
application and who is assoc iated with the inventor, 
with the assignee or with anyone to whom there is an obligation to assign  the application.
(d) Indivi
duals other than the attorney, agent or 
inventor may comply with this section by disclosing 
information to the attorn ey, agent, or inventor.
(e) In any continuation-in -part application, the 
duty under this section incl udes the duty to disclose to  
the Of
fice all information kn own to the person to be 
material to patentability, as  defined in paragraph (b) 
of this section, which became available between the filing date of the prior app lication 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, effec -
tive 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 5 460
4, Sept. 8, 2000, 
effective Nov. 7, 2000]
§  1.57 Incorporation by reference.
(a) Subject to the cond itions and requirements 
of this paragraph, if all or a portion of the specifica -
tion or drawing(s) is inadvertently omitted from an 
application, but the applicat ion contains a claim under 
§ 1.55 for priority of a prior -fi
led foreign application, 
or a claim u
nder § 1.78 for the benefit of a prior-filed 
provisional, nonprovisional, or international applica -
tion, that was present on the filing date of the applica -
tion, 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 consider ed an incorporation by ref -
erence of the prior-filed applicat
ion as to the inadvert -
ently omitted portion of the specification or 
drawing(s). 
(1) The application must be amended to 
include the inadvertently omitted portion of the speci -
fication or drawing(s) within any time period set by the Office, but in no case later than the clos
e of prose -
IP/N/1/USA/D/2 
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Page 60PATENT RULES § 1.57
R-59 Rev. 8, July 2010cution as defined by § 1.114(b), or abandonment of 
the application, whichever occurs earlier. The appli -
cant is also required to:
(i) Supply a copy of the prior-filed appli -
cation, except where the prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translatio n 
of any prior -filed applicat ion th at is in a lang uage 
other than English;  and
(iii) Identify where the inadvertently omit -
ted po rtion  of 
the specification or drawings can be 
found in the prior -filed application.
(2) Any amendment to an  international appli -
cation pursuant to this pa ragraph sh all be ef
fective 
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 inad-vertently omitted portion of  the specification or draw -
ings in an international application designating the 
United States will be acted upon by the Office prior to the entry and c
ommencemen t of the national stage 
(§ 1.491) or the filing of an application under
35 U.S.C. 111(a) which claims benefit of the interna -
tional application. Any omitted portion of the interna -
tional application which applicant desires to be 
effective as  to a ll des ignated S tates, subjec
t to PCT 
Rule 20.8(b), must be su bmitted 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 prov ided
 in paragraph (a) of 
this section, an incorporation by reference must be set 
forth in the specification and must:
(1) Express a c l
ear intent to incorporate by 
reference by using the root words “incorporat(e)” and 
“refer enc
e” (e.g. , “incorporate by reference”); and
(2) Clearly identify th e referenced patent, 
application, or publication.
(c) “Essential material” may be incorporated by 
referen ce, but only by  way of an incorp oratio n by ref-
erence  to a U.S. patent or U.S. patent application 
pub-
lication, which patent or patent application publication does not itself incorporate such essential 
mate rial by 
reference. “Essential material” is material 
that is nece
ssary to:(1) Provide a written description of the 
claimed invention, and of the manner and process of 
making and using it, in such  full, clea
r, concise, and 
exact terms as to enable an y 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 p
aragraph of 35 
U.S.C. 112; or
(3) Describe the structure, material, or acts 
that correspond to a claimed means or step for per -
forming a specified function as required 
by the sixth 
paragraph of 35 U.S.C. 112.
(d) Other material (“ Nonessential ma te
rial”) 
may be incorporated by refe
rence to U.S. patents, 
U.S. patent application publications, foreign patents, foreign published applicatio ns, 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 refer -
ence. If the Office requires the applicant to supply a copy of mate rial 
incorporat ed by reference, the mate -
rial must be accompanied by a statement that the  copy 
supplied 
consists of the same  material incorporated by 
reference in the refe rencing application.
(f) Any insertion of mate rial incorporated  by
 
reference into the specifi cation or draw ing
s of an 
application must be by wa y 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 prev iously incorporated by ref -
erence and that the amendm ent contains no new mat -
ter.
(g) An incorporation of 
material by reference 
that does not comply with pa ragraphs (b), (c), or (d) 
of this section is not effective to incorporate such 
material unless co
rrected 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 addi -
tion:
IP/N/1/USA/D/2 
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Page 61§ 1.58 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-60(1) A correction to co mply with paragraph 
(b)(1) of this section is permitted only if the applica -
tion as filed clearly conveys an intent to incorporate 
the material by reference.  A mere reference to mate -
rial does not convey an intent to incorporate the mate -
rial by reference.
(2) A correction to co mply with paragraph 
(b)(2) of this section is only permitted for material 
that was sufficiently describ ed 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 
tabl
es, but the same tables may only be included in 
both the drawings and descr iption portion of the spec -
ification 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) T ables that are submitted in electronic for
m 
(§§ 1.96(c) and 1.821(c)) mu st maintain the spatial 
relationships ( e.g., alignment of colu mns and rows) of 
the table elements when di splayed so as to visually 
preserve the relational information t h
ey 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), exc e
pt that chem ical and mathematical for -
mulae or tables may be placed in a landscape orienta -
tion if they cannot be presented satisfactorily in a portrait orientation. Typewr itten 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 pro -
vided 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 
hi
gh 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 appli cation will not be 
expunged, except as provided in paragraph (b) of this 
section or § 41.7(a) of this title.
(2) Information forming pa rt of the original 
disclosure ( i.e., written specification including the 
claims, drawings, and any preliminary ame
ndment 
specifically incorporated into  an executed oath or dec-
laration un de
r §§ 1.63 and 1.175) will not be 
expunged from the application file.
(b) An applicant may request that the Office 
expunge information, other th an what is excluded by 
paragraph (a)(2) of this s ection, by filing a petition 
under this paragraph. An y petition to expunge infor -
mation from an application must include the fee set 
forth in § 1.17(g) and establish to the satisfaction of 
the Director that the exp ungement of the information 
is appropriate in which ca se a 
notice granting the peti -
tion for expungement will be provided.
(c) Upo n req
uest by an applicant an d 
payment 
of the fee specified in § 1.19(b), the Office will fur -
nish copies of an applicatio n, unless the application 
has been disposed of ( see §§ 1.53(e), (f) and (g)). The 
Office cannot provide or certify copies of an applica -
tion that has been dispos ed 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, effec -
tive May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; para. (a)(1) revised, 69 FR 49959, 
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R-61 Rev. 8, July 2010Aug. 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 47 519
, 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 docu-
ment that the person is signing;
(2) Identify each inventor by full name, 
including the family name, and at least one given 
name without abb r
eviation 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 invent or or i
nventors 
to be t
he 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 applic ation to which it is 
directed;
(2) St a
te that the person making the oath or 
declara tion has reviewed and understands the contents 
of the applicatio n, 
including th e clai
ms, 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 know n to the person to be 
material to patentability as defi ned 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 inv e
ntor customar ily receives mail, of each 
inventor; and
(2) Any foreign applic ation for patent (or 
inventor’s certificate) for wh ich 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 applica -
tion number, country, day, month, and year of its fil -
ing.
(d)(1) A newly executed oath or declaration is 
not required under § 1.51(b)(2) and § 1.53(f) in a con -
tinuation or divisional application, provided that:
(i) The
 prior nonprovisional applicatio n 
conta
ined an oath or declaration as prescribed by 
paragraphs (a) through (c) of this section;
(ii) The continuation or divisional applica -
tion w
as filed by all or by fewer than all of the inven -
tors named in the prior application;
(iii) The specification and drawings filed in 
the continuation or division al application contain no 
matter that would have been new matter i n
 the prior 
application; and
(iv) A copy of 
the executed oath or declara -
tion filed in the prior app lication, showing the signa-
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Page 63§ 1.64 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-62ture or an indication thereo n that it was signed, is 
submitted for the continuatio n or divisional applica -
tion.
(2) The copy of the executed oath or declara-
tion 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 ar e n
ot inventors 
in the continuation or divisional application.
(3) Where the executed oath or declaration of 
which a copy is submitted for a continuation or divi -
sional application was originally filed in a 
prior appli-
cation accorded status under §  1.47, the copy of the 
executed oath or declaration for such prior application 
must be a
ccompanied by:
(i) A copy of the decision gran tin
g a peti -
tion to accord §  1.47 status to the prior application, 
unless all inventors or lega l representatives have filed 
an oath or declaration to join in an application 
accorded status under §  1.47 of which the continua -
tion or divisional application claims a be ne
fit under 
35 U.S.C. 120, 121, or 365(c); and
(ii) If one or more inve ntor(s) or legal rep-
resentative(s) who refused to  join in the prior applica -
tion or could not be found or reached has subsequently joined in the prior application or another 
applicati on of wh
ich th e 
continuation or divisional 
application claims a b
enefit under 35 U.S.C. 120, 121, 
or 365(c), a copy of the subsequently executed o ath
(s) 
or declaration(s) filed by the inventor or legal repre -
sentative to join in the application.
(4) Where the power of attorney or corre -
spondence address was chan ged during the prosecu -
tion of the prior application,  the change in power of 
attorney or correspondence address must be identified 
in the continuation or divi sional application. Other -
wise, the Office may not reco gnize in the continuation 
or 
divisional application the change of power of atto r-
ne
y 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 appl ica-
tio
n naming an inventor not named i
n the prior appli-
cation.
(e) A newly executed oath or declaration must 
be filed in any continuation- in-part application, which 
application may name all, mo re, or fewer than all of 
the inventors named in the prior appl ication.[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, 6 2
 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 pro-
vided 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 in formation and belief, the 
facts which the inventor is re quired to state. If the per -
son signing the oath or decl aration is the legal repre -
sentative of a deceased inventor, the oath or 
declaration shall also state that the person is a legal representative and the citi zenship, 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 coun -
try may be made before any diplom atic or con
sular 
officer of the United States authorized to administer 
oaths, or before any officer having an official seal and 
authorized to administe r
 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 c ases in this and other coun -
tries, 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 
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Page 64PATENT RULES § 1.69
R-63 Rev. 8, July 2010with 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 accompany -
ing application p a
pers, except the drawings, must be 
attached together with the oath and a ribbon passed 
one or more times through all the sheets of the appli -
cation, except the  draw
ings, and the ends of said rib-
bon brought to geth
er under th e seal before the latter is 
affixed and impressed, or each sheet must be 
impressed with the officia l
 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 accep ted for examination, but 
before it is allowed, dupl icate papers, prepared in 
compliance with the fore going 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 s upplemental oath or decla -
ration 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 in accuracies relating to 
all the inventors or applic ants (§§ 1.42, 1.43, or §
1.47) may be corrected with  a sup
plemental oath or 
declaration signed by all th e inventors or applicants.
(2) Deficiencies or in accuracies relating to 
fewer than all of the invent or(s) or applicant(s) (§§ 
1.42, 1.43 or § 1.47) m ay
 be corrected with a supple -
mental oath or declarat ion identifying the entire 
inventive entity but signed on ly by the inventor(s) or 
applicant(s) to whom the error or deficiency relates.
(3) Deficiencie s or inacc
uracies due to the 
failure to meet the requi rements of § 1.63(c) ( e.g., to 
correct the omission of a mailing address of an inven -
tor) in an oath or declaration may be correc t
ed with an 
application data sheet in accordance with § 1.76.
(4) Su b
mission of a supplemental oath or 
declaration or an applicatio n data sheet (§ 1.76), as 
opposed to who must si g
n 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 w he 
n a claim 
is presented for matter originally shown or described 
but not substantially embr aced in the statement of 
invention or claims originally presented or when an 
oath or declaration submit ted in accordance with 
§ 1.53(f) after the filing of the specification and any 
required drawings specifica lly and improperly refers 
to an amendment which includes new matter. No new 
matter may be introduced into a no np
rovisional appli -
cation after its filing date ev en if a supplemental oath 
or declaration is filed. In proper situations, the oath or declaration here required may be made on  info
rmation 
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 Trade-
mark Office and which is requ ired 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 tha
t 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 lan guage that such  in
dividual 
can understand and shall st ate that such individual 
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Page 65§ 1.70 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-64understands 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 accordanc e
 
with PCT Rule 4.17(iv), it must be accompanied by 
an English translation togeth er with a statement that 
the translation is accurate, ex cept 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 no tified to file the transla -
tion.
[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, effec -
tive 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 descript ion 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 su ch full, cle a
r, concise, and 
exact terms as to enable any person skilled in the art 
or science to which the invention or discovery apper -
tains, 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 man-
ner as to distinguish it fro m oth er 
inventions and from 
what is old. It must describe comple tely 
a specific 
embodiment of the p r
ocess , machine, manufacture, 
composition of matter or im provement 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 specifi -
cation must particularly poin t 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 suc h
 parts as necessarily cooper -
ate with it or as may be necessary to a complete understanding or description of it.
(d) A copyright or mask work notice may be 
placed in a design or uti lity patent application adja -
cent to c o
pyright and mask work material contained 
therein. The notice may app ear at any appropriate por -
tion of the patent applicatio n disclosure. For no tices in
 
drawings, see § 1.84(s). The content of the notice 
must be limited to onl
y those elements provided fo r 
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, respec -
tively. Inclusion of a copyright or mask work notice 
will be permitted only if th e 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 sh al
l read as follows:
A portion of the disclosure of this patent docu -
ment contains material which is subject to (copy -
right or mask work) protection. The (copyright or 
mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent  do
cument or 
the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but other -
wise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a sep -
arate sheet. Each sheet incl uding part of the specifica -
tion 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 pa
rt of the application.
(g)(1) The specification may disclose or be 
amended to disclose the nam es 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 fol -
low
ing time periods: 
(i) W
ithin three months of the filing date 
of a national application;
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Page 66PATENT RULES § 1.75
R-65 Rev. 8, July 2010(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 exam -
ination under § 1.114.
(3) If an amendment under paragraph (g)(1) 
of this section is filed afte r the date
 the issue fee is 
paid, the patent as issued may not nec essa
rily include 
the names of the parties to the joint research agree -
ment. If the patent as issu ed 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 j
oint res earch agreement by a certifi-
cate 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, effec -
tive Jan. 1, 1989; para. (d), 58 FR 38719, July 20, 1993, 
effective Oct. 1, 1993; para. (f) added, 68 FR 38611, June 
30, 20 03, ef
fective 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 spe -
cific as possible. Chara c
ters that cannot be captured 
and recorded in the Office ’s automated information 
systems may not be reflected in the Of fice’
s records in 
such systems or in docume nts created by the Office. 
Unless the title is supplied in  an application data sheet 
(§ 1.76), the title of the i nvention 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 pre
senting the abstract may not 
include other parts of the application or other mate-
rial. 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 St a
tes 
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 inve
ntion, 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 vi ews of the drawings and 
the detailed description of th e invention shall refer to 
the different views by speci fying the numbers of the 
figures and to the 
different parts by use of reference 
letters or numerals (p referably the latter).
§  1.75 Claim(s).
(a) The specification must conclude with a 
claim particularly pointing ou t and distinctly claiming 
the subject matter which the applicant re ga
rds as his 
invention or discovery.
(b) More than one claim may be presented pro -
vided they differ substantially from each other and are 
not unduly multiplied.
(c) One or more claims may be presented in 
dependent form, referring b ack to and further limiting 
another claim or claims in  the same a p
plication. Any 
dependent cl a
im which refers to more than one other 
claim (“multiple dependent cl aim”) shall refer to such 
other claims in the alternative only. A multiple depen -
dent claim shall not serve as a basis for any other mul -
tiple dependent claim. For fee calculation purposes 
under § 1.16, a multiple dependent claim will be con -
sidered to be that number of claims to which direct 
reference is made therein.  For fee calculation pur -
poses also, an y claim depend
ing 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 fil -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 67§ 1.76 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-66ing 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 dependen t claim. A multiple depen -
dent claim shall be construe d to incorporate by refer-
ence all the limitations of each of the particular claims 
in relation to which it is being considered.
(d)(1) The cla i
m or claims must conform to the 
invention as set forth in th e remainder of the specifi -
cation and the terms and phr ases 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 dif -
ferent inventions in one application.
(e) Where the nature of the case admits, as in 
the case of an improvemen t, any independent claim 
should contain in the following order:
(1) A preamble comprising a general desc
rip-
tion of all the elements or steps of the claimed combi -
nation which are conventional or known,
(2) A phrase such as “wherein the improve -
ment comprises,” and
(3) Those elements, steps, and/or relation -
ships which constitute that portion of the claimed combination which the app licant 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 pre -
sented 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 physica
l sheet or electronic page. Any sheet 
including a claim or portion of a claim may no
t con -
tain any other parts of the application or other mate -
rial.
(i) Where a claim sets forth a plurality of ele -
ments 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, effec -
tive July 30, 2003; para. (c) revised, 70 FR 388 0, Jan. 27, 
2005, effective Dec. 8, 2004; paras. (b) and (c) revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and neve r 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 sub -
mitted in either provisional or nonprovisional applica -
tions, which contains bibliographic data , arrang
ed in a 
format specified by the Of fice. An application data 
sheet must be titled “Application Data Sheet” and 
must contain all of the sec tion headings listed in para -
graph (b) of this secti on,
 with any appropriate data for 
each section heading. If an application data sheet is 
provided, the app licatio
n data sheet is part of the pro -
vision al 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 applican t (§ 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.
(2) Corr espondence information . This infor -
mation includes the correspondence address, which 
may be indicated by referen ce to a cus
tomer number, 
to which corresponde nc
e is to be directed (see § 
1.33(a)).
(3) Application information . This informa -
tion includes the title of th e 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 drawi ng sheets,
 a sug -
gested drawi ng 
figure for publication (in a nonprovi -
sional application), any docket number assigned to the application, the type of application ( e.g., utility, plant, 
design, reissue, provisiona l), whether the application 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 68PATENT RULES § 1.76
R-67 Rev. 8, July 2010discloses 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 applica -
tions, the Latin name of th e genus and species of the 
plant claimed, as well as the variety denomination. The suggested classification and Technology Center 
informat
ion should be supplied for provisional appli -
cations whether or not claims are present. If claims 
are not present in a provis ional application, the sug -
gested classification and Technology Center should be 
based upon the disclosure
.
(4) Repr esentative information. This infor -
mation  includes the registration number of 
each prac -
titioner having a power of attorney in the application (preferably by reference to a customer number). Pro -
viding this information in the application data sheet does not constitute a power of  attorney in the applica -
tion (see § 1.32).
(5) Domestic priority information . T his 
information includes the ap plication number,  the fil -
in
g date,
 the status (including patent numb er 
if avail -
able), and relationship of each application for which a 
benefit is claimed under 35 U.S.C. 11 9
(e), 120, 121, 
or 365(c). Providing this information in the applica -
tion 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 infor -
mation includes the appli cation number, country, and 
filing date of each foreign application for whi c
h prior -
ity is claimed, as well as any foreign application hav-
ing a filing date before th at of the application for 
which priority is claimed. Providing this information 
in the application data sh eet constitutes the claim for 
priority as req
uired by 35 U.S.C. 119(b) and §  
1.55(a).
(7) Assignee  information . This information 
includes the name (either pers on or juristic entity) and 
address of the assignee of the entire right, title, and 
interest in an application.  Providing this information 
in the application data sh eet does not substitut
e for 
compliance with any requirement of part 3 of this 
chapter to have an assignment recorded by the Office.
(c) Supplemental applic ation data sheets.  Sup -
plemental application data sheets:
(1) May be subsequen tly supplied prior to 
payment of the issue fee e ithe
r to correct or update information i
n 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 sect
ion headings listed 
in paragraph (b) of this section, include all appro
priate 
data for each section headin g, and must identify the 
information that is being changed, preferably with underlining for insertions, and strike-through or 
brackets for text removed.
(d) Inconsistencies betwee n ap plication data 
sheet and other documents . For inconsistencies 
between information that is supplied  by
 both an appli -
cation data sheet under this section and other docu -
ments.
(1) The latest submitted information will 
govern notwithstanding whether supplied by an appl i-
ca
tion data sheet, an amendm ent to the specification, 
a designation of a correspondence address, or by a § 
1.63 or § 1.67 oath or de claration
, except as provided 
by paragraph (d)(3) of this section;
(2) The information in the application data 
sheet will govern when the in consistent information is 
supplied at the same time by  an amendment to the 
specification, a desi gnatio
n of correspondence 
address, or a § 1.63 or § 1.67 oath or declaration, except as provided by paragr aph (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 in ventors (§ 1.41 (a)(1)) and 
setting forth their citizenship (35 U.S.C. 115);
(4) T
he Office will capture bibliographic 
information from the applic ation data sheet (notwith -
standing whether an oath or declaration governs the information). Thus, the Of fice shall generally, for 
example, not look to an oa th
 or declaration under § 
1.63 to see if the bibliogr aphic information containe
d 
therein is consistent with  the bibliographic informa -
tion captured from an applica tion data sheet (whether 
the oath or declaration is submitted prior to or subse -
quent to the application data sheet). Captured biblio -
graphic information derived from an application data 
sheet containing errors 
may be corrected if applicant 
submits a request therefor and a supplemental a p
plica-
tion data sheet.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 69§ 1.77 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-68[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 (implementatio n 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 applica -
ble, should appear in the following order:
(1) Utility applicatio n transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.(5) Drawings.(6) Execu ted
 oath or decl
aration.
(b) The specification sh ould include the follow -
ing sections in order:
(1) Title of the invention, which may be 
accompanied by an introduc tory 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 agreemen t.
(5)
Reference to a “Sequenc e Listing,” a 
tabl
e, or a computer program listing appen d
ix submit -
ted on a compact disc and an incorporation-by-refer -
ence of the mate rial 
on the compact disc (see § 
1.52(e)(5)). The total numb er of compact discs includ -
ing duplicates and the files on each compact disc shall 
be specified.
(6) Background of th e i
nvention.
(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, effec -
tive 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 interna -
tional application designa ting the United S tates of 
America may claim an invention disclosed in one or 
more prior-filed copending nonprovisiona l
 applica -
tions or international ap plications designating the 
United States of America. In order for an application 
to claim the benefit of a prior-filed copending nonpro-
visional application or inte rnational application 
desig -
nating the United States of America, each prior-filed 
application must name as an inventor at least one 
inventor named in the late r
-filed application and dis -
close the named inventor’s inven tion
 claimed in at 
least one claim of the later-filed application in the manner provided by the first paragrap h
 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 h
ave paid therein the basic 
filing fee set forth in § 1.16 within the pendency of the 
application.
(2)(i) Exc
ept for a continued prosecution appli-
cation filed under § 1.53(d), any nonprovisional appli -
cation or international application designating the 
United States of America claiming the benefit of one or more prior-filed co pend
ing nonprovisional applica -
tions or international ap plications designating the 
United States of America mu st contain or be amended 
to contain a reference to each such prior-filed applica -
tion, identifying it by app lication number (consisting 
of the series co de and seria l
 number) or international 
application number and international filing date and 
indicating the relationship of  the applications. Cross 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 70PATENT RULES § 1.78
R-69 Rev. 8, July 2010references to other related applications may be made 
when appropriate (see  § 1.14). 
(ii) This reference mu st be submitted dur -
ing the pendency of the late r-filed application. If the 
later-filed application is an application filed under 
35 U.S.C. 111(a), this reference must also be submit -
ted within the later of four  months from the actual fil -
ing date of the later -fil
ed application or sixteen 
months from the filing date  of the prior
-filed applica -
tion. If the later-filed appli cation 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 mon ths 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 pe riods are not extendable. 
Except as provided in paragr aph (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) A n 
application filed under 35 U.S.C. 
111 (a) before November 29, 2000; or
(C) A no npro
visional 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 Novemb e
r 29, 2000.
(iii) If the later-filed application is a non-
provisional 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 contai n s
uch reference in the first sen -
tence(s) following the title.
(iv) The request for a continued prosecu -
tion application under § 1.53(d) is the specific refer -
ence required by 35 U.S.C. 120 to the prior-filed application. The identifica tion of an application by 
application number und e
r this section is the identifi -
cation 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 nu mb
er.(3) If the reference requ ired 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 
this section
, the claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed copending non -
provisional application or international application 
designating the United States of America may be accepted if the reference id entifying the prior
-filed 
application by application number or international 
application number and inte rnational filing date was 
unintentionally delayed. A petition to accept an unin -
tentionally 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 p a
ragraph (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 wh
ere 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 Amer ica ma
y claim 
an invention disclosed in one or more prior-filed pro -
visional applications. In or der for an application to 
claim the benefit of one or more prior-filed provi -
sional applications , eac
h prior-filed provisional appli -
cation must name as an inve ntor at least one inventor 
named in the later-filed ap plication and disclose the 
named inventor ’
s invention claimed in at least one 
claim of the lat e
r-filed application in the manner pro -
vided by the first paragraph of 35  U.S.C. 112. In addi -
tion, each prior-filed provis ional 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 peri
od set forth in §  1.53(g).
(5)(i)  Any nonprovisional application or inter -
national application design ating the United States of 
America claiming the benefit of one or more prior-filed provisional appli c
ations must contain or be 
amended to contain a reference to each such prior-filed provisional application,  identifying it by the pro -
IP/N/1/USA/D/2 
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Page 71§ 1.78 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-70visional application number (consisting of series code 
and serial number). 
(ii) This reference mu st be submitted dur -
ing the pendency of the late r-filed application. If the 
later-filed application is an application filed under 
35 U.S.C. 111(a), this reference must also be submit -
ted within the later of four  months from the actual fil -
ing date of the later-filed application or sixteen months from the filing date of the prior-filed provi -
sional application. If the la ter-filed application is a 
nonp ro
visional  ap
plication which entered the national 
stage from an internationa l application after compli -
ance with 35 U.S.C. 371, this reference must also be 
submit
ted 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 th e later-filed international 
application or sixteen mont hs 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 sec tion, the failure t
o timely 
submit the reference is considered a waiver of any benefit unde r 
35 U.S.C. 119(e) to such prior-filed pro -
visional application. The time periods in this para -
graph 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 intern ational application filed 
un
der 35 U.S.C. 363 before November 29, 2000.
(iii) If the later
-filed application is a non-
provisional 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 sen -
tence(s) foll owing the t
itle.
(iv) If the prior-filed provisional applica -
tion was filed in a language  other than English and 
both an English-language tr anslation of the prior-filed 
provisional application and a statement that the trans -
lation is accurate were not previously fi
led 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 nonprovisi onal ap
plication, a timely reply 
to such a notice must incl ude the filing in the nonpro -
visional application of either a confirmation that the translation and statement were  filed in the provisional 
application, or an amendm ent or Supplemental Appli -
cation Data Sheet withdrawing the benefit claim, or the nonprovision al a
pplication will be abandone d. 
The
 translation and statemen t may be filed in the pro -
visional application, even if the provisional applica -
tion has become abandoned.
(6) If the reference required by 35 U.S.C. 
119(e) and paragraph (a)(5) of this section is pre -
sented in a nonprovisional application after the time 
period prov ide
d by paragraph (a)(5)(ii) of this section, 
the claim under 35  U.S.C. 119(e) for the benefit of a 
pr
ior filed provisional application may be accepted 
during the pendency of t h
e later-filed application if 
the reference identifying the prior-filed application by 
provisional application number was unintentionally delayed. A petition to ac cept 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 appli cation, 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 thi
s 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) W here 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 go od and sufficient reason 
for their retention during pendency in 
more than one 
application.
(c) If an application or a patent under reexami -
nation and at least one other application naming dif -
ferent inventors are owned by the same person and contain conflicting claims, and there is no statement 
of record indicating that th e claimed inventions we re
 
commonly owned or subjec t to an obligation of 
assignment to the same pe rson at the time the later 
invention was made, the Office may require the 
assignee to state whether th e claimed inventions were 
commonly owned or subjec t to an obligation of 
IP/N/1/USA/D/2 
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Page 72PATENT RULES § 1.83
R-71 Rev. 8, July 2010assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the prior inve ntor. 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 11366, Mar. 21, 1985; para. (a) revised 
58 FR 54504, Oct. 22, 1993, eff ective Jan. 3, 1994; paras. 
(a)(1) and (a)(2) revised and pa ras. (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) re vised, 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 a nd 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 appl ica-
tion will not be permitt
ed in  the pending application, 
but an application disclosing unclaimed subject matter 
may contain a reference to a later filed application of 
the same a p
plicant or owned by a common assignee 
disclosing and claiming that subject matter.THE DRAWINGS
§  1.81 Drawings required in patent application.
(a) The applicant for a patent is required to fur-
nish a drawing of his or her invention where neces -
sary 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 responsib ility of the applicant, the 
original drawing(s) should be retained by the appli -
ca
nt for any necessary future correction.
(b) Drawings may include illustrations which 
facilitate an understanding of the invention (for exam -
ple, flowsheets in cases of processes, and diagram -
matic views).
(c) W henever the nature 
of the subject matter 
sought to be patented admits of illustration by a draw -
ing without its being necessary for the understanding of the subject matter and the applicant has not fur -
nished such a drawing, the 
examiner will require its 
submission within a time peri od of not less than two 
months fro m th
e date of the sending of a  no
tice 
thereof.
(d) Drawings submitted after the filing date of 
the application may not be used to overco me
 any 
insufficiency of the specifica tion due to lack of an 
enabling disclosure or otherwise inadequate disclo -
sure therein, or to supplement the original disclosure 
thereof for the purpose of interpretation of the scope 
of any claim.
[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, 
Nov. 28, 1988, effective Jan. 1, 1989]
§  1.83 Content of drawing.
(a) The drawing in a nonprovisional application 
must show every feature of the invention specified in 
the claims. However,  conven tiona
l 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 pe rmitted to be included in 
the drawings.
(b) When the invention consists of an improve -
ment on an old machine th e drawing must whe n pos -
IP/N/1/USA/D/2 
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Page 73§ 1.84 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-72sible 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 
applicati on do not comply with the requirements of 
paragraphs (a) and (b) of th is section, the examiner 
shall require such additional illustration within a time 
period of not less than two mo nth
s from the date of 
the sending of a notice ther eof. 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 catego -
ries for presenting drawings in utility and design 
patent applications.
(1) Black ink . Black and white drawings are 
normally  requi
red. India ink, or its equiv a
lent 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 su bject matte
r sought to be pat -
ented 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 draw ings are reproducible in 
black and white in the printed patent. Color drawings are not permitted in interna tional applications (see 
PCT Rule 1
1.13), or in an application, or copy 
thereof, submitted under the Office electronic filing system. The Office will accept color drawings in util -
ity or design patent applications and statutory inven -
tion registrations only af ter granting a petition filed 
under this paragraph explaining why the color draw -
ings 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 previo
usly amended to contain) the following language as t
he 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 draw -
ing(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 ordin a
rily permit -
ted in utility and design patent applications. The 
Office will accept photogra phs in utility and design 
patent applications, however, if photographs are the 
only practicable medium fo r illustrating the claimed 
inventio n. For ex
ample, photographs or photomicro -
graphs of: electrophoresis gels, blots ( e.g., immuno -
logical, western, Southern, and northern), auto- radiographs, cell cultures (s tained and unstained), his-
tological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chroma -
tography plates, crystalline st ructures, and, in a design 
patent applicati
on, o r
nament al effects
, are acceptable. 
If the subject matter of the application admits  
of illus -
tration by a drawing, the examiner may require a 
drawing in place of the photograph. The photographs 
must be of sufficient quality  so that all detai ls in the 
ph
otographs are reproducible  in the printed patent.
(2) Color photographs . Color photographs 
will be accepted in utility and design patent applica-tions if the conditions fo r accepting color drawings 
and black and white pho tog
raphs have been satisfied. 
See paragraphs (a)(2) and (b)(1) of this s
ection.
(c) Identification of drawings . Identifying indi -
cia should be provided, and if provided, should include the title of the inven tion, inventor’s name, and 
application number
, or docket number (if any) if an 
application number has not been assigned to the  appli
-
cation. If this information is provided, it must be 
placed on the front of each  sheet within the top mar -
gin. Each drawing sheet su bmitted after the filing date 
of an application must be identified as either “Replacement Sheet” or “N e
w Sheet” pursua nt 
to § 
1.121(d). If a marked-up copy of any amended draw -
ing figure including an notations indicating the 
changes made is filed, such  marked-up copy must be 
clearly labeled as “Annotat ed Sheet” pursuant to § 
1.121(d)(1).
IP/N/1/USA/D/2 
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Page 74PATENT RULES § 1.84
R-73 Rev. 8, July 2010(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 mathe -
matical formula must be labeled as a separate figure, 
using brackets when necessary, to show that informa -
tion is p r
operly integrated. Each group of waveforms 
must be presented as a sing le figure, using a common 
vertical axis with time ex tending along the horizontal 
axis. Ea
ch individual waveform discussed in the spec -
ification must be identified with a separate letter des -
ignation adjacent to the vertical axis.
(e) Type of paper . Drawings submi tted 
to the 
Office must be made on paper which is flexible, 
strong, white, smooth, n
on-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, overwrit -
ings, and interlineations. Photographs must be devel -
oped on paper meeting the sh eet-size requirements of 
paragraph (f) of this sectio n and the margin require -
ments of p 
aragraph (g) of this section. See paragraph 
(b) of this section for ot her requirements for photo -
graphs.
(f) Size of paper . All drawing sheets in an 
applica
tion must be the same size. One of the shorter 
sides of the shee
t 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 mar g
in 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. 
o
n 21.0  cm. by 29.7 cm. (DIN size A4) drawing 
sheets, and a sight no greate
r 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 sh ee
ts.
(h) Views. The dra w
ing must contain as many 
views as necessary to show the invention. The view s 
ma
y be plan, elevation, section, or perspective views. 
Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the draw-
ing must be grouped together and arranged on the 
sheet(s) without wasting space, preferably in an 
upright position, clearly separat ed 
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 
relations hip 
or order of assembly of various parts are 
permissible. When an expl oded 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 i ts entirety may be 
bro-
ken into partial views on a single sheet, or extended 
over several sheets if there is no loss in facility of 
understanding the view. Pa rti
al views drawn on sepa -
rate 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 
inclu
ded 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 magnifica -
tion purposes, the view and the enlarged view must 
each be labeled as separate views.
(i) Where views o
n two or more sheets 
form, in effect, a single complete view, the views on 
the several she e
ts must be so arranged that the com-
plete figure can be assembl ed without concealing any 
part of any of the views appearing on the various 
sheets.
(ii) A very long  v
iew may be divided into 
severa l parts placed one above the other on a single 
sheet. However,  the relations
hip 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 bro k
en 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 regula rly spaced oblique parallel 
IP/N/1/USA/D/2 
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Page 75§ 1.84 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-74lines spaced sufficiently apar t to enable the lines to be 
distinguished without diffic ulty. Hatching should not 
impede the clear reading of the reference characters 
and lead lines. If it is not possible to place reference 
characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at  a substantial angle to the 
surrounding axes or principal lines, preferably 45 °. A 
cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross 
section must show proper material(s) by hatching with regularly spaced para llel oblique strokes, the 
space between strokes being chosen on the basis of the total area to be hatche d. The various parts of a 
cross section of the same ite m should be hatched in 
the same manner and should accurately and graphi -
cally indicate the nature of the material(s) that is illus -
trated in cross section. The hatching of juxtaposed different elements must be angled in a different way.  
In the ca
se of large areas, hatching may be confined to 
an edging drawn around 
the entire inside of the out -
line of the area to be hatched. Different types of hatching should have diff erent conventional meanings 
as regards the nature of a material seen in cross sec-tion.
(4) Alternate position . A moved position may 
be show n
 by a broken line superimposed upon a suit -
able view if thi
s can be done without crowding; other -
wise, a separate view must be used for this purpose.
(5) Modified forms . Modified forms of con -
struction must be shown in separate views.
(i) Arrangeme nt 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 po ssible, s t
and so that they 
can be read with the sheet held in an upright position. If views wider than the width of the sheet are neces -
sary for the clearest illustration of the invention, the sheet ma y be turned on its si de so that the top of the 
sheet, with the appropriate to p 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, ex cept for graphs utilizing 
standard scientific conven tion 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 inclus i
on 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 sin -
gle 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 mech anism without 
crowding when the drawing is reduced in size to two-
thirds in reproduction. In dications such as  “actual 
size
” or “scale 1/2” on the drawings are not permitted 
since these lose their mean ing with reproduction in a 
different format.
(l) Characte r of lines, numbers, and letters.  All 
drawings must be made by a process which will give them satisfactory reproduction characteristics. Every 
line, number, an d letter mu
st 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 reproduc tion. 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 th e 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 co rner at an angle of 45 °. 
Surface delineations should preferably be shown by 
proper shading. Solid black shading areas are not per -
mitted, except when used to  represent bar graphs or 
color.
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Page 76PATENT RULES § 1.84
R-75 Rev. 8, July 2010(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. Know n devices should be illus-
trated by symbols which have a universally recog -
nized conventional meaning and are generally accepted in the art. Other symbols which are not uni -
versally recognized may be used, subject to approval by the Of
fice, if they are not likely to be confused 
with existing conventional sy mbols, and if they are 
readily identifiable.
(o) Legends . Suit able descriptive 
legends may 
be used subject to approval by the Offic e
, or may be 
required by the examiner where necessary for under -
standing of the drawing. They should contain as few 
words as possible.
(p) Numbe rs, letters, and re ference characters.
(1) Refere n
ce characters (numerals are pre -
ferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association 
with brackets or inverted commas, or enclosed within 
outlines, e.g., encircled. They must be oriented in the 
same 
direction as the view so as to avoid having to 
rotate the sheet. Reference characters should be arranged to follow the profile  of the object depicted.
(2) The English alphabet must be used for 
letters, except where another alp ha 
bet is customarily 
used, such as the Greek alph abet to indicate angles, 
wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference charac -
ters 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 comprehe nsion. Therefore, they 
should not cross or mingle with the lines. They should not be placed upon ha tc
hed or shaded surfaces. When 
necessary, such as indicating a surface or cross sec -
tion, 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 alwa ys
 be 
designated by the same refe rence character, and the 
same reference character must never be used to desig -
nate different parts.
(5) Reference characters not mentioned in 
the description shall not ap pear in the drawings. Ref -erence characters mentioned in the description must appear in the draw ings.
(q) Lead lines . 
Lead lines are those lines 
between the reference char acters 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 i ndicated. 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 lin e 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 sec -
tion.
(r) Arrows . Arrows may be used at the en ds
  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 a rrow touching a line to 
indicate 
the surface shown by the li ne lo
oking along 
the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice. A copy -
right or mask work notice ma y appear in the drawing, 
but must be placed within the sight of the drawing immediately below the figure representing the copy -
right or mask work material  and be limited to letters 
having a print size of 32
 cm. to 64 cm. (1/8 to 1/4  
inc
hes) high. The content of the notice must be lim -
ited to only those elements provided for by law. For 
example, “©1983 John Do e” (17 U.S.C. 401) and 
“*M* John Doe” (17 U.S.C. 90 9) wo
uld be properly 
limited and, under current st atutes, legally sufficient 
notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be permitted only if the authoriz ation 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 consecu-tive Arabic numerals, starting with 1, 
within the sight 
as defined in paragraph (g) of this section. These numbers, if prese nt, must be 
placed in the middle of 
the top of the sheet, but no t in the margin. The num -
bers can be placed on the right-hand side if the draw -
ing extends too close to the middle of the top edge of 
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Page 77§ 1.85 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-76the usable surface. The drawing sheet numbering 
must be clear and larger than the numbers used as ref -
erence 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 sh eets o
f drawings, with no other marking.
(u) Numbe ring of views.
(1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, inde -
pendent of the numbering 
of the sheets and, if possi -
ble, in the order in which they appear on the drawing 
sheet(s). Pa
rtial views intend ed to form one complete 
view, on one or several shee ts, must be identified by 
the same number followed by a capital letter. View 
numbers must  be prec
eded by the abbreviation “FIG.” 
Where only a single view is used in an application to 
illustrate the claimed invention, it must not be num -
bered 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, ci rcles, or inverted com-
mas. The view numbers must be larger tha n
 the num-
bers used for reference characters.
(v) Security markings . Authorized security 
markings may be placed on the drawings provided 
they are outside the si ght
, preferably centered in the 
top margin.
(w) Corr ections . Any co rrectio ns on drawin gs 
submit ted to the Of fice mu st be dura ble and perma -
nent.
(x) Hole s. No holes sh ould be 
made by appli-
cant in the drawing sheets.
(y) Types of drawings . See § 1.152 fo r de
sign 
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 Oc t. 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) revi sed, 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 exam ination until objections to 
the drawings have been co rrected. Except as provided 
in § 1.215(c), any patent application publication will 
not include drawings filed after the application has 
been pla ced on 
the files for examination. Unless 
applicant is otherwise notif ied in an Office action, 
objections to the drawings in a utility or plant applica -
tion will not be held in abey ance, and a request to hold 
objections to the drawi ngs 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 co mpliance with § 1.84, the 
dr
awing may be admitted for examination.
(b) The Office will not release drawings for 
purpose s
 of correction. If corrections are necessary, 
new corrected drawings must  be submitted within the 
time set by the Of fice.
(c)
If a corrected drawing is required or if a 
drawin
g does not comply w ith § 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 wit h
 § 1.84 to avoid abandonm ent. 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, effec -
tive 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]
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Page 78PATENT RULES § 1.95
R-77 Rev. 8, July 2010MODELS, EXHIBITS, SPECIMENS
§  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 require -
ments of §  1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a pet
ition 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) Not withstanding the provisions of para -
graph (a) 
of this section, a model, working model, or 
other ph ys
ical exhibit may be required by the Office if 
deeme
d 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 th is section, it must be 
accompanied by photographs that show multiple 
views of the material features of the model or exhibit 
and that substantially confor m 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 relat es to a composition of mat -
ter, the applicant may be required to furnish speci -
mens of the composition, or of its ingredients or 
intermediates, for the purp ose of inspection or experi -
ment.
§  1.94 Return of model s
, exhibits or specimens.
(a) M odels, exhibits, or 
specimens may be 
returned to the applicant if  no longer necessary for the 
conduct of business before the Office. When applicant is not ified that a model, ex hibit, or specimen i
s no 
longer necessary for the condu ct of business before 
the Office and will be re turned, applicant must 
arrange for the return of the model, exhibit, or speci-
men at the applicant’s expense. The Office will dis -
pose of perishables withou t notice to applicant unless 
applicant notifies the Office upon submission of the 
model, exhib it 
or sp ecimen that a return is desired and 
makes arrangements for its return promptly upon noti -
fication by the Office that the model, exhibit or speci -
men 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 
pr
ovisions of this paragraph do n
ot apply to a model 
or exhibit that substantially  conforms to the require -
ments of § 1.52 or § 1.84, where the model or exhibit 
has been described by photographs that substantially 
con
form 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 pe
riod set in such 
notice, to avoid disposal of  the model, exhibit or spec -
imen by the Office. Extens ions of time are available 
under § 1.136, except in the case of perishables. Fail -
ure to establi
sh that the re turn of the item has been 
arranged for within the period set or failure t o
 have 
the item removed from Office  storage within a reason -
able 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]
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Rev. 8, July 2010 R-78§  1.96 Submission of computer program list -
ings.
(a) General.  Descriptions of the operation and 
general content of computer prog ram listin
gs should 
appear in the description porti on 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, ro utines, 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) Drawin gs. If the listing is submitted 
as 
drawings, it must be subm itted in the manner and 
complying with the requirem ents for drawings as pro -
vided in § 1.84. At least one figure numeral is 
required on each sheet of drawing.
(2) Specification .
(i) If the listing is subm itted as part of the 
specification, it must be subm itted in accordance with 
the pro v
isions of § 1.52.
(ii) Any listing having more than 60 lines 
of code that is submitted as part of th e specifi
cation 
must be positioned at the end of the description but before the claims. Any ame n
dment 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 char -
acters per line) must, be submitted on a compact disc 
in compliance with § 1.52 (e). A compact disc contain -
ing such a computer progra m listing is to be referred 
to as a “computer progra m listing appendix.” The 
“computer program listing appendix” will not be part 
of the printed patent. T h
e specification must include a 
reference to the “computer program listing appendix” 
at the location indicated in § 1.77(b)(5).
(1) M
ultiple computer pr ogram listings for a 
single application may be pl aced on a single compact disc. Multiple compact discs may be submitted for a 
single application if necessary. A separate compact 
disc is require
d for each application containing a com -
puter 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 fo llowing specifications (no 
other format shall be allowed):
(i) Computer Compatibility: IBM PC/XT/
AT, or compatible s, or Ap
ple Macintosh;
(ii) Operating System Compatibility: MS-
DOS, MS-Windows, Un
ix, or Macin t
osh;
(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: unc o
mpressed 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 state -
ment.
(a) In order for an applican t 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 st atement 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 prosecu -
tion application under § 1.53(d);
(2) W
ithin three months of the date of entry 
of the national stage as 
set fo rth in § 1.491 in an inter -
national application;
(3) Before the mailing of a first Office action 
on the merits; or
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Page 80PATENT RULES § 1.98
R-79 Rev. 8, July 2010(4) Before the mailing of a first Office action 
after the filing of a reques t for continue d examination 
under § 1.114.
(c) An information disclo sure statement shall 
be considered by the Office if filed after the period 
specified in paragraph (b) of this section, provided 
that the informa t
ion 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 appli -
cation, and it is accompanied by one of:
(1) T
he statement specified in paragraph (e) 
of this section; or
(2) The fee set forth in § 1.17(p).
(d) An information disclo su
re statement shall 
be considered by the Office  if filed by the applicant 
after the period specified in  
paragraph (c) of this sec-
tion, provided that the information disclosure state -
ment is filed on or before payment of the issue fee and is accompanied by:
(1) The statement specified in paragra p
h (e) 
of this section; and
(2) The fee set forth in § 1.17(p).
(e) A statement under this section must sta t
e 
either:
(1) That each item of information contained 
in the information disclosure statement was first cited 
in any communication from a foreign p
atent office in 
a counterpart foreign applic ation not more than three 
months prior to the filing of the information disclo -
sure statement; or
(2) That no item of information contained in 
the information di sclosure statement was cited in a 
communication from a foreign patent office in a coun -
terpart foreign application, 
and, to the knowledge of 
the person signing the cert ification after making rea -
sonable i
nquiry, 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 disclo -
sure statement.
(f) No extensions of tim e for filing an informa -
tion disclosure statement are permitted under § 1.136. If a bona fide  attempt is made to comply with § 1.98, 
but part of the required c ontent is inadvertently omit -
ted, additional time may be given to enable full com -
pliance.(g) An information disclosure statement filed in 
accordance with this section shall not be construed as 
a represe
ntation that a search has been made.
(h) The filing of an information disclosure 
statement shall not be  cons
trued to be an admission 
that the information cited in  the statement is, or is 
considered to be, material to patentabilit y 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 bu t will not be considered by 
the O
ffice.
[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 state -
ment.
(a) Any information disc losure statement filed 
under § 1.97 shall includ e the items listed in para -
graphs (a)(1), (a)(2) and (a)(3) of this section.
(1) A
 list of all patents,  publications, applica -
tions, or other information submitted for consider -
ation by the Office. U.S. patents and U.S. patent 
application publications mu st be listed in a section 
separately  
from citations of other documents. Each 
page of the list must include:
(i)
The application number of the applica -
tion in which the informatio n disclosure statement is 
being submitted;
(ii) A column that provides a space, next to 
each document to be cons idered, for the examiner’s 
initials; and
(iii) A heading that  clearly i
ndicates that 
the lis t
 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 publicatio ns unless required by the 
Office;
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Page 81§ 1.99 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-80(iii) For each cited pending unpublished 
U.S. application, the application specification includ -
ing 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 e x
planatio n of the relevance, as 
it is presently  u
nderstood by the individual designated 
in § 1.56(c) most knowledgeable abo u
t the content of 
the information, of each pate nt, 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-lan -
guage document, or portion thereof, is within the pos -
session, custody, or control of, or is readily available to any in div
idual designated in § 1.56(c). 
(b)(1) Each U.S. patent li sted in an information 
disclosure statement must be  identified by inventor, 
patent number , an
d issue date.
(2) Each U.S. patent application public ation 
listed in an information disc losure sta
tement shall be 
identified by applicant, pate nt application publication 
number, and publication date.
(3) Each U.S. application listed in an infor -
mation disclosure statement must be identified by the inventor, application number , an
d filing date.
(4) Each foreign patent or published  foreig
n 
patent application l isted in  an information disclosure 
statement must be identified by the country or patent 
office  wh
ich issued the patent or published the appli -
cation, an appropriate docu ment number, and the pub -
lication date indicated on the patent or published 
application.
(5) Each publication liste d in an information 
disclosure statement must be identified by publis
her, 
author (if any), title, relevant pages of the publication, date, a
nd place of p
ublication.
(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 para -
graph (a) of this section may be submitted without 
copies of  the oth
er patents or publications, provided that it is stated that these other patents or publications 
are cumulative.
(d) A co py
 of any patent, publication, pending 
U.S. application or other in formation, as specified in 
paragraph (a) of this section,  listed in an information 
disclosure statement is requ ired to be provided, even 
if the patent, p u
blication, pending U.S. application or 
other information was prev iously submitted to, or 
cited by, the Office in an ea rlier application, unless:
(1) The earlier application is properly identi -
fied 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 
submitt ed in the earlier ap plication 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, effec -
tive 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 
patent s or publications relevant to a pending pub -
lished application may be en tered in the application 
file if the submission complies with the requirements 
of this section and the ap plication is still pending 
when the submission and application file
 are brought 
before the examiner.
(b) A submission under this section must iden -
tify the 
application to which it is directed by applica -
tion number and include:
(1) The fee set forth in § 1.17(p);
(2) A list of the patents or publications sub -
mitted for consideration by the Office, including the 
date of publication of e ach patent or publication;
(3) A copy of each listed patent or publica -
tion in written form or at le ast th
e pertinent portions; 
and
(4) An English language translation of all the 
neces sary and pertinent parts of any non-English lan -
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Page 82PATENT RULES § 1.103
R-81 Rev. 8, July 2010guage 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  un
der this section shall not 
include any explanation of the patents or publications, or any other 
information. The Office will not enter 
such explanation or informa tion if included in a sub -
mission under this section.  A submission under this 
section is also limited to te n total patents or publica -
tions.
(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 (§ 1.31 1), w
hichever is ear -
lier. Any submission under this section not filed 
within this period is perm itted 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 appli -
cation 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 memb er of the public f
iling a 
submission under this sec tion will not receive any 
communications from the Of fice relating to the sub -
mission other than the return of a self-addressed post-
card. In the absence of a request by the Office, an 
applicant has no duty to, an d need not, reply to a sub -
mission 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, effec -
tive Nov. 29, 2000; para. (f) corrected, 65 FR 66502, Nov. 6, 200 0, effective Nov. 29, 2000; paras. (d) and (e) revised, 
68 FR 3861 1
, 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, effec -
tive 
Dec. 1, 1997]
§  1.102 Advancement of examination.
(a) Applications will not be advanced out of 
turn for examination or for further action except as 
provided by this part, or  up
on order of the Director to 
expedite the business of the Office, or upon filing of a 
request under paragraph (b) of this section or upon fil -
ing a petition under paragraphs  (c) or (d) of this sec -
tion with a showing which,  in the opinion of the 
Director, will justify so advancing it.
(b) Applications wherein the inventions are 
deemed of peculiar importan ce to some branch of the 
public serv
ice and the head of some dep a
rtment of the 
Government requests immedi ate action for that rea -
son, 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 environ -
ment;
(ii)
Contribute to the development or con -
servation 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).
[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]
§  1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the 
applicant, the Office may grant a suspension of action 
by th
e Office under this paragraph for good and suffi -
cient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. 
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Page 83§ 1.103 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-82Any petition for suspension of action under this para -
graph must specify a period of suspension not exceed -
ing six months. Any petition for suspension of action 
unde r this paragraph must also include:
(1) A showing of good and sufficient caus e 
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 su spension of action in a continued 
prosecution application (CP A) filed under § 1.53(d) . 
On request of the applicant, the Office may gra
nt a 
suspension of action by the Office under this para -
graph in a continued prosecution application filed under § 1.53(d) for a peri od not exceeding three 
months. Any request for suspension of action under this paragraph must be file d with the request for an 
application filed u n
der § 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 § 1.11 4. On 
reques
t of the applicant, the Office may grant a sus -
pension of action by the Office under this paragraph after the filing of a reques t for continue d examination 
in compliance with § 1.114 for a period not exceeding 
three months. Any request for suspension of action under this  p
aragraph 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 examina -
tion under the conditions speci fied in this paragraph 
for a perio
d not extending beyond three years from 
the earliest 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 unde r this paragraph will not 
be granted unless:
(1) The application is an original utility or 
plant application fil ed under § 1.53(b) or resulting 
from entry of an internatio nal application into the 
national stage after compliance with §   1.495;(2) The applicant has not filed a nonpublica -
tion request un de
r § 1.213(a), or has filed a request 
under § 1.213(b) to rescind a previously filed nonpub -
lication request;
(3) The application is in condition for publi -
cation as provided in § 1.211(c); an d
(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. 1
51.
(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 safe ty or 
defense.  Th
e 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 detri -
mental to the public safety or defense; and
(3) The appropriate de pa
rtment or agency 
reque sts such suspension.
(g) Statutory invention registration . The Office 
will suspend action by the Office for the entire pen -
dency of an application if the Office has accepted a request to publish a statuto ry invention registration 
in 
the application, except for purposes relating to patent 
interference pro cee
dings 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, effec -
tive 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]
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Page 84PATENT RULES § 1.104
R-83 Rev. 8, July 2010§  1.104 Nature of examination.
(a) Examiner’ s action .
(1) On taking up an ap plication for examina -
tion or a patent in a reex amination proceeding, the 
examiner shall make a thorough study thereof and 
shall make a thorough inves tigation of the available 
prior art relating to the su bject matter of the cl aimed 
in
vention. The examination shall be complete with 
respect both 
to compliance of the application or patent 
under reexamination with th e 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 reexam -
ination proceeding, both the patent owner and the requester, will be notified of the examiner’s action. The reasons for any adverse action o
r 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 app licant, 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 a f
ter June 1, 
1978.
(4) Any national application may also have 
an international-type search report prepared thereon at 
the time of the nati onal ex amination on the merits, 
upon specific w
ritten 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 internat ional-type 
search be prepa red in order to obta in a search fe e 
refund in a later filed international applicati on.
(b) Co
mpleteness of examiner’s action . The 
examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as  
mis-
joinder of invention, fundamental defect s in the appli -
cation, and the like, the action of the examiner may be limited to such matters befo re further action is made. 
However, matters of form need not b
e raised by  the 
examiner until a claim is found allowable.
(c) Reject
ion of claims .
(1) If the invention is not considered patent -
able, or not considered patentable as claimed, the 
claims, or those consider ed unpatentable will be 
reject ed
.(2) In rejecting claims for want of novelty or 
for obviousness, the examiner must c ite the best 
refer -
ences at his or her command. When a refere nce
 is 
complex or shows or describes inventions other than  
tha
t 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.
(3) In rejecting claims the examiner may rely 
upon admissions by the applicant, or the patent owner 
in a reexamina t
ion proceed ing, 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 
und
er 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 th e time the claimed invention 
was made.
(i) Subject matter developed by another 
person  and a claimed invention shall be deemed to 
have been comm on
ly 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 sub -
ject matter was made by or on behalf of parties to a 
joint rese arch agreement th at was in effect on or 
before the date the clai med invention was made;
(B) The claimed invention wa s ma
de as 
a result of activities undertak en 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 agree -
ment.
(ii) For purposes of paragraph (c)(4)(i) of 
this s ection, the term “joint 
research agreement” 
means a written contract, grant, or cooperative agree -
ment entered into by two or more persons or entities 
for the perfo rmance of ex
perimental, developmental, 
or research work in the fiel d of the clai med invention.
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Rev. 8, July 2010 R-84(iii) To overcome a rejection under 35 
U.S.C. 103(a) based upon subject matter which quali-
fies 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 appli -
cant must provide a statement to the effect that the 
prior art and the claimed invention were made by or 
on the  be
half of parties to a joint research agreement, 
within the me anin
g of 35 U.S.C. 103(c)(3) and para -
graph (c)(4)(ii) of this section, that was in effect on or before the date the claimed invention was made, and that the claimed invention was ma 
de 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 pre -
cluded by a waiver in a published statutory inve ntio
n 
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 preclud ed
 by a waiver in a published statutory 
invention registration naming that inventor if the reis -
sue 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 inventio n 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 exam -
iner, their numbers and dates, and th
e names of the 
patentees will 
be stated. If domestic patent appli c
ation 
publications are cited by the examiner, their publica -
tion number, publication date, and the names of the applicants will be stated. If foreign published appl ica-
tions 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 ena
ble the a p
plicant, or in the 
case of a reexamination proceeding, the patent owner, 
to identify the publis hed applications or patents cited. 
In citing foreign published ap plications or patents, in 
case only a part of the docu ment is involved, the par -
ticular 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 c an be 
fo
und, 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  sup
ported, when 
called for by the applicant, by the affidavit of such employee, and such affidav it shall be subject to con -
tradiction or explanation by the affidavits of the appli -
cant and other persons.
(e) Reason s for allowance. If the examiner 
believes that the record of the prosecution as a whole 
does not make clear his or her reasons for allo wing a 
claim or c
laims, the examiner may set forth such rea -
soning. The reasons shall be incorporated into an Office action rejecting other claims of the application 
or patent under reexamination or be the subject of a 
separate communication to the applicant or patent 
owner. The applican t or 
patent owner may file a state -
ment commenting on the reas ons for allowance within 
such time  as may be specified by the examiner. Fail -
ure by the examiner to respond to any sta tement com -
me
nting 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, Se pt. 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, effec -
tive 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 , A
ug. 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)]
§  1.105 Requirements for information.
(a)(1) In the course of examining or treating a 
matter in a pending or aban doned application filed 
under 35 U.S.C. 111 or 371 (including a reissue appli -
cation), in a patent, or 
in a reexamination proceeding, 
the examiner or other Office employee may require 
the submission, from indivi duals identified under §  
1.56(c), or any assignee, of such informa t
ion as may 
IP/N/1/USA/D/2 
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R-85 Rev. 8, July 2010be reasonably necessary to properly examine or treat 
the matter, for example:
(i) Commercial databases : The existence 
of any particularly releva nt commercial databas
e 
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 w as sea
rched.
(iii) Related information : A copy of any 
non-patent literature, publis hed 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 appli -
cation, or patent (U.S. or foreign) that was used to 
draft the applicati
on.
(v) Information used in invention process : 
A copy of any non-patent literature, published appli -
cation, or patent (U.S. or foreign) that was used in the 
invention process , such as by designing around 
or 
providing a solution to ac complish an invention 
result.
(vi) Impr ovemen
ts: Where the cla
imed 
invention is an improv ement
, identification of what is 
being improved.
(vii) In Use:  Identification of any use of the 
claimed in vent
ion known to any of the invento r
s at 
the time the application was filed notwithstanding the 
date of the use.
(viii)  Technical information known to appli -
cant. Technical information known to applicant con -
cerning the related art, the disclosure, the claimed 
subject matter, other factual information pertinent to 
patentability, or concerning the accuracy of  
the exam -
iner’s stated interpretation of such items.
(2)
Where an assignee has asserted its right 
to prosecute pursuant to § 3.71(a) of this chapter, mat-
ters such as paragraphs (a)(1 )(i), (iii), and (vii) of this 
section may also be app lied to such a ssignee
.
(3) Requirements for factual information 
k
nown to applicant may be presented in any appropri -
ate manner, 
for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific 
questions seeking applican t’s factual knowledge; or
(iii) Stipulations as to facts with which the 
applica nt may agree or disagree.(4) A
ny reply to a requirement for informa-
tion pursuant to this section th at states either that the 
information required to be submitted i
s unknown to or 
is not readily available to the party or part ies from 
which 
it was requested may be accepted as a complete 
reply.
(b) The requirement for information of para -
graph (a)(1) of this sectio n may be included in an 
Office action, or sent separately.
(c) A reply, or a failure to reply, to a require -
ment for information unde r this section will be gov -
erned 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]
[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 
1969; para. (c) added, 47 FR 21752, May 19, 1982, effec -
tive 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, 1 997]
§  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, effec -
tive 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]
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Rev. 8, July 2010 R-86§  1.110 Inventorship and date of invention of the 
subject matter of individual claims.
When more than one inventor is named in an appli -
cation or patent, the Patent and Trademark Office, 
when necessary for purposes of an Office proceeding, 
may require an applicant, patentee, or owner to iden -
tify the inventive entity of th e subject matter of each 
claim in the application or patent. Where appropriate, 
the invention dates of the subject matter of ea
ch claim 
and the ownership of the subject matt er 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 (implementa -
tion 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 7 2
 FR 46716 from the 
CFR)]
ACTION BY APPLICANT AND FURTHER 
CONSIDERATION
§  1.111 Reply by applicant or patent owner to a 
non-final Office action.
(a)(1) If the Office action after the first examina -
tion (§ 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 procee ding, 
must reply
 and request reconsideration or further 
examination, with or w ithout amendment. See §§ 
1.135 and 1.136 for time for reply to avoid abandon -
ment.
(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 paragr aph 
(a)(2 )(ii) of this section. The 
Office may enter a supplemental reply if the supple -
mental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner sugges -
tion(s);
(C) Placement of the application in con -
dition 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 f iled within the period dur -
ing which action by the Of fic
e is suspended under § 
1.103(a) or (c).
(b) In order to be entitled to reconsideration or 
further ex amin
ation, the applicant or patent owner 
must reply to the Of fice
 action. The reply by the 
applicant or patent owner must be redu c
ed to a writ -
ing which distinctly and specifically points out the 
supposed errors in the examiner’s action and must 
reply to every ground of ob jection and rejection in the 
prior Office  action. The reply must present ar
guments 
pointing out the specific di stinctions believed to ren -
der the claims, including any newly presented claims, 
patentable over any applied references. If the reply is 
with respect to an applicat ion, a request may be made 
that objections or requirem ents as to form not neces-
sary 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 reexamin ation proceeding  to 
final 
action. A general allegation that the claims define a 
patentable invention withou t specifically pointing out 
how the language of the claims patentably distin -
guishes 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 paten t
 under reexamination, the 
applicant or patent owner must clearly point out the patentable novelty whi c
h he or she thinks the claims 
present in view of the state of the art disclosed by the 
references cited or the obj ections made. The applicant 
or patent owner must also show how the amendments avoid such references or objections.
[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]
§  1.112 Reconsideration 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 reexaminatio n requester (§ 1.947), the 
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Page 88PATENT RULES § 1.114
R-87 Rev. 8, July 2010application or the patent under reexamin ation 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, objectio ns 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 amen dment, 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 reexamin ation, 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]
§  1.113 Final rejection or action.
(a)  On the second or any subsequent examina -
tion or consideration by the examiner the rejec tion or 
other action may be made final, whereupon app l
i-
cant’s, or for ex parte  reexaminations filed under § 
1.510, patent owner’s reply is limited to ap peal in the 
case of reject
ion of any claim (§ 41.31 of this title), or 
to amendment as specified in § 1.114 or § 1.116. Peti-
tion may be taken to the Director in the case of objec -
tions or requirements not in volved in the rejection of 
any claim (§ 1.181). Reply to a final rejectio
n or 
action must comply with § 1.114 or paragraph (c) of 
this section. For final actio ns in an inter partes reex -
amination filed under § 1.913, see § 1.953.
(b) In making such final re jection, the examiner 
shall repeat or state all grounds of rejection then con-
sidered applicable to the claims in the application, 
clearly stating the reasons in support the
reof.
(c) Reply to a final rejection or action must 
include cancellation of, or appeal from the rej
ection 
of, each rejected claim. If a
ny claim stands allowed, 
the reply to a final reject ion 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, effec -
tive 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, ef fecti 
ve Sept. 13, 2004]
§  1.114 Request 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 
un
der § 1.313 is granted;
(2) Abandonment of the applicatio n; o
r
(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 comm encement 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 th at the application is under 
appeal, or that the last Office action is a final action (§ 
1.113), a no
tice 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 limite d to, an information disclo -
sure statement, an amendm ent to the written descrip -
tion, claims, or drawings, new arguments, or new 
evidence i n
 support of patentability. If reply to 
an 
Office action under 35 U.S.C. 132 is outstanding, the 
submission must meet the re ply 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 fo r co
ntinued examin ation 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 su bmission under this sec -
tion.
(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;
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Rev. 8, July 2010 R-88(3) An international ap plication filed under 
35 U.S.C. 363 before June 8, 1995;
(4) An application for a design patent; or
(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
§  1.115 Preliminary 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 .10
4. The 
patent application publication may include prelimi -
nary amendments  (§ 1.215 (a)).
(1) A preliminary amendment that is present 
on the filing date of an app lication is part of the origi -
nal disclosure of the application.
(2) A preliminary amendment filed after the 
filing dat
e of the application is not part of the original 
disclosure of the application.
(b) A preliminary amen dment in compli ance 
with § 1.121 will be entered unless disapproved by the 
Director
.
(1) A preliminary amendment seeking can -
cellation of all the claims withou
t presenting any  ne
w 
or substitute claims will be disapproved.
(2) A preliminary amendment ma y be
 disap -
proved if the preliminar y amendment unduly inter-
feres with the preparation of a first Office action in an 
application. Factors that will be considered in disap -
proving a preliminar y amendment include:
(i) The state of preparation of a first 
Office action as 
of the date of receipt (§ 1.6) of the 
preliminary amen dm
ent by the Office; and
(ii) The  
nature of any changes to the speci-
fication or claims that would result from entry of the preliminar y am
endment.
(3) A preliminary amendment will not be dis -
approved under (b)(2) o f
 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 prosecu -
tion application under § 1. 53
 (d); or
(iii) Three months from the date the 
national stage is entered as set fort h 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]
§  1.116 Amendments and affidavits or other evi -
dence after final action and prior to 
appeal.
(a) An amendment after final action must com -
ply with § 1.114 or this section.
(b) After a final rejection or o t
her final action 
(§ 1.113) in an application or in an ex parte  reexami-
nation filed under § 1.510, or an action clo s
ing prose -
cution (§ 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 a c
tion;
(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 un der 
reexamination may be 
admitted upon a showing of good and sufficient rea -
sons why the amendment is nece ssary and w
as not 
earlier presented.
(c) T
he admission of, or refusal to admi t, 
any 
amendment after a final rejection, a final action, an 
action closing prosecution, or any related proceedings 
will not operate t o
 relieve the application or reexami -
nation 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 .5
50(d) or § 1.957(b) or limita -
tion of further prosecution under § 1.957(c).
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R-89 Rev. 8, July 2010(d)(1)Notwithstanding the provisions of para -
graph (b) of this section, no amendment other than 
canceling claims, where su ch cancellation does not 
affect the scope of any othe r pen
ding claim in the pro-
ceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice un d 
er § 
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 othe r final action (§ 1.113) in 
an ex parte  reexamination filed under §1.510, or an 
action  cl
osing prosecution (§ 1.949) in an 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 pro-
ceeding 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 othe r final action (§ 1.113) in 
an application or in an ex parte reexamination filed 
u
nder § 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 admit -
ted 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 para -
graph (e) of this section, no  affidav
it or other evidence 
can be made in an inter partes reexamination proceed -
ing after the right of appeal n o
tice 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, amen dments, 
affida
vits and other evidence can only be made as pro -
vided in §§ 1.198 and 1 .98
1, 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, effec -
tive Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, 
effective May 29, 2000 (adopted as final, 65 FR 500 92, 
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 a nd 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, effec -
tive 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]
§  1.121 Manner of making amendments in appli -
cations.
(a) Amendments in applications, other than 
reissue applications. Amendments in applications, 
other tha
n reissue applica tions, are made by filing a 
paper, in compliance with § 1.52, directing that speci -
fied amendments be made.
(b) Specification . Amendments to the specifica -
tion, other than the claims, computer listings (§ 1.96) 
and sequence listings (§ 1.825) , mu
st be m
ade by add-
ing, deleting or replacing a paragraph, by replacing a 
section, or by a substitute sp ecification, in the manner 
specified in this section. 
(1) Amendment to delete, repla c
e, or add a 
para
graph. Amendments to the specification, includ -
ing amendment to a sectio n heading or the title of 
the invention which are considered fo r 
amendment 
purposes to be an amendmen t of a paragraph, must be 
made by submitting:
(i) A n 
instruction, which unambiguously 
identifies the location, to delete one or more para-
graphs of the specification, replace a paragrap
h with 
one or more replacement paragraphs, or add on e o
r 
more paragraphs;
(ii) The full text of any replacement para -
graph with markings to sh ow all the changes relative 
to the previous version of th e paragraph
. The text of 
any added subject matter must be shown by underlin -
ing the added text. The text of any deleted matter must be shown by strike-through except that double brack -
ets placed before an d 
after the deleted characters may 
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characters. The text of any deleted subject matter 
must be shown by being placed within double brack -
ets 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 n ot be presented with strik e
-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) Amendm ent by replacement section. If the 
sections of the specification contain section headings as provided in § 1.77(b), §  1.15
4(b), or § 1.163(c), 
amendments to th e specification, other than the 
claims, may be made by submitting:
(i) A reference to the section heading 
along with an instruction, which unambiguously iden -
tifies the location, to delete  that section of the specifi -
cation and to replace such  deleted section with a 
replacement s
ection; and;
(ii) A replacement section with markings 
to show all changes relative to  th
e previous version of 
the sec tion. The te
xt of any added subject matter must 
be sh ow
n 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 substit ute specification . 
The specification, other than  the claims, may also be 
amended by submitting:
(i) An instruction to replace the specifica -
tion; and 
(ii) A substitute specification in compli -
ance with §§  1.1
25(b) and (c).
(4) Reins tatement of prev iously deleted para-
graph or section . A previously deleted paragraph or 
section may be reinstated only by a subsequent 
amendment adding the previously deleted p a
ragraph 
or section. 
(5) Presentation in subse q
uent 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 
docume nt 
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 i
n this sub-
section, except when the cl aim is being canceled. 
Each amendment document th at includes a change to 
an existing claim, cancellation of an existing claim or 
addition of a new claim, must include a complet
e list -
ing of all claims ever presented, including the text of 
all pending and withdrawn cl aims, in the application. 
The claim listing, including th e text of the claims, in 
the amendment docu ment will serve to replace all 
prior versions of the claims, in the application. In the 
claim listing, the status of every claim must be indi -
cate
d after its claim number by using one of the fol -
lowing identifiers in a parenthetical expression: 
(Original), (Currently am ended), (Canceled), (With -
drawn), (Previously presented), (New), and (Not 
entered). 
(1) Claim listing. All of the claims presen t
ed 
in a claim listing shall be presented in ascending numerical order. Consecutive claims  ha
ving the same 
status of “canceled” or “not entered” may be aggre-
gated into one statement ( e.g., Claims 1–5 (can -
celed)). The claim listin g shall commence on a 
separate sheet of the amendment document and the sheet(s) that contain the text of
 any part of th e clai
ms 
shall not contain any other part of the amendment. 
(2) When claim text with markings is 
required. All claims being cu rrently 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 bee
n made relati ve 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 pe rceived. Only claims hav -
ing the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a 
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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 cur -
rently ame n
ded shall be presented in the claim listing 
in clean version, i.e., without any markings in the pre -
sentation of text. The presentation of a clean version 
of
 any claim having the status of “original,” “with -
drawn” or “previously pr esented” will constitute an 
assertion that it has not bee n changed relative to the 
immedia
te prior version, excep t to omit markings that 
may have b
een present in the immediate prior version 
of the claims of the status of “withdrawn” or “previ -
ously presented.” Any claim added by amendment must be indicated with the status of “new” and pre -
sented in clean version, i.e., without any underlining.
 
(4) When claim text shall not be presented; 
canc eling a claim.  
(i)
No claim text shall be pres ente
d for 
any claim in the claim listin g with the status of “can -
celed” 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 c l
aim in the claim 
listing as “canceled” will cons titute 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 draw -
ings shall be amended in the following manner: Any changes to an application drawing must be in compli -
ance with § 1.84 and must  be submitted on a replace -
ment sheet of drawings whic h 
shall be an attachment 
to the amendment document and, in th e top 
margin, 
labeled “ R
eplacement Sheet”. Any replacement sheet 
of drawings shall include al l of the figures appearing 
on the immediate prior versio n of the sheet, even if 
only one figure is amended. Any new sheet of draw -
ings containing an additional figure must be labeled in the top margin as “New Sheet”. All changes to the drawings shall be ex plained,  
in detail, in either the 
drawing amendment or remarks section of the amend -
ment paper.
(1) A marked-up copy of any amended draw -
ing figure, including a nnotations indicating the changes made, may be included. The marked-up copy must be c
learly labeled as “Annotated Sheet” and 
must be presented in the amendment or remarks sec-tion that explains the ch ange to the drawings.
(2) A marked-up copy of any amended draw -
ing figure, includ
ing an notations indicating the 
change s made, must be prov ided when required by the 
examiner.
(e) Disclosur e consistency. The disclo su
re must  
be amende
d, 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 intro -
duce new matter into the di sclosure of an application. 
(g) Exception for examin er’ s amendmen ts
. 
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 exam -
iner’s amendment by identif ying the precise point in 
the specification or the clai m(s) where the insertion or 
deletion is to be made. Co mpliance with paragraphs 
(b)(1), (b)(2), or (c) of th is section is not required.
(h) Amendment sections. Each section o
f an 
amendment document ( e.g., amen dm
ent to the claims, 
amendment to the specification, replacement draw -
ings, 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 w ith 
§ 
1.173.
(j) Amendments in reexamination proceedings. 
Any proposed amendment to the description and 
claims in patents involved in reexamination proceed -
ings must b
e made in accordance with § 1.530.
(k) Amendments in provis ional applications. 
Amendments in provisional applications are not usu -
ally made. If an amendment is made to a provisional 
application, however, it mu st comply  with the provi -
sions 
of this section. Any amendments to a provi -
sional application 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 
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effective Feb. 5, 2001; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003; pa ra. (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, effec -
tive Dec. 1, 1997]
§  1.124 [Reserved]
[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997]
§  1.125 Substitute specification.
(a) If the number or nature of the amendments 
or the legibility of the ap plication papers renders it 
difficult to consider the app lication, or to arrange the 
papers for printing or copy ing
, the Office may require 
the entire specification, including the claims, or any 
part thereof, be rewritten.
(b) Subject to § 1.312, a substitute specifica -
tion, 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 substitu te specification includes 
no new matter. 
(c) A substitute specification submitt
ed under 
this section must be submitte d 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 b y
 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 brack -
ets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must 
also be supplied. Numberin g the paragraphs of the 
specification of record is not considered a c h
ange that 
must be shown pursuant to this paragraph.
(d) A substitute specification under this section 
is not permitted in a reissue application or in a reex -
amination 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]
§  1.126 Numbering of claims.
The original numbering of the claims must be pre -
served throughout the prosecution. When claims are 
canceled the remaining claims must not be renum -
bered. When claims are ad ded, they must be num -
bered by t he app
licant con secutively beginning with 
the number ne xt fo
llowing the highest numbered 
claim prev io
usly presented (whether entered or not). 
When the application is ready for allowance, the 
examiner, if necessary, will renumber the claims con -
secutively 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]
§  1.127 Petition from refusal to admit amend -
ment.
From the refusal of the pr imary 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
§  1.129 Transitional 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 
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R-93 Rev. 8, July 2010365(c), is entitled to have a first submission entered 
and considered on the mer its 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 auto -
matically withdrawn upon the timely filing of the sub-
mission and payment of the fee set forth in § 1.17(r). 
If a subsequent final rejectio n is made in the applica -
tion, applicant is entitled to have a second  submis sion 
entered and cons
idered on the merits after the subse -
quent final rejection under the following circum -
stances: The Office will consider such a submission, if the  sec
ond submission and a second fee set forth in 
§ 1.17(r) are filed prior to the filing of an appeal brief 
and prior to aban do
nment of the application. The 
finality of the subsequent final rejection is automati -
cally withdrawn upon the tim ely filing of the submis -
sion and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection 
made in an application subs equent to the fee set forth 
in § 1.17(r) having been twice paid will be treated as 
set forth in §  1.116. A su bmission
 as used in this para -
graph 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 patentabil ity
.
(b)(1) In an application, ot her than for reissue or 
a design patent, that has been pending for at least 
three years as of June 8, 1 995
, taking into account any 
reference made in the applic ation to any earlier filed 
application under 35 U.S.C. 120, 121 and 365(c), no 
requirement for restriction or for the filing of divi -
sional 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. 12 0,
 121 and 365(c) prior to Ap ril 8
, 1995;
(ii) The examiner has not made a require -
ment for restriction in the present or parent applica-
tion prior to April 8, 1995 , due to actions by the 
applicant; or
(iii) The required fee for examination of 
each additional inven tion was not paid.
(2) If the 
application contains more than one 
independent and distinct inventio
n and a requirement 
for restriction or for the filing of divisional applica -tions cannot be made or maintained pursuant to t h
is 
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 th e no
tice, and pay the fee set f o
rth 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 petit
ion under this section tra -
versing the requirement. If the r equired petition is 
filed in a timely manner, th e original time period for 
electing and paying the fee set forth in § 1.17(s) will 
be deferred and any decision on the petition affirming or modifying the requi rement will set a new t
ime 
period to elect the inven tion 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 inve ntions 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 th is section shall not be 
applicable to any applicati on filed after June 8, 1995.
[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995]
AFFIDA VITS OVERCOMING REJECTIONS
§  1.130 Affidavit or declaration to disqualify 
commonly owned patent or published 
application as prior art.
(a) When any claim of an application or a 
patent under reexamina tion is rejected under 
35 U.S.C. 103 on a U.S. patent or  U.S. 
patent applica -
tion 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 
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Page 95§ 1.131 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-94not identical but are not pa tentably distinct, and the 
inventions are owned by the same party, the applicant 
or owner of the patent under reexamination may dis -
qualify 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 ar e curren
tly owned by the 
same party, and that the  
inventor named in the appli -
cation 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]
§  1.131 Affidavit or declaration of prior inven -
tion.
(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 reexaminatio n, or the party qualified 
un
der §§ 1.42, 1.43, or 1.47, may submit an appropri -
ate oath or declaration to  establish invention of 
the subject matter of the rejected claim prior to the 
effective date of the refere nce or activity on which the 
rejection is based. The effective date of a U.S. patent, 
U.S. patent application publ ication, or international 
applicati
on publication unde r PCT Art
icle 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 coun -
try other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this sec tion before December 8, 
1993, in a NAFTA country oth er 
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 unde r this section if either:
(1) The rejection is base d upon a U.S. patent 
or U.S. patent application publication of a pending or 
patented application to anot her or others which claims 
the sam e pa
tentable 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 char -
acter and weight, as to establish reduction to practice 
prior to the ef fective date 
of the reference, or concep -
tion of the invention prior to the effective date of the 
reference coupled with due diligence from prior to 
said date to a subsequent re duction to practice or to 
the filing 
of the application.  Original exhibits of draw -
ings or records, or photocopies thereof, must accom -
pany
 and form part of the affidavit or declaration or 
their absence must be  satisfactorily expla ined.
[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, effec -
tive 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, 20 00, ef
fec-
tive 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 ]
§  1.132 Affidavits 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 not otherwise prov ided
 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
§  1.133 Interviews.
(a)(1)Interviews with examiners concerning 
applications and other matters pending before the 
Office must be conducted on Office premises and 
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R-95 Rev. 8, July 2010within Office hours, as the respective examiners may 
designate. Interviews will not be permitted at any 
other time or place without the authority of the Direc -
tor.
(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 applicati on.
(3)
The examiner may re quire that an inter -
view be scheduled in advance.
(b) In every instance where reconsideration is 
reques ted in view of an in terview 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 Of fice actions as specified in 
§§ 1.111 and 1.135.
[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effec -
tive Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 
143
32, 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
§  1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any 
non-statutory or shortened statutor y 
time period set 
for reply to an Office actio n. 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]
§  1.135 Abandonment for failure to reply within 
time period.
(a) If an applicant of a patent application fails 
to reply within the time peri od provided under § 1.134
and §  1.136, the application will become abandoned 
unless  
an Office action indicates otherwise.(b) Prosecution of an applic ation to save it from 
ab
andonment pursuant to paragraph (a) of this s ectio
n 
must include such complete  and proper reply as the 
condition of the applicatio n may require. The admis -
sion of, or refusal to adm it, any amendment after final 
rejection or any amendment no t responsive to the last 
action, or any related procee dings, will not operate to 
save the applicatio n from abando nm
ent.
(c) When reply by the applicant is a bona fide
attempt to advance the applic ation to final action, and 
is substantially a complete reply to the non-final 
Office action, but consideratio
n of some matter or 
compliance with some requirement has been inadvert -
ently omitted, applicant ma y be gi ven a new t ime 
period for reply under §  1.134 to supply the o mission .
[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]
§  1.136 Extensions of time.
(a)(1) If an applicant is re quired to reply within 
a nonstatutory or shortened statutory time period, 
applicant may exte nd 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 re ply brief submitted 
pursuant to § 41.41 of this title;
(iii) The reply is a request for an oral hear -
ing submitted pursuant to § 41.47(a) of this ti tle;
(iv)
The reply is to a decision by the Boa r
d 
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 con-
tested case (§ 41.101(a) of thi
s 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 correspond i
ng amount 
of the fee. The expiration of the time period is deter-
mined by the amount of the fee paid. A reply must be 
filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), 
but in no situation may an applicant reply later than 
th
e maximum time period set by statute, or be granted 
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Rev. 8, July 2010 R-96an extension of time under paragraph (b) of this sec -
tion when the provisions of  this paragraph are avail-
able. 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 pro c
eedings, § 1.956
for extensions of time in inter partes reexamination 
pr
oceedings; 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 
applicati on that is an auth orization to treat any con-
current or future reply, requiring a petition for an extension of time under this paragraph for its timely 
submission, as incorporatin g a petition for extension 
of time for the appropriate length of time. An authori -
zation to charge a l
l required fees, fees un de
r § 1.17, or 
all requi red 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 trea ted as a constructive petition 
for an extensio n of time in an
y concurrent reply 
requiring a petition for an ex tension of time under this 
paragraph for its timely submission.
(b) When a reply cannot be filed within the time 
period s et for su
ch reply and the provisions of para -
graph (a) of this section are not available, the period 
for reply will be extended only for sufficient cause 
and for a reas onable time
 specified. Any request for 
an extension of time under this paragraph must be 
filed on or before th e day 
on which such reply is due, 
but the mere filing of such a request will not affect any extension under this pa ragraph. In no situation 
can any extension carry the da te 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 Fe deral Circuit or to com -
mence a civil action; § 1.550( c) for extensions of time 
in ex parte  reexamination proceedings; §  1.956 for 
extensions of ti
me in inter partes reexamination pro -
ceedings; and §§ 41.4(a) and 41.121(a)(3) of this title 
for extensions of time in contes te
d cases before the 
Board of Patent Appeal s and Interferences. Any 
reques
t under this se ction
 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 con -
dition for allowance, the following time periods are 
not extendable if set in th e “Notice of Allowability” 
or in an Office action havi ng a mail date on or after 
the mail date of the “Noti
ce of Allowability”:
(1) The period for submitting an oath or dec -
laration in complia nce with §  1.
63;
(2) The period for submitting formal draw -
ings set under § 1.85(c); and
(3) The period for making a depo sit set un
der 
§ 1.8 09(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 (implementa-tion enjoined and never becam e effective); para. (a)(1) 
revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 
2009 (to remove changes made by the final rule s in 
 72 FR 
46716 from the CFR)]
§  1.137 Revival of abandoned application, termi-
nated  or limited reexamination prosecu-
tion, or lapsed patent.
(a) Unavoidable. If the delay in reply by appli -
cant or patent owner was unavoidable, a petition may be filed  pursuant t o this paragraph  to revive an aban-
doned applica tion, a reexam ination prosecution termi -
nated u nder §§ 1.550(
d) or 1.957(b) or limited un der 
§ 
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  showi
ng to the satisfaction of the 
Director that the entir e delay in filing the required 
reply from the due date for the reply until the filing of 
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Page 98PATENT RULES § 1.137
R-97 Rev. 8, July 2010a 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  ap
pli-
cant or patent owner was unintentional, a petition may 
be filed pursuant to this paragraph to revive an aban-
doned applicat ion, a reex amination prosecution te rmi-
na
ted under §§ 1.550(d) or 1. 95
7(b) or limited under 
§ 1.957(c), or a lapsed patent. A grantable petition 
pursuant to this paragraph must be accompanied by:
(1) T
he reply required to the outstanding 
Office action or notice, unless previously filed;
(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 para -
graph was un in
tentional. The Director may require 
additional information where there is a question 
whether the delay w as 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 a
ban-
doned for fai lure to
 prosecut e, 
the required reply may 
be met by the filing of a co ntinuing application. In a 
nonprovisional utility or plant application filed on or 
after June 8, 1995, and ab an
doned for failure to prose -
cute, 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, aban
doned 
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 outstand ing balance. In an appli -
cation, abandoned for failure to pay the publication 
fee, the required reply mu st include payment of the 
publication fee.
(d) Terminal disclaimer .
(1) A ny petition to revive  pursuant
 to this 
section in a design applica tion must be accom pa
nied 
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 peti -
tion 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 equiva -
lent 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 Unite d States or, if the applica -
tion contains a specific reference to a n
 earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), 
from the date on which the earliest such a p
plication 
was filed.
(2) Any terminal disclaimer pursuant to para -
graph (d)(1) of this sectio n must also apply to any 
patent granted on a continui ng utility or plant applica -
tion filed befo re Jun
e 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 app lications for which revival 
is sought solely for purposes of copendency with a utility or plant application f iled on or after June 8, 
1995, to laps ed
 patents, to reissue applications, or to 
reexamination proceedings.
(e) Request for reconsideration . Any request 
for reconsideration or review of a decisi on refusing
 to 
revive an abandoned appli cation, a terminated or lim -
ited reexamination prosecution,  or lapsed patent upon 
petition filed pursuant to this section, to be considered 
timely,  must 
be filed within two months of the deci -
sion refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time peri od may be 
extended under:
(1) The provisions of § 1.136 for an aban -
doned application or lapsed patent;
(2) The provisions of § 1.550(c) for a termi -
nated ex parte  reexamination prosecution, where the 
ex parte  reexamination was filed under § 1. 51
0; or
(3) The provisions of § 1.956 for a termi -
nated inter parte s reexamination prosecution or an 
inter partes   reexamination limited as to further prose -
cution, where the inter partes  reexamination was filed 
un
der § 1.913.
(f) Abandonment for failur e to notify the Office 
of a foreign filing : A nonprov i
sional a pp
lication aban -
doned pursuant to 35 U.S.C.  122(b)(2)(B)(iii) for fail -
ure to timely notify the Office of the filing of an 
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Page 99§ 1.138 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-98application in a foreign country or under a multina -
tional treaty that requires pu blication of applications 
eighteen months after filing,  may be revived only pur -
suant 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 pro
visional 
application, abandoned for failure to timely respond 
to an Office requirement, may be revived p u
rsuant to 
this section. Subject to th e 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 , ef
fec-
tive 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) in
troductory text, (b) introductory text, and (e) revised, 
72 FR 18892, Apr. 16, 2007, effective May 16, 2007]
§  1.138 Express abandonment.
(a) An application may be expressly abandoned 
by filing a written declara tion of abandonment identi -
fying the application in th e United  States Patent and 
Trademark Office. Express abandonment of the appli -
cation  may no
t 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 sig
ned by a party authorized under § 1.33(b)(1), 
(b)(3), or (b)(4) to sign a paper in the application, 
except as otherwis e provide
d in this paragraph. A reg -
istered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of §  
1.34(a) when filing a con tinuing application, may 
expressly abandon the prior application as of the fil -
ing date granted to th e continuing ap plicatio
n.
(c) An applicant seeking to  abandon an applica -
tion to avoid publication of the application (see § 1.211(a)(1)) must submit a decla
ration of express 
abandonment by way of a petition under thi s
 para -
graph including the fee set fo rth in § 1.17(h) in suffi -
cient time to permit the appropriate officials  to 
re
cogniz e the
 abandonment and rem ov
e the applica -
tion from the pu bli
cation proc ess. Applicants should 
expect that the petition will not be granted and the 
application will be publishe d in regular course unless 
such declaration of expr ess abandonment and petition 
are received by the appropriate officials more than four weeks prior to the projected  d
ate of publication.
(d) An applicant seeking to abandon an applica -
tion 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 applica-
tion, must submit a declaration of express abandon -
ment by way of a petition un der this paragraph before 
an examination ha s be
en made of the application. The 
date indicated on any cer tificate of mailing or trans -
mission under § 1.8 will not be taken into account in 
determining whether a petitio n 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 w ithin two months from the 
date on which the declara tion of express abandonment 
under this paragraph was file d, 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 examina -
tion 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]
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Page 100PATENT RULES § 1.145
R-99 Rev. 8, July 2010JOINDER OF INVENTIONS IN ONE 
APPLICATION; RESTRICTION
§  1.141 Different inventions in one national 
application.
(a) Two or more independent and distinct 
inventions may not be claimed in one national appli -
cation, exc
ept that more than one species of an inven -
tion, not to exceed a reas onable number, may be 
specifically claimed in different claims in one national 
application, provided the ap plication al so includes an 
allow
able 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, prod -
uct, 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 o
f 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]
§  1.142 Requirement for restriction.
(a) If two or more independent and distinct 
inventions are claimed in a single application, the 
examiner in an Office actio n will require the applicant 
in the reply to th at action to elect an invention to 
which the claims will be restricted, this of fi
cial 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 howeve r to reins
tatement in the event 
the requirement for restric tion is withdrawn or over -
ruled.
[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effec -
tive Dec. 1, 1997;  para. (a) revised and (c) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and neve r 
became ef
fective); 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)]
§  1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for 
restriction, he may request reconsideration and with -
drawal or modification of th e requirement, giving the 
reasons therefor. (Se e § 1. 1
11). In requesting recon-
sideration 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 fina l. The requirement for 
restriction will be reconsid ered on such a  reques
t. If 
the requirement is repeated and made final, the exam -
iner will at the same time act on the claims to the 
invention elected.
§  1.144 Petition from requirement for restriction.
After a final requirement for re striction, the appli -
cant, in addition to maki ng 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 a llowance of claims to the 
invention elected, 
but must  be filed not later  than 
appeal. A petition wi
ll not be  considered if reconsid -
eration 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]
§  1.145 Subsequent presen tation of claims for 
different invention.
If, after an office action on an application, the 
applicant presents claims di rected to an invention dis -
tinct from and independent of the invention previ -
ously claimed, the applicant will be required to 
restrict the claims t o
 the invention previousl y
 claimed 
if the amendment is  entered, subject to reconsidera -
tion and review as provid ed
 in §§ 1.143 and 1.144.
[Revised, 72 FR 46716, Aug. 21, 2007 (implementa -
tion enjoined and never became effective); revised, 74 FR 
52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove 
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Rev. 8, July 2010 R-100changes made by the final rules in 72 FR 46716 from the 
CFR)]
§  1.146 Election of species.
In the first action on an application containing a 
generic claim to a generic invention (genus) and 
claims to more than one pa tentably distinct specie s 
embrac
ed thereby, the ex aminer may require the 
applicant in the reply to th at action to elect a species 
of his or her invention to which his or her claim will 
be restricted if no claim to the genus is found to be 
allowable. However, if such application contains claims directed to more th an a reasonable number of 
species, the examiner may re quire restriction of the 
claims to not more than a reasonable number of spe -
cies 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
§  1.151 Rules applicable.
The rules relating to applications for patents for 
other inventions or discoveri es are also applicable to 
applications for patents for designs except as other -
wise provided .
§
  1.152 Design drawings.
  The design must be represented by a drawing that 
compli es 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 surface s 
represented. 
Solid black surface shading is not permit -
ted except when used to represent the color black as 
well as color contrast. Brok en lines may be used to 
show visible environmental structure, but may not be 
used to s h
ow hidden planes and surfaces that cannot 
be seen through opaque mate rials. Alternate positions 
of a design component, illu strated by full and broken 
lines in the same view ar e not permitted in a design 
drawing. Photographs and ink drawings are not per -
mitted to be combined as formal drawings in one 
applicati on. Photographs submitted in lieu of ink 
drawings in design patent applications must not dis -close environmental structur e 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]
§  1.153 Title, description and claim, oath or dec -
laration.
(a) The title of the design must designate the 
particular article. No description, other than a refer -
ence to the drawing, is ordinarily required. The claim 
shall be in formal terms to  the ornamental design for 
the article (specifying name) as sh own, 
or as shown 
and described. More than one claim is neither 
required nor permitted.
(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]
§  1.154 Arrangement of a pplication 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 follow-
ing sections in order:
(1) Preamble, stating th e name of the appli -
cant, 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 regard
ing federally sponsor ed
 
research or development.
(4) D
escription of the figure or figures of the 
drawing.
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R-101 Rev. 8, July 2010(5) Feature description.
(6) A single claim.
(c) The text of the specification sections 
defined in paragraph (b) of th is section, if applicable, 
should be preceded by a section heading  in u
ppercase 
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]
§  1.155 Expedited examination of design applica -
tions.
(a) The applicant may re quest 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 con ducted 
a pre -
examination 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 indi -
cate the fie l
d 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 examinatio n 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, 6 5
 FR 54604, Sept. 8, 2000, effective Sept. 
8, 2000]
PLANT PATENTS
§  1.161 Rules applicable.
The rules relating to applications for patent for 
other inventions or discoveri es are also applicable to 
applicati ons fo
r patents fo r plants except as otherwise 
provided.§  1.162 Applicant, oath or declaration.
The applicant for a plant patent must be the person 
who has invented or discovered and asexually repro -
duced the new and d istinct variety o
f plant for which a 
patent is sought (or as provided in §§ 1.42 , 1.4
3, and 
1.47). The oath or declaration required of the appli -
cant, in addition to the aver ments 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]
§  1.163 Specification and arrangement of appli -
cation elements in a plant application.
(a) The specification must contain as full and 
complete a disclosure as po ssible of the plant and the 
characteristics thereof that distinguish the same over 
related known varieties, a
nd 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 ch aracter of the area where 
the plant was discovered.
(b) The elements of the plant application, if 
applicable, should appear  in the following order:
(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 follow-
ing sections in order:
(1) Title of the inventio n, 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 applica t
ion data sheet).
(3) Statement regarding federally sp onso
red 
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.
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Page 103§ 1.164 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-102(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 underlin ing 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, effec -
tive Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]
§  1.164 Claim.
The claim shall be in form al terms to the new and 
distinct variety of the speci fied plant as described and 
illustrated, and may also recite the principal distin -
guishing characteristi cs
. Mo re than one claim is not 
permitted.
§  1.165 Plant Drawings.
(a) Plant patent drawings  should be artistically 
and competently executed and must comply with the 
requirements of § 1.84. View numbers and reference 
charac
ters need not be em ployed unless required by 
the examiner. The drawing must disclose all the dis-
tinctive 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 character -
istic 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, effec -
tive Nov. 29, 2000; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  1.166 Specimens.
The applicant may be required to furnish specimens 
of the plant, or its flower or fruit, in a quantity and at a 
time in its stage of growth as may be designated, for 
study and inspection. Such specimens, properly 
packed, must be forwarded in conformity with 
instructions furnished to th e applicant. When it is not possible to forward such specimens, pla
nts must be 
made available for official inspection where grown.
§  1.167 Examination.
Applications may be subm itted 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
§  1.171 Application for reissue.
An application for reissue must contain the same 
parts required for an applicat ion for an original patent, 
complying with all the rule s relating thereto except as 
otherwise provided, and in  addition, must comply 
with the requirements of th e 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]
§  1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to 
or declaration made by the inventor or inventors 
except as otherwise provided (see  §§ 1.42, 1.43, 
1.47), and must be accom panied by the written con-
sent of a l
l assignees, if any, owning an undivi de
d 
interest in the patent, but a reissue oath may be made 
and sworn to or declaration made by the assignee of 
the en
tire interest if the application does not seek to 
enlarge the scope of the claims of the original patent. All assignees consenting to th e 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 pat -
entee, his legal representatives or as signs as the inter -
est 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]
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Page 104PATENT RULES § 1.173
R-103 Rev. 8, July 2010§  1.173 Reissue specification, drawings, and 
amendments.
(a) Contents of a reissue application . An appli -
cation for reissue must cont ain the entire specifica -
tion, including the claims, and the drawings of 
the patent. No new matter shall be introduced into 
the application. No reissue patent sha l
l be gra
nted 
enlarging the scope of the claims of the original patent 
unless applied for within two years from t
he grant of 
the original patent, pursuant to 35 U.S.C. 251.
(1) Specification, including claims.  The 
entire specification, including the claims, of the pa te
nt 
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 th e 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 cor -
rection (§§ 1.322 through 1.324), or reexamination certificate (§ 1.570) issued in the patent  must be 
included. (See also § 1.178).
(2) Drawin gs. Applicant must submit a clean 
co
py of each drawing sh ee
t 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 re lative to the patent being 
reissued, the changes to the  draw
ing 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 applica -
tion. An amendment in a reissue application is
 made 
either by physically incorp orating the changes into the 
specification when the applic ation is filed, or by a 
separate amendme n
t paper. If amendment is made by 
incorporation, markings purs uant 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 pur -
suant to paragraph (d) of this section, except that an entire paragraph may be deleted 
by a statement delet-
ing the paragrap h with
out pr esentation of the text of 
the paragraph. The precise point in t h
e specification 
must be identified where any added or rewritten para -
graph is located. This paragraph applies whether the amendment is  submitted on  paper or compact disc 
(see §§ 1.52(e)(1) an d 1.8
21(c), but not for discs sub -
mitted under § 1.821(e)).
(2) Claims. An amendment paper must 
incl
ude 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 pa renthetical expression 
“amended,” “twice amended,” etc., should follow the 
claim number. Each change d patent claim and each 
added claim must include markings pursuant to para -
graph (d) of this section, ex cept that a patent claim or 
added claim should be can celed by a statement can-
celing the claim without presentati
on of the text of the 
claim.
(3) Drawings. One or more patent drawings 
shall be amended in th e following manner : Any 
changes to 
a patent drawin g must be submitted as a 
replacement sheet of drawings which shall be an 
attachment to the amendm ent document. Any replace -
ment sheet of drawings must be in compliance with § 
1.84 and shall include all of the fi gures ap peari ng on 
the original version of the sheet, even if only one fig -
ure is
 amended. Amended figures must be identified 
as “A mended,” and any adde d figure must be identi -
fied as “New.” In the event that
 a figure is canceled, 
the figure must be surro un
ded by brackets and identi -
fied as “Canceled.” All changes to the drawing(s) 
shall be explained, in deta il, beginning on a separate 
sheet accompanying the pape rs inc l
uding the amend -
ment 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 pres
ented 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 the 
changes made, must be prov ided when required by the 
examiner.
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Page 105§ 1.174 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-104(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 ch anges, the status ( i.e., 
pending or canceled), as of the date of the amend -
ment, 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 amen
dment paper in the reissue application, 
must include the following markings:
(1) The matter to be om itted by re is
sue must 
be enclosed in brackets; and
(2) The matter to be added by reissue must be 
underlined, exc ept fo
r amendments submitted on 
compact discs (§§ 1.96 and 1.821(c)). Matter added 
by reissue on c o
mpact disc s 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 
fol-
low the number of the highest numbered patent claim.
(f) Amendment of disclosure may be required . 
The disclosure must be a
mended, when required by 
the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specifica -
tion, and the drawings.
(g) Amendments made re lative to the patent.  All 
amendments must be made relative to the patent spec -
ification, including the cl aims, and drawings, which 
are in ef fect as of the da te 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]§  1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition 
to complying with the requ irements of § 1.63, must 
also state that:
(1) The applicant believes the original patent 
to be wholly or partly inop erative or invalid by reason  
of a de
fective specification or drawing, or by reason 
of the patente e cla
iming more or less than the patentee 
had the right to claim in the patent, stating at least one 
error being relied upon as th e basis for reissue; and
(2) All errors being corrected in the reissue 
application up to the time of  filing of the oath or dec -
laration under this paragraph arose without any decep -
tive intention on the part of the applicant.
(b)(1) For any error corr ected, whic h is not cov -
ered by the oath or decl aration submitted under para-
graph (a) o f this sect
ion, applicant must submit a 
supplemental oath or declaration stating that every 
such e
rror arose without any deceptive intention on 
the part of the applicant. Any supplemental oath or declaration required by this paragraph must be sub -
mitted before allowanc e and may be submitted:
(i) With any amen dmen t prio r to allow-
ance; or
(ii) In order to overcome a rejection under 
35 U.S.C. 251 made by 
the examiner where it is indi-
cated that the submission of a supplemental oath or 
declarati on as required by this paragraph will over -
come 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 corr
ected arose without any decep
tive 
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 decla -
ration are no longer b
eing 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 o r
 declaration required by para -
graph (a) of this section may be submitted under the 
provisions of § 1.53(f).
(e) The filing of any continuing reissue applica -
tion which does not replace its  parent reissue a pplica -
tion must include an oath  or declaration which, 
pursuant to paragraph (a)(1) of this section, identifies 
IP/N/1/USA/D/2 
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Page 106PATENT RULES § 1.178
R-105 Rev. 8, July 2010at 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.
[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]
§  1.176 Examination of reissue.
(a) A reissue application will be examined in 
the same manner as a non-reissue, non-provisional 
application,  an
d will be subj ect to all the requirements 
of the rules related to non -reissue applications. Appli -
cations for reissue will be ac ted on by the examiner in 
advance of other applications.
(b) R estrict
ion between subject matter of the 
original patent claims and previously un claim
ed sub -
ject 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 clai ms will be held to be con
-
structively elected unless a disclaimer of all the patent claims is filed in the reissue application, which dis -
claimer cannot be withdrawn by applicant.
[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000]
§  1.177 Issuance of multiple reissue patents.
(a) The Office may reissu e a patent as multiple 
reissue patents. If applicant files more than one appli -
cation for the reissue of a single patent, each su
ch 
application must contain or be amended to contain in 
the first sentence of the s p
ecification a notice stating 
that more than one reissue application has been filed and identifying each of th e 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 applica -
tion to which this paragraph applies that does not con -
tain the required notice.
(b) If applicant files more  than one application 
for the re is
sue of a single 
patent, each claim of the patent being reiss u
ed 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 th an 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 hi ghest 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 i n 
 con-
dition for allowance, the Office may suspend action in the allowable 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 appli cations into a single reis -
sue application. No reissu e applicat ion 
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]
§  1.178 Original patent; continuing duty of appli -
cant.
(a) The application for reissue of a patent shall 
constitute an offer to surre nder 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 proc eedin
gs in which the 
patent (for which reissue is requested) is or was 
involved, such as interferences, reissues, reexamina -
tions, or litigations and the r esults 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]
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Rev. 8, July 2010 R-106§  1.179 [Reserved]
 [Removed and reserved, 69 FR 56481, Sept. 21, 2004, 
effective Oct. 21, 2004]
PETITIONS AND ACTION BY THE 
DIRECTOR
§  1.181 Petition to the Director.
(a) Petition may be take n to the Director:
(1) From any action or requirement of any 
examiner in the ex parte prosecution of an applica-
tion, or in ex parte or inter partes prosecution of a 
reexamination proceeding which is not subject to 
appe
al to the Board of Patent Appeals and Interfer -
ences or to the court; 
(2) In c ases
 in which a statute or the rules 
specify that the mat ter is to  be determined directly by 
o
r reviewed by the Director; and
(3) To invoke the supervisory authority of the 
Director in appropriate circumstances. For petitions 
involving action of the Boar d of Patent Ap
peals and 
Interferences, see § 41.3 of this title.
(b) Any such petition must contain a statement 
of the facts involved an d the point or points 
to be reviewed an
d the action requested. Briefs or 
memoranda, if any, in su pport thereof should accom -
pany or be em
bodied in the petition; an d
 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 prosecu -
tion of an applicatio n, or in th
e 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 ma y be directed by the 
Director to furnish a written statement, within a speci -
fied time, setting forth the reasons for his or her deci -
sion 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 fe e 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 
applica
tion, 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 relie
f is requested may be dismis sed 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 d e
termina -
tion 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]
§  1.182 Questions not specifically provided for.
All situations not specifically provided for in the 
regulations of this part will be decided in accordance 
with the merits of each situation by or under the 
authority of the Director, subject to such other 
requirements as may be impos
ed, and such decision 
will be communicated to the interested parties in writ -
ing. Any petition seeking a de cision under this section 
must be accompanied by th e 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, effec -
tive Nov. 22, 2004]
§  1.183 Suspension of rules.
In an extraordinary situatio n, when justice  requires, 
any requirement of the regulations in thi s part 
which  is not a requirement of the st atutes may be sus -
pended or waived by the Di rector or the Director ’s 
designee , sua sponte, or on petition of the interested 
party , subjec t to such other requirements as may 
be 
imposed. Any petition unde r this section must be 
accompanied by the petitio n fee set forth in §  1.17(f).
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Page 108PATENT RULES § 1.197
R-107 Rev. 8, July 2010[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
§  1.191 Appeal to Board of Patent Appeals and 
Interferences.
Appeals to the Board of Patent Appeals and Inter-
ferences under 35 U.S.C. 134(a) and (b) are con-
ducted 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 effec -
tive July 1, 1982; para. (b), 50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 53 FR 23735, June 23, 1988, effec -tive Sept. 12, 1988; para. (c) deleted
, 57 FR 2021, Jan. 17, 
1992, effective Mar. 16, 1992; para. (b) revised, 58 FR 
54504, Oct. 22, 1993, ef fective 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) revi sed, 
58 FR 54504, Oct. 22, 1993, effec -
tive Jan. 3, 1994; revised,  62 FR 53 131, 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, effec -
tive Jan.  3, 199
4; paras. (b) & (d) revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; remove d and 
reserved, 69
 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004]
§  1.197 Return of jurisdiction from the Board of 
Patent Appeals and Interferences; termi-
nation of proceedings.
(a) Return of jurisdiction from the Board of 
Patent Appeals and Interferences.  Jurisdiction over an 
application or patent under ex par t
e reexamination 
proceeding passes to the exam iner after a decision by 
the Board of Patent Appeals and Interferences upon transmittal of the file 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
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 109§ 1.198 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-108reexamination proceeding ma y require, to carry into 
effect the decision of the Board of Patent Appeals and 
Interferences.
(b) Termination of proceedings .
(1) Proceedings on an application are consid -
ered terminated by the dism issal 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 
applicati on;
 or
(ii) Where the nature of the decision 
requires further action by the examiner.
(2) The date of termination of proceeding s o
n 
an application is t h
e date on which the appeal is dis -
missed or the date on which the time for appeal to the 
U.S. Court of Appeals fo r the Federal Circuit or 
review by  ci
vil action (§ 1.304) expires in the absenc e 
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 judgme nt 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.
[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, effec -
tive Jan. 3, 1994; paras. (a) & (b) revised, 62 FR 53131, Oct. 10, 199 7, effective Dec. 1, 1997; para. (c) revised, 68 
FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 49959, Au
g. 12, 2004, effective Sept. 13, 2004]
§  1.198 Reopening after a final decision of the 
Board of Patent Appeals and Interfer -
ences.
 When a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judi-
cial review, prosecution of the proceeding before the 
primary examiner will not be reopened or reconsid -
ered by the primary examiner except under the provi -
sions of § 1.1
14 or § 41.50 of this title without the 
written authority of the Director, and then only for the consid
eration of matters no t already adjudicated, suf -
ficient 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
§   1.211 Publication of applications.
(a) Each U.S. national application for patent 
filed in th e Of fice un der 35 U.S.C.  111(a) and 
each international applicat ion in compliance with 
35 U.S.C. 371 will be published promptly after the 
expiration of a period  of eig hteen months
 from the 
earliest filing date for whic h 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 clas -
sified (see § 5.2(c)), subject to a secrecy order under 
35 U.S.C. 181, or under nation
al security review; 
(3) The application has issued as a pate n
t in 
sufficient time to be re moved from the publication 
process; o
r 
(4) The application was filed with a nonpub -
lication 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 3 5
 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 decla -
ration  un
der § 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 ha ving 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 ap plica -
bl
e), and until any petition un der § 1.47 is granted. 
(d) The Of fice may refuse to publish an appli -
ca
tion, or to include a portion of an applicat ion in the 
IP/N/1/USA/D/2 
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Page 110PATENT RULES § 1.215
R-109 Rev. 8, July 2010patent 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 applic ation published under this 
section before the patent will be granted. If an appli -
cation is subject to publica tion under this section, the 
sum specifie d 
in the notice of allowance under § 1.311
will also include the publi cation fee which must be 
paid within three months fro m the date of mailing of 
the notice of al lowance to av
oid abandonment of the 
application. This three-mo nth period is not extend -
able. If the application is not published under this sec -
tion, the publication fee (i f 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]
§   1.213 Nonpublication request.
(a) If the invention disclosed in an application 
has not been and will not be the subject of an applica -
tion filed in another country, or under a multilateral 
international agreement, th at requires publication of 
applicati ons eighteen months
 after filing, the applica -
tion will not be published under 35 U. S.C. 122(b) and 
§ 1.211 provided: 
(1) A  request 
(nonpubli cation request) is sub -
mitted with the appli cation upon filing; 
(2) T he
 request states in a conspicuous man -
ner that the application is not to
 be published under 
35 U.S.C. 122(b); 
(3) T
he request contains a certification that 
the invention disclosed in th e 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 nonpublic atio
n 
request at any time. A request to rescind a nonpublica -
tion request un
der paragraph (a) of this section must: 
(1) Identify the application to which it is 
directed; 
(2) State in a conspicu ous ma nner that the 
request t h
at the applicatio n is not to be published 
under 35 U. S.C. 122(b) is rescinde
d; and (3) B e signed in 
complia nce with § 1.33(b). 
(c) If an applicant who has submitted a nonpub -
lication request under paragraph (a ) of this
 section 
subsequently files an app lication directed to the 
invention disclosed in the application in which the 
nonpublication request wa s submitted in another 
country, or under a multil
ateral international agree -
ment, that requires publication of applications eigh -
teen months after filing, th e 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 interna tional application 
shall result in abandonmen t
 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]
§   1.215 Patent application publication.
(a) The publication of an  application under 35 
U.S.C. 122(b) shall include a patent application publi -
cation. The da
te of publication shall be indicated on 
the patent application public ation. The patent applica -
tion publication will be base d upon the specification 
and drawings deposited on the filing date of the appli-cation, as well as  
the executed oath or decl aration sub -
mitted to complete the ap plicat
ion. The patent 
application publication ma y also be based upon 
amendments to the specifi cation (other than the 
abstract or the claims) that are reflected in a substitute specification  un
der § 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 publicatio n of an application that 
has entered the national stage under 35 U.S.C. 371 
may also include amendments made during the inter -
national stage. See paragraph (c) of this section for public ation of an application based upon a copy of the 
IP/N/1/USA/D/2 
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Page 111§ 1.217 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-110application submitted via the Office electronic filing 
system. 
(b) If applicant wants the patent application 
publication to include assi gnee information, the appli-
cant must include the assig nee information on the 
application transmittal sheet or the application data 
sheet (§ 1.76). Assignee information may not be 
included on the patent app lication publ ication unless 
this information is provided  on the appli
cation trans -
mittal 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 substitu te for compliance with any 
requirement of part 3 of this chapter to have an 
assignment recorded by the O
ffice. 
(c) At applicant’s option, the pat ent application 
publication will be based up on the copy of the appli-
cation (specification, drawings, and oath or declara -
tion) as amended, provided that  a
pplicant supplies 
such a copy in compliance w ith 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 earli est 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 pur -
suant 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 sectio n. 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 ap plication 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]
§   1.217 Publication of a redacted copy of an 
application.
(a) If an applicant has filed applications in one 
or more foreign countries, directly or through a multi -
lateral international agreemen t, and such foreign-filed 
applications or the descriptio n of the invention in such 
foreign-filed applications is less extensive than the 
application or description of t
he invention in the application filed in the Of fice, the applicant may sub -
mit a redacted  co
py of th e 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 ap plications filed in a for -
eign country. The Office will publish the application 
as provided in § 1.215(a) unless the ap plic
ant files a 
redacted copy of the application in compliance with 
this section within sixteen mo nths after the earliest fil -
ing date for which a bene fit is sought under title 
35, United Stat es
 Code. 
(b) The redacted copy of the application must 
be submitted in compliance with the Of fice electronic 
filing system requirements. The title of the invention 
in the redacted 
copy of the application must corre -
spond to the title of the application at the time the 
redacted copy of the applic ation is submitted to the 
Office. If the redacted copy  of the application does 
not comply wi th the 
Office  electronic filing system 
requirements, the Office w ill 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 th e application for 
which a redacted copy is submitted; 
(2) A translation of each such foreign-filed 
application that is in a la nguage other
 than English, 
and a stat eme
nt that the translation is accurate; 
(3) A marked-up co py
 of the application 
show ing the redactions  in brackets; and 
(4) A certification that the redacted copy of 
the application eliminates on ly the part or description 
of the invention that is no t contained in any applica -
tion filed in a foreign count ry, directly or through a 
multilateral international agre ement, that corresponds 
to the application filed in the 
Office. 
(d) The Office will provide a copy of the com -
plete file  
wrapper and contents of an applic ation for 
which a redacted copy wa s submitted under this sec -
tion to any person upon wr
itten request pursuant to §  
1.14(c)(2), unless applicant complies with the require -
ments of paragraphs (d)(1), (d)(2), and (d)(3) of this 
section. 
(1) Applicant must accompany the submis -
sion required by paragraph (c ) of this section with the 
following: 
IP/N/1/USA/D/2 
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Page 112PATENT RULES § 1.248
R-111 Rev. 8, July 2010(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 mate rial in brackets; and
(ii) A copy of each submission previously 
filed by the applicant including any d es 
ired redac -
tions, and a second copy of each submission previ -
ously filed by the appli cant showing the redacted 
material in brackets. 
(2) In addition to providing the sub m
ission 
required by paragraphs (c) and (d)(1) of this section, 
applicant must: 
(i) Within one month of the date of mail -
ing of any correspondence from the
 Office, file a copy 
of such Office correspondence including any desired redactions, and a second copy of s
uch Office corre -
spondence 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 se cond copy of such submis -
sion showing the redacted  material in brackets. 
(3) E
ach submission un der paragraph (d)(1) 
or (d)(2) of this paragrap h m
ust also be acc om
panied 
by the processing fee set forth in § 1.17(i) and a certi -
fication that the redactions  are limited to the elimina -
tion of material that is relevant only to the part or 
description of the invention that was not contained in the redacted copy of th e application submitted for 
publication. 
(e) The p r
ovisions 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]
§   1.219 Early 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 compli -
ance with the Office electr onic filing 
system require -
ments pursuant to § 1.215(c), the Office will publish 
the application as p rov
ided in § 1.215(a). No  con
sid-
eration will be given to requests for publication on a certain date, and such requ ests will be treated as a 
request for publicatio n as soon as possible. 
[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000]
§   1.221 Voluntary publication or republication of 
patent application publication.
(a) Any request for publication of an applica -
tion filed before, but pending on, November 29, 2000, 
and any request for republication of an application 
previously published  un
der § 1.211, must include a 
copy of the application in  compliance with the Office 
electronic filing system requirements and be accom -
panied 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 para -
gr
aph 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 cor -
rected or  revised p
atent application publication other 
than as provided in paragrap h (a) of this section only 
when the Office makes a material mistake which is 
apparent from Office record
s. Any request for a cor -
rected or revised patent application publication other 
than as provided in paragrap h (a) of this section must 
be filed within two months from the date of the patent application publicati on. This period is  not extendable.
 [Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000]
MISCELLANEOUS PROVISIONS
§  1.248 Service of papers; manner of service; 
proof of service in cases other than inter-ferences.
(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 agen t, and may be made in any 
of the following ways:
(1) By delivering a co py 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 empl
oyment;
IP/N/1/USA/D/2 
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Page 113§ 1.251 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-112(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 dis -
cretion 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) P
apers 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 pape rs file
d. Proof of service shall include 
the date and manner of servic e. 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 informa tion required by this sec -
tion.
(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, 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, effec -
tive Sept. 13, 2004; para. (c) revised, 69 FR 5 8260, Sept. 30, 200 4, effective Sept. 30, 2004]
§  1.251 Unlocatable file.
(a) In the event that the Of fice cannot locate the 
file of an application, patent, or other patent-related 
proceeding after a reasona ble 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 accordan ce with one of paragra p
hs 
(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 pate n
tee’s 
record (if any) of all of the correspondence between the Office and the applicant or patentee for such appli -
cation, patent, or other proceeding (except for U.S. 
patent document
s);
(ii) A list of such correspondence; and
(iii) A statement that the copy is a complete 
and accurate cop y
 of the applicant’s or patentee’s 
record of all of the corr espondence between the Of fice 
and the applicant or patent
ee 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  betwee
n 
the Office and the applicant or patentee for such appli -
cation, pate nt, o
r other proceeding for the Office to 
copy (except for U.S. patent documents); and
(ii) Providing a statement that the papers 
produce d by applicant or patentee are applicant’s or 
patente e
’s complete record of all of the correspon -
dence between the Office and the ap plicant or 
paten -
tee 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 Offic e
 
and the 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 pend ing application, failure 
to comply with one of para graphs (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]
IP/N/1/USA/D/2 
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Page 114PATENT RULES § 1.291
R-113 Rev. 8, July 2010§  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
§  1.291 Protests by the public against pending 
applications.
(a) A protest may be filed by a member of the 
public  against a pending ap plication, and it will be 
matched with the application file if it adequately iden -
tifies 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 du ring prosecution, due to  
inadequate identifi
cation, 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 ente red into the record of 
the application if, in add ition to complying with para -
graph (c) of this section, the protest has been served 
upon the applicant in a ccorda
nce with § 1.248, or 
filed with the Of fi
ce in du plicate 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, th e protest will be considered 
if the protest is matched wi th the application in time 
to permit review during prosecution.
(2) A stateme n
t must accompany a protest 
that it is the first protest submitted in the application 
by the real party in intere st who is submitting the pro -
test; 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.
(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 rel
ied upon;(2) A concise e x
planation 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 lan -
guage patent, publication, o r
 other item of  info
rma-
tion 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 th an those raised earlier and 
why the significantly different issue(s) were not pre -
sented 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 se ction 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 pu blic may include with the 
protest in orde r 
to receive an acknowledgement by the 
Office that the protest has been received. The limited involvement of the member of the public filing a pro -
test pursuant to this section ends with the fili ng of the 
protest, and no further submission on behalf of 
the 
protestor will be considered, unless the submission is made pursuant to paragrap h (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 in equitable conduct issues 
raised in it.
(f) In the a
bsence of a request by the Office, an 
applicant has no duty to, an d need not, reply to a pro -
test.
(g) Protests that fail to comply with paragraphs 
(b) or (c) of thi s
 section may not be entered, and if not 
entered, will be returned t o
 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, 
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Rev. 8, July 2010 R-1142000; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 
22, 2004]
§  1.292 Public use proceedings.
(a) When a petition for the institution of public 
use proceedings, supported by affidavits or declara -
tions is found, on reference to the examiner , to make a 
prima facie showing that the invention clai
med 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 h a
d before the 
Director to determine whether a public use proceeding 
should be instituted. If instituted, the Director may 
designate an appropriate offi cial to conduct the public 
use proceeding, including the setting of times for tak -
ing testimony, which shall be taken as provided by part 41, subpart D, of this title. The petitioner will be heard in the proceed i 
ngs 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 accomp anied 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 serv ice is not possible; and
(3) The petition is submi tted prior to the date 
the application was published or the mailing of a notice of allowance un
der § 1.311, whiche v
er occurs 
first.
(c) A petition for institution of public use pro -
ceed
ings shall not be filed by a party to an interfer -
ence as to an application in volved in the interference. 
Public use and on sale issues in an interference shall 
be raised by a motion under § 41.121(a)(1) of th is 
titl
e.
[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 ; p
ara. (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]§  1.293 Statutory invention registration.
(a) An applicant for an original patent may 
request, at any time during the pendency of appli -
cant’s pending complete ap plicat ion, that 
the specifi -
cation 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 requ est for 
publication of a statutory 
invention registration mu st include the following 
parts:
(1) A waiver of the applicant’s right to 
receive a pa ten
t on the in vention claimed effective 
upon the date of publicatio n of the  
statutory invention 
registration;
(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 fo rmal 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 publica -
tion of the st atutory 
invention registration, to waive 
the inventor’s right to receive a patent on the inven -
tion claimed in the statutory invention registration, in 
any applicati
on for an original patent which is pend -
ing on, or filed after
, the date of publication of the 
statutory invention registration. A waiver filed with a request for a statutory inventio n 
 registration will not 
affect the rights of any other inventor even if the sub -
ject matter of the statutor y in
vention registration and 
an application of anothe r in
ventor are commonly 
owned. A waiver filed with a request for a sta
tutory 
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]
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R-115 Rev. 8, July 2010§  1.294 Examination 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 regis -
tration will be examined to  determine if the require-
ments 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 applicati on is 
app
ropriate 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 sec -
tion. If the requirements of § 1.293 an
d this section 
are not met by the request fi led, the notification to 
applicant will set a period  of time within which 
to comply with the requirem ents in order to avoid 
abandonment of the applic ation. If the application 
does not meet the re
quirements of 35  U.S.C. 1 1
2, the 
notification to applicant will include a rejection under the appropriate prov isio
ns of 35  U.S.C. 112. The peri -
ods for reply established pursuant to this section are 
subject to the extension 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. 11 2
will 
be made final.
(c) If the examination purs uant to this section 
results in approval of the request for a statutory inven-
tion registration the applicant will be 
notified of the 
intent to p ubli
sh a stat
utory 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]
§  1.295 Review 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 registra -
tion for reasons other than compliance with 35 U.S.C. 
112 ma y o
btain review of the refus al 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 pu blication. Any such petition 
should comply with the re quirements of § 1.181(b). 
The petition may include a request that the petition fee be refunded if the fina l refusal to publish a statu -
tory invention registration for reasons other than com-
pliance with 35 U.S.C. 11 2 is determined to result 
from an error by the Patent and Tradem ark Of 
fice.
(b) Any requester who is
 dissatisfied with a 
decision finally rejecting cl aims pursuant to 35 U.S.C. 
112 may obtain review of the d
ecision by filing an 
appeal to the Board of Patent Appeals and Interfer -
ences 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 pro
visions 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]
§  1.296 Withdrawal of request for publication of 
statutory invention registration.
A request for a statutory invention registration, 
which has been filed, may be withdrawn prior to the 
date of the notice of the intent to publish a statutory 
invention registratio n 
issued pursuant to § 1.294(c) by 
filing a request to withdraw  the request for publica -
tion of a statutory invention registration. The request 
to withdraw may also include a request for a refund of 
any amount paid in  excess of the application filing fee 
and a handling fee of $130.0 0 which will be retained. 
Any request to withdraw the request for publication of 
a s
tatutory 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 accom -
panied 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]
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Page 117§ 1.297 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-116§  1.297 Publication of statutory invention regis -
tration.
(a) If the request for a statutory invention regis-
tration is approved the statutory invention registration 
will be published. The statutory invention registration 
will be mailed to the reques ter at the correspondence 
address as provided for in § 1.33 (a). 
A notice of the 
publication of each statut ory in
vention registration 
will be published in the Official Gazette .
(b) Each statutory invention registration pub -
lished 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 enfor ceable attributes of a 
patent. No article or adve rtisement or the like may 
use the term patent, or any term suggestive of a patent , 
when referring to a statutory invention regis -
tration. For more specific information on the rights 
associated with a statutor y invention registration see 
35 U.S.C. 157.
[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 
50 FR 3
1826, Aug. 6, 1985, effective Oct. 5, 1985]
REVIEW OF PATENT AND TRADEMARK 
OFFICE DECISIONS BY COURT
§  1.301 Appeal 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 de cisio
n of the Board of 
Patent Appeals and Interferences, and any party to an 
interference dissatisfied with the decision of the 
Board of Patent Appeal s 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 appeal and 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, effec tive May 1, 2003; revised, 68 
FR 70996, Dec. 22, 2003, effective Jan. 21, 2004]
§  1.302 Notice of appeal.
(a) When an appeal is taken to the U.S. Court of 
Appeals for the Federal Circ uit, 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) I
n ex parte reexamination proceedings, the 
notice must be served as provided in § 1.550(f).
(d) In inter partes  reexamination proceedings, 
the n otice must be served  as prov ided
 in § 1.903.
(e) N otices of 
appeal directed to the Director 
shall be mailed to or served by hand on the General 
Counsel as provide d
 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]
§  1.303 Civil 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 Pa
tent Appeals and Interfer -
ences, and any party to an interference dissatisfied 
with the decision of the Bo ard of Patent Appeals and 
Interferences may, instead of appealing to the U.S. 
Court of Appeals for the Fe deral Circuit (§ 1.301), 
have
 remedy by civil action under 35 U.S.C. 145 or 
146, as appropriate. Such civil action must be com -
menced 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  reexamina -
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Page 118PATENT RULES § 1.311
R-117 Rev. 8, July 2010tion 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.
(c) A notice of election under 35 U.S.C. 141 to 
have all further proceedings on review conduc ted a 
s 
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, an d fo
r 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]
§  1.304 Time for appeal or civil action.
(a)(1)The time for filing the notice of appeal to 
the U.S. Court of Appeals for the Federal Circuit (§ 
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 fil -
ing an appeal or commencing a civil action shall expire two months after action on the request. In con -
tested cases before the Board of Pate nt Appea 
ls 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 A
ppeals and Interferences, 
whichever is later .
(2)
The time periods set forth in this section 
are not subject to the provisions of § 1.136, § 1.55 0
(c), or § 1
.956, or of § 41.4 of this title.(3) The Director may extend the time for fil -
ing 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 civ
il action, or
(ii) Upon written request after the expira -
tion 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 ca le
ndar days. The time specified herein in 
months are calendar months exce
pt that one day shall 
be added to any two-month period which includes February 28. If the last da y of the time specified for 
appeal or commencing a ci vil action falls on a Satur -
day, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which 
is neither a Saturday, Sund ay 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 und
er 35 U.S.C. 141 electing to have all further pro -
ceedings conducted under 35 U.S.C. 146 (§ 1.303(c)), 
the time for filing a civil ac tion thereafter is specified 
in 35 U.S.C. 141. The time for filing a cross-action expires 14 days after ser vice 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, effec -
tive Feb. 11, 1985; para. (a), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; 54 FR 29553, July 13, 1 989 
, effec -
tive 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, effec -
tive 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 , ef
fective 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
§  1.311 Notice of Allowance.
(a) If, on examination, it appears that the appli-
cant is entitled to a patent under the law, a notice of 
allowance will be sent to the applicant at the corre -
spondence address indicated in § 1
.33. The notice of 
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Rev. 8, July 2010 R-118allowance shall specify a sum constituting the issue 
fee which must be paid within three months from the 
date of mailing of the notic e of allowance to avoid 
abandonment of the applica tion. The sum specified in 
the notice of allo wance may also include the publica -
tion 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 
depo sit acco
unt may be filed in an individual applica -
tion only after mailing of th e notice of allowance. The 
submission of eit h
er of the following after the mailing 
of a notice of allowance will operate as a request to 
charge the correct issue fee or an y 
publication fee due 
to any deposit acco unt identified in a previously filed 
authorization to charge such fees:
(1) An incorrect issue fee or publication fee; 
or
(2) A fee transmittal form (or letter) for pay -
ment 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, effec -
tive 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]
§  1.312 Amendments after allowance.
  No amendment may be made as a matter of right 
in an application after the mailing of the notice of 
allowance. Any amendment f iled pursuant to this sec -
tion must be filed before or  with the payment of the 
issue fe e, and may be entered on the re comme
ndation 
of the primary examiner, approved by the Director, without withdrawing t h
e application from issue.
[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effec -
tive 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, effectiv e D
ec. 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]§  1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue 
for further action at the initia tive of the Office or upon 
petition by the applicant. To request that the Office 
withdraw an application fro m issue, applicant must 
file a petition under this section including the fee set 
forth in § 1. 17
(h) and a showing of good and suffi -
cient 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 applica
tion.
(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 h as been paid, the appli -
cation will not be withdr awn from issue upon petition 
by the applicant for any reason except:
(1) Unpatentability of one of more claims, 
which petition mu st b
e accompan ied
 by an unequivo -
cal s
tatement that one or more claims are unpatent -
able, an amendment to such  claim or claims, and an 
explanation as to how the amendmen t c
auses s u
ch 
claim or claims to be patentable;
(2) Consideration of a request for continued 
examination in complia nce with § 1.114; or
(3) Express abandonment of the application. 
Such express abandonmen t may 
be in favor of a con -
tinuing application.
(d) A petition under this section will not be 
effect ive to withdraw th e
 application from issue 
unless it is actually receive d and granted by the appro -
priate officials before the date of issue. Withdrawal of 
an application from issue af ter payment of the issue 
fee may not be effective to avoi d pu
blication of appli -
cation 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, 
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R-119 Rev. 8, July 201065 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 
500
92, Aug. 16, 2000, effective Aug. 16, 2000)]
§  1.314 Issuance of patent.
 If applicant timely pays th e issue fee, the Office 
will issue the patent in re gular course unless the appli -
cation is withdrawn from issue (§ 1.313) or the Of fice 
de
fers issuance of the patent. To request that the 
Office defer is sua
nce 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 rea -
sons 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]
§  1.315 Delivery of patent.
The patent will be delivered or mailed upon issu -
ance to the correspondence address of record. See 
§ 1.33(a).
[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 
23, 1996]
§  1.316 Application abandoned for failure to pay 
issue fee.
If the issue fee is not paid  within three months from 
the date of the notice of allowance, the application 
will be regarded as abando ned. Such an abandoned 
application will not be cons idered as pending before 
the Patent and Trademark Of
fice.
[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; revi sed, 62 FR
 53131, Oct. 10, 1997, effective Dec. 
1, 1997]
§  1.317 Lapsed patents; delayed payment of bal -
ance 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 pa id, any remaining bal a
nce of the issue fee is to be pa id 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) 
amen ded, 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
§  1.321 Statutory disclaimers, including terminal 
disclaimers.
(a) A patentee owning the whole or any sec -
tional interest in a patent may disclaim any complete 
claim or claims in a patent. In like manner any paten -
tee 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 ass igns. A notice of the dis -
claimer is 
published in the Official Gazette  and 
attached to the printed copies of the specification. The 
disclaimer, to be recorded in the Patent and Trade -
mark Office, must:
(1) B
e signed by the patentee, or an attorney 
or agent of record;
(2) Identify the patent and complete claim or 
claims, or term bein g disclaimed. A disclaimer which  
is not a disclaimer of a
 complete claim or claims, or 
term will be refused recordation;
(3) S
tate 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 o
r 
dedicate to the public the entire term, or any terminal 
part of the term, of a patent to be gr an
ted. Such termi-
nal disclaimer is binding upon the grantee and its suc -
cessors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
IP/N/1/USA/D/2 
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Page 121§ 1.322 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-120(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 applica -
tion or in a reexamination proceeding except as pro-vided for in paragraph (d) of this section, must:
(1) C
omply with the provisions of para -
graphs (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 paragrap h (a)(1) of this section if 
filed in 
a reexamination proceeding; and
(3) Inclu de a p
rovision that any patent 
granted on that application or  any patent subject to the 
reexamination proceeding sh all be enforceable only 
for and during such period that said patent is co m-
mon
ly owned with the app lication or patent which 
formed the basis for the judi cially created double pat -
enting.
(d) A terminal disclaimer, when filed in a patent 
application or in a reexamination proceeding  
to obvi -
ate double patenting  based
 upon a patent or applica -
tion 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 agree -
ment, must:
(1)
Comply with the provisions of para -
graphs (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 sign e
d in accordance with para gra
ph (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 applica -
tion or any patent subject to the reexamination pro -ceeding and the patent or any patent granted o
n the 
application which formed th e basis for the double pat -
enting, and that any patent granted on that application 
or any patent subject to th e reexamina tion procee
ding 
shall be enforceable only for and during such period 
that said p aten
t and th
e 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
§  1.322 Certificate of correction of Office mis -
take.
(a)(1) The Director may issue a certificate of 
correction pursuant to 35 U.S.C. 254 to correct a mis -
take in a patent, incurred through the fault of the 
Office, which mistake is clearly disclosed in the 
records of the Of
fice:
(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 oblig ation on the 
Office to act 
on or resp ond
 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 wi ll 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 requ est must comply with the 
requirements of this sectio n and be accompanied by a 
motion und e
r § 41.121(a)(2) or § 41.121(a)(3) of this 
title.
(4) T he
 Office will not issue a certificate of 
correction under thi s 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 paten t
ee or an assignee an 
opportunity to be heard.
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Page 122PATENT RULES § 1.325
R-121 Rev. 8, July 2010(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 appropri -
ate 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]
§  1.323 Certificate 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 patente e
’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 co mply 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]
§   1.324 Correction of inventorship in patent, pur -
suant 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 decep tive 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 whic h such matter is called in 
question, issue a certificate naming only the actual 
inventor or inventors. A petition to correct inventor -
ship of a patent involved in an interference must com -
ply with the require m
ents 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 a
ccompanied by:(1) Where one or more persons are being 
added, a statement from each person who is being 
added as an inv en
tor 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 su bmitted a statement under 
paragraph (b)(1) of this sectio n either agreeing to the 
change of inventorship or stating that they have no 
di
sagreement in regard to the requested change;
(3) A statement from all assignees of the par -
ties submitting a statement under paragraphs (b)(1) 
and (b)(2) of this section ag reeing to the change of 
inventorship in the patent , which statement must com -
ply with  the 
requirements of § 3.73(b) of this chapter; 
and
(4) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an applica -
tion, see §§ 1.48 and 1.497.
(d) In a contested case before the Board of 
Patent Appeals and Interferences under part 41, sub -
part D, of this title, a reques t for correction of a patent 
must be in the form of a mo tio
n 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, ef fective Feb. 27, 1983; 49 FR 
48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effec -
tive 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]
§  1.325 Other mistakes not corrected.
Mistakes other than those pr ovided for in §§ 1.322, 
1.323, 1.324, an d n
ot affording legal grounds for reis -
sue or for reexamination, will not be corrected after 
the date of the patent.
[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 
1983]
IP/N/1/USA/D/2 
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Page 123§ 1.331 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-122ARBITRATION AWARDS
§  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]
§  1.335 Filing 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 paten -
tee’s assignee or lice n
see. If the award involves more 
than one patent a separate notice must be filed for placement in the file of each patent. The notice must 
set forth the patent nu mb
er, 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 ar bitrator pursuant to 
35 U.S.C. 294 is modified by a court, the party 
requesting the modification must  file in the Patent and 
T
rademark Office, a notice of the modification for 
placement in the file of each patent to whic h th
e mod -
ification 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 arbi-
tration. 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 Trade m
ark 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
§  1.351 Amendments to rules will be published.
All amendments to the regu lations 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, effec -
tive Jan. 3, 1994; removed and reserved, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997]
MAINTENANCE FEES
§  1.362 Time 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 para gra
ph (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.
(c) T he 
application filing dates for purposes of 
payment of maintenance fees are as follows:
(1) For an application not claiming benefit of 
an earlier application, th e actual United St ates filing 
date of the application.
(2)
For an application claiming benefit of an 
earlier foreign application under 35 U.S.C. 1 1
9, the 
United States filing date of the application.
(3) Fo
r a continuing (continuation, division, 
continuati on-in-part) application claiming the benefit 
of a prior patent application under 35 U.S.C. 120, the 
actu
al United States filing date of the continuing 
application.
(4) For a reissue application, including a con -
tinuing reissue application claiming the benefit of a 
reissue application under 35  U.S.C. 120, the United 
IP/N/1/USA/D/2 
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Page 124PATENT RULES § 1.366
R-123 Rev. 8, July 2010States filing date of the original non-reissue applica -
tion on which the patent reissued is based.
(5) For an internatio nal appl ication which 
has entered the United States as a Designated Of fic
e 
under 35  U.S.C. 371, the intern ational filing date 
granted under Article 11(1) of the Patent Cooperation 
Treaty which is considered to be the United States fil -
ing date und er 35  U.S.C. 36
3.
(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) 1
1 years through 11 years an d 6 months 
after grant for the third maintenance fee.
(e)
Maintenance fees may be paid with the sur -
charge 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 th e grant for the first mainte -
na
nce fee.
(2) 7  years and 6 months and through 
the day 
of the 8th anniversary of the grant for th
e second 
maintenance fee, and
(3) 11 years and 6 months and through the 
day of the 12th an niversary of the grant for th
e 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 sec -
tion, falls 
on a Saturday, Su nday, or a federal holiday 
within the District of Columbia, the maintenance fee 
and any necessary surcharge may be paid under pa ra-
g
raph (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 applic a-
ble 
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 pa te
nt 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 ap plication, including a con -
tinuing reissue application thereof, are counted from the date of grant of the or iginal non-reissue applica -
tion 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, effec -
tive Dec. 16, 1991; paras. (c)(4) and (e) revised and para. 
(h) added, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 
1994]
§  1.363 Fee address for maintenance fee pur -
poses.
(a) All notices, receipts , refunds, and other 
communications relating to  payment or refund of 
maintenance fee s
 will be directed to the correspon -
dence address used during prosecution of the applica -
tion as indicated in § 1.33(a) unless:
(1) A fee a
ddress 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 pa yment 
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 th e p
ay-
ment 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 no t result
 in a change of the “correspon -
dence address” or “fee address” for 
maintenance fee 
purposes.
(c) A fee address must be an address associated 
with a Customer Nu mb
er.
[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 
1984; para. (c) added, 69 FR 29865, May 26, 2004, effec -
tive June 25, 2004]
§  1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and 
any necessary surcharges, or any person or organiza -
tion may pay maintenance fees and any necessary s
ur-
charges on behalf of a pate ntee. Authorization by the 
patentee need not be filed in the Patent and Trademark 
IP/N/1/USA/D/2 
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Page 125§ 1.377 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-124Office to pay maintenance fees and any necessary sur -
charges on behalf of the patentee.
(b) A maintenance fee and any necessary sur -
charge submitted for a patent must be submitted in the 
amount due on the date th e maintenance fee and any 
necessary surcharge are paid. A maintenance fee or surchar g
e 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 nece ssary s
urcharge or the 
authorization to charge a deposit account must be sub -
mitted 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 main -
tenance fee except insofar as a delayed payment of the 
maintenance fee is acce pted 
by the Director in an 
expired patent pursuant to a petition filed under 
§ 1.378. Any authorization to charge a de po
sit 
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, p a
yment 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 surchar
ge 
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 mainte nance 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 
Unite d
 States application fo r the patent on which the 
maintenance fee is being pa id. 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 pay -
ment or may return the payment.
(d) Payment of maintenance fees and any sur -
charges 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 surcharg e be
ing paid, and any assigned customer 
number. If the maintenance fee and any necessary sur -charge 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 thi s
 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 the manner set forth in § 1.23 or by an 
authorization to char ge 
a deposit account. If mainte -
nance fee and surcharge paym ents for more than one 
patent  are submitted together , they should be submit -
ted on as few sheets as possible with the patent num -
bers listed in increasing patent number order.  If 
the 
payment submitted is insuffic ient to cover the mainte -
nance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are 
listed, beginning at t h
e top of the listing.
(f) Notification of any change in status result -
ing in loss of entitlement to small entity status must be 
filed in a patent prior to paying, or at the time of pay -
ing, the earliest maintenance fee due after the date on 
which s
tatus as a small entity  is no longer appropriate. 
See § 1.27(g).
(g) Mainten a
nce 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]
§  1.377 Review 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 ma
intenance 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 
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Page 126PATENT RULES § 1.378
R-125 Rev. 8, July 2010set 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 deter-
mined to result from an error by the Patent and Trade -
mark Office.
(c) Any petition filed unde r this section must 
comply with the requirements of § 1.181(b) and must 
be signed by an attorne
y or agent registered to prac -
tice 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, effec -
tive 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]
§  1.378 Acceptance of delayed payment of main -
tenance 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, th e delay in payment of the 
maintenance fee is  shown to the
 satisfaction of the 
Director to have been unavoidable (paragraph (b) of this section) or unintentio nal (paragraph (c) of this 
section) and if the surcharge required by § 1.20(i) is 
paid as a condition of accepting payment of the main -
tenance 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 fort h in 35 U.S.C. 41(c)(2).
(b) Any petition to acce pt 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 fo rth in § 1.20(i)(1); 
and
(3) A showing that the delay was unavoid -
able since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the 
petition was filed promptly  after the pate ntee
 was 
notified of, or otherwise became aware of, the expira -
tion of the patent. The sh owing must enumerate the 
steps taken to ensure timely payment of the mainte -
nance 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 unintent
ionally 
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 maintena nce 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) A
ny petition under th is section must be 
signe d by an attorney or agent registered to practice 
before the Patent and Trademark Office, or by the pat -
entee, 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 obt a
ined by fil-
ing 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 accom -
panied 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 maintena nce
 fee is 
not accepted, the maintenance 
fee and the surcharge set forth in § 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 reco nsideration, 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 determin ed 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]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 127§ 1.401 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-126Subpart C — International Processing 
Provisions
GENERAL INFORMATION
§  1.401 Definitions 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 
Intell
ectual Property Orga nization located in Geneva, 
Switzerland.
(c) Administrative Instructions  means that body 
of instructions for operating  un
der the Patent Cooper-
ation Treaty referred to in PCT Rule 89.
(d) Request,  
when capitalized, means that ele -
ment 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). No
te also § 1.465.
(g) Demand,  when capitalized, means tha t
 doc-
ument filed with the Inte rnational Preliminary Exam -
ining Authority which re quests an international 
preliminary examination.
(h) Annexes  means amendments made to the 
claims, description or the dr awings before the Interna -
tional Preliminary Examining Authority.
(i) Other te
rms and expressions in this subpart 
C not defined in this sectio n 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]
§  1.412 The United States Receiving Office.
(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 Tr a
demark Office, when act-
ing as a Receiving Office, will be identified by the full 
title “United States Receiving Office” or by the abbre -
viation “RO/US.”
(c) The major functions of the Receiving Office 
include:(1) According of intern ational
 filing dates to 
international applications meeting the requirements of 
PCT Art. 11(1) and PCT Rule 20;
(2) Assuring that  intern ational appl ications 
meet the standards for format  a
nd content of PCT Art. 
14(1), PCT Ru
le 9, 26, 29.1, 37, 38, 91, and portions 
of PCT Rul
es 3 through 11;
(3) Collecting and, when required, transmit -
ting fees due for processing international applications 
(PCT Rule 14, 15, 16);
(4) Transmitting the record and search copies 
to the International Bureau  and International Search -
ing Authority, respectively (PCT Rules 22 and 23); and
(5) Determining complia nce with applicable 
requirements of part 5 of this chapter .
(6)
Reviewing and, unless prescriptions con -
cerning national security pr event the application from 
being so transmi tted (PCT  Rule 19.4), transmitting 
the international applica tion to the International 
Bureau for process
ing in its capacity as a Receiving 
Office:
(i) Where the U n
ited States Receiving 
Office is not the competent Receiving Of
fice under 
PCT Rule 19.1 or 19.2 and § 1.421(a); or
(ii) Where the international application is 
not in English but i s in a lang
uage accepted under 
PCT Rule 12.1(a) by the In ternational Bureau as a 
Receiving Office; or
(iii) Where there is agreement and authori-
zation in accordance with PCT Rule 19.4(a)(iii).
[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effec -
tive 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)]
§  1.413 The United States International Search -
ing Authority.
(a) Pursuant to appointment by the Assembly, 
the United States Patent and Trademark Office will 
act as an International S earching Authority for inter-
national applications filed in the United States 
Receiving Office and in other Receiving Offices  as 
ma
y be agreed upon by the Director , in acc
ordance 
with the agreement between the Patent and Trademark 
Office and the Internatio nal Bureau (PCT Art. 
16(3)(b)). 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 128PATENT RULES § 1.416
R-127 Rev. 8, July 2010(b) The Patent and Trademark Office, when act-
ing as an International Se arching Authority, will be 
identified by the full title “U nited States International 
Searching Authority” or by the abbreviation “ISA/
US.”
(c) T he major 
functions of the International 
Searching Authority include:
(1) Approving or esta blishing the title and 
abstract;
(2) Considering the matter of  un
ity of inve n
-
tion;
(3) Conducting intern ational and interna -
tional-type searches and pr eparing international and 
international-type search re ports (PCT Art. 15, 17 and 
18
, and PCT Rules 25, 33 to 45 and 47), and issuing 
declarations that no interna tional search report will be 
established (PCT Article 17(2)(a));
(4) Preparing written op inions of the Interna-
tional Searching Authority in accordance with PCT 
Rule 43 bis (when necessary); and
(5) Transmitting the in ternational search 
report and the written op in
ion of the International 
Searching Authority to the applicant and the Interna -
tional Bureau.
[Para. (a) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive May 1, 2003; paras. (a) & (c) revised, 68 FR 58991, 
Oct. 20, 2003, effective Jan. 1, 2004]
§  1.414 The 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 ap plications in which the 
United St ate
s 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 internationa l processi ng will be identi -
fied by the full
 title “Unite d States Designated Office” 
or by the abbreviation “DO/US” or by the full title “United States Elected Of fice
” 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 de signated or elec
ted, include:(1) Receiving various notifications through -
out the international stage and
(2) Accepting for national stage examination 
international applications which satisfy the require -
ments of 35 U.S.C. 371.
[52 FR 20047, May 28, 1987, effective July 1, 1987]
§  1.415 The International Bureau.
(a) The International Bure au is the World Intel -
lectual Property Organization located at Geneva, Switzerland. It is the inte rnational inter
governmental 
organization which acts as the coordinating body 
under the T r
eaty 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 intern ational applications 
and the International Gazette;
(2) Transmitting copies of international 
applications to Designated Of fic
es;
(3) Sto ring and maintaining record 
copies; 
and
(4) Transmitting information to authorities 
pertinent to the processing of spe
cific international 
applications.
§  1.416 The United States International Prelimi -
nary Examining Authority .
(a)
Pursuant to appointment by the Assembly, 
the United S tates Patent and Trademark Office will 
act as an International Preliminary Examining 
Authority for international applications filed in the 
United States Receiving Of fi
ce and in other Receiving 
Offices as may be agreed upon by the Director, in 
accordance with agreement between the Patent and 
Trademark Office and th e 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 Examin -
ing Aut hori
ty” 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 ac cordan ce
 with 
PCT Rule 59.3;
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 129§ 1.417 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-128(3) Collecting the hand ling fee for the Inter-
national Bureau and the pr eliminary examination fee 
for the United States Inte rnational Preliminary Exam -
ining Authority;
(4) Informing applicant of receipt of the 
Demand;
(5) C on
sidering the matter of unity of inven-
tion;
(6) Providing an inte rnational preliminary 
examination report which is  a no n-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 prelimi -
nary examination report to  applicant and the Interna -
tional 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]
§   1.417 Submission of translation of international 
publication.
 The submission of an English language translation 
of the publication of an in ternational application pur -
suant to 35 U.S.C. 154(d)(4) must clearly identify the 
international application to which it pe rtains
 (§ 1.5(a)) 
and be clearly identified as  a submission pursuant to 
35 U.S.C. 154(d)( 4
). Othe rwise, 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]
§  1.419 Display of currently valid control num -
ber under the Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq. ), the collection of infor -
mation in this subpart has been reviewed and 
approved by th
e Office of Management and Budget 
under control number 06 51
-0021.
(b) Notwithstanding any other provision of law, 
no person is required to respond to nor shall a person 
be subject t o
 a penalty for failure to comply with a collection of information s ubject 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 sec -
tion 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 
Budg et co
ntrol 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
§  1.421 Applicant for in ternational application.
(a) Only residents or nationals of the United 
States of America may file international applications 
in the United States Receiving Office. If an interna -
tional application does not in clude an applicant who is 
indicated as being a residen t or natio
nal of the United 
States of America,  a
nd at least one applicant:
(1) Has indicated a resi dence 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 applica -
tion will be forwarded for processing to the Interna -
tional B
ureau acting as a Receiving Office  (see
 also § 
1.412(c)(6)).
(b) Although the United States Receiving 
Office w i
ll accept international applications filed by 
any resident or national of the United Sta t
es of Amer -
ica for international processing, for the purposes of 
the designation of the United S
tates, 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 invent or or as pr ov
ided 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, internatio nal applications may be 
filed by the assignee or owner. 
(d) A registered attorney or agent of the appli -
cant may sign the interna tional appl ication Request 
and file the international application for the applicant. 
IP/N/1/USA/D/2 
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Page 130PATENT RULES § 1.431
R-129 Rev. 8, July 2010A separate power of attorn ey from each applicant may 
be required.
(e) Any indication of di fferent applicants for 
the purpose of different Designated Offices must be 
shown on the
 Request por tion of the international 
application. 
(f) Requests for changes in the indications con -
cerning the applicant, agent, or common representa -
tive of an international app lication 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 interna -
tional application, designa tions, priority claims, the 
Demand, or elections shall be made in accordance with PCT Rule 90 bis and must be signed by all app
li-
cants. A separate power of  attorney from the appli -
cants will be required for the purposes of any request 
for a withdrawal in accordance with PCT Rule 90bis
whic
h 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 state -
ment explaining to the satisfaction of the Director the 
lack of the signature concerned:
[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effec -
tive 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, effect ive Jan. 
1, 2004; para. (a)(2) 
revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004]
§  1.422 When the inventor is dead.
In case of the death of the inventor, the legal repre -
sentative (executor, administrator, etc.) of the 
deceased inventor may file an international applica -
tion which de signates
 the United States of America.
§  1.423 When the inventor is insane or legally 
incapacitated.
In case an inventor is insane or otherwise legally  
incapacitated, 
the legal re presentative (guardian, con -
servator, etc.) of such inve ntor may file an interna -
tional application which de signates 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
§  1.431 International application requirements.
(a) An international application shall contain, 
as specified in the Treaty and the Regulations, a 
Request, a description, one or more claims, a n
 
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 inter
national 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 
internationa l application so indicate 
(35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international ap plication is in the 
English language (35 U.S.C. 361(c), PCT Art. 
11(1)(ii)).
(3) Th
e 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 Con -
tracting S tat
e of the International Patent Cooperation 
Union (§ 1 .43
2);
(iii) The name of the applicant, as pre -
scribed (note §§ 1.421- 1.42
3);
(iv) A part whic
h 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 transm ittal 
and search fees (§ 
1.445) may be made in fu ll at the time the interna -
tional application papers requ ired by paragraph (b) of 
this section are deposited or within one month there -
after. The international filin g, transmittal, and 
search 
fee payable is the international filing, transmittal, and 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 131§ 1.432 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-130search fee in effect on the receipt date of the interna -
tional application. 
(1) If the international filing, transmittal and 
search fees are not paid within one month from the 
date of receipt of the in ternational 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 defi -
cient fees plus the late payment fee. Subject to para -
graph (c)(2) of this section, the late payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the defi -
cient fees; or
(ii) An amount equal to the transmittal fee.
(2) The late payment fe e shall not exceed an 
amount equal to fift y 
percen t of the international fil -
ing fee not taking into acc ount any fee for each sheet 
of the international applic ation in excess of thir ty 
sheets (PCT Rule
 16bis).
(3) The one-month time limit set pursuant to 
paragraph (c) of this section to pay deficient fees may 
not be extende d
.
(d)  If the payment needed to cover the  
trans -
mittal fee, the international filing fee, the search fee, 
and the late payment fee pursuant to paragraph (c) of 
this section is not t imely made in accordance wi
th 
PCT Rule 16 bis.1(e), the Receiving Office will 
declare the international ap plication 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, effec -
tive Jan. 1, 2004; para. (c)(2) corrected, 68 FR 67805, Dec. 
4, 2003]
§  1.432 Designation of States by filing an interna -
tional application.
The filing of an interna tional application request 
shall constitute:
(a) The designation of all Contracting State s 
that 
are bound by the Treaty  on the international filing 
date;(b) An indication that th e international applica -
tion is, in respect of each designated State to which 
PCT Article 43 or 44 applie s, for the grant of  ev
ery 
kind of protection which is available by way of the 
designation of 
that State; and.
(c) An indication that th e international applica -
tion is, in respect of each designated State to which PCT Article 45(1) applies, fo r the grant of a regional 
patent and also, unless PC T 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]
§  1.433 Physical requirements of international 
application.
(a) The international ap plication and each of 
the documents that may be re ferred to in the check list 
of the Request (PCT Rule 3.3(a)(ii)) shall be filed in 
one copy on ly
.
(b) All sheets of the in ternational application 
must be on A4 size paper (21.0 x 29.7 cm.).
(c) Other physical requirements for interna -
tional applications are set forth in PCT Rule 11 and sections 20
1-207 of the Administrative Instructions. 
§  1.434 The request.
(a) The  requ
est 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 Of
fice. 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 PC T Rule 4 and Administra -
tive Instructions 110 and 201.
(d) For the purposes of the designation of the 
United States of America, a
n international application 
shall include:
(1) The name of the inventor; and
IP/N/1/USA/D/2 
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Page 132PATENT RULES § 1.445
R-131 Rev. 8, July 2010(2) A reference to any prior-filed national 
application or internationa l application designating 
the United States of America, if the benefit of the fil -
ing date for the prior-file d application is to be 
claimed.
(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, effec -
tive May 1, 1993; para. (d) revised, 66 FR 16004, Mar. 22, 
2001, effective Mar. 1, 2001; para. (d)(2) revi sed, 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]
§  1.435 The 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 sect i
ons 204 and 
208 of the Administrative Instructions.
(b) In international applications designating the 
United States the descriptio n must contain upon filing 
an indication of the best mode contemplated  b
y the 
inventor for carrying ou t the claimed invention.
[Para. (a) revised, 63 FR 29614, June 1, 1998, effective 
July 1, 1998 (adopted as fina l, 63 FR 66040, Dec. 1, 1998)]
§  1.436 The claims.
The requirements as to the content and format of 
claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 
10 and 11 an d s
hall be adhered to. The number of the 
claims shall be reasonable, considering the nature of 
the invention claimed.
§  1.437 The drawings.
(a) Drawings are required when they are neces -
sary for the understanding of the invention (PCT Art. 
7). 
(b) The physical require ments 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]§  1.438 The 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 inter -
national application will not affect the granting of a filing date. However, failure to 
furnish an abstract 
within one month from the da te of the notification by 
the Receiving Office will re sult in the international 
application being declar
ed withdrawn.
FEES
§  1.445 International a pplication filing, process -
ing and search fees.
(a) The following fees and charges for interna -
tional applications are est ablished 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)  . . . . . . . . . . . . . . . . . . . . . $240.00
(2) A  s
earch fee (see 35 U.S.C. 361 (d) and 
PCT Rule 16)  . . . . . . . . . . . . . . . . . . . . . . . $2,080.00
(3) A  suppleme
ntal 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 proc
essing in its capacity as a Receiving Office 
(PCT Rule 19.4).
(b) The international filing fee shall be as pre -
scribed in PCT Ru le 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 2 0047
, 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, effec -
tive July 1,1998 (adopted as final, 63 FR 66040, Dec. 1, 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 133§ 1.446 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-1321998); para. (a) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive 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) an
d 
(a)(3) revised, 72 FR 51559, Sept. 10, 2007, effective Nov. 9, 2007; paras. (a)(1) throug h (a)(3) revised, 73 FR 67754, 
Nov. 12, 2008, effective Jan. 12, 2009]
§  1.446 Refund of international application filing 
and processing fees.
(a) Money paid for inte rnational application 
fees, where paid by actual mistake or in excess, such 
as a payment not required by law or treaty and its reg -
ulations, may be refu nd
ed. A mere change of purpose 
after the payment of a fee wi ll 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 an d will not notify the payor 
of such amounts. If the p
ayor or party requesting a 
refund does not provide the banking information nec -
essary for making refunds by  electronic funds trans -
fer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic funds transfer.
(b) Any request for refu nd under paragraph (a) 
of this section must be f iled within two years from the 
date the fee was
 paid. If the Office char ges
 a deposit 
account by an  am
ount other than an amount specifi -
cally indicated in an auth orization under § 1.25(b), 
any request for refund base d upon such charge must 
be filed within two years fro m the date of the deposit 
account statement 
indicating  such charge and include 
a copy of that deposit acc ount statement. The time 
periods set forth in this paragraph are not extendable.
(c) Refund of the supplem ental 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 with drawn before transmittal of 
the record copy to the In ternational Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded 
if the application is with drawn before transmittal of 
the search copy to the International Searchi
ng Author -
ity. 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 sen t 
by the International Prelimi -
nary Examining Authorit y 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
§  1.451 The priority claim and priority document 
in an international application.
(a) The claim for priority  must, subject to para -
graph (d) of this section, be made on the Request 
(PCT Rule 4.10) in a manner complying with sections 
11
0 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United 
States natio
nal 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  
applica tion upon filing with the 
United States Receiving Office or in a separate letter 
filed in the United States Re ceiving Office not later 
than 16 months after the pr iority date, that the United 
States Patent and Trademark Office prepare a certified copy of the prior applicat ion 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 wi th the international appli -
cation on filing, or, if the priority application was filed 
in the United States and  a re
quest and appropria t
e 
payment for preparation of such a certified copy do not accompany the internatio nal application on filing 
or are not filed within 16 mo nths of the priority date, 
the certified copy of the pr iority 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).
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 134PATENT RULES § 1.455
R-133 Rev. 8, July 2010(d) The applicant may corre ct or add a priority 
claim in accordance with PCT Rule 26bis.1.
[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 
1982, effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 
17, 1982, effective Oct. 1, 1982; paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) revised, para. (d) added, 63 FR 29614, June 1, 1998, effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); para. (b) revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]
§  1.452 Restoration of right of priority.
(a) If the international ap plication has an inter -
national filing date which is  later than the expiration 
of the priority period as defined by PCT Ru le 
2.4 but 
within two months from the expiration of the priority 
period, the right of priority  in the international appli-
cation may be restored upon request if the delay in fil -
ing the international applic ation within the priority 
period was unintentional.
(b) A request to restore the right of priority in 
an internati onal application 
under paragraph (a) of 
this section must be filed not later than two months 
from the expiration of th e prio
rity period and must 
include:
(1) A notice under PCT Rule 26 bis.1(a) add -
ing the priority claim, if the priority claim in respect 
of the earlier application is not contained in the inter -
national application;
(2) The fee set forth in § 1.17(t); and 
(3) A statement that th e delay in filing the 
international  application w ithin the priority period 
was unintentional. The Di rector may require addi -
tional information where th ere 
is a question whether 
the delay was unintentional.
(c) If the applic
ant makes a request for early 
publication under PCT Artic le 21(2)(b), any require -
ment un
der paragraph (b) of this section filed after the 
technical prepara t
ions for international publication 
have be en 
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  se
ction, 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 applica -tion which has entered the national stage under 35 
U.S.C. 371, or in any application filed under 35  
U.S.C. 1
11(a) which claims benefit under 35 U.S.C. 
120 and 365(c) to an inte rnational application in 
which the right to prior ity has been restored.
[Added, 72 FR 51559 Sept. 10, 2007, effective Nov. 9, 
2007]
REPRESENTATION
§  1.455 Representation in international applica -
tions.
(a) Applicants of internat ional applications may 
be represented by attorneys or agents registered to 
practice before the United
 States Patent and Trade-
mark Office or by an applicant appointed as a com -
mon representative (PCT Art. 49, Rules 4.8 and 90and § 11.9). If applicants have not appointed an attor-
ney or agent or one of the app lican
ts to represent 
them, and there is more than  one applicant, the appli-
cant first named in the requ est and who is entitl ed 
to 
file in the U.S. Receiving Office shall be considered 
to be the common repre senta tive of 
all the applicants. 
An attorney or agent havi ng the right to practice 
before a national office with which an international application is filed and fo r which the United States is 
an International Searching Authority or International 
Preliminary Examining Auth ority may be appointed 
to represent the applicants in the international applica -
tion before that authority. An attorney or agent may 
appoint an associate attorney or agent who s h 
all also 
then be of record (PCT Rule 90.1(d)). The appoint-ment of an attorney or agent, or of a common repre-
sentative, revokes any earlier appointment unless 
otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or com -
mon represen
tative (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 sub
mitted either to the United 
States Receiving Office or to  the International Bureau.
(c) Powers of attorney and revocations thereof 
should be submitted to th e 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 Instruc -
tions.
IP/N/1/USA/D/2 
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Page 135§ 1.461 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-134[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 5899
1, Oct. 20, 2003, effective Jan. 1, 2004; 
para. (a) revised, 69 FR 35427, June 24, 2004, effective July 26, 2004]
TRANSMITTAL OF RECORD COPY
§  1.461 Procedures for transmittal of record copy 
to the International Bureau.
(a) Transmittal of the record copy of the inter -
national application to the Internat ional 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 Of fice 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
§  1.465 Timing of application processing based 
on the priority date.
(a) For the purpose of computing time limits 
under the T reaty, 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 un de
r PCT Rule 26 bis.1(a), withdrawn under 
PCT Rule 90 bis.3, or considered not to h
ave been 
made under PCT Rule 26 bis.2, the priority date for 
the purposes of computing any non-expired time lim -
its will be the filing date of  the earliest remaining pri -
ority claim under PCT Article 8 of the international 
application, or if none, th e international filing date.
(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 correc tions 
falls later than one year fr
om 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]
§  1.468 Delays in meeting time limits.
Delays in meeting time lim its during international 
processing of international applications may only be 
excused as provided in PCT Rule 82. For delays in 
meeting time limits in a na tional application, see 
§ 1.137.
AMENDMENTS
§  1.471 Corrections and amendments during 
international processing.
(a) Except as otherwise provided in this para -
graph, 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 a ccompanied by a letter that dra
ws 
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 st ated 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 correc-
tions do not adversely affect the clarity and direct 
reproducibility of t he application (PCT Rule 26.4). 
Amendments that do not comply with PCT Rules 10
and 11.1 to 11.13 may not be entere d.
(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  un
der PCT Rule 4.17 should be 
submitt ed to the Internatio nal Bureau as prescribed by 
PCT Rule 26 ter.
[Para. (a) revised, 63 FR 2 9614, June 1, 1998, effective 
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 136PATENT RULES § 1.476
R-135 Rev. 8, July 2010para. (c) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 
1, 2001]
§  1.472 Changes in person, name, or address of 
applicants and inventors.
All requests for a change in person, name or 
address of applicants and in ventor should be sent to 
the United States Receiving Office unti
l the time of 
issuance of the internationa l 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
§  1.475 Unity of invention before the Interna -
tional Searching Authority, the Interna -
tional Preliminary Examining Authority 
and during the national stage.
(a) An international and a national stage appli -
cation shall relate to one in ventio n only o
r to a group 
of inventions so  li
nked as to form a single general 
inventive concept (“requirement of unity of inven -
tion”). 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 rela -
tionship among those inventions  
involving one or 
more of the same or corresponding special technical features. The expression “special tech nical fea
tures” 
shall mean those technical features that define a con -
tribution which each of the claimed inventions, con -
sidered as a whole, makes over the prior art.
(b) An international or a national stage applica -
tion containing claims to different categories of inven-
tion will be considered to ha ve unity of invention if 
the claims are drawn only to one of the following 
combinations of categories:
(1) A product and a p r
ocess specially adapted 
for the manufacture of said product; or
(2) A product and process of use of said 
product; o r
(3)
A product, a proces s specially adapted for 
the manufactu r
e of the said product, and a use o f
 the 
said product; or
(4) A process and an apparatus or means spe -
cifically designed for carry ing out the said process; or(5) A product, a process specially adapted for 
the manufacture of the sa id product, and an 
apparatus 
or means specific ally de
signed 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 manufac-
ture or uses are claimed, the first invention of the cat -
egory first mentioned in the claims of the application and the first recited invention of each of the other cat -
egories related thereto will be considered as the main 
invention in the claims, see PCT Article 17(3)(a) and § 1.4 76
(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 cla
ims 
or as alternatives w ithin 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]
§  1.476 Determination of unity of invention 
before the International Searching 
Authority.
(a) Before establishing the international search 
report, the Internati onal Searching Authority will 
determine whether the inte rnational application com -
plies with the requirement of  unity of invention as set 
forth in § 1.475.
(b) If the International Searching Authority 
considers that the i
nterna tional application does not 
comply with the requirement of un ity
 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 inven -
tion first mentioned (“main invention”) in the claims.
(d) Lack of unity of inven tion
 may be directly 
evident before considering the claims in rel a
tion to 
any prior art, or after taking the prior art into consider-ation, as where a do
cument discovered during the 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 137§ 1.477 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-136search shows the invention claimed in a generic or 
linking claim lacks novelty or is clearly obvious, leav -
ing two or more claims joined thereby without a com -
mon 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]
§  1.477 Protest to lack of unity of invention 
before the Intern ational Searching 
Authority.
(a) If the applicant disagrees with the holding 
of lack of unity of i nvention by the International 
Searching Authority , addi tional fees may be paid 
unde r protes t, accompanied by a  reque st for refund 
and a statement  setting forth reasons for disagreement 
or why the required additio nal fees are considered 
excess ive, or both (PC T Rule 40.2(c )).
(b)
Protest under paragrap h (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 justified, the additional fees or a por -
tion thereof will be refunded.
(c) An applicant who desires that a copy of the 
protest and the deci
sion thereon accompany the inter -
national search report when forwarded to the Desig -
nated Offices may notify the International Searching 
Authority to that effect an y time prior t o
 the issuance 
of the international search report. Thereafter, such notification should be dire cted 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
§  1.480 Demand for inte rnational preliminary 
examination.
(a) On the filing of a proper Demand in an 
applicati on for which the Un ited States International 
Preliminary Examining Authority is competent and 
for which the fees have been paid, the international application shall be the subj ect of an international pre -
liminary examination. The preliminary examination 
fee (§ 1.482(a)(1))  an
d 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 standard -
ized 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 exami -
nation 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 Contra cting S
tates which are designated 
and are bound by Cha
pter II of the Treaty on the inter-
national fili ng 
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 66 040, Dec. 1, 1998); para. (c) 
removed an d 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]
§  1.481 Payment 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 examina-
tion fee payable is t
he handling fee or preliminary 
examination fee in effect on the date of payment.
(1) If the handling and preliminary examina -
tion fees are not paid within the time period set in PCT Rule 57.3, applicant will be notified and given 
one month within  wh
ich to pay the deficient fees plus 
a late payment fee equal to the greater of:
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 138PATENT RULES § 1.484
R-137 Rev. 8, July 2010(i) Fifty percent of the amount of the defi -
cient fees, but not exceeding an amount equal to dou -
ble th
e handling fee; or
(ii) An amount equal to the handling fee 
(PCT Rule 58 bis.2).
(2) The one-month time lim it set in this para -
graph  to
 pay deficient fees may not be  exte
nded.
(b) If the payment needed to cover the handling 
and preliminary examinatio n fees, pursuant to para -
graph (a) of this section, is not time l
y made in accor -
dance with PCT Rule 58 bis.1(d), the United States 
International Preliminary Examinat
ion 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]
§  1.482 International preliminary examination 
fees.
(a) The following fees and charges for interna -
tional preliminary examinatio n are established by the 
Director unde r 
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 interna -
tional application to the United States Patent and 
Trademark Office as an Internationa l Se
arching 
Authori ty
 . . . . . . . . . . . . . . . . . . . . . . $600.00
(ii) If the International Searching Author -
ity for the international application was an authority other than the United States  
Patent and Trademark 
Office  . . . . . . . . . . . . . . . . . . . . . . $750.00
(2) An additional pre liminary examination 
fee when required, per add itional 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) amen ded, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; pa ras. (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, effec -
tive Jan. 1, 2004]
§  1.484 Conduct of international preliminary 
examination.
(a) An international preliminary examination 
will be conducted to formul ate a non-binding opinion 
as to whether the claimed invention has novelty, 
involves an inventive step (is non-obvious) an
d is 
industrially applicable.
(b) International prelim inary examinati on will 
begin in acco rdance with PCT Rule 6 9.1.
(c) No int ernational 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 in ve
ntion lacks nove lty
, inven -
tive step or industrial ap plicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
(e) The written opinion established by the Inter -
national 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 Pr eliminary Examining 
Authority may est ablish 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 opin -
ion under paragraph (f) of th is section is to be estab -
lished, or after any writ
ten opinion and the reply 
thereto or 
the expiration of the time limit for reply to 
such written opinion, an international prel
iminary 
examination report will be established by the Interna -
tional P
reliminary Examin ing Authority. One copy 
will be submitted to the International Bureau and one 
copy will be submitte d to the applicant.
(h) An applicant will be permitted a personal or 
telephone interview with th e examiner
, which may be 
requested after the filing of a Demand, and must be 
conducted during  th
e period between the establish -
IP/N/1/USA/D/2 
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Page 139§ 1.485 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-138ment of the written opinion and the establishment of 
the international prelimin ary examination report. 
Additional interviews may be conducted where the 
examiner determines that such additional interviews 
may be helpful to advancin g the international prelimi -
nary examination procedure. A summary of any such personal or telephone interv iew 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 whos e priority is claimed 
in the international application is in a language other 
than English, the United States International Prelimi-
nary Examining Authority 
may, where the validity of 
the priority claim is relevant for the formulation of the 
opinion referred to in Ar
ticle 33(1), invite the appli -
cant to furnish an English tr anslation of the priority 
document within two mont hs fro
m the date of the 
invitation. If the translation is not furnished within 
that time limit, the interna tional preliminary report 
may be established as if th e 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 296 14, 
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]
§  1.485 Amendments by applicant during inter -
national 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 Interna -
tional Preliminary Examinin g 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, effec -
tive July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); amended, 74 FR 31372, July 1, 2009, effective July 
1, 2009]§  1.488 Determination of unity of invention 
before the International Preliminary 
Examining Authority.
(a) Before establishing any written opinion or 
the international preliminar y examination report, the 
International Preliminary Examining Authority will determine whether the inte rnational application com -
plies with the requirement of  unity of invention as set 
forth in § 1.475.
(b) If the International Preliminary Examining 
Authority considers that th e internat ional 
application 
does not comply with the requirement of unity of 
invention, it may:
(1) Issue a written opinion and/or an interna -
tional preliminary examinatio n report , in respect  
of 
the entire international app lication and indicate that 
unity of invention is lack ing and spec ify the rea
sons 
therefor without extending an invitation to restrict or pay additional fees. No international preliminary 
exami n
ation will be conducted on inventions not pre -
viously 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 interna tional preliminary examina -
tion will be conducted on in ventions 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 P
relimin ary Examining Authority 
will issue a written opinion and/or establish an inter -
national preliminar y examina tion report on 
the main 
invention and shall indicate the relevant facts in the 
said report. In case of an y doubt 
as to which invention 
is the main invention, the invention first mentioned in 
the claims and prev ious
ly 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 consider-
ation, as where a document discovered during the search shows the invention cla i
med in a generic or 
linking claim lacks novelty or is clearly obvious, leav -
ing two or more claims joined thereby without a com -
mon inventive concept. In su ch 
a case the 
IP/N/1/USA/D/2 
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Page 140PATENT RULES § 1.492
R-139 Rev. 8, July 2010International 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, ef fect
ive Dec. 
1, 1997]
§  1.489 Protest 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 inven tion by the International Pre-
liminary Examining Authority, additional fees may be paid un de
r protest, accompanied by
 a request for 
refund and a statement se tting forth reasons for dis-
agreement or why the requ ired additional fees are 
considered excessive, or both.
(b) Protest under paragrap h (a) of this section 
will be examined by the Director or the Director’s 
designee. In the event that the applica
nt’s protest is 
determined to be justified, the additional fees or a por -
tion 
thereof will be refunded.
(c) An applicant who desires that a copy of the 
protest and the decision thereon accompany the inter -
national preliminary examin ation report when for -
warded to the Elected Of fices, 
may notify the 
International Preliminary Ex amining Authority to that 
effect any time prior to the  issuance 
of the interna-
tional preliminary examination report. Thereafter, 
such notification should be directed to the Interna -
tional Bureau.
[Added 52 FR 20050, May 28, 1987, effective July 1, 
1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive May 1, 2003]
NATIONAL STAGE
§  1.491 National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national 
stage shall commence with th e expiration of the appli -
cable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) A n i
nternational a pplication enters the 
national stage when the applicant has filed the docu -
ments 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]
§  1.492 National 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 Dece mb
er 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.  37 1 
 if the 
basic national fee was not paid before December 8, 
2004:
(1) If an international preliminary examina -
tion report on the interna tional application prepared 
by the United States Inte rnational Preliminary Exam -
ining Authority or a written opinion on the interna -
tional application prepar ed by the United State s
 
International Searching Auth ority states that the crite -
ria of novelty, in
ventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33
(1) to (4) have been satisfied for all of the claims pre -
sented 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 appli -
cation 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 
pr
ovided, 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 para -
graphs (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
IP/N/1/USA/D/2 
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Page 141§ 1.492 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-140(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 internationa l preliminary examina -
tion report on the interna tional application prepared 
by the United States International Preliminary Exam -
ining Authority or a written opinion on the interna -
tional application prepared b y th
e United States 
International Searching Auth orit
y states that the crite -
ria of novelty, i nven
tive step (n on
-obviousness), and 
industrial applicability, as defined in PCT Article33(1) to (4) have been satis fied for all of the claims 
presented in the applica tion 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 para -
graph (c)(1) of this section:
By a small entity (§ 1.27(a))  . . . $110.00By other than a small entity . . . . $220.00
(d) In addition to the basi c national fee, for fil -
ing 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 fil -
ing or on later presen tation
 at any other time of each 
claim (whether dependent or independent) in excess 
of 20 (note that §1.75( c) indicates how multiple 
dependen t c
laims are considered for fee calculation 
purposes):
By a small entity (§ 1.27(a))  . . . . $26.00
By other than a small entity . . . . . $52.00
(f) In addition to the basi c national fee, if the 
application contains, or is amended to contain, a mul -
tiple 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 para -
graphs (d) and (e) of this section and mult iple depen -
dent claim fee required by paragraph (f) of this 
section are not paid with the basic national fee or on 
later pre sentation 
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 expi ration 
of the time period set for reply by the Office in  any notice of fee defi-
ciency 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 commencemen t 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 afte r the priority date (§§
1.495(c) and (e)) . . . . . . . . . . . . . . . . . . . . .
$130.00.
(j) Application size fee for any international 
application for which the basic nationa l fee was not 
paid before December 8, 2004, the specification and drawings of which exceed  10
0 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) revise d, 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, 
IP/N/1/USA/D/2 
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Page 142PATENT RULES § 1.495
R-141 Rev. 8, July 20102005; 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]
§  1.495 Entering the national stage in the United 
States of America.
(a) The applicant in an international appli cation 
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 pr event the aba
ndonment 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. Internatio nal applications for which 
those requirements are timely fulfilled will enter the national stage and obtain an examination as to the pat -
entability of the invention in the United States of America.
(b) To avoid abandonment of the  ap
plication, 
the applicant shall furnish to  the United States Patent 
and Trademark Office not later than the expiration of thirty months from the priorit y
 date:
(1) A copy of the international application, 
unless it has been previously communicated by the International Bureau or unle ss it was originally filed 
in the United St ates
 Patent and Trademark Office; and
(2) The basic national fee (see § 1.492(a)).
(c)(1) If applicant compli es with paragraph (b) of 
this section before expiratio n 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 appli -
cation, 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 interna -
tional application previo usly submitted under 35 
U.S.C. 154(d) (§ 1.417) is not also a transla t
ion of the 
international application as filed (35 U.S.C. 371(c)(2));
(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 w ith §
 1.497  has not been 
previously submitted in th e international application 
under PCT Rule 4.17(iv) within the time limits pro -
vided for in PCT Rule 26ter .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 s
ize fee required by § 
1.492(j);
(2) A notice under para
graph (c)(1) of this 
section will set a time period  within which applicant 
must provide any omitted tran slation, oath or declara -
tion of the inventor, searc h
 fee set forth in § 1.492(b), 
examination fee s e
t forth in § 1.492(c), and any appli -
cation size fee required by § 1.4 92(
j) in order to avoid 
abandonment of the application.
(3) The payment of the pro ce
ssing 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 da te. The payment of the sur -
charge set forth in § 1.492( h) is required for accep -
tance of any of the search fee, the examination fee, or 
th
e oath or declaration of th e inventor after the date of 
the commenceme nt of th
e national stage (§ 1.491(a)).
(4) A “Sequence Listing” need not be trans-
lated if the “Sequence Listing” complies with PCT 
Rule 12.1(d) and the desc ription complies with PCT 
Rule 5.2(b).
(d) A copy of any amen dments to the claims 
made under PCT Article 19
, and a transl a
tion of those 
amendments into English, if they were made in 
another language, must be furnished not later than the 
expiration of thirty mont hs 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.
IP/N/1/USA/D/2 
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Page 143§ 1.496 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-142(e) A translation into English of any annexes to 
an international preliminar y examination report (if 
applicable), if the annexes were made in another lan -
guage, must be furnished no t later than the expiration 
of thirty months from the prio rity date. Translations of 
the annexes which are not received by the expiration 
of thirty months from the priority date may be submit -
ted withi n
 any period set pu rsuant 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 interna -
tional application o r
 any other document pertaining to 
an international applicatio n may be required where it 
is considered necessary, if the international applica -
tion 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 m
ade under 35 U.S.C. 111(a).
(h) An international ap plication becomes aban -
doned 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 thir ty 
months from the priority 
date. If the requirements of 
paragraph (b) of this sectio n are complied with within 
thirty months from the priority date but either of any 
required translation of the inte
rnational application as 
filed or the oath or declaration are not timely filed, an 
international application will become aban
doned 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, ef fec-
tiv
e 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  160
04, 
Mar. 22, 2001, effective Mar. 1, 2001 para. (c)(2) corrected, 66 FR 28053, May 22, 2001, effective Mar. 22, 2001; head -
ing 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, effecti v
e Jan. 21, 2004; para. (c) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (c)(1)(i) and (c)(3) re vised, 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) revi sed, 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)]
§  1.496 Examination of international applica -
tions in the national stage.
(a) International applications which have com -
plied 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 proce ssing has be
en 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 applic ations having paid 
therein the search fee as set forth in § 1.492(b)(1) and the examination fee as  s
et 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 elimi -
nate 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) revi sed, 70 FR 35375, June 20, 
2005, effective July 1, 2005]
§  1.497 Oath or declaration under 35 U.S.C. 
371(c)(4).
(a) When an applicant of an international appli -
cation desires to enter the national stage under 
35 U.S.C. 371 pursuant to § 1.495, an d
 a declaration 
in compliance with this section has not been previ -
ously submitted in the inte rnational application under 
PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26 ter.1, he or sh e
 must file an oath or 
declara tion 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 th
e original and first inventor or in vento
rs of the 
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R-143 Rev. 8, July 2010subject 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 declara -
tion 
or any supplemental oath or declaration is not the 
inventor (§§ 1.42, 1.43, or § 1.47), the oath o r
 declara-
tion shall state the relationship of the person to the 
inventor, and, upon information and belief, the facts 
whic
h 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 mail -
ing address of the legal representative.
(c) Subject to paragraph (f) of this section, if 
the oath or declaration m eets the requirements of 
paragraphs (a) and (b) of this section, the  oath
 or dec -
laration will be accepted as complying with 35 U.S.C. 
371(c)(4) and § 1.495(c). However ,
 if the oath or dec -
laration 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 inven -
tive entity different from the i
nventive entity set forth 
in the international application, or if a change to the 
inventive entity has been effected under PCT Rule 
92bis subsequent to th e execu
tion of any oath or dec -
laration which was filed in the application under PCT Rule 4.17(iv) or this sec tion and the inventive entity 
thus changed is different from the inventive entity 
identified in any such oath or decl
aration, applicant 
must submit:
(1) A statement from each person being 
added as an inventor and from each person b eing
 
deleted as an inventor that any error in inventorship in 
the international applicat ion occurred without decep -
tive 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 con -
sent of the assignee (see § 3.73(b) of this chapter); and
(4) A ny
 new oath or declaration required by 
paragraph (f) of this section.(e) The Office may require such other informa -
tion as may be deemed appropriate under the particu -
lar circumstances surrounding the correction of 
in
ventorship.
(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(iv), an d:
(1)
There was a change in the international 
filing date pursuant to PCT Rule 20.5(c) after the dec -
laration was executed; or
(2) A change in the inventive entity was 
effected under PCT Rule 92 bis after the declaration 
was 
executed and no declar ation which sets forth and 
is executed by the inventiv e 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 interna -
tional stage after the declar ation of inventorship was 
executed in the internatio nal applic
ation under PCT 
Rule 4.17(iv), applicant wi ll be required to submit 
either a new oath or declaration or an application data sheet as set forth in § 1.76  correctly identifying the 
applicatio n upo
n 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, Se pt. 10, 2007, effective Sept. 
10, 2007]
§  1.499 Unity of invention during the national 
stage.
If the examiner finds that a national stage applica -
tion lacks unity of invention under § 1.475, the exam -
iner may in an Office action require the applicant in 
the response to that action  to elect the invention to 
which the claims shall be re stricted. Such requirement 
may be made before any action on the merits b
ut may 
be made at any time before the final action at the dis -
cretion of the examiner. Review of any such require-ment is provided under §§ 1.143 and 1.144.
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Rev. 8, July 2010 R-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
§  1.501 Citation of prior art in patent files.
(a) At any time during th e period of enforce -
ability of a patent, any person may cite, to the Office 
in writing, prior art consis ting of patents or printed 
publications which that pers on states to be pertinent 
and applicable to the pate nt 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 expla -
nation 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 ma king the c
itation wishes his 
or her identity to be excluded from the patent file and 
kept confidential, the citation papers must be submit -
ted without any identification of the person making 
the submission.
(c) Citation of 
patents or printed publications 
by the public in patent file s should either: (1) Reflect 
that a copy of the same has been mailed to the patent 
owner at the ad dress
 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]
§  1.502 Processing 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 en tered in the reexamination 
file during a reexaminatio n 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  reexamina -
tion requester under e ither  § 1.510 or  § 1.535, will be 
delayed until the reexamination proceeding has been concluded by the issuance and publicat ion 
of a reex -
amination certificate. See  § 1.902 for processing of 
prior art citations in pate nt 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 P ARTE  REEXAMINATION
§  1.510 Request 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 pointin g 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 o f
 applying 
the cited prior art to every claim 
for which reexamina -
tion is requested. If appropriate  the party re
questing 
reexamination may also point out how claims distin-guish over cited prior art.
(3) A copy of every patent or printed publica -
tion relied up
on or referred to in paragraph (b)(1) and 
(2) of this section accompanied by an English lan -
guage translation of all the necessary and pertinent 
parts of any non-English lang uage patent o
r printed 
publication.
(4) A copy of the entire patent including the 
front face, drawings, and specification/claims (in dou -
ble column format) for whic
h reexamination is 
requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certific ate 
issued in the 
patent. All copie
s 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 
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R-145 Rev. 8, July 2010address of the party served must be indicated. If ser -
vice was not possible, a duplicate copy must be sup-
plied to the Office.
(c) If the request does not include the fee for 
requesting ex parte  reexamination required by para -
graph (a) of this section an d meet all the requirements 
by paragraph (b) of this sec tion, then the person iden -
tifie
d as requesting reexamin ation will be so notified 
and will 
generally be give n an opportunity to com -
plete the request within a specified time. Failure to 
comply with the notice will result in the ex parte  reex -
amination 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.
(d) The filing date of the request for ex parte
reexamination is the dat
e on which the request satis -
fies all the requirements of this section.
(e) A request filed by the paten t own
er may 
include a proposed amendment in accordance with § 1.530.
(f) If a request is filed by an attorney or agent 
identify
ing another party on whose behalf th e request 
is being filed, the 
attorney or agent must have a power 
of attorney from that party or be acting in a represen -
tative 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, effec -
tive Dec. 1, 1997; paras. (b)(4) and (e) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and 
para. (a) rev i
sed, 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]
§  1.515 Determination 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 t h
e request and determine 
whether or not a substantial new question of patent -
ability affecting any claim of the patent is raised by 
the request and the prior art cited therein, with or 
without consideration of ot her patents or printed pub -lications. The examiner’s de termination will be based 
on the claims in effect at the time of  the determina -
tion, 
will become a part of the official file of the 
patent, and will be mailed  to th
e patent owner at the 
address as provided for in § 1.33(c) and to the pe
rson 
requesting reexamination.
(b) Where no substantial new question of pat -
entability has been found, a refund of a portion of the 
fee for requesting ex parte  reexamination will be 
made to the requester in accordan ce
 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 com -
ply with § 1.181(b). If no pe tition is timely filed or if 
the decision on petition affi rms 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]
§  1.520 Ex 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 ques tion of patentability is 
raised by patents or printe d publications which have 
been disc
overed by the Director or which have been 
brought to the Director’s a ttention, even though no 
request for reexamination has been filed in accor -
dance with § 1.510 or § 1.913. The Director may ini -
tiate ex parte  reexamination without a request for 
reexamination pursuant to § 1.510 or §  1.913. No r-
mally 
requests from outside the Office that the Direc -
tor 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 ad dress a s 
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]
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Page 147§ 1.525 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-146EX P ARTE  REEXAMINATION
§  1.525 Order for ex parte  reexamination.
(a) If a substantial new question of patentability 
is found pursuant to § 1.515 or § 1.520, the determina -
tion will include an order for ex parte reexamination 
of the patent for resolution of the question. If the order 
for ex p
arte 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 re sponsi ble for the ini
tial determi -
nation under § 1.515(a).
(b) The notice published in the Official Gazette
under § 1.11(c) will be cons idered 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]
§  1.530 Statement by patent owner in ex parte
reexamination; amendment by patent 
owner in ex parte  or inter partes  reexami -
nation; inventorship change in ex parte  or 
inter partes  reexamination.
(a) Except as provided in § 1.510(e), no st ate-
men
t 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 acknowl -
edged or considered in maki ng the determination, and 
it will be returned or di scarded (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 order within which the patent owner may file a 
statement on the new quest ion 
of patentability, includ -
ing any proposed amendm ents 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 co mbinations. Whe
re the reex -
amination request was filed by a third party requester, 
any st atemen
t filed by the patent owner must be 
served upon the ex parte  reexamination requester in 
acco
rdance 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 pate nt specification, including 
the claim
s, or to the drawings. An amendment paper 
directing that proposed spec ified 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 perm itted, during the prosecu -
tion of the reexamination proceeding pursuant to 
§ 1.550(a) or § 1.937.
(1) Specifi cation other than the claims . 
Changes to the specification, other than to the cla i
ms, 
must be made by submission of the entire text of an 
added or rewritten paragraph including markings pur -
suant to 
paragraph (f) of this section, except that an 
entire paragraph may be deleted by a statement delet -
ing the paragraph, without presentation of the text of the paragraph. Th e p
recise point in the specification 
must be identified where any added or rewritten para -
graph is located. This paragraph  ap
plies 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 amendmen t 
p
aper and of each new claim being proposed to be 
added by such amendmen t 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 sec -
tion, 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 . An y change to the patent 
drawings must be submitted as  a sketch on a separate 
paper showing the p
roposed changes in red fo r 
approva
l by the examiner . Upon approval of the 
changes by the examiner, 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 
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Page 148PATENT RULES § 1.535
R-147 Rev. 8, July 2010must be surrounded by br ackets and identified as 
“Canceled.” 
(4) The formal require ments for papers mak -
ing up the reexamination pr oceeding other than those 
set forth in this sectio n are set out in § 1.52.
(e) Status of claims and support for claim 
chan
ges. 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 pag -
es containing the changes, the status ( i.e., pending or 
canceled), as of the da te
 of the amendment, of all 
patent claims and of all added claims, and an explana -
tion of the support in the disc losure of the patent for the 
changes to the claims made  by the amendment paper.
(f) Changes shown b y ma
rkings . Any changes 
relative to the patent being reexamined which are 
made to the specification, including the claims, must 
include the follo wing markings:
(1) The matter t
o be omitted by th e reexami -
nation proceeding must be enclosed in brackets; and
(2) The matter to be ad d
ed by the reexamina -
tion proceeding must be underlined. 
(g) Numbering of patent claims preserved . 
Patent claims may not be renumbered. The n
umbering 
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 disclo su 
re must be am ended, when required by 
the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence 
between the claims, the remainder of the specifica -
tion, and the drawings.
(i) Amendments made r elative to patent.  All 
amendments must be made relative to the patent spec -
ification, including the cl aims, and drawings, wh ich
 
are in effect as of the date of 
filing the request for 
reexamination.
(j) No enlargement of claim scope . No amend -
ment may enlarge the scope of the claims of the patent 
or introduce new 
matter. No amendment may be pro-
posed for entry in an expired pate
nt. 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 Of
fice actio ns will treat proposed 
amendments as though they have been
 entered, the 
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 bein
g reex-
amined that the correct inventor or inventors were not named through error withou t deceptive intention on 
the part of the actual inventor or inventors, the Direc -
tor may ,
 on petition of all the parties set forth in 
§ 1.324(b)(1)-(3), includin g the assignees, and satis -
factory proof of the facts and payment of the fee set 
forth in  § 1. 20(b), or o n order of a court  befo
re which 
such matter is called in qu estion, include in the reex -
amination certificate to be issued under § 1.570 or § 1.997 an amendment naming  only the actual inven -
tor or inventors. The pe tition must be submitted as 
part of the reexamination proceeding and must satisfy the re q
uirements of  
§ 1.324.
(2) Notwithstanding paragraph (1)(1) of this 
section, if a petition to corr ect inventorship satisfying 
the requirements of § 1 .
324 is filed in a reexamination 
proceeding, and the reexamination proceeding is con -
cluded other than by a reex amination certificate under 
§ 1.570 or § 1.997, a certificate of correction indicat -
ing the change of inventor ship stated in the petition 
will be 
issued upon re quest 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, effec -
tive Feb. 5, 2001; para. (l)( 1) revi sed, 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]
§  1.535 Reply 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 owne r
’s statement. Any reply by the ex 
parte  requester must be served upon the patent owner 
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Page 149§ 1.540 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-148in 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 reexaminatio n 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]
§  1.540 Consideration 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 statement pursuant to § 1 .53
0 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]
§  1.550 Conduct of ex parte  reexamination pro-
ceedings.
(a) All ex parte reexamination proceedings, 
including any appeals to the Board of Patent Appea l
s 
and Interferences, will be co nducted with special dis-
patch within the Office. After issuance of the ex parte
reexamination order and expi ration of the time for 
submitting any responses, the examination will be conducted in accordan ce with §§
 1.104 through 1.116
and will result in the issuance of an ex parte  reexami -
nation certificate under § 1.570.
(b) The patent owner in an ex parte  reexamina -
tion proceeding will be given at least thirty days to respond to any Office action. In response to any 
rejection, such response may include further state -
ments and/or proposed amen dments or new claims to 
place the patent in a condi tion where all claims, if 
amen
ded as proposed, would be patentable.
(c) The time fo
r taking any action by a patent 
owner in an ex parte  reexamination proceeding will 
be extended only for suffic ient cause and for a reason-
able time specified. Any re quest for such extension 
must be filed on or before the day on
 which action by 
the patent owner is due, bu t in no case will the mere 
filing of a request ef
fect any extension. Any request 
for such extension must be accompanied by the peti -
tion 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 writ-
ten statement of an inte rview required under § 
1.
560(b), the prosecution in the ex parte  reexamina -
tion proceeding will be a te rminated prosecution, and 
the Director wi ll 
proceed to  issue and publish a certif -
icate concluding the reexamination proceeding under 
§ 1.570 in ac cordance
 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 Direc -
tor that t h
e delay was unavoi dable; a petition to accept 
an unavoidably delayed response must be filed in 
compliance with § 1.137(a); or
(2)
The respon se
 may neve rth
eless be 
accepted if the delay was unintentional; a petition to 
accept an unintentionally de layed 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
reexaminati
on proceeding. Af ter filing of a request for 
ex parte  reexamination by a third party requester, any 
document filed by eith er 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 co nsideration by the Office.
(g) The active participation of the ex parte reex -
amination requester ends w ith the reply pursuant to 
§ 1.535, and no further submissions on behalf of the 
reexamination requester wi
ll be acknowledged or con -
sidered. Further, no submission s o
n behalf of any 
third parties will be ackn owledged 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 requirement s
 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; 
IP/N/1/USA/D/2 
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Page 150PATENT RULES § 1.555
R-149 Rev. 8, July 2010para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 
1985; para. (c), 54 FR 29553, Ju ly 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]
§  1.552 Scope of reexamination in ex parte  reex -
amination proceedings.
(a) Claims in an ex parte  reexamination pro -
ceeding will be examined on the basis of patents or 
printed publications and, with respect to subject mat -
ter added or deleted in th e reexamination 
proceeding, 
on the basis of the requirem ents of 35 U.S.C. 
112.
(b) Claims in an ex parte reexamination pro -
ceeding will not be permitted to enlar g
e the scope of 
the claims of the patent.
(c) Issues other than those  indica
ted in para -
graphs (a)
 and (b) of this section will not be resolved 
in a reexamination procee ding. If such issues are 
raised by the patent owner or third party requester 
during a reexamination pro c
eeding, the existence of 
such issues will be noted by  the examiner in the next 
Office action, in which case the patent owner may consider the advisability 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]
§  1.555 Information 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 in terest is best served, and 
the most effective reexamin ation occurs when, at the 
time a reexamination proceeding is being conducted, the Of fic
e is aware of and evaluates the teachings of 
all information material to  patentability in a reexami -
nation proceeding. Each individual associated with the patent owner in a reexamination proceeding has a 
duty of candor and go o
d 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 reex amination proceeding. The 
individuals who have a duty to disclose to the Office 
all information known to them  to be material to pat -
entability in a reexaminatio n proceeding are the patent 
owner, each attorney or agent who represents the patent  
owner, and every other individual who is sub -
stantively involved on behalf of the patent owner in a 
reexamination proceeding. The duty to disclose the information exists with resp ect to each claim pending 
in the reexamination proc eeding until the claim is 
cancelled. Infor m
ation mate rial 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 reexami -
nation proceeding. The du ty to
 disclose all informa -
tion known to be material  to patentability in a 
reexamination proceeding is de emed to be satisfied if 
all information known to be  material to patentability 
of any claim in the  patent afte
r issuance of the reex -
amination certificate was cited by the Office or sub -
mitted to the Office in an information disclosure  statement. However, the duties of candor, good faith, 
and disclosure have not be en complied with if any 
fraud on the Office was practiced or attempted or the duty of disc losure wa
s violated through bad faith or 
intentional misconduct by, or  on behalf of, the patent 
owner in the reexaminatio n proceeding. Any informa -
tion disclosure statement must be filed with the items listed in §  1.98(a) as applied to individuals associate d 
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, in formation is material 
to patentability in a reexamination proceeding when it is not cumulative to inform ation of record or being 
made of record in the r eexamina t
ion proceeding, and
(1) It is a patent or printed publication that 
establishes, by itself or in combination with other pat -
ents or printed publications, a prima faci e case of 
unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a posi -
tion the patent owner takes in:
(i) O pposing an ar
gument of unpatentability 
relied on by the Office, or
(ii) Asserting an argument of patentability.
IP/N/1/USA/D/2 
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Page 151§ 1.560 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-150A 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 unde r the preponderance of evi -
dence, burden-of-proof standa rd, giving each term in 
the claim its broadest reasonable construction consis -
tent with the specification, and before any consider -
ation is given to evidence which may be submitted in 
an attempt to establish a contrary conclu si
on of pat -
entability.
(c) The responsibility fo r compliance with this 
section rests upon the individua l
s designated in para -
graph (a) of this section and no evaluation wi ll b
e 
made by the Office in th e reexamination proceeding 
as to compliance with this  section. If questions of 
compliance with this section are raised by the patent 
owne
r or the third party requester during a reexamina -
tion 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]
§  1.560 Interviews in ex parte  reexamination pro -
ceedings.
(a) Interviews in ex parte  reexamination pro -
ceedings pending before th e Office between examin -
ers and the owners of such patents or 
their attorneys 
or agents of record must be conducted in the Office at 
such times, within Of fic
e hours, as the respective 
examiners may desi gnate. Interviews will not be per -
mitted at any other time or place without the aut
hority 
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 ac tion. Intervi e
ws 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 resp onse to Office actions as specified in § 1.111 . Pa
tent owner’s response to an 
outstanding Office action after the 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]
§  1.565 Concurrent o ffice proceedings which 
include an ex parte  reexamination pro -
ceeding.
(a) In an ex parte reexamination proceeding 
before the Office, the pate nt owner must inform the 
Office of any prio r or co
ncurrent proceedings in 
which the patent is or was involved such as interfer -
ences, reissues, ex parte  reexaminations, inter partes
reexaminations, or litigatio n and the results of such 
proceedings. See § 1.985 for notification of prior or 
concurrent proceedings in an inter partes reexamina -
tion p
roceeding.
(b) If a patent in the process of ex parte  reexam -
ination is or becomes involved in litigation, the Direc -
tor shall determine whether or not to suspend the 
reexamination. See § 1.987 for inter partes reexami -
nation proceedings.
(c) If ex par
te reexamination is ordered 
while a 
prior ex parte  reexamination proceeding is pending 
and prosecutio n in
 the prior ex parte reexamination 
proceeding has not been terminated, the ex partereexamination 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 proceeding s, 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  reex -
amination 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 pro -
ceedings. Where merger of a reissue application and 
an ex parte  reexamination proceeding is ordered, the 
merged examination will be  conducted in accordance 
IP/N/1/USA/D/2 
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Page 152PATENT RULES § 1.570
R-151 Rev. 8, July 2010with §§ 1.171 through 1.179, and the patent owner 
will be required to place an d maintain the same claims 
in the reissue application and the ex parte  reexamina -
tion proceeding during the pendency of the merged proceeding. The examiner’s actions and responses by 
the patent owner in a merg ed proceeding will apply to 
both the re is
sue application and the ex parte reexami -
nation proceeding and will be physically entered into 
both files. Any ex parte reexamination proceeding 
merged with a reissue app lication shall be concluded 
by the grant of the reissued pate nt. For mer
ger of a 
reissue application and an inter partes  reexamination, 
see § 1.991.
(e) If a patent in the process of ex parte  reexam -
ination is or becomes involved in an interference, the 
Director may suspend the reexamination or the inter
-
ference. The Director will not consider a request to 
suspen d an interfe
rence unless a motion 
(§ 41.121(a)(3) of this title) to suspend the interfer -
ence has been presented to, and de nie
d by, an admin -
istrative pate nt judge, and the request
 is filed within 
ten (10) da ys 
of a decision by an administrative patent 
judge den y
ing the motion for suspension or such other 
time as the administrative patent judge may set. For 
concurrent inter partes re examination 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
§  1.570 Issuance and publication of ex parte  reex -
amination certificate concludes ex parte
reexamination proceeding.
(a) To conclude an ex part e
 reexamination pro -
ceeding, 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  foll
owing the ex parte reexamination proceed -
ing.
(b) An ex parte  reexamination certificate will 
be issued and published in  each patent in which an ex 
parte  reexamination proceeding has been ordered 
un
der § 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 pro -
ceeding.
(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 reex amination requests relating 
thereto.
(e) If the ex parte reexamination proceeding is 
terminate
d by the grant of a reissued patent as pro -
vided in § 1.565(d), the reissued patent will consti tute 
the ex par
te reexamination certificate required by this 
section and 35 U.S.C. 307.
(f) A notice of the iss u
ance of each ex parte
reexamination certificate under this section will be 
published in the Official Gazette  on its
 date of issu -
ance.
[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, effec -
tive May 1, 2003;  heading and  paras.  (a), (b), and (d) 
revised, 72 FR 18892, Apr. 16, 2007, effecti v 
e May 16, 
2007]
Subpart E — [Reserved]
Subpart F — Adjustment and Extension of 
Patent Term
ADJUSTMENT OF PATENT TERM DUE TO 
EXAMINATION DELAY
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Rev. 8, July 2010 R-152§  1.701 Extension of patent term due to examina -
tion 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 fo r de
signs, issued on 
an application filed on or after June 8, 1995, is enti -
tled to extension of the patent  term if the issuance of 
the patent was delayed due to:
(1) Interferen ce pro
ceedings under 35 U.S.C. 
135(a
); and/or
(2) The application being placed under a 
secrecy ord e
r under 35 U.S.C. 181; and/or
(3) Appellate review by the Bo ard
 of Patent 
Appeals and Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the paten t
 was issued pursu -
ant to a decision in the review reversing an adverse determination of patentability and if the patent is not 
subject to a terminal discla imer due to the issuance of 
another patent claiming subject matter that is not pat -
entably distinct from that u nder appellate review. If an 
application is remanded by a panel of the Board of 
Patent Appeals and Interfere nces an d t
he remand is 
the last action by a panel of the Board of Patent 
Appeals and Interferences prior to the mailing of a 
notice of a l
lowance under 35 U.S.C. 151 in the appli -
cation, the remand shall be considered a decision in 
the review reversing an ad verse determination of pat -
entability as that phrase is used in 35 U.S.C. 154(b)(2) 
as amended by section 532(a) of the Uruguay Roun d 
Agreemen
ts Act, Public Law 103-465, 1 0
8 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 panel of the Board of Patent Appeals and 
Interferences shall not be considered a decision in the review reversing an adverse determination of patent -
ability as provided in this paragraph if there is filed a 
request for continued exam ination under 35 U.S.C. 
132(b) that was not first pr eceded by the mailing, after 
such remand, of at least one of an ac tio
n 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 ye ars. The extension 
will run 
from the expiration da te of the patent.
(c)(1) The period of delay under paragraph 
(a)(1) of this section for an  appli cation is the sum of 
the following periods, to th e extent that the periods 
are not overlapping:
(i) With respect to each interferenc e in 
which the application was involved, the number 
of 
days, if any, in the period beginning on the dat e
 the 
interference was declared or redeclared to involve the application in the interfere nce 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 appli -
cation was suspended by the Patent and Trademark 
Office due to in terference p
roceedings under 
35 U.S.C. 135(a) not involv ing the application and 
ending  on
 the date of the termination of the suspen -
sion.
(2) The period of dela y
 under paragraph 
(a)(2) of this section for an  application is the sum of 
the following periods, to th e extent that the periods 
are not overlapping:
(i) The number of days, if any, the appli -
cati
on 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 da te of mailing of an exam -
iner’s answer under § 41.39 of this title in the applica -
tion under secrecy order and ending on the date the secrecy order and any renewal thereof was re
moved;
(iii) The number of days, if any, in the 
perio d beginning on the date applic ant was not
ified 
that an interference would be declared but for the 
secrecy order and ending on the date  the s
ecrecy order 
and any renewal thereof was removed; and
(iv) The number of days, if any, in the 
perio d 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 p e
riod of delay un der paragraph
 
(a)(3) of this section is the sum of the number of days, 
if any, in the period beginn ing on the date on which an 
appeal to the Board of Patent Appeals and Interfer -
ences 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 Interference s o
r by a 
IP/N/1/USA/D/2 
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Page 154PATENT RULES § 1.702
R-153 Rev. 8, July 2010Federal 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 fo
rth in paragraph 
(c)(3) shall be reduced by:
(1) Any time during the period of appell ate 
review that  occurred before  three years from the filing 
of the 
first national appli cation for patent presented 
for examination; and
(2) Any time during the period of  app
ellate 
review, as determined by the Director, during which 
the applicant for patent did not act with due diligence. 
In determining the due di ligence of an applic
ant, the 
Director may examine the f acts 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, 199 5
, 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, effec -
tive Oct. 18, 2000; para. (d)(2) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 
21704, Ap
r. 22, 2004, effective May 24, 2004; para. 
(c)(2)(ii) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§  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).
(a) Failure to take certain actions within speci -
fied time frames.  Subject to the provisions of 
35 U.S.C. 154(b) and this subpart, the term of an orig -
inal patent shall be adjuste
d if the issuance of the 
patent was delayed due to th e failure of the Office to: 
(1) Mail at least one of  a notificat ion under 
3
5 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 app lication was filed under 
35 U.S.C. 111(a) or fulfill ed 
the requirements of 
35 U.S.C. 371 in an inte rnational application;
(2) Respon d to a 
reply under 35 U.S.C. 132
or to an  ap
peal taken under 35 U.S.C. 134  no
t 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 Interf erences under 35 U.S.C. 134
or 1 3
5 or a decision by a Federal court under 
35 U.S.C. 141, 145, or 146 where at least one allow -
able claim remains in the application; or 
(4) Issue a patent not later than four months 
after the date on which th e issue fee was paid under 
35 U.S.C. 151 and all ou tstand
ing 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 subp art, 
the term of an original pate nt 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 appli -
cation, but not including: 
(1) Any time consumed by continued exami-
nation of the application under 35 U.S.C. 132(b); 
(2) Any  ti
me 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 Pate nt Appe
als and Interferences or a Fed-
eral co
urt; or 
(5) An
y delay in the processing of the appli -
cation by the Office that was requested by the appli-
cant. 
(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 pa tent 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 success ful appe
llate 
review. Subject to the provisions of 35 U.S. C.
 154(b) 
and this subpart, the term of an original patent shall be 
IP/N/1/USA/D/2 
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Page 155§ 1.703 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-154adjusted if the issuance of the patent was delayed due 
to review by the Board of Patent Appeals and Interfer -
ences 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 determi-
nation of patentability. If an application is remanded 
by a panel of th e Board o
f Patent Appeals and Inter -
ferences and the remand is the last action by a panel 
of the Board of Patent Ap peals and Interferences prior 
to th
e mailing of a notice of allowance under 35 
U.S.C. 151 in the ap p
lication, the remand shall be 
considered a decision by th e 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 determi -
nation 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 notic e 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 fo
r a design patent, filed on or 
after May 29, 2000, and patents issued on such appli -
cations. 
[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 
18, 2000; para. (e) revised, 69 FR 21704, Apr. 22, 2004, 
effective May 24, 2004]
§  1.703 Period 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 t h
e require-
ments 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. 1
51, 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 end -
ing 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) Th
e number of days, if any, in the period  
begin
ning on the day after the date that is four months 
after the date a reply in compliance with § 1.113(c)was filed and ending on the date of mailing of either 
an action under 3 5
 U.S.C. 132, or a notice of allow -
ance 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 examin er’
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 allow-
able 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. 15 1
, 
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 f ee was paid and all outstand -
ing requirements were satisfied and ending on the date a patent was issued. 
(b) The p eriod
 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 app lication 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 day s
, if any, in the period 
beginning on the date on which a request for contin -
ued examination of the app lication under 35 U.S.C. 
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Page 156PATENT RULES § 1.703
R-155 Rev. 8, July 2010132(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 interfere nc
e was 
declared or redeclared to involve the application in 
the interference and ending on  the date that the inter -
ference was terminated with  respect to the applica -
tion; and
(ii) The number of days, if any, in 
the period beginning on the date prosecu tion
 in the 
application was suspended by the Office due to inter -
ference proceedings under 35 U.S.C.  13
5(a) not 
involving the applic ation and ending on the date of 
the termination of  the suspension; 
(3)(i) The n u
mber of days, if any, the appli -
cation 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 exam -
iner’s answer under § 41.39 of this title in the applica -
tion under secrecy or der an
d ending on the date the 
secrecy order was removed;
(iii) The number of days, if any, in the 
period beginning on the da te applicant was notified 
that
 an interference woul d 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  un 
der 
§ 5.3(c) of this chapter and ending on the date of mail -
ing 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 ap peal to 
the
 Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 an d § 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 in terference was declared or 
redeclared to involve the application in the interfer -
ence and ending on the date  that 
the interference was 
terminated with respect to the application; and 
(2) The number of days, if any, in th e 
period 
beginning on the date prosecution in the application was suspended by the Office due to interference pro -
ceedin gs
 under 35 U.S.C. 135(a) not involving the 
application and ending on th e date of the termination 
of the suspension. 
(d) The period of adjustmen t
 under § 1.702(d) 
is the sum of the following periods, to the extent that 
the periods are not overlapping: 
(1) The numb er of days, if an
y, the applica -
tion was maintained in a sealed condition under 
35 U.S.C. 181; 
(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 a n
d ending on the date the 
secrecy order was removed;
(3) The number of days, if any, in the period 
beginning on the date app licant was notified that an 
interference would be declared but for the se
crecy 
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) o 
f 
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 an d § 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 Interfer -
ences or by a Federal court in an appeal under 35 
U.S.C. 141 or a civil action under 35 U.S.C. 14 5 
.
(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 
groun
ds specified in §1.702 overlap, the period of 
adjustment granted under this section shall not exceed 
the actual number of days th e issuance of the patent 
was delayed. The term of a patent entitled to adjust -
ment under § 1.702 and this section shall be adjusted 
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Rev. 8, July 2010 R-156for the sum of the periods calculated under paragraphs 
(a) through (e) of this sectio n, to the extent that such 
periods are not overlapping, less the sum of the peri -
ods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8
shall not be taken into ac count in this calculation.
(g) No patent, the term of which has been 
dis-
claimed 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, effec -
tive Sept. 13, 2004]
§   1.704 Reduction of period of adjustment of 
patent term.
(a) The period of adjustment of the term of a 
patent under § 1.703(a) through (e) shall be reduced 
by a p e
riod equal to the period of time during which 
the applicant failed to engage in reasonable efforts to 
conclude prosecution (processing or examination) of 
the application. 
(b) With respect to the grounds for adjustment 
set forth in §§ 1.702(a) through (e), and in particular 
the ground of adju stment
 set forth in § 1.702(b), an 
applicant shall be deemed to  have failed to engage in 
reasonable efforts to concl ude processing or examina -
tion 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 w as 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 th e 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 con -
clude 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) Suspensio n o
f action under § 1.103 at the 
applicant’s request, in whic h case the period of adjust -
ment set forth in § 1.703 shall be reduced by the num -
ber of da ys, if any
, beginning on the date a request for 
suspension of action under § 1.103 was filed and end -
ing on the date of the termi n
ation 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, be gin
ning on the date a requ est for defer -
ral 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 a n
y, beginning on the date of aban-
donment 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 issu e f
ee; or
(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 wa
s filed;
(4) Failure to file a petition to withdraw the 
holding of abandonment or to  revi
ve an application 
within two months from th e mailing date of a notice 
of abandonme n
t, in which case the period of adjust -
ment set forth in § 1.703 shall be reduced by the num -
ber of days, if any, beginning on the day after the date two months from the mailing date of a notice of 
abandonment and en ding on the date a petition to 
withdraw the holding of aba ndonment or to revive the 
application was filed; 
(5) Conversion of a provisional application 
under 35 U.S.C. 111(b) to a nonprovisional applica -
tion un der 
35 U.S.C. 111(a) pursuant to 35 U.S .C. 
1
11(b)(5), in which case the period of adjustment set 
forth in § 1.703 shall be reduced by the number o
f 
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 complianc e with §1.53(c)(3) to convert the 
provisional application into a nonprovisional applica -
tion was filed; 
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Page 158PATENT RULES § 1.704
R-157 Rev. 8, July 2010(6) Submission of a preliminary amendment 
or other preliminary paper less than one month before 
the mailing of an Office actio n 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 da te 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 omis -
sion was filed; 
(8) Submission of a supplemental reply or 
other paper, other than a supplemental repl y or oth 
er 
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 th e Board of Patent Appeals 
and Interferences, other than a decision designated as  
con
taining 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 mailin g 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 da te of the original Office 
action or notice of allowance and endin
g on the mail -
ing 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 
adjust ment 
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 re sponse 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 th e period of adjustment set 
forth in § 1.703 shall not includ e any
 period that is 
prior to the actual filing date of the application that resulted in the patent. 
(d) A paper containing on ly an information dis -
closure statement in comp liance with §§ 1.97 and 
1.98 will not be considered a failure to engage in rea -
sonable efforts to co nclude 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 eac
h item of infor-
mation contained in the in formation disclosure state -
ment was first cited in any communication from a 
foreign patent office in a counterpart application and 
that this communic
ation was not received by any indi -
v
idual designated in § 1.56(c ) more than thirty days 
prior to the filing of the information disclosure state -
ment. This thirty-day pe riod is not extendable. 
(e) Submissio n of an
 application for patent term 
adjustment under § 1.705(b) (wit h or witho
ut request 
under § 1 .70
5(c) for reinstatement of reduced patent 
term adjustment) will not be  considered a failure to 
engage in reasonable effort s 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) redes -
ignated as (c)(12) and (c)(11) added, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became 
effective); para. (c)(11 ) remo 
ved 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)]
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Page 159§ 1.705 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-158§   1.705 Patent term adjustment determination. 
(a) The notice of allowance will include notifi -
cation 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 rein st
atement of all or 
part of the term
 reduced pursuant to § 1.704(b) must 
be by way of an application for patent term adjust -
ment. 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, speci -
fying: 
(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) through (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 ter -
minal disclaimer and any ex
piration date specified in 
the terminal disclaimer; and 
(iv)(A) Any circumstances during the prose -
cution of the application re sulting in the patent that 
constitute a failure to 
engage  in reasonable efforts to 
conclude processing or exa mination of such applic
a-
tion as set forth in § 1.704 ;
 or
(B) That there were no circumsta n
ces 
constituting a failure to engage in reasonable efforts to 
conclude processing or exam ination of such applica -
tion as set forth in § 1.704. 
(c) A ny application for pa tent term adjustment 
under this section that reques ts re
instatement of all or 
part of the period of adjustment reduced pursuant to §
1.704(b) for failing to reply to a reje ction, objection, 
ar
gument, or other request within three months of the 
date of mailing of the Office communication notifying the applicant of the rejectio n, 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, argu -
ment, or other request within  three months of the date 
of mai ling of 
the Office communication notifying the 
applicant of the rejection,  objection, argument, or 
other request. The Office shall not grant any request 
for reinst
atement 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 adjust -
ment. If the patent indicates or should have indicated 
a revised patent term adjustment, an y re
quest for 
reconsideration of the pate nt term adjustment indi -
cated in the patent must be filed with in tw
o months of 
the date the patent issued and must 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 a
pplication 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 pe tition will be returned to 
the third 
party, or otherwis e dis
posed of, at the conve-
nience 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]
Subpart F — Adjustment and Extension of 
Patent Term
EXTENSION OF PATENT TERM DUE TO 
REGULATORY REVIEW
§  1.710 Patents 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 combi -
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Page 160PATENT RULES § 1.720
R-159 Rev. 8, July 2010nation with other ingredients that read on a composi-
tion that received permission for commercial 
marketing or use, or a method of using such a product, 
or a method of manufa
cturing 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 hu man 
d
rug, antibiotic drug, or human biological produc t 
(as 
those terms are used in th e Federal Food, Drug, and 
Cosmetic Act and the Publ ic Health Service Act) 
including any salt or ester of the active ingredient, as a 
single entity or in combin ation 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 Cosme t
ic Act 
and the Virus-Serum-Toxin Act) that is not primarily manufactured using recomb inant DNA, recombinant 
RNA, hybridoma technology, or other processes 
including site specific genetic manipulation tech -
niques, including any salt or  ester of the active ingre -
dient, as a single entity or in combination with another 
active ingredient; or
(3) Any medical de v
ice, food additive, or 
color ad dit
ive 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]
§  1.720 Conditions 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 defi ned 
in 
§ 1.710;
(b) The term of the patent has never been previ -
ously 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 bee n
 subject to a regulatory 
review period as defined in 35 U.S.C. 156(g) before 
its commercial marketing or use;
(e) The prod uct h
as received permission for 
commercial marketing or use and —(1) The permission for the commercial mar -
keting or use o f t
he product is the first received per -
mission for commercial marketing or use under the 
provision of law under whic h the ap
plicable regula -
tory review occurred, or
(2) In the case of a patent other than one 
directed to subject matter within § 1.710(b)(2) cla i
m-
ing a method of manufacturing the product that pri-
marily uses recombinant DNA technology in the 
manufacture of the product, the permis sion
 for the 
commercial marketing or use is the first received per -
mission 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  
ani-
mal drug or a veterinary biological product that is not 
covered by the claims in any other patent that has 
been extended, and has  re
ceived permission for the 
commercial marketing or u se in non-food-producing 
animals and in fo od-producing animals, and was not 
extended on the basis of th e regulatory review period 
for use in non-food-produ cing animals, the permis -
sion for the commercial marketing or use of the drug 
or product after the regulato ry review period for use 
in food-producing animals is the first permitted com -
mercial marketing or use of the dru
g or product for 
administration to a food-producing animal.
(f) The application is submitted within the 
sixty-day period beginning o
n the date the p
roduct 
first received permission fo r commercial marketing or 
use under the provisions of law under which the appli -
cable regulatory review period occurred; or in the case of a patent claiming a method of manufacturing the 
product whi
ch primarily uses recombinant DNA tech -
nology in the manufacture of the product, the applica -
tion for extension is subm itted within the sixty-day 
period beginning on the date of the first permitted  
commercia
l marketing or use of a product manufac -
tured 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  
th
e 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-produc -
ing animals, the application for extension is submi tted 
within the sixty-day period beginning on the date o f 
 
the first permitted commercial  marketing or use of the 
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Page 161§ 1.730 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-160drug or product for administration to a food-produc -
ing animal;
(g) The term of the patent, including any 
interim extension issued pursuant to § 1.790, has not 
expired before the submissi on 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]
§  1.730 Applicant for ex tension of patent term; 
signature requirements.
(a) Any application for extension of a patent 
term must be submitted by th e owner of record of the 
patent or its agent and must  comply with the require -
ments of § 1.740.
(b) If the application is submitted by the patent 
owner, the application must be signed either by:
(1) T
he 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 b y
 an agent of the patent owner ( e.g., 
a licens ee of the pa
tent 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]
§  1.740 Formal requireme nts 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 ch
emical 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 c
ommercial market -
ing or use under the provision of law u
nder which the 
applicable regulatory review peri
od occurred;
(4) In the case of a drug product, an identifi -
cation of each active ingredient in the produ c
t 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 Se rvice Act, or the Vi
rus-
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 be ing s o
ught by the name of 
the inventor, the patent number , 
the date of issue, and 
the date of expiration;
(7) A copy of the pate nt for which an exten -
sion is being sought, includ ing the entire specification 
(including claims) and drawings;
(8) A co py
 of any discla im
er, certificate of 
correction, receipt of maintenance fee payment, or 
reexamination certificate issued in the patent;
(9) A statement that the patent claims the 
app
roved product, or a method of using or manufac -
turing the approved prod
uct, 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 
meth od
 of using the approved product; and
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Page 162PATENT RULES § 1.740
R-161 Rev. 8, July 2010(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 pursu an
t to 
35 U.S.C.156(g) in order to enable the Secretary of 
Health and Human Services or the Secretary of Agri -
culture, as appropriate, to  determine the applicable 
regulatory review period as follows:
(i) F or a 
patent claiming a human drug, 
antibiotic, or human biological product:
(A) The effective date  of the investiga -
tional new drug (IND) 
application and the IND num -
ber;
(B) The date on which a new drug appli -
cation (NDA) or a Product License Application (PLA) was initially submitted and the NDA or PLA number; 
and
(C) The date on which the NDA wa s 
ap
proved or the Product License issued;
(ii) For a
 patent claiming a new animal 
drug:
(A) The date a major health or environ -
mental 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 Fede ral Food, Drug, and Cosmetic Act beca
me effec-
tive for such animal drug;
(B) The date on which a new animal 
drug application (NADA) wa s initially submitted and 
the NADA number; and
(C) The date on which the NADA was 
approved;
(iii) For a patent claimi
ng a veterinary bio -
logical product:
(A) The date the authority to pr epare an 
expe rimental biological produc
t under the Virus-
Serum-Toxin Act became effective;
(B) The date an applicat ion for a 
license 
was submitted under the Viru s-Serum-Toxin Act; and
(C) The date the license issued;
(iv) Fo r a patent claimi
ng a food or color 
additive:
(A) The date a major health or environ -
mental effects test on the additive was initiated and any available substa ntiation of that date;(B) The date on which a petition for 
product approv al 
under the Federal Food ,
 Drug and 
Cosmetic Act was initially submitted and the petition number; and
(C) The date on which the FDA pub -
lished a  Federal Register  notice listing the additive 
for use;
(v) For a patent claiming a medical device:
(A) T
he effective date of the investiga -
tional device exemption (IDE) and the IDE number, if applicable, or the date on which the applicant began 
the first clinical investiga tion involving the device, if 
no IDE
 was submitted, and any available substantia -
tion of that date;
(B) The date on which the application 
for product approval or notice of completion of a produ ct 
development protocol under Section 515 of 
the Federal Food, Drug and Cosmetic Act was ini -
tially submitted and the number of the application; 
and
(C) The date on which the application 
was approved or the protocol declared to be com -
pleted;
(11) A b
rief d
escription beginning on a new 
page of the significant ac tivities undertaken by the 
marketing applicant during the applicable regulatory 
review period with respec t to the approved product 
and the significant dates app licable to such activities;
(12) A statement be
ginning on a new page that 
in the opinion of the applican t the patent is eligible for 
the extension and a statement as to the length of extension claimed, in cl
uding how the length of exten -
sion 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 Secre
tary of 
Health and Human Services or the Secretary of Agri -
culture any information which is material to the deter -
mination of entitlement to the extension sought ( see
§ 1.765);
(14) The prescribed fee for receiving and act -
ing upon the applicati on 
for extension (see § 1.20(j)); 
and
(15) The name, address, and telephone num -
ber of the person to whom inquiries and correspon -
dence relating to the appl ication for patent term 
extension are to be directed.
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Page 163§ 1.741 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-162(b) The application under this section must be 
accompanied by two additio nal copies of such appli -
cation (for a total of three copies).
(c) If an application fo r 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 noti ce, or such time as is set 
in the notice, with in which to correct the informality. 
Unless the notice indicates ot herwise, this time period 
may b e
 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 para s. (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, effec -
tive May 1, 2003]
§  1.741 Complete application given a filing date; 
petition procedure.
(a) The filing date of an  application for exten -
sion of a patent term is the date on which a complete 
application is received in the Office or filed pursuant 
to the proc ed
ures set forth in §1.8 or § 1. 10.
 A com -
plete application must include:
(1) An identification of the approved prod -
uct;
(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 o r
 a method 
of
 using or manufacturing the approved product;
(5) Sufficient information to enable the 
Director to determin e 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 Secre -
tary 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 under-
taken by the marketing app licant during the applica -
ble regulatory review period with respect to the approved product a
nd the s i
gnificant dates applicable 
to such activities.
(b) If an appl
ication for extension of patent 
term is incomplete under this section, the Office will 
so notify the applicant. If applicant requests review of 
a notice that an application is  incomplete, or review of 
the filing date accorded an application under this sec -
tion, applicant must file a petition pursuant to this paragraph acc ompa nied 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 p r
ovisions 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, i n
troduc -
tory 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. 2 5
, 2003, effective May 
1, 2003; para. (b) revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]
§  1.750 Determination of eligibility for extension 
of patent term.
A determination as to whether a patent is eligible 
for extension may be made by the Director solely on 
the basis of the repres
entations contained in the appli -
cation for extension filed in compliance with § 1.740
or § 1.790. This determin ation may be delegated to 
appropriate Patent and Trademark Office officials and 
may be made at a
ny time before the certificate of 
extension is issued. The Director or other appropriate officials may require from applicant further informa -
tion or make such independent inquiries as desired 
before a final determinatio n is made on whether a 
patent is eligible for extens ion. In an application for 
extension filed in compliance with § 1.740, a notice will be mailed to applicant containing the determina -
tion as to the eligi b
ility of the patent for extension and 
the period of time of the exte nsion, if any. This notice 
shall constitute the final dete rmination as to the eligi -
bility and any period of extension of the patent. A sin-
gle request for reconsideration of a final 
determination may be made if filed by the applicant 
withi
n such time as may be set in the notice of final 
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Page 164PATENT RULES § 1.765
R-163 Rev. 8, July 2010determination or, if no time  is set, within one month 
from the date of the fina l 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]
§  1.760 Interim extension of patent term under 
35 U.S.C. 156(e)(2).
An applicant who has filed a formal application for 
extension in compliance with  § 1.740 may request one 
or more interim extensions for periods of up to one 
ye
ar each pending a final determination on the appli -
cation 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  by the applicant, for 
periods of up to one year each until a final determina -
tion is made. The patent ow ner or agent will be noti -
fied when an interim extension is granted and not ice 
of the extension will be published in the Offici 
al 
Gazette of the United S t
ates 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 even t will the interim extensions 
granted under this section be longer than the maxi -
mum 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, effec-
tive 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]
§  1.765 Duty of disclosure in patent term exten -
sion proceedings.
(a) A duty of candor and good faith toward the 
Patent and T rademark Office and the Secretary of 
Health and Human Services or the  Se
cretary of Agri -
culture rests on the patent owner or its agent, on each 
attorney or agent who represents the patent owner and 
on every other in div
idual 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 exten -
sion sought, which has not been previously made of 
record in the patent term extension proceeding must 
bring such information to th e at
tention of the Office or 
the Secretary, as appropriate, in accordance with para -
graph (b) of this section, as s oon as it is practical to do 
so after the individual b ecomes aware of the informa -
tion. Information is material  where there is a substan-
tial likelihood that the Offi ce or the Secretary would 
consider it important
 in dete rminations 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 disclose d. 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 Offi ce 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 pro -
ceeding 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 attor n 
ey, agent or patent owner 
has no duty to transmit info rmation which is not mate -
rial to the determination of  entitlement to the exten -
sion sought.
(c) No patent will be determined eligible for 
extension and no extension will  be issued if it is deter -
mined that fraud on the Of
fice or the Secretary was 
practiced or attemp ted o
r the duty of disclosure was 
violated th roug
h bad faith or gross negligence in con -
nection with the patent term extension proceeding. If 
it is established by clear and convincing evidence that 
any fraud was practiced or attempted on the Of fi
ce or 
the Secretary in connectio n 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 exten -
sion proceeding, a final de termination will be made 
pursuant to § 1.750 that the patent is not eligible for extension.
(d) The duty of disclosu r
e pursuant to this sec -
tion rests on the individuals identified in paragraph (a) of this section and no submission on behalf of third 
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Page 165§ 1.770 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-164parties, 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]
§  1.770 Express withdrawal of application for 
extension of patent term.
An application for extension of patent term may be 
expressly withdrawn before a determination is made 
pursuant to §  1.750 by filing in the Office, in dupli -
cate, a written declaration of withdrawal signed by the 
owner of record of the patent  or its agent. An appl
ica-
tion may not be expressly withdrawn after the date 
permitted for reply to the final determination on the application. An express with drawal pursuant to this 
section is effective when acknowledged in 
writing by 
the Office. The filing of an express withdrawal pursu -
ant to this section and its acceptance by the Office 
does not entitle appl icant  to a refund of the filing fee 
(§ 1.20(j)) or any portion thereo f.
[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]
§  1.775 Calculation 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 biolo g
ical product is eligible for 
extension, the term shall be  extended by the time as 
calculated in days in the ma nner indicated by this sec -
tion. The patent term exte nsion will run from the orig-
inal 
expiration date of the patent or any earlier date set 
by terminal disclaimer (§ 1.321).
(b) The term of the patent for a human drug , 
antibiotic drug or human biological product will be 
extended by 
the length of th e regulatory review period 
for the product as determined by the Secretary of 
Health and Human Service s
, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of  the regulato
ry 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 begin -
ning on the date an exemption under subsection (i) of 
section 505 or subsection (d) of section 507 of the 
Federal Food, Drug, and Co smetic Act became effec -
tive for the appro v
ed product and ending on the date 
an application was initially  submitted for such prod -
uct under those sections or under section 351 of the 
Public Heal th Service Act; and
(2)
The number of days in the period begin -
ning on the date the appli cation was initially submit -
ted for the approved produc t
 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 da te
 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) Sub tracting
 from the number of days 
determined by the Sec retary 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 de fi
ned by paragraph (c)(1) of this sec -
tion after that period is reduced in accordance with 
paragrap hs (d)
(1)(i) and (ii) of this section; half days 
will be ignored for purposes of subtraction;
(2) By adding the number of d
ays determined 
in paragraph (d)(1) of this s ection 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 ap plication
 under section 351 of the 
Public Health Service Act, or subsection (b) of section 
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Page 166PATENT RULES § 1.776
R-165 Rev. 8, July 2010505 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) an
d 
(d)(3) of this section with each other and selecting the 
earlier date;
(5) If the original pate nt was issued after 
September 24, 1984,
(i) By ad din
g 5 years to the original expi -
ration date of the patent or any earlier date set by ter -
minal disclaimer; and
(ii) By comparing the dates obtained pur-
suant to paragraphs (d)(4) an d (d)(5)(i) of this section 
with each other and selecting the earlier date;
(6) If the original pate nt was issued before 
September 2 4, 
1984, and
(i) If no request was submitted for an 
exemption under subsection (i) of section 505 or
 sub-
section (d) of section 50
7 of the Federal Food, Drug, 
and Cosmetic Act before September 24, 1984, by—
(A) A
dding 5 years to the original expi -
ration 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 e ach other 
and selecting the earlier date; 
or
(ii) If a request was submitted for an 
exemptio
n under subsection (i) of section 505 or sub -
section (d) of section  50
7 of the Federal Food, Drug, 
or Cosmetic Act before September 24, 1984 and the commercial ma
rketing or use of the product was not 
approved before September 24, 1984, by -
(A) Adding 2 years to the original expi -
ration 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]
§  1.776 Calculation 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 colo r 
addi-
tive is eligible for extension, the term shall be extended by the time as calcu lated in days in the man -
ner indicated by this sectio n. The patent term exten -
sion will run from the origin al expiration date of the 
patent or earlier date set by terminal disclaimer (§ 1.32
1).
(b) T he term of the pat
ent for a food additive or 
color additive will be extend ed by the length of the 
regulatory review period  for the product as deter -
mined b
y the Secretary of Health and Human Ser -
vices, reduced as app
ropriate pursuant to paragraphs 
(d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period 
for a food additive or co lor additive will be deter -
mined by t h
e Secretary of Health and Human Ser -
vices. Und er 35
 U.S.C. 156( g)(2)(B), it is the sum of -
(1) The number of days in the period  begin -
ni
ng 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 produc t 
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 begin -
ning 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 objec -
tions were filed to such regu lation, ending on the date 
such objections were reso lved and commercial mar -
keting was permitted or, if commercial marketing was 
permitted and later revoked pending further proceed -
ings as a resu
lt of such objections, ending on the date 
such proceedings were fi nally resolved and commer -
cial marketing was permitted.
(d) The term of the patent as extended for a 
food additive or color add itive wi
ll be determined by
(1) Su
btracting from the number of days 
determined by the Sec
retary of Health and Human 
Services to be in the regulatory review period:
(i) The number of da ys in
 the periods of 
paragraphs (c)(1) and (c)(2 ) of this section which 
were on and before the da te on which the patent 
issued;
(ii) The number o f
 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) 
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Page 167§ 1.777 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-166by 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 defined by 
paragraph (c)(1) of this sec tion after that period is 
reduced in accordance with  paragraphs (d)(1) (i) and 
(ii) of this section; half days will be ignored for pur -
poses  of 
subtraction;
(2) By adding the number of days determined 
in paragraph (d)(1) of this se ction to the original term 
of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to the date a regula -
tion for use of the product became effective or, if objections were filed to such regulation, to the date 
such objections were re solved and 
commercial mar -
keting was permitted or, if commercial marketing was permitted and later revoked pending further proceed -
ings as a result of such ob jections, to the date such 
procee dings
 were finally resolved and commercial 
marketing was permitted;
(4) By co mpa
ring the dates for the ends of 
the period
s obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date;
(5) If the original pate nt was is sue
d after 
September 24, 1984,
(i) By adding 5 years to the original exp i-
ratio
n date of the patent or earlier date set by terminal 
disclaimer; and
(ii) By comparing the dates obtained pur-
suant to paragraphs (d)(4) an d (d)(5)(i) of this section 
with each other and selecting the earlier date;
(6) If the original pate nt was issued before 
September 24, 1984, and
(i) If no major health or envi ronmental 
effects 
test was initiated and no petition for  
a regula-
tion or application for registration was submitted 
before September 24, 1984, by
(A) A
dding 5 years to the original expi-
ration date of the patent or  earlier date set by 
terminal 
disclaimer, and
(B) By comparing the dates obtained 
pursuant t o
 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 envi ronmental 
ef
fects test was initiated or  a 
petition for a regulation 
or application for regist ration was submitted by Sep -tember 24, 1984, and the commercial marketing or use of the product was not approved before Septem -
ber 24,  19
84, by —
(A) Adding 2 years to the original expi -
ration 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 9397, Mar. 24, 1987, effective May 26, 
1987]
§  1.777 Calculation 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) Th
e 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 pursua n
t to pa ragraphs (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 Secre -
tary of Health and Human Services. Under 35 U.S.C. 
156(g)(3)(B), it is the sum of
(1) The number o f
 days in the period begin -
ning on the date a clini c
al investigation on humans 
involving the device was begun and ending on the 
date an application w as initially submitted with 
respect to t h
e device under section 515 of the Federal 
Food, Drug, and Cosmetic Act; and
(2) The number of days in the period begin -
ning on the date the appli cation was initially submit -
ted with respect to the devi ce under section 515 of the 
Federal Food, Drug, and Cosmetic Act, and ending on the date such application was ap pro
ved 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.
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Page 168PATENT RULES § 1.778
R-167 Rev. 8, July 2010(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 regula tory review period pursu -
ant to paragraph (c) of this section:
(i) Th e
 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 unde r 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 sec -
tion aft
er 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) B y add
ing the number of days determined 
in paragraph (d)(1) of this se ction to the original term 
of the patent as shortened by any terminal disclaimer;
(3) By add i
ng 14 years to the date of 
approval of the application under section 515 of the 
Federal Foo d
, Drug, and Cosmetic Act or the date a 
product development protocol was declared com -
pleted 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) an
d 
(d)(3) of this section with each other and selecting the 
earlier date;
(5) If the original pate nt was is sued after 
September 2 4, 1984,
(i) By addin
g 5 years to the original expi -
ration date of the patent or earlier date set by terminal 
disclaimer; and
(ii) By comparing the dates obtained pur-
suant to paragraphs (d)(4) an d (d)(5)(i) of this section 
with each other and selecting the earlie r date;
(6)
If the original pate nt was issued before 
September 24 , 
1984, and
(i) If no clinical investigation on 
humans  invo
lving the device was begun or no  pro
duct 
development protocol w as submitted under section 
515(f)(5) of the Federal Fo od, Drug, and Cosmetic 
Act before September 24, 1984, b y
 —(A) Adding 5 years to the original expi -
ration 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 se lecting the earlier date; 
or
(ii) If a clinical investigation on humans 
involvin g
 the device was b
egun or a produc t 
develop -
ment protocol was subm itted 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  ap
proved before Septem -
ber 24, 1984, by
(A) Adding 2 years to the original expi -
ration 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]
§  1.778 Calculation 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 sec -
tion. Th e patent t
erm exte nsion will run from the orig -
inal expiration date of the patent or any earlier date set 
by terminal disclaimer (§ 1.321).
(b) The term of th e patent fo
r an animal drug  
will be ext e
nded by the length of the regulatory 
review period for the drug  as determined by the Sec -
retary of Health and Human Services, reduced as appropriate pursuan t to pa ragraphs (d)(1) 
through 
(d)(6) of this section.
(c) The  leng
th of the regulatory review period 
for an animal drug will be  determined by the Secre -
tary 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  begin -
ni
ng on the earlier of the date a major health or envi -
ronmental effects test on th e drug was ini tiated or the 
date an exemption under subsection (j) of section 512 of the Federal Food, Drug , and Cosmetic Act be came 
ef
fective for the approved an imal drug and ending on 
IP/N/1/USA/D/2 
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Page 169§ 1.779 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-168the 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 begin -
ning on the date the app lication was initially submit -
ted for the approved animal drug under subsection (b) 
of section 512 of the Federal Food, Drug, and Cos -
metic Act and ending on the date such applicatio n was 
approve
d under such section.
(d) The term of the patent as extended for an 
animal drug will be determined by —
(1) Subtracting from th e nu
mber of days 
determined by the Secretary of Health and Human 
Services to be in the re gulatory review period:
(i) The nu
mber of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section that were 
on and before the da
te on which the patent issued;
(ii) The number of days in t
he 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 sec -
tion after that period is re duced in accordance  w
ith 
paragraphs (d)(1)(i) and (ii) of this section; half days 
will be ignored for purposes of subtraction;
(2) B y add
ing the number o f
 days determined 
in paragraph (d)(1) of this se ction to the original term 
of the patent as shortened by any terminal disclaimer;
(3) By adding 14 years to th e date of 
app
roval of the application under section 512 of the 
Federal Food, Drug, and Cosmetic Act;
(4) By comparing the da tes 
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 pate nt was is sue
d after 
November 16, 1988, by —
(i) Adding 5 years to the original expira -
tion date of th
e patent or a ny earlier date set by termi -
nal 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 pat ent was issued before 
Nov
ember 16, 1988, and(i) If no major health or environmental 
effects test on 
the drug was initiated and no request 
was submitted for an exem ption under subsection 
(j) of section 512 of the Fed e
ral Food, Drug, an d Cos -
metic Act b
efore November 16, 1988, by —
(A) Adding 5 years to the original expi -
ration date of the patent or earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursu -
ant to paragraphs (d)(4) and (d)(6)(i)(A) of this sec -
tion with each other and sel ecting 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 th e appl
ication for commer -
cial marketing or use of the animal drug was not approved befo re No vemb er 16 , 1988, by —
(A) Adding 3 years to the original expi -
ration date of the patent or earlier date set by terminal 
disclaimer , and
(B) Comparin g the 
dates obtained pursu-
ant to paragraphs (d)(4) and (d)(6)(ii)(A) of this sec -
tion with each other and selec ting the earlie
r date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 
22, 1989]
§  1.779 Calculation 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 prod -
uct is eligible for extens ion, the term shall be 
extended by the time as calcu lated in days in the man -
ner indicated by this sectio n. The patent term exten -
sion will run from the origin al expiration date of the 
patent or any earlier date set by terminal disclaimer 
(§ 1.321).
(b) The term of the pate nt for a veterinary bio -
logical product will be ext e
nded by the length of the 
regulatory review period for the product as deter -
mined by the Secretary of Agriculture, reduc e
d as 
appropria te pursuant to pa ragraphs (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 Secretar y of A
griculture. Under 35 U.S.C. 
156(g)(5)(B), it is the sum of —
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Page 170PATENT RULES § 1.780
R-169 Rev. 8, July 2010(1) The number of days in the period begin -
ning on the date the auth ority to prepare an experi -
mental biological product under the Virus-Serum-
To
xin Act became effective an d ending on th e date
 an 
application for a license  was submitted under the 
Virus-Serum-Toxin Act; and
(2) The number of days in the period begin -
ning on the date an application for a license was ini -
tially submitted for approval  under the Virus-Serum-
Toxin Act and ending on the date such license was 
issued.
(d) T he
 term of the patent as extended for a vet -
erinary 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 p ate
nt 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 sec -
tion after that period is re duced 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 se ction to the original term 
of the patent as shortened by any terminal disclaimer;
(3) By ad
ding 14 years to the date of the issu-
ance 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) an
d 
(d)(3) of this section with each other and selecting the 
earlier date;
(5) If the original pate nt was issued after 
November 16, 1988, by —
(i) A
dding 5 years to the original expira -
tion date of the patent or a ny earlier date set by termi -
nal 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 pate nt was issued before 
Nove mb
er 16, 1988, and(i) If no request for the authority to pre -
pare an experimental biological prod uct un
der the 
Virus-Serum-Toxin Act was submitted before November 16, 1988, by —
(A) Adding 5 years to the original expi -
ration date 
of the patent or earlier date set by terminal 
disclaimer; and
(B) Comparing the dates obtained pursu -
ant to paragraphs (d)(4) and (d)(6)(i)(A) of this sec -
tion with ea
ch other and sel ecting the earlier date; or
(ii) If a request for the authority to prepare 
an experimental biological pro d
uct under th e V
irus-
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 expi -
ration date of the patent or earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursu -
ant to paragraphs (d)(4) and (d)(6)(ii)(A) of this sec -
tion with ea
ch other and selecting the earlier date.
[Added, 54 FR 30375, July 20, 1989, effective Aug. 
22, 1989]
§  1.780 Certificate or orde r of extension of patent 
term.
If a determination is made pursuant to § 1.750 that 
a patent is eligible for exte nsion and that the term of 
the patent is to be extended , a certificate of extension, 
under seal, or an o
rder granting interim extension 
under 35 U.S.C. 156(d)(5), will be issued to the appli -
cant for the extension of th e patent term. Such certifi -
cate or order will be recorded  in the of
ficial 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 grant -
ing an interim extension under 35 U.S.C. 156(d)(5), 
including the identity of the product curren 
tly under 
regulatory review, will be published in the Official 
Gazette of the United States Patent and TrademarkOffice 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 dete rmined to be eligible for 
extension. In such situati ons, the final determination 
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Rev. 8, July 2010 R-170made pursuant to § 1.750 will indicate that no certifi -
cate or order will issue.
[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 
1987; para. (a) revised, 60 FR 25615, May 12, 1995, effec -
tive July 11, 1995; revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000]
§  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.
(a) Only one patent may be extended for a regu -
latory 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 app lication for extension is 
filed by a single applicant which seeks the extension 
of 
the term of  
two or more patents based upon the 
same regulatory review period, and the patents are 
otherwise eligible for ex tension p u
rsuant to the 
requirements of this subpart,  in the absence of an elec -
tion by the applican t, 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 u p
on 
in one or more applications for extension pursuant to the requirements of this subpart, the certificate of 
extension of patent term w ill be issued on the applica -
tion 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 con -
sidered complete and formal regardless of whether it contains the identification of the holder of the regula -
tory approval granted with respect to the regulatory 
review period. When an a pplication contains such 
information, or is amended to contain such info rma-
tion, it will be 
considered in determining whether an 
application is el igible for an extension under this sec -
tio
n. A request may be made of any applicant to sup -
ply such information within  a non-exten d
able period 
of not less than one mont h whenever multiple applica -tions for extension of more than one patent are 
received  and 
rely upon th e same regulatory review 
period. Failure to provide su ch information within the 
period for reply set shall be regarded as co nclusiv
ely 
establishing that the applicant is not the holder of the 
regulatory approval.
(e) Determinations made under this section 
shall be included in the no tice of final determination 
of eligibility for extension of  the patent term pursuant 
to § 1.750 and shall be regarded as part of th at 
deter -
mination.
[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]
§  1.790 Interim 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 sub -
section (g) that began for a product that is the su bject 
o
f such patent may extend beyond the expiration of 
the patent term in effect may submit one or more 
applications for int
erim exte nsions for periods of up 
to one year each. The initia l 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 subseque nt application for interim 
extension must be filed during the period beginning 60 days before and ending 30 days before the expira -
tion of the preceding interi m 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 applica tion for interim exten -
sion under this section sha ll include all of the infor -
mation 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 
§ 1.7
40 and § 1.741 shall be read in the context of a 
product currently under g
oing regulatory review. Sec -
tions (a)(3) and (a)(5) of § 1.740 are not applicable to 
an application for interim extension under this sec -
tion.
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Page 172PATENT RULES § 1.803
R-171 Rev. 8, July 2010(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 com -
pleted along with any ma terials or information 
required under §§ 1.740 an d 1.741 that are not present 
in the preceding interi m extension application.
[Added, 60 FR 25615, May 12, 1995, effective July 11, 
1995]
§  1.791 Termination of interim extension granted 
prior to regulatory approval of a product for commercial marketing or use.
Any interim extension gr anted un der 35 U.S.C. 
156(d)(5) terminates at the end of the 60-day period 
beginnin g 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 §§ 1.740and 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
§  1.801 Biological material.
For the purposes of these regulations pertaining to 
the deposit of biological material for purposes of pat -
ents for in
ventions under 35 U.S.C. 101, the term bio -
logical material shall includ e material that is capable 
of self-replication either di rectly or indirectly. Repre -
sentative examples include ba cteria, fungi including 
yeast, algae, protozoa, eukaryotic cells, cell lines, hybridomas, pla
smids, viruses, plant tissue cells, 
lichens and seeds. Viru se
s, vectors, cell organelles 
and other non-living material existing in and repro -
ducible from a living cell may be deposited by deposit 
of the host cell capable of  rep
roducing the non-living 
material.[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 
1990]
§  1.802 Need or opportunity to make a deposit.
(a) Where an invention is, or relies on, a biolog -
ical material, the disclosure  may include reference to 
a deposit of such biological material.
(b) Biological material need not be deposited 
unles s acce ss to such mate
rial is necessary for the sat -
isfaction of th e statuto
ry requirements for patentabil -
ity under 35 U.S.C. 112. If a deposit is necessary, it shall be acceptable if made in acc ordance with the
se 
regulations. Biological material need not  be dep
os-
ited, inter alia , if it is known and readily available to 
the public or can be made or iso l
ated without undue 
experimentation. Once depo sited in a depository com -
plying with these regulatio ns, a biological material 
will be considered to be re adily available even though 
some requirement of law or  regulation of the United 
States or of the country in which the depository insti -
tution is located permits acces
s to the material only 
under conditions imposed for safety, public health or 
similar reasons.
(c) The reference to a bi ological  material in a 
specifica
tion disclosure or the actual deposit of such 
material by an a
pplicant or patent owner does not cre-
ate any presumption that such  material is necessary to 
satisfy 35 U.S.C. 112 or that deposit in acco r
dance 
with these regulations is or was required.
[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 
1990]
§  1.803 Acceptable depository.
(a) A deposit shall be recognized for the pur -
poses of these regulations if made in
(1) A
ny International Deposi tary Authority 
(IDA) as established under the Budapest Treaty on the 
International Recognition of  the Deposit of Micro-
or
ganisms for the Purposes of Patent Procedure, or
(2) Any other depository recognized to be 
suitable by the Of fice. Suitability will be determined 
by the Director on the basis of the administrative and 
technic a
l competence, and agreement of the deposi -
tory to comply with the terms and conditions applica -
ble to deposits for patent purposes. The Director may seek the advice of impartial consultants on the suit -
ability of a depository. The depository must:
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Page 173§ 1.804 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-172(i) Have a continuous existence;
(ii) Exist independent of the control of the 
depositor;
(iii) Possess the staff and facilities suffi -
cient 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 su
fficient safety measures 
to minimize the ris k
 of losing biological material 
deposited with it;
(v) Be impartial and objective;
(vi) Furnish samples of the deposited mate -
rial 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 co mmun
ication to 
the Director which shall:
(1) Indicate the name and address of the 
depository to which the communication relates;
(2) Contain detailed in formation as to the 
capac ity of the depository to  comply with the require -
ments of p a
ragraph (a)(2) of this section, including 
information on its legal status, scientific standing, 
staf
f, and facilities;
(3) Indicate that the depository intends to be 
available, for the purposes of de po
sit, to any depo s
itor 
under these sam e 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 acquir ing the status of suitable 
depository under paragraph (a)(2) of this section, 
char
ge for storage, viabili ty statements and furnish -
ings of samples of the de po
sit.
(c) A depository having status under paragraph 
(a)(2) of this section li mited to certain kinds of bio -
logical material may extend such status to additional 
kinds of biological material by directing a communi -
cation to the Dire ctor 
in accordan c
e with paragraph 
(b) of this section. If a previous communication under 
paragraph (b) of this sectio n is of record, items in 
common with the previous communication may be 
incorporated by reference.
(d) Once a depository is recognized to be suit-
able by the Director or has defaulted or discontinue d 
its performance under this se ction, notice thereof will be pub
lished in the Official Gazette  of the Patent and 
Trademark O f
fice.
[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]
§  1.804 Time of making an original deposit.
(a) Whenever a biological material is specifi -
cally identified in an applica tion for patent as filed, an 
original deposit thereof ma y 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 depo sit 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 specifi cally identified in the appli -
cation a
s filed.
[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 
1990; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effec -
tive Dec. 1, 1997]
§  1.805 Replacement or supplement of deposit.
(a) A depositor, after receiving notice during 
the pendency of an applica tion for patent, application 
for reissue patent or reexamination proceeding,  that 
the
 depository possessing a deposit either cannot fur -
nish samples thereof or ca n furnish samples thereof 
but the deposit has become contaminated or has lost 
its capability to function as described in the specifica -
tion, shall notify the Office in writing, in each applica -
tion for patent or patent affected. In such a cas e, or 
where the Of
fice otherwise learns, during the pen -
dency of an application fo r patent, application for 
reissue patent or reexamin ation proceeding, that the 
depository possessing a depo sit either cannot furnish 
samples thereof or can furnish sample s
 thereof but the 
deposit has become contamin ated or ha
s lost its capa-
bility 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 ne
ed 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 applica tion for patent shall not be 
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Page 174PATENT RULES § 1.806
R-173 Rev. 8, July 2010accepted unless it meets th e requirements for making 
an original deposit under these regulations, including 
the requirement set forth under § 1.804(b). A replace -
ment or supplemental de posit made in connection 
with a patent, whether or not made during the pen -
de
ncy of an application for reissue patent or a reexam -
ination proceeding or both, shall not be accepted 
unless a certificate of correction under § 1.323 is 
requested by the pa tent o
wner which meets the terms 
of paragraphs (b) and (c) of this section.
(b) A request for certific ate of correction under 
this section shall not be gr anted unless the certificate 
identifies:
(1) The accession number for the replac e
-
ment 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 th e 
replacement or 
supplemental deposit has been made and the request:
(1) Includes a statemen t of the reason for 
making the replacement or supplemental deposit;
(2) Includes a s t
atement 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 depos -
ited;
(3
) Includes a showing that the patent owner 
acted diligently —
(i) In the case of a replacement deposit, in 
making the deposit after re ceiving notice that samples 
could no longer be furnis hed from an earlier deposit; 
or
(ii) In the case  of a s
upplemental deposit, 
in making the deposit afte r receiving notice that the 
earlier deposit had beco
me contaminated or had lost 
its capability to function as described in the specifica -
tion;
(4) Includes a state m
ent that the term of the 
replacement or supplemental deposit expires no ear -
lier than the term of the deposit being replaced or sup-
pl
emented; and
(5) Otherwise establ ishes compliance wi
th 
these regulations.
(d) A depositor’s failure to  replace a dep osit, or 
in the case of a patent, to diligently replace a deposit and promptly thereafter request a certificate of correc -
tio
n which meets the terms of paragraphs  
(b) and (c) 
of this section, after being notified that the depository 
possessing the deposit cannot  furnish samples ther eof, 
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 Of fice 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 du ring
 any Office pro -
ceeding.
(f) A replacement or supplemental deposit 
made during the pendency of an ap p
lication for patent 
may be made for any reason.
(g) In no case is a replacement or supplemental 
deposit of a  biologic al mate rial nec essary where  the 
biological material, in accord ance with
 § 1.802(b), 
need not be deposited.
(h) No replacement deposit of a biological 
material is necessary where a depository can furnish 
samples th ereof but 
the depository for national secu -
rity, health or environmental safety reasons is unable to provide samples to requesters outside of the juris-
diction where the depo sitory is located.
(i) The Of
fice 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, effec -
tive Dec. 1, 1997]
§  1.806 Term of deposit.
A deposit made before or during pendency of an 
application for patent shall be made for a term of at 
least thirty (30) years and at least five (5) years after 
the most recent request for th
e furnishing of a sample 
of the deposit was received by the depository. In any 
case, samples must be stor ed 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]
IP/N/1/USA/D/2 
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Page 175§ 1.807 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-174§  1.807 Viability of deposit.
(a) A deposit of biological material that is capa -
ble 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 deposi -
tory. The test must conclude only that the deposited mate
rial is capable of repr oduction. No evidence is 
necessarily required regarding the ability of the 
deposited material to perfo rm any function described 
in the patent application.
(b) A viability statement for each deposit of a 
biological material  d
efined in paragraph (a) of this 
section not m ade
 under the Budapest Treaty on the 
International Recognition of  the Deposit of Microor-
ganisms 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 addre ss of th
e depositor;
(3) The date of deposit;
(4) The identity of the deposit and the acces -
sion 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
(7) A statement that the deposit is capable of 
reproduction.
(c) If a viability test indicates that the deposit is 
not viable upon receip
t, or the examiner ca nnot, for 
scie
ntific or other valid reasons, accept the statement 
of viability received from th e applicant, 
the examiner 
shall proceed as if no deposit has been made. The 
examiner will accept the conc lusion set forth in a via -
bility statement issued by a depository recognized 
under § 1.803(a).
[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 
1990]
§  1.808 Furnishing 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 m ak
ing ref-
erence to the deposit to one de
termined by the Direc -
tor 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 avail -ability to the public of the deposited material will be irrevocably removed upon th e gra
nting of the patent.
(b) The  
deposit o
r may contract with the deposi -
tory to require that samples of a de posited biological 
material shall be furnished only if a request for a sam -
ple, 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 depos -
itory to the deposi
tor along with the date on which the 
sampl e was furnished and the name and address of the 
party to whom th
e 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 de
pository;
(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]
§  1.809 Examination procedures.
(a) The examiner shall determine pursuant to 
§ 1.104 in each application for patent, application for 
reissue patent or reexam ination proceeding if a 
depo sit is ne
eded, and if ne eded, if a deposit actually 
made is acceptable for patent purposes. If a deposit is 
needed and has not been made or replace d or supple -
me
nted in accordance with these regulations, the 
examiner , where  appropria te, shall reject the af fecte d 
claim s under the appropriate pro vision 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 
IP/N/1/USA/D/2 
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Page 176PATENT RULES § 1.821
R-175 Rev. 8, July 2010supplemental deposit, or assuring the Office in writ -
ing that an acceptable depos it will be made; or, in the 
case of a patent owner, requesting a certifica t
e of cor -
rection of the patent which meets the terms of para -
graphs (b) and (c) of § 1.805, or
(2) Arguing why a deposit is not needed 
under the circumstances of th e application or patent 
considered and/or why a depo sit actually made should 
be accepted. Other replies to 
the examiner’s action 
shall be considered nonresp onsive. The rejection will 
be repeated until either pa ragraph (b)(1) of this sec-
tion 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 ex c
ept 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 exte ndable 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 A llowability” (see § 1.136(c)).
(d) For each deposit made pursuant to these 
regulations, the specification shall contain:
(1) The accession numb er for the deposit;
(2) The date of the deposit;
(3) A  d
escription of the deposited biological 
material sufficient to specifically identify it and to permit examination; and
(4) The name an
d 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]
APPLICATION DISCLOSURES 
CONTAINING NUCLEOTIDE AND/OR 
AMINO ACID SEQUENCES
§  1.821 Nucleotide 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 seq uences are specifically 
excluded from this definitio n. Sequences with fewer 
than four specifically defined nucleotides or amino 
acids are specifically ex cluded from this section. 
“Specifically defined” mean s 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 
 Indus-
trial Property Information and Documentation, Stan -
dard ST.25: St anda
rd for the Presentation of 
Nucleotide and Amino Acid Sequence Listings in 
Patent Applications (1 998), including Tables 
1 throug h 6
 in Appendix 2, herein incorporated by 
reference. (Hereinafter “WIPO Standard ST.25 
(1998)”). This incorpor ation 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 Worl d Intellectual Property 
Organization; 34 chemin des Colombettes; 1211 
Geneva 20 Switzerland. Copi e
s 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 repre-
sented using the symbols set forth in WIPO Standard 
ST.25 (19 9
8), Appendix 2, Table 1. Mo dification
s, 
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 ex plicitly 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 S tand
ard 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., hydroxyla -
IP/N/1/USA/D/2 
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Rev. 8, July 2010 R-176tions or glycosylations, being described as set forth in 
WIPO Standard ST.25 (1998), Appendix 2, Table 4, 
but these modifications sha ll 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 sec-tion to describe, for example, modified linkages, cross 
links and end caps, non-peptidyl bonds, etc., is 
embraced by this definition.
(b) P atent applicat
ions which contain disclo -
sures 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 seque nce
s are presented 
and described, c o
nform exclusively to the require -
ments of §§ 1.821 through 1.825.
(c) Patent applications  which contain disclo -
sures 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)) disclosin
g the 
nucleotide and/or amino acid sequences and a ssoci -
ated information using th
e symbols and format in 
accordance with the requirements of §§ 1.822 and 
1.823. This paper or co mp
act 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 se quence 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 fol -
lowed 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 para-
graph (c) of this section,  refe
rence must be made to 
the sequence by use of the sequence identifier, pre -
ceded by “SEQ ID NO:”  in 
the text of the description 
or claims, even if the seque nce is also embedded in 
the text of the description or claims of the patent 
application.
(e) A copy of the “Sequence Li stin
g” 
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 Of fice, reference may be made 
to the other application an d computer readable form 
in lieu of filing a duplicate computer readable form in 
the new application if the co mputer readable form in 
the other application was co mpliant with all of the 
requirements of this subp art. The new application 
must be accompanied by a letter making such refer -
ence to the other application and computer readable form, both of which shall be completely identified. In 
the new application, applic ant must also request the 
use of the compliant comp uter readable “Sequence 
Listing” that is already on file for the other applica -
tion and must state that the paper or compact disc 
copy of the “Sequence Listin g” in the new application 
is identical to the compute r 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 th at
 the “Sequence Listing” 
content of the paper or compact disc copy and the computer readable copy ar e the same must be submit -
ted 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 o f
 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 notifie d 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 para -
graph 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 sectio n are not 
satisfied at the 
time of filing an internatio nal 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 
IP/N/1/USA/D/2 
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Page 178PATENT RULES § 1.822
R-177 Rev. 8, July 2010International Preliminary Examining Authority, appli-
cant will be sent a notice ne cessitating compliance 
with the requirements with in a prescribed time period. 
Any submission in reply to  a requirement under this 
paragrap h must 
be accompanied by a statement that 
the submission does not in clude matter which goes 
beyond the disclosure in th e international application 
as filed. If applicant fails to timely provide the 
required computer readable  form, the United States 
International Searching Auth ority shall search only to 
the extent that a meaningful  search can be performed 
without the computer read able form and the United 
States International Prelim inary Examining Authority 
shall examine only to the extent that a meaningful 
examination can be performed without the computer 
readable form.
[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; para. (h) amended, 58 FR 9335, Jan. 14, 1993, effec -
tive May 1, 1993; revised, 63 FR 29620, June 1, 1998, 
effective July 1, 1998; paras. (c ), (e), and (f) revised, 65 FR 
54604, Sep t
. 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] 
§  1.822 Symbols and format to be used for nucle-
otide and/or amino acid sequence data.
(a) The symbols and form at  t o  b e  u s e d  f o r  
nucleotide a
nd/or amino acid sequence data shall con-
form to the requirements of  paragraphs (b) through (e) 
of this section.
(b) The code for repr esenting the nucleotide 
and/or amino acid sequence  characters sh all 
conform 
to the code set forth in the tables in WIP O
 Standard 
ST.25 (1998), Appendix 2, Tables 1 and 3. This incor -
poration 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. Copi e
s of ST.25 may be 
obtained from the World In tellectual Property Organi -
zation; 34 chemin des Colo mbettes; 1211 Geneva 20 
Switzerland. Copies may also be inspected at the 
National Arch ives and Re
cords 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 Fea -
ture section, preferably by  including one or more fea -
ture keys listed in WIPO Stand ard
 ST.25 (1998), 
Appendix 2, Tables 5 and 6.
(c) Format repr esen
tation 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 e
nd of 
noncoding parts of a se qu
ence 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 nucle -
otide sequence shall be listed as triplets (codons). The 
amino acids corresponding to  the codons in the cod-
ing parts of a nucleotide sequence shall be type d 
immediately below
 the corr esponding codons. Where 
a codon spans an intron, th e amino acid symbol shall 
be typed below the portion of th
e 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 se
quence 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 ba se of the sequence with num -
ber 1. The enumeration sha ll be continuous through 
the whole sequence in the di rection 5 to 3. The enu
-
meration shall be marked in the right margin, next to 
the line conta
ining the one-letter codes for the bases, 
and giving  the
 number of the last base of that line.
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Page 179§ 1.823 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-178(7) For those nucleotide sequences that are 
circular in configuration, the enumeration method set 
forth in paragraph (c)(6) of this section remains appli -
cable with the exception that the designation of the 
first base of the nucleotide sequence may be made at 
the option of the applicant.
(d) Repr esentation of amino acids. (1) The 
amino acids in a p rotein or peptide sequ ence 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 pre -
sented in the amino to carboxy direction, from left to 
right, and th
e amino and carboxy groups shall not be 
presented in the sequence.
(4) The enumerati on 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 num -
ber 1. Otherwise, the enumeration of amino acids shall start at the first amino acid at the amino terminal 
as number 1. It shall be marked below the sequence 
every 5 amino acids. The enumeration meth od
 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 seque nce
s.
(e) A sequence with a gap or gaps shall be pre -
sented as a plurality of separate sequences, with sepa -
rate sequence identifiers, w ith 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 n o
ncontiguous 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, effec -
tive Mar. 4, 2005]
§  1.823 Requirements for nucleotide and/or 
amino acid sequences as part of the appli -
cation.
(a)(1) If the “Sequence Li sting” required by § 
1.821(c) is submitted on paper: The “Sequence List-
ing,” setting for
th 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 Listi ng” preferably should be 
numbered  in
dependently 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 cont ain no more than 72 char -
acters. The sheet or sheets presenting a sequence list -
ing 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 “Sequenc e 
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 info rmation if the application 
contains table information that may be submitted on a 
compact dis c
 (§ 1.52(e)(1 )(iii)). The specification 
must contain an incorpor ation-by-reference of the 
Sequence Listing as required by § 1.52(e)(5). The pre -
sentation of the “Sequence Listing” and other materi -
als 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 accor-dance with § 1.824.
(b) The “Sequence Listing” s h
all, except as oth-
erwise 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 
“Sequenc e Listing.” 
The order and presentation of the 
items of information in th e “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 iden tifier enclosed in angle 
brackets as shown. The subm ission of those items of 
IP/N/1/USA/D/2 
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Page 180PATENT RULES § 1.823
R-179 Rev. 8, July 2010information designated with  an “M” is mandatory. 
The submission of those items of information desig -
nated with an “O” is optio nal. Numeric identifiers 
<110> through <170> shall on ly be set forth at the beginning of the “Sequence Listing.” The following 
table illustrates the numeric identifiers.
IP/N/1/USA/D/2 
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Page 181§ 1.823 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-180Numeric 
IdentifierDefinition Comments and format Mandatory (M) or Optional (O)
<110> Applicant................ ..
.... Preferably max. of 10 names; one 
name per line; preferable format: Sur -
name, Other Names and/or Initials.M.
<120> Title of Invention.......... ............. ...
............................................. M.
<130> File Reference............... Personal file reference......................... M when filed prior to assignment or appl. number
<140> Current Application Number.Specify as: US 07/999,999 or PCT/
US96/99999.M, if available.
<141> Current Filing Date....... Specify as: yyyy-mm-dd.......... ...
......... M, if available.
<150> Prio
r Application  
Number.Specify as: US 07/999,999 or PCT/US96/99999.M, if applicable include priority docu -
ments under 35 U.S.C. 1 
19 and 120
<151> Prior Applicatio
n Filing 
Date.Specify as: yyyy-mm-dd ..................... M, if applicable
<160> Number of SEQ ID NOs.Count includes total number of SEQ ID NOs.................................................M.
<170> Software........... ...
......... Name of software used to create the Sequence Listing.O.
<210> SEQ ID NO:#:.............. Response shall be an integer repre -
senting the SEQ ID NO shown.M.
<211> Length.... ...
.................... Respond with an integer expressing the number of bases or amino acid res -
idues.M.
<212> Type.............................. Whether presented sequence molecule 
is DNA, RNA, or PR
T (protein). If a 
nucleotide sequence contains both DNA and RNA fragments, the type shall be “DNA.” In addition, the
 com-
bined DNA/ RNA molecule shall be further described in the <220> to 
<223> feature section.M.
<213> Organism...................... Scientific nam e
, i.e. Genus/ species, 
Unknown or Artificial Sequence. In addition, the “Unknown” or “Artifi -
cial Sequence” organisms shall be fur -
ther described in the <22 0
> to <223> 
feature section.M.
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IP/N/1/USA/P/6 
Page 182PATENT RULES § 1.823
R-181 Rev. 8, July 2010<220> Feature.......................... Leave blank after <220>. <221-223> 
provide for a description of points of biological significance in the sequence.M, u
 nder the following conditions: if 
“n,” “X aa,” 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 co
mbined DNA/RNA.
<221> Name/Key..................... Provide appropriate identifier for fea -
ture, preferably from WIPO Standard ST.25 (1998), Appendix 2, Tables 5 
and 6.M, under the foll owi
ng conditions: if 
“n,” “X aa,” or a modified or unusual 
L-amino acid or modified base was used in a sequence.
Numeric IdentifierDefinition Comme nt
s and format Mandatory (M) or  Opt ional (O)
<222> Location........................ Specify location within sequence; where appropriate state number of 
first and last bases/amino acids in  fea -
ture.M, under t
 he following conditions: if 
“n,” “X aa,” or a modified or unusual 
L-amino acid or modified base was used in a sequence.
<223> Other Information......... Othe
r relevant information; four lines 
maximum..................................... ...
.....M, under the following conditions: if “n,” “Xaa,” or a modified or unusual 
L-amino acid or modified base was 
used in a sequence; if ORGANISM is 
“Artificial Sequence” or “Unknown”; 
if molecule is co
mbined DNA/RNA.
<300> Publication Information Leave blank after <300> O.
<301> Authors......................... Preferably max. of ten named authors of publication; specify one name per 
line; preferable format: Surname, 
Other Names and/ or 
Initials.O.
<302> Title............................... ............................................................. O.
<303> Journal.......................... ............................................................. O.
<304> V olume ......................... ............................................................. O.
<305> Issue ............................. ............................................................. O.
<306> Pages ............................ ............................................................. O.
<307> Date.............. Journal date on which data published; specify as yyyy-  mm-dd, MMM-yyyy 
or Season- yyyy.O.
<308> Database Accession Number.Accession number assigned by d a
ta-
base including database name .O.
<309
> Database Entry Date........Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy.O.Numeric 
IdentifierDefin iti
on Comments and format Man
datory (M) or Optional (O)
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 183§ 1.824 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-182[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, ef fect
ive 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]
§  1.824 Form and format for nucleotide and/or 
amino acid sequence submissions in com -
puter readable form.
(a) The computer readable form required by 
§ 1.821(e) shall meet the following requirements:
(1) The computer readab le form shall contain 
a single “Sequence Listing” as either a diskette, series 
of diskettes, or other permissible media ou tli
ned in 
paragraph (c) of this section.
(2) The “Sequence Listing” in paragraph 
(a)(l) of this section sha ll be submitted in American 
Standard Code for Inform ation Interchange (ASCII) 
text. No other formats shall be allowed.
(3) The computer readable form may be cre -
ated by any means, suc
h as word processors, nucle -
otide/amino acid sequence ed itors’ or other custom 
computer programs; however,  it shall conform to all 
requirements detailed in this section.
(4) File compress ion 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) A
ll computer readable forms must have a 
label permanently affixed thereto on which ha s been
 
hand-printed or typed: the name of the applicant, the 
title of the invention, the date on whic h the data 
were 
recorded on the computer readable form, the operat-ing system used, a referenc e number, and an applica -
tion number and f iling date, if known. If multiple 
diskettes are submitted, the diskette labels must indi -
cate their order (e.g.,  “1 of X”).
(b) Computer re
adable form submissions must 
meet these format requirements:
(1) Computer Compatibility: IBM PC/XT/
AT
 or Apple Macintosh;
(2) Operating System Compatibility: MS-
DOS, MS-Windows, Unix or Macint
osh;
(3) Line Terminator: ASCII Carriage Return 
plus ASCII Lin
e Feed; and
(4) Pagination: Contin uous file (no “hard  
page 
break” codes permitted).
(c) Computer readable form files submitted 
may be in any of the follo win
g media:<310> Patent Document Num -
ber.Document number; for patent-type 
citations only. Specify as, for  exam -
ple, US 07/ 999,999.O.
<311> Patent Filing Date..............Document filing
 date, for patent-type 
citations only; speci
fy as yyyy-mm-
dd.O.
<312> Publication Date................Document publ
ication date, for 
patent-type citations only; specify as yyyy-mm -d
d.O.
<313> Relevant  Resi -
dues............FROM (position) TO (position)..
......... O.
<400> Sequence....................... SEQ ID NO should follow the numeric identifier and should appear on the line preceding the actual sequence.M.Numeric 
IdentifierDefinition Comme nts and fo
rmat Mandatory (M) or Optional (O)
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 184PATENT RULES § 1.825
R-183 Rev. 8, July 2010(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 comma n
d; 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 fa ctor (not “block size”); 
Line Terminator: ASCII Ca rriage Return plus ASCII 
Line Feed.
(4) Compact disc: Format: ISO 96
60 or High 
Sierra Format.
(5) Magneto Optical Disk: S ize/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)]
§  1.825 Amendments to or replacement of 
sequence listing and computer readable 
copy thereof.
(a) Any amendment to a paper copy of the 
“Seq uence Listing” (§ 1.821(c)) must be made by the 
submission of substitute sh eets and include a st
ate-
ment 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 compli ance with § 1.52(e
). Amendments must also 
be accompanied by a statemen t 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 “Sequenc e Listing,” in accordance 
with paragraph (a) of this section, must be accompa-
nied by a substitute copy of the computer readable 
form (§ 1.821(e)) includin g all 
previously submitted 
data with the amendment incorporated therein, accompanied by a statement that the copy in computer 
readable form is the 
same as the substitute copy of the 
“Sequence Listing.”
(c) Any appropriate amendments to the 
“Sequence Listing” in a patent; e.g., by reason of reis -
sue 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 damag
ed or unreadable, applic ant must 
pr
ovide, within such time as set by the Director, a sub -
stitute copy of the data in computer readable form accompanied by a statement th at 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]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 185Appendix A PATENT RULES
Rev. 8, July 2010 R-184
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 186MANUAL OF PATENT EXAMINING PROCEDURE Appendix A
R-185 Rev. 8, July 2010
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 187§ 1.902 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-186Subpart 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
§  1.902 Processing of prior art citations during 
an inter partes  reexamination proceeding.
 Citations by the patent owner in accordance with 
§ 1.933 and by an inter par tes reexamination third 
party requester under § 1.915 or § 1.948 will be 
entered in the inter par t
es 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  reexam -
ination proceeding has been concluded by the issu -
ance and publication of a ree x
amination certificate. 
See § 1.502 for processing of prior art citations in 
patent and reexamination files during an ex parte
reexamination proceeding filed under § 1.51
0.
[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 P ARTES  
REEXAMINATION PROCEEDINGS
§  1.903 Service 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 inter partes  reexamination by a 
third party 
requester, any document file d 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 con -
sideration 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]
§  1.904 Notice of inter partes  reexamination in 
Official Gazette .
A notice of the filing of an inter parte s reexamina -
tion 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]
§  1.905 Submission of papers by the public in 
inter partes  reexamination.
 Unless specifically provid ed 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 con -
sidered unless such subm issions are in accordance 
with § 1.915 or entered in th e patent file prior to the 
date of the order for reexamination pursuant to 
§ 1.931. Submissio n
s 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 an d will be treated in accor -
dance with § 1.902. Submissions which do no t meet 
the r
equirements of § 1.501 will be returned.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.906 Scope of reexamination in inter partes
reexamination proceeding.
(a) Claims in an inte r partes  reexamina tion pro -
ceeding will be examined on  the basis of patents or 
printed publications and, wi th respect to s ubject mat-
ter added or deleted in the reexamination procee ding, 
on the basis of the req uiremen
ts of 35 U.S.C. 11 2
.
(b) Claims in an inter partes  reexamination pro -
ceeding will not be permitted to enlar
ge the scope of 
the claims of the patent.
(c) Issues other than those indicated in para -
graphs (a) and (b) of this section will not be resolved 
in an inter partes  reexamination proceeding. If su ch
 
issues are rais ed by the
 patent owner or the third party 
requester during a reexam ination proceeding, the 
existence of such issues will be noted by the examiner 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 188PATENT RULES § 1.915
R-187 Rev. 8, July 2010in the next Office action, in which case the patent 
owner may desire to consider  the advisability of filing 
a reissue application to have  such issues considered 
and resolved.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.907 Inter partes  reexamination prohibited.
(a) Once an order to reexamine has been issued 
under § 1.931, neither the third party req u
ester, nor its 
privies, may file a subsequent request for inter partes
reexamination of the patent until an inter partes  reex -
amination certificate is is sued under § 1.997, unless 
authorized by the Director.
(b) Once a final decision has been entered 
against a party in a ci
vil action arising in whole or in 
part under 28 U.S.C. 1338 that the party has no t sus-
tained its burden of provin g 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 issu es
 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 thereaft er be maintained by the 
Office.
(c) If a final decision in an inter partes  reexam -
ination 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 part y, or its privies, raised 
or could have raised in such inter partes reexamina -
tion proceeding.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive May 1, 2003]
§  1.913 Persons eligible to file request for inter
partes reexamination.
Except as provided for in § 1.907, 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 af ter Nov
ember 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.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 
21, 2004]
§  1.915 Content of request for inter partes  reex -
amination.
(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 
numbe r and
 every claim for wh ic
h reexamination is 
requested.
(2) A citation of the patents and printed pub -
lications which are presented  to provide a substantial 
new question of patentability.
(3) A statement pointin g out each substantial 
new question of patentability based on the cited pat-
ents and printed publicatio ns, and a detailed explana -
tion of the pertinency and manner of applying the 
patent s an
d printed publica tions to every claim for 
which reexamination is requested.
(4)
A copy of every patent or prin ted
 publica -
tion relied upon or referred to in paragraphs (b)(1) 
through (3) of this section, accompanied by an 
English language translatio n of all the necessary and 
pertinent pa
rts of any non-English language docu -
ment.
(5) A copy of the entire patent including the 
front face, drawings, and specification/claims (in dou -
ble column format) for which reexamination is 
requested, and a copy of any disclaimer ,
 certificate of 
correction, or reexam ination ce
rtificate 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
 pro-
vided for in § 1.33(c). The name and address of the 
party served must be indicated. If service was not pos -
sible, a duplicate copy of the request must be  supplie
d 
to the Office.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 189§ 1.919 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-188(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 attor -
ney or  agen
t identifying another party on whos e 
behal
f the request is being f iled, the attorney or agent 
must have a power of attorney from that party or be 
acting in a representative capa city pursuant to  § 1.34.
(d) If the inte
r 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 paragrap h (b) of this section, then 
the person identif ied as requesting inter partes  reex -
amination will be so notified and will generally be 
given an oppo rtun
ity to comp lete 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 place -
ment of the request in the patent file as a ci
tation 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, effec -
tive 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]
§  1.919 Filing 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 satis -
fies 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 pa tent fi
le 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, effec -
tive Mar. 27, 2006]§  1.923 Examiner’s determination on the request 
for inter partes  reexamination.
 Within three months follo wing the filing date of a 
request for inter partes  reexamination under § 1.915, 
the examiner will consider  the request and determine 
whether or not a substantial new 
question of patent -
ability affecting any claim of the patent is raised by 
the request and the prior ar t citation. The examiner’s 
determination will be based on the claims in effect at the time of the determinatio n, 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) an
d to the third pa rty requester. If the exam -
iner determines that no su bstantial new question of 
patentability is present, 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]
§  1.925 Partial 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  reexamination will be ma de to the requester in 
accordance with § 1.26(c).
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.927 Petition 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 determi -
nation refusing to order inter partes  reexamination. 
Any such petition must comply with § 1.181(b). If n
o 
petition is timely filed or if the decision on petition 
affirms that no substantial new question of
 patentabil -
ity has been raised, the determination shall be final 
and no napp
ealable.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 190PATENT RULES § 1.939
R-189 Rev. 8, July 2010INTER P ARTES  REEXAMINATION OF 
PATENTS
§  1.931 Order for inter partes  reexamination.
(a) If a substantial new question of patentability 
is found, the dete rmination will include an order for 
inter partes  reexamination of the patent for resolution 
of the question.
(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 th e examiner re
sponsible for 
the initial determina tion under § 1.923.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
INFORMATION DISCLOSURE IN INTER 
P ARTES REEXAMINATION
§  1.933 Patent 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 reexam ination 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 in compliance with the 
requirements set forth in § 1.555(a) and (b).
(b) The responsibility fo r compliance with this 
section rests upon the individuals designated in para -
graph (a) of t h
is section, and no evaluation will be 
made by the Office in th e reexamination proceeding 
as to compliance with this  section. If questions of 
compliance wit
h this section are raised by the patent 
owner or the third party requester during a reexamina -
tion 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 
PA R T E S  REEXAMINATION
§  1.935 Initial Office action usually accompanies 
order for inter partes  reexamination.
The order for inter partes  reexamination will usu -
ally be accompanied by the initial Office action on the 
merits of the 
reexamination.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.937 Conduct of inter partes  reexamination.
(a) All inter partes  reexamination proceedings, 
including any appeals to the Board of Patent Appe als 
and Int
erferences, will be co nducted with special dis -
patch 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 accord ance with 
§§ 1.104
through 1.116, th
e 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 Of fice 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, effec -
tive May 1, 2003]
§  1.939 Unauthorized papers in inter partes  reex -
amination
(a) If an unauthorized paper is filed by any 
party at any time during the inter partes  reexamina -
tion proceeding  
it will not be considered and may be 
returned.
(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]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 191§ 1.941 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-190§  1.941 Amendments by patent owner in inter
partes reexamination.
Amendments by patent owner in inter partes  reex -
amination 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]
§  1.943 Requirements of responses, written com -
ments, and briefs in inter partes  reexami -
nation.
(a) The form of respon ses, written comments, 
briefs, appendices, and other papers must be in accor -
dance with the requirements of § 1.5 2
.
(b) R esponses by the pat
ent owner and written 
comments by the third pa rty requester shall not 
exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as  
prior art r
eferences.
(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 a p
pendi-
ces 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]
§  1.945 Response 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 ent e
red 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 to gether with the original 
response  
to the Office action; and(3) A compelling reason to enter the supple -
mental respon se
.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 
16, 2007]
§  1.947 Comments 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  serv
ice 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 com -
ments by the third party requester, the comments will be considered as having been  rece ived 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]
§  1.948  Limitations 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 su bmissio
n 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 pr oceed
ing. 
Prior art submitted under para graph (a)(3) of this sec -
tion must be accompanie d by a
 statement as to when 
the prior ar t 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] 
IP/N/1/USA/D/2 
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Page 192PATENT RULES § 1.955
R-191 Rev. 8, July 2010  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.949 Examiner’s Office action closing prosecu -
tion in inter partes  reexamination.
Upon consideration of the issues a second or subse -
quent time, or upon a determination of patentability of 
all claims , t
he exam in
er shal l is
sue an Office action 
treating all claims present in the inter partes  reexami -
nation, which may be an action closing prosecution. The Office action shall set forth all rejections and 
determinations not to make  a propose d rejection, and 
the grounds therefor
. An Office action will not usually 
close prosecution if it includes a new ground of rejec -
tion which was not previously  addres sed by the patent 
owner, unless the  new ground was neces
sitated by an 
amendment.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.951  Options after Office action closing prose -
cution 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 pr osecution. The comm en
ts 
can include a proposed amendment to the claims, which amendment will be subj ect 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) W h
en 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]
§  1.953 Examiner’s Right of Appeal Notice in 
inter partes  reexamination.
(a) Upon considering the comments of the 
patent owner and the third party requester subsequen t
 
to the Office action cl osing 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  reexami -
nation, 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 pro -
ceeding and must identify a ll of the appealable issues 
and the positions of the pa tent owner and all third 
party requesters on those issues. If the examiner deter -
mines that no other issues are prese nt or should be 
raised, a Right 
of Appeal Notice limited to the identi -
fied issues shall be issued.
(c) The Right of A
ppeal Notice shall be a final 
action, which comprises a final rejection setting forth 
each ground of reje ctio
n and/or final decision favor -
able to patentability includ ing each determination not 
to make a proposed rejectio n, an identification of the 
status of each claim, an d the reasons for dec
isions 
favorable to patentability an d/or the grounds of rejec -
tion 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 is filed, 
prosecution in the inter partes  reexamination procee
d-
ing will be terminated, an d the Director  will proceed 
to issu e and  publish  a certifi cate un der §  1.997 in 
ac
cordance 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, effec -
tive May 1, 2003; paras.  (b)  and (c) revised, 72 FR 18892, 
Apr. 16, 2007, effective May 16, 2007]
INTERVIEWS PROHIBITED IN INTER 
PA R T E S  REEXAMINATION
§  1.955 Interviews prohibited in inter partes  reex -
amination proceedings.
There will be no interviews in an inter partes  reex -
amination proceeding which discuss the merits of the 
proceeding.
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 193§ 1.956 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-192  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
EXTENSIONS OF TIME, TERMINATING OF 
REEXAMINATION PROSECUTION, AND 
PETITIONS TO REVIVE IN INTER P ARTES 
REEXAMINATION
§  1.956 Patent 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 reason -
able time specified. Any re quest for such extension 
must b e file
d on or before the day on which action by 
the patent owner is due, bu t in no case will the mere 
filing of a request ef
fect any extension. Any request 
for such extension must be accompanied by the peti -
tion set forth in § 1.17(g). See § 1.304(a) for exten -
sions of time for filing a notic e 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]
§  1.957 Failure 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, not ice of appeal or brief in 
an inter partes  reexamination, the paper will be 
refused consideration.
(b) If no claims are found patentable, an d the 
patent 
owner fails to file a timely and appropriate 
response in an inter partes reexamination proceeding, 
the prosecution in the reexami n
ation proceeding will 
be a terminated prosecution and the Director will pro -
ceed to issue and publish a certificate concluding the 
reexamination proceeding  under § 1.997 in accor -
dance with the last action of the Office.
(c) If claims are found patentable and the patent 
owner fails to file a timel y and appropriate response 
to any Of fice
 action in an inter partes  reexamination 
proceeding, further prosecution will be limited to  the 
claim
s 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 prosecu -
tion and is substantially a comple te response to the 
Office action, but consideration of some matter or 
compliance with some requirement has been inadvert -
ently 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, effec -
tive May 1, 2003; para.  (b)  revised, 72 FR 18892, Apr. 16, 
2007, effective May 16, 2007]
§  1.958 Petition to revive inter partes reexamina -
tion 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 sh own 
to the satisfac -
tion of the Director that the delay was unavoidable. A grantable petition to accept an unavoidably del a
yed 
response must be filed in compliance with §  1.137(a).
(b) Any response by the patent owner not 
timel y filed in th e Of
fice may be accepted if the delay 
was unintentional. A grantable petition to accept an unintentionally delayed r esponse 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, effec -
tive 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 
PA R T E S  REEXAMINATION
§  1.959 Appeal 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, effec -
tive Sept. 13, 2004]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 194PATENT RULES § 1.983
R-193 Rev. 8, July 2010§  1.961 - 1.977  [Reserved]
§  1.979 Return of Jurisdiction from the Board of 
Patent Appeals and Interferences; termi -
nation of appeal proceed ings.
(a)
Jurisdiction over an inter partes  reexamina -
tion proceeding passes to the examiner after a deci -
sion by the Board of Patent Appeals and Interferences 
upon transmittal of the file to the examiner, subject to 
each appe
llant’s right of appeal or other review, for 
such further action as the condition of the inter partes
reexamination proceeding ma y 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 a nd Interferences, if no fur -
ther appeal has been taken (§ 1.983), the prosecution 
in t
he inter partes  reexamination proceeding will be 
terminated and the Director  will issue and publish a 
certificate under  § 1.997  conclud ing
 the proceeding. 
If an appeal to the U.S. Co urt of Appeals for the Fed -
eral 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, effec -
tive May 1, 2003; paras. (e) & (f) revised, 68 FR 70996, 
Dec. 22, 2003, effective Jan. 21, 2004; revi sed, 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]
§  1.981 Reopening after a final decision of the 
Board of Patent Appeals and Interfer -
ences.
 When a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judi -
cial review, prosecution of the inter partes  reexamina -
tion proceeding will not be reopened or reconsidered 
by t
he primary examiner except under th e p
rovisions 
of § 41.77 of this title with out 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 P ARTES REEXAMINATION
§  1.983 Appeal 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 wi th 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 Circ uit and may be a party to 
any appeal thereto taken from a reexamination deci -
sion 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 
Direct or in ac
cordance with §§ 1.30
2 and 1.304;
(2) In the U.S. Court of Appeals for the Fed -
eral 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) S
erve a copy of the notice of appeal on 
every other party in the reexamination proceeding in  
th
e 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 requ ester may cross appeal to 
the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the  de
cision 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 appe al to 
the U.S. 
Court of Appeals for the Federal Circuit if also dissat -
isfied with the decision of the Board of Patent Appeals and Interferences.
(e) A party electing to pa rticipate in an appel -
lant’s appea l
 must, within fourteen days of service of 
the appellant’s  n
otice of appeal under paragraph (b) o
f 
this section, or notice of cross appeal under para -
graphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, 
timel y file a written notice directed to the Director 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 195§ 1.985 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-194electing to participate in th e 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 pro-
vided in § 104.2;
(2) In the U.S. Court of Appeals for the Fed -
eral Circuit, file a copy of the notice electing to partic-
ipate 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 par -
ticipate on every other part y in the reexamination pro -
ceeding in the manner provided in § 1.248.
(f) Notwithstanding any provision of the rules, 
in any reexamina tion proceeding commence d 
prior to 
November 2, 2002, the th ird 
party requester is pre -
cluded from ap pealing a
nd cross appealing any deci -
sion of the Board of Patent Appeals and Interferences to the U.S. Court of Appeals for the Federal Circuit, and the third party requeste r is precluded from partici -
pati
ng in any appeal taken 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 P ARTES 
REEXAMINATION
§  1.985 Notification of prior or concurrent pro -
ceedings in inter partes  reexamination.
(a) In any inter partes reexamination proceed -
ing, the patent owner sha ll 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, reis sue, reexamination, or liti -
g
ation an d t
he 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 pro cee
ding 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 me rely providing notice of 
the other proceeding without discussion o f
 issues of 
the current inter partes  reexamination procee
ding. Any paper not so limited will be returned to the 
sender.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
§  1.987 Suspension of inter partes reexamination 
proceeding due to litigation.
If a patent in the process of inter partes reexamina -
tion 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]
§  1.989 Merger of concurrent reexamination pro -
ceedings.
(a) If any reexamination is ordered while a 
prior inter partes  reexamination proceeding is pend -
ing 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 p
roceedings. 
Where merger is ordered, the merged examination 
will normally result in the is suance and publication of 
a single reexamination certificate under  § 1.997.
(b) An inter partes  reexamination proceeding 
filed under § 1.913 which is m er
ged with an ex parte
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, effec -
tive May 16, 2007]
§  1.991 Merger of concurrent reissue application 
and inter partes  reexamination proceed -
ing.
If a reissue application and an inter partes  reexami -
nation 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 pro -
ceedings
 or to suspend on e of the two proceedings. 
Where merger of a reissue application and an inter 
IP/N/1/USA/D/2 
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Page 196PATENT RULES § 1.997
R-195 Rev. 8, July 2010partes  reexamination proceed ing 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 an d maintain the same claims 
in the reissue application and the inter partes   reexam -
ination proceeding during the pendency of the merged proceeding. In a merged pr oceeding 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 particip ation 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 pro -
ceeding will apply to both the reissue ap plication and 
the inter partes  reexamination proceeding and be 
physically entered into both files. Any inter partes
reexamination proceeding merg ed w
ith a reissue 
application shall be conclude d by the grant of the reis -
sued patent.
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 72 FR 18892, Apr. 16, 2007, effective May 
16, 2007]
§  1.993 Suspension of concurrent interference 
and inter partes reexamination proceed -
ing.
 If a patent in the process of inter partes reexamina -
tion is or becomes involved in an interference, the 
Director may suspe nd the inter partes reexamination 
or the interference. The Di rector will not consider a 
request to suspend an in
terference unless a motion 
under § 41.121(a)(3) of this  title to suspend the inter -
ference has been presented to, and denied by, an 
administrative patent judge and the request is filed 
within ten (10) days of a d ecision by an administrative 
patent judg
e 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]
§  1.995 Third 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  reexami -nation proceeding, the merger of such proc eedin
gs 
will be accomplished so as to  preserve the third party 
requester’s right to participate to the extent specifi -
cally provided for in these regulations. In mer g
ed pro -
ceedings involving different requesters, any paper 
filed by one party in  th
e merged proceeding shall  be 
served o
n all other parties of the merged proceeding. 
  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001]
REEXAMINATION CERTIFICATE IN INTER 
PA R T E S  REEXAMINATION
§  1.997  Issuance  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 § 1.9 31.
 Any stat -
utory 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 pro -
ce
eding.
(d) If a certificate has be en is
sued and pub -
lished which cancels all of the claims of the patent, no further Office proceedings w ill be conducted with that 
patent or any reissue applications or any reexamina -
tion requests relating thereto.
(e) If the inter par tes
 reexamination proceeding 
is terminated by the grant of  a reissued patent as pro -
vided in § 1.991, the reissu ed patent will constitute 
the reexamination certif icate required by this section 
and
 35 U.S.C. 316.
(f) A notice of the issuan c
e of each certificate 
under this section will be published in the Official Gazette .
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 197§ 3.1 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-196  [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive May 1, 2003;  h eading
 and  paras.  (a), (b), and (d) 
revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 
2007]
PART 3 — ASSIGNMENT, RECORDING 
AND RIGHTS OF ASSIGNEE
Sec.
3.1 Definitions.  
DOCUMENTS ELIGIBLE FOR RECORDING  
3.11 Documents which will be recorded.  
3.16 Assignability of trademarks prior to filing an 
allegation of use.  
REQUIREMENTS FOR RECORDING  
3.21 Identification of patents and patent applications.  3.24 Requirements for documents and cover sheets 
relating to patents and patent applications.  
3.25 Recording requirements for trademark appl icatio
ns 
and registrations.  
3.26 English language requirement.  
3.27 Mailing address for submit tin
g documents to be 
recorded.  
3.28 Requests for recording.  
COVER SHEET REQUIREMENTS  
3.31 Cover sheet content.  
3.34 Correction of cover sheet errors.  
FEES  
3.41 Recording fees.  
DATE AND EFFECT OF RECORDING  
3.51 Recording date.  
3.54 Effect of recording.  3.56 Conditional assignments.  
3.58 Governmental registers.  DOMESTIC REPRESENTATIVE   
3.61 Domestic representative.  
ACTION TAKEN BY ASSIGNEE  
3.71 Prosecution by assignee.  
3.73 Establishing right of assignee to take action.  
ISSUANCE TO ASSIGNEE  
3.81 Issue of patent to assignee. 3.85 Issue of registration to assignee. 
§  3.1 Definitions.
For purposes of this part, the following definitions 
shall apply:
Application means a national application for patent, 
an international patent app lication that designates the 
United States of America, or an application to register 
a trademark under section 1 or 44 
of the Tr
ademark 
Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless other -
wise indicated.
Assignment  means a transfer by a party of all or part 
of its right, title and interest in a patent, patent appli -
cation, registered mark or a mark for which an appli -
cation to register has been filed.
Document  means a document wh ich a pa
rty 
requests to be recorded in  the Office pursuant to § 
3.11 and w h
ich affects some interest in an application, 
patent, or registration.
Office  mea n
s the United States Patent and Trade -
mark Office.
Recorded document  means a document which has 
been recorded in the Office pursuant to § 3.11.
Registration means a tra demark registration iss ued 
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 com -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 198PATENT RULES § 3.24
R-197 Rev. 8, July 2010pleted 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 dis -
cretion of the Director.
(b) Executive Order 9424 of Febr
uary 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-own
ed or Government-controlled corporations, to for -
ward promptly to the Director for recording all 
licenses, assignments, or other interests of the Gov -
ernment in or under patent s or patent applications. 
Assignments and other docu ments affecting title to 
patents  
or patent application s and
 documents not 
affecting title to patents or patent applications required by Executive Order 9424 to be filed will be 
recorded as provid ed in this part.
(c) A joint research agreement or an excerpt of 
a joint research agreement will also be recorded as 
provided i n 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 fil -
ing an allegation of use.
 Before an allegation of u se un der 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 appli-
cant’s business, or portion of  the business to which the 
mark pertains, if that busi ness 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 appli -
cations.
 An assignment relating to a patent must identify 
the patent by the patent number. An assignment relat-
ing to a national patent application must identify the 
national patent application by the application number (consis ting of the
 series code and the serial number, 
e.g., 07/123,4 56
). An assignme nt relating to an inter -
national patent application which designates the United States of America must identify the interna -
tional application by the international application 
number ( e.g., PCT/US90/01234). If an assignme nt of 
a pate
nt application filed under § 1.53(b) is executed 
concurrently with, or subse quent to, the execution of 
the patent application, but before the patent applica -
tion is filed, it must identif y the patent application by 
the name of each inventor and the title of the inven -
tion so that there can be no mistake as to the patent 
application intended. If an assignment of a provisional applica
tion under § 1.53(c) is execu t
ed before the pro -
visional application is filed, it must identify the provi -
sional application by the name of each inventor and the title of the invention so that there can be no mis-
take as to the provisional application intended.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 
8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 69 FR 29865, May 26, 2004, effec -
tive 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 docu -
ments must be submitted as  digitized images in 
Tagged Image File  
Format (TIFF) or another form as 
prescribed by the Director. When p
rinted 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 docu-
ment 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 docume nt or an extract of the 
original document must be  submitted for recording. 
Only one sid
e 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, st rong white, non-shiny, and 
durable. The Office will no t return recorded docu -
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 199§ 3.25 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-198ments, so original docume nts 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, effec -
tive Oct. 30, 1999; revised, 69 FR 29865, May 26, 2004, 
effective June 25, 2004; revi sed, 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 docu -
ments affecting title to a trademark application or reg-
istration, a legible cover sheet ( see § 3.31) and o n
e of 
the following must be submitted:
(1) A copy of the original document;
(2) A copy of an e
xtract from the document 
evidencing the effect on title; or
(3) A statement signed by both the party con-
veying the interest a
nd 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 submis -
sions : All documents must be  submitted as digitized 
images in T a
gged Image File Format (TIFF) or 
another form as prescribed by the Director. When 
prin
ted to a paper size o
f either 2
1.6 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-
shiny paper that is either 8 1/2 by 11 inches (21.6 b y
 
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 do cuments, so original docu-
ments 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 lan -
guage documents only if a ccompanied by an English 
translation signed by the in dividual making the trans -
lation.[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 docu-
ments to be recorded.
 Documents and cover sheets submitted by mail for 
recordation should be addressed to Mail Stop Assign -
ment Recordation Services, Director of the United 
St
ates 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, effec -
tive 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 record -
ing must include a single co ver sheet (a s specified in § 
3.31) referring either to those patent applications and 
patents, or to those tradem ark applications and regis -
trations, against which the document is to be recorded. If a document 
to be recorded includes inter-
ests in, or transactions in volving, both patents and 
trademarks, then separate patent an d tradema
rk cover 
sheets, each accompanied by  a co
py 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 th e incomplete cover sheet 
will be returned pursuant to § 3.51 for proper comple -
tion, in which case the do cument 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.
(a) Each patent or trademark cover sheet 
required by § 3.28 must contain:
(1) The name of the party conveying th
e 
interest;
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 200PATENT RULES § 3.31
R-199 Rev. 8, July 2010(2) The name and address of the party receiv -
ing 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 trade -
mark na
me changes: Each trademark registration 
number and each trademark application number, if 
known, against wh ich
 the Of fice is to record the docu -
ment. If the trademark application number is not 
known, a copy of the application or a repr od
uction of 
the trademark must be subm itted, along with an esti -
mate of the date that the Office received the applica -
tion; or
(ii) For any other document affecting 
title to a trademark or patent  application, registration 
or patent: Each trademark or patent application num -
ber 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) T
he 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 mus
t either:
(i) Place a symbol comprised of letters, 
numbers, and/or punctuation marks between fo
rward 
slash marks ( e.g. Thomas O’Malley III) in the signa -
ture block on the electronic submission; or
(ii) Sign the cover sheet using some other 
form of electronic signatur e specified by the Director.
(8) For trademark assign ments, the entity and 
citizenship of the party recei ving the interest. In addi-
tion, if the party receiving the 
interest is a domestic 
partnership or domestic jo int venture, the cove
r 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 pat -
ents and trademarks, since any information, including 
information about pending patent applications, sub -
mitted with a request for recordation of a document against a trademark application or trademark registra -
tion will become public re cord upon recordation.
(c) Each pate nt co
ver sh eet req
uired by § 3.2 8
see
king to record a governmental interest as provided 
by § 3.11(b) must:
(1) I
ndicate that the do cument relates to a 
Government interest; and
(2) Indicate, if applicab le, that the document 
to be recorded is not a document affecting title (se
e § 
3.41(b)).
(d) Each trademark cover s h
eet required by 
§ 3.28 seeking to record a document against a trade -
mark application or regist ration 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 t h
e document.
(e) Each patent or trademark cover sheet 
required by § 3.28 should contain the number of  
ap
plications, patents or regi strations identified in the 
cover sheet and the total fee.
(f) Each trademark cover sheet should include 
the citizenship of the part y 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 agreemen t as provide
d by § 3.11(c) 
must:
(1) Identify the document as a “joint research 
agreement” (in the space pr ovided for the description 
of the interest co nveyed 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 addre ss of the
 party receiving the interest if 
using an Office-provided form);
(3) Indicate the name of each other pa
rty to 
the joint research agreemen t party (in the space pro -
vided for the name of the party conveying  the in
terest 
if using an Office-provided form); and
(4) Indicate the date the joint research agree -
ment w a
s executed. 
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; para. (c) added, 62 FR 53131, Oct. 10, 1997, effec -
tive Dec. 1, 1997; paras. (a)-(b) revised, paras. (d)-(e) 
added, 64 FR 48900, Sept. 8, 199 9, ef
fective 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 
IP/N/1/USA/D/2 
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Page 201§ 3.34 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-200FR 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 5 6
119, Sept. 26, 2005, effec -
tive Nov. 25, 2005; para. (a)(8) ad ded and para. (f) revised, 
73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009]
§  3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant 
to § 3.11 will be corrected only if:
(1) The error is apparent when the co ve
r 
sheet is compared with the recorded document to 
which it pertains and
(2) A corrected cover sheet is filed for recor -
dation.
(b) The co rrec
ted cover sheet must be accompa -
nied by a copy of the do cument origin ally 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, effec -
tive June 25, 2004]
FEES
§  3.41 Recording fees.
(a) All requests to record documents must be 
accompanied by the appropriate fee. Except as pro -
vided in paragraph (b) of this section, a fee is requ ired 
for e
ach application, patent and registration against 
which the document is reco rded 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 chap -
ter for trademarks.
(b) N o 
fee is required for each patent applica-
tion and patent against whic h 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 an d cove
r sheet are either: 
Faxed or electronically s ubmitted as prescribed by the 
Director
, or mailed to the Of fice in compliance wi th § 
3.2
7.
[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 r ecording 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 record
ed. Docu -
ments not meeting the othe r requirements for record -
ing, for exampl e, a document submi tted without a 
completed cover sheet or without the required fee, 
will be returned for correction to the sender where a 
correspondenc e addres s is available. The returne d 
papers, stamped with the orig inal date of receipt by 
the Of fice, will be accompanied by a 
letter which will 
indicate that if the re turned  pa
pers are corrected and 
resubmitted to the Office w ithin the time specified in 
the letter, the Office will cons ider the original date of 
filing of the papers as the date of recording of the doc -
ument. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used  for resubmissions of 
returned papers to have th e benefit of the date of 
deposit in the United States  Postal Service. If the 
returned papers are not corrected a n
d 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 pape rs 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 de termine what effect a doc -
ument 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]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 202PATENT RULES § 3.71
R-201 Rev. 8, July 2010§  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 subsequen t
, if 
recorded in the Office, are regarded as absolute 
assignments for Office pu rposes until cancelled with 
the written consent of all par ties or by the decree of a 
court of competent jurisdiction. The Office does not determine whether such co nditions have been ful-
filled.
[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 Depart -
mental Register will not be open to public inspection 
but will be available for examination and inspection by duly authorized representatives of th e Go
vern-
ment. Governmental interests recorded on the Depart -
mental Register will be ava ilable for public inspection 
as provided in § 1.12.
(b) The Office will maintain a Secret Register 
to record
 governmental in terests required to be 
recorded by Executive Orde r 9
424. Any instrument to 
be recorded will be placed on  this Secret Register at 
the request of the department or agency submitting 
the same. No information will be given concerning 
any instrument in such record or register, and no examination or inspection thereof or of the index 
thereto will be permitted, except on the written 
authority of the head of the department or agency which submitted the inst rument 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 depart -
ment or agency which submitted an instrument no 
longe r requires secrecy with respect to that instru -
ment, 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, effec -
tive May 1, 2003]DOMESTIC REPRESENTATIVE
§  3.61 Domestic representative.
If the assignee of a patent, patent application, trade -
mark application or trademark registration is not 
domiciled in the United States, the assignee may des -
ignate 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 resid i
ng within the United States on whom 
may be served process or notice of proceedings affect -
ing 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 paragrap h
 (b) of this 
section may, after becoming of record pursuant to 
paragraph (c) of this sectio n, conduct prosecution of a 
national patent applicatio n or a reexamination pro -
ceeding to the exclusion of either the inventive entity, 
or the assignee(s) previous ly entitled to conduct pros -
ecution.
(b) Patents  — assignee(s) who can prosecute. 
The assignee(s) who 
may co nduct e
ither the prosecu -
tion of a national applicatio n for patent or a reexami-
nation 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) Parti al assignee(s) together or with 
invent
or(s) . All partial assignees, or all partial assign -
ees and inventors who have not assigned their right, 
title and i n
terest in the application or patent being 
reexamined, who together own the entire right, title and interest in the applica tion or patent being reexam -
ined. A
 partial assignee is any assignee of record hav-
ing less than the entire 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 applica -
tion or a reexamination proceeding by filing a state-ment in compliance with § 3. 73(b) that is signed by a 
IP/N/1/USA/D/2 
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Page 203§ 3.73 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-202party 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, su bmit do
cume nts to maintain a trade -
mark 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 es ta
blish 
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 assign -
ment.
(b)(1) In order to request or take action in a 
patent or trademark matter ,
 the assignee must estab -
lish its ownership of the patent or trademark property 
of paragraph (a) of this se ction to the satisfaction of 
the Director. The establish m
ent of ownership by  the 
ass
ignee may be combined with the paper that 
requests or takes the action.  Ownership is established 
by submitting to the Office  a signed statement identi-
fying 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 mat -
ters only, the documents su bmitted to establish owner -
ship may be required to be recorded pursuant to § 3.11
in the assignment records of the Of
fice as a condition 
to permitting the assignee to take action in a matter 
pend ing
 before the Office. Fo r patent matters only, the 
submission of the docume nt
ary evidence must be 
accompanied by a statement affirming that the docu-mentary evidence of the chain of title from the origi -
nal owner to the assignee was or concurrently is being 
submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where docu -
mentary evidence of a chain of title
 from the original 
owner to the assignee is recorded in the assignment 
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 statem ent that the person 
signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed  b
y 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 requ
esting or taking action is sub -
mitted.
(2) If the submission unde r this section is by 
an assignee of less than th e entire right, 
title and inter -
est, such assignee must indicate the extent (by per-
centage) of its ownership interest, or the Office ma y 
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, effec -
tive Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25 , 20
03, 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 applica -
tion may issue in the name of the assignee consistent 
with the application’s assignment where a request for 
such issuance is submitte d
 with payment of the issue 
fee, provide d
 the assignment has been previously 
recorded in the Office. If the assignment has not been 
previously recorded, the re quest 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 applic ation 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 s
tate the name of the assignee, must state that the 
assignment was subm itted for recordation as set forth 
in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 
IP/N/1/USA/D/2 
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Page 204PATENT RULES § 4.2
R-203 Rev. 8, July 20101.323 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 excl usion 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, effec -
tive 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 cer -
tificate 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 fo r re
cordation. 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
Sec. 
4.1 Complaints Regarding Invention Promoters. 4.2 Definitions.  4.3 Submitting Complaints  4.4 Invention Promoter Reply.  4.5 Notice by Publication.  4.6 Attorneys and Agents§  4.1 Complaints Regarding Invention Pro -
moters.
These regulations govern the Patent and Trademark 
Office’s (Office) responsibilities under the Inventors’ 
Rights Act of 1999, which can b e
 found in the U.S. 
Code at 35 U.S.C. 297. Th e Act requires the Office to 
provide a forum for the publication of complaints 
concerning invention promot ers. The Office will not 
conduct any independent i nvestigation of the inven -
tion promoter. Although th e Act provides additional 
civil remedies for persons injured by invention pro -
moters, those remedies must be pursued by  the
 injured 
party without the invol vement 
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 inventio n promotion services for , 
o
r 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 go ve 
rnment;
(2) Any nonprofit, charitable, scientific, or 
educational organization qu alified under applicable 
State law or described under section 170(b)(1)(A) of 
the In
ternal Revenue Code of 1986;
(3) Any person or entity  involved in the eval -
uation to determine commerci al potential of, or of fer-
ing to license or sell, a u tility patent or a previously 
filed nonprovisional utility  patent application;
(4) Any party participating in a transaction 
involving the sale of the stoc k or as
sets of a business; 
or
(5) An
y party who directly enga ges
 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 
inven -
tion promotion servic es.
(c) Contract for Invention Pr omotion Servic
es 
means a contract by which an invention promoter 
undertakes in ve
ntion prom otion services for a cus -
tomer.
(d) Invention Promotion Services means the 
procurement or attempted pr ocurement for a customer 
IP/N/1/USA/D/2 
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Page 205§ 4.3 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-204of 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 subm it a complaint concern -
ing an invention promoter with the Office. A person 
submitting a complaint should understand that the 
complaint may be forwarde d to the invention pro -
moter and may become publicly  available. The Office 
will not accept any complaint that requests that it be 
kept confid
ential.
(b) A  compl
aint must be clearly marked, or oth -
erwise identified, as a complaint under these rules. 
The complaint must include:
(1) The name and address of the complain -
ant;
(2) T
he name and address of the invention 
promoter;
(3) The name of the cust om
er;
(4) The invention promotion serv ic
es offered 
or performed by the invention promoter;
(5) The name of the mass media in wh ic
h the 
invention promoter advertised providing such ser -
vices;
(6) An explanation of the relationship 
between the cus
tomer and the invention promoter, and
(7) A signature of the complainant.
(c) The complaint should fairly summarize the 
action of the invention promoter abo u
t which the per -
son complains. Additionally , the complaint should 
include names and addresses of pe rso
ns believed to be 
associated with the inven tion promoter. Complaints, 
and any replies, must be addressed to: 
Mail Stop 24, 
Commissioner for Patents, P.O. Box 1450, Alexan -
dria, Virginia 22313-1450.
(d) Complaints that do not provide the informa -
tion requested in paragraphs (b) and (c) of this section 
will be returned. If complainant’s address is not pro-vided, the complain t will be destroyed.
(e) No originals of documents should be 
included with the complaint.
(f) A complaint can be withdrawn by the com -
plainant or the named custo
mer at any time prior to its 
publication.[Para. (c) revised, 68 FR 14332, Mar. 25, 2003, effec -
tive May 1, 2003]
§  4.4 Invention Promoter Reply.
(a) If a submission appear s to meet the require-
ments of a complaint, the invention promoter named 
in the complaint will be notified of the complaint and 
given 30 days to respond. The inv e
ntion promoter’s 
response will be made ava ilable to the public along 
with the complaint. If the i nvention 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 compla int is made available to 
the public will also be published.
(b) A response must be clearly marked, or oth -
erwise identified, as a response by an invention pro -
moter. 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 pub -
lished;
(3) The name of the individual si gni
ng 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 retu rned undelivered, then the 
Office will publish a Notice of Complaint Received in 
the Official Gazette , the Federal Register, or on the 
Office’ s In
ternet home page. The invention promoter 
will be given 30 days fro m 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.
Complaints against register ed patent attorneys and 
agents will not be treated under this section, unless a 
complaint fairly demonstrat es that invention promo -
tion services are involved. Persons having co mp
laints 
IP/N/1/USA/D/2 
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Page 206PATENT RULES § 5.1
R-205 Rev. 8, July 2010about registered patent a ttorneys 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 th e attorney discipline sec -
tion of the attorney’s state lic ensing 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 
Sec.
5.1 Applications and correspondence involving national 
security.  
5.2 Secrecy order.  5.3 Prosecution of application under secrecy orders; 
withholding patent.  
5.4 Petition for rescission of secrecy order.  5.5 P
ermit to disclose or modification of secrecy order.  
5.6 [Reserved]  5.7 [Reserved]  5.8 [Reserved]  
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.  
5.12     Petition for license.  
5.13 Petition for license; no corresponding application.  5.14 Petition for license; corresponding U.S. application.  5.15 Scope of license.  5.16 [Reserved]  
5.17 [Reserved]  
5.18 Arms, ammunition, and implements of war.  5.19 Export of technical data.   5.20 Export of technical data relating to sensitive nuclear 
technology.  
5.25 Petition for retroactive license.  GENERAL  
5.31 [Reserved]  
5.32 [Reserved]  5.33 [Reserved] 
SECRECY
§  5.1 Applications and correspondence involv -
ing national security.
(a) All correspondence in connecti on with this 
part, including petitions, shou ld 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 applica -
tions filed under 35 U.S.C. 111(a) or entering the 
national stage from an intern ational application after 
compliance with 35 U.S.C. 37 1 (§ 1.9(a)(3)), or inter -
national applications file d under the Patent Coopera -
tion 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 natio nal 
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 co mpliance with paragraph (a) 
of this section. 
(d) The applicant in a national security classi -
fied patent application must obtain a secrecy order pursuant to § 5.2(a). If a national security classified 
patent application is file d without a notification pur-
suant to § 5.2(a), the Office will set a ti me period 
withi
n which either the ap plication must be declassi -
fied, or the application must be placed under a secrecy order pursua nt to
 § 5.2(a), or the applicant must sub -
mit evidence of a good faith ef fort to obtain 
a secrecy 
order pursuant to § 5.2(a) from the relev a
nt depart -
ment or agency in order to prevent abandonment of the application. If evidence of a good faith effort to 
obtain a secrecy order pursuant to § 5 .2(a) fro
m the 
relevant department or ag ency is submitted by the 
applicant within the time peri od set by the Office, but 
the application has not been declassified or placed under a secrecy order pursuant to § 5.2(a), the Office 
IP/N/1/USA/D/2 
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Page 207§ 5.2 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-206will 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 preven t a
bandonment of the appli -
cation. 
(e) An application will no t be published under 
§ 1.211 of this chapter or allowed under § 1.311 of 
this chapter if publication or disclosure of the applica -
tion woul d be detrimental t
o 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 publish e
d under § 1.211 of this chapter or allowed 
under § 1.311 of this chap ter 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 inven tions in which a U.S. Gov -
ernment 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, effec -
tive 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 detri -
mental to the national security, an  
order that the 
invention be kept secret will be issued by the Com -
missioner for Patents.
(b) Any request for compensation as provided 
in 35  U.S.C. 183 must not be  mad
e to the Patent and 
Trademark Office, but directly to the department or 
agency which caused the se crecy order to be issued.
(c) An application disclosing any significant 
part of the subject matter  of an application under a 
secrecy orde r pu
rsuant to paragraph (a) of this section 
also falls within the scope of s u
ch secrecy order. Any such application that is pending before the Office 
must be promptly brought to the attention of Licens -
ing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this sec -
tion. Any subsequently file d application containing 
any sign ific
ant part of the subject matter of an appli -
cation under a sec
recy order pursuant to paragraph (a) 
of this section must either  be hand-carried to Licens-
ing 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 th e point indicated in this 
section:
(a) Natio na
l applications under secrecy order 
which come to a final rejection must be appealed or 
otherwise prosecuted to av oid abandonmen t. Appeals 
in such cases must be completed by the applicant but 
unless otherwise specifically ordered by the Commis -
sioner  for P
atents will not be set for hearing until the 
secrecy order is removed.
(b) An interference will not be declared involv -
ing a national application under secrecy order. An 
applicant whose application is under secrecy order 
may suggest an inte rference (§ 
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 applic ation 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 noti fied. This notice 
(which 
is not a notice of allowance under §  1.311 of 
this chapter) does not requir e 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 remo ved the Patent and Trade -
mark Office  will issue a 
notice of allowance under 
IP/N/1/USA/D/2 
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Page 208PATENT RULES § 5.6
R-207 Rev. 8, July 2010§ 1.311 of this chapter, or take such other action as 
may then be warranted.
(d) International applic ations under secrecy 
order will not be mailed, delivered, or otherwise 
transmitted to the interna tional authorities or the 
applicant. Int
ernat ional ap plica
tions under secrecy 
order will be processed up to the point where, if it were not for the secrecy order, record and search cop -
ies would be transmitted to the international authori -
ties 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
 
principal affected thereby. Such petition may be in let -
ter form, and it must  be in duplicate.
(b) The petition must r ecite any and all facts 
that 
purport to render the or der ineffectual or futile if 
this is the basis of the petition. When prior publica -
tions or patents are alleged the petition must give 
complete data as to such pu blications or patents and 
should be  accompanied 
by copies thereof.
(c) The petition must identify any contract 
between the G
overnment and any of the principals 
under which the subject matter of the application or 
any significant part thereof was developed or to w
hich 
the subject matter is otherw ise 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 can -
not be taken until after a petition for rescission of the 
secrecy order ha s been
 made and denied. Appeal must 
be taken with in 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. 1
82, 
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 pu rpose for the proposed dis -
closure. Where an y prop
osed disclose is known to be 
cleared by a defense agency to receive classifie d
 
information, adequate explanation of such clearance 
should be made in the pe tition 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 bein g lodged i
n the foreign 
patent office. The petition sh ould 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 c
ommon 
subject matter in other ap plications under secrecy 
order so long as the subject matter is not taken out of context in a manner disclosing material beyond the 
modification granted in the first application.
(e) Organizations requiring consent for disclo-
sure of applications under secrecy order to persons or organizatio
ns in connection with repeated routine 
operation may petition for such  consent in the form of 
a general permit. T
o be su ccessful 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]
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Page 209§ 5.7 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-208§  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 interna -
tional application.
(a) A license from the Commissioner for Pat -
ents under 35 U.S.C. 184 is required before filing any applicati on for patent in cluding any modifications, 
amendments, or supplements thereto or divisions thereof or for the registratio n of a utility model, indus -
trial design, or mod
el, in a foreign patent office or any 
foreign patent agency or any international agency 
other than the United States Receiving Office, if the inventi
on 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 applic ation is to be filed, or
(2) No application on the inventio
n has been 
filed in the United States.
(b) The license from the Commissioner for Pat -
ents referred to in paragraph (a) would also authorize 
the export of technical data  abroad for purposes relat -
ing to the preparation, f iling or possible filing and 
prosecution  of a foreig
n pa tent application without 
separately complying with the regulations contained 
in 22 CFR parts 121 through  13
0 (International Traf -
fic in A r
ms Regulations of the Department of State), 
15 CFR parts 730-774 (Regulations of the Bureau of Industry and Security, Dep a
rtment 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 fo rm, are being exported for 
purposes related to the prep aration, filing or p o
ssible 
filing and prosecution of a foreign patent application, 
without the license from the Commissioner for Pat -
ents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the 
export regulations containe
d in 22 CFR parts 120 
through 130 (International Traffic in Arms Regula-tions 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 At omic Energy Activities Reg -
ulations of the Department of Energy) must be com -
plied 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 pursuan t to
 paragraph (a) of this 
section i s required:
(1) If the invention wa s not made in the 
United States, or
(2) If the corresponding United States appli -
cation is not subject to a secrecy order u nder 
§ 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, amend -
ments and supplements containi ng ad
ditional subject 
matter to, or div isions 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 St ate
s appli -
cation was not required to  be made available fo
r 
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 S t
ates application 
to be or have been available for inspection under 
35 U.S.C. 181.
(f) A license pursuant to paragraph (a) of this 
section can be revoked at any time upon written noti -
fication by the Patent and Trademark Office. An 
authorization to file a foreign patent application 
resulting from the passage of six months from the date 
IP/N/1/USA/D/2 
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Page 210PATENT RULES § 5.15
R-209 Rev. 8, July 2010of 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 Fe b. 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 inven -
tions made in the United Stat es will be considered to 
include a petition for license under 35 U.S.C. 184 for 
the subject matter of the ap plication. The filing receipt 
will indicate if a license is granted. If the initial aut
o-
matic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.
(b) A petition for license must include th
e 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 lic ense; no corresponding 
application.
If no corresponding national or international appli -
cation has been filed in the United States, the petition 
for license unde r § 5.12(b) must also be accompanied 
by a legible copy of the  ma
terial 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 
applicati on on file, a petition for license under 
§ 5.12(b) must also identify this application by appli -
cation number, filing date, invent or
, and title, but a copy of the material up on 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 applicatio n, in which event the peti -
tion should so state and the identification of each United States application sh ould be in separ a
te para -
graphs.
(c) Where the application to be filed or 
exported abroad contains ma tter not disclo sed in the 
United S
tates application or applications, including 
the case where the combining of two or more  Unite
d 
States applications introduces subject matter not dis -
closed in any of them, a copy  of the application as it is 
to be filed in the foreig n country or international 
application which is to be  transmitted to a foreign 
international or national agency for filing in the 
Receiving Office, must be fu rnished with t
he petition. 
If however, all new matter in  the foreign or interna -
tional application to be filed is readily identifiable, the 
new matter may be subm itted 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, effec -
tive Dec. 1, 1997]
§  5.15 Scope of license.
(a) Applications or other materials reviewed 
pursuant to §§ 5.12 through 5.14, wh ich
 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 supplement s containing additional 
su
bject matter to, or divisions of, a foreign patent 
application, if such change s to the application do not 
alter the general nature of the invention in a manner 
which would require the Unite d 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 foreig 
n country 
or the transmitting of an in ternational application to 
any foreign patent agency or international patent 
agency when the subject matter of the foreign or inter -
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Rev. 8, July 2010 R-210national application corresponds to that of the domes -
tic application. This lic ense includes authority:
(1) To export and file all duplicate and for -
mal application papers in foreign countries or with 
international agencies;
(2) To make amendments, modifications, and 
suppleme
nts, including divi sions, changes or support -
ing matter consisting of t
he illustration, exemplifica -
tion, comparison, or explanation of subject matter 
disclosed in the application; and
(3) T
o take any action in the prosecution of 
the foreign or international application provided that 
the adding of subject matter or taking of an y 
action 
under paragraphs (a)(1) or (2 ) of this section does not 
chan
ge the general nature of the invention disclosed 
in the applicati
on in a manner which would require 
such application to have been made available for inspection under 35  U.S.C. 181 by including technical 
data pertaining to:
(i) Defense services or articles designated 
in the Uni ted States Munitio ns List applicable at the 
time of foreign fi
ling, th e unlicensed exportation 
of which is prohibited pursuant to the Arms Export 
Control Act, as a m
ended, and 22 CFR parts 121 
through 130; or
(ii) Restricted Data, sensitive nuclear tech -
nology or technology useful  in the 
production or utili -
zation of special nuclear material or atomic energy, 
dissemination of which is subject to restrictions of the Atom ic En
ergy Act of 1954, as amended, and the 
Nuclear 
Non-Proliferation Act of 1978, as imple -
mented by the regulations for Uncl assified Activitie
s 
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 paragr aph. Grant of this license 
authorizes the export and filin g of an application in a 
foreign country or the tran smitting of an international 
applicati
on to any foreign patent agency or interna -
tional patent agency. Furthe r, this license includes 
authority to export and 
file all duplicate and formal 
papers in foreign countries or with foreign and inter -
national patent agen
cies and to make amendments, 
modifications, and supplements to, file divisio
ns of, 
and take any action in the prosecution of the fo reign
 
or international applicatio n, provided subject matter additional to that covere d 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, accompani ed by the required fee 
(§ 1.17(g) of this chapter), ma y 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 thi
s section. No su ch 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 forei gn application or transmit the 
international application, no license is required to file 
papers in connection with the prosecution of the 
for-
eign or international applic ation not involving the dis -
closure of additional subject matter.
(e) Any paper filed abroad  or transmitted to an 
international patent agency  following the filing of a 
foreign or intern
ational application which changes the 
general nature of the subj ect matter disclosed at the 
time of filing in a manner which would require such 
application 
to have been ma de available for inspection 
under 35  U.S.C. 18 1
 or which in volves the disclosure 
of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be sep arately licensed in the same 
manner as a foreign or inte rnational application. Fur -
ther, if no license has been granted unde r § 5.
12(a) on 
filing the correspon ding United States application, 
any paper filed abroad or w ith an international patent 
agency which involves the disclosure of additional 
subject matter must be licensed in the same ma nner 
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 di viding the disclosures, as 
desired, provided:
(1) Subject matter whic h changes the general 
nature of the
 subject matter disclosed at the time of 
filing or which involves subject matter listed in para -
graphs (a)(3) (i) or (ii) of this secti on is n
ot introduced 
and,
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Page 212PATENT RULES § 5.25
R-211 Rev. 8, July 2010(2) In the case where at least one of the 
licenses was obtained under § 5.12(b), additional sub -
ject matter is not introduced.
(g) A license does not appl y to acts done before 
the license was granted. See § 5.25 for petitions for 
retroactive licenses.
[49 FR 13462, Apr. 4, 1984; pa ras. (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, effec -
tive 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 te chnical data relating to 
arms, ammuni tion, and implements of war generally 
is subject to the Internatio nal Traf fic
 in Arms Regula -
tions of the Department of State (22  CFR parts 120 
through 130); the articles designated as arms, ammu -
nitions, and implements of war are enumerated in the 
U.S. Munitions List (22  CFR part 121) . Howev
er, if a 
patent applicant complies w ith regulations issued by 
the Commissioner for Patents under 35  U.S.C. 184, 
no separate approval from the D epa
rtment of State is 
required unless the applican t seeks  to export technic
al 
data exceeding that used to support a patent applica -
tion in a foreign countr y. This exemption from 
Department of State regulations is ap
plicable regard -
less of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 an 
d 
5.12 (22  CFR part 125).
(b) When a patent application containing sub -
ject matter on the Munitions List (22 CFR part 121) is 
subject t o 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 no t 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 an y case to file a patent 
application or part thereof in a foreign country if the 
foreign filing is in accordan ce with the regulations (§§ 
5.11 th
rough 5.25) of the U.S. Patent and Trademark 
Office.
(b) An export license is not required for data 
contained in a patent app lication prepared wholly 
from fore ign-origin technic
al data where such appli -
cation is being sent to the foreign inventor to be exe -
cuted and returned to the United States for s u
bsequent 
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 sensi -
tive nuclear technology.
Under regulations (10  CFR 810.7) established by 
the United States Department of Energy, an applica -
tion filed in accordance with the regulations (§§  5.11
through 5.25) of the Patent and Trademark Of fice and
 
eligible for foreign filing under 35 U.S.C. 18
4, is con -
sidered to
 be information av ailable to the public in 
published form and a genera lly authorized activity for 
the pu rpo
ses 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,
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Page 213§ 5.31 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-212(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 for-
eign filing, and
(iii)
An explanation of why the material 
was filed abroad through e rror and without deceptive 
intent without the required license under § 5.11 first 
having been obtained, an d
(4)
The required fee (§ 1.17(g) of this chap -
ter).
(b)
The explanation in paragraph (a) of this sec -
tion 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 per -
sons havin g
 personal knowledge of the acts regarding 
filing in a foreign country and should be accompanied 
by copies of any necessary supporting documents such as lett ers 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 l ess than thirty days shall 
be set, during which th e 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]
[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]
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Page 214PATENT RULES RULES INDEX
R-213 Rev. 8, July 2010Index I – RULES RELATING TO PATENTS
A
Abandoned applications:
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.)
Abstract of the disclosure  . . . . . . . . . . . 1.72, 1.7 7, 
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 T rademark Office . . . . . . . 1.1
Board of Patent Appeals and Interferences . 1.1(a)(1),
41.10
Deposit account replen
ishment  . . . . . . . . . 1.25(c)(3),
1.25(c)(4)
Director of the United States Patent and  
Trademark Office  . . . . . . . . . . . . . . . . . . . . . . 1.1(a)
FOIA Officer  . . . . . . . . . . . . . . . . 102.1(b), 102.4(a)
Generally . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1(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 Solicitor  . . . . . . . . . . . . . . . . . 1.1(a)(3),
Mail Stops
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 CPA  . . . . . . . . . . . . . . . . . . . . . 1.53(d)(9)
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 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 fee payments  . . . . . . . . . . . . . . 1.1(d)(1)
Patent correspondence . . . . . . . . . . . . . . . . . . 1.1(a)(1)
Privacy Officer . . . . . . . . . . . . . . 102.23(a), 102.24(a)
Trademark correspondence  . . . . . . . . . . . . . . . . 2.190
Adjustment of patent term. (see Patent term 
adjustment due to examination delay.) Admin
istrator, executor, or other legal  
representative may make  
application and receive patent . . . . . . . . 1.42, 1.43, 1.64
Admission to practice.  (See Attorneys and 
agents.)
Affidavit (See also Oath in patent application):
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.)
Allowance and issue of patent:
Amendment after allowance . . . . . . . . . . . . . . . . 1.312
Application abandon ed 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:
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
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Rev. 8, July 2010 R-214Preliminary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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 specifica -
tion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.121
To reissues. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.173
To save from abandonment  . . . . . . . . . . . . . . . . 1.135
Amino acid sequences. (See Nucleotide and/or 
amino acid sequences.)
Appeals:
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
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)
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 Interfer -
ences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.301
Notice and reasons of appeal  . . . . . . . . . . . . . 1.302
Time for filing notice of appeal  . . . . . . 1.302, 1.304
Applicant for patent:
Actual inventor or inventors to make  
application for patent  . . . . . . . . . . . . . . . . 1.41, 1.45
Assignee  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.47(b)
Change of (see Correction of inventorship)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, Reissu es, Specification):
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 submissi ons (see Electronic 
documents)
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
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
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Page 216PATENT RULES RULES INDEX
R-215 Rev. 8, July 2010Incomplete 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 excep -
tions . . . . . . . . . . . . . . . . . . . . . . . . . 1.41, 1.46, 1.47
Naming of inventors:
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
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 permit -
ted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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:
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 appli cation for reissue of 
patent  . . . . 
. . . . . . . . . . . . .  . 
. . . . . . . . 1.171, 1.172
Partial assignee(s) . . . . . . . . . . . 1.46, 3.71, 3.73, 3.81
Assignments and recording:
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 pa yment 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
Atomic energy applications reported to Depart -
ment of Energy  . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.14
Attorneys and agents:
Acting in representative capacity . . . . . . . . 1.33, 1.34
Annual practitioner maintenance fee:
Registered attorney or agent  . . . . 1.21(a)(7), 11.8(d)
Individual granted limited recognition  . . 1.21(a)(8)
Assignment will not op erate 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
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Page 217RULES INDEX MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-216Authorization of ag ents. (See Attorneys  
and agents.)
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.)
Biological material. (See Deposit of biological 
material.)
Board of Patent Appeals and Interferences.  
(See Appeal to Board of Patent Appeals and  
Interferences.)
Briefs:
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
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)
Chemical and mathemati cal 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 Examin ation of applications):
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  . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.104Required  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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.)
Common ownership, statement by assignee may 
be required . . . . . . . . .
 . . . . . . . . . . . . . . . . . . . . . 1.78(c)
Compact disc submiss
ions. (See Electronic docu-
ments.)
Complaints against examiners, how presented . . . . . . . 1.3
Complaints regarding invention promoters (See 
Invention promoters.)
Composition of matter, specimens of ingredi e
nts 
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
Continued prosecution application . . . . . . . . . . . . 1.53(d)
Suspension of action in  . . . . . . . . . . . . . . . . . . . 1.103
Continuing application for invention disclosed 
and claimed in prior application  . . . . . . . . . . 1.53, 1.63
Control number, display of . . . . . . . .  .
 . . . . . . . . . . . 1.419
Copies 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:
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)
In a provisional application  . . . . . . . . . . . . . . . . . 1.48
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
In an issued patent   . . . . . . . . . . .  . 
. . . . . . . . . . 1.324
In other than a reissue application . . . . . . . . . . . . 1.48
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Page 218PATENT RULES RULES INDEX
R-217 Rev. 8, July 2010Inconsistencies 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:
Address:
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 T rademark Office  . . . . . 1.1
Business with the Office to be transacted by . . . . . 1.2
Discourt eo
us 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 authori -
zation is filed . . 
. . . . . . . . . . . . . . . . . . . . . . . . . 1.33
Court of Appeals for the Federal Circuit, appeal 
to. (See Appeal to Court of Appeals for the Fed -
eral Circuit.)
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)
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 o
r insanity of inventor . . . . . . . . . . . . . . . 1.42, 1.43
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)Declaration (See also Oath in pat ent application):
Foreign language  . . . . . . . . . . . .  .
 . . . . . . . . . . . . 1.69
In lieu of oath  . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.68
In patent application . . . . . . . . . . . . . . . . . . . . . . . 1.68
Deferral of examination . . . . . . . . . . . . . . . . . . . . . . 1.103
Definitions:
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)
Deposit of biological material:
Acceptable depository  . . . . . . . . . . . . . . . . . . . . 1.803
Biological material . . . . . . . . . . . . . . . . . . . . . . . 1.801
Examination procedures . . . . . . . . . . . . . . . . . . . 1.809
Furnishing of samples . . . . . . . . . . . . . . . . . . . . . 1.808
Need or opportunity to make a deposit . . . . . . . . 1.802
Replacement or supplemental deposit  . . . . . . . . 1.805
Term of deposit . . . . . . . . . . . . . . . . . . . . . . . . . . 1.806
Time of making original deposit . . . . . . . . . . . . . 1.804
Viability of deposit . . . . . . . . . . . . . . . . . . . . . . . 1.807
Deposit of computer program listings  . . . . . 1.52(e), 1.96
Depositions (See also Testimony in contested 
cases  before the Board):
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.)
Design Patent Applications:
Arrangement of a pplication elements . . . . . . . . . 1.154
Claim  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.153
Drawing  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.152
Expedited examination  . . . . . . . . . . . . . . . . . . . 1.155
Filing fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16(b)
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Rev. 8, July 2010 R-218Issue 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):      
Address of . . . . . . . . . . . . . . . . . . . . . . . . .
 . . . . . . 1.1
Availability of decisions by  . . . . . . . . . . . . . . . . 1.14
Initiates ex parte  reexamination . . . . . . . . . . . . . 1.520
Disclaimer, statutory:
Fee . . . . . . . . . . . . . . . . .  . 
. . . . . . . . . . . . . . . . 1.20(d)
Requirements of . . . . . . . . . . . . . . . . . . . . . . . . . 1.321
Terminal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.321
Disclosure, amendments to add new matter not 
permitted  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .  . 1.12
1
Discovery in contested cases before the Board . . .41.150-
41.158
Division. (See Restriction of application.)
Document supply fees . . . . . . . . . . . .
 . . . . . . . . . . . . 1.19
Drawing:
Amendment of . . . . . . . . . . . . . . . . . . . . . . . . . . 1.121
Arrangement of views  . . . . . . . . . . . . . . . . . . . 1.84(i)
Arrows . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(r)
Character of lines . . . . . . . . . . . . . . . . . . . . . . . 1.84(l)
Color  . . . . . . . . . . .       1.6(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 specifica -
tion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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 under-
standing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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
E
Election of species  . . . . . . . . . . . . . . . . . . . . . . . . . . 1.146
Electronic documents:
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
Employee testimony. (See Testimony by Office 
employees.)
Establishing small entity status  . . . . . . . . . . . . 1.27, 1.28
Evidence in contested cases before the Board
 . . . . .
 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.154
Ex parte reexamina tion. (See Reexamination.)
Examination of applications:
Advancement of  examination . . . . . . . . . . . . . . . 1.102
As to form . . . . . . . . . . 
. . . . . . . . . . . . . . . . . . . . 1.104
Citation of references  . . . . . . . . . . . . . . . . . . . . . 1.104
Completeness of examiner’s action  . . . . . . . . . . 1.104
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
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Rejection of claims  . . . . . . . . . . . . . . . . . . . . . . 1.104
Request for continued examination . . . . . . . . . . 1.114
Requirements for information by examiner  . . . 1.105
Suspension of . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.103
Examiners:
Answers on appeal . . . . . . . . . . . . . . . . . . . . . . . 41.39
Complaints against  . . . . . . . . . . . . . . . . . . . . . . . . 1.3
Interviews with  . . . . . . . . . . . . . . . . . . . . . . . . . 1.133
Executors . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.42
Exhibits. (See Models and exhibits.)
Export of technical data . . . . . . . . . . . . . . . . . . . 5.19, 5.20
Express abandonment  . . . . . . . . . . . . . . . . . . . . . . . 1.138
“Express Mail”  . . . . . . . . . . . . . . . . . . . . . . . . . . 1.6, 1.10
Date of receipt of . . . . . . . . . . . . . . . . . . . . . . . . . . 1.6
Petition in regard to . . . . . . . . . . . . . . . . . . . . . . . 1.10
Expungement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.59
Extension of patent term (See also Patent term 
adjustment): 
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
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 requiremen ts for application . . . . . 1.730
Termination of interim extension granted 
under 35 U.S.C. 156(d)(5) . . . . . . . . . . . . . . 1.791
Withdrawal of application  . . 
. . . . . . . . . . . . . 1.770Extension of time  . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.136
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:
Credit card  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.23
Deposit accounts . . . . . . . . . . . . . . . . . . . . . . . . . . 1.25
Document supply fees . . . . . . . . . . . . . . . . . . . . . 1.19
Extension of time  . . . . . . . . . . . . . . . . . . . . . . . . . 1.17
Fee on appeal to the C ourt of Ap peals 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
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, an d examination fees . . . . . . . . . . . . . 1.16
Filing in Post Office . . . . . 
. . . . . . . . . . . . . . . . . . . . . 1.10
Filing of interference settlement agreements . . . . . 41.205
Final rejection:
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
Foreign country:
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
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Rev. 8, July 2010 R-220Mailing 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
Busines s
 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
Requirements for making requests  . . . . . . . . . . 102.4
G
Gazette. (See Official Gazette .)
General authorization to charge deposit account 1.25, 1.136
General information and correspondence  . . . . . . . 1.1-1.8
Government acquisition of foreign patent rights . Part 501
Government employee invention  . . . . . . . . . . . . Part 501
Government interest in patent,   recording of  . 3.11, 3.31, 
3.41, 3.58
Governmental registers  . . . . . . . . . . . . . . . . . . . . . . . 3.58
Guardian of insane person may apply for patent . . . . 1.43
H
Hearings:
Before the Board of Pa tents Appeals and Inter -
ferences  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.4
7
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:
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  . . . . . . . . . . . 1.97Information, Public . . . . . . . . . . . . . . . . . . . . . . . . Part 102
Insane inventor, application by guardian of . . . . . . . . 1.43
Inter partes reexamination. (See Reexamination.)
Interferences:
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
Jurisdict
ion 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.)
International Preliminary Examining Authority . . . . 1.416
Interview summ ar
y. . . . . . . . . . . . . . . . . . . . . . . . . . 1.133
Interviews with examiner . . . . . . . . . . . . . . . 1.133, 1.560
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R-221 Rev. 8, July 2010Invention promoters:
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
Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2
Reply to complaint . . . . . . . . . . . . . . . . . . . . . . . . . 4.4
Inventor (See also Applicant for patent,  
Application for patent):
Death or insanity of inventor . . . . . . . . . . . . 1.42, 1.43
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
L
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.)
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 cl assified in a subclass,  
cost of . . . . . . . . . . . . . . . .
 . . . . . . . . . . . . . . . . . 1.19(d)
Local delivery box rental . . . . . . . . . . . . . . . . . . . . 1.21(d)
Lost files  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.251
M
Mail Stops    
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 part e Reexam  . . . . . . . . . . . . . 1.1(c)(1)
Mail Stop Inte
r 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, 1.43 4(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 corresp ondence (applicant’s) . . . . . 1.363
Review of decision refusing to  accep
t . . . . . . . . 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.)
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:
Copies of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.95
Disposal without notice unless return  
arrangements made . . . . . . . . . . . . . . . . . . . . . . . 1.94
If on examination m odel found necess ary 
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.)
Motions in interferences . . . . . . . . . . . . . . . . . . . . . 41.121
To take testimony in foreign country  . . . . . . 41.156(b)
N
Name of Applicant or Inventor (see Applicant  
for patent, Application for patent, Inventor)
New matter inadmissible in application . . . . . . . . . . 1.121
New matter inadmissible in reissue  . . . . . . . . . . . . . 1.173
Non-English language specification fee . . . . . . . . . 1.17(i)
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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)
Nucleotide and/or amino acid sequences:
Amendments to  . . . . . . . . . . . . . . . . . . . . . . . . . 1.825
Disclosure in patent applications . . . . . . . . . . . . 1.821
Form and format for co mputer 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 applicatio n. (See also Declaration):
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 . . . . . . . . 1.175Oath or declaration
Plant patent application . . . . . . . . . . . . . . . . . . . . 1.162
When international application enters  
national stage  . . . . . . . . . . . . . . . . . . . . . . . . . . 1.497
Object of the invention . . . . . . . . . . . . . . . . . . . . . . . . 1.73
Office action time for reply  . . . . . . . . . . . . . . . . . . . 1.134
Office fees. (See Fees and payment of money.)
Official action, based exclusively upon the  
written record  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.2
Official business, should be  transacted in writing  . . . . 1.2
Official Gazette :
Amendments to rules published in . . . . . . . . . .  .1.
351
Announces request for reexamination  . 1.11(c), 1.904
Notice of filing application to  
nonsigning inventor  . . . . . . . . . . . . . . . . . . . . . . 1.47
Notice of issuance of ex pa rte  
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.)
Patent application publication. (See Published 
application.)
Patent attorneys and agents. (See Attorneys and 
agents.)
Patent Cooperation Treaty:
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 intern ational 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
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R-223 Rev. 8, July 2010Examination at national stage  . . . . . . . . . . . . . . 1.496
Fees:
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 Filin g 
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
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:
Commencement  . . . . . . . . . . . . . . . . . . . . . . . 1.491
Entry . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.491, 1.495
Examination . . . . . . . . . . . . . . . . . . . . . . . . . . 1.496
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
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, 1.489Patent 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
Patent term extension due to examination delay   . .1.701
Patent term extension due to regulatory review 
period . (See Extension of patent term due to 
regulato ry
 review period (35 U.S.C. 156).)
Patents (See also Allowance and issue of patent):
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:
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)
On refusal of examiner  to admit amendment . . .1.127
Quest i
ons not specifically provided for  .
 . . . . . . 1.182
Suspension of rules . . . . . . . . . . . . . . . . . . . . . . . 1.183
Petition to accept an  
unintentionally  delayed claim for domes -
tic   
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
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Rev. 8, July 2010 R-224Photographs . . . . . . . . . . . . . . . . . . . . . . . . 1.84(b), 1.152
Plant patent applications:
Applicant  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162
Claim  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.164
Declaration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162
Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162
Drawings  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.165
Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.167
Fee for copies . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.19
Filing fee  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16(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.)
Power to inspect   . . . . . . . . . . . . . . . . . . . . . . . . .  1.1
4(c)
Preliminary am endments  . . . . . . . . . . . . . . . . . . . . 1.115
Preliminary Examining Authority, Internatio nal. .
 . 1.416
Preserved in confidence, applications . . . . . . . . 1.12, 1.14
Exceptions (status, access or copies available)  . . 1.14
Prior art citation in patented files  . . . . . . . . . . . . . . 1.501
Prior art statement:
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: 
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
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, unint entionally delayed   . . 1.55
Priority document    . . . . . . . . . . . . . . . . . . . . . 1.
55
Time for claiming . . . . . . . . . . . . . . . . . . . . . . . 1.55Privacy 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
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:
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
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
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)
Publication of application    . . . . . . . . . . . . . . . . . . . 1.211
Early publication    . . . . . . . . . . . . . . . . . . . . . . . 1.219
Express abandonment to avoid publication   . . .1.138
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R-225 Rev. 8, July 2010Fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 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
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.)
Records of the Patent and Trademark Office  . . 1.11-1.15
Reexamination:
Announceme nt
 in O.G. . . . . . . . . . . . . . . . . . . 1.11(c)
Correction of inventorship  . . . . . . . . . . . . . . . . 1.530
Correspondence address  . . . . . . . . . . . . . . . . . 1.33(c)
Ex parte  proceedings:
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 
reexam ination, 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 publica tion of certificate  
concludes . . . . . . . . . . . . . . . . . . .  .
 . . . . . . . 1.570
Order for reexamin ation 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 certificat e 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 elig
ible 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 co ncurrent interference . . .1.993
Suspension due to litigation  . . . . . . . . . . . . . . 1.987
Information Disclosure Statements . . . . . . 1.98, 1.555
Open to public  . . . . . . . . . . . . . . . . . . . . . . . . . 1.11(d)
Reconsideration be fore 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  . . . . . . . . . . . . . . . . . 1.26
Register of Government interest in patents  . . . . . . . . 3.58
Rehearing:
On appeal to Board . . . . . . . . . . . . . . . . . . . . . . . 41.52
Request for, time for appeal after action on  . . . . 1.304
Reissues:
Amendments . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.173
Applicants, assignees  . . . . . . . . . . . . . . . . . . . . . 1.172
Application for reissue  . . . . . . . . . . . . . . . . . . . . 1.171
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Rev. 8, July 2010 R-226Application 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 . . . . . . . . . 1.171-1.17 8
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
Rejection:
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 ad missions 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:
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
Request for reconsideration . . . . . . . . . . . . . . . . . . . 1.112
Request for ex parte  reex amination . . . . . . . . . . . . . 1.510
Request for inter partes reexamination . . . . . 1.913-1.927Requirement 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
Retention fee . . . . . . . . . . . . . . . . . . . . . . . 1.21(l), 1.53(f)
Return of co rrespondence . . . . . . . . . . . . . . . . . . . . . 1.5(a)
Revival of abandoned applicatio n, termi
nated  
or limited reexamination prosecution, or  
lapsed patent   . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.137
Unavoidable abandonment fee  . . . . . . . . . . . . . 1.17(l)
Unintentional abandonment fee  . . . . . . . . . . . 1.17(m)
Revocation of power of attorney or  
authorization of agent  . . . . . . . . . . . . . . . . . . . . . 1.36(a)
Rules of Practice:
Amendments to rules will be published  . . . . . . . 1.351
S
Saturday, when last day falls on . . . . . . . . . . . . . . . . . . 1.7
Secrecy order  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.1-5.5
Sequences:
Amendments to sequence listing and computer 
readable copy  . . . . . . . . . . . . . . . . . . . . . . . . . . 1.825
Disclosure requirements . . . . . . . . . . . . . 1.821, 1.823
Sequence data, symbols and format  . . . . . . . . . . 1.822
Submissions in computer readable form . . . . . . . 1.824
Submissions on compact disc in lieu of paper  . . 1.52, 
1.821 , 1.823
Serial number of application  . . . . . . . . . . . . . . . . . . . . 1.5
Service of notices:
In interference cases  . . . . . . . . . .  .
 . . . . . . . . . . 41.106
Of appeal to the U.S. Co urt 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:
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 express abandonment . . . . . . . . . . . . . . . . . . . 1.138
To oath  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.63
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R-227 Rev. 8, July 2010To reissue oath or declaration  . . . . . . . . . . . . . . 1.172
When copy is acceptable . . . . . . . . . . . . . . . . . . . . 1.4
Small business concern:
Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.27
Small entity status  . . . . . . . . . . . . . . . . . . . . . . . . 1.27
Small entity:
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
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):
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 f i
gures to drawings  . . . . . . . . . . . . 1.74
Must set forth the precise invention  . . . . . . . . . . 1.71
Object of the invention  . . . . . . . . . . . . . . . . . . . . 1.73
Order of arrangem ent in framing . . . . . . . . . . . . . 1.77
Pape r
, 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.)
Specimens of composition of matter to be  
furnished when required  . . . . . . . . . . . . . . . . . . . . 1.93
Specimens of plants . . . . . . . . . . . . . . . . . . . . . . . . . 1.166
Statement of status as small entity . . . . . . . . . . . . . . . 1.27Status 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
Submission of international publication or English 
translati on 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.)
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 
sequen ce 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
 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.156-41.158
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 benef it 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
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Unavoidable abandonment  . . . . . . . . . . . . . . . . . . . 1.137
Unintentional abandonment . . . . . . . . . . . . . . . . . . . 1.137
United States as
Designated Office  . . . . . . . . . . . . . . . . . . . . . . . 1.414
Elected Office  . . . . . . . . . . . . . . . . . . . . . . . . . . 1.414
International Preliminary Examining  
Authority  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.416
International Searching Authority . . . . . . . . . . . 1.413
Receiving Office  . . . . . . . . . . . . . . . . . . . . . . . . 1.412Unlocatable 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
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Page 230PATENT RULES Part 10
R-229 Rev. 8, July 2010PRACTICE BEFORE THE P ATENT AND 
TRADEMARK OFFICE
PART 10 — REPRESENTATION OF 
OTHERS BEFORE THE P ATENT AND 
TRADEMARK OFFICE
Sec. 
10.1 Definitions.  
10.2 [Reserved]
10.3 [Reserved]10.4 [Reserved]
INDIVIDUALS ENTITLED TO 
PRACTICE BEFORE THE PATENT 
AND TRADEMARK OFFICE  
10.5 [Reserved]10.6 [Reserved]10.7 [Reserved]
10.8 [Reserved]
10.9  [Reserved] 
10.10 [Reserved]  
10.11 Removing names from the register.  10.12 - 10.19  [Reserved] 
PATENT AND TRADEMARK OFFICE CODE 
OF PROFESSIONAL RESPONSIBILITY  
10.20 Canons and Disciplinary Rules.  
10.21 Canon 1. 
10.22 Maintaining integrity and competence of the legal 
professio n. 
10.23 Misconduct. 10.24 Disclosure of information to authorities. 
10.25 - 1 0
.29 [Reserved] 
10.30 Canon 2.  
10.31 Communications concerning a practitioner's 
services .  
10.32 Advertising.  
10.33 Direct contact with prospective clients.  10.34 Comm u
nication of fields of practice.  
10.35 Firm names and letterheads.  
10.36 Fees for legal services.  
10.37 Division of fees among practitioners.  
10.38 Agreements restric ting the practice of a 
practitioner.  
10.39 Acceptance of employment.  10.40 Withdrawal from employment.  
10.41
 - 10.45  [Reserved]  
10.46 Canon 3.  10.47 Aiding unauthorized practice of law.  10.48 Sharing legal fees.  10.49 Forming a partnership with a non-practitioner.  
10.50 - 10.55  [Reserved]  
10.56 Canon 4.  10.57 Preservation of confidences  and se crets of a client.  
10.58 - 10.60  [Reserved]  10.61  Canon 5.  10.6
2  Refusing employment when the interest of the 
practitioner may impair the practitioner's 
independent professional judgm
ent.  
10.63 Withdrawal when th e pra ctitioner becomes a 
witness.  
10.64 Avoiding acquisition of interest i n l
itigation or  
proceeding before the Office.  
10.65 Limiting business relations with a client.  
10.66 Refusing to accept or continue employment if the 
interests of another client may impair the 
independent professio n
al judgment of the 
practitioner.  
10.67 Settling similar claims of clients.  
10.68 Avoiding influence by others than the client.  10.69 - 10.75 [Reserved]  10.76 Canon 6.  10.77 Failing to act competently.  10.78 Limiting liability to client.  10.79 - 10.82 [Reserved]  10.83 Canon 7.  10.84 Representing a client zealously.  10.85 Representing a client within the bounds of the law.  10.86 [Reserved]  10.87 Communicating with one of adverse interest.  10.88 Threatening criminal prosecution.  
10.89 Conduct in proceedings.  
10.90 - 10.91 [Reserved]  10.92 Contact with witnesses.  10.93  Contact wi th officials.  
10.94 - 10.99 [Reserved]  10.100 Canon 8.  10.10 1
Action as a public official.  
10.102 Statements concerning officials .  
10.103 Practitioner candidate  for judicial office.  
10.104 - 10.109 [Reserved]  10.11
0 Canon 9.  
10.111 Av oidi
ng even the app earanc e of impropriety.  
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Page 231§ 10.1 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-23010.112 Preserving identity of funds and property of client.   
10.113 - 10.170 [Reserved]     
 
§  10.1 Definitions.
This part governs solely  the practice of patent, 
trademark, and other law be fore the Patent and Trade -
mark Office. Nothing in this part shall be construed to 
pree
mpt the authority of each State to regulate the 
practice of law, except to the extent necessary for the 
Patent and Trademark Of fice 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 subchap -
ter), or statut ory
 declaration under 28 U.S.C. 1746.
(b) Application  includes a n application for a 
design, plant, or utility pate nt, an application to reis -
sue any patent, and an application to register a trade-
mark.
(c) Attorney  or lawyer  means a n
 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 Direct
or of Enrollment 
and Discipline.
(h) Disciplinary Rule  is defined in § 10.2 0(b).
(i) Emp
loyee of a tribunal  includes all employ -
ees of courts, the Office , and other adjudicatory bod -
ies.
(j) Giving informat ion
 within the meaning of 
§ 10.23(c) (2) includes making (1) a written stat
ement 
or representation or (2) an oral statement or represen -
tation.
(k) Law firm  includes a professional le ga
l cor -
poration or a partnershi p.
(l) Legal counsel
 means practitioner .
(m) Lega
l profession  includes t h
e individuals 
who are lawfully engaged in practice of patent, trade -
mark, and other law before the Office.
(n) Legal serv ice means any lega l se
rvice which 
may lawfully be performed 
by a practitioner before 
the Office.(o) Legal System includes th e 
Office and courts 
and adjudicatory bodies which review matters on 
which the Office has acted.
(p) Office  means Patent an d 
Trademark Office.
(q) Person  includes a corporation, an associa -
tion, 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 indivi du
al authorized under 5 U.S.C. 500(b) 
or otherwise as provided by this subchapter, to prac -
tice before the Office in trademark cases or other non-patent cases. A “suspended or excluded practitioner” 
is a practitioner who is susp ended 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 an
y other proceeding which 
is pending before the Office.
(t) Professional legal corporation means a cor -
poration 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, an
d other fede ral territories and posses -
sions.
(z) Tribuna
l includes courts, the Office, and 
other adju dicatory
 bodies.
(aa) United States  means the United States of 
America, its territories  and posse
ssions.
[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]
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Page 232PATENT RULES Part 10
R-231 Rev. 8, July 2010§  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]
[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]§  10.11 Removing 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 as cer-
taining whether such individu a
l desires to remain on 
the register. The name of any individual failing to 
rep
ly 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 rein -
stated on the register as ma y be appropriate and upon 
payment of the fee set forth in § 1.21(a)(3) of this sub -
chapter
.
[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
§  10.20 Canons and Disciplinary Rules.
(a) Canons are set out in §§ 10.21, 10.30, 10.46, 
10.56, 10.61, 10.76, 10.83, 10 .10
0, and 10.110. Can-
ons are statements of axioma tic norms, expressing in 
general terms the standards of professional co nd
uct 
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 .5
7, 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 mini -
mum level of conduct below which no practitioner 
can fall without being subjec ted to disciplinary action.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.21 Canon 1.
A practitioner should assist in maintaining the 
integrity and competence of the legal profession.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985]
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Page 233§ 10.22 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-232§  10.22 Maintaining 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 delib erately failed to disclose 
a material fact requested in connection with, the prac -
titioner’s application for re gistration or membership 
in the bar of any United S
tates court or any State court 
or his or her auth ority
 to otherwise practice before the 
Office in trademark and other non-patent cases.
(b) A practitioner shall not further the applica -
tion 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 attri but
e.
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.23 Misconduct.
(a) A practitioner shall not engage in disreputa -
ble or gross misconduct.
(b) A practitioner shall not:
(1) Violate a Disciplinary Rule.
(2) Circumvent a Disciplinary Rule through 
action s of another.
(3) Engage in illegal conduct involving 
moral turpitude.
(4) Engage in conduct involving dishonesty, 
fraud, deceit, or misrepresentation.
(5) Engage in conduct th at is prejudicial to 
the administration of justice.
(6) Engage in any oth er co
nduct that 
adversely reflects on the practitioner’s fitness to prac -
tice before the Office.
(c) Conduct which cons titutes a viol ation of 
paragraphs (a) and (b) of th is 
section includes, but is 
not limited to:
(1) Conviction of a criminal offense in
volv-
ing moral turpitud e, 
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 imme -
diate, prospective, or pen d
ing business before the 
Office.
(ii) The Office or any employee of the 
Office.(3) Misappropriation of, or failure to prop -
erly or timely remi t, 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) D irectly or indirectl
y improperly influ -
encing, attempting to improperly influence, of fering
 
or agreeing to improperly influence, or attempting to 
offer or agree to improperly influence an official 
action  of an
y 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) S us
pension or disbarment from practice 
as an 
attorney or agent on ethical grounds by any duly 
constituted authority of a State or the Uni
ted States 
or, in the case of a practitioner who resides in a for -
eign 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 practitio -
ner suspended or excluded  from pra
ctice before the 
Office in engaging in unauthorized practice before the 
Office under § 11.58.
(7) Knowingly with ho
lding from the Office 
information identifying a pate nt or patent application 
of 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 th e Office of an inability to 
notify a client or former client of correspondence 
received from the Office or the client’s or former cli -
ent’s o
pponent 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 practitio ner would believe under 
the circumstances the client or former client should be notified.
(9) Knowingly misusing a “Certificate of 
Mailing or T ransmission” under § 1.8 of this chapter.
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Page 234PATENT RULES § 10.23
R-233 Rev. 8, July 2010(10) Knowingly violating or causing to be vio -
lated the requirements of § 1.56 or § 1.555 of this sub-
chapter.
(11) Except as permitted by § 1.52(c) of this 
chapter, knowingly filing or causing to be filed an 
application containing any ma terial alteration made in 
the application papers afte r the signing of the ac
com-
panying oath or declara tion without identifying the 
alteration at the time of f iling the application papers.
(12) Knowingly filing, or causing to be filed, a 
frivolous complaint alleging a violation by a practitio -
ner of th e P
atent and Trademark Of
fice Code of Pro -
fessional Responsibility.
(13) Knowingly preparing or prosecuting or 
providing assistance in th e preparation or prosecution 
of a patent application in vi olation
 of an undertaking 
signed under § 11.10(b).
(14) Knowingly failing to advise the Director 
in writing of any change which would preclude con -
tinued registration under § 11.6 .
(1
5) Signing a paper filed in the Office in vio -
lation of the provisions of § 11.18 or making a scan -
dalous or indecent statemen t 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 Of fice in a 
patent 
case either a joint venture comprising an inventor and an invention developer or an inven tor referred to the 
reg
istered 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 securitie s, unfair methods of com -
petition, unfair or deceptive acts or practices, mail 
fraud, or other civil or crim inal conduct, is pending 
before a Federal or State court or Federal or State agency, or has been res o
lved unfavorably by such 
court or agency, against th e 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 thereo f prior to undertaking or 
continuing representation of the joint venture or inventor. “Invention developer” means any person, 
and any agent, employee, officer, partner, or indepen -
dent contractor thereof, who is not a registered practi -tioner and who advertises invention development 
services in media of general circulation or who enters 
into contracts for inventio n development services with 
customers as a
 result of such advertisement. “Inven -
tion development services” means acts of invention development required or promised to be performed, or 
actually performed, or both, by an inve n
tion devel -
oper for a customer. “Invention  development” means 
the evaluation, perfection, marketing, brokering, or 
promotion of an invent ion o
n 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 de veloper for consideration 
toward the end of procuring or attempting to procure a license, buyer, or patent for an invention. “Customer” means any individual who h as made an invention and 
who enters into a contract  for invention development 
services with an invention developer with respect to 
the invention by which th e inventor becomes obli -
gated to pay the invention developer less than $5,000 
(not to include any additio nal sums which the inven -
tion developer is to receive as a result of successful development of the invention). “Contract for inven -
tion development services” means a
 contract for 
invention developme nt services with an invention 
developer with respect to an  invention made by a cus -
tomer by which the invent or 
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 devel -
op
ment of the invention).
(18) In the absence of information sufficient to 
establish a reasonable belief that fraud or inequitable conduct has occurred, allegi ng 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 con-
trary to the provisions set forth in § 11.10(d).
(20) Knowing practice by a Government 
employee contrary to app licable Federal conflict of 
interest laws, or regula tions of th
e Department, 
agency, or commission employing said individual.
(d) A practitioner who acts with reckless indif -
ference to whether a representation is true or false is chargeable with knowledge of its falsity. Deceitful 
statements of half-truths or concealment of material 
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Rev. 8, July 2010 R-234facts 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; para s. (c)(5), (c )(6), (c)(13) 
through (c)(16), and (c)(19) re vised, 73 FR 59513, Oct. 9, 
2008, effective Oct. 9, 2008]
§  10.24 Disclosure of information to authorities.
(a) A practitioner poss essing unprivileged 
knowledge of a violation of a Disciplinary Rule shall 
report such knowledge to the Director.
(b) A practitioner poss essing unprivileged 
knowledge or evidence con cerning another practitio-
ner, em
ployee of the Office , or a judge shall reveal 
fully such knowledge or ev ide
nce upon proper request 
of a tribunal or other authority empowered t o
 investi -
gate or act upon the conduct of practitioners, employ -
ees of the Office, or judges.
[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.25 - 10.29  [Reserved]
§  10.30 Canon 2.
A practitioner should assist the legal profession in 
fulfilling its duty to make  legal counsel available.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.31 Communications concerning a practitio-
ner’s services.
(a) No practitioner shall with respect to any 
prospective business before  the Office, by word, cir -
cular, letter, or advertising,  with intent to defraud in 
any manner, deceive, mislead, or threaten any pro -spective app
licant or other person having immediate 
or pro
spective business before the Office.
(b) A practitioner may not use the name of a 
Member of either House of Congress or of  an 
individ -
ual in the service of the Un ited States in advertising 
the practitioner ’
s practice before the Office.
(c) Unless authorized under § 11.14(b), a non-
lawyer pract itioner shall no t hold himself or herself 
out as authorized to practice before the Office in 
tradema
rk 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 
Of
fice 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, effec -
tive Oct. 9, 2008]
§  10.32 Advertising.
(a) Subject to § 10.31, a practitioner may adver-
tise services through public  media, including a tele -
phone 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 practiti oner may pay the rea
-
sonable 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 pu
rsuant to this 
section shall include the name of at least one practitio -
ner responsible for its content.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.33 Direct contact with prospective clients.
A practitioner may not solicit professional employ -
ment from a prospective client with whom the practi -
tioner 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 practitio-
ner’s pecunia
ry gain under circumstances evidencing 
undue influence, intimidation, or overreaching. The 
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Page 236PATENT RULES § 10.37
R-235 Rev. 8, July 2010term “solicit” includes contac t 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 circu -
lars 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]
§  10.34 Communication 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,” “ P
atent Attorney,” 
“Patent Lawyer,” “Registered Pate nt Attorney
,” or a 
substantially sim ilar designation.
(b) A registered practitioner who is not an attor-
ney may use the designation “Patents,” “Patent Agent,” “Registered Patent Agent,” or a substantially 
similar designation, excep t that any practitioner who 
was registered prior to No vember 1 5
, 1938, may refer 
to himself or herself as a “patent attorney.”
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.35 Firm names and letterheads.
(a) A practitioner shall not use a firm name, let-
terhead, 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 con-
nection with a government agency or with a public or charitable legal services organiz
ation and is not other -
wise in violation of §  10.31.
(b) Practitioners may st ate or imply 
that they 
practice in a partnership or other organization o
nly 
when that is the fact.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.36 Fees for legal services.
(a) A practitioner shall no t enter into an agree -
ment for, charge, or collect an illegal or clearly exces -
sive fee.(b) A fee is clearly exces sive
 when, after a 
review of the facts, a practitioner of ordinary pru -
dence would be left with a definite an d firm co
nvic-
tion 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) T he time and 
labor required, the novelty 
and difficulty of the ques tions involved, and the skill 
requisite to perform the legal service properly.
(2) The likelihood, if ap parent to the client, 
that the acceptance of the particular employment will preclude other employment by t h
e practitioner.
(3) The fee customarily charged for si milar 
legal services
.
(4) The amount involv ed and the results 
obtained.
(5) The time limitations imposed by the cli -
ent or by the ci rc
umstances.
(6) The  na
ture and len g
th of the professional 
relationship wit h the client.
(7) The experience, repu tation, and ability of 
the practitioner or practi tioners performing the ser -
vices.
(8) Whether the fee is fixed or contingent.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.37 Division 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 ma
de in proportion to the 
services performed and re sponsibility assumed by 
each.
(3) The total fee of the practitioners does not 
clearly exceed reasonable compensation for all legal 
service s rendere
d to the client.
(b) This section do
es 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]
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Rev. 8, July 2010 R-236§  10.38 Agreements restricting the practice of a 
practitioner.
(a) A practitioner shall not be a party to or par -
ticipate in a partnership or employment agreement 
with another practitioner that restricts the right of a 
practitioner to practice before the Office after the ter -
mination of a relationship cr eated by the agreement, 
except as a condition to payment of retirement bene -
fits.
(b) In connection with the settlement of a con -
troversy or suit, a practitio ner shall not enter into an 
agreement that restricts the practitioner
’s right to 
practice before  the Of
fice.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.39 Acceptance of employment.
A practitioner shall not accept employment on 
behalf of a person if the practitioner knows or it is obvious that such person wishes to:
(a) Bring a legal action, commence a proceed -
ing before the Office, conduct a defense, ass ert a posi -
tio
n 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 war -
ranted under existing law,  un
less it can be supported 
by good faith
 argument for an extension, modifica -
tion, or reversal of existing law.
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.40 Withdrawal 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 ev ent, a practitioner shall not 
withdraw from employment until t
he 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 cl ient is entitled, and com -
plying 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) Mandato r
y withdrawal . A practitioner rep -
resenting a client before the Office shall withdraw 
from employment if:
(1) The practitioner kn o
ws or it is obvious 
that the cli e
nt 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 O
ffice, 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 con -
dition renders it unreaso na
bly difficult for the practi -
tioner to carry out the em ployment effectively; or
(4) The practitioner is discharged by the cli -
ent.
(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 su ch request or such with -
drawal is because:
(1) T he petitioner
’s client:
(i) Insists upon presenting a claim or 
defense that is not warrant ed under existing law and 
can
not be supported by good faith argument for an 
extension, modification, or  reversal of existing law;
(ii) Personally seeks to pursue an illegal 
co
urse of conduct;
(iii) Insists that the practitioner pursue a 
course of conduct that is i llegal or that is prohibited 
under a Disciplinary Rule;
(iv) By other conduct renders it unreason -
ably difficult for the practitioner to carry out the employ
ment effectively;
(v) Insists, in a matter  not pen
ding before a 
tribunal, that the practitioner engage in conduct th
at is 
contrary to the judgment  and advice of the practitio -
ner but not prohibited unde r the Disciplinary Rule; or
(vi) Has failed to pay one or more bills ren -
dered by th
e 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 ser-
vices.
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Page 238PATENT RULES § 10.57
R-237 Rev. 8, July 2010(2) The practitioner’s continued employ-
ment is likely to result in a violation of a Disciplinary 
Rule;
(3) The practitioner’s in ability to work with 
co-counsel indicates that the best interests of the cli -
ent likely will be served by withdrawal;
(4) The practitioner ’
s mental or physical con -
dition renders it difficult for the practitioner to carry out the employment effectively;
(5) The practi
tioner’s client knowingly and 
freely assents to termination of the employment; or
(6) The practitioner believes in good faith, in 
a proce e
ding 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]
§  10.46 Canon 3.
A practitioner should assist in preventing the unau -
thorized practice of law.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.47 Aiding unauthorized practice of law.
(a) A practitioner shall not aid a non-practitio -
ner 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]
§  10.48 Sharing 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 , ov
er a reasonab le period
 of time after the practitioner’s d eath, to the practitioner’s 
estate or to one or more specified persons.
(b) A practitioner who un dertakes 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 rep -
resents the services rendered by the de cea
sed practi -
tioner.
(c) A practitioner or firm of practitioners may 
include non-practitioner empl oyees in a compensation 
or retirement plan, even th ough the plan is based in 
whole or in part on a profit-sharing arrange m
ent, pro-
viding such plan does not circumvent another Disci -
plinary Rule.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985; para. (b) revised, 58 FR 54511, Oct. 22, 1993, effec -
tive June 3, 1994]
§  10.49 Forming a partnership with a non-practi -
tioner.
A practitioner shall not form a partnership with a 
nonpractitioner if any of the activities of the partner -
ship 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]
§  10.56 Canon 4.
A practitioner should preserve the confidences and 
secrets of a client.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.57 Preservation of confidences and secrets of 
a client.
(a) “Confidence” refers to information pro -
tected by the attorney-clien t or agent-client privilege 
under applic able law. “Secret ” refers to other informa-
tion gained in the professio nal relationship that the 
client has requested be held i nvi
olate or the disclosure 
of which would be embarrassi ng or would be like
ly 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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Rev. 8, July 2010 R-238(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 on ly after a full disclosure to 
the clie n
t.
(2) Confidences or s ecrets when permitted 
under Disciplinary Rules or requ
ired by law or court 
order.
(3) The intention of a client t o
 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 pr actitioner’s employees or 
associa tes agains
t an accusation of wrongful conduct.
(d) A practitioner shall exer cise reasonable care 
to prevent the practitioner’s employees, associates, 
and others whose services are util
ized by the practitio -
ner from disclosing or using confidences or secrets of 
a client, except that a practitioner may reveal the 
information allowed by para graph (c) of this section 
through an em plo
yee.
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.58 - 10.60 [Reserved]
§  10.61 Canon 5.
A practitioner should exercise independent profes -
sional judgment on behalf of a client.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.62 Refusing employment when the interest 
of the practitioner may impair the practi -
tioner’s independent professional judg -
ment.
(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 judg -
ment on behalf of the client will be or reasonably may be affected by the practitioner’s own financial, busi -
ness, property, or personal interests.
(b) A  practitioner 
shall not accept employment 
in a proceeding before the Of fice i
f 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 wit -
ness, except that the practitioner may undertake the 
employment and the practitioner or anot her practitio -
ner in the practitioner ’s firm may testify:
(1) If the testi mony will relate solely to an 
uncontested matter .
(2) If the testimony will rel ate solely to a 
matter of formality and ther e is no r eason to believe 
that subst antial evi dence w ill be of
fered in opposition 
to the testimony.
(3) If the testimony will relate solely to the 
nature and value of legal se rvices rendered in the ca se 
by the practitioner 
or the practitioner’s firm to the cli -
ent.
(4) As to any matter, if refusal would work a 
subst a
ntial hardship on the client because of the dis -
tinctive value of the prac titioner or the practitioner’s 
firm as counsel in the  
particular case.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.63 Withdrawal when the practitioner be -
comes a witness.
(a) If, after undertaking employment in a pro -
ceeding 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 represen -
tation 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 § 1 0
.62(b).
(b) If, after undertaking employment in a pro -
ceeding 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 affida -
vit to be filed in the Office or be called as a witness other than on behalf of the practitioner’s client, the 
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Page 240PATENT RULES § 10.67
R-239 Rev. 8, July 2010practitioner 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]
§  10.64 Avoiding acquisition of interest in litiga-
tion or proceeding before the Office.
(a) A practitioner shall not acquire a proprietary 
interest in the subject matter of a procee ding before 
the Of
fice which the prac titioner is conducting for a 
client, except that the practitioner may:
(1) Acquire a lien grante d 
by law to secure 
the practitioner’s fee or expenses; or
(2) Contract with a client for a reasonable 
contingent fee; or
(3) In a patent case, take an interest in the 
patent as p
art or all of his or her fee.
(b) W
hile representing a client in connection 
with a contemplated or pend ing proceeding before the 
Office, a practitione r 
shall not advance or guarantee 
financial assistance to a cl ient, except that a practitio -
ner 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 me dica
l examination, 
and costs of obtaining and presenting evidence, pro-vided the client remains u ltimately liabl e for such 
expenses. A practitioner  may, however , advance any 
fee require d to pre vent or remedy an abandonment of 
a  client’
s application by reason of an act or omission 
attributable to the practitio ner 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]
§  10.65 Limiting business relations with a client.
A practitioner shall not enter into a business trans -
action with a client if they  have differing interests 
therein and if the client expects the practitioner to exercise professional judgment therein for the protec -
tion of the client, unless the client
 has consented after 
full disclosure.
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985]§  10.66 Refusing to ac cept or continue employ -
ment if the interests of another client may 
impair the independent professional 
judgment of the practitioner.
(a) A practitioner shall decline proffered 
employment if the exerci se of the practitioner’s inde -
pendent p
rofessional judgment in beh a
lf of a client 
will be or is likely to be adversely affected by the 
acceptance of the proffered employment, or if it 
would be likel
y to involv e the practitioner in repre -
senting differing interests, except to the extent permit -
ted under paragraph (c) of this section.
(b) A practitioner shall not continue mult iple 
employment if 
the exerci se of the practitioner’s inde -
pendent professional judgment in b e
half 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 involv e the practitioner in repre -
senting differing interests, except to the exte nt permit -
ted u
nder 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 adequately represent the interes t
 of each and if 
each consents to the representation after full disclo -
sure of the possible effect  of such representation on 
the exercise of the practitioner’s independent profes -
sional judgment on be
half of each.
(d) If a practitioner is required to decline 
employment or to withdraw from employment under 
a Disciplinary Rule, no partner,  or as
sociate, 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]
§  10.67 Settling similar claims of clients.
A practitioner who represents two or more clients 
shall not make or participate in the making of an aggregate settlement of the claims of or against the 
practitioner’s clients, unless ea ch client h as consented 
to the settlement after bein g advised of the existence 
and nature of all the claims  involved in the proposed 
settlement, of the total 
amou nt of the settlement, and 
of the participation of each  person in the settlement.
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Page 241§ 10.68 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-240[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.68 Avoiding influence by others than the cli -
ent.
(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 ser-
vices to or for the client.
(2) Accept from one other than the practitio-
ner’s client any thing of va lue rel ated to the practiti o-
ner
’s representation of or the practitioner’ s 
emp
loyment by the client.
(b) A practitioner shall not permit a person who 
recommends, employs, or pa ys the pract
itioner to ren -
der legal services for another, to direct or regulate the 
practitioner’ s professional ju dgment in 
rendering such 
legal services.
(c) A practitioner shall not practice with or in 
the form of a professional corpora tion or as
sociation 
authorized to practice l a
w for a profit, if a non-practi -
tioner has the right  to direct or control the profes -
sional judgment of a practitioner
.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.69 - 10.75 [Reserved]
§  10.76 Canon 6.
A practitioner should represent a client compe -
tently.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.77 Failing to act competently.
A practitioner shall not:
(a) Handle a legal matter which the practitioner 
knows or should know th at the practitioner is not 
competent to handle, with out associating with the 
practitioner another practitione r who is competent to 
handle it.
(b) Handle a legal matte r with out preparation 
adequate in th e circumstances.
(c) Neglect a legal matter entrusted to the prac -
titioner.[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.78 Limiting liability to client.
A practitioner shall not attempt to exonerate him -
self 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]
§  10.83 Canon 7.
A practitioner should represent a client zealously 
within the bounds of the law.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.84 Representing a client zealously.
(a) A practitioner shall not intentionally:
(1) Fail to seek the lawful objectives of a cli -
ent through reasonable ava ilable means permitted by 
law and the Disciplinary Rules, except as provided by 
paragraph (b) of this sec tion. 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 commit -
ments, by avoiding offensive tactics, or by treating 
with courtesy and consider ation all persons involved 
in the legal process.
(2) Fail to carry out a contract of employ -
ment entered into with a client for professional ser -
vices, but a practitioner may withdraw as permitted 
under §§ 10 .
40, 10.63, and 10.66.
(3) P reju
dice or damage  a c
lient 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 believ es to be unlawful, even 
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Page 242PATENT RULES § 10.89
R-241 Rev. 8, July 2010though there is some support for an argument that the 
conduct is legal.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.85 Representing 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 o ther 
action on behalf of the pr actitioner
’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 ex isting law, except that a 
practitioner may advance such claim or defense if it 
can be su pp
orted by good faith argument for an exten -
sion, modification, or reversal of existing law.
(3) Conceal or knowingly fail to disclose that 
which the practitioner is re quired by law to reveal.
(4) Knowingly us e perjured testimon
y or 
false evidence.
(5) Knowingly make a false statement of law 
or fac t
.
(6) Participate in the cr eation or preservation 
of evidence when the practitioner knows or it is obvi -
ous that the evidence is fa lse.
(7)
Counsel or assist a client in conduct  that 
the 
practitioner knows to be illegal or fraudulent.
(8) Knowingly engage
 in other illegal con -
duct 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 repre
-
sentation, perpetrated a fraud upon a pe rso
n or tribu-
nal 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 per-son or tribunal.
(2) A  person o
ther than a client has perpe-
trated a fraud upon a tribun al shall promptly reveal 
the fraud to the tribunal.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]§  10.86 [Reserved]
§  10.87 Communicating with one of adverse 
interest.
During the course of representation of a
 client, a 
practitioner shall not:
(a) Communicate or cause another to communi -
cate on the subject of the representation wi th 
a party 
the practitioner knows to be  represented by another 
practitioner in that  matter unless the practitioner has 
the prior consent of the ot her 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 repre -
sented 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]
§  10.88 Threatening criminal prosecution.
A practitioner shall not present, participate in pre -
senting, or threaten to pre sent 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]
§  10.89 Conduct in proceedings.
(a) A practitioner shall not disregard or advise a 
client to disregard any provision of this Subchapter or a decision of the Of fic
e made in the course of a pro-
ceeding 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 practi -
tioner shall disclose:
(1) Controlling legal authority known to the 
practitioner to be directly adverse to the position of 
the client and which is not disclose d by
 opposing 
counsel or an employee of the Office.
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Page 243§ 10.90 - 10.91 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-242(2) Unless privileged or irrelevant, the identi -
ties of the client the practitio ner represents and of the 
persons who employed the practitioner.
(c) In appearing in a professional capacity 
before a tribunal, a practit ioner shall
 not:
(1) State or allude to any matter that the prac -
titioner has no reasonable basi s 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 be lieve  is 
relevant to the case 
and that is intended to de grade a witness or other per -
son.
(3) Assert the practitio ne
r’s person al k
nowl -
edge of the facts in issue, except when testifying as a 
witness.
(4) Assert the practitione r’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 practitio-
ner may argue, on the practitioner’s analysis of the 
evidence, for any position or  conclusion with respect 
to the matters stated herei n
.
(5) Engage in undignified or discourteous 
conduc t before the Office (see § 1.3 of the subchap -
ter).
(6) Intentionally or ha bitually violate any 
provis io
n of this su b
chapter or established ru le o
f evi-
dence.
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.90 - 10.91 [Reserved]
§  10.92 Contact with witnesses.
(a) A practitioner shall not suppress any evi -
dence 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 makin g
 the person unavail -
able 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 cont ent of the witness’ 
affidavit, testimony or the outcome of the case. But a practitioner may advance, gua rantee, or acquiesce in 
the payment of:
(1) Expenses reasonab ly incurre d by a wit -
ness in at te
nding, 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 ser -
vices of an expert w
itness.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.93 Contact with officials.
(a) A practitioner shall not give or lend any -
thing of value to a judge, official, or employee of a tri-bunal under circumstances which might give the appe arance that the gift or loan is made to influence 
official action.
(b) In an adversary pro cee
ding, including any 
inter partes proceeding before the Office, a practitio -
ner shall not communicate, or cause anothe r t
o com -
municate, as to the merits of the cause with a judge, official, or Office employee before whom the pro -
ceeding 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 writin g to opposing counsel or 
to the
 adverse party if the adverse party is not repre-
sented by a practitioner.
(3) Orally upon adequate notice to opposing 
counsel or to the adverse pa rty 
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]
§  10.100 Canon 8.
A practitioner should assist in improving the legal 
system.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
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Page 244PATENT RULES § 10.112
R-243 Rev. 8, July 2010§  10.101 Action as a public official.
(a) A practitioner who hold s public office shall 
not:
(1) Use the practitioner’s public position to 
obtain, or attempt to obtain, a spec ia
l 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 inter -
est.
(2) U
se 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 an y per -
son when the practitioner knows or it is obvious that the 
offer is for the purpo se of influencing the practi -
tioner’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]
§  10.102 Statements concerning officials.
(a) A practitioner shall not knowingly make 
false statements of fact co ncerning the qualifications 
of a candidate for election or appointment to a judicial 
office or to a position in the Offi ce.
(b)
A practitioner shall not knowingly make 
false accusations against a judge, other adjudicatory 
officer, or em plo
yee of the Office.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.103  Practitioner ca ndidate for judicial office.
A practitioner who is a candidate for judicial office 
shall comply with applic able provisions of law.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.104 - 10.109 [Reserved]
§  10.110 Canon 9.
A practitioner should avoid even the appearance of 
professional impropriety.[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.111  Avoiding even the appearance of impro -
priety.
(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 per -
sonal responsibility while a publ
ic employee.
(c) A practitioner shall not state or imply that 
the practitioner is able to influence improperly or 
upon
 irrelevant grounds any tribunal, legi slative bo
dy, 
or public official.
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985]
§  10.112  Preserving identity of funds and prop -
erty of client.
(a) All funds of clients paid to a practitioner or 
a practitioner’s firm, other than advances for costs and 
expenses, sh all b
e deposite d in one or more identifi -
able bank accounts maintained  in the United States or, 
in the case of a practitioner having an office in a for -
eign country or registere d
 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 para gra
ph (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 deposit
ed therein, but the 
portion belonging to the practitioner or the practitio -
ner’
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 dis -
pute is finally resolved.
(c) A
 practitioner shall:
(1) Promptly notify a client of the receipt of 
the client’s funds, securities, or o t
her properties .
(2)
Identify and label securities and proper -
ties of a client promptly up on receipt and place them 
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Page 245§ 10.113 - 10.170 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-244in 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 appropri-
ate accounts to the client regarding the fu nd
s, securi-
ties, 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, effec -
tive Nov. 25, 2005]
§  10.113 - 10.170 [Reserved]
PART 11 — REPRESENTATION OF 
OTHERS BEFORE THE UNITED 
STATES PATENT AND TRADEMARK 
OFFICE
Subpart A —General Provisions
GENERAL INFORMATION
Sec. 
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 L im
ited recognition in patent matters. 11.10 Restrictions on practice in patent matters. 
11.11 Administrative suspension, inactivation, resignation, 
and readmiss ion.
11.12 - 11.13 [Reserved]11.14 Individuals who may pr act
ice before the Office in 
tradem arks and other non-patent matters.
11.15 Refusal to recognize a practitioner.11.16 - 11.17 [Reserved]11.18 Signature and certi ficat
e for correspondence filed in 
the Office.
Subpart C—Investigations and Disciplinary 
Proceedings, Jurisdiction, Sanctions, 
Investigations, Proceedings
11.19 Disciplinary jurisdiction; Jurisdiction to transfer to 
disability inactive status. 
11.20 Disciplinary sanctions; Transfer to disability 
inactive status. 
11.21 Warnings. 
11.22 Investigations. 11.23 Committee on Discipline. 11.24 Reciprocal discipline. 
11.25 Interim suspension and discipline based upon 
conviction of committing a serious crime. 
11.26 Settlement. 11.27 Exclusi on on
 consent. 
11.28 Incapacitated practitioners in a disciplinary 
proceeding. 
11.29 Reciprocal transfer or in itial transfer to disability 
inactive status. 
11.30-11.31 [Reserved] 
11.32 Initiating a disciplinary proceeding. 
11.33 [Reserved] 
11.34 C om
plaint. 
11.35 Service of complaint. 11.36 A n
swer to complaint. 
11.37 [Reserved] 11.38 Contested case. 11.39 Hearing officer; appointment; responsibilities; 
review of interlocutory orders; stays. 
11.40 Representative for OED Director or respondent. 11.41 F
iling of papers. 
11.42 Service of papers. 
11.43 Motions. 
11.44 Hearings. 11.45 Amendment of pleadings. 11.46-11.48 [Reserved] 
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Page 246PATENT RULES § 11.1
R-245 Rev. 8, July 201011.49 Burden of proof. 
11.50 Evidence. 
11.51 Depositions. 
11.52 Discovery. 11.53 Proposed findings and conclusions; post-hearing 
mem orandum. 
11.54 Initial decision of hearing officer. 11.55 App
eal to th e USPTO Director. 
11.56 Decision of the USPTO Director. 11.57 Review o
f final decision of the USPTO Director. 
11.58 Duties of disciplined or resigned practitioner. 
11.59 Dissemination of disciplinary and other information. 
11.60 Petition for reinstatement. 11.61 Savings clause. 
11.62-11.99 [Reserved] 
Subpart A — General Provisions
GENERAL INFORMATION
§  11.1 Definitions.
This part governs solely  the practice of patent, 
trademark, and other law before the United St at
es 
Patent and Trademark Office. Nothing in this part 
shall be construed to pree mpt 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 objec -
tives. Unless otherwise clea r from the context, the fol -
lowing definitions apply to this part:
Attorney or lawyer  means an individual who is a 
member in good standing of the highest c o
urt 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 restrict -
ing the attorney from prac tice before the bar of 
another State or Federal agency. A non-lawyer  means 
a person who is not an a t
torney 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 ente re
d plea, including nolo contendre  or 
Alford plea, to a crime; or receipt of deferred adjudi-
cation (whether judgment or sentence has been 
entered or not) for an accused or pled crime.Crime  means any offense declared to be a fe lony 
or 
misdemeanor by Federal or S tat
e law in the jurisdic -
tion where the act occurs.
Data sheet  means a form used to collect the name, 
address, and telephone in formation from individuals 
recognized to practice before  the Office in patent mat -
ters.
Disqualified  means a
ny action that prohibits a prac-
titioner from participating in or appearing before the 
program or agency, regardless of how long the prohi -
bition last
s or the spec ific terminology used. 
Federal agen cy 
means any authority of the execu-
tive branch of 
the Government of the Un ited 
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 
th
rough the ensuing September 30th.
Fraud  or frau dulent  means co nd
uct having a pur -
pose to dec
eive and not me rely negligent misrepresen -
tation or failure to apprise another of relevant information.
Good moral character and reputation  means the 
possession of honesty and truthfulness, trustworthi -
ness and reliability, and a professional c
ommitment to 
the legal proces s and the administration of justice
, as 
well as the condition of bein g regarded as  possessing 
such qualities.
Knowingly , known , or knows  means actual know l-
ed
ge 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 chap ter as a Disciplinary Rule. 
Matter  means any litigation, administrative pro -
ceeding, lobbying act
ivity, ap plication, claim, investi-
gation, controversy, arrest, charge, accusation, 
contract, negotiation, estat
e or family relations prac -
tice issue, request for a rulin g or other determin ation
, 
or any other matter covered by the co nflict of in
terest 
rules of the appropri ate Government entity .
OED  means the
 Office of Enrollment and Disci-
pline.
OED Director  means the Director of the Of
fice of 
Enrollment and Discipline.
OED Director’ s
 representatives  means attorneys 
within the USPTO Office of General Counsel who act 
as representatives of the OED D
irector.
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Page 247§ 11.2 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-246Office  means the United States Patent and Trade-
mark Office.
Practitioner  means:
(1) An attorney or agent registered to practice 
before the Office in patent matters,
(2) An individual authorized und
er 5 U.S.C. 
500(b) or otherwise as provided b y
 § 10.14(b), (c), 
and (e) of this subchapter, to practice before the 
Of
fice in trademark matters or other non-patent mat -
ters, 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 f
or reissue, a reexamination, 
a protest, a public use matter, an inter partes  patent 
matter, correction of a patent, correction of in vent
or-
ship, 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 
conduc
t by a practitioner means the conduct of a rea-
sonably prudent and competent practitioner.
Registration  means re
gistration to practice before 
the Office in patent proceedings.
Roster  means a list of individual s 
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 c r
ime a necessary element of which, as 
determined by the statutor y or common law definition 
of such crime in the jurisdiction where the crime 
occurred, includes interference with the administra-
tion of justice, false swea
ring, 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 satis -
factory evidence that is si gnificantly more probable 
than not that there will be  no recurrence in 
the fore -
seeable future of the practitioner’s prior disability or 
addictio n.
St
ate means any of the 50 states of the United State s
 
of America, the District of Columbia, and any Com -monwealth or territory of the United States of Amer -
ica.
Substa ntia
l when used in reference
 to degree or 
extent means a material matter of clear and weighty 
importance.
Suspend  or suspension means a temporary debar -
ring from practice before the Of
fice or other jurisdic -
tion.
United States  means the United States of America, 
and the  
territories and posses sions the United States of 
America.
USPTO Director  means the Director of the  Unite
d 
States Patent and Trademark Office, or an employee of the Office delegated authority to act for the Direc -
tor of the United S t
ates 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]
§  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 Direc -
tor may de
signate an employee of the Office to serve 
as acting OED Director. The OED Director shall b
e an 
active member in good standing of the bar of the high -
est court of a State. 
(b) Duties . The OED Director shall:
(1) Supervise staff as may be necessary for 
the performance of the OED Direc t
or’s duties.
(2) Receive and act up on appl
ications for 
registration, pre pare and grade the examination pro -
vided for in § 11.7(b), main tain the register provided 
for in § 11.5, and perform such other duties in connec -
tion with enrollment and recognition 
of attorneys and 
agents as may be necessary.
(3) Conduct investigations into th e 
moral 
charac ter and reputation of any individual seeking to 
be registered as an attorney or agent, or of any indi -
vidual seeking limited recogn ition, deny registration 
or recognit
ion of individuals failing to demonstrate 
possession of good moral character and reputation, 
and perform such other du ties in connection with 
enrollment matters and invest igations as may be nec-
ess
ary.
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Page 248PATENT RULES § 11.3
R-247 Rev. 8, July 2010(4) Conduct investigatio ns of matters involv-
ing 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 recommend e
d 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 mem -
bers of the Committee on Discipline, initiate disci -
plinary proceedings under § 11.32 and perform such other duties in connection with i
nvestigations and dis -
ciplinary proceedings as may be necessary. 
(6) Oversee the preliminary screening of 
information and close inves tigations as provided for 
in § 11.22. 
(7) [Reserved]
(c) Petition to OED Director r
egarding enroll -
ment or recognition . Any petition from any action or 
requirement of the staf
f of OED reporting to the OED 
Director shall be taken to  the OED Director accompa -
nied 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 dis -
missed as untimely. The filing of a petition will nei -
ther stay the period for taking other action which may be running, nor stay othe
r proceedings.  The petitioner 
may file a single request for reconsideratio
n of a deci-
sion within thirty days of the date of the decision. Fil -
ing a request for reconsideration stays the period for seeking review of the OED Director’ s
 decision until a 
final decision on the request for rec
onsideration is 
issued. A final decision by the OED Director may be reviewed in accordance with the provisions of para -
graph (d) of this section. 
(d) Review of OED Director’ s decision regard -
ing enrollment or recognition . A party dissatisfied 
with a final decision of the OED Director regarding 
enrollment or recognition ma y seek review of the 
decision upon petition to the USP
TO Director accom -
panied by payment of the fee 
set forth in § 
1.21(a)(5)(ii) of this chap ter. Any such petition to the 
USPTO Director waives a right to seek reco nside
ra-
tion 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 petit
ion 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 dis -
missed as untimely if not file d within thirty days after 
the date of said decision. 
(e) Petition to USPTO Director in disciplinary 
matters. Petition may be taken to the US P
TO Director 
to invoke the supervisory authority of the USP T
O 
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 memo -
randa, if any, in support of the petition must accom -
pany the petition. Where facts are to be proven, the 
proof in the form of affid a
vits or declarations (and 
exhibits, if any) must accompany the 
petition. The 
OED Director may be directed by the USPTO Direc -
tor to file a reply to the petition, supplying a copy to 
the petitioner. An oral he aring will not be granted 
except when considered necessary by the USP T
O 
Director. The mere filing of a petition will not stay an 
investigation, disciplinary proceeding or other pro -
ceedings. Any petition under th is part not filed within 
thirty days of the mailing da te of the action or notice 
from which relief is requested may be dismissed as 
untime
ly. Any request for reconsideration of the deci -
sion 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 sus -
pended or waived by the USPTO Director or the des-ignee of th
e USPTO Director, sua sponte , or on 
petition by any party, including the OED Director or 
IP/N/1/USA/D/2 
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Page 249§ 11.4 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-248the 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 LAW
§  11.4 [Reserved]
 [Reserved, 69 FR 35427, June 24, 2004, effective July 
26, 2004]
§  11.5 Register of attorn eys 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 indi -
viduals recognized as entitle d to represent applicants 
having p
rospective or immediate business before the 
Office in the preparation an d pro
secution of patent 
applications. Registration in the Office under the pro -
visions of this part shall entitle the individuals so reg -
istered to practice before th e Office only in patent 
matters. 
(b) Practice befor e 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 regula -
tions administered by the Office for the grant of a 
patent or registration of a trademark, or for enrollment 
or disciplinary matters. Such presentations include 
preparing necessary documen ts in contemplation of 
filing the documents with the Office, corresponding 
and communicating with th e Office, and representing 
a client th
rough documents or  at interviews, hearings, 
and meetings, as well as communicating with and 
advising a client concerning matters pending or con -
templated to be presented before the Office. Nothing 
in this section proscribes a practitioner from employ -ing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitio -
ner in matters pending or contemplated to be pre -
sented before the Office. 
(1) Practice befor e
 the Office in patent mat -
ters. Practice before the Office in patent matters 
includes, but is not limited to, preparing and prosecut -
ing any patent applicati on, consulting with or giving 
advice to a client in cont emplation of filing 
a patent 
application or other document with the Office, draft -
ing the specification or claims of a patent application; 
drafting an a
mendment 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 
regardin g a patent ap
plication; and d r
afting a commu -
nication for a public use, interference, reexamination 
proceeding, petition, appeal to or any other proceed -
ing before the Board of Patent Appeals and Interfer -
ences, or other proceeding. Registration to practice 
before the Office in patent cases sanctions the pe rfor-
ma
nce of those services which are reasonably neces -
sary and incident to the preparation a n
d prosecution 
of patent applications or other proceeding before the Office involving a patent appl icatio
n 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 th e patent owner 
in 
contemplation of filing or prosecution of a patent 
application for the patent owner, where the practitio -
ner represents the patent owner aft
er a patent issues in 
a proceeding before the Offi ce, and when drafting the 
assignment the practitioner does no more than repli -
cate the terms of a previously existing oral or written 
obligation of assignment from one p e
rson or party to 
another pe rso
n or party. 
(2) Practice before the Office in trademark 
matters. Practice before the Office in trademark mat -
ters includes, but is not lim ited to, consulting with or 
giving advice to a client in contemplation of filing a 
trademark application or oth
er document with the 
Office; preparing and pro secuting an application for 
trademark re gistration; preparing an ame
ndment 
which may require written ar gument to establish the 
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R-249 Rev. 8, July 2010registrability of the mark; and conducting an opposi -
tion, 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  
register ed as a patent attorney to 
practice before the Office. When appropriate, any 
alien who is an attorney, wh o 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 registra -
tion is not inconsistent w ith the terms upon which the 
alien was admitted to, and re sides in, the United S tat
es 
and further provided that the alien may remain regis -
tered only:
(1) If the alien continues to lawfully reside in 
the United States and regi stration does not become 
inconsistent with the term s upon which the alien con-
tinues to lawfully reside  in the United S
tates, or
(2) If the alien ceases to reside in the United 
States, the alien is qualifie d to be  registered under 
pa
ragraph (c) of this section. See also § 1 1
.9(b).
(b) Agents . Any citizen of the United S tates 
who is not an attorney, and who fulfills the require -
ments of this part may be registered as a patent ag ent 
to practic
e before the Office. When appropriate, any 
alien who is not an attorney, who lawful ly resides in 
the 
United States, and who fulf ills the requirements of 
this part may be registered as a patent agent to prac -
tice before the Office, provided that such registration is not inconsistent wi th 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 S tates and regi stration does not 
become 
inconsistent with the term s upon which the alien con-
tinues to lawfully reside  in the United S
tates or
(2) If the alien ceases to reside in the United 
States, the alien is qualifie d to be registered under 
paragra
ph (c) of this section. See also § 1 1
.9(b).(c) Foreigners. Any foreigner not a resident of 
the United States who shall f ile proof to the satisfac -
tion of the OED Director that he
 or she is registered 
and in good standing before the patent office of the 
coun
try in which he or she resides and practices, and 
who is possessed of the qualif ications stated in § 11.7, 
may be registered as a patent agent to practice before the Office for the limited purpose of presenting and 
prosecuting patent applications of applicants located in such country, provided that the patent office of such country allows substantially  reciprocal privileges to 
those admitted to practice before the Office. Registra -
tion as a patent agent under this paragraph shall con -
tinue only during the pe riod that the conditions 
specified in this paragrap h obtain. Upon notice by the 
patent office of such country that a patent ag e
nt regis -
tered 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 fro m the register and publish 
the fact of removal.
(d) Board of Patent Appeals and Interferences 
matters. For action by a person who is n o
t 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 applica tion for registration form 
supplied by the 
OED Director and furnishing all 
requested information and material; and
(2) Established to the sa tisfaction of the OED 
Director  th
at he or she:
(i) P os
sesses good moral character and 
reputation;
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Page 251§ 11.7 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-250(ii) Possesses the legal, scientific, and 
technical qualifications ne cessary for him or her to 
render applicants valuable service; and
(iii) Is competent to ad vise 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 indiv i
dual has the qualifications specified 
in paragraph (a)(2) of this sectio n, t
he individual 
shall:
(i) File a complete ap plication for regis-
tration each time admission to the registration exami -
nation is requested. A co mplete application for 
registration includes:
(A) An application for registration form 
supplied by the OE D
 Director wherein all re qu
ested 
information and su pp
orting 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 pro o
f that recog -
nition is not inconsistent with the terms of their visa 
or entry into the United States;
(ii) Pass the registration examination, 
unless  the taking and pass ing of  
the examination is 
waived as provided in para graph (d) of this  
section. 
Unless examination is waived pursuant to paragraph 
(d) of this se ction, each in dividua
l seeking registration 
must take and pass the re gistration examination to 
enable the OED Director to determine whether the individual possesses the legal and competence qualifi -
cations specified in pa ragraphs (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 indi vidual last took the exami -
nati
on before retaking the ex amination. An individual 
reapplying shall:
(A) File a completed application for reg -
istration 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, provi de pro
of that recog-
nition is not inconsistent with the terms of their visa 
or entry into the United States; and(iii)
Provide satisfactory proof of posses -
sion of good moral character and reputation.
(2) An individual fai ling 
to file a complete 
application for registration will not be admitted to the 
exami nation and will be notified of the incomplete -
ness. Applications for regist ration that are incomplete 
as originally submitted will be considered only when 
they hav e
 been completed an
d received by OED, pro -
vided that this occurs with in sixty days of the mailing 
date of the notice of incompleteness. Thereafter, a 
new and complete applicati on 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 th e 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 an sw
ers 
submitted in or with the application for registration 
based upon anything occurri ng 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 examin -
ers 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 regis
tration exam -
ination 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 pa tent 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 compe -
tency and n e
gotiation authority;
(iii)  After receiving the certificate of legal 
competency and negotiation authority, was rated at 
least fully successful in each quality performance ele -
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R-251 Rev. 8, July 2010ment 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 warn -
ing regarding the quality perfo rmance elements at the 
time of separation from the patent examining corps.
(2) Former patent e x
aminers who on July 26, 
2004, had actively served four years in the patent examining corps, and were ser ving in the cor
ps at the 
time of their separation . The OED Director may 
waive the taking of a regi stration 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 in the patent examinin g corps, if the individual 
demonstrates that he or she:
(i) Actively served for at least four years 
in the patent examin ing corps of the Office by July 26, 
2004, and was serving in th e corps 
at the time of sepa-
ration from the Office;
(ii) Was rated at least fully successful in 
each quality performance elem ent of his or her perfor -
mance plan for the last two complete fiscal years as a patent examiner in the Of fice; and
(iii)
Was not under an oral or written warn-
ing regarding the quality perfo rmance elements at the 
time of separatio n fro
m the patent examining corps.
(3) Certain former Office employees who 
were
 not serving in the pa tent examining corps upon 
their separation from the Office . The OED Director 
may waive the taking of a re gistrati
on 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 neces -
sary legal qualifications to re nder to patent applicants 
and others valuable servic e and assistance in the prep -
aration an d pro
secution of their applications or other 
business before the Office by  showing that he or she 
has:
(i) Exhib ited comprehen
sive knowledge 
of patent law equivalent to  that shown by passing the 
registration examin ation
 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 chan ges
, patent examination 
guidelines, changes to the Manual of Patent Examin -
ing Procedure, development of training or testing materials for the patent ex amining corps, or develop -
ment of materials for the registration examinat io
n 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 qua l
ity performance element of his or her perfor -
mance 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 ele -
ments at the time of s
eparation 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 ex aminers, filing an applica -
tion for registration or fee more than tw o years after 
separation from the Office, are required to take and pass the registration examina tion. The individual  or 
former examiner must 
pay the examination fee 
required by § 1.21(a)(1)(ii) of this subchapter within thirty days after no tice 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 pursue d 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 su bchapter, and a fee charged 
by a commercial entity administering the examina -
tion.
(f) Application for reciprocal recognition . An 
individual seeking reciprocal recognition under § 11.6
(c), in addition to satisfying the provisions of para-
graphs (a) and (b) of this section, and the provisions 
o
f § 11.8(c), shall pay the application fee required by 
§ 1.21(a)(1)(i) of this subchapter upon filing an appli -
cation for registration.
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Rev. 8, July 2010 R-252(g) Investigation of good moral character and 
reputation . (1) Every individual seeking recognition 
shall answer all questions in the application for regis -
tration and request(s) for comments issued by OED; 
disclose all relevant facts,  dates and information; and 
provide verified copies of documents releva nt to
 his 
or her good moral character and reputation. An indi -
vidual 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 c
haracter or reputation of an individual seeking 
registration or recognition, the OED Director shall conduct an investigation in to the good moral charac -
ter and reputation of t h
at individual. The investigation 
will be conducted 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 b y
 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 requ irements of this section. 
No individual shall be certified for registration or rec -
ognition by the OED Director until, to the satisfaction 
of the OED Dire ctor, the in dividual demonstrates his 
or her possession of good moral character and reputa -
tion.
(ii) The OED Director, in considering an 
application for registration by a n
 attorney, may accept 
a State bar’s character determination as meeting the 
requirements set forth in pa ragraph (g) of this section 
if, after review
, the Office finds no substantial dis-
crepancy between the information provided with his 
or her application for regi stration and the State bar 
application and moral character determination, pro -
vided that acceptance is no t inconsistent with other 
rules and the requirements of 35 U.S.C. 2(b)(2)(D).
(h) Good moral charac ter an
d reputation. Evi -
dence showing la
ck of good moral character and repu -
tation 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 re signatio
n from a State bar 
while under investigation.(1) Convi ction of felony or misdemeanor . An 
individual who has been convicted of a felony or a 
misdemeanor involving moral turpitu de, breach
 of 
trust, interference with the administration of justice, 
false swearing, misrepresen tation, fraud, deceit, brib -
ery, extortion, misappropria tion, theft, or conspiracy 
to commit any felony or misdemeanor, is presumed 
not to be of good moral ch aracter 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 registratio n the fees required by § 
1.21(a)(1)(ii) and (a)(10) of  this subchapter. The OED 
Director shall determine whether individuals con -
victed of said felony or  misdemeanor provided satis -
factory proof of reform and rehabilitation.
(i) An individual who has been convicted 
of a felony or a misdemeano r identified in paragraph 
(h)(1) of this section shall no t be eligible to apply for 
registratio n 
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 conv iction, 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 pr esumptions apply to 
the determination of good moral character and reputa -
tion of an individual convicted of said felo ny 
or mis -
demeanor:
(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 misdeme a
nor identified in paragraph (h)(1) of 
this section is conclusively  deemed not to have good 
moral character and reputatio n, and shall not be eligi -
ble to apply for registration for a period of two years 
after completion of the se nte
nce, deferred adjudica -
tion, and period of probation or parole, whichever is 
later.
(iii)
The individual, upon applying for reg -
istration, shall provide satisfa ctory evidence  that he or 
she is of good moral character and reputation.
(iv) Upon proof that a conviction has bee n
 
set aside or reversed, the indi vidual 
shall be eligible to 
file a complete application for registration and the fee 
required by § 1.21(a)(1)(ii) of this subchapter and, 
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R-253 Rev. 8, July 2010upon passing the registration examination, have the 
OED Director determine, in accordance with para -
graph (h)(1) of this section, whether, absent the con -
viction, the individual possesses good moral character and repu
tation.
(2) Good moral character and reput atio
n 
involving drug or alcohol abuse. An ind ivi
dual’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 satisfac -
torily demonstrate that he or she is complying with 
treatment and undergoing recovery.
(3) Moral character and reputation involving 
lack
 of candor . An individual’
s lack of candor in dis -
closing facts bearing on or relevant to issues concern -
ing good moral characte r and reputation when 
completing the application or any time thereafter may 
be found to be cause to deny reg i
stration on moral 
character and reputation grounds.
(4) Moral character and reputation involving 
suspension, disbarment, or  r
esignation from a profes -
sion. (i) An individual who has been disbarred or sus -
pended from practice of law or ot he
r profession, or 
has resigned in lieu of a disciplinary proceeding (excluded or disbarred on co nsent) shall be ineligible 
to apply for registration as follows: 
(A)  An individu al who h
as been dis-
barred from practice of law or other profession, or has resign ed in lieu of a disciplinary proceeding (excluded 
or disbarred on consent) sha ll be ineligible to apply 
for registration for a period of five years from the date 
of disbarment o r
 resignation.
(B) An individual who has been sus -
pended on ethical grounds from the practice of law or other profession shall be in eligible to apply for regis -
tration until expiration of th e period of suspension.
(C) An individ u
al who was not only dis -
barred, sus p
ended or resigned in lieu of a disciplinary 
procee ding, but also convicted in a court of a felony, 
or of a crime involvin g moral t
urpitude or breach of 
trust, shall be ineligible to  apply for registration until the conditions in pa ragraphs (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 fe es re
quired 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, suspen -
sion, or resignation; and provide satisfactory proof 
that he or she possesses good moral character and rep -
utation. The following presu mptions shall gover n
 the 
determination of good mora l character and reputation 
of an individual who has b
een licensed to practice law 
or other profession in any jurisdiction and has been 
disbarred, suspended on ethical grounds, or allowed 
to resign in lieu of discipline, in that jurisdiction.
(A) A copy of the record resulting in dis -
barment, suspension or resignation is prima facie  evi-
dence of the matters contai ned in the record, and the 
imposition of disbarme nt or suspe
nsion, or the accep -
tance of the re signation of  the individual shall be 
deemed conc
lusive that th e individual has committed 
professional misconduct.
(B) The individual is in eligible for 
regis -
tration and is deemed not to have good moral charac -
ter and reputation du
ring 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 res -
ignation in lieu of a disciplinary proceeding are set 
out below, and must be sh own to the satisfaction of 
the OED Director:
(A) T
he procedure in the disciplinary 
court was so lacking in notice or opportunity to be heard as  to cons
titute 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 consider -
ation when evaluating rehabilitation of an individual seeking a mor
al characte r and r
eputation determina -
tion. The factors enumerated below are guidelines to 
IP/N/1/USA/D/2 
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Page 255§ 11.7 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-254assist 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 circum -
stances, and whether the activity was an isolated event or part of a pattern ;
(2)
The age and education of the individ -
ual at the time of the misconduct and the age and edu-
cation of 
the individual at the present time;
(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 con s
ideration;
(4) Restitution by the individual to any 
person who suffered monetary losses through acts or 
omissions of the individual;
(5) Expungeme nt of a co
nviction;
(6) Successful completion or early dis -
charge from probation or parole;
(7) Abstinence from the use of controlled 
substa nces or alcohol for no t less than two years if the 
specific misconduct was attributable in part to the use 
of a controlled substanc e o
r alcohol, where abstinence 
may be demonstrated by, but  is not necessarily limited 
to, enrolling in and complying with a self-help or pro-
fessional treatment program;
(8) If the specific misconduct was attribut -
able in part to a medically recognized mental disease, disorder or illness, proof that the individual sought 
professional assistance, and 
complied with the treat -
ment program prescribed by the professional, and submitted letters from the treating psychiatrist/psy -
chologist verifying that the medically recognized 
mental disease, di sorder or ill ness will not impede the 
individual ’s ability to comp etently practice before the 
Office;
(9) Payment of the fine imposed in con-
nection with any cr iminal conviction;
(10)Correctio
n of behavior responsible in 
some degree for the misc onduct;
(11) Significant and conscientious involve -
ment in programs designed to provide social ben efits 
or to 
ameliorate social problems; and(12) Change in attitude from that which 
existed at the time of the act of misconduct in ques -
tion as evidenced by any or all of the following:
(i) Statements of the indivi dual;
(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 enforcement officials as to the individ -
ual’s social adjustments
; and
(iv) Statemen ts
 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 reputa -
tion of an individual seeking  reg
istration, providing 
the individual with the 
oppor tunity to create a record 
on which a decision is made . If, following inquiry and 
considerat ion 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 Direc -
tor shall issue to the individual a notice to show cause 
why the individual’s application for registration 
should not be denied.
(1) The individu al 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 St ate
s, and by any other reasonable means if 
the address is outs ide 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 re
cord, and de termine 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 reputa -
tion.
(k) Reapplication for registration . An individ -
ual who has been refused regi stration for lack of good 
moral character or reputation may reapply for regis -
tration two years after the da te of the decision, unless 
a sho r
ter period is otherwise orde re
d by the US P
TO 
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 appli -
cation for registration, and may reapply for registra -
IP/N/1/USA/D/2 
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Page 256PATENT RULES § 11.9
R-255 Rev. 8, July 2010tion 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 sat -
isfaction of the OED Director his or her possession of 
good moral character and reputation as prescribed in 
paragraph (b) of th
is section. Upon reapplication for 
registration, the individual  also shall complete suc -
cessfully the examination pr escribed in paragraph (b) 
of this section, even thou gh the individual has prev i-
ously pass
ed a registration examination.
 [Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004]
§  11.8 Oath and registration fee.
(a) After an individual passes the examination, 
or the examination is waived, the OED Director shall promptly publish a solicita tion for information con -
cerning the individ u
al’s good moral character and rep -
utation. The solicitation shall include the individual’s name, and busines s
 or co mmunication postal address.
(b) An individual shall not be registered  as an 
attorney under § 1
1.6(a), registered as an agent under 
§ 11.6(b) or (c), or granted limited recognition under §11.9(b) unless within two ye
ars 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 dec-
laration prescribed by the USPTO Director, and the registration fee set forth in  § 1.21(a)(2) of this sub -
chapter. An individual seek ing regi stration as an att
or-
ney 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 m o
nths 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 reg -
istration examination.
(d) Annual practitioner maintenance fee . A reg -
istered patent attorney or agent shall annually pay to 
the USP T
O Director a practitioner maintenance fee in 
the amount set forth in § 1.21 (a
)(7) of this subchapter. 
Individuals granted limited recognition under para -
graph (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 th is su 
bchapter. Adequate 
notice shall be published an d 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 mainte -
nance fee is assessed. Payment shall be due by the last day of the payment period. Persons newly registered or granted limited recognitio n shall not be 
liable for 
the annual practitioner maintenance fee during the fis -
cal year in which they are first registered or granted limited recognition. Failure to  comply with the provi-
sions of this paragraph (d) shall require the OED Director to subject a practitioner to a delinquency fee penalty set forth in  § 1
1.11(b)(1), and further financial 
penaltie s a
nd 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 characte r and 
reputation, be given limited 
recognition by the OE D Director to prosecute as attor -
ney or agent a specified patent application or speci -
fied patent applications . Limited recognition under 
this paragraph shall not exte nd further than the appli -
cation or applications sp ecified. Limited recognition 
shall not be granted while  individuals who hav e 
passe
d the examina tion or for whom 
the examination 
has been waived are awaitin g registration to practice 
before the Office in patent matters.
(b) A nonimmigrant alien residing in the United 
States and fulfilling the provis ions of § 11.7(a) and (b) 
may be granted limited recognition if the nonimmi -
grant alien is authorized by the Bureau of Citizenship 
and Immigration Services to  be emp
loyed or trained 
in the United States in t
he capacity of representing a 
patent applicant by presentin g or prosecuting a patent 
application. Limite d recognition shall be granted for a 
period consistent with the terms of authorized employment or training. Li mited recognition shall not 
be granted or extended to  a non-United States citizen 
residing abroad. If grante d, 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 inter -
national patent applicatio n only before the United 
IP/N/1/USA/D/2 
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Page 257§ 11.10 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-256States International Searching Authority and the 
United States Internationa l Preliminary Examining 
Authority, provided that the individual has the right to practice before the nationa l 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 Bu reau when the USPTO is 
acting as Receiving Office pursuant to PCT Rules 
83.1bis and 90.1.
 [Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004]
§  11.10 Restrictions on practice in patent mat-
ters.
(a) Only practitioners who are registered under 
§ 11.6 or individuals give n limited recognition under 
§ 11.9(a) or (b) are permi tted to prosecute patent 
applications of others before the Office; or represent 
others in any proceedings before the Office.
(b) Post em ployment agreem
ent of former 
Office employee. No individual who has served in the patent examining corps or elsewhere in the Offic e
 
may practice before the Office after termination of his 
or her service, unless he or she signs a written under -
taking 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,
(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 th
e representation of any o ther 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 w ithin a period of on e ye
ar 
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 fol -
lows:(i) Represent  and representation  mean 
acting as patent attorney or patent agent or oth
er rep -
resentative in any appea rance before the Of
fice, or 
communicating with an empl oyee of the Office with 
intent to influence.
(ii) Assist in any manner  means aid or help 
another person on a particular pate
nt or patent appli -
cation involving representat ion.
(iii) Pa
rticular patent or patent applica -
tion means any patent or patent application, including, 
but not limited to, a provis ional, substitute, interna -
tional, continuation, divisional, continuation-in-part, 
or reissue patent application, as well as any protest, 
reexamination, pe tition, appeal, or interference based 
on the patent or patent application.
(iv) Parti
cipate personally and substantial -
ly. (A) Basic requirements. The restrictions of § 
11.10 (
a)(1) apply only to those patents and patent ap -
plications in which a former Office  employee
 had 
“personal and substantial participation,” exercised 
“through decision, approval, disapp ro
val, recommen-
dation, the rendering of advice, investigation or other -
wise.” To participate personally  means directly, and 
includes the participation of  a subordinate when actu -
ally directed by the former Office employe e
 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 appear -
ance of such significance. It requires more than offi -
cial responsibility, knowledge, perfunctory involvement, or involvement on an admini strat
ive or 
peripheral issue. A finding of subst a
ntiality 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 pe ripheral involvements may 
be insubstantial, the single act of approving or partici -
pation in a critical step may be substantial. It is essen -
tial 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 partic ipation on subjects not 
directly involving th e substantive meri
ts of a patent or 
patent  app
lication may not be  “substantial,” even if it 
is time-consuming. An employee whos e of
ficial 
responsibility is the review of a patent or patent appli -
cation solely for compliance with administrative con -
trol or budgetary considerations and who reviews a 
IP/N/1/USA/D/2 
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Page 258PATENT RULES § 11.10
R-257 Rev. 8, July 2010particular patent or patent application for such a pur -
pose should not be regarded as having participated 
substantially in the patent  or patent application, 
except when such considerations also are the subje c
t 
of the employee’s proposed representation.
(C) Role of official responsibility in 
determining substan tial participation. Official respon -
sibility  is defined in paragrap h (b)(3)(v) of this sec -
tion. “Personal and substa ntial participation” is 
different from “official responsibility.” One’s respon -
sibility may, however
, play a role i
n determining the 
“substantiality” of an Offi ce employee’s participation.
(v) Official responsibility  means the di
rect 
administrative or operating authori
ty, whether inter -
mediate or final, and either exercisable alone or with others, and either personally or through subordinates, 
to approve,  dis
approve, or otherwise direct Govern -
ment 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 “offi-
cial responsibility”. All pa rticular matters under con -
sideration in the Office are under the “official 
responsibility” of the Director of the Office, and each 
is under that of any interm ediat e
 supervisor h a
ving 
responsibility for an employee who actually partici -
pates in the patent or pate nt application within the 
scope of his or her duties. A patent examiner would have “official responsibili ty” for the patent applica -
tions assigned to him or her
.
(B) Ancillary matters and official 
responsibility. Administrative  authority as used in 
paragraph (v) of this section means authority for plan -
ning, organizing and controlling a pate nt 
or patent 
application rather than auth ority to review or make 
decisions on ancillary aspect s
 of a patent or patent 
application such as the regu larity of budgeting proce -
dures, public or community relations aspects, or equal 
employment opportunity considerations. Resp on
sibil-
ity for such an ancillary consideration does not consti -
tute official responsibility fo r the particular patent or 
patent application, except when such a consideration 
is also the subject of the employe e
’s proposed repre -
sentation.
(C) Duty to inquire. In order for a former 
employee, e.g., former patent examiner, to be barred 
from representing or assistin g in representing another as to a partic ula
r patent or patent application, he or 
she need not have known, while employed by the 
Office, that the patent or patent application was pend -
ing under his or her official responsibility. The former 
employee has a reasonable duty of inquiry to learn 
whethe r the patent or patent ap
plication 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 th e 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 re cord of only patent appli -
cation numbers of the applications actually acted upon by decision or recommendation, as well as those applications under the  employee
’s official responsibil -
ity which he or she has not acted upon.
(D) Self-disqualification. A former em -
ployee, e.g., former patent examiner, cannot avoid the 
restrictions of this section through self-disqualifica -
tion with respect to a patent or patent application for 
which he or she otherwise had official responsibility
. 
However, an employee who through self-disqualifica -
tion does not participate pe rsonally and substantially 
in a particular pat e
nt or patent application is not sub -
ject to the lifetime restriction of paragraph (b)(1) of 
this section.
(vi) Pending  means that the matter was in 
fact referred to or under cons
ideration 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 dat
e when the 
employee’s official responsibility in a particular area ends, not from the terminatio n of service in the Office, 
unless the two occur simu ltaneously. The prohibition 
applies to all particular pate nts or patent applications 
subject to such official re sponsibility in the one-year 
period before termination of such responsibility.
(c) Former employees of the Office. This sec -
tion imposes restrictions ge nerally parallel to those 
imposed in 18 U.S.C. 207(a) and (b)(1). Thi
s section, 
however ,
 does not interpret these statutory provisions 
or any other post-employment restrictions that may apply to former Office empl oyees, and such former 
employees should not assume that conduct not pro -
hibited by this section is otherwise permissible. 
IP/N/1/USA/D/2 
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Page 259§ 11.11 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-258Former employees of the Office, whether or not they 
are practitioners, are encouraged to contact the 
Department of Commerce fo r information concerning 
applicable post-emplo yment restrictions.
(d) An employee of the Office may not prose -
cute or aid in any manner in the prosecution of any 
patent appl ication 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]
§  11.11 Administrative 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 tele phone numbe
r, 
as well as every change to any of said addresses or telephone numbers within thir ty days of the date of 
the change. A registered atto rney or agent shall, in 
addition to any notice of change of address and tele -
phone number filed in individual patent applications, separately file written notice of the change of address 
or telephone number to the OED Director. A regis -
tered practitioner who is an a ttorney in good standing 
with the bar of the highest co urt of one or more States 
shall provide the OED Dir ector with th e S
tate bar 
identification number associate d
 with each member -
ship. The OED Director shal l 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 reg -
istered practitioner recognized to practice before the 
Office in patent case s.
(b) Administrative s
uspension.  (1) Whenever it 
appears that a registered pa tent 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 recogni -
tio
n advising of the noncompliance, the consequence 
of being administratively suspended under pa ragrap
h 
(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 para graph (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 sub -
chapter within sixty days af ter the date of such notice.
(2) In the event a registered patent attorney, 
registered patent agent or person granted limited rec -
ognition fails to comply with the notice of paragraph (b)(1) of this section with in t
he time allowed, the 
OED Director shall publish and send in the ma nner 
pr
ovided for in paragraph (b)(1) of t h
is 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 autho -
rized 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 OE
D 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 serv e the OED Director with 
a copy of the response at the 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 co mpliance with the notice 
requirements under this section or the failure of the person to pay the requisit e fees, the USPTO Director 
IP/N/1/USA/D/2 
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Page 260PATENT RULES § 11.11
R-259 Rev. 8, July 2010shall 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 dis -
missing the Rule to Show Ca use. Nothing herein shall 
permit an administratively suspended registered patent attorne y
, 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 discip line for his or her conduct 
prio
r to, during, or after the period he or she was 
administratively suspended.
(6) An administratively suspended attorney, 
agent or person granted limited recognition is prohib -
ited from practicing before the Office in pa tent 
cases 
while administratively suspen ded. An attorney, agent 
or person gr an
ted limited recognition who knows he 
or she has been administratively suspended under this section will be subject to di scipline for failing to com -
ply with the provisions  of this paragraph .
(c) Administrative Inactivation.  (1) Any regis -
tered prac titione r who sha ll become  employed 
by the 
Office shall comply with § 10
.40 of this subchapter 
for withdrawal from the ap plications, patents, and 
trademark matters wherein he or she represents an applican t or o
ther person, and notify the OED Direc -
tor in writing of said employment on the first day of 
said employment. The  name of any registered practi -
tioner employed by the Offi ce shall be
 endorsed on 
the roster as administratively inactive. The practitio -
ner shall not be respon s
ible for payments of the 
annual practitioner mainte nance fee each complete 
fiscal year while the practitioner is in administratively inactive status. Upon separation from the 
Office, the 
practitioner may request re activation by completing 
and filing an application, Data Sheet, signing a writ -
ten undertaking required by § 11.10, and paying the 
fee set forth in § 1.21(a)(1)(i) of this subchapter. Upon restoration to active st atus
, the practitioner shall be 
responsible for paying the annual practitioner mainte -
nance fee for the fiscal year  in which the practitioner is restored to active status. An administratively inac -
tive practitioner remains subject to the provisions of 
the Mandatory Disciplinary Rul
es identified in § 
10.20(b) of this subchapter, and to pro
ceedings and 
sanctions under §§ 11.19 through 11.58 for conduct that violates a provision of the Mandatory Disciplin -
ary 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 practitio -
ner does not request active status or another status, the 
practitioner will be endorsed on the roster as voluntar -
ily inactive and be subject to the provisions of para -
graph (d) of this section.
(2) Any registered practiti oner who is a judge 
of a 
court of record, full- time court commissioner, 
U.S. bankru ptcy ju
dge, U.S. magistrate judge, or a 
retired judge who is eligib le for temporary judicial 
assignment and is not engage d in the practice of law 
may request, in writing, th at 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 adminis -
tratively inactive. The practitioner shall not be respon -
sible for payment of the annual practitioner maintenance fee for each complete fiscal year the 
practitioner is in administra tively inactive status. Fol -
lowing separation from th e bench, t
he practitioner 
may request restoration to active status by completing and filing an application, Data S h
eet, signing a writ -
ten 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 practiti
oner shall be 
responsible for paying the annual practitioner mainte -
nance fee for the fiscal ye ar in which the practitioner 
is restored to active status.
(d) Voluntary Inactivation . (1) Except as pro -
vided in paragraph (d)(4) of this section, any regis -
tered practitioner may voluntarily enter in
active 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 sub -
chapter for each complete fiscal year the practitioner 
continues to be in vo luntary inactive status.
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Page 261§ 11.11 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-260(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 inacti-vation.
(4) A registered practitioner who is in arrears 
in paying annual practitio ner maintenance fees or 
under administrative suspen sion for annual practitio-
ner 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 pate nt ca
ses while  in voluntary inactive sta -
tus. A practitioner in voluntary inactive status will be subject to discipline for fa iling to comply with the 
provisions of this paragraph. Upon acceptanc e of the 
request for voluntary 
inactive status, the practitioner 
must comply with the provis ions of § 10.40 of this 
subc
hapter.
(6) Any registered practitioner whose name 
has been endorsed as volunt arily inactive pursuant to 
paragraph (d)(1) of this section and is not under inves -
tigation, not subject to a disciplinary proceeding, and not in arrears for the annua l 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 complete d application for registra -
tion on a form supplied by the OED Director furnish -
ing 
all requested informati on and material, including 
information and material pertaining to the practitio -
ner’s moral character and reputation under § 
11.7(a)(2)(i) during the period  of inactivation, a decla -
ration or affidavit attesting to the fact that  the 
practi -
tioner has read the most recent revisions of the patent laws and the rules of practice before the Of
fice, and 
pays the fees set forth in §§ 1.21(a)(7)(iii) and (iv) of this subchapter.
(e) Resignation . A regist
ered practitioner or a 
practitioner recognized under  § 11.14(c), who is nei -
th
er under investigation under § 11.22 for a possible 
violation of the Mandatory Disciplinary Rules identi -
fied in §
 10.20(b) of Part 10 of this subchapter, subject 
to discipline under §§ 11.2 4 or 11.25, nor a practitio -
ner against whom no probable ca use
 has been found 
by a panel of the Committ ee on Discipline under § 
11.23(b), may resign by notifyin g
 the OED Director 
in writing that he or she de sires to resign. Upon accep -tance in writing by the OED Director of such notice, that registered practitioner or practitioner under § 
11.14 shall no longer be elig ible 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 inform ation regarding the practi-
tioner’
s conduct comes to the attention of the OED 
Director or any grievance is made about his or her 
conduct while he or she engaged in practice before the 
Office. The name of any registered practiti oner 
whose 
resignation is accepted shall be removed from the reg -
ister, endorsed as resigned, and notice thereof pub-lished 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 sub -
chapter.
(f) Administrative reinstatement.  (1) Any regis -
tered practitioner who has been administratively sus -
pended 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 re instatement on an appli -
cation form supplied by the OED Director, demon -
strated compliance with th
e 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 pursu an
t to pa ragrap
h (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 w ith 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 administra -
tively suspended for two or more years before the date the Office receives a completed application from the person who resigned or was administratively sus -
pended must  als
o pass th e 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, d u
ring, or after the 
period of his or her administrative suspension or res -
ignation.
(2) Any registered practitioner whose regis -
tration has been administratively inactivated pursuant to paragraph (c) of this s ection may be reinstated to 
the register as may be appropriate provided w ithin
 
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Page 262PATENT RULES § 11.15
R-261 Rev. 8, July 2010two years after his or her employment with the Office 
ceases or within two years after his or her employ -
ment in a judicial capacity ceases the following is filed with the OED Director: a request for reinstate -
ment, a completed applicat ion for registration on a 
form supplied by the OED Director furnishing all reques ted 
information and material, and the fee set 
forth in § 1.21(a)(9)(ii) of th is su
bchapter. Any regis -
tered practitioner inactivated or  reinstated is subject to 
investigation and discipline for his or her conduct before, d
uring, or after the period of his or her inacti-
vation.
 [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]
§  11.14 Individuals who may practice before the 
Office in trademarks and other non-
patent matters.
(a) Attorneys . Any individual who is an attor -
ney as defined in 
§ 11.1 may represent others before 
the Office in trademark and other non-patent matters. 
An at
torney 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 en title an individual to 
practice before the Office in trademark matters. 
(b) Non-lawyers . Individuals who are not attor -
neys 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 O
ffice in trademark matters under 
this chapter prior to Janua ry 1, 1957, will be recog -
nized as agents to continue practice before the Office 
in trademark matters. Except as provided in the pre -
ceding sentence, registration as a patent agen
t does 
not itself entitle an individu al to practice before the 
Office in trademark matters. 
(c) Foreigners . Any foreign attorney or agent 
not a resident of the United States w h
o shall file a 
written application for reci procal recognition under 
paragraph (f) of this section and prove to the satisfac -
tion o f
 the OED Director that he or she is registered or 
in good standing before the patent or trademark of fice 
of the c
ountry in which he or she resides and practices and is possessed of good moral character and reputa -
tion, may be recognized for the limited purpose of 
representing parties located in  such country before the 
Office in the presentation and prosecution of trade -
mark matters, provided: th
e patent or trademark office 
of such country allows substantially reciprocal privi -
leges t
o those permitted to  practice in trademark mat -
ters before the Office. Recognition under this paragraph shall continue only during the period that 
the conditions specifie d in
 this paragraph obtain. 
(d) Recognition of any individual under this 
section shall not be construe d as sanctioning or autho -
rizing the performance of any act regarded in the 
jurisdiction where performed  as the unauthorized 
pr
actice of law. 
(e) No individual other than those specified in 
paragraphs (a), (b), and (c) of this section will be per -
mitted to practice before the 
Office in trademark mat-
ters on behalf of a client. An y ind
ividual may appear 
in a trademark or other non-patent matter in his or h er 
own
 behalf. Any individual may appear in a trade -
mark matter for: 
(1) A firm of which he or she is a member, 
(2) A partnership of which he or she is a part -
ner, or 
(3) A corporation or association of which he 
or she is an officer and which he  o
r she is authorized 
to represent, if such firm, partnership, corporation, or 
association is a party to a trademark proceeding pend -
ing before the Office. 
(f) Application for reciprocal recognition . An 
individual seeking reciproc
al recognition under para -
graph (c) of this section, in addition to providing evi -
dence satisfying the provisions of paragraph (c) of 
this section, shall apply in writing to the OED Direc-
tor for reciprocal recognitio n, and shall pay the appli -
cation fee required by § 1.21(a)(1)(i) of this subchap
ter. 
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the 
Office may be suspended, excluded, or reprimanded 
in accordanc e
 with the provisions of this Part. Any 
practitioner who is suspende d or excluded under this 
Part shall not be entitled to practice before the Office 
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Page 263§ 11.16 - 11.17 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-262in 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]
§  11.18 Signature and certificate for correspon-
dence 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 disci -
plinary proceeding, except for corresp on
dence 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 signatur e, personally signed by 
such practitioner, in complia nce 
with § 1.4(d)(1) of 
this subchapter. 
(b) By presenting to the Office or hearing 
officer in a disciplinary proceeding (whether by sign -
ing, filing, submitting, or la ter advocating) any paper, 
the party presenting such pa per, whether a practitioner 
or non-practitioner, is certifying that— 
(1) All stateme n
ts made therein of the party’s 
own knowledge a r
e true, all statements made therein 
on information and belief are believed to be true, and all statemen ts 
made therein are made with the knowl -
edge that whoever, in any matter within the jurisdic -
tion 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 fraudul ent statements or represen -
tations, or knowingly and willfully makes or uses any false writing or document knowing the same to con -
tain any false, fictitious, or fraudulent statement or 
entry
, shall be subject to the penalties set forth under 
18 U.S.C. 1001 and any othe r ap
plicable criminal stat -
ute, and vio l
ations 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 rea -
sonable under the circumstances, 
(i) T he
 paper is not being presented for 
any improper purpose, such as to harass some one or 
to cause
 unnecessary delay or needless increase in the 
cost of any proceed i
ng before the Office; (ii) The other legal contentions therein are 
warranted by existing law or by a nonfrivolous argu -
ment for the extension, modification, or reversal of existing law or the establishment of new law; 
(iii) The allegations an d other factual con -
tentions have evidentiary su pport or
, if specifically so 
identified, are likely to have evidentiary support after a reasonable opportunity fo r further investigation or 
discovery; and 
(iv) The denials of factual contentions are 
warranted on the evidence, or  if specifically so identi -
fied, are reasona bly bas
ed 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 rea -
sonable opportunity to resp ond, subject to such  sanc -
tions or actions as
 deemed appropriate by the USPTO 
Director, which may include, but are not limi ted 
to, 
any combination of— 
(1) Striking the offending paper;
(2) R eferring a practitio ner’
s conduct to the 
Director of Enrollment an d Discipline for appropriate 
action;
(3)
Precluding a party or practitioner from 
submitting a paper, or p
resenting or contesting an 
issue; 
(4) Affecting t h
e weight given to the offend -
ing paper; or 
(5) Terminating the proceedings in the 
Office.
(d) Any practitioner violating the provisions of 
this section may also be su bject to disciplinary action. 
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
Subpart C — Investigations and 
Disciplinary Proceedin gs; Jurisdiction, 
Sanctions, Investigations, and Proceedings 
§  11.19 Disciplinary jurisdiction; Jurisdiction to 
transfer to disability inactive status.
(a) All practitioners engaged in practice before 
the Office; all practitioners administratively sus -
pended; all practitioners regi stered to practice before 
the Office in patent cases; all practitioners inactivated; 
all practitioners authorized un der § 11 .6(d) to take tes
-
timony; and all practitioners transferred to disability 
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Page 264PATENT RULES § 11.20
R-263 Rev. 8, July 2010inactive status, reprimanded, suspended, or excluded 
from the practice of law by  a duly constituted author -
ity, including by the USPTO Director, are subject to the disciplinary jurisdiction of the Office. Practitio -
ners who have resigned shall also be subject to s u
ch 
jurisdiction with respect to conduct undertaken prior 
to the resignation and conduct in regard to any prac-tice before the Office following the resignation. 
(b) Grounds fo r discipli
ne; Grounds for trans-
fer to disability inactive status . The following, 
whether done individually by a practitioner or in con -
cert with any other person or persons an d wh
ether or 
not done in the course of providing legal services to a 
client, or in a matter pending before the Office, consti -
tu
te 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 j urisdiction or disciplinary disqualification 
from participating in or appea
ring before any Fede ral 
p
rogram or agency; 
(iii) Failure to comply with any order of a 
Court discipl ining a practiti oner, or any final  decision 
of the USP TO Director in a disciplinary matter;  
(iv)Viol
ation of a Mandatory Disciplinary 
Rule identified in § 10.20(b) of Part 10 of this Sub -
chapter; or 
(v) Violation of the oa th or declaration 
taken by the practitioner. See § 1
1.8. 
(2) Grounds for transfer to disability inactive 
status include : 
(i) Being transferred to disabil
ity inactive 
status in another jurisdiction; 
(ii) Being judicially declared incompetent, 
being j udicially ordered to  be involuntarily committed 
after a hearing on  
the ground s of insanit
y, incompe -
tency or disability, or being placed by court order 
under guardianship or conservatorship; or 
(iii) Fil
ing a motion requesting a disciplin -
ary proceeding be held in abeyance because the prac -
titioner is suffering from a disability or addiction that makes it impossible for the practit ioner to adequately 
defend the charges in the disciplinary proceeding. 
(c) Petitions to disqual ify a practitioner in ex 
parte or inter part
es matters in the Office are not gov -
erned by §§ 11.19 through 11.60 and will be handled on a case-by-case basis unde r such conditions as the 
USP
TO Director deems appropriate. 
(d) The OED Director may refer the existence 
of 
circumstances suggesting unauthorized practice of 
law to the authorities in the
 appropriate jurisdic -
tion(s). 
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.20 Disciplinary sanctions; Transfer to dis -
ability inactive status.
(a) Types of discipline . The U SPTO Director , 
after notice and opportunity
 for a hearing, and where 
grounds for discipline exist, may impose on a practi -
tioner 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 . Probatio n may
 be imposed in 
lieu of or in addition to any other disciplinary sanc -
tion. Any conditions of prob ation shall
 be stated in 
writing in the order imposing probation. The order 
shall also state whether, an d to what extent, the  prac -
titioner shall 
be required to notify clients of the proba -
tion. The order shall establish procedures for the supervision of probation. Violation of any condition 
of probation shall be cause for the probation to be 
revo
ked, and the disciplinary sanction to be imposed 
for the remainder of the pr obation 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 impo ses discipline, the practitio -
ner may be required to make  restitution either to per -
sons 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 lim it
ed to
 the return of 
unearned practitioner fees or  misappropriated client 
funds. Any other reasonable condition may also be imposed, including a requir ement that the practitioner 
take and pass a professional responsibility examina -
tion. 
(c) Transfer to disability inactive status . The 
USPTO Director, after notice and oppo rtun 
ity for a 
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Page 265§ 11.21 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-264hearing may, and where grounds exist to believe a 
practitioner has been transferred to disability inactive 
status in another jurisdictio n, or has been judicially 
declared incompetent; judicially ordered to be invol -
untarily 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] 
§  11.21 Warnings.
A warning is neither public nor a disciplinary sanc -
tion. The OED Director ma y conclude an investiga-
tion with the issuance of a warning. The warning shall contain a brief statement of facts and Mandatory Dis -
ciplinary Rules identified in § 10 .2
0(b) of Pa rt 
10 of 
this Subchapter relevant to the facts. 
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]
§  11.22 Investigations. 
(a) The OED Director is authorized to investi -
gate 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 abatemen t of 
an investigati
on.
(b) Any person possessing information or evi -
dence concerning possible grounds for discipline of a 
practitioner may report the in formation or evi dence to 
the OED Director. The OED Director may request 
that the report be presented in the form of an affidavit 
or declaration.  
(c) Information or eviden ce co
ming from any 
source  whic h prese nts or alleges fa cts sugges ting pos -
sible grounds for discipline of a practitioner will be 
deemed a g rievance.  
(d) Preliminary scr eening of  information or evi -
dence. The OED Dire ctor shall examine a l
l informa -
tion or evidence concernin g
 possible grounds for 
discipline of a practitioner. (e) Notification of investi
gation . The OED 
Director shall notify th e 
practitioner in writing of the 
initiation of an investiga tion into whether a practitio -
ner has engaged in conduct constituting p o
ssible 
groun ds fo
r 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 gro
unds fo
r discipline of a practi -
tioner from: 
(i) The  griev
ant, 
(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 informa -
tion and evidence regarding possible grounds for dis -
cipline of a practitioner from a non-grieving client 
either after obtaining the co nsent of the practi tioner or 
upon a finding by a Contact Member of the Commit -
tee on Discipline, appoin ted in accordance with § 
11.23 (
d), that good cause ex ists to believe that the 
possible gro u
nd for discipline alleged has occurred 
with respect to non-grieving  clients. Neither a request 
for, nor disclosure of, su ch information shall consti -
tute 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 th is section to a Contact 
Member of the Committee on Discipline, such Con -
tact Member shall not, with  respect to 
the practitioner 
connected to the OED Direct or’s request, participate 
in the Committee on Discipline panel that renders a 
probable cause determin ation
 under paragraph (b)(1) 
of this section concerning such practitioner, and that 
forw ards the probable 
cause finding and recommen -
dation to the OED Director under paragraph (b)(2) of 
this section. 
(h) Disposition of investigation . Upon the con -
clusion of an investigation, the OED Director may: 
(1) Close the investiga tion without issuing a 
warning, or taking disciplinary action; 
(2) Issue a warning to the practitioner; 
(3) Institute formal charges upon the approv -
al of the Committee on Discipline; or 
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Page 266PATENT RULES § 11.24
R-265 Rev. 8, July 2010(4) Enter into a settlement agreement with 
the practitioner and submit th e 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 Comm ittee on Discipline if the 
OED Director determines that: 
(1) The information or evidence is u nfo
und-
ed;  
(2) The information or evidence rela tes to 
mat
ters not within the jurisdiction of the Office; 
(3) As a matter of law,
 the conduct about 
which information  or evid ence has been  obtained does 
not constitute 
grounds for di scipline, even if the con -
duct may involve a legal dispute; or  
(4) The available evidence is insufficient to 
conclude that there is prob able cause to believe that 
grounds exist for discipline.  
[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.23 Committee on Discipline.
(a) The USPTO Director shall appoint a Com -
mittee on Discipline. The Committee on Discipline 
shall consist of at least three employees of the Office. 
None of the Committee member s shall report directly 
or indirectly to the OED Director or any employee 
designated by the USP
TO Director to decide disci -
plinary 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 Com -
mittee members 
will constitute a panel of the Com -
mittee. 
(b) Powers and duties of the Committee on Dis -
cipline . The Committee shall have  the power and duty 
to: 
(1) Meet in panels at the request of the OED 
Director and, after review ing evidence  
presented  by 
the
 OED Director, by m
ajority 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 Commit -
tee on Discipline or of any panel. 
(d) The Cha i
rperson 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] 
§  11.24 Reciprocal discipline.
(a) Notification of OED Director. Within thirty 
days of being publicly censured, publicly repri-manded, su bjecte
d to probation, disbarred or sus -
pended by another jurisdiction, or being disciplinarily 
disqualified from participatin g in or appearing before 
any Federal program or agency, a practitioner subject 
to the disciplinary jurisdiction of the Office shall notify the OED Di rector in writing of the same. A 
pr
actitioner is deemed to be disbarred if he or she is 
disbarred, excluded on consen t, or has resigned in lieu 
of a disciplinary proceeding.  Upon receiving notifica -
tion from any source or otherwise learning that a prac -
titioner subject to the disciplinary jurisdiction of the Office has been so publicly censured, publicly repri -
manded, subjected to
 probation, disbarred, suspended 
or disciplinarily disqualifie d, the OED Director shall 
obtain a certified copy of the record or order regard -
ing the public censure, pu blic 
reprimand, probation, 
disbarment, suspension or disciplinary disqualifica -
tion and file the same with  the USPT O Director
. The 
OED Director shall, in addition, without Committee on Discipline authorizatio n, file with the USPTO 
Director a complaint comply ing with §  1
1.34 against 
the practitioner predicated up on the public censure, 
public reprimand, probation, disbarment, suspension or disciplinary disqualification. The OED Director 
shall request the USPTO Direct or 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 be ing so publicly censur
ed, 
publicly reprimanded, subjected to probation, dis -
barred, 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 con -
taining: 
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Page 267§ 11.24 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-266(1) A copy of the record or order regarding 
the public censure, public reprimand, probation, dis -
barment, suspension or di sciplinary disqualification; 
(2) A copy of the complaint; and
(3) An order directing the practitioner to file 
a res ponse with the USPTO Director and the OED 
Director,  within
 forty days of the date of the 
notice 
establishing a genuine issue of material fact predi -
cated upon the grounds set forth in paragraphs 
(d)(1)(i) through (d)(1)(iv) of this section that the 
imposition of the identical pu blic censure, public rep -
rimand, probation, disbarment, suspension or disci-
plinary disq ualificati
on 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, suspen sion imposed by an oth
er jurisdic -
tion or disciplinary disqualification imposed in the 
Fede
ral 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  Di
rector shall hear the ma tte
r on the doc-
umentary record unless the USPTO Director deter -
mines that an oral hearing is necessary. After 
expiration of the forty days from the date of the notice pursuant to provi sio
ns of paragraph (b) of this section, 
the USPTO Director shall consider any timely filed response and shall impose the identical public cen-sure, public reprimand, probation, disbarment, sus -
pension or disciplinary disqualification unless the practitioner clearly and convincingly demonstrates, and the USPTO Director find s there is a genuine issue 
of material fact that:
(i) The procedure elsewhere was so lack -
ing in notice or opportunity to be heard as to consti -
tute 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 cen -
sure, public repr iman
d, probation, disbarment, sus-
pension 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, d i
sbarred, 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 determina -
tion because there is a genuine  issue 
of material fact, 
the USPTO Director shall enter an appropriate order: 
(i) Referring the comp laint to a hearing 
officer for a formal hearing and entry of an initial 
decision in accordance with  the other rules in this 
part, an d 
(ii)
Directing the prac titioner to file an 
answer to the complaint in  accordance with § 11.36. 
(e) Adjudication in anothe r jurisdiction or Fe d-
eral agency or pr
ogram . In all other respects, a final 
adjudication in another jurisdiction or  Federal ag
ency 
or program tha
t a practitio ne
r, whether or not admitted 
in that jurisdiction, has been guilty of misconduct 
shall establish a prima facie case by clear and con-
vincing 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) Recipr ocal discipline —action where prac-
tice has ceased . Upon request by the practitioner, 
reciprocal discipline may be imposed 
nunc pro tu nc
only 
if the practitioner promptly notified the OED 
Director of his or her censure, public reprimand, pro-bation, disbarment, suspension or disciplinary dis -
qualification in another ju risdic tion, a nd establishes 
by clear and convincing ev idence that the practitioner 
voluntarily ceased all activitie s related to prac tice 
before the Of fice and complie d with all provisions of 
§ 11.58. The effectiv e date of an
y public censure, pub -
lic reprimand, probation, suspension, disbarment or disciplinary disqualification imposed nunc pro tunc 
shall be the date the practi tioner voluntarily ceased all 
activities related to practice before the Office and 
complied with all provisions of § 11.58. 
(g) Reinstatement following reciproc
al disci -
pline proceeding. A practitioner ma y petition for rein -
statement under conditions set forth in § 11.60 no 
sooner than completion of the period of reciprocal 
discipline imposed, and compliance with all  
provi -
sions of § 11.58.
IP/N/1/USA/D/2 
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Page 268PATENT RULES § 11.25
R-267 Rev. 8, July 2010[Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.25 Interim suspension and discipline based 
upon conviction of committing a serious 
crime.
(a) Notification of OED Director . Upon being 
convicted of a crime in a co urt of the United States or 
any State, or violating a  criminal law of a foreign 
country
, a practitioner subject to the disciplinary juris -
diction 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 convic ted of a crime, the OED 
Director shall make a preliminary determination whether the crime constitutes a serious crime warrant -
ing interim suspension. If the crime is a serious crime, the OED Director shall file with the USPTO Director proof of the conviction an d requ
est the USPTO Direc -
tor to issue a notice and order set forth in paragraph (b)(2) of this section. The OED Director shall in addi-
tion, without Committee on Discipline authorization, 
file with the USPTO Director a complaint against the practitioner complying with § 11.34 predicated upon 
the co
nvicti on
 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 viol ation of a Mandatory Disci -
plinary Rule identified in § 10.20 (b) of this subchap -
ter coming to the attention of the OED Director.
(b) Interim suspen sion and r
eferral for disci -
plinary proceeding . All proceedings under this section 
shall be handled as expeditiously as possible.
(1) The USPTO Director has authority to 
place a practiti oner on interim suspension aft
er hear -
ing the request for interim suspension on the
 docu -
mentary record.
(2) Notification served  on practitioner . Upon 
receipt of a certified copy of the court record, docket 
entry or judgment demonstr ating that the practitioner 
has be
en so convicted toge ther
 with the complaint, the 
USPTO Director shall forthwith issue a notice directed to the practitioner in accordance with §§ 
11.35(a), (b) or (c), and to the OED Director, contain -
ing:
(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 D
irector 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 lack -
ing in notice or opportunity to be heard as to consti-
tute a deprivation of due process.
(3) Hearin
g and final order on request for 
interim suspension . The request for interim suspen -
sion shall be heard by the USPTO Director on
 the doc -
umentary record unless the USPTO Director 
determines that the practi tioner’s response establishes 
a genuine issue of material fact that: The crime did 
not const itute a serious cr
ime, the practitioner is not 
the person who committed the crime, or that the con -
viction was so lacking in no tice or opportunity to be 
heard as to constitute a depr ivation of due process. If 
the USPTO Director determines that there is no genu -
ine issue of material  fa
ct 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 determi -
nation because there is a genuine issue of material fact, the USPTO Director shall enter a final order dis -
missing the request and enter a further order referring the complaint to a hearing officer for a hearing and 
entry of an init ial decisi on in ac
cordance with the 
other rules in this par
t and directing the practitioner to 
file an answer to the comp laint 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 ma y 
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 orde r imposing interim suspen -
sion, the USPTO Director shall refer the complaint to a hearing  of
ficer to conduct a formal disciplinary pro -
ceeding. The formal disci plinary proc eedin
g, how -
ever, shall be stayed by the hearing officer until all 
IP/N/1/USA/D/2 
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Page 269§ 11.26 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-268direct appeals from 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) Convic -
tion 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 judg ment of co nviction in a 
court of the 
United States or any State shall establish a prima facie 
case by clear and convincing evidence that the practi -
tioner 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 co
untry . For pur-
poses 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 co
nviction in a court of  a for
eign country 
shall establish a prima facie case by clear and con-vincing evidence that th e practitioner was convicted 
of a serious crime and that the conviction was not 
lacking in notice or opportunity to be heard as to con-
stitute a deprivation of du e process. However
, nothing 
in this paragraph shall preclude the practitioner from 
demonstrating by clear and convincing evidence in 
any hea r
ing on a request fo r interim suspension there 
is a genuine issue of materi al 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 whethe r a disciplinary sanction 
should be entered.
(d) Crime  determined not to be serious crime . If 
the USPTO Director determi nes that the crime is not a 
serious cri me, the complain t shall be referred to the 
OED Director fo r investigatio n under § 11.22 and p
ro-
cessing as is appropriate.
(e) Reinstatement —(1)  Upon reversal or set -
ting aside a finding of  guilt or a conviction . If a practi-
tioner suspended solely und er the provisions of 
paragraph (b) of this section demonstrat es tha
t the 
un
derlying find in
g of guilt or conviction of serious 
crimes has been reversed or vacated, the order for 
interim suspension shall be  vacated and the practitio -
ner 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 susp ension will not terminate 
any 
other disciplinary proceeding then pending 
against the practitioner, the disposition of which shall be determined by the hearin g officer before whom the 
matter is pending, on the basis of all available evi -
dence other than the finding of guilt or conviction.
(2) Following conviction of a serious crime . 
Any practitioner convicted of a serious crime and dis -
ciplined in whole or in part  in regard to that convic -
tion, may petition for rein statement under conditions 
set forth in § 11.60 no sooner than five years after being discharg e
d following completion of service o f
 
his or 
her sentence, or after completion of service 
under probation or parole, whichever is later.
(f) Notice to clients and others of interim sus-
pension . 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 ]  
§  11.26 Settlement.
 Before or after a complain t under § 11.34  is filed, 
a settlement conference may occur between the OED Director and the practitione r. Any offers of compro -
mise and any st
atements made during the course of 
settlement discussions shall not be admissible in sub -
sequent proceedings. The OED Director may recom -
mend to the USPTO Director any settlement terms 
deemed appropria te, includin g steps taken to correct 
or mitigate the matter form ing the basis of the action, 
or to prevent recurrenc
e of the same or similar con -
duct. A settlement agreement shall be effective only 
upon  e
ntry of a final decision by the USPTO Director.  
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.27 Exclusion on consent.
(a) Required affidavit . The OED Director may 
confer with a practitioner concerning possible viola -
tions by the practitioner of the Rules of Professional 
Conduct whether or not a disciplinary pro c
eeding has 
been instituted. A practitione r who is the subject of an 
investigation or a pen d
ing disciplinary proceeding 
based on allegations of gr ounds for discipline, and 
who desires to resign, may only do so by consenting to exclusion and delivering to the OED Director an 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 270PATENT RULES § 11.28
R-269 Rev. 8, July 2010affidavit 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 th e impli
cations of con -
senting to exclusion;
(2) That the practitioner is aware that there is 
currently pending an investigation into, or a proceed-
ing involving allegations of misconduct, the nature of 
which shall be specifically set  forth in the affidavit to 
the satisfaction of the OED Director;
(3) T
hat the practitioner acknowledges t
hat, 
if and when he or she applies for reinstatement under 
§ 11.60, the OED Director will conclusively presume, for the limited purpose of de termining th e appli
cation 
for reinstatement, that:
(i) The facts upon which the investigation 
or complaint is based are true, and
(ii) The practitioner could not have suc -
cessfully defended himself or herself against the alle -
gations in t h
e 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 
USPT
O 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 require -
ments 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 Di rector shall notify the hear -
ing of fice
r. The hearing officer shall enter an order 
transferring the disciplinary proceeding to the USPTO Director, who may enter an order excluding the practi -
tioner on consent.
(d) Reins
tatement . Any practitioner excluded 
on consent under this section may not petition for 
reinstatement for five years. A practitioner excluded on consent who intend s to
 reapply for admission to 
practice before the Office mu st comply with the pro -
visions of § 11.58, and apply for reinstatement in accordance with § 11.60. Fa ilure to comply with the 
provisions of § 11.58 constit
utes grounds for denying 
an application for reinstatement. [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.28 Incapacitated practitioners in a disciplin -
ary proceeding.
(a) Holding in abeyance  a disciplinary pro -
ceeding because of incapa citation due to a current 
disability or addiction —(1) P
ractitioner’s motion . In 
the course of a di scip
linary  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 pro -
ceeding in abeyance based on the contention that the 
practitioner is suffering from a disability or addiction that makes it impossible fo r the practitioner to ade -
quately defend the charges in the disc iplina
ry pro -
ceeding.
(i) Content of practitioner ’s motion . The 
practitioner’s motion shall, in addition to any other 
requirement of § 11.43, include or h
ave 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 fo rth and establishing any 
of the material facts on which the practitioner is rely -
ing;  
(C) A statement that the practitioner 
acknowle
dges the alleged incapacity by reason of dis -
ability or addiction;
(D) Wri tten consent t
hat the practitioner 
be transferred to disability inactive status if the motion is granted; and
(E) A written agreement by the practitio -
ner to not practice before the Office in patent, trade -
mark or other non-patent  cases while on disability 
inactive status.
(ii) Response . The OED Director ’
s re -
sponse to any motion hereunder shall be served and 
filed within thirty days after service of the practitio -
ner’s motion unless such time is shortened or enlar
ged 
by the hear ing
 officer for good c aus
e shown, and shall 
set forth the following:
(A) All objections, if any, to the actions 
requested in the motion;
(B) An admission, denial or allegatio n o
f 
lack of knowledge with resp ect to each of the material 
IP/N/1/USA/D/2 
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Page 271§ 11.28 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-270facts in the practitioner’s motion and accompanying 
documents; and
(C) Affidavits, medical reports, official 
records, or other docume nts setting forth facts on 
which the OED Director inte nds to rely for purposes 
of disputing or denying any material fact set fo
rth in 
the practitioner’s papers.
(2) Disposi tion 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 sh all enter an order holding 
the disciplinary proceeding in abeyance. In the case of addiction to drugs or intoxicants, the order may pro -
vide that 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 pub -
lished, and give notice to  
appropriate authorities in the 
Office that the practitioner h as been placed on disabil -
ity inactive status. The prac titioner 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 Of
fice in a proceeding under paragraph (c) or 
paragraph (d) of this sec tion. A practitioner on dis-
ability 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) thro ug
h 11.58(d) applicable to disabil-
ity 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 i n
active status in a disciplin -
ary 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 ef fective 
date of inactivati
on, or on ce during any shorter inter -
val provided by the or der issu
ed pursuant to para -
graph (a)(2) of this section or any modification 
thereof. If the motion is granted, the disciplinary pro -ceeding shall resume under such schedule as may be 
established by the hearing officer.
(c) Contents of motion for re activati
on. A 
motion by the practitioner for reactivation alleging that a practitioner has recovered from a prior disabil -
ity or addiction shall be ac
companied 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 Dir ector ’s 
motion to resume disciplin-
ary proceeding held in abeyance.  (1) The OED Direc-
tor, having good cause to believe a p r
actitioner is no 
longer incapacitated, may file a motion requesting the 
hearing officer to terminate a prior order holding in 
abeyance any pending pr oceeding because of the 
practitioner’s disability or addiction. The hearing 
officer shall decide the matte
r 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 th at the practitioner is able 
to defend himself  or hersel f. If there is any genuine 
issue as to one or more material facts, the hearing officer will hold an evidentiary hearing.
(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 mu st present clear and con -
vincing evidence that the prior self-alleged disability 
or addiction continues to make it impossible for the 
practitioner to defend 
himself or herself in the under -
lying proceeding being held in abeyance.
(e) Action by the hearing officer . If, in deciding 
a motion un
der paragraph (b) or (d) of this section, the 
hearing of
ficer 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 reactiva -
tion of the practitioner and resumption of the disci -
plinary proceeding.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008 ]   
IP/N/1/USA/D/2 
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Page 272PATENT RULES § 11.29
R-271 Rev. 8, July 2010§  11.29 Reciprocal 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 Of fice. W
ithin 
thirty days of being transf erred to disability inactive 
status in another jurisdictio n, 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 trans -
ferred to disability inactive status, including the spe -
cific grounds therefor; and 
(iii) A request that the USPTO Director 
issue a notic e and order as set forth in paragraph (b) of 
this section.
(2) Involuntary commitment, adjudication of 
incompetency or court ordered placement unde r 
g
uar
dianship or conservatorship as grounds for ini-
tial transfer to disability inactive status . Within thirty 
days of being judicially declared incompetent, being 
judicially ordered to be involuntarily committed after 
a hearing on t
he grounds of incompetency or disabil -
ity, or being placed by court order under guardianship or conservatorship in  another jurisdiction, a practitio-
ner subject to the disciplinary jurisdiction of the 
Office shall notify the OED Director in writing of such judicial action. U pon not
ification from any 
source that a practitioner subject to the disciplinary jurisdiction of the O f
fice has been subject to such 
judicial action, the OED Director shall obtain a certi-
fied copy of the order. The OED Director shall file 
with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be trans -
ferred to disability inactive status, including the spe -
cific grounds there
for; and 
(iii) A request that the USPTO Director 
issue a notic e 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 demons trating 
that a practitioner 
subject to the disciplinary jurisdiction of the Office 
has been transferred to di sability inactive status, judi -
cially declared incompetent,  judicially ord
ered to be 
involuntarily committed after a judicial hearing on the grounds of incompetency or di
sability, 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) A n order di
recting the practitioner to file 
a response with the  USPTO Director and the OED 
Director, within 30 days from the date of the notice, estab
lishing 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 dis -
ability inactive status would be unwarranted and the 
reasons therefor.
(c) Effect of stay of tr ansfer
, judicially declared 
incompetence, judicially ordered involu nta
rily com -
mitment on the grounds of incompetency or disability, 
or court-ordered placement under g u
ardianship or 
conservatorship . In the event the transfer, judicially 
declared incompetence, judi cially ordered involuntary 
commitment on the grounds of incompetency or dis -
ability, or court-ordered placement under guardian -
ship or conservatorship in the other jurisdiction has 
been stayed there, any reciprocal transfer or transfer 
by the Office may be defe rred 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 USP T
O Director on the 
documentary record unless the USPTO Direct
or deter-
mines that there is a genuine issue of material fact, in 
which case the USPTO Director may deny the 
request. Upon the ex piratio
n 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 inactiv e status based on the prac -
titioner’s transfer to disability status in another juris -
diction, or shall transfer the practitioner to disability 
inactive status based on ju dicially declared incompe -
tence, judicially ordered involuntary commitment on 
IP/N/1/USA/D/2 
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Page 273§ 11.29 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-272the grounds of incompetency or disability, or court-
ordered placement under guardianship or conservator -
ship, unless the practitioner demonstrates by clear and convincing evidence, or the USPTO Directo r 
 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 estab-
lishing the transfer to disability status, judicial decla -
ration of incompetence, judi cial order for involuntary 
commi tment on the grounds of incompetency or dis -
ability , o
r placement by court order under gu ard
ian-
ship 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 sta -
tus or transfer to disability st atus
 by the USPTO 
Director would result in grave injustice; or
(4) The practitioner is not the individual 
transferred to disability status, judicially declared 
incompetent, judi cially ordered for involuntary com -
mitment on the grounds of incompetency or disability , 
o
r placed by cour t ord
er under guardianship or con-
servatorship.
(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 det
ermination 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 ot her jurisdiction . In all 
other aspects, a final adjudication in another jurisdic -
tion that a practitioner be transferred to disability inactive status, is judicially declared incompetent, is 
judicially ordered to be  involuntarily committed on 
the grounds of inco mpetency or disability, or is placed 
by co
urt order under guardiansh ip or co
nservatorship 
shall establish the disability  for purposes of a recipro-
cal transfer to or transfer to  disability status before the 
Office.
(f) A practitioner who is transferred to disabil -
ity 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  r
eciprocal tran sfer 
to dis -
ability inactive status or or der imposing initial trans -
fer to disability inactive status . An order by the 
USPTO Director imposing reciprocal transfer to dis-ability inacti ve status, 
or transferring a practitioner to 
disability inactive status shall be effective immedi -
ately, 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 direct or of the institution to 
which the practitioner has been committed in the 
manner th e USP
TO Director may direct. A practitio -
ner reciprocally transferred or  transferred to disability 
inactive status shall comply with the provisions of  § 
11.58, and shall not engage in pra c
tice before the 
Office in patent, trademark and other non-patent law unless and until reinstat ed to active status.
(h) Confidentiality of proceeding; Orders to be 
public —(1)  Confidentiality of proceeding . All pro -
ceedings under this section involving allegations of 
disability of a practitioner sh all be kept confidential 
until and unless the USPTO Director enters an 
order 
reciprocally transferring or transferring the practitio -
ner to disability inactive status.  
(2) Orders to be public . The OED Di re
ctor 
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 engag e
 in an activity authorized under § 11.58(e). Per -
mission will be granted only i
f the practitioner has 
complied with all the cond itions of §§ 11.58(a) 
through 11.58(d) applicable to disability inactive sta -
tus. In the event that permis sion is granted, the practi -
tioner shall fully comply with the provisions of  § 11.58
(e).
(j) Reinstatement from disability inactive sta -
tus. (1) Generally . No practitioner reciprocally trans -
ferred or transferred to disability inactive status under 
this s
ection may resume active status except by order 
of the OED Direc t
or.
IP/N/1/USA/D/2 
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Page 274PATENT RULES § 11.34
R-273 Rev. 8, July 2010(2) Petition . A practitioner reciprocally trans -
ferred 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 inter -
vals the USPTO Director may direct in the order 
transferring or reciprocally transferring the practitio -
ner to disability inactive status or any modification 
thereof. 
(3) Examination . Upon the filing of a petition 
for transfer to active status, the OE D
 Director may 
take or direct what e
ver action is deemed necessary or 
proper to determine whethe r the incapacity has been 
removed, including a direc tion for an examination of 
the practitioner by qualifie d 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 psych
iatrist, psychologist, physician and 
hospital or other institution by whom or in which the 
practitioner has been examined or treated for the dis -
ability since the transfer to disability inactive status. 
The practitioner shall furnish to the OED Director 
written consent to the rele ase of information and 
records relating to the incapa city if requested by the 
OED Director.
(5) Learning in the law , exami nat
ion. The 
OED Director may direct that the practitioner estab -
lish proof of c o
mpetence and learning in law, which 
proof may include passing the registration examina -
tion.
(6) Granting of petition for transfer to act
ive 
status . The OED Director shall grant the petition for 
transfer to active status up on a showing by clear and 
convinc i
ng 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 Direc -
tor 
may dispense with further evidence that the dis -
ability has been removed and may immediately direct reinstatement to active status  upon such terms as are 
deemed proper and advisable.
(8) Judicial declaration o
f competency. If a 
practitioner is transferred to  disability inactive status on the basis of a judicially declared incompetence, judicially ordered involu ntary commitment on the 
grounds of incompetency or disability, or court-ordere d plac
ement under guardianship or conservator -
ship 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]
§  11.32 Instituting a disciplinary proceeding.
If after conducting an investigation under § 
11.22(a), the OED Director is of the opinion that 
grounds exist for disciplin e un de
r §§ 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 Disci -
pline shall then determine as specified in § 11.23(b) whether a disciplinary proceeding shall be instituted. If the panel of the Commit tee on Discipline deter -
mines that probab le ca
use 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]
§  11.34 Complaint.
(a) A complaint instituting a disciplinary pro -
ceeding 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 co ncise description of 
the respondent’s alleged grou n
ds for discipline;
(3) State the place and time, not less than 
thirty days from the date the complaint is filed, for fil-
ing an answer by the respondent;
(4) S t
ate that a decision by default may be 
entered if an answer is no t timely filed by the respon -
dent; and
IP/N/1/USA/D/2 
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Page 275§ 11.35 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-274(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it 
fairly informs the respondent of any grounds for disci -
pline, and where applicable, the Mandatory Disciplin -
ary Rules identified in § 10. 20(b) of th is su
bchapter 
that form the basis for the disciplinary proceeding so 
that the respondent is able  to adequately prepare a 
de
fense.
(c) The complaint shall be filed in the manner 
prescribed by the USPTO Director.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]   
§  11.35 Service 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 responde nt, in which case the indi -
vidual who gives the comp laint to the respondent 
shall file an af f
idavit with the OED Director indicat -
ing the time and place the co mplaint was delivered to 
the respondent.
(2)
By mailing a copy of the complaint by 
“Express  Mail,” 
first-class mail, or any delivery ser -
vice that provides ability to confirm delivery or attempted delivery to:
(i) A responde nt who
 is a registered prac-
titi
oner 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 mu tu
ally agreeable to the 
OED Directo
r and the respondent.
(4) In the case of a respondent who resides 
outside the Unite d States, by se nding a  copy of the 
complaint by any delivery service that  provides abil -
ity to confi rm del ivery or  attempted deli very, to:
(i) A resp
ondent who is a registered prac-
titioner 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 deliv -
ered to the respondent through a
ny one of the proc e-
dures 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 allega -
tions in the complaint in accordance with paragraph 
(d) of  § 11.36, an d the hearin
g officer may enter an 
initial decision on default.
(c) If the respondent is known to the OED 
Direc tor to be represented by an attorney under § 
11.40(a), a copy of the complaint shall be served on the attorney in lieu of servic e on the respondent in  the 
ma
nner provided for in paragraph (a) or (b) of this 
section.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.36 Answer 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 wr
iting with the hearing officer at the address spec -
ified 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 afte r 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. T he 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 fort h in the complaint. The 
respondent shall not deny
 a material allegation in the 
complaint that the responde nt knows to be true or 
state that respondent is w ithout 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 fa ctor. 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, an d the reason it provides a 
defense or mitigation. A resp ondent who fails to do so 
IP/N/1/USA/D/2 
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Page 276PATENT RULES § 11.39
R-275 Rev. 8, July 2010cannot rely on a special matter of defense or disabil -
ity. The hearing officer may, for good cause, allow the 
respondent to file the stat ement late, grant additional 
hearing preparation time, or make other appropri a
te 
orders.
(d) Failure to deny allegations in complaint . 
Every allegation in the compla int that is not denied by 
a respondent in the answer  shall be deemed to be 
admitted and may be consid ered proven. The hearing 
officer at any hea r
ing need receive no further evi -
dence 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 re sult in entry of default 
judgment.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.37 [Reserved]
§  11.38 Contested case.
Upon the filing of an answer by the respondent, a 
disciplinary proceeding shall be regarded as a con-
tested case within the meaning of 35 U.S.C. 24. Evi -
dence ob tai
ned 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 previ-
ousl
y authorized by the hearing officer. 
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.39 Hearing officer; appointment; responsi-
bilities; review of interlocutory orders; 
stays.
(a) Appointment. A  hearing officer, appointed 
by the USP T
O 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 accor -
dance with paragrap h (a) o
f 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 accor -
dance with paragraph (a) of  this section shall not be subject to supervision of th e person(s) investigating or 
prosecuting the case.
(3) A hearing officer appointed in accor -
dan
ce with paragraph (a) of this section shall be 
impartial, shall not be an individual who has partici -
pated in any manner in the decision to initiate the pro -
ceedings, and shall not have be en 
employed under the 
immediate supervision of the practitioner.
(4) A hearing officer appointed in accor -
dance with paragraph (a) of this section shall be admitted to practice law an d have suitabl e experience 
and training conduc ting he
arings, reaching a determi-
nation, and rendering an in itial decision in an equita -
ble manner.
(c) Responsibili ties. The hearing officer shall 
have authority , 
consistent wi th specific provisions of 
these regulations, to:
(1) Administer oaths and affirmations;
(2) Mak e 
rulings upon motions and other 
requests;
(3) Rule upon offers of proof, receive rele -
vant 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 plac
e of any hear -
ing and regulate its course and conduct;
(6) Hold or provide for the holding of confer -
ences to settle or simplify the issues;
(7) Receive and consider oral or written 
arguments on facts or law;
(8) Adopt procedures and  
modify proce -
dures for the orderly di sposition of proceedings;
(9) Make initial decisions under §§ 11.25 and 
11.54; and
(10) Perform acts a n
d take measures as neces -
sary t o
 promote the efficient, timely, and impartial 
conduc t of any disciplinary proceeding.
(d) Time for making initial decision. The hear-
ing officer shall set times  and e
xercise control over a 
disciplinary proceeding such that an initial decision 
under § 1
1.54 is normally issued within nine mon ths 
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 circum -
stances, in his or her opinion, that preclude issuance 
of an initial decision within  nine months of the filing 
of the complaint.
IP/N/1/USA/D/2 
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Page 277§ 11.40 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-276(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 groun d fo
r a difference of opin -
ion, and
(ii) That an immediate decision by the 
USPTO Director may materially advance the ultimate 
termination of the disc iplinary proceeding, or
(2) In an extraordinary situation where the 
USPTO Director deems that justice requires review.
(f) Stays pend
ing review of interlocutory o r
der. 
If the OED Director or a respondent seeks review of an interlocutory order of a hearing officer un
der para-
graph (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]  
§  11.40 Representative for OED Director or 
respondent.
(a) A respondent may represent himself or her -
self, or be represented by an attorney before the 
Office in connection with an investigation or disci -
plinary proceeding. The atto rney shall file a written 
declaration that he or she is an attorney within the 
meaning of  § 11.1 and shall state :
(1)
The addres s to whic h 
the attorney wants 
correspondence related to the investigation or disci -
plinary proceeding sent, and
(2) A telephone number where the attorney 
may be reached during normal business hours.
(b) The Deputy Gen
eral Counsel for Intellec -
tual Property and Solicitor, and attorneys in the Office of the Solicitor shall r
epresent the OED Director. The 
attorneys representing the OED Director in disciplin -
ary proceedings shall not consult with the USPTO 
Director, the General Coun sel, the 
Deputy General Counsel for General Law, or an individual designated by the USPTO Director to decide disciplinary matters 
regarding the proceeding. The Ge nera
l Counsel and 
the Deputy General Counse l for General Law shall 
remain screened from the investigation and prosecu -
tion 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 thei r duties. After a final deci -
sion 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]  
§  11.41 Filing 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 co mplaint and prior to entry 
of an initial decision by the hearing officer shall be filed with the hearing office r at an addre
ss or place 
designated by the hearing officer.
(b) All papers filed after entry of an initial deci -
sion 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 fi ling
 papers and other mat -
ters by hand, by  “Express Mail,” or by other means.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.42 Service of papers.
(a) All papers other than a complaint shall be 
served on a respondent who is represented by an attor-ney by:
(1) Delivering a copy of the paper to th e 
of
fice of the attorney; or
(2) Mailing a copy of the paper by first-class 
mail, “Express Ma
il,” or other delivery service to the 
attorney at the address prov ided by the attorney under 
§ 11.40(a)(1); or
(3) Any oth
er method mutually agreeable to 
the attorney and a repre sentative for the OED Direc -
tor.
IP/N/1/USA/D/2 
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Page 278PATENT RULES § 11.45
R-277 Rev. 8, July 2010(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 compla int may 
be
 served or such othe
r address as may be designated 
in writing by the respondent; or
(3) Any other method mu tually agreeable to 
the respondent and a representative of the OED Direc -
tor.
(c) A respondent 
shall serve on the representa-
tive for the OED Director one copy of each paper filed with the hearing offi cer 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 rep -
resentative; or
(2) Mailing a copy of the paper by first-class 
mail,  “Express Mail,” or other delivery service to an 
address designated in writin g by t h
e representative; or
(3) Any
 other method mu tually agreeable to 
the respondent and the representative.
(d) Each paper filed in a disc iplina
ry proceed -
ing shall contain therein a certificate of service indi -
cating:
(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 o r
 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] 
§  11.43 Motions.
Motions, including all prehearing motions com -
monly filed under the Federal Rules of Civil Proce -
dure, shall be filed with the hearing officer. The 
hearing officer will determ ine whether replies to 
responses will be authorized and the time period for 
filing such a response. No motion shall be filed with 
the h
earing officer unless such motion is supported by 
a written statement by the moving party that the mov-ing party or attorney for the moving party has con -
ferred with the opposing party or attorney for the opposing party in an effort in good faith to resolve by 
agreement the issue s
 raised by the motion and has 
been unable to reach agreemen t. 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]  
§  11.44 Hearings.
(a) The hearing officer shall preside over hear -
ings in disciplinary proceedings. The hearing officer shall set the time  and place for the hearing. In cases 
involving an incarcerated respondent, any necessary 
oral heari ng may be 
held at the location of incarcera -
tion. Oral hearings will be stenographically recorded 
and transcribed, and the t estimony of witnesses will 
be received under oath or affirmation. The hearing 
officer shall co nduct 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 Direc -
tor and the respondent at the expense of the Office.
(b) If the respondent to a disciplinary proceed -
ing fails to appear at the hearing after a notice of hear-
ing has been given by the hearing officer, the hearing officer may deem the respondent t o
 have waived the 
right to a hearing and may proceed with t h
e 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 ma ke the record of the disci -
plinary proceeding available for public inspection, provided , a protective order is entered to exclude from 
public disclosure information which is priv
ileged or 
confidential under applicable laws or regulations.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.45 Amendment 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 conduc t committed 
IP/N/1/USA/D/2 
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Page 279§ 11.46 - 11.48 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-278before 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 be prejudiced by the amend -
ment 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]
§  11.49 Burden 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 defe
nse by clear 
and convincing evidence. 
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.50 Evidence.
(a) Rules of evidence . The rules of evidence 
prevailing in courts of law and equity are not control -
ling in hearings in disciplin ary proceedings. However, 
the hearing of
ficer shall excl ude evidence that is irrel -
evant
, immaterial, or unduly repetitious.
(b) Depositions . Depositions of witnesses taken 
pursuant to § 11.51 may be admitted as evidence.
(c) Government documents. Official docu-
ments, records, and papers of the Of fice, including, 
but not 
limited to, all papers in the file of a disciplin -
ary investigation, are admissibl
e without extrinsic evi -
dence of authenticity. These documents, records, and papers may be evide
nced by a copy certifie d as cor -
rect by an employee
 of the Office.
(d) Exhibits. If any document, record, or other 
paper is introduced in eviden ce as an e
xhibit, the hear -
ing officer may authorize the withdrawal of the exhibit subject to an y conditions the
 hearing officer 
deems appropriate.
(e) Objections . Objections to evidence will be 
in short form, stating the grounds of objection. Objec -
tions and rulings on objectio ns will be a part of the record. No exce
ption to th e ruling is necessary to pre -
serve the rights of the parties.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.51 Depositions.
(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 Direc -
tor upon a sh
owing of good cause and with the 
approval of, and under such conditions as may be 
deemed appropriate by, the hearing officer. D
eposi -
tions 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 partie s may waive the requirement 
of ten days’ notice and depo sitions may th en be taken 
of a witness at a
 time and pl ace mutually agreed to by 
the parties. When a depos ition is taken upon written 
questions, copies of the written questions will be served upon the other party with the notice, and cop -
ies of any written cross-ques tions will be served by 
hand or “Express Mail” not less than five days before the date of the taking of the deposition unless the par -
ties mutually agree otherwise. A party on whose 
behalf a deposition is taken shall file a copy of a tran-
script 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 pre -
paring, 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 pa ragraph (b) of this section.
(b) When the OED Direct o
r and the respondent 
agree in writing, a depositi on of any witness who will 
appear voluntarily may be taken under such terms and 
conditions as may be mutua lly agreeable to the OED 
Director and the respondent. The deposition shall not 
be filed with the hearing officer an d may
 not be 
admitted in evidence before the hearing officer unless he or she orders the depo sition admitted in evidence. 
The admissibility of the depo sition 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 hear -
ing officer.
IP/N/1/USA/D/2 
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Page 280PATENT RULES § 11.54
R-279 Rev. 8, July 2010 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008   
§  11.52 Discovery.
Discovery shall not be authorized except as fol -
lows:
(a) After an answer is filed under § 11.36 and 
when a party establishes that discovery is reason ab
le 
and relevant, the hearing officer, under such condi -
tions as he or she deems appropriate, may order an 
opposing party to:
(1) Answer a reasonable number of written 
requests for admissio n or interrogatories;
(2) Produce for inspec tion an d co
pying a rea-
sonable number of documents; and
(3) Produc e
 for inspection a reas onable 
num-
ber 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 
impeac hment;
(2) Is not available to  the party under 35 
U.S.C.
 122;
(3) Relate s
 to an y othe
r disciplinary proceed-
ing;
(4) Relates to experts except as the hearing 
officer may require under pa ragraph (e) of this sec-
tion;
(5) Is privileged; or
(6) Relates  to 
mental impressions, conclu -
sions, opinions, or legal th eories of any attorney or 
other represe
ntative of a party.
(c) The hearing officer may deny di scov
ery 
requested under paragraph (a ) of this section if the 
discovery sought:
(1) Will unduly delay the disciplinary pro -
ceeding;
(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 t h
e parties; or
(iii) To the party seeking the discovery 
through another source.
(d) Prior 
to authorizing discovery under para -
graph (a) of this section, the hearing officer shall 
require the pa rty seeking disco very to file a motion (§ 
11.43) and explain in detail, for each requ est made, h
ow 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 pro-
p
osed exhibits to be used in connecti on with a party’s 
case-in-chief;
(2) A list of proposed witnesses;
(3) As to e ach 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 stat
ement of the substance of the 
facts and opinions to which the expert is expected to 
testify;
(4)
Copies of memoranda reflecting respon -
dent’s own statem ents to administrative
 representa -
tives.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.53 Proposed 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 
subm it 
proposed findings and conclusions and a post-
hearing memorandum in support of the proposed find -
ings and conclusions. 
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.54 Initial decision of hearing officer. 
(a) The hearing officer shall make an initial 
decision in the case. Th e decision will include:
(1) A statement of findings of fact and con -
clusions of law, as well as the re asons
 or bases for 
those findings and conclusions with appropriate refer -
ences  to the record, upon a
ll the material issues of 
fact, law, or discretion presented on the record, and
(2) An
 order of default judgment, of suspen -
sion or exclusion from practice, of reprimand, or an order dismissing the complaint. The hearing officer 
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Rev. 8, July 2010 R-280shall transmit a copy of the decision to the OED 
Director and to the respondent. After issuing the deci -
sion, 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, 
withou t 
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, rep-
rimand, suspension, or exclusion. In determining any 
sanction, the following four  factors must be consid -
ered if they a
re applicable:
(1) Whether the practitioner has violated a 
duty owed to a client, to the public, to the legal sys-
tem, or to the profes
sion;
(2) Whether the practitioner acted intention-
ally, knowingly, or neglig
ently;
(3) The amount of the actual or potential 
injury caused by the practitioner’s misconduct; and
(4) The existence of any aggravating or miti -
gating factors.
 [Added, 73 FR 47650,  Aug. 14, 2008, effective Sept. 
15, 2008]  
§  11.55 Appeal 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 US P
TO 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 pur pose of this rule. If appeals 
are filed on the same day, the respondent is the appel -
lant. 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 ap peal 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 br ief 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 de cisions of the hearing officer and supporting reasons for tho se exceptions. Any excep-
tion not raised will be deemed to have been waived 
and will be disregarded by the USPTO Director in 
reviewing the initial decision. 
(c) A
ll 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 th e 
opposing party;
(2) Include separate sections containing a 
conc ise statement of the di sputed facts and disputed 
points of law; and
(3) Be typed on 8 1/ 2 b
y 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 , 
appel -
lee’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 leng th, and shall comply with 
Rule 28 (a)(2), (3), (8), an d (9) of th
e 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 fur -
ther briefs or mot
ions shall be filed.
(h) The USPTO Director  ma
y order reopening 
of a disciplinary proceeding  in accordance with the 
principles 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 di scov
ered evidence could not have 
been discovered by due diligence.
(i) In the absence of an appeal by the OED 
Director, failure by the resp ondent 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]  
§  11.56 Decision 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 d e 
novo review of the fac -
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R-281 Rev. 8, July 2010tual 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 th e 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 pr actitioner from pract ice 
before the 
Office. A final decision suspending or 
excluding a practitioner shal l 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 con -
duct.
(c) The respondent or the OED Director may 
make a single request for reconsideration or modifica -
tion of the decision by the USPTO Director if filed 
within twenty days from the dat e
 of entry of the deci-
sion. No request for reconsidera tion or modific
ation 
shall be granted unless the request is based on newly discovered evidenc e
 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 requ est 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]
§  11.57 Review 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 R esp
ondent  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] 
§  11.58 Duties of disciplined or resigned practi -
tioner, or practitioner on disability inac -
tive status.
(a) An excluded, suspended or resigned practi -
tioner, or practitioner transf erred to disability inactive 
status shall not engage in any practice of patent, trade -
mark and other non-patent law before the Of
fice. 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, sus -
pended or resigned practitioner, or practitioner trans -
ferred to disabil ity inactive stat
us must comply with 
the provisions of thi s sectio n and § 11.60 to be  rein-
stated. Failure to comply w ith the provisions of t
his 
section may constitute both grounds for denying rein -
statement or readmission; and cause for further action, including seeking further ex clusion, s u
spension, and 
for revocation of any pending pro b
ation.
(b) Unless otherwise ordered by the USPTO 
Director, any excluded, susp ended or resigned practi -
tioner, or practitioner transf erred to disability inactive 
status shall: 
(1) Within thirty days after the 
date of entry 
of the order o f
 exclusion,  suspension, ac
ceptance of 
resignation, or transfer to  disability inactive status:
(i) File a notice of withdrawal as of the 
effective date of the exclusion, suspension, accep -
tance of resignation, or tr ansfer to disability 
inactive 
status in each pending patent and trademark applica -
tion, ea ch pending 
reexam ination and interference 
proceeding, and every other matter pending in the Office, together with a copy of the notices  sent 
pursu -
ant to paragraphs (b) a nd (c) of this section;
(ii) Provide notice to all State and Federal 
jurisdictions and administra tive agencies to which the 
practitioner is admitted to pr actice and all clients the 
practitioner represents having immediate or prospec -
tive business before the 
Office in patent, trademark 
and oth
er non-patent matters of the order of exclu s
ion, 
suspension, acceptance of resignation, or transferred 
to disability inactive status and of the practitioner’s consequent inability to ac t as a practitioner after the 
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by another practitioner, the client should act promptly 
to substitute another prac titioner, 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 exclu-
sion, susp ension, resigna
tion, or transfer to disability 
inactive status and, that as a consequence, the practi -
tioner is disqualified fro m acting as a practitioner 
regarding matters before the Office after the effective date 
of the suspension, excl usion, resignation or trans-
fer to disability inactive stat us, and state in the notice 
the mailing address of each c l
ient of the excluded, 
suspended or resigned practitioner, or practitioner transferred to disability inac tive status who is a pa
rty 
in the pending matter;
(iv) Deliver to all clients having immediate 
or prospective business before the Office in patent, 
trademark or other no n
-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 practi -
tioner designated by the client, all funds for practice before the Of fice, includin g 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 telepho ne, legal, o
r other 
directory any advertisement, statem en
t, or representa -
tion which would reasonably suggest that the practi -
tioner is authorized to practice patent, trademark, or 
other non-patent law before the Office; and
(vii) Serve all notices required by para-
graphs (b)(1)(ii) and (b)(1)(iii)  of this section by certi -
fied 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 practi-
tioner.
(2) Within forty-five days after entry of the 
order of susp e
nsion
, exclusion, or of acceptance of 
resignation, the practitioner shall file with the OED 
Director an af fidavit of compliance 
certifying that the practitioner has fully complied  with the provisions of 
the order, this section, an d with the Mandatory Disci -
plinary Rules identified in § 10.20(b) of this subchap -
ter for withdrawal from repr esentation. Appended to 
the affidavit of compliance shall be:
(i) A copy of each form of notice, the 
names and addresses of th e clients, practitioners, 
courts, and ag encies
 to which notices were sent, and 
all return receipts or return ed mail received up to the 
date of the affidavit. Supple mental affidavits shall be 
filed covering  subsequent return receipts and returned  
ma
il. 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 ever y bank account designated 
as a client or trust accou nt, deposit account in the 
Office, or other fiduciary account, and of every account  in which 
the practitio ner holds or held as of 
the entry date of the order any client, trust, or fidu -
ciary funds for practice before the Office;
(iii) A schedule describing the practitio -
ner’s disposition of all clie nt and fiduciary funds for 
practice before the Office in the practitioner’s posses -
sion, custody or control as of the date of the order o r
 
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 i n
struments;
(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 tele -
phone, legal, or other directory any adv
ertisement, 
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 af fida
vit shall also state the residence or 
other address of the practitioner to which communica -
tions may thereafter be directed, and list all State and 
Federal jurisdictions, and ad ministrative agencies to 
which the practitioner is admitted to practice. The OED Director may require such additional proo f as is 
deemed necessary
. In addition, for the period of disci -
pline, an excluded or suspended practitioner, or a practitioner transferred to disability inactive status 
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R-283 Rev. 8, July 2010shall continue to file a st atement in accordance with § 
11.11, regarding any change of residence or other 
address to which communications may thereafter be 
directed, so that the excluded or suspended practitio -
ner, or practitioner transferred to disability inactive 
status may be located if a grievance is received 
regarding any conduct occurri ng before or after the 
exclusion or suspension. Th e pract
itioner 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 autho-
rized to practice law before the Office.
(4) Not advertise the practitioner’s availabil -
ity 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 t
he practitio -
ner’s firm’s stationery to delete therefrom any  adver -
tisement, statement, or representation which would reasonably  suggest that th e practitioner is authorized 
to practice 
law before the Office.
(c) An excluded, suspended or resigned practi -
tioner, or practitioner t ransf erred to disability inactive 
status after entry of 
the order of exclusion or suspen -
sion, acceptance of resignation, or tran sfe
r to disabil -
ity inactive status shall not accept any new retainer regarding immediate or prospective busine ss b 
efore 
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 prac -
titioner, or practitioner transferred to disability inac -
tive status shall be granted limited recognition for a period of thirty days. During  the thirty-day period of 
limited recognition, the ex cluded, suspended or 
resigned practitioner, or prac titioner transferred 
to dis -
ability inactive status shall conclude work on behalf 
of a client on any matters that were pending before the Office on the date of en try o
f the order of exclusion or 
suspension, or acceptance of resignation. If such work 
cannot be concluded, the excluded, suspended or 
resigned practitioner, or prac titioner transferred to dis -ability 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 
disabi
lity inactive status shall keep and maintain 
records of the various steps taken under this section, 
so that in any subsequent proceeding proof of compli -
ance with this section and with the exclusion or sus -
pension order w ill be available . The OE
D 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 practi -
tioner, or practitioner on disability inactive status who 
aids another practitioner in any way in the other prac -
titioner’s practice of law before the Of
fice, may, under 
the direct supervision of the other practitioner, act as a 
paralegal for the other prac titioner or perform other 
services for the other practitioner which are normally performed by laypersons, provided:
(1) The excluded, suspended or resigne d
 
practitioner, or practitioner transferred to disability 
inactive status is a salaried employee of:
(i) The other practitione r;
(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 pro -
fessional responsibility to an y client and the Office for 
any work performed by the excluded , s
uspended or 
resigned practitioner fo r the other pr
actitioner;
(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 t h
e other practitio-
ner in regard to any immedi ate or p
rospective busi-
ness 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 prosp ective business before the 
Office; or
(iii) Meet i
n person or in the presence of the 
other practitioner in regard to any immediate or pro -
spective business before the Office, with:
(A) Any Office employee  in connection 
with 
the prosecution of any patent, trademark, or 
other case;
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Rev. 8, July 2010 R-284(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 prac titioner’s client-employer 
may or intends to call as a witness in any proceeding 
before the Of fic
e. The term “witness” includes indi -
viduals who will testify orally  in a proceeding before, 
or sig n an affidavit or an y other d ocument to be  filed 
in, the Office.
(f)
When an excluded, su spended or resigned 
practitioner, or practitioner transferred to disability inactive status acts as a pa ralegal or performs services 
under paragraph (e) of this  section, the practitioner 
shall 
not thereafter be reinst ated to practice before the 
Office unless: 
(1) The practitioner shall have filed with the 
OED Direc tor an affidavit which:
(i) Explains in detail the precise nature of 
all paralegal or ot her se rvices performed by the 
excluded, suspended or resigned practitioner, or pra c
-
titioner transferred to disa bility inactive status, and 
(ii) Shows by clear and co nv
incing evi -
dence that the excluded, suspended or resigned practi -
tioner, or practitioner transf erred 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 af fidavit required by paragraph (d)(1) of this 
section and that the other practitioner bel ieves 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 w ith paragraph (c) of this 
section.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.59 Dissemination of disciplinary and other 
information.
(a) The OED Director shal l inform the public of 
the disposition of each matter in which public disci -
pline has been imposed, and of any other changes in a practitioner’s registration st atus. Public di scipline 
inc
ludes exclusion, as well as exclusion on consent; 
suspension; and public  reprimand. Unle
ss otherwise 
ordered by the USPTO Director, the OED Director shall give notice of public  discipline and the reasons 
for the discipline to discip linary enforcement agencies 
in the State where the prac titioner is admitted to prac -
tice, 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 deci -
sion of the USPTO Director to be  pu
blished. Final 
decisions of the USPTO Director include default judg -
ments. See § 11.54(a)(2). If a private reprimand is 
impose d, the OED Direc
tor shall cause a redacted ver-
sion of the final decision to b
e published.
(b) Records available to the public . Unless the 
USPTO Director orders that the proceeding or a por -
tion of the record be ke pt confidential, the OED 
Director ’
s records of every disciplinary proceeding 
where a practitioner is reprimanded, suspended, or 
excluded, including when sa id sanction is imposed by 
default ju
dgment, shall be made available to the pub -
lic upon written request, ex cept that information may 
be withheld as necessary to protect the privacy of third parties or as directed in a protective order issu
ed 
pursuant to § 11.44(c). The record of a proceeding that results in a practitione r’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 or ders that the proceeding 
or a portion of the record be kept confidential, an 
order excluding a practitio ner on consent under § 
11.27 and the af fida
vit 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] 
§  11.60 Petition for reinstatement.
(a) Restrictions on reinstatement . An excluded, 
suspended or resigned prac titioner shall not resume 
practice of patent, tradem ark, o
r other non-patent law 
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R-285 Rev. 8, July 2010before the Office until reinst ated 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 
compli ance wit
h § 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 practiti oner 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 exclud ing the practitioner on con -
sent.
(c) Review of reinstatement petition . An ex -
cluded, suspended or resign ed practitioner shall file a 
petition for reinstatement accompanied by the fee re -
quired  by
 § 1. 21
(a)(10) of this subchapter. The peti -
tion for reinstatement shal l be filed with the OED 
Director. An excluded or suspended practitioner who 
has violated any provision of  § 1
1.58 shall not be eli -
gible 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 eligibl
e for reinstate -
ment until compliance with § 11.58 is shown. If the 
excluded, suspended or resigned practitione r is not 
el-
igible for reinstatement, or if the OED Director deter -
mines that the petition is insu fficient or defective on 
its face, the OED Director may dismiss the petition. Otherwise the OED Director shall consider the peti -
tion for reinstatement. The excluded, suspended or re -
signed practitioner seeking reinst atement shall have 
the
 burden of proof by clear and convincing evidence. 
Such proof shall be included in or accompan y the pe -
titi
on, and shall establish:
(1) That the excluded, su spended or resigned 
practitioner has the good moral character and reputa -
tion, competency, and  lea
rning in law required under 
§ 11.7 for admission;
(2) That the resumption of practice before the 
Office wi ll not 
be detrimental to the administration of 
justice or subversive to the public interest; and
(3) That the suspended practitioner has com-
plied with the provisions of § 11.58 for the full period 
of suspension, 
that the ex cluded practitioner has com -
plied 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 resig -
nation.
(d) Petitions for reinstatement  — Action by 
the 
OED Director granting reinstatement. (1) If the 
excluded, suspe
nded 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 pay -
ment of the costs of the di sciplinary proceeding to the 
extent set forth in paragrap hs (d)(2) and (3) of this 
section.
(2) Payment of costs of disciplinary proceed -
ings. Prior to reinstatement to  practice, the excluded  
or
 suspended practitioner shall pay the costs of the 
disciplinary proceeding. The costs imposed pursuan t 
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 transcrip ts o
f the disciplinary pro -
ceeding, 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 th
e OED 
Director to be  “reasonable costs”  of investigation, 
hearing, and review. These amounts shall s e
rve to 
defray the costs, other than fees for services of attor -
neys and experts, of the Office of Enrollment and Dis -
cipline in the prepara tion or hearing of the 
disciplinary proceeding, and costs incurred in the 
administrative processing of the disciplinary proceed -
ing.
(3) An excluded or suspended practitioner 
may 
be granted relief, in whole or in  p
art, 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 hard -
ship, special circumstances, or other good cause.
(e) Petitions for reinstatement — Action by the 
OED Director denying reinstatement. If th e ex
cluded, 
suspended or resigned prac titioner is found unfit to 
resume the practice of pate nt law before the Office, 
the OED Director shall first provide the excluded, 
suspended or resigned pr actitioner with an opportu -
nity to show cause in wr iting why the petition should 
not be denied. Failure to co mply with § 11.12 (c) shall 
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Rev. 8, July 2010 R-286constitute unfitness. If unpe rsuaded by the showing, 
the OED Director shall deny the petition. The OED 
Director may require the excluded, suspended or resigned practitioner, in me eting 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 find -
ings 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 proc eeding 
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 expi -
ration of at least one year following the denial unless the order o
f denial provides otherwise.
(g) Reinstatement proceedings o p
en 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 pub -
lish a notice of the exclud ed or suspended practitio -
ner’s petition for reinstatement and shall permit the 
public
 a reasonable opportunity to comment or submit 
evidence with respect to the petition for reinstatement. [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.61 Savings clause.
(a) A disciplinary proceeding based on conduct 
engaged in prior to September 15, 2008 may be insti-
tuted subsequent to such ef fective date, if such con -
duct would continue to just ify suspens
ion or 
exclusion under the provisions of this p art.
(b)
No practitioner shall be subject to a disci -
plinary pr oceed
ing under this part based on conduct 
engaged in before the effective date hereof if such 
conduct would not have been su bject 
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 a p
ply 
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 Sep-
tember 15, 2008.
 [Added, 73 FR 47650, Aug. 14, 2008, effective Sept. 
15, 2008] 
§  11.62 -11.99  [Reserved]
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R-287 Rev. 8, July 2010Index 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, 10.23
Certification 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 di sciplinary 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 th e USPTO Director . . . . . . . . . 11.56, 11 .5 7
Definitions:
Affidavit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1
Agent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.6
Application  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1Attorney 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:
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 investiga tions:
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
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Rev. 8, July 2010 R-288Exclusion 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
Disciplinary rule violation
Disclosure of  . . . . . . . . . . . 10.23, 10.24, 10.84, 10.85
Discourteous conduct  . . . . . . . . . . . . . . . . . . . . . . . 10.89
Discovery in disciplinary proceedings:
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:
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  . . . . . . . . . . 10.102Favors, improperly bestowing  . . . . . . . . . . . . . . . . . 10.23
Fees:
Annual practitioner maintenance fee:
Registered attorney or agent  . . . 1.21(a)(7), 11.8(d)
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 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.1
0
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 liti gation or proceeding before Office, 
acquiring of . . . . . . . . . . . . . . . . . . . . . . . . . .  . 
. . .10.64
J
Joint venture . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23
Judicial office, candidate for  . . . . . . . . . . . . . . . . . 10.103
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R-289 Rev. 8, July 2010L
Legal fees:
Division of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.37
Failure to pay . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.40
Sharing of  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.48
Legal system, assistance in improving the  . . . . . . 10.100
Letterheads, use of . . . . . . . . . . . . . . . . . . . . . . . . . . 10.35
Limited recognition to practice in patent 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:
Reinstatement  . . . . . . . . . . . . . . . . . . . . . . . . . . 11.60
Review of final decision of USPTO Director  . . 11.57
Review decision of Di rector 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 .11
R
Recognition to practice before the Patent and 
Trademark Office:
Agents  . . . . . . . . . . . . . . . . . . .  11.5, 11.6, 11.7, 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, 11.11Examination 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, recognit ion 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 register ed 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 confid ence, 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
Rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3
T
Threats of criminal prosecution  . . . . . . . . . . . . . . . . 10.88
Threats, use of  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23
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Page 291PARTS 10 & 11  INDEX PATENT RULES
Rev. 8, July 2010 R-290U
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  . . . . . . . 10.23W
Withdrawal from employment  . . . . . . . . . . . . . . . . . 10.40
Witnesses  . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.63, 10.92
Z
Zealously representing the client  . . . . . . . . . 10.83, 10.84
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Page 292MANUAL OF PATENT EXAMINING PROCEDURE Part 15
R-291 Rev. 8, July 2010PART 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
GENERAL INFORMATION
Sec.
41.1 Policy. 41.2 Definitions. 
41.3 Petitions. 
41.4 Timeliness. 41.5 Counsel.41.6 Public availability of Board records. 41.7 Management of the record. 41.8 Mandatory notices. 41.9 Action by owner. 41.10 Correspondence addresses. 41.11 Ex parte communications in inter partes 
proceedings.
41.12 Citation of authority.41.20 Fees.
Subpart B— Ex Parte Appeals
41.30 Definitions. 41.31 Appeal to Board. 
41.33 Amendments and affidavits or other evidence after 
appeal. 
41.35 Jurisdiction over appeal. 
41.37 Appeal brief. 41.39 Examiner’s answer. 41.41 Reply brief.41.43 Examiner’s response to reply brief. 41.47 Oral hearing. 41.50 Decisions and other actions by the Board. 41.52 Rehearing.
41.54 Action following decision.
Subpart C— Inter Partes Appeals
41.60 Definitions.41.61 Notice of appeal and cross appeal to Board. 
41.63 Amendments and affidavits or other evidence after 
appeal. 
41.64 J
urisdiction over appeal in inter partes 
reexamination. 
41.66
Time for filing briefs. 
41.67 Appellant’s brief. 41.68 Respondent’s brief. 
41.69 Examiner’s answer. 
41.71 Rebuttal brief. 41.73 Oral hearing.
41.77 Decisions and other actions by the Board. 
41.79 Rehearing. 41.81 Action following decision.
Subpart D— Contested Cases
41.100 Definitions. 
41.101 Notice of proceeding. 
41.102 Completion of examination. 41.103 Jurisdiction over involved files. 
41.104 Conduct of contested case. 
41.106 Filing and service. 
41.108 Lead counsel. 
41.109 Access to and copi es of Office records. 
41.110 Filing claim information. 
41.120 Notice of basis for rel
ief. 
41.121 Motions. 
41.122 Oppositions and replies. 
41.123 Default filing times. 
41.124 Oral argument. 41.125 Decision on motions. 
41.126 Arbitration. 
41.127 Judgment. 41.128 Sanctions. 
41.150 Discovery. 
41.151 Admissibility. 
41.152 Applicability of the Federal Rules of Evidence. 
41.153 Records of the Office. 41.154 Form of evidence. 
41.155 Objection; motion to exclude; motion in limine. 
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Page 293§ 41.1 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-29241.156 Compelling testimony and production. 
41.157 Taking testimony. 
41.158 Expert testimony; tests and data.
Subpart E—Patent Interferences
41.200 Procedure; pendency.
41.201 Definitions.
41.202 Suggesting an interference.41.203 Declaration.
41.204 Notice of basis for relief.
41.205 Settlement agreements.41.206 Common interests in the invention.41.207 Presumptions.
41.208 Content of substantive and responsive motions.
Subpart A — General Provisions
§  41.1 Policy.
(a) Scope . Part 41 governs proceedings before 
the Board of Patent Appeals and Interferences. Sec -
tions 1.1 to 1.36 and 1.181 to 1.183 of this titl
e also 
apply to practice before the Board, as do other sec -
tions of part 1 of this title that are incorporated by ref -
erence into part 41.
(b) Construction . The  pro
visions of Part 41 
shall be construed to secure the just, s p
eedy, and inex -
pensive resolutio n o
f every proceeding before the 
Board.
(c) Decorum. Each party must act with courtesy 
and decorum in all proceedings before the Board, 
includi ng 
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 fol-
lowing 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 e
x parte deposi tio
n 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 de
legation from the Chief Adminis -
trative Patent Judge.
(2) For non-fin al actio
ns, a Board member or 
employee acting with the authority of the Board.
Board member  means the Under Secretary of Com-
merce for Intellectual Property and Director of the United States Patent  an
d Trademark Office, the D e
p-
uty Under Secretary of Commerce for Intellectual 
Property and Deputy Director of the United States 
Patent and Trademark Office, the C o
mmissioner for 
Patents, the Commissioner for Trademarks, and the 
administrative patent judges.
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 judicia l
 review. A decision is final 
only if:
(1) In a panel proceeding. The dec
ision is ren -
dered by
 a panel, disposes of all issues with regard to 
the party seeking judicial  review , an
d does not indi -
cate that further action is required; and
(2) In other proceedi ng
s. 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 S t
ates Patent and Trade -
mark Office.
Panel means at least three Board members act -
ing 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 participat -
ing 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  con
-
text permits.
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Page 294PATENT RULES § 41.5
R-293 Rev. 8, July 2010[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.3 Petitions.
(a) Deciding official . Petitions must be ad -
dressed to the Chief Administrative Patent Judge. A 
panel or an administrative patent judge may  certi
fy a 
question of policy to t
he Ch ief Administrative Patent 
Judge for decision. The Ch ief Administrative Patent 
Judge may delegate author ity to decide petitions.
(b) Scope. This section covers petitions on mat-
ters pending before the Board 
(§§ 41.35, 41.64, 
41.103, and 41.205); otherwi se, 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, proced ural 
issues. See § 
41.121(a)(3) and § 41.125(c).
(c) Petition fee . The fee set in § 41.20(a) must 
accompany any petitio n under t
his section except no 
fee is required for a petition under this section seeking 
supervisor y rev
iew.
(d) Effect on proceeding . The filing of a petition 
does not stay the time for any other action in a Board procee din
g.
(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 acti on from whic h th
e 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 oppositi on o
r a 
reply to a petition withou t 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 excep t
 as 
otherwise provided by rule.
(b) Late filings . (1) A late filing that results in 
either an application becoming abandoned or a reex -amination 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 reexamina -
tion prosecution  beco
ming 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 wo uld be in the interest of 
justice.
(c) Scope. This section governs all proc eedings 
before 
the Board, but does no t 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 hear -
ing (see §§ 41.37, 41.41, 4 1
.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.
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 procee ding.
(b) Disqualification . 
(1) The Board may dis -
qualify counsel in a specific proceeding after notice 
and an op po
rtunity to be heard.
(2) A decision to disqu a
lify is not final for 
the purposes of judicial revi ew 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 thi s
 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 
IP/N/1/USA/D/2 
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Page 295§ 41.6 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-294the Office of Enrollment an d Discipline for investiga -
tion. 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 pu blic inspection without a 
party’s permission if render ed in a file open to the 
public pursuant to § 1.11  of this title or in an appl
ica-
tion that has been publishe d in accordance with §§ 
1.211 to 1.221 of this title. The Office may indepen -
dently publish any Board acti on that is available for 
public inspection.
(2) Determination of special circumstances . 
Any Board action no t pub
lishable under paragraph 
(a)(1) of this section may be pu b
lished or made avail -
able 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 actio n public, object in writing 
on the ground that the ac tion discloses the objecting 
party’
s trade secret or other confidential information 
and states with specificity th at 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 pro-
tect the information. If th e 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 gi ven time, not less than 
twenty days, to request reco nsideration and seek court 
review before any 
contested portion of the action is 
made public over its objection.
(b) Recor d of proceeding . (1) The record of a 
Board proceeding is available to the public unless a 
patent application not othe rwise available to the pub -
lic 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. 1
1 of 
this title or an involved ap plication is or becomes pub -
lished 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 f iled 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 proceed -
ing that could affect, or be affected by, the Board pro -
ceeding.
(b) For contested cases, a party seeking judicial 
review of a Board proc eeding 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 com-
plaint 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 inter -
est in an application or patent involved in a Board 
proceeding may act in the proceeding to the ex clusion
 
of the inventor (see 3.73 (b) of this title).
(b) Part interest. An owner of a par t interest in 
an 
application or patent involved in a Board p r
oceed -
ing may petition to act in the proceeding to the exclu -
sion of an inventor or a co-owner. The petition must show the inability or refusal of an inventor or co-
owner to prosecute the pro ceeding or other cause why 
it is in the interest of justice to permit the owner of a 
IP/N/1/USA/D/2 
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Page 296PATENT RULES § 41.20
R-295 Rev. 8, July 2010part interest to act in the proceeding. An order grant-
ing 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]
§  41.10 Correspondence addresses.
Except as the Board may otherwise direct,
(a) Appeals . Corresponde nce in an applic ation 
or a patent involved in an appeal (subparts B and C of 
this part) du ring the perio d 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 ou t in § 1.1 (a)(1)(i) of this 
title.
(b) Contes ted cases . Mailed correspondence in 
contested cases (subpart D of this part) shal l be sent to 
Mail S
top INTERFERENCE, Board of Patent 
Appeals and Interferences, United States Patent and 
Trademark Office, PO Box 1450, Alexandria, Vir -
ginia 22313-1450.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.11 Ex parte  communications in inter partes
proceedings.
 An ex parte  communication abou t an inter partes 
reexamination (subpart C of this part) or about a con -
tested 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]
§  41.12 Citation of authority.
(a) Citations to authority must include:(1) For any United States Supreme Court 
decision , a United States Reports citation.
(2) For any decision other than a United 
States Supreme Court de cision , parallel ci
tation to 
both the West Reporter System and to the 
United 
States Patents Quarterly whenever the case is pub -
lished in both. Other parallel citations are discour -
aged.
(3) Pinpoint citations  whenever a specific 
holding or po rtio
n of an  authority is invoked.
(b) Non-binding authority should be used spar -
ingly. If the authority is no t an authority of the Office 
and is not reproduced in one of the reporters list ed in 
paragrap
h (a) of this section, a copy of the authority 
should be filed with the first paper in which it is cited.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.20 Fees.
(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 t h
is 
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 a ppeal 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, effec -
tive 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 4689 9, Au
g. 22, 2007, effective Sept. 30, 
2007; para. (b)  revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008]
IP/N/1/USA/D/2 
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Page 297§ 41.30 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-296Subpart B — Ex Parte Appeals
§  41.30 Definitions.
 In addition to the defin itions in § 41.2, the follow -
ing definitions apply to pr oceedings under this sub -
part unless otherwise clear from the context:
 Applicant means either the applicant i n
 a national 
application for a patent or the applicant in an applica -
tion for reissue of a patent.
 Owne r means the o w
ner of the patent undergoing 
ex parte reexamination un der § 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. Ap peal to th
e Board 
in an inter partes  reexamination proceeding is con -
trolled by subpart C of this part.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.31 Appeal to Board.
(a) Who may appeal and how to file an 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 clai ms ha
s 
been finally (§ 1.113 of th is title) rejected, may appeal 
from the decision of the exam iner to the Board by fil -
ing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) with in the time period provided 
under § 1.134 of this title for reply.
(b) The signature requirement of § 1.33 of 
this 
title does not apply to a notice of appeal filed under 
this section.(c) An appeal, when taken, must be taken from 
the rejection of all claims under rejection which the 
applicant or  ow
ner proposes  to contest. Questions 
relating to matters not affecting the merits of 
the 
invention may be required to be settled before an 
appeal can be considered.
(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 § 1.55 0(c) of this title for ex parte
reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.33 Amendments and affidavits or other evi -
dence after appeal.
(a) Amendments filed after the date of filing an 
appeal pursuant to § 41.3 1(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 fil -
ing 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) T
o rewrite dependent claims into inde -
pendent 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 permi tted by §§ 
41.39(b) (1), 41.50(a)(2)(i),  41.50(b)(1) an d 41.50(c).
(d)(1) An affidavit or other evidence filed after 
the date of filing an appeal  pursu an
t 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 over -
come s 
all rejections under appeal and that a showing 
of good and sufficient reasons why the affidavit or 
other evidence is necessary and w
as not earlier pre -
sented has been made.
(2) All other affidavits or other evidence 
filed after the date of filin g an appeal pursuant to § 
41.31(a)(1) through (a)(3) wi ll 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]
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Page 298PATENT RULES § 41.37
R-297 Rev. 8, July 2010§  41.35 Jurisdiction over appeal.
(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 rece ipt and review of the 
proceed -
ing, 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 a p
propriate 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]
§  41.37 Appeal brief.
(a)(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 accompanie d 
by the fee 
set forth in § 41.20(b)(2)
(b) On failure to file th e brief, accompanied by 
the requisite fee, within the period specified in para -
graph (a) of this section, the appeal will stand dis -
miss
ed.
(c)(1)The brief shall contain the following items 
und
er appropriate headings and in the order indicated 
in paragraphs (c)(1)(i) thr ough (c)(1)(x) of this sec -
tion, except that a brief f
iled by an appellant who is 
not represented by a registered practitioner need only 
substantially comply w ith paragraphs (c)(1)(i) 
through (c)(1)(iv) and (c)(1 )(vii) through (c)(1)(x) of 
this section:
(i) Real party in interest . A 
statement 
identifyi ng
 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 pendin g 
ap
peals, 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 deci -
sions rendered by a court or the Board in any proceed -
ing identified under this pa ragraph must be included 
in an appendix as required  by paragraph (c)(1)(x) of 
this section.(iii) Status of claims . A state
ment of the sta -
tus of all the claims in the proceeding ( e.g., reje ct
ed, 
allowed or confirmed, w ithdrawn, obj ected to, can -
ce
led) and an identification of those claims tha t
 are 
being appealed.
(iv) Status of amendments . A statement of 
the s t
atus of any amendment filed subsequent to final 
rejection.
(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 sp ecification by page and line 
numb
er, and to the drawing, if any, by reference char -
acters. For each independen t claim involved in the 
appeal and for each dependent claim argued sepa -
rately under the provisions of paragraph (c)(1)(vii) of 
this section, every means plus function an
d step plus 
functio
n as permitted by 35 U.S.C. 112, sixth para -
graph, must be identified and the structure, material, 
or acts described in the sp ecification as corresponding 
to each claimed function must be set forth with refer -
ence to the spec ification by  pag
e and line number, and 
to the drawing, if any ,
 by reference characters.
(vi) Grounds of rejection to be reviewed on 
appeal . A concise statement of each ground of rejec -
tion presented for review.
(vii) Argument . The contentio ns of ap
pellant 
with respect to each ground of re jection pres
ented for 
review in paragraph (c)(1)(vi)  of this section, and the 
basis therefor, with citati ons of the statutes, regula -
tions, authorities, and parts of the record relied on. 
Any arguments or authorities not included in the brief 
or a reply brief filed pursuant to § 41.41 will be 
refused consideration by the
 Board, unless good cause 
is shown. Each ground of rejection must be treated under a separate heading. For each ground of rejection applying 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 wa iver of any argument that 
the Board must consider the patentability of any 
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Page 299§ 41.39 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-298grouped claim separately. Any claim argued sepa -
rately should be placed under a subheading identify-
ing 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 considere d
 an 
argument for separate pa tentability of the claim.
(viii) Claims appendix . An appendix con -
taining a copy of the claims  involved in the appeal.
(ix) Evidence appendix. An append ix co
n-
taining 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 ex aminer and relied up on
 by 
appellant in the appeal, al ong with a statement setting 
forth where in the record that evidence was ente red 
in 
the record by the examiner . Reference to unentered 
evidence is not permitted in  the brief. See § 41.33 for 
treatment of evidence submitted after appeal. This appendix may also include copies of the evidence 
relied upon by the examiner as to grounds 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 pursu -
ant to paragraph (c)(1)(ii) of this section.
(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 amendments, affidavits or other evidence filed after 
final action but before or on the same date o f
 filing an 
appeal and § 41.33 for am endments, affidavits or 
other evidence filed after th e date of filing the appeal.
(d) If a brief is filed which does not comply 
with all the requirements of  paragraph (c) of this sec -
tion, appellant will be notif ied of the reasons for non-
compliance and given a
 time period within which to 
file an amended brief. If appellant  does no
t file an 
amended brief within the se t time period, or files an 
amended brief which does not overcome all the rea -
sons for non-compliance stated  in the notification, the 
appe al will sta nd dismissed.
(e) The time periods set forth in this section are 
extendable under the provisi ons of § 1.136 of this title 
for patent  applications and § 1.550(c) of this title for 
ex par te reexamin ation pro ce
edings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]§  41.39 Examiner’s answer.
(a)(1)The primary examiner may, within such 
time as may be directed by the Director, furnish a 
written answer to the appe al brief including such 
explanation of the invention claimed and of the refer-
ences relied upon and grounds of rejectio n as may be 
neces
sary, supplying a copy to appellant. If the pri-
mary examiner determines that the appeal does not comply with the provisio ns
 of §§ 41.31 and 41.37 or 
does not relate to an appe alable action, the primary 
examiner shall ma
ke such determination of record.
(2) An examiner’s answer may include a new 
ground of rejection.
(b) If an examiner’s answer contains a rejection 
designated as a new ground of re jection, appe
llant 
must within two months from the date of the exam -
iner’s answer exercise one of the following two options to avoid sua sponte dismissa
l of the appeal as 
to the claims subject to the new ground of rejection:
(1) Reop en prosecution . Request that prose -
cution be reopened before the primary examiner by filing a reply under § 1.1 1
1 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 submiss i
on of affidavits or other evi -
dence must be relevant to the new ground of rejection. 
A request that complies with this paragraph wil l be 
entered and the applicatio n or the patent under ex 
parte reexamination will be reconsidered by the 
exami ner under the provisions of § 1.1 1
2 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 each new 
ground of rejection as set forth in § 41.37(c)(1)(vii) 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 title) or other evidence. If a reply brief filed pursuant to  this section is accompa-
nied by any amendment, affi davit or other evidence, it 
shall be treated as a requ est that prosecution be 
reopened before the primary examiner under para -
graph (b
)(1) of this section.
(c) Extensions of time under § 1.136 (a) of this 
title for patent applications are not applicable to the 
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Page 300PATENT RULES § 41.47
R-299 Rev. 8, July 2010time 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 proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.41 Reply brief.
(a)(1)Appellant may file a reply brief to an exam -
iner’s answer within two months from the date of the 
examiner’s answer.
(2) A reply brief shall not include an y ne
w or 
non-admitted amendment, or any new or n o
n-admit-
ted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or o t 
her evidence filed 
after final action but before or on the same date of fil -
ing an appeal and § 41.33 for amendments, affidavits 
or other evidence filed after the date of filing the 
appeal.
(b) A reply brief that is not in compliance wi th 
paragraph (a) of this 
section will not be considered. 
Appellant will be notified if a reply brief is not in 
compliance with paragraph (a) of this section.
(c) Extensions of time under § 1. 13
6 (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 t
itle 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 proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.43 Examiner’s response to reply brief.
(a)(1)After receipt of a reply brief in compliance 
with § 41.41, the primary examiner must acknowl -
edge receipt and entry of the reply brief. In addition, the primary examiner may withdraw the final rejec -
tion and reopen prosecution or may furnish a supple -
mental exa
miner’s  answer 
responding to any new 
issue raised in the reply brief.
(2) A supple mental exa
miner’s answer 
respo nding to a reply brief may not include a new 
grou
nd of rejection.
(b) If a supplemental examiner’s answer is fur -
nished by the examiner, appellant may file another reply  brief under § 41.41 to any supplemental ex
am-
iner’s answer within two mo nths from the date of the 
supplemental examin er
’s answer.
(c) 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. S e
e § 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 proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.47 Oral hearing.
(a) An oral hearing should be requested only in 
those circumstances in which appellant considers such a hearing necessa ry or desi rable for a proper presenta -
tio
n of the appeal. An appeal decided on the briefs 
without an oral  hearing will receive the same consid -
eration by the Board as appeals decided after an  oral 
hearing.
(b)
If appellant desires an oral hearing, appel-
lant must file, as a separate paper captioned “REQUEST FOR ORAL HEARING,” a written request for suc h 
 hearing accompanied by the fee set 
forth in § 41.20(b)(3) within two months from the date of the examiner’s answer or supplemental exam -
iner’s answer.
(c) If no request and fee for oral hearing have 
been timely filed by appellant as required by para -
graph (b) of this section, th e appeal will be assigned 
for consid eratio
n and decisi on on the briefs without 
an oral hearing.
(d) If appellant has complied with all the 
requirements of paragraph  (b) of th
is section, a date 
for the oral hearing will be set, and due notice thereof 
given to appellant. If an oral hearing is h
eld, an oral 
argument may be presented by, or on behalf of, the 
primary examiner if considered desirable by either the 
primary examiner or the Boar d. A hearing will be held 
as stated in the notice, and oral argument will ordi -
narily be limited to twenty  minutes for appellant and 
fifteen minute s for the primary examiner unless other -
wise ordered.
(e)(1)Appellant will ar gue fir
st and may reserve 
time for rebuttal. At the or al hearing, appellant may 
only rely on evidence that has been  pre
viously entered 
and considered by the prim ary examiner and present 
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Page 301§ 41.50 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-300argument that has been relied upon in the brief or 
reply brief except as permitted by paragraph (e)(2) of 
this section. The primary ex aminer may only rely on 
argument and evidence relied upon in an answer or a 
supplemental answer except as permitted by para -
graph (e)(2) of this section.
(2) Upon a showing of good cause, appellant 
and/or the primary examiner may rely on a new argu -
ment based upon a recent relevant decision of either 
the Board or a Federal Court.
(f) Notwithstanding the su bmission of a request 
for oral hearing complying with t h
is rule, if the Board 
decides that a hearing is not necessary, the Board will 
so notify appellant.
(g) Extensions o f
 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 pa
rte reexamination proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.50 Decisions and other actions by the Board.
(a)(1)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 gene ral 
af
firmance 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 supplemental examiner’s answer is 
written in response to a remand by the Board for fur -
ther consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the supplemental examiner’s 
answer exercise one  of th e following 
two options to 
avoid sua sponte dismissal of the a p
peal as to the 
claims subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution . Request that pros -
ecution 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 submiss
ion of affidavits or other evi -
dence must be relevant to the issues set forth in the remand or raised in the supplemental examiner’s 
answer. A request that complies with this paragraph will be entered and the appli cation or the patent under 
ex parte  reexamination will be reconsidered by the 
exami n
er 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 pro -
vided in § 41.41. If such a reply brief is accomp
anied 
by any amendment, affida vit or other evidence, it 
shall be treated as a requ est that prosecution be 
reopened before the examiner under paragraph (a)(2)(i) of this section.
(b) Should th e Board
 have knowledge of any 
grounds not involved in th e appeal for rejecting any 
pending claim, it may include in its opinion a state -
ment to that effect with its reasons for so 
holding, 
which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to 
this paragraph shall not be  considered final for judi -
cial review. When the Boar d ma k
es a new ground of 
rejection, the appellant, within two months from the 
date of the decision, must exercise one of the follow -
ing tw o 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 appropri -
ate amendment of the claims so rejected or new e
vi-
dence relating to the claims so rejected, or both, and 
have the matter reconsider ed by the examin er
, in 
which event the proceeding will be remanded to the 
examiner. The new gr ou
nd of rejection is binding 
upon the examiner unless an amendment or new evi -
dence not previously of reco rd is made which, in the 
opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the exam -
iner reject the cl
aims, appellant may again appeal to 
the Board pursuant to this subpart.
(2) Request rehearing . Request that the pro -
ceeding be reheard under § 41.52 by the Board  u
pon 
the same record. The request for re hea
ring must 
address any new ground of rejection and state with particularity the points be lieved to have been misap -
prehended or overlook ed
 in entering the new ground 
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Page 302PATENT RULES § 41.60
R-301 Rev. 8, July 2010of rejection and also state all other grounds upon 
which rehearing is sought.
(c) The opinion of the Board may include an 
explicit statement of how a claim on appeal may be amended to overcome a specific rejection. When 
the opinion of the Board in cludes
 such a statement, 
appellant has the right to amend in conformity there -
with. An amendment in conf ormity with such st ate-
ment will overcome 
the specific rejection. An 
examiner may reject a claim so-amended, provided that the rejectio n constitutes a new ground of rejec -
tion.
(d) The Board may order appellant to addition -
ally brief any matter that the Board considers to be of 
ass
istanc e in rea
ching a reasoned decision on the 
pending appe al.
 Appellant will be given a non-extend -
able time period within whic h to respond to such an 
order. Failure to timely co mply with the order may 
result in the sua sponte dismissal of the appeal.
(e) Whenever a decision of the Boar d include
s 
a remand, that decision shall not be considered final for judicial review. When appropriate ,
 upon conclu -
sion of proceedings on remand before the examiner, the Board may enter an order otherwise making its decision final for judicial revie w 
.
(f) 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 proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.52 Rehearing.
(a)(1)Appellant may file a single request for 
rehearing within two months of the date of the origi -
nal decision of the Board. No re
quest for rehearing 
from a decision on rehearin g will be permitted, unless 
the rehearing decision so modified the original deci -
sion as to be come, in ef
fect, 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 poin ts believed to have b een
 
misapprehended or overlooked by the Board. Argu -
ments not raised in the briefs before the Board and 
evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing exce
pt as permitt ed by paragraphs (a)(2) 
and (a)(3) of this section.  When a request for rehear -
ing is made, the Board shall render a decision on the request for rehearing. The de cision on the request for 
rehearing is deemed to inco rporate the earlier opinion 
reflecting its decision for appeal, except for those por-
tions specifically withdrawn on rehe arin
g, and is final 
for the purpose of judicial  review, except when noted 
otherwise in the decision on rehearing.
(2) Upon a showing of good  
cause, appellant 
may present a new argument based upon a recent rele -
vant decision of either the Board  or 
a Federal Court.
(3) New arguments responding to a new 
ground of rejection made pursuant to § 41.50(b) 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. S e
e § 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 pa rte reexamination proceed -
ings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.54 Action following decision.
 After decision by the Board, the proceeding will be 
returned to the examiner, su bject to appellant’s right 
of appeal or other review, for such further action by 
appellant or by the exami n
er, as the condition of the 
proceeding may require, to carry into effect the deci -
sion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
Subpart C — Inter Partes  Appeals
§  41.60 Definitions.
 In addition to the defini tions in § 41.2, the follow -
ing definitions apply to proceedings under this sub -
part unless otherwise clear from the context:
Appellant  mean s 
any party, whether the o w
ner or a 
requester, filing a noti ce 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 
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Page 303§ 41.61 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-302appellant with respect to th e claims to which his or 
her appeal or cross appeal is directed.
Filing means filing with a certificate indicating ser -
vice 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.
Procee ding means a
n inter partes  reexamination 
proceeding. Appeal to the Board in an ex parte reex -
amination proc eeding is cont roll
ed by subpart B of 
this part. 
An inter partes reexamination proceeding is 
not a contested case subject to subpart D.
Requester  mea n
s 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 resp ond
ing under § 41.68 to the appellant’s 
brief of any requester. No requester may be a respon -
dent to the appellant brief of any other requester.
 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.61 Notice 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 r espect 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 se
t 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 r espect to any final decision 
favorable to the patentability, including any final 
determination not to make a proposed rejection, of 
any original, proposed  am
ended, or new claim of the 
patent by filing a notice of appeal within the time pro -
vided 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 § 
41.2
0(b)(1), an owner wh o 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 up on
 payment of the fee set forth in §41.20 (b)(1), a requester wh o 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 pro -
posed 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 th e appealed c laim(s) 
and 
must be signed by the owner, the reque s
ter, or a duly 
authorized attorney or agent.
(d) An appeal or cross ap peal, when taken, must 
be taken from all the rejections of the claims in a 
Right of Appeal Notice which the patent owner pro -
poses to contest or from a ll the determinations favor -
able to patentability, including any final determination 
not to make a proposed rejection, in a Right of 
Appeal 
Notice which a requester proposes to contest. Ques -
tions relating to matters not affecting the merits of the 
invention may be required to be settled before an 
appe
al is decide d.
(e)
The time periods for filing a notice of 
appe al or cross appeal may not be extended.
(f) If a notice of 
appeal or cross appeal is 
timely filed but does no t comply with any 
require -
ment of this section, appellant will be notified of the reasons for non-compliance and given a non-extend -
able 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-com -
pliance stated in the noti fication of the reasons for 
non-complia nce, that appellant’ s appeal or cross 
appeal will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.63 Amendments and affidavits or other evi -
dence 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 admit-
ted except as perm itted by § 41.77(b)(1).
(c) Affidavits or other ev idence filed after the 
date of filing an appeal pursuant to § 41.61 will not be 
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Page 304PATENT RULES § 41.67
R-303 Rev. 8, July 2010admitted except as permitte d by reopening prosecu-
tion under § 41.77(b)(1).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.64 Jurisdiction 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 rece ipt and review of the 
proceed -
ing, 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 a p
propriate 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]
§  41.66 Time 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 entitled to 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 servi
ce 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 appel -
lant’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 mont h o
f the  da
te of the exam-
iner’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 submissi on 
will be treated in accordance 
with § 1.939 of this title.[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.67 Appellant’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 accor -
dance with § 1.903 of this title.
(2) The  
brief must be signed by the appellant, 
or the appellant’s duly auth orized attorney or agent 
and must be accompanied by the requisite fee set forth 
in § 4
1.20(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 u nder §
 41.66(a).
(c)(1)The appellant’s brief shall contain the fol -
lowing items under appropriate headings and in the 
order indicated in para graphs (c)(1)(i) through 
(c)(1)(xi) of this section.
(i) Real party in interest . A statement 
identifying
 by name the real party in inter e
st.
(ii) Related appeals and interferences . A 
statement identifying by applic ation, patent, appeal or 
interference number all oth
er 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 deci -
sions rendered by a court or  the Board in any proceed -
ing identified under this pa ragraph must be included 
in an appendix as required by paragraph (c)(1)(xi) of 
this section.
(iii) Statu s
 of claims . A statement of the sta -
tus of all the claims in th e pr
oceeding (e. g., re
jected, 
allowed or confir med, w ithdrawn, obj
ected to, can -
celed). If the appellant is the owner, the appellant 
must also identify the rejected claims whose re jection 
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 amendmen t filed subsequent to the 
close of prosecution.
(v) Summary  
of claimed subject matter . A 
concise explanation of the subject matter defined 
IP/N/1/USA/D/2 
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Page 305§ 41.67 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-304in each of the independent claims involved in the 
appeal, which shall refer to  the specification by col -
umn and line number, and to th e drawing(s), if any, by 
reference characte
rs. For each independent claim 
involved in the appeal an d for each depend ent cla
im 
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 cor -
responding 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 char -
acters.
(vi) Issues to be reviewed on appeal . A 
concise stateme n
t of each issue presented for review. 
No new ground of rejection can  be pro
posed by a 
third party requester appellant, unless such ground was withdrawn by the examiner during the prosecu -
tion of the proceeding, and the third party requester 
has not yet had an opportunity to propose it as a third 
party requ ester p roposed g round of rejection .
(vii) Argument . The contentions of appellant 
with respec t to eac h issue pres ented for revie w in 
paragraph (c)(1)(vi) of this  section, a nd the basis 
therefor , with citations of the stat utes, regulations, 
authorities, and parts of the record relied on. Any 
arguments or authorit
ies not included in the brief per -
mitted under this section or §§ 41.68 and 41.71 will 
be refused consideration by the Board, unless good cause is shown. Eac h
 issue must be treated under a 
separate heading. If the appella nt is the patent owner, 
for each ground of rejection in the Right of Appeal Notice which appellant cont ests and which applies to 
two or more claims, the claims may be argued sepa -
rately 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 c 
laim from 
the group of claims that are argued together to decide 
the appeal with respect to th e group of claims as to the 
ground of rejection on the ba sis 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 consider ed an argument for sepa -
rate patentability of the claim.
(viii) Claims appendix . An appendix con -
taining a copy of the claims to be reviewed on appeal.
(ix) Evidence appendix . An appendix con -
taining copies of any evid ence submitted pursuant to 
§§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered b y
 the examiner and relied upon by 
appellant in the appeal, along with a statement setting 
forth where in the record tha t
 evidence wa s 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 rejec-tion 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 pursu -
ant to paragraph (c)(1)(ii) of this section.
(xi) Cert
ificate 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 address es of the parties se
rved must 
be indicated.
(2) A brief shall not include any new or non-
admitted amendment, or any new or non-admitted 
affidavit or other evidence. S ee § 1.116 of this title for 
amendments, affidavits or other ev idence 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 da te of filing the appeal.
(d) If a brief is filed which does not comply 
with all the requirements of paragraph (a) and para -
graph (c) of this section, appellant will be notified of 
the reasons for non-comp liance an d 
given a non-
extendable time period w ithin which to file an 
amended brief. If appellant does not file an amended brief within the set time pe riod, or files
 an amended 
brief which does not overcome all the reasons for non-compliance stated in th e notification, that appel-
lant’s appeal will stand dismissed.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
IP/N/1/USA/D/2 
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Page 306PATENT RULES § 41.68
R-305 Rev. 8, July 2010§  41.68 Respondent’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 ra is
ed in the appe llant 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 brie f shall contain the fol -
lowing items under appropria te headings and in the 
order he
re indicated, and may include an appendix 
con
taining only those portion s
 of the record on which 
reliance has been made.
(i) Real Party in Interest . A statement 
identifying by  name t
he real party in interest.
(ii) Related Appeals and Interferences . A 
statement identifying by application, patent, appeal or 
interference number all other prior and pen d
ing 
appeals, interferences or judicial proceedings known to respondent, the responden t’s legal representative, 
or assignee which may be rela ted 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 pro -
ceeding identified under this paragraph must be included in an appendix as required by pa rag
raph 
(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 ap pellant’s statement must be 
specified with particularity.
(iv) Status of amendments . A statement 
accepting or disputing appe llant’s statement of the 
status of amendments . If ap pellant’
s statement of the 
status of amendments is disputed, the errors in appel -
lant’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 indepen -
dent claims involved in th e appeal. If appellant’ s sum -mary of the subject matter is  disputed, the
 errors in 
appellant’s summary must be specified .
(vi) Issues to be 
reviewed on appeal . A 
statem
ent accepting or disputing appellant’s statemen t 
of the
 issues presented for review. If appellant’s state -
ment of the issues presented for review is disputed, the errors in appellant’s st atement 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 con -
tention of the appellant 
is disputed, the errors in 
appellant’s argument must be specified, stating the 
basis therefor, w i
th citati ons of the statutes, regula -
tions, authorities, and parts of the record relied on. Each issue must be treated under a separate heading. 
An a r
gument 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 con -
taining copies of any evid ence submitted pursuant to 
§§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examin er and relied up
on by 
respondent in the appeal, along w
ith a statement set -
ting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the respon -
dent’s brief. S e
e § 41.63 for treatment of evidence 
submitted after appeal.
(ix) Related proceedings appendix . An
 
appendix containing copies of  decis i
ons rendered by a 
court or the Board in any proceeding identified pursu -
ant 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 t
o 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 amendmen t, or any new or non-
admitted affidavit or other evidence. See § 1.116 of 
this title for amendments, af fidavits or other e v
idence 
filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affi -
IP/N/1/USA/D/2 
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Page 307§ 41.69 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-306davits or other evidence f iled 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 respon dent brief wh
ich does not overcome 
all the reasons for non-compliance stated in the notifi -
cation, the respondent br ief and any amended respon -
dent brief by that responde nt will not be considered.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.69 Examiner’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 b
e neces -
sary, 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 adoptin g an
y proposed rejection. A copy of the 
answer shall be supplied to the owner and all request -
ers. If the primary examin er determines that the 
appeal does not comply wi th the provisions of §§ 
41.61, 41.66, 41.67 and 41
.68 or does not relate to an 
appealable action, the prim ary 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 ma ke a proposed reje ction 
of a cla
im.
(d) Any new ground of rejection, or any new 
determination not to make a propose d
 rejection, must 
be made in an Office action reopening prosecution.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.71 Rebuttal 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 respon -
dent brief.
(2) The rebuttal brief of the owner shall not 
include any new or non-ad mitted amendment, or an 
affidavit or other evidence. S ee § 1.11 6 of this ti
tle 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 respon -
dent brief of the owner.
(2) The rebuttal bri e
f of a requester may not 
be directed to the respondent brief of any other 
requester.
(3) No new ground of rejection can be pro -
posed
 by a requester.
(4) The rebuttal brief of  a requester shall not 
include any new or non-admitted affidavit or other evidence. See § 1.1 1
6(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 fil -
ing the appeal.
(d) The rebuttal brief must include a certifica -
tion that a copy of the rebu ttal brief has been served in 
its entirety on all other parties to the proceeding. The names and addresses of the parties served must be indicate d
.
(e) If a rebuttal brief is timely filed under para -
graph (a) of this section bu t does not comply with all 
the requirements of paragrap hs (a) through (d) of this 
section, appellant will be no tified of the reasons for 
non-compliance and provided with a non-extendable period of on e mon
th within which to file an amended 
rebuttal brief. If the appe llant 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 appella nt’s rebuttal brief and any 
amended rebuttal brief by th at appellant will not be 
considered.
[Added, 69 FR 4995 9, Aug. 12, 2004, effective Sept. 
13, 2004]
IP/N/1/USA/D/2 
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Page 308PATENT RULES § 41.77
R-307 Rev. 8, July 2010§  41.73 Oral 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 prese ntation 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 certif ication that a copy of the 
request has been served in its entirety on all other par -
ties to the proceeding. The names and addresses of the 
parties served must be indicated.
(c) If no request an d fee fo
r 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 sec-
tion, a hearing date will be set, and notice given to the owner and all requeste rs. If an oral hearing is
 held, an 
oral argument may  
be presented by, or on behalf of, 
the primary examiner if cons idered desirable by either 
the primary examiner or th e 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 hear -
ing. A hearing will be held as stated in the notice, and 
oral ar gument will be limited to thirty minutes for 
each appellant or respondent who has requ e
sted an 
oral hearing, and twenty  minutes for the primary 
examiner unless otherwise or dered. 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 c
onsidered 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 up on 
 a recent relevant decision 
of either the Board or a Federal Court.
(f) Notwithstanding the su bmission of a request 
for oral hearing complying w
ith 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]
§  41.77 Decisions and other actions by the Board.
(a) The Board of Patent Appeals and Interfer -
ences, in its decision, may affirm or reverse each deci-sion of the examiner on all issues raised on each 
appealed claim, or remand the reexamination pro -
ceeding to the examiner for further consid
eration. The 
reversal of the examiner’s determination not to make 
a rejection p r
oposed by the third party requester con-
stitutes 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 
Paten
t 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 n
ew 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 hold ing, 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 
IP/N/1/USA/D/2 
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Page 309§ 41.79 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-308of rejection to avoid term ination of the appeal pro -
ceeding 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 Boa rd 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) 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 previ -
ously 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 com -
ments from a requester under paragraph (c) of this section, the proceeding will be remanded to the exam -
iner. The statement of the Bo ard shall be binding upon  
the
 exam
iner unless an amendment or new evidence 
not pre
viously of record is made which, in the opinion 
of the examiner, overcomes the new ground of rejec -
tion stated in the decision. The examiner will consider any owner response under pa ragraph (b)(1) of this 
section and any written comm ents by a requester 
under paragraph (c) of this section and issue a deter -
mination that t
he rejection is maintained or has been 
overcome.
(e) Within one month of the examiner’s deter -
mination 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 servic e of comments in response 
to the examiner’ s
 determin ation, the owner and any requesters may file a re ply to the comments. No 
requester reply may address the comments of any 
other requester reply. Any requester that had not pre -
viously 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 submiss
ion of any comments and any 
reply pursuant to paragraph (e) of this section, or after 
time has expired, the proceed ing will be returned 
to 
the Board which shall reconsider the matter and issue 
a new decision. The new decision is deemed to incor-
porate 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 provi -
sions of § 1.956 of this  title when the owner is 
responding under parag
raph (b)(1) of this section. The 
time period set forth in para graph (b) of this section 
may
 not be  ex
tended when  the owner is responding 
under paragraph (b)(2) of th is section. The time peri -
ods 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]
§  41.79 Rehearing.
(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 und er 
§ 41
.77(a),
(2) The original § 41.77(b) decision und er 
th
e 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 reh earing must state with 
particularity the points be lieved to  have been misap -
pre
hended or overlooked in rendering the Board’s 
opinion reflecting its decision. Ar
guments not raised 
in the briefs be fore the B
oard and evidence not previ-
ously relied upon in the brie fs are not permitted in the 
request for rehearing except as permitted by para -
graphs (b)(2) and (b)(3) of this section.
IP/N/1/USA/D/2 
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Page 310PATENT RULES § 41.102
R-309 Rev. 8, July 2010(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 un der paragraph (a) of this 
section, or any further re quest 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 lim -
ited 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 fur -
ther request for rehearing under th is section, the 
Boa
rd shall render a deci si
on on the requ est fo
r 
rehearing. The decision on the request for rehearing is 
deemed to incorporate the ea rlier opinion reflecting its 
decision for appeal, except  for those portions specifi -
cally withdrawn on rehearing and is final for the pur-
pose 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 de
cision, and the Board so indicates, then any 
party to the appeal may, within one month of the new decision, file a further re quest 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 sectio n, for requesting further 
rehearing under paragraph (c) of this section, and for 
submitting comments under pa ragraph (b) of this sec -
tion may not be extended.
 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.81 Action 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 parti
es’ 
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
§  41.100 Definitions.
 In addition to the defini tions in § 41.2, the follow -
ing definitions apply to proceedings under this sub -
part:
Business day means a
 day other than a Saturday , 
Sunday
, or Federal holiday within the District of 
Columbia.
Involved  means the Board has declare d
 the patent 
application, patent, or claim so de scribed 
to be a sub-
ject of the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.101 Notice 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 cor -
respondence address of record for the party, the Boa
rd 
may authorize other modes of notice, including:
(1) Sending notice to another address associ -
ated with the party, or
(2) Publishing the notic
e in the Official 
Gazette of the United States Pate nt and T
rademark 
Office.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.102 Completion of examination.
 Before a contested case is  initiated, except as the 
Board may otherwise authorize, for each involved application and patent:
(a) Examination o
r reexamination must be 
completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the 
conte sted case, and
(2) Would be involved in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
IP/N/1/USA/D/2 
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Page 311§ 41.103 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-310§  41.103 Jurisdiction over involved files.
 The Board acquires jurisdiction over any involved 
file when the Board initiat es 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]
§  41.104 Conduct of contested cases.
(a) The Board may determine a proper course 
of conduct in a proceeding for any situation not spe -
cifically covered by this pa rt and may enter non-final 
orders to  a
dminister the proceeding.
(b) An administrative patent ju dg
e may waive 
or suspend in a proc eeding th e application of any rule 
in this subpart, subject  to such conditions  as the 
admini strativ e patent judge may imp ose.
(c) Times set in this subpart are defaults. In the 
event of a conflic t betwe en a time se t by rule a n
d a 
time set by order, the time set by order is controlling. 
Action due on a day o t
her 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]
§  41.106 Filing 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 lar
ger 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  pe
rmanent, dark, 
high-contrast image on the pa per. The quality of print -
ing must be equival e
nt 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 large r 
and a monospaced font must not con -
tain more than 4 characters per centimeter (10 charac -ters 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 si ngle-spaced and mu
st 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 indicat -
ing the party and contact in formation 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 othe
r than 
white for the cover sheet, th e cover sheet must be that 
color.
(2) Papers must have two 0.5 cm (¼ inc h
) 
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 refer e
nce; combined 
papers . Arguments must not be incorporated by refer -
ence from one paper into an other paper. Combined 
motions, oppositions, replies, or other combined papers are not permitted.
(4) Exhibits . Additional requirements for 
exhibits appear in  § 4
1.154(c).
(c) Workin g co
py. Every paper filed mu st 
be 
accompanied by a working copy marked “APJ Copy”.
(d) Specific filing forms . (1) Filing by mail . A 
pap
er 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® mail -
ing label; otherwise, mail w ill be deemed to be filed 
as of the stam ped date of 
receipt at the Board.
(2) Other modes of filing.  The Board ma y 
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 simultaneousl y 
on
 every opposing party except as th e Bo
ard 
expre ssly directs
.
(2) If a party is represented by counsel, ser -
vice must be on counsel.
IP/N/1/USA/D/2 
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Page 312PATENT RULES § 41.110
R-311 Rev. 8, July 2010(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 sepa -
rate pa
ge at the end of each paper that must be served 
on an opposing party.
(2) Exhibits must be accompanied by a
 cer-
tificate of service, but a single certificate may accom -
pany 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 pate
nt practitione r must be in the form of 
an affidavit.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.108 Lead 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 applica -
tion or patent, then a power of attorney for that coun -
sel for the party’s involved application or patent must be filed with the notice requ ired in paragraph (b) of 
this section.
(b) Within 14 days of the initiation of each con -
tested case , 
each party must file a
 separate notice 
iden
tifying its counsel, if any, and provi din
g 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 ava ilable for such delivery (for 
example, when the mailing ad dress is a Post Office 
box);
(3) A telephone number;(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]
§  41.109 Access 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 c
ontested case must be filed with 
the Board. The request must  precisely identify the 
records and in the case of copies include the appropri -
ate fee set under § 1. 19(b) of this title.
(b) Authorization of acces s 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 appli c
ation; and
(3) An application for wh ich
 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 authorizatio n, th
e party must promptly 
notify the Board.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.110 Filing 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 biotec hnol-
ogy mate
rial sequence is a limitation, a clean copy of 
the sequence.
(b) Annotated copy of claims . With in 2
8 days of 
the initiation of the proceeding, each party must:
(1) For each invol ved claim h
aving a limita -
tion that is illustrated in a drawing or biotechnology 
material sequence, file an annotated copy of the claim 
indicating in bold fa ce betwe
en braces ({}) where 
each limitation is shown in the drawing or sequence.
(2) For each involved claim that contains a 
means-plus-function or st ep-plus-function limitation 
in the form permitted under 35 U.
S.C. 112(6), file an 
annotated copy of the clai m indicating in bold face 
between braces ({}) the specific portions of the speci -
IP/N/1/USA/D/2 
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Page 313§ 41.120 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-312fication 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 disclo-
sure of the patent or application provides written 
description of the subject matter of the claim, and
(3) Whe re applic
able, a copy of the claims 
annotated according to paragraph (b) of this section.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.120 Notice of basis for relief.
(a) The Board may require a party to provide a 
notice stating the relief it re quests 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 consiste nt with the notice. Ambi -
guities in the notice will be construed against the 
party. A  notice 
is not evidence except as an admission 
by a p
arty-opponent.
(c) Correction . A party may move to correct its 
notice. The motion should be  filed promptly aft
er the 
party becomes aware of the basis for the correction. A correction filed after the tim e 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]
§  41.121 Motions.
(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 co ntested 
cas
e,
(ii) To change benefit accorded for the 
contested subj ect 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 c h
ange inventorsh ip, or otherwise to cure a defect ra
ised in a notice of requested relief or in a sub -
stantive motion.
(3) Miscellaneous motions.  Any request for 
relief other than a substa ntive or responsive motion 
must be  file
d as a miscellaneous motion.
(b) Burden of proof . The party filing the motion 
has the burden of proof to es tabli
sh that it is entitled to 
the requested relief.
(c) Content of motions; opp ositions and replies . 
(1) Each motion must be filed as a separate pa pe
r and 
must include:
(i) A statement of the precise  relief 
requ
ested,
(ii) A statement of material facts (see para -
graph (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 ev idence and the gove rnin
g 
law, rules, and precedent.
(2) Compliance with rules. Where a rule in  
part 1 of this title ordinar ily governs the relief sought, 
th
e motion must make any showings required under 
that rule in addition to any showings required in 
this 
part.
(3) The Board may order additional show -
ings or explanations as a condition for filing a motion.
(d) Statement of material facts . (1) Each mate -
rial fact shall be set forth as a separate numbered sen -
tence with specific citations to the portions of the record that support the fact.
(2)
The Board may re qu
ire that the statement 
of material facts be s ubmitted as a separate paper .
(e) Clai
m 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 sp
ecification. Cl aim charts must accompany 
the paper as an appendix. Claim charts are not a sub -
stitute 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]
§  41.122 Oppositions and replies.
(a) Oppositions and repli es must comply with 
the content requirements for motions and must 
include a statement identifying material facts in dis -
IP/N/1/USA/D/2 
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Page 314PATENT RULES § 41.125
R-313 Rev. 8, July 2010pute. Any material fact no t 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 
respo nd to ar
guments raised in the corresponding 
opposition.
 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.123 Default 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 acti ng 
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 op
pose 
the miscellaneous motion, the movant may not file the 
motion without Board authorization. Such authoriza -
tion should ordinarily be ob tained through a telephone 
conferen c
e 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 bu s
iness 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 ot
herwis
e order.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]§  41.124 Oral 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  th
ree working copies of the motion, the oppo -
sition, and the reply. Each party is responsible for pro -
viding three working copies of its exhibits relating to the motion.
(c) Length of argument . If a request for oral 
ar
gument is granted, each pa rty will have a total of 20 
minutes to present its argu ments, 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 th
e time of the oral argument.
(e) Transcription . The Board encourages the 
use of a transcription se rvic
e at oral arguments but, if 
such a service is to be used, the Board must be noti -
fied in advance to ensure adequate facilities are avail-
able 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]
§  41.125 Decision 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 inex -
pensive determination of th e proceeding. A decision 
on a motion may include deferral of action on an issue until a later point in the proceeding.
(b) Interloc uto
ry decisions . A decision on 
motions without a judgment is not final for the pur -
poses of judicial review. A panel decision on an issue 
will govern further proceedings in the contested case. 
(c) Rehearing —(1) T
ime 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.
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Page 315§ 41.126 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-314(3) Burden on rehearing . The burden of 
showing a decision should be modified lies with the 
party attacking the decision . The request must specifi -
cally identify:
(i) All matters the party believes to have 
been misapprehended or overlooked, and
(ii) The place where the matter was pre v
i-
ously addressed in a moti on, 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 rehe arin
g may 
request that a panel rehear the de cision. A 
panel 
rehearing a procedural decision will review the deci -
sion for an abuse of discretion.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.126 Arbitration.
(a) Parties to a contested case may resort to 
binding arbitration to determine any issue in a con-
tested case. The Office is not a party to the arbitration. The Board is not bound an d 
may independently deter -
mine questions of patent ability, jurisdiction, and 
Of
fice practice.
(b) The Board will not authorize arbitration 
unless:
(1) It is to be conducte d according to T i
tle 9 
of the United States Code.
(2) The parties notify the Boar
d 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 selectio n of the arbitrator, and
(iv) Provides that the arbitrator’s award 
shall be 
binding on the parties and that judgment 
thereon can be entere d by the
 Board.
(4) A copy of the a
greement is filed within 
20 days after its execution.
(5) The arbitration is completed within the 
time the Board sets.
(c) The parties are  sole ly responsible 
for the 
selection of the arbitrator and the conduct of proceed-
ings before the arbitrator.(d) Issues not disposed of by the arbitration will 
be resolved in accordance with the proced
ures estab-
lished in this subpart.
(e) The Board will not consider the arbitration 
award unless it:
(1) I s bi
nding on the parti e
s,
(2) Is in writing,
(3) States in a clear and definite manner each 
issue arbitrated and the disp osition of each issue, and
(4) I
s 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 dispos itive of the contested sub -
ject matter 
for a party, th e Board may  en
ter judg me
nt 
as to that party.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§  41.127 Judgment.
(a) Effect within Office —(1) Estoppel . A judg -
ment disposes of all issues that were, or by mo tio
n 
could have properly been, raised and decided. A los -
ing party who could have properly moved for relief on an issue, but did not so mo ve, may not t
ake 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 a n
y contested 
subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim . Adverse judg -
ment against a claim is a final action of the Office requiring no further action by the Office to dis 
pose of 
the claim  pe
rmanently.
(b) Reque st for adverse judgment . A party may 
at any time in the procee ding request judgment 
against itself. Actions construed to be a request for adverse judgment include:
(1) Abandonment of an in vo
lved application 
such that the party no lo nger 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
IP/N/1/USA/D/2 
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Page 316PATENT RULES § 41.152
R-315 Rev. 8, July 2010(4) Abandonment of the contest.
(c) Recommendation . The judgment may 
include a recommendation fo r further action by the 
e
xaminer 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 rejec -
tion.
(d) Rehearing . A party dissatisfied with the 
judgment may file a reques t for rehearing within 30 
days of the entry of the judgmen t
 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]
§   41.128  Sanctions.
(a) The Board may impose a sanction against a 
party for misconduct, including:
(1) Failure to comply w ith an applicable rule 
or
 order in the proceeding;
(2) Advancing a misleading or frivolous 
request for relief or argument; or
(3) E ngaging 
in dilatory tactics. 
(b) Sanctions include entry of:
(1) An order ho ldin
g certain facts to have 
been established in the proceeding;
(2) An order expunging, or pr eclu
ding a 
party from filing, a paper;
(3) An order precluding a party from present -
ing or contesting a particular issue;
(4) An order precluding a party from request -
ing, obtaining, or opposing discovery; 
(5) An order excluding evidence;
(6) An order awarding compensatory 
expe nses, including attorney fees;
(7) An order requiring terminal di
sclaimer of 
patent term; or
(8) Judgment in the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]§   41.150  Discovery.
(a) Limited discovery . A party is not entitled to 
discovery except as authorized in this subpart. The 
parties may agree to disc overy among thems
elves at 
any time. 
(b) Automatic discovery . (1) Within 21 days of 
a request by an oppo
sing party, a party must:
(i) Serve a legible copy of every requested 
patent , patent application, lite rature reference, and test 
standard mentioned in the specification of the party’s 
involved patent or ap plication
, or application upon 
which the party will rely for benefit, and, if the requested material is in a la nguage 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 o
therwise, 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 ap pro
priate, a party may obtain 
production of documents and things during cross examin ation
 of an opponent’ s witness or during testi -
mony authorized under § 41.156.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.151  Admissibility.
Evidence that is not taken,  sought, or filed in accor -
dance with this subpart shall not be admissible.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.152  Applicability of the Federal Rules of 
Evidence.
(a) Generally . Except as otherwise provided in 
this subpart, the Federal Ru les of Evidence shall apply  
to c
ontested cases. 
(b) Exclusions . Those portions of the Federal 
Rules of Evidence relating to  criminal proceedings, 
IP/N/1/USA/D/2 
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Rev. 8, July 2010 R-316juries, and other matters not relevant to proceedings 
under this subpart shall not apply.
(c) Modifications in t erminology . Unless other -
wise clear from context, th e following terms of the 
Federal Rules of Evidence shall be construed as indi -
cated: 
Appellate court  means United Stat es Court 
of Appeals for the Federal Circ ui
t or a U n
ited States 
district c o
urt when judicia l
 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 te stifies.
(ii)
In Federal Rule of  Evidence 804(a)(5), 
the time for taking testimony.
Judge  means the Board.
Judicial notice  means of
ficial notice.
Trial or hearing  means, in Federal Rule of Evi -
denc
e 807, the time for taki
ng testimony.
(d) The Board, in determining foreign law, may 
consider a ny 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]
§   41.153  Records of the Office.
 Certification is not necessary as a condition to 
admissibility when the eviden ce 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]
§   41.154  Form 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 pa rty relies on 
a document or i s
 required to produce a document in a 
language other th an
 English, a translation of the docu -
ment into English and an affidavit attesting to the 
accuracy of the translation must be filed with the doc -
ument.(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 procee ding 
number in 
the following format:
JONES EXHIBIT 2001
Jones v. SmithContested  Case 10
4,999
(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 with -
out obscuring information on the first page or, if 
obscuring is unavoidable, af fixed 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 file d, 
the exhibi
t list should note that fact. The Board may 
require the filing of a curre nt exhibit list prior to act -
ing 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]
§   41.155  Objection; motion to exclude; motion in 
limine.
(a) Deposition.  Objections to deposition evi -
dence must be made duri ng the deposition. Evidence 
to cure the objection must be provided during the dep -
ositi
on unless the parties to  the deposition stipulate 
otherwise on t h
e 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 depos
ition 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 objectio n by serving supplemental 
evide n
ce 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]
IP/N/1/USA/D/2 
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Page 318PATENT RULES § 41.157
R-317 Rev. 8, July 2010§   41.156  Compelling testimony and production.
(a) Authorization required . A party seeking to 
compel testimony or produ ction of documents or 
things must file a misce llaneous motion for authoriza -
tion. The miscellaneous motion must desc
ribe the 
general relevance of the tes timony, document, or thing 
and must:
(1) In the case of testimony, identify the wit -
ness 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 . Fo
r testimony or 
production sought outsid e the United States, the 
motion must a l
so:
(1) In the case of testimony . (i) Identify the 
foreign country and explain why the pa rty b
elieves 
the witness can be compelled to testify in the foreign 
country, including a descripti on 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 secur e the agreement of the wit -
ness to testify in the Unite d States but has been unsuc -
cessful in obtaining the agreement, even  thou
gh the 
party has o f
fered to pay the expenses o
f 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 foreig n country and explain 
why the party believes productio n o
f the document or 
thing can be compelled in the foreign country, includ -
ing a description of the proced ures that will be used to 
compel production of the document  o
r 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 obtai n the agreement of the indi -
vidual or entity having posses sion, custody, or control 
of the document to produce the  do
cument  or th
ing in 
the United States but has be en unsuccessful in obtain -
ing that agreement, even though the party has offered to pay the expenses of pro d 
ucing the document or 
thing in the United States.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]§   41.157  Taking testimony.
(a) Form . Direct testimony must be submitted 
in the form of an affidavi t except when the testimony 
is compelled under 35 U.S.C. 24, in which case it may be in the form of a de po
sition transcript.
(b) Time and location. (1) Uncompelled direct 
testimony  may be taken at any time; otherwise, testi -
mon
y 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  t
aken 
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 par -
ties cannot agree, the party se
eking the testimony 
must initiate a conference with the Board to set a time 
and place.
(2) Cross-examination should ordinarily take 
place after any supple m
ental evidence relating to the 
direct testimony has been filed and more than a wee k
 
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 wit -
nesses are to be cross-examined.
(3) In the case of direct testimony, at least 
three business days prior to the conference  in pa
ra-
graph (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 con
trol 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 contro l an
d 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
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Page 319§ 41.158 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-318(iv) A general description of the scope and 
nature of the testim ony 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) Depo sition in a foreign language . If an 
interpreter will be used du ring the deposition, the 
party calling the witness must initiate a 
conference 
with the Board at least five business days before the 
deposition.
(e) Manner of taking testimony . (1) Each wit -
ness before giving a deposition shall be duly 
sworn 
according to law by the officer before whom the depo -
sition is to be taken. The officer must be authorized to 
take testimony un
der 35 U
.S.C. 23.
(2) The testimony shall be  taken in answer to 
interrogatories with an y questions and answers 
recorded in their regular or der by  the
 officer, or by 
some other disinterested pers on in the presence of the 
office r
, unless the presence of the officer is waived on 
the record by agreement of all parties.
(3) Any exhibits relied upon must be num -
bered 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 qualificati ons of the officer taking 
the deposition, the manner of  taking it, the evidence 
presented, the con d
uct of any party, and any other 
objection to the proceeding shall be noted on the record by the of fic
er. 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 affi -
davit) a transcript of the deposition unless:
(i) The parties otherwise agree in writing, 
(ii) The parties waiv e reading an
d signa -
ture 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 c ertified 
tran-
script by attaching to the tr anscript of the deposition a 
certificate in the form of an af
fidavit signed and 
sealed by the officer. Unless the parties wa ive any of 
the following requirements , in which case the certifi -
cate s h
all so state, the certificate must state:(i) The witness was duly sworn by the 
officer before commencemen t 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 re corded in the presence of 
the officer;
(iv) The pre sence or abse
nce of any oppo -
nent;
(v) The pla ce where
 the deposition was 
taken and the day and hour when the deposition began 
and end e
d;
(vi) The officer has no disqualifying inter -
est, personal or financial, in a party; and
(vii) If a witness refuses to read or sign the 
transcript, the circumstan ces under which the witness 
refused.
(7) The officer must promptly provide a copy 
of the transcript to all par ties. The prop
onent 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 qualifi -
cations of the officer, is wa
ived unless made on the 
record during the depositio
n and preserved in a timely 
filed miscellane o
us motion to exclude.
(f) Costs . Except as the Board may order or the 
parties may agree in writing, the proponent of the tes -
timony shall bear all costs associated with the testi -
mony, including the reasonable costs associated with 
making the w
itness availa ble for the cross-examina -
tion.
 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.158  Expert 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 wil
l 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:
IP/N/1/USA/D/2 
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Page 320PATENT RULES § 41.202
R-319 Rev. 8, July 2010(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) A
ny other information necessary for the 
Board to ev aluate the test and data.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
Subpart E — Patent Interferences
§   41.200  Procedure; pendency.
(a) A patent interference is a contested case 
subject to the procedures set forth in subpart D of this 
part.
(b) [Reserved]
(c) Patent interferences shall be administered 
such that pe ndency 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]
§   41.201  Definitions.
 In addition to the definitio ns in §§ 41.2 and 41.100, 
the following definitions ap ply to proceedings under 
this subpart:
Accord benefit  means Board recognition that a 
patent application provides a proper constructive 
reduction to prac
tice un de
r 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 applic ation 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 applica -
tion or patent. For the chain to be continuous, each 
subsequent application must have been co-pending 
under 35 U.S.C. 120 o r
 121 or timely filed under 35 
U.S.C. 119 or 365(a). Count  means the Board’s description of the inter -
fering subject matter that sets the scope of admissible 
proofs on priority. Where there is more than one 
count, each count must desc ribe a patentab
ly dis t
inct 
invention.
Involved claim  means, for the purposes of 35 
U.S.C.135(a), a claim that has been designated as cor -
responding to the count.
 Senior pa
rty means the party entitled to the pre -
sumption under § 41.207(a)(1) that it is the prior 
inventor. An y oth
er party is a junior party .
 Threshold issue  means a n
 issue that, if resolved in 
favor of the mo vant,
 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 unde r 
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 a p
plicant suggested, or 
could have suggested, an interference under § 
41.202(a).
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.202  Suggesting an interference.
(a) Applicant. An applicant, including a reissue 
applicant, may suggest an interference with another 
application or a patent . The suggestion m us
t:
(1) Provide sufficient information to identify 
the application or patent with which the applicant 
seeks an inte
rference,
(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 corre -
sponding to the co unt and show why the claims inter -
fere within the meaning of § 41.203(a),
(4) Explain in detail why t h
e applicant will 
prevail on priority,
IP/N/1/USA/D/2 
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Page 321§ 41.203 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-320(5) If a claim has been added or amended to 
provoke an interference, provide a claim chart show -
ing the written description for each claim in the appli -
cant’s specification, and
(6) For each constructive reduction to prac -
tice for which the applicant wishes to be accorded 
benefit, provide a chart showing where the disclosure 
provides a constructive redu ction to practice within 
the scope of the interfering subject matter.
(b) Patentee . A patentee cannot sugge st an
 
interference under this sectio n 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 sectio n. 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 
appare nt earlies
t constructive reduction to practice for 
a patent or published ap plication claiming 
interfering 
subject matter, the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority 
under paragraph (d)(1) of th is section, an administra -
tive patent judge may nevertheless declare an interfer -
ence to place the applicant under an order to show 
cause why judgment should not be entered a g
ainst the 
applicant on priority. New ev idence in support of pri -
ority will not be admitted except on a showing of good cause. The Board may authorize the filing  of 
motions to redefine 
the interfe ring subject matter or to 
change the be nefit ac
corded 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 determ in
ation of prior -
ity in favor of the party making the showing.(2) When testimony or production necessary 
to show priority is not av ailable without authorization 
under § 41.150(c) or § 41.156(a), the showing sh
all 
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 requ est 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]
§   41.203  Declaration.
(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  
obvi-
ous the subject matter of a claim of the opposing party and vice versa.
(b) Notice of declaration . An administrative 
patent judge declares the pa tent interference on behalf 
of the Director. A notice declaring an interference identifies:
(1) The interfering subject matter;
(2) The involved applic ations, patents, and 
claims;
(3) The accorded benefit for each count; and
(4) The claims c
orresponding to each count.
(c)  Redeclaration . An
 administrative patent 
judge may redeclare a patent interference on behalf of 
the Director to change th e 
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 .2
02(a) of this 
part.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.204  Notice of basis for relief.
(a) Priority statement . (1) A party may not sub -
mit 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
 enti-
tlement to judgment on priority.
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Page 322PATENT RULES § 41.207
R-321 Rev. 8, July 2010(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 pra
c-
tice,
(iii) State the earliest corroborated date on 
which the party’s d iligence began, and
(iv) Provide a
 copy of the earliest docu -
ment upon which the party will rely to show concep -
tion.
(3) If a junior party fails to file a priority 
statement overcoming a se nior party’s a ccorde
d bene -
fit, judgment shall be ente red against th
e juni or 
party 
absent a  showing of good ca
use.
(b) Other substantive motions . The Board may 
require a party to list the motions it intends to file, 
including sufficient detail to  plac e 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]
§   41.205  Settlement agreements.
(a) Constructive notice; time for filing . Pursu -
ant to 35 U.S.C. 135(c), an agreement or understand -
ing, including collateral agreements referred to 
therein, made i n co
nnection with or in cont emplatio
n 
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 judgme nt 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.(b) Untimely filing. The Chief Administrative 
Patent Judge may permit th e filing of an agreement 
under paragraph (a) of this section up  to
 six months 
after termination upon petitio n and a showing of good 
cause for the failure to f ile prior to termination.
(c) Reque st 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 reques t 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 , ma
y 
have access to an agreement kept separate under para -
graph (c) of this section on ly upon petition and on a 
showing of good cause. The agreement will be avail -
able to Government agen cies on written request.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004]
§   41.206  Common interests in the invention.
An administrative patent  judge may decline to 
declare, or if already declared the Board may issue 
judgment in, an interferen ce between an a
pplication 
and another application or patent that are commonly 
owned.
[Added, 69 FR 49959, Aug. 12, 2004, effective 
Sept.  13, 2004]
§   41.207  Presumptions.
(a) Priority —(1) Order of invention . Parties are 
presumed to h a
ve invented interfering subject matter 
in the o
rder 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 part y is entitled to a presump -
tion of priority with respect to the other such party.
(2) Evident iary standard . Priority may be 
proved by a preponderance of the e v
idence except a 
party must prove priority by clear and convincing evi -
dence if the date of its ear liest constructive reduction 
to practice is after the issue date of an involved patent 
or the publi c
ation 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  th
e count are presumed to 
stand or fall together. To challenge this presumption, a 
IP/N/1/USA/D/2 
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Page 323§ 41.208 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-322party must file a timely substantive motion to have a 
corresponding claim designated as not corresponding 
to the count. No presumption based on claim corre -
spondence regarding the grouping of claims exists for 
other grounds of unpatentability.
(2) A claim corresponds to a count if the sub -
ject matter of the count, treated as prior art to the claim, would have anticipated or rendered obvious the 
subjec t 
matter of the claim.
(c) Cross-applicability of prior art . When a 
motion for judgment of un patentability 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]
§   41.208  Content 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 thres hold issue,
(2) Seek to change the scope of the definition 
of the i nterfering subject matter or the corresponde
nce 
of claims to the count,
(3) Seek to change the benefit accorded for 
the count, or
(4) Seek judgment on  d
erivation or on prior -
ity.
(b) T
o be sufficient, a motion must provide a 
showing, supported with ap propriate evidence, such 
that, if unrebutted, it woul d justify the relief sought. 
The burd en
 of proof is on the movant.
(c) Showing patentability . (1) A party moving 
to add or amend a claim must show the claim is pat -
entable.
(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 B – ADMINISTRATION
PART 102 — DISCLOSURE OF 
GOVERNMENT INFORMATION
Subpart A - Freedom of Information Act
 Sec.
102.1  General.102.2  Public reference facilities.
102.3  Records under FOIA.
102.4  Requirements for making requests.
102.5  Responsibility for responding to requests.
102.6  Time limits and expedited processing.
102.7  Responses to requests.
102.9  Business Information.102.10 Appeals from initial determinations or  
untimely delays.
102.11 Fees.
Subpart B - Privacy Act
102.21 Purpose and scope.102.22 Definitions.102.23 Procedures for making inquiries.
102.24 Procedures for making requests for records.
102.25 Disclosure of requested records to individuals.
102.26 Special procedures: Medical re cords.
102.27 Procedures for making requests for correction  
or amendment.
102.28 Review of requ
ests for correction or amendment.
102.29 Appeal of initial adverse determination on 
correction or amendment.
102.30 Disclosure of record  t
o person other than the 
individual t o whom
 it pertains.
102.31 Fees.
102.32 Penalties.102.33 General exemptions.
102.34 Specific exemptions.
 Append ix
 to Part 102— Systems of Records Noticed by 
Other Federal Agencies a nd Applicable to USPTO 
Records, and Applicability  of this Part Thereto
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R-323 Rev. 8, July 2010Subpart A — Freedom of Information Act
§   102.1 General.
(a) The information in this  part is furnished for 
the guidance of the public and in complia nce with the 
requirements of the Free dom of Information Act 
(FOIA), as amended (5 U.S.C. 552). This part sets 
forth the procedures the United St a
tes Patent and 
Trademark Office (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 Of fice of Public 
Af
fairs) may be provided to the public without fol -
lowing this part. USPTO’s policy is to make discre -
tionary disclosures of reco rds or in formati on exempt 
from disclosure unde r FOIA wheneve r disclosure 
would not forese eably harm an intere st protected by a 
FOIA exemption, but this policy does not crea te
 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, effec -
tive May 1, 2003; para. (b) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005]
§   102.2 Public reference facilities.
(a) USPTO maintains a publ ic reference facility 
that contains the records FOIA requires to be made 
regularly available for pub lic inspection and copying; 
furnishes information and ot herwise assists the public 
concerning  USP
TO operations under FOIA; and 
receives and processes requests for records under 
FOIA. The FOIA Officer is responsible for determin -
ing which of USPTO’s records are required to be 
made available for public  inspection and copying, 
and for making those record s available in USPTO’s 
reference and records inspection facility. T h
e FOIA 
Officer shall maintain and make available for public 
inspection an d 
copying a current subject-matter index of USPTO’s public inspectio n 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 impr acticable to publish quar -
terly, or more frequently, and distribute copies of the index and supplements thereto. The public reference facility is located in the Public S
earch Room, Madi -
son Building East, First Floor, 600 Dulany Street, Alexandria, Virginia.
(b) The FOIA Officer shall also make public 
inspection facility records created by USP T
O on or 
after November 1, 1996, available electronica lly 
through USP
TO’s World Wide Web site (http://
www.uspto.gov). Informatio n available at the site 
shall include:
(1) The FOIA Officer’s index of the public 
inspection facility records, which indicat es which 
records are available electronically; and
(2) The general index referred to in para -
gr
aph (c)(3) of this section.
(c) USPTO maintains and makes av
ailable for 
public inspection and copying:
(1) A current index providing identifying 
information for the public as to any matter that is 
issued, adopted,  o
r promulgated  after Jul
y 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 su bseque nt re
quests for sub-
stantially the same records;
(3) A general index of the records described 
in paragraph (c)(2) of this section;
(4) Final opinions and orders, including con -
curring and dissenting opinio ns made in the adjudica -
tion of ca
ses;
(5) Those statements of policy and interpre -
tations that have been adopted by USPTO and are not 
published in the Federal Register ; and
(6) Administrative staff manuals and instruc -
tions to staf f 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, effec -
tive June 25, 2010]
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 325§ 102.3 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-324§  102.3 Records under FOIA.
(a) Records under FOIA include all Govern -
ment records, regardless of  format, medium or physi -
cal characteristics, and incl ude electronic records and 
information, audiotapes, videotapes, and p
hotographs.
(b) There is no obligation to create, c o
mpile, 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 a
lways 
apparent. When responding to FOIA requests for elec -
tronic data where creation of a record or programming becomes an issue, USPTO shall undertake reasonable 
efforts to search for the information in electronic for -
mat.
(c) USPT O
 officials may, upon request, create 
and provide new information pursuant to user fee stat -
utes, such as the first paragraph of 15 U.S.C. 15 25
, or 
in accordance with author ity otherwise provided by 
law. This is outsid e the scope of FOIA.
(d) The FOIA Officer shall preserve 
all corre -
spondence pertaining to the requests received under 
this subpart, as well as copi es of all requested records, 
until disposition or destruction is authorized by Title 
44 of the United States Co de or a National Archives 
and R
ecords 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]
§  102.4 Requirements 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. Reques
ts should be  sent to the USPTO FOIA 
Officer, United States Patent and T
rademark 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 let-
ter and envelope should be marked “Freedom of 
Information Act Request.” For reques ts for records 
about oneself, § 
102.24 cont ains additional require -
ments. For requests for r ecords about another individ -ual, either a written authorization signed by that individual permitting disclosure of those records to 
the requester or proof that individual is dec eas
ed (for 
example, a copy of a dea
th 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  
informa-
tion about each record sought, such as the date, title or 
name, author, recipient, and subject matter of the record, and the name and lo cation of the office where 
the record is located. Also , if rec o
rds 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 likeli -
hood that USPTO will locate those records. If the 
FOIA Officer determines that a request does not rea -
sonably 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 ma y 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, effec -
tive May 1, 2003]
§  102.5 Responsibility for responding to requests.
(a) In general. Except as stated in paragraph (b) 
of this section, the USPTO will process FOIA 
requests directed to USPT O. In determining records 
responsive to a request,  the FOIA Officer shall 
include only those record s within USPTO’s poss es-
sion and control as of the date
 the FOIA Officer 
receives the request.
(b) Consultatio ns and referr als. If the FOIA 
Officer re ceives a  request for a rec ord in U SPTO’s 
possession in which anothe r Federal agency subjec
t to 
FOIA has the primary inter est, the FOIA Officer shall 
refer the record to that agen cy for direct respon
se to 
the requester. The FOIA Officer shall consult with another Federal agency be fore responding to a 
requester if the FOIA Office r receives a request for a 
record in which another Federal agency subject to 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 326PATENT RULES § 102.6
R-325 Rev. 8, July 2010FOIA 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 or iginated 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 han -
dled according to the da te the FOIA request was 
received by the first Federal agency.
(e) Agreements reg a
rding consultations and 
referrals . The FOIA Of ficer may make agreements 
with othe r Federal agenc ies to eliminate the ne ed for 
consultations or referrals for particular type s of 
records
.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§  102.6 Time limits and expedited processing.
(a) In general . The FOIA Officer ordinarily 
shall respond to requests a ccording to their order of 
receipt.
(b) Initial response and appeal.  Subject to para-
graph (c)(1) of this section, an initial response shall be 
made
 within 20  
working days ( i.e., excluding Sa tur-
da
ys, Sundays, and legal public holidays) of the 
receipt of a request for a reco rd under this part by the 
proper FOIA Officer identified in accordance wi th 
§ 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 . 
(1) In unusual circumstances as specified in 
paragraph (c)(2) of this sec tion, the FOIA Officer may 
extend the time limits 
in paragraph (b) of this section 
by notifying th e requester in writing 
as soon as practi-
cable of the unusual circumst ances and of the date by 
which processing of the request is expected to be 
completed. Extensions of ti me for the initial determi-
nati
on and extensions on appeal may not exceed a 
total of ten working days, unless the requester agrees 
to a longer extension, or the FOIA  Of
ficer 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, un usual circum -
stances , means, but only to th 
e extent reasonably nec -
essary to properly proces s the particular reques
t:
(i) The need to search for and collect the 
requested records from fiel d facilities or other estab -
lishments separate from the office processing the request;
(ii) The need to search for, colle
ct, and 
appropria tely examine a voluminous amount of sepa -
rate and distinct records that are the  subjec
t of a single 
request; or
(iii) The need for consultation, which shall 
be conducted with all practic able speed, with another 
Federal agency having a su bstantial 
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 back log of pending requests. 
Refusal to reasona bly 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 subm itted by a requester, or by 
a group of requesters acting in concert, constitute a single request that would otherwise inv o
lve unusual 
circumstances, and the requests involve clearly 
related matters, the FOIA Officer may aggregate them. Multiple requests in volving unrelated matters 
will not be aggregated.
(d) Multitrack pr ocessing .
(1) The FOIA Officer may use two or more 
processing tracks by distinguishi ng b
etween simple 
and more complex requests based on the number of 
pag
es involved, or some ot her measure of the amount 
of work and/or time needed to process the request, and whether the request qu alifies for expedited pro -
cessing as described in paragraph (e) of this section.
(2) The FOIA Officer may provide request -
ers 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 eac
h case.
IP/N/1/USA/D/2 
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Page 327§ 102.7 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-326(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 c o
uld 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 excep -
tional media interest in wh ich there exist questions 
about 
the Government’s inte grity that affect public 
confidence; or
(iv) An urgency to inform the public about 
an actual or alleged Fede ral Government activity, if 
made by a person pr ima
rily engaged in disse
minating 
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 process -
ing 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 pa ragraph (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 dis -
semination, though it need no t be his or her sole occu -
pation. A requester within the category described in 
paragraph (e)(1)(iv) of this section must also establish 
a particular urgency to i
nform 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 proc essing, 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 prior -
ity and processed as soon as practicable. If a request for expedited processing is denied, any appeal of that 
d
ecision shall be acted on expeditiously.[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§  102.7 Responses to requests.
(a) Grants of requests . If the FOIA Officer 
makes a determination to gr ant a request in whole or 
in part, the FOIA Officer will notify the re
quester 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 pay -
ment of any applicable fee. Records disclosed in part 
shall be marked or annotate d to show each applicable 
FOIA exemption and the amount of information 
deleted, unless doing so would harm an interest pro -
tected by an applicable ex emption. The location of the 
information deleted shall al so be  in
dicated on the 
record, if feasible.
(b) Adverse determinations of requests . If the 
FOIA Officer makes an ad verse de
termin ation regard -
ing 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 forma
t sought by the requester; a deter -
mination 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 de nial 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 
denia l, 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 no t be 
provided if the volume is otherwise indi-
cate
d through deletions on records disclosed in part, 
or if providing an estimate would harm an interest protected by an applicab le FOIA exemption; and
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 328PATENT RULES § 102.9
R-327 Rev. 8, July 2010(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]
§  102.9 Business Information.
(a) In general . Business information obtained 
by USPTO from a submitter will be disclosed under 
FOIA only under this section.
(b) Definiti ons. For the purposes of this section:
(1) Business information  me
ans commercia l
 
or financial information, obtained by USP T
O 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 out -
side the Federal Government from whom USPTO obtains business information,  directly or indirectly . 
The
 term includes corporations; state, local and tribal 
gov
ernments; and foreign governments.
(c) Designation of business information. A sub -
mitter 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 consider s to be protected from dis -
closure under FOIA exemption 4. These designa tions 
will expire ten years 
after th e date of the submission 
unless the submitter requests, and provides justifica -
tion 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 wh enever re quired 
under 
paragraph (e) of this sectio n, except as provided in 
paragraph (h) of this section, in order to give the sub -
mitter an opportunity under paragraph (f) of this sec-
tion to object to disclosure of any specified port i
on of 
that information. Such wr itten notice shall be sent via 
certified mail, return receipt requested, or similar 
means. The notice shall eith er describe th e
 business 
information requested or include copies of the requested records containing the information. When notification of a large nu mber of submitters is 
required, notification may be  made by posting or pub-
lishing the notice in a place reasonably likely to accomplish notification.
(e) When notice is requir ed. Notice shall be 
given to the submitter whenever:(1) The information has be en d
esignated in 
good faith by the submitte r as protected from disclo -
sure 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. , exclu
ding Saturdays, Sundays,  
and legal 
public holidays) from the date  of receipt of the written 
notice described in paragrap h (d) of this section to 
provide the FOIA Officer with a detailed statement of 
any objection to disclosure. The statement must spec-
ify all grounds for withholding any portion of the information under any exemption of FOIA and, in the 
case of exemption 4, it must show wh y the informa -
tion is a
 trade secret or commercial or financial infor -
mation that is privileged or  confidential. If a submitter 
fails to respond to  the notice within the time specified, 
the submitter will be consider ed to have no objection 
to disclosure of the information. Information a sub -
mitter provides under this paragraph may itself be 
subject to disclosure under FOIA.
(g) Notice of intent to disclose . The FOIA 
Of
ficer shall consider a submitter’s objections and 
specific ground s u
nder FOIA f o
r nondisclosure in 
deciding whether to disclose business information. If the FOIA Officer decides to disclose business infor -
mation over the objection of a submitter , the FOIA 
Officer shall give the submitter written not ice via cer -
tified mail, ret urn receipt requested, or similar means, 
which shall include:
(1) A statement of re ason(s ) why the submit -
ter’
s objections to disclosure were not sustained;
(2) A description of the business information 
to be disclosed; and
(3) A statement that the FOIA Of ficer 
intends to disclose the information seven working 
days 
from the date the su bmitter receives the notice.
(h) Exceptions to notice requirements . The 
notice requirements of paragr aphs (d) and (g) of this 
section shall not apply if:
(1) The FOIA Of ficer 
determines that the 
information should not be disclosed;
(2) The information has been lawfully pub -
lished or has been of ficia
lly made available to the 
publi
c;
IP/N/1/USA/D/2 
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Page 329§ 102.10 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-328(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 pro -
vide the submitter written notice of any final decision to disclose the informatio n seven working days fro m 
the
 date the submitter receives the notice.
(i) Notice of FOIA lawsuit.  Whenever a 
requester files a lawsuit seeking to compel the disclo -
sure of business information, the FOIA Of
ficer shall 
promptly notify the submitter.
(j) Corr esponding notice to requesters . When -
ever a FOIA Officer provides a submitter wi th 
notice  and 
an opportunity to ob ject 
to disclosure 
under paragraph (d) of  this 
section, the FOIA Officer 
shall also notify the requester(s). Whenever a submit -
ter 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]
§  102.10 Appeals 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 requ ester may fi
le a writ -
ten appeal, which must be received by the Office of 
General Counsel within thir ty calendar days of the 
date of the written denial or, if there has been no 
determination, may be su bmitted anytime after the 
due date, including the last extension un
der 
§ 102.6(c), of the determination.
(b)  Appeals shall be decided by a Deputy Gen -
eral Counsel. Appeals shou ld be address ed to the 
General Counsel, United St ates Patent and Trademark 
Office, PO Box 1450, Alexandria , V
irginia 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 state -
ment 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 argumen t or he
aring 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 up
on 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 de emed to have exhausted his 
administrative remedies with respect to the request, givin
g 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 writ -
ing and, when it denies record s 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 ap plicable FOIA exemptions 
and a description of how the exemptions apply;
(2) A statement that the decision is final;
(3) N
otification that judicial review of the 
denial is available in the United States district court 
for the district in which the requeste
r resides or has its 
principal place of business, the United States District Court for the East
ern District of Virginia, or the Dis -
trict of Columbia; and
(4) The name and title or position of the offi-
cial 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, effec -
tive May 1, 2003]
§  102.11 Fees.
(a) In general. USPTO shall charge for process -
ing requests under FOIA in accordan ce
 with para -
graph (c) of this section, except when fees are limited under paragraph  (d) of th
is section or when a waiver 
or reduction of fees is granted under paragraph (k) o
f 
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.
IP/N/1/USA/D/2 
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Page 330PATENT RULES § 102.11
R-329 Rev. 8, July 2010(b) Definitions . For purposes of this section:
(1) Commercial use request  means a request 
from or on behalf of a person who seek s
 information 
for a use or purpose that furthers his or her commer -
cial, trade, or profit interests, which can include fur -
thering those interests th rough litigation. The FOIA 
Officer shall determine, whenever reasonably possi -
ble, the use to which a requ ester will put the requested 
records. When  
it appears that the requester wi ll 
put 
the records to a commercial use, either because of the 
nature of the request itse lf or because the FOIA 
Officer has reasonable cause to doubt a requester’s 
stated use, the FOIA Officer shall provide the 
requester a reasonable oppo rtunity 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 FO IA request. Direct costs 
include, for example, the labor costs of the employee 
performing the work (the b asic rate of pay for the 
employee, plus 16 percent of that rate to cover bene -
fits). Not included in di rect costs are overhead 
expenses such as the costs of space and heating or lighting of the facilit y in which 
the records are kept.
(3) Duplication  means the making of a copy 
of a record, or of the info rmation contained in it, nec -
essary to respond to a FOIA re
quest. Copies may take 
the form of paper, microform, audiovisual materials, 
or electronic records (for ex ample, magnetic tape or 
disk), among others. The FOIA Of ficer s
hall 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 pre -
school, a public or privat e elementa ry or secondary 
school, an institution of un der
graduate higher educa -
tion, an institution of gradua te higher education, an 
institution of professional edu cation, or an institution 
of vocational educa tion
, that operates a pro
gram 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 so ught to further scholarly 
research rather than for a commercial use.
(5) Noncommercial scientific institution
means an institution that is not operated on a “com -
mercial” basis, as that term  is defined in paragraph  (b)(1) of this section, 
and that is operated solely for 
the purpose of conducting sc
ientific research, the 
results of which are not intended to promote any par -
ticular product or industry. To be in this category, a 
requester must show that th e request is authorized by 
and is made under the auspices of a qualifying institu -
tion and that the records are sought to further scien-
tific research rather
 than  for a commercial use.  
(6) Representative of the news media, or 
news med ia 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 info rmation that is about cur -
rent events or that would be of current interest to the public. Examples of news media entities include tele -
vision or radio
 stations broadcasting to the public at 
large and publishers of peri odicals (but only if they 
can qualify as dissemina t
ors 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 publica-
tion through that organizatio n. 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 dete rmination. T o
 be in this 
category, a requester must not be seeking the requested records for a commercial use. However, a 
request for records suppor ting the news-dissemination 
function of the requester shall not be considered to be 
for a commercial use.
(7) Revie w means the examination of a 
record located in response to a requ est in order to 
determine whether any portion of it is exempt from disclos u
re. 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 dis -
closed. Review time does  not include time spent 
resolving general legal or policy issues regarding the application of exemptions.
(8) Search means the proc
ess of looking for 
and retrieving records or information responsive to a 
request. It includes page-b y-page or line-by-line iden -
tification of information within records and also  
includes reasonable ef
forts to locate and retrieve 
information from records ma intained in electronic 
form or format. The FOIA Officer shall ensure that 
IP/N/1/USA/D/2 
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Page 331§ 102.11 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-330searches are done in the most efficient and least 
expensive manner r easonably possible.
(c) Fees . In responding to FOIA requests, the 
FOIA Officer shall charge the fees  s
ummarized in 
chart form in paragraphs (c )(1) and (c)(2) of this sec -
tion and explained in paragr aphs (c)(3) through (c)(5) 
of this section, unless a wa iver or reduction of fees 
has been granted under paragr ap
h (k) of this section.
(1) The four categories and chargeable fees 
are:
(2) Uniform fee  schedule .(3) Search .
(i) Search fees shall be charged for all 
requests—other than requests made by educational 
institutions, nonc ommercial scientific 
institutions, or 
representatives of the news media—subject to the 
limitations of paragraph (d) of  this section. The FOIA 
Of
ficer will charge for time spent searching even if no 
responsive re cords 
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 conduct -
ing the search, although certain requesters (as pro -
vided in paragraph (d)(1) of this section) will be 
charged no search fee and certain other requesters (as 
pr
ovided in paragraph (d)(3) of this section) are enti-
tled 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 sal -
ary.
(4) Duplication . Dupl
ication fees will be 
charged to all requesters, su bject to the limitations of 
paragraph (d) of this section. For a paper ph oto
copy 
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 print -
outs, 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 ch arged only for the initial 
record review—the review  done when the FOIA 
Officer determines whet he
r 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 al ready applied. However, 
records withheld under an exemption that is subse -Category Chargeable fees
(i) Commercial Use 
RequestersSearch, Review, and Duplication.
(ii) Educational and Non-commercial  Scientific Institution RequestersDuplication (excluding the cost of the first 100 pages).
(iii) Rep
resentatives of 
the News MediaDuplicat
ion (excluding 
the cost of the first 100 pages).
(iv) All Other Requesters Search and Duplication (excluding 
the cost of the 
first 2 hours of search and 100 p
ages).
Service Rate
(i) Manual search Actual
 salary ra te 
of 
employee involved, plus 
16 percent of salary rate. 
(ii) Computerized search Actual direct cost, includ -
ing operator time. 
(iii) Duplication of records:   (A
) Paper copy 
reproduction       (B) Other reproduction (e.g ., 
computer disk or p
rint-
out, microfilm, micro -
fiche, or microform) $.15 per page   Actual direct cost, including 
operator time  (iv) Review of records (includes preparation for release, i.e.  excising)Actual salary rate of employee conducting 
review, plus 16 percent of salary rate.Service Rate
IP/N/1/USA/D/2 
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Page 332PATENT RULES § 102.11
R-331 Rev. 8, July 2010quently 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 educat ional 
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 mo re th
an 
half of that period is required for search or review.
(3) Exc ept for 
requesters seeking records for 
a commercial use, the FOIA Officer will provide 
without charge:
(i) The first 100 pages of d u
plication (or 
the cost equivalent); and
(ii) The first two hours of search (or the 
cost equivalent).
(4) Whe never a total fee ca
lculated 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 secti on work toge ther. This means that for 
requesters other than tho se seeking records for a com -
mercial use, no fee will be charged unless the cost of the s
earch in excess of two hours plus the cost of 
duplication in excess of 10 0 pages totals more than 
$20.00.
(e) Notice of anticipated fee s
 over $20.00 . 
When the FOIA Officer determines or estimates that the fees to be charged unde r 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 ac tual 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) Char ges for other services . Apart from the 
other provisions of this section, the FOIA Officer shall ordinarily charge the direct cost  of spec
ial ser -
vices. Such special services could include certifying 
that records are true copies or sending records by 
other than ordinary mail.
(g) Char
ging interest . The FOIA Officer shall 
charge interest on any unpa id
 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 ag encies, and offset.
(h) Aggregating requests . If a FOIA Officer 
reasonably believes that a requester or a group of requesters acting together is attempting to divide a 
request into a seri es of re
quests for the purpose of 
avoiding fees, the FOIA Officer may aggregate those requests and charge accordingly. The FOIA Officer may presume that multiple requ ests 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 Offi cer shall aggregate them 
only if a solid basis exists for determining that aggre-gation is warranted under all the circumstances involved. Multiple requests  involving unrelated mat -
ters shall not be aggregated.
(i) Advance payments.
(1) F
or requests other than those described in 
paragraphs (i)(2) and (3) of this section, the FOIA 
Officer shall not require the requeste r
 to make an 
advan c
e 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 esti -
mates that a total fee to be  charged under this section 
will be more than $250.00, the requester must pay the 
entire anticipated fee be
fore beginning to process the 
request, unless the FOIA Officer receives a satisfac-tory assurance of full payment from a requester who 
has a history of prompt payment.
IP/N/1/USA/D/2 
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Page 333§ 102.11 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-332(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 applica -
ble 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 un
der paragr aphs (i)(2) or (3) of this 
section, the request shall not be considered received 
and further work will no t be d
one on it until the 
required payment is received.
(5) Upon the completion of processing of a 
request, when a specific fe e is determined to be pay -
able and appropriate notice has been given to the 
requester, the FOIA Of fice
r shall make records avail -
able to the requester only upon receipt of full payment 
of the fee.
(j) Other statutes specific ally providing for 
fees. The  
fee schedule of this  section does not apply to 
fees charged under any statut e (ex
cept 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 fee schedule programs, the FOIA 
Officer shall inform requesters of how to obtain 
records from those sources.
(k) Requir ements for waiver or reduction of 
fees.
(1) Records responsive to a request will be 
furnished without charge or at a charge reduced below 
th
at established under paragr aph (c) of this section if 
the FOIA Of ficer determines , based on all available 
informat
ion, that the reques ter has demonstrated that:
(i) Disclosure of the requested informa -
tion is in the public interest because it  is likely to con -
tribute significantly to pu blic 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 me t, the FOIA Officer shall consider 
the following factors:
(i) The su
bject of the re ques
t: whether the 
subject of the requeste d rec
ords concerns  the ope
ra-tions or activities of the Government. The subject of the requested records must concern identifiable opera -
tions or activities of the F e
deral Government, with a 
connection that is direct and clear, not remote or atten -
uated.
(ii) The informative valu e of the informa -
tion to be disclosed:  whether the disclosure is “likely 
to co
ntribute” to an un de
rstanding of Government 
operations or activities. The disclosable portions of the re qu
ested records must be meaningfully informa -
tive about Government operations or activities in order to be “likely to co ntribute” to an increased pub-
lic understanding of those op erations or activities. The 
disclosure of inform ation that already is in the public 
domain, in either a duplica tive or a substantially iden -
tical form, would not be likel y to contribute to such 
understanding.
(iii) The con
tribution to a n
 understanding  
of
 the subject by the public likely to result from disclo -
sure: 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 individua l understanding of the 
reque s
ter. A requester’s expertise in the subject area 
and ability and intention to  effectively convey infor -
mation to the public shall be  considered. It shall be 
presumed that a representative of the news media sat-isfies this consideration. It  shall be pre
sumed that a 
requester who merely provides information to media sourc es does
 not satisf y this consideration.
(iv) The significance of the contribution to 
public understanding:  whether the disclosure is likely 
to contribute “significantly” to public und e
rstanding 
of Government operations or activities. The public’s 
understanding of the subject in question prior to the disclosure must be significantly enhanced by the dis -
closure.
(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 com -
mercial interest : whether the reques te
r has a commer -
cial interest that would be furthered by the requested 
disclosure. The FO IA Of
ficer shall consider any com -
mercial interest of the requ ester (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 wou ld 
be fur -
IP/N/1/USA/D/2 
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Page 334PATENT RULES § 102.21
R-333 Rev. 8, July 2010thered by the requested disclosure. Requesters shall 
be given an opportunity to provide explanatory infor -
mation regarding th is consideration.
(ii) The primary interest  in disclosure:
whether any identified commercial interest of the requester is sufficiently large, in comparison wi
th 
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 
secti
on) is satisfied and the public interest is greater 
than any identified  
commerci al 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 mar -
ket 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 fo r a fee waiver , a waiver 
shall 
be granted for those records.
(5) Requests for the waiver or reduction of 
fees should addre ss the factors 
listed in paragraphs 
(k)(2) and (3) of this section, insofar as they apply to 
eac
h request.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
Subpart B — Privacy Act
§  102.21 Purpose 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 objec
tives 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 responsi -
bility 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 admit -
ted for permanen t residence into the United S
tates, 
regardless of the age of the individual. Further, USPTO accepts the obligations  to maintain only such 
informat ion
 on individuals as is relevant and neces -sary to the performance of its lawful functions, to 
maintain that information with such accuracy, rele-
vancy, timeliness, and comple teness as is reasonably 
necessary to assure fa
irness in determinations made 
by USPTO about the individual, to obtain information 
from the individual to the extent practicable, and to 
take e
very reasonable step to  protect that information 
from unwarranted disclosure . USPTO will maintain 
no record describing how an individual exercises rights guaranteed by th e First Amendment unless 
expressly authorized by st atute or by the individual 
about whom the record is ma intained or unless perti -
nent to and within the sco pe of an authorized law 
enforcement activity. An indivi du 
al’s name and 
address will not be sold or rented by USPTO unless such action is specifically authorized by law; how -
ever, this provision shall not be construed to require 
the withholding of names and addresses otherwise 
permitted to be made public.
(b) T his
 subpart is administered by the Privacy 
Officer of USPTO.
(c) Matters outside the scope of this subpart 
include the following:
(1) Requests for records w h
ich do not pertain 
to the individual ma king the request, or to the individ -
ual about whom the request is  made if the requester is 
the parent or gu a
rdian of the individual;
(2) R
equests involving information pertain -
ing to an individual which is in a record or file but not 
within the scope of a system of records notice pub -
lished 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 USP
TO, and the indivi du
al 
has initiated, or has expresse d in writing the intention 
of initiating, 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 explana -
tions of tax withholding options.
(d) A
ny request for records which pertains to 
the individual making the requ est, or to the individual 
IP/N/1/USA/D/2 
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Page 335§ 102.22 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-334about whom the request is ma de if the requester is the 
parent or guardian of the individual, shall be pro -
cessed under the Act and th is subpart and under the 
Freedom of Information Act and USPTO’s imple -
menting regulations at Subpart A of this part, regard-
less 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]
§   102.22 Definitions.
(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 mea ns 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 St a
tes Patent 
and Trad em
ark Office.
(4) Inquiry  means either a request for general 
information regarding the Act and this subpart or a 
request by an individual (or tha t
 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 an y human being and also 
shall include but not be limited to, corporations, asso -
ciations, partnerships, trustees, receiver s, pers
onal 
representatives, and public or private organizations.
(6) Privacy Officer mea ns a USPTO 
employee designated to administer this subpart.
(7) Request for access  means a request by an 
ind
ividu
al or an individual’s parent o r
 guardian to see 
a record which is in a partic ular 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 or guardian  that USP
TO change (either by cor -
rection, 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]§   102.23 Procedures for making inquiries.
(a) Any individual, regardless of age, who is a 
citizen of the United States or an alien lawfully admit -
ted for permanent residence into the United States 
may submit an inquiry to USPTO .
 The inquiry should 
be made either in person at 10B2 0,
 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, Alexan -
dria, Virginia 22313-1450, or to the official identified 
in the notificatio n procedures paragraph of the sys -
tems of records notice published in the Federal Regis -
ter. If an individual believes USPTO maintains a 
record pertaining to that indi vi
dual but does not know 
which system of records might contain such a record, 
the USPT O Privacy Of
ficer will provide assistance in 
person or by mail.
(b) Inquiries submitted by  mail should include 
the words “PRIV ACY ACT INQUIRY” in capital let -
ters at the top of the letter and on the face of the enve -
lope. If the inquiry is for general 
information 
regarding the Act and this su bpart, no particular infor -
mation is required. USPTO reserves the right to 
require compliance with the identification procedures 
appe
aring at § 102.24(d) where circumstances war-
rant. If the inquiry is a re quest t
hat USPTO determine 
whether it has, in a given sy stem of records, a record 
which pertains to the i ndividual, the 
following infor -
mation should be submitted:
(1) Name of individual whose record is 
soug ht;
(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, ma iden name, occupatio nal 
license numbe
r, period or pla ce of 
employment, etc.);
(4) Record sought, by
 description and by 
record system name, if known;
(5) Action requested (that is, sending
 infor-
mation on how to exercise rights under the Act; deter -
mining 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 certific ate, a
s provided in § 
102.24(f)(3), but only if requester is guardian or par-
ent o
f individual whose record is sought;
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Page 336PATENT RULES § 102.24
R-335 Rev. 8, July 2010(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 
unde r 5 U.S.C
. 552; and
(iii) Requester does no t appear before an 
employee of USPT O for verification 
of identity.
(c) Any inquiry which is not addressed as spec -
ified in 
paragraph (a) of th is section or which is not 
marked as specified in paragraph (b) of this section 
will be so addressed and marked by USP
TO personnel 
and forwarded immediately to the Privacy Officer. An inquiry which is not properly addressed by the indi -
vidual will not be deemed to have been “received” for purposes of measuri ng the time period for 
response until actual receipt by the Privacy Of
ficer. In 
each instance when an inquiry so forwarded is received, the Privacy Officer shall notify the individ -
ual that his or her inquir y was improperly addre ssed 
and the date the inqui ry wa s rece ived at the proper 
addres s.
(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 holi -
days) of the date of receipt. If a response cannot be made within ten working days, the Privacy Officer 
shall send an acknowledgment d u
ring that period pro -
viding information on the status of the inquiry and asking for such further info rmation as may be neces -
sary to process the inquiry.  The first correspondence 
sent by the Privacy Officer to the  
requester shall con-
tain USPTO’s control numbe r
 assigned to the request, 
as well as a note that the requester should use that number in all future contacts in order to facilitate pro -
cessing. USPTO shall use tha
t control number in all 
subsequent correspondence.
(2) If the Privacy Officer fails to send an 
acknowledgment within ten wo rkin
g days, as pro-
vided above, the requester  may ask
 the General Coun -
sel to take corrective action. No failure of the Privacy 
Officer to s
end an ackno wledgment 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.
(f) Special note should be taken of t
he fact that 
certain agencies are responsible for publishing notices 
of systems of records having Govern ment-wid
e appli -
cation to other agencies, including USPTO. The agen -
cies 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 inqu iries 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, deter -
mined by an agency publis hing a general notice shall 
be invoked and applied by USPTO after consu ltation 
, 
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, effec -
tive May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005]
§   102.24 Procedures for making requests for 
records.
(a) Any individual, regardless of age, who is a 
citizen of the United States or an alien lawfully admit -
ted for permanent residence into the United States 
may submit a reque
st for access to records to USPTO. 
The request should be made eithe r 
in person at 10B20, 
Madison Building East, 600 Dulany Street, Alexan -
dria, Virginia, or by mail addressed to the Privacy Officer, United States Patent and Trademark Office, 
P.O. Box 14 50
, 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  spec -
ified in paragraph 
(a) of this section or which is not 
marked as specified in th is paragraph will be so 
addressed and marked by USPTO personnel and for -
warded immediately to the Privacy Officer. A request 
which is not properly addressed by the individual 
will 
not be deemed to have been “received” for purpo s
es 
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 
IP/N/1/USA/D/2 
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Page 337§ 102.25 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-336improperly 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 r ecord to which access is 
sought, provide the USPTO control number assigned 
to 
the request, and sign an d 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 fo r identification of indi -
viduals seeking access to records are as follows:
(1) In person . Each individual making a 
request in person shall be required to present satisfac -
tory proof of identity. The means of proof, in t h
e order 
of preference and priority, are:
(i) A docume nt bearing the individual’
s 
photograph (for example, driver’s licen se
, passport or 
military or civilian identificat ion card);
(ii)
A document, preferably issued for par -
ticipation in a federally sponsored program, bearing 
the individual’s signature (for example, unemploy -
ment insurance book, employ er’s identificati on card, 
na
tional credit card, and professional, craft or union 
membership card); and
(iii) A document bearin g neither the photo -
graph nor th e sign
ature of the individual, preferably 
issued for participation in a federally sponsored pro -
gram (for example, Medicaid  card). In the event 
the 
individual can provide no suitable documentation of 
identity, USPTO wi ll requ ire a signed 
statement 
asserting the individual’s id entity 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 th e 
right to determine the 
adequacy of proof of identity offered by any individ -
ual, particularly when th e 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 authorize d
 to determine 
identity, a certification of a notary public or equiva -
lent officer empowered to administer oaths must accompany the request unde r the circumstances pre-
scribed in § 102.23(b)(9). The certification in or 
attached to the letter must be substantially in accor -
dance with the followi
ng 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 aforesa id County and State, this 
_______ day of ____ __
___________, 20__, and 
established (his) (her) iden tity 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 individu al to w
hom a record per -
tains 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 individ -
ual shall establish his or her identity in the representa -
tive capacity  
of parent or legal guardian. In the case of 
the 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 a
n indi -
vidual who has been declar ed incompetent due to 
physical or mental incapacity or age by a court of competent jurisdiction, the pr oof of identity shall be a 
certified or authenticated copy of the court’s order. 
For purpose s 
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 dur -
ing 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 su gg
estions 
regarding proof of identity and access to records.
(f) An individual shall not be required to sta t
e 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, effec -
tive May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005]
§   102.25 Disclosure of requested records to indi -
viduals.
(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 Sat -
urdays, Sundays, and legal public holidays) of the 
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R-337 Rev. 8, July 2010date 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 facili -
ties or other establishmen 
ts 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 hav -
ing a substantial interest in  the determination of the 
request are necessary.
(2) If the Privacy Officer fails to send an 
acknowledgment with
in ten working days, as pro-
vided above in paragraph (a) of this section, the requester may a
sk the Genera l Counsel to take correc -
tive action. No failure of th e Privacy Officer to send 
an a
cknowledgment shall confer administrative final -
ity 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 o
f paragraph (g)(1) of 
this section apply. The Privacy Officer will notify the individual of a determination to grant access, and pro -
vide 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 
inspec ted;
(iii) The earliest date on which the record 
may be inspected and the pe riod of tim
e that the 
records will remain availa ble for inspection. In no 
event shall the
 ea
rliest date be later than thirty calen -
dar 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 ca lendar 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 addi tio
nal requ ireme nts needed to 
grant access to a specific record.
(2) Methods  of access.  The following meth -
ods of a cce
ss to records by an individual may be 
available depending on the circumstances of a  give
n 
situation:
(i) Inspection in person may be had 
in a 
location specifi ed by the Privacy Officer during busi -
ness hours;
(ii) Transfer of record s to a Federal facility 
more convenient to the indivi du
al may be arranged, 
but only if the Privacy Officer determi n
es that a suit -
able 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 opera tions of USPT O or involve 
unrea
sonable costs, in terms of both money and man -
power; and
(iii) Copies may be mailed at the request of 
the individual, subject to payment of the fees pre -
scribed 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.
(c) Ac cess
 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 appro p
ri-
ate, for example, when the record is in an automated 
data media such as tape or  diskette, when the re
cord 
contains information on other individuals, and when 
deletion of information is permissible under exemp -
tions (for example, 5 U.S.C. 552a(k)(2)). In no event 
shall original records of USPTO be made available to the individual except  un
der the immediate supervision 
of the Privacy Officer or the Privacy Officer’s desig-
nee.
(f) Any individual who requests access to a 
record pertaining to that individual may be accompa -
nied by
 another individual of his or her choice. 
“Accompanied” includes discussion of the record in 
the presence of the other individu al. Th
e individual to 
whom the record pertains shall authorize the presence 
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Rev. 8, July 2010 R-338of the other individual in writing. The authorization 
shall include the name of the other individual, a spe -
cific 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 oth er in
dividual 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 . Acce ss 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 ex
empt 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 indi -
vidual in writing and shall include the following 
information:
(i) The Priv acy Of
ficer’s name and title or 
position;
(ii) The date of th e den
ial;
(iii) The reasons for the denial, including 
citation to the appropriate s ection of the Act and this 
part;
(iv) The individual’s opportunities, if any, 
for further administrative co nsideration, including the 
identity and address of the responsible official. If no 
further administrative consideration within USP
TO is 
available, the notice shall state that the denial is 
administratively final; and
(v) If stated to be administratively final 
within USP T
O, 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 revi e
w. When an initial 
denial of a request is issued by the Privacy Officer, the indiv
idual’s opportunities for further consideration 
shall be as follows:
(i) As to denial under paragraph (g)(1)(i) 
of this section, two oppo rtunities for further consider -
ation are available in the alternative:
(A) If the individual contests the ap plic
a-
tion of the exemption to the records, review proce -
dures 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 re peal of a rule under 5 
U.S.C. 553(e). If the exem ption 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)), USP T
O will pro -
vide the individual with the name and address of the other agency and any relief sought by the individual 
shall be that provided by the regulation s of
 the other 
agency. Within USPTO, no such denial is administra -
tively final until such a petition has been filed by the individual and disposed of on the merits by the Gen -
eral Counsel.
(ii) As to denial under paragraphs (g)(1)(ii) 
of this section, (g)(1)(iv) of this section or (to the lim-
ited extent provided in paragraph (g)(3)(i)(A) of
 this 
section) paragraph (g)(1)(i) of this section, the indi -
vidual may file for review with the General Counsel, 
as indicated in the Privacy Officer’s initial denial noti -
fication. The procedures appearing in § 102.28 shall 
be followed by both the individual and USPTO to 
the 
maximum extent practicab le.
(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 partia lly granted and parti
ally 
denied, the Privacy Officer shall follow the appropri -
ate procedures of this sectio n as to the records within 
the grant and the record s within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.26 Special procedures: Medical records.
(a) No response to any request for access to 
medical records by an indivi dual will be issued by the 
Privacy Officer for a period of seven working days 
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Page 340PATENT RULES § 102.27
R-339 Rev. 8, July 2010(i.e., excluding Saturdays, Su ndays, 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 indi vidual’
s physician or psy -
chologist if, in the sole judgment of USPTO, disclo -
sure could have an adverse effect upon the individual. 
The mandatory waiting period set forth in paragraph (a) of this section will perm it exercise of t h
is routine 
use in appropriate cases. USPTO will pay no cost of any such consultation.
(c) I
n 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 p
rescribed in paragraph (a) of th is sec
tion;
(2) Obtain the name and address of the indi -
vidual’s physician and/or psychologist, if the individ -
ual consents to give them;
(3) Obtain specific, written consent for 
USPTO to consult the individual’s physician and/or 
psychologist in th
e 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 medica l records to the indivi d-
ua
l’s physician or psychologist in the event that 
USPTO believes access to the record by the individual 
is best e
ffected 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 determi-nation on whether consultation with or transmittal of 
the medical records to the individual’s physician or psyc
hologist is warranted. If the consultation with or 
transmittal of 
such records to the individual’s physi -
cian or psychologist is de termined to be warranted, 
USPTO’s medical expert shall so consult or transmit. Whether or not such a co nsultation or transmittal 
occurs
, USPTO’s medical officer shall provide 
instruction to the Privacy Officer regarding the condi -
tions of access by the individual to his or her medical 
records.
(d) If an individual refus es in writing to give the 
names and consents set fo rth in paragraphs (c)(2) 
through (c)(4) of this sec tion and USP T
O ha s d
eter-
mined that disclosure could have an adverse effect upon the individual, USP
TO 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]
§   102.27 Procedures for making requests for cor -
rection or amendment.
(a) Any individual, regardless of age, who is a 
citizen of the United S tates or an alien lawfully admit-
ted for permanent residence into the United States may submit a reques t 
for correction or amendment to 
USPTO. The request should be made either in person 
or by mail addres sed to 
the Privacy Officer who pro -
cessed 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 (exc luding legal public holi -
days).
(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  spec -
ified in paragraph 
(a) of this section or which is not 
marked as specified in th is paragraph will be so 
addressed and marked by USPTO personnel and for -
warded immediately to the Privacy Officer. A request which is not properly addressed by the individual 
will 
not be deemed to have been “received” for purpo s
es 
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 § 10 2.25, the individual’s 
identity will be established by his or her signature on 
the requ
est and use of the USPTO control number 
assigned to the request.
(d) A request for corre ction or amendment 
should include the following:
(1) Specific identification of the record 
sought to
 be corrected or amended (for example, 
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Rev. 8, July 2010 R-340description, title, date, para graph, 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 support -
ing d o
cuments and materials which substantiate 
the statement. The statement should identify the crite -
rion
 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]
§   102.28 Review of requests for correction or 
amendment.
(a)(1)(i) Not later than  ten working days 
(i.e., excluding Saturdays, Su ndays and legal public 
holidays) after receipt of a request to correct or 
amend  a record, the Privacy Officer shall send an 
acknowledgment prov idi
ng an  estimate of time within 
whic h action will be taken 
on the request and asking 
for such further informatio n as may be necessary to 
process the request. The estimate of time may take 
into a
ccount unusual circumstances as described in 
§ 102.25(a). No acknowledgme nt 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 pro-
vided in paragraph (a)(1)(i) of this section, the 
requester may ask the Genera l Counsel to take correc -
tive action. No failure of th e Privacy Of ficer 
to send 
an acknowledgment shall confer administrative final-ity for purposes of judicial review .
(2)
Promptly after acknowledging receipt of 
a request, or after receivin g such further information 
as might have been re q
uested, or after arriving at a 
decision within the ten working days
, the Privacy 
Officer shall either:(i) Make the requested correction or 
amendment and advise the i ndividual in writing of 
such action, providing either a copy of the corrected 
or amended record or a st ateme
nt as to the means 
whereby the correction or am endment was effected in 
cases where a copy cannot be provided (for example, erasure of information from a record maintained only 
in magnetically record ed 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 po
sition;
(B) The date of the denial;
(C) The reasons for the denial, including 
citation to the appropriate sec tions of the Act and t
his 
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 
withi n
 thirty working days ( i.e., excluding Saturdays, 
Sundays, and leg al public holidays). 
If the Privacy 
Officer cannot make the determin ation within thirty 
working days, the individual  
will be advised in writ -
ing of the reason therefor and of the estimated date by which the determination will be made.
(b) Whenever an individual’s record is cor-
rected or amended pursuan
t to a request by that indi -
vidual, the Privacy Officer shall be responsible for 
notifying all persons and agencies to which the cor -
rected or amended portion of the record had b e
en dis -
closed prior to its correc tion or amendment, if an 
accounting of such disclosure  required by the Act was 
made. The notification shall require a recipient agency maintaining the reco rd to acknowledge receipt 
of the notification, to corr ect or amend the record, and 
to app r
ise any agency or person to which it had dis -
closed 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 correc -
tion or amendment:
(1) The sufficiency of the evidence submitted 
by the individual;
(2) T he
 factual accuracy of the information;
(3) The relevance and  n
ecessity of the infor-
mation in terms of purpose for which it was collected;
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Page 342PATENT RULES § 102.29
R-341 Rev. 8, July 2010(4) The timeliness and currency of the infor -
mation in light of the purpose for which it was col-
lected;
(5) The completeness of the information in 
terms of the purpose fo r which it was collected;
(6) The degree of risk that denial o f
 the 
request could unfairly result in determinations adverse 
to the individual;
(7) The character of the record sought to be 
corrected or amende
d; and
(8) The propriety and feasibility of comply -
ing with the specific means of correction or amend -
ment requested by the individu al.
(d)
USPTO will not unde rtake to gather evi -
dence 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 establ
ish, by 
a preponderance of the evid ence, the propriety of the 
correction or am
endment in light of the criteria set 
forth in paragraph (c) of this section;
(2) The re cord sought to be
 corrected or 
amended is part of the official record in a terminated 
judicial, quasi-judicial, or quasi-legislative proceed-ing to whic h the individual was a part
y or participant;
(3) The information in the record sought to 
be corrected or amended, or the record sought to be 
corrected or amended, is th e subject o f
 a pending judi-
cial, quasi-judicial, or quas i-legislative proceeding to 
which the individual is a party or participant;
(4) The correction or amendment would vi o-
late 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 appropri-
ate proced ures of this sec
tion as to the re cords within 
the grant and 
the record s within the denial.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.29 Appeal of initial adverse determination 
on correction or amendment.
(a) When a request for correction or amend -
ment has been denied initially under § 102.28, the individual may submit a writte n appeal within thirty 
working days ( i.e., excluding Saturdays, Sundays and 
legal public holidays)  afte r the 
date of the initial 
denial. When an appeal is  submitted by mail, the post-
mark is conclusive  as to timeliness.
(b) An appeal should be addressed to the Gen -
eral Counsel, U n
ited States Patent and Trademark 
Office, PO Box 1450, Alexandria, Vi r
ginia 22313-
1450. An appeal should include the words “PRI -
V ACY APPEAL” in capital letters at the top of the letter and on the face of th e envelope. An appeal not 
addressed and marked as pr ovided 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 actua l receipt by the General 
Counsel. In each instance when an appeal so for-warded is received, the General Counsel shall notify 
the individual that his or her appeal was improperly 
addre ssed and the
 date when the appeal was received 
at the proper address.
(c) The individual’s appeal shall include a state-
ment of the reasons why the initial denial is believed to be in error and USPTO’s control number assigned 
to the reques t. The
 appeal shall be signed by the indi -
vidual. 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 i n
itial denial. 
Although the foregoing no rmally will comprise the 
entire record on appeal, the General Counsel may seek additional information necessary to assure that 
the final determination is fa ir and equitable and, in 
such instances, disclose th e additional information to 
the individual to the greatest extent possible, and pro -
vide 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  deter
mination in writing not 
later than thirty working days ( i.e., excluding Satur -
days, Sunday s 
and legal public holidays) from the 
date on which the appeal is received, except that the General Counsel may extend  the thirty days upon 
decidi
ng that a fair and equitable review cannot be 
made within that period, but only if the individual is 
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Rev. 8, July 2010 R-342advised in writing of the reason for the extension and 
the estimated date by whic h a final determination will 
issue. The estimated date s hould 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 transm itted promptly both to the 
individual and to the Priv acy Officer who issued the 
initial denial. Upon receipt of such final determina -
tion, the Privacy Offi cer promptly 
shall take the 
actions set forth in § 102.28(a)(2)(i) and (b).
(g) If the appeal is deni ed, the final determina -
tion shall be transmitted promptly to the individual and state the reasons for the denial. The notice of 
final 
determination also shall info rm the indiv idu
al of the 
following:
(1) The right of th e ind
ividual under the Act 
to file a concise statement of reasons for disagreeing with the final dete rmination. Th e statement ordinarily 
should not exceed one pa ge 
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 da te of the final determina -
tion 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 indivi dual will be noted in the 
disputed record, that the purposes and us
es to which 
the statement will be put ar e 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 determin ation or summary thereof 
which also will be provided to pe
rsons 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 Gen -
eral 
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 appropri -
ate proce d
ures of this sectio n as to the records within 
the grant and the record s within the denial.
(j) Although a copy of the final determination 
or a summary thereof will be treated as part of the 
indiv idu
al’s record for purp oses o
f disclosure in 
instances where the individual has filed a dis
agree-
ment 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 sa tisfy 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, effec -
tive May 1, 2003]
§   102.30 Disclosure 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) U pon written request by the individual, 
including authorization under § 102.25(f);
(2)
With the prior written consent of the indi -
vidual;
(3) To a parent or legal guardian under 
5 U.
S.C. 552a(h);
(4) When required by the Act and not cov-
ered 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 pe rformance of their duties;
(ii) Required under 5 U.S.C. 552;
IP/N/1/USA/D/2 
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Page 344PATENT RULES § 102.31
R-343 Rev. 8, July 2010(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 pur-
poses 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 adva nce adequate writte n 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 Rec
ords 
Administration as a record which has sufficient his t
or-
ical or other value to warrant its continued preserva -
tion 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 anothe
r agency or to an instrumen -
tality of any governmental jurisdiction within or 
under the control of the United States for a civil or 
criminal law enforcement ac tivity 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 record specifying the par -
ticular portion desired and the law enforcement activ -
ity for which the record is sought;
(viii) To a person pursua nt to a showing of 
compelling circumstances affecting the health or 
safety of an individua l
 if upon such disclosure notifi -
cation is tr ansmitted 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 Con -
gress or subcommittee of any such joint committ ee;
(x)
To the Comptroller General, or any of 
his authorized representativ es, in the course of the 
performance of the duties of the General Accounting 
Office;
(xi) Pu rsuant to the ord
er of a court o f 
com-
petent jurisdiction; or
(xii) To a consumer reporting agency in 
accordance with section 3711(e) of Title 31.
(b) The situations refe rred to in paragraph 
(a)(4) of this section include the 
following:(1) 5 U.S.C. 552a(c)(4 ) requires dissemina-
tion of a co rre
cted or amended record or notation of a 
disagreement statement by US P
TO in certain circum -
stances;
(2) 5 U.S.C. 552a(d) re quires disclosure of 
records to the individual to whom they pertain, upon  
re
quest; 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 Office r shall ma
ke an account -
ing 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 Privac y Of
ficer shall 
make such accounting available to any individual, insofar as it pertains to that individual, on request sub -
mitted in accordance with  § 102.24. The Privacy 
Officer shall make reasonab le efforts to notify any 
individual when any record in a system of records
 is 
disclosed to any person under compulsory legal pro -
cess, promptly upon being in formed that such process 
has become a matter of public record.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.31 Fees.
  The only fees to be charged to or collected from an 
individual under the provisions of this pa rt are fo
r 
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; copy ing at the initiative of 
USPTO without a request from the individual; trans -
portation of records and personnel; and first-class 
posta
ge.
(b) It is the policy of US PTO to provide an indi-
vidual with one co py
 of each record corrected or 
amend e
d 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 person
nel record covered by that 
IP/N/1/USA/D/2 
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Page 345§ 102.32 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-344agency’s Government-wide published notice of sys -
tems of records.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.32 Penalties.
(a) The Act provides, in pertinent part:
   Any person who knowingly and willfully 
requests or obtains any record concerning an indi -
vidual from an ag ency 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 stat-
utes as 18 U.S.C. 494, 495 and 1001.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.33 General 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 su bject 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 informa -
tion concerning the record  and the exemption, the 
individua l must contact that source agency.
(b) The general exemption determined to be 
necessary and proper with respect to systems of 
records maintained by USPT O, including the pa rts 
of 
each system to be exempted, the provisions of the Act from whic h they are exempt ed, and the justifi
cation 
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 la w enforcement activity, to 
protect confidential sources of information, to fulfill promises of confidentialit y, to prevent interference with law enforcement proceedings, to avoid the dis -
closure of investigative techniques, to avoid the 
endangering of law enforcement personnel, to avoid 
premature disclosur e 
of the knowledge of criminal 
activity and the evidentiary  bases of possible enforce-
ment actions, and to maintain  the integrity of the law 
enforcement process.
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
§   102.34 Specific 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 
publi s
hed 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 exemp -
tion 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 materi als 
required 
by Executive order to be kept secret in the interest of the national defense and foreign policy.
(b) The specific exemptio ns determined to be 
necessary and proper with respect to systems of records maintained by USPT O, including the parts of 
each system to be exempted, the provisions of the Act from which they are e x
empt ed, 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 fro m which exempted, and the 
reasons therefor are as follows:
(A) Investigative Records—Contract 
and Grant Frauds and Employee  Crimina
l Miscon -
duct—COMMERCE/DEPT—12, but only on cond i-
tion 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 Administra -
tive Proceeding Records—COMMERCE/DEP
T-14;
IP/N/1/USA/D/2 
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Page 346PATENT RULES § 102.34
R-345 Rev. 8, July 2010(D) Attorneys and Agents Registered 
to Practice Before the Office—COMMERCE/PAT-
TM-1;
(E) Complaints, Investigations and Dis -
ciplinary Proceedings Relating to Registered  Patent 
Attorneys and Agents—COMMERCE/P
AT-TM-2; 
and
(F) Non-Registered Persons Rendering 
Assistance to Patent Applicants—COMMERCE/PA
T-
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 fo r asserting the exemption 
are to prevent subjects of investigation from frustrat -
ing the investigatory process, to insure the proper 
functioning and integrity of law enforcement activi-
ties, to prevent disclosure of investigative techniques, 
to maintain the ability to obtain necessary informa -
tion, to fulfill  commitments mad
e to sources to protect 
their identities and the conf identiality of information 
an
d to avoid en da
ngerin g 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 indi-
vidual. 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 fro m which ex e
mpted, and the 
reasons there
for are as follows:
(A) Investigative Records—Contract 
and Grant Frauds and Em ployee Criminal Miscon -
duct—COMMERCE/DEPT-12, but only on condition 
that the general exemption claimed in § 102.33 (b
)(3)
is held to be invalid;
(B) Investigative Re
cords—Persons 
Within the Investigative Jurisdiction of USPTO—
COMMERCE/DEPT-13; and
(C) Litigation, Claims, and Administra -
tive 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 reason s for asserting the exemption are to 
maintain the ability to ob tain candid and necessary 
information, to fulfill comm itments made to sources 
to protect the confidentiality of information, to avoid 
endangering these sources and,  ultimately, to facilitate proper selection or c o
ntinuance of the best applicants 
or persons for a given position or contract. Special 
note is made of the limita tion on the extent to which 
this exemption may be asserted. The existence and 
general character of the in formation exem pted 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. 55 2a(k)(3), (4), (6) and (7).
[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
Appendix to Part 102 - Systems of Records Noticed  
by Other Federal Agencies1 and Applicable to 
USPTO Records and Applicability of this Part 
Thereto
Category of records Other federal agency
Federal Personnel Records Office of Personnel Man -
agement.2
Federal Employee Com -
pensation Act ProgramDepartment of Labor.3
Equal Employment 
Opportunity Appeal Com-plaintsEqual Employment Opportunity Commis-
sion.
4
Formal Complaints/
Appeals of Adverse Per-sonnel ActionsMerit Systems Protection 
Board.
5
  1 Other than systems of records noticed by the Depart -
ment of Commerce. Where the system of records applies 
only to USPTO, these regulations apply. W
here the sys-
tem of records applies genera lly to components of the 
Departme nt of Com
merce, the regulations of that depart -
ment 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 pub -
lished 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 pub -
lished 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. 
IP/N/1/USA/D/2 
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Page 347§ 104.1 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-346[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000]
PART 104 — LEGAL PROCESSES
Subpart A — General Provisions
Sec.
104.1 Definitions.104.2 Address for mail and service; telephone number.
104.3 Waiver of rules.
104.4 Relationship of this Part to the Federal Rules of  
 Civil and Criminal Procedure.
Subpart B — Service of Process 
104.11 Scope and purpose.
104.12 Acceptance of service of process. 
 Subpart C — Employee Testimony and 
Production of Documents in Legal Proceedings 
104.21 Scope and purpose.104.22 Demand for testimony or production of documents.
104.23 Expert or opinion testimony.104.24 Demands or requests in legal proceedings for  
 records protected by confidentiality statutes. 
 Subpart D — Employee Indemnification 
104.31 Scope.104.32 Procedure for requesting indemnification. Subpart E — Tort Claims 
104.41 Procedure for filing claims.
104.42 Finality of settlement or denial of claims. 
Subpart A — General Provisions
§  104.1 Definitions.
Demand means a request, order, or subpoena for 
testimony or documents for use in a legal proceeding. 
Director means the Under Secretary of Comme r
ce 
for Intellectual Property and Director of the United 
States Patent and Trademark Of
fice ( see § 1.9(j) ).
Document means any record, paper, and other prop -
erty held by the Office, including without limitation, 
official letters, telegrams,  memoranda, reports, stud -
ies, ca lendar a
nd diary entries, maps, graphs, pam -
phlets, notes, charts, tabulations, analyses, statistical 
or informati onal accumulatio
ns, any kind of summa -
ries of meetings and conversations, film impressions, 
magnetic tapes, and  sou
nd or mechanical reproduc -
tions.
Employee means any current or former officer or 
employee  o
f the Office.
Legal proceed ing
 means any pretrial, trial, and 
posttrial stages of existing or reasonably anticipated 
judicial or administrative actions, hearings, investiga -
tions, or similar proceedings before courts, commis -
sions, boards o
r 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 lega l
 proceedings.
Office means the United States Patent and Trade-
mark Office, including any operating unit in the 
United States Patent and Trademark Of fice
, and its 
predecessors, the Patent Office and the Patent and 
Tradema r
k Office.
Official business means the authorized business of 
the Office.
General Counsel means the General Counsel of the 
Office.
 Testimony means a  state m
ent in any form, includ -
ing personal appearances before a court or other legal 
tribunal, interviews, depo sitions, telephonic, tele -
vised, or vid
eotaped statements or any resp
onses 
given during discovery or si milar pro
ceedings, which 
response wo uld
 involve more than the production of 
documents, including a declaration under 35 U.S.C. 
25 or 28 U.S.C. 1746. 4 The provisions of this part do not apply to these 
records covered by notices of systems of records pub -
lished by the Equal Employment Opportunity Commis -
sion for all agencies. The re gulations of the Commission 
alone apply.  
  5 The provisions of this part do not apply to these 
records covered by notices of systems of records pub -
lished by the Merit Systems Protection Board for all 
agencies. The regulations of the Board alone apply.Category of records Other federal agency
IP/N/1/USA/D/2 
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Page 348PATENT RULES § 104.12
R-347 Rev. 8, July 2010United 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]
§  104.2 Address 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 Tradem a
rk Office, P.O. Box 1450, Alexan -
dria, 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– 7
000 during busi -
ness 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]
§  104.3 Waiver of rules.
In extraordinary situations, when the interest of jus -
tice requires, the General Counsel may waive or sus -
pend the rules of this part, sua sponte  or on petition of 
an interested party to the Director, subject to s u
ch 
requirements as the Gene ral Counsel may impose. 
Any such petition must be accompanied by a petition 
fee of $13 0.
00.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001; revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]
§  104.4 Relationship of this Part to the Federal 
Rules of Civil or Criminal Procedure.
Nothing in this part wa ives or limits any require -
ment 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
§  104.11 Scope 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 of
ficial capacity.
(b) This subpart is intend ed, and should be con -
strued, to ensure the efficient administration of the Office and not to impede any legal proceeding.
(c)
This subpart does no t 
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]
§  104.12 Acceptance of service of process.
(a) Any summons and compla int to be served in 
person or by registered or certified mail or as other -
wise 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 § 10 4.2
.
(b) Any employee of the Office served with a 
summons and c omplaint shall immediately notify, and 
shall deliver the summon s and complaint to, the 
Office of the General Counsel.
(c) Any employee  rece iving a summons and 
complaint  shall note on th
e summons an d complaint 
the date, hour, an d place of service 
and whether ser -
vice was by hand or by mail.
(d) When a legal proceeding is brought to hold 
an employee personally lia ble in connection with an 
action taken in the conduct of  official business, rather 
than liable in an official c
apacity, 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 sum -
mons and complaint to the General Counsel.
(e) An employee sued personally in connection 
with o fficial business may be represented by the 
IP/N/1/USA/D/2 
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Page 349§ 104.21 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-348Department of Justice at its discretion (28 CFR 50.15 
and 50.16).
(f) The Office will only accept service of pro -
cess for an employee in th e employee’s official capac -
ity.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
Subpart C — Employee Testimony and 
Production of Documents in Legal 
Proceedings
§  104.21 Scope and purpose.
(a) This subpart sets forth the policies and pro -
cedures of the Office regarding the testimony of employees as witnesses in legal proceedings and the production or disclosure of i n 
formation contained in 
Office documents for use in legal proceedings pursu -
ant to a demand.
(b) Exceptions. This subpart does not apply to 
any legal proceeding in which:
(1) An employee is to testify regardin g fa
cts 
or events that are unrelate d to official business; or
(2) A former employee is to testify as an 
expert in connection with a particular matter in which 
the fo
rmer employee did not participate personally 
while at the Office.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
§  104.22 Demand for testimony or production of 
documents.
(a) Whenever a demand fo r 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  a
rrangements to send 
the subpoena to the General Counsel promptly.
(b) An employee may not give testimony, pro -
duce documents, or answer inquiries from a person 
not employed by the Office regarding testimony or 
documents subje ct 
to a demand or a potential demand 
under the provisions of this subpart without the approval of the General Counsel. The General Coun-
sel 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)  Dema
nd 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 tes -
timony or for a document shall be served in accor -
dance with the Federal Rules of Civil or Criminal Procedure or applicable state procedure
, and a copy of 
the subpoena shall be sent to the General Counse l 
as 
indicated in § 104.2.
(3) Affidavits . Except when the United States 
is a party, every demand shal l be acc
ompanied 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 pro -
ceeding, the forum, the requesting party’s interest in the legal proceeding, the reason for the demand, a 
showing that the  des
ired tes timony or documen t
 is not 
reasonably available from any other source, and, if testimony is requested, the intended use of the testi -
mony, 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 cooper
ate in good 
faith to enable the General Counsel to make an informed determin ation under this subpart may serve 
as a basis for a determinatio n not to comply with the 
demand.
(e) A determination unde r this subpart to com -
ply or not to comply with a demand is not a waiver or 
an asse
rtion 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 repre
sentation for the 
employee and will attempt to  have the su bpoena mod -
ified 
or quashed. If Department of Justice representa -
tion cannot be  arran
ged, 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 tri -
bunal rules that the demand in the subpoena must be complied with, the employee shall respectfully 
IP/N/1/USA/D/2 
IP/N/1/USA/P/6 
Page 350PATENT RULES § 104.31
R-349 Rev. 8, July 2010decline to comply w ith 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]
§  104.23 Expert or opinion testimony.
(a)(1) If the General Co unsel authorizes an 
employee to give testimony  in a legal proceeding not 
involving the United States, the testimony, if other -
wise proper
, shall be limited to facts within the per-
sonal knowledge of the employee. Employees, with or 
without compensation, shall not provide expert testi -
mony in any legal pr oc
eedin gs regarding Office infor -
mation, subjects, or activities except on behalf of the 
United 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 op
inion tes-
timony upon the requester showing, pursuant to §104.3 of this part, that  exceptional circumstan ce 
s 
warrant such testimony and that the anticipated testi -
mony will not be adverse to the interest of the Office 
or the United States.
(b)(1) If, while testifying in any legal proceeding, 
an emplo y
ee is asked for ex
pert or opinion testimony 
regarding Office information, subjects, or activities, 
which testimony has not been  approved in advance in 
writing in accordance with th e regulations in this sub -
part, the witness shall:
(i) Respectfully decline to answer on the 
grounds that such expert or opinion testimony is for-
b
idden by this subpart;
(ii) Request an opportun ity to consult wi th 
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 cond
ucting the proceeding 
then orders the emp
loyee to provide expert or opinion 
testimony regarding Office in formation, subjects, or 
activities without the opport unity 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 testi -mony regarding Office inform ation, 
subjects, or activ -
ities in a legal proceeding without the aforementioned 
consultation, the employee sh all, as soon after testify -
ing as possible, inform the General Counsel that such 
testimony was given and provide a written summary 
of the expert o r
 opinion testim on
y prov
ided.
(d) Proceeding where the United States is a 
party. In a proceeding in which the United States is a 
party or is representi ng 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]
§  104.24 Demands or requests in legal proceedings 
for records protected by confidentiality statutes.
Demands in legal proceedings for the production of 
records, or for the testim ony of employees regarding 
information protect e
d by the confidentiality provi -
sions of the Patent Act (35 U.S.C. 122), the Privacy 
Act (5 U.S.C. 552a), the Tr ade Secrets Act (18 U.S.C. 
1905), or any other confidentiality statute, must sat -
isfy the requirements for disc
losure set forth in those 
statutes and associated rul es before the records may 
be provided or testimony given.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
Subpart D — Employee Indemnification
§  104.31 Scope.
The procedure in this subpar t shall be followed if a 
civil action or proceeding is brought, i n
 any court, 
against an employee (including the employee’s estate) 
for personal injury, loss of property, or death, result -
ing from the employee’s activ ities while acting within 
the scope of the employee’s office or employment. When the  
employee is incapacitated or deceased, 
actions required of an empl oyee should be performed 
by the employee’s executor,  administrator, or compa -
rable legal representative.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
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Page 351§ 104.32 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-350§  104.32 Procedure for requesting indemnifica -
tion.
(a) After being served with process or plead -
ings 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 th ereof, together with a fully 
detailed report of the circumst anc
es of the incident 
giving rise to the court action or proceeding.
(b)(1) An employee may request indemnifi cation 
to satisfy a verdict, ju dgment, or award entered 
against that employee only  if the employee has timely 
satisfied the requirements of paragraph (a) of this sec -
tion.
(2) No request for inde mnification will be 
considered unless the em ployee has submitted a writ -
ten request through the employee’ s supe
rvisory chain 
to the General Counsel with:
(i) Appropriate docume ntation, including 
copies of the verdict, judgment, appeal bond , awa
rd, 
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.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
Subpart E — Tort Claims
§  104.41 Procedure for filing claims.
Administrative claims against the Office filed pur -
suant to the administrative claims provision of the Federal Tort Claims Act (28 U.S.C. 2672) and the cor -
responding Department of Justice regulations 
(28 CFR Part 14) shall be filed with the General 
Co
unsel as indicated in §104.2.
[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
§  104.42 Finality 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 pur -
pose of judicial review.[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001]
SUBCHAPTER C – PROTECTION OF 
FOREIGN MASK WORKS
PART 150 — REQUESTS FOR 
PRESIDENTIAL PROCLAMATIONS 
PURSUANT TO 17 U.S.C. 902(a)(2)
Sec.
150.1 Definitions. 
150.2 Initiation of evaluation. 
150.3 Submission of requests. 150.4 Evaluation. 150.5 Duration of proclamation. 
150.6 Mailing address.
§  150.1 Definitions.
(a) Director  means the Under Secretary of 
Commerce for Intellectual Property and Director of 
the United States Patent and T rademark Of
fice ( see § 
1.9(j)).
(b) Foreign government  means the duly-consti -
tuted executive of a foreign nation, or an international 
or regional intergovernmental orga niza
tion whic h h
as 
been empowered by its memb er states to request issu -
ance of Presidential proclamations on their behalf under this part.
(c) Interim order  means an order issued by the 
Secretary of Commerce un
der 1 7
 U.S.C. 914.
(d) Mask work  means a series of related images, 
however fixed or encoded —
(1) Having or representing the predeter -
mined, three-dimensional 
pattern of metallic, insulat -
ing, 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 anothe r is that e
ach image has the pattern of the 
surface of 
one form of the semiconductor chip prod -
uct.
(e) Presidential proclamation  means an action 
by the President extending to foreign nationals, domi -
ciliaries and sovereign auth orities the priv
ilege of 
applying for registrations for mask works pursuant to 17 U.S.C. 902.
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Page 352PATENT RULES § 150.4
R-351 Rev. 8, July 2010(f) Request means a request by a foreign gov -
ernment for the issuance of a Presidential proclama -
tion.
(g) Proceeding  means a proceeding to issue an 
interim order extending pr otection to foreign nation -
als, domiciliaries and so vereign authorities under 
17 U.S.C. Chapter 9.
(h) Secretary  means the Secretary of Com -
merce.
[Added, 53 FR 24447, June 29, 1988, effective August 
1, 1988; para. (a) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003]
§  150.2 Initiation of evaluation.
(a) The Director independently or as directed 
by the Secretary, may initiat e an evaluation of the pro -
priety of recommending the issuance, re vision, sus -
p
ension or revocation of a section 902 proclamation.
(b) The Director shall initiate an evaluation of 
the propriety of recommending the issuance of a sec -
tion 902 procl a
mation 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]
§  150.3 Submission of requests.
(a) Requests for the issuance of a section 902 
proclamation shall be su bmitted by foreign govern -
ments 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 wh ich 
provide a basis for 
the request.
(2) A copy of any regulations or administra -
tive orders implemen ting the protection.
(3) A copy of any laws, regulations, or 
admini strative orders 
establishing or regulating the 
registration (if any) of mask works.
(4) Any other relevant laws, regu lation
s, or 
administrative orders.
(5) All copies of laws, legal rulings, regula -
tions, or administrative orders submitted must be in unedited, full-text  form, an
d if possible, must be 
reprod uc
ed from the original document.
(6) All material submitted must be in the 
original language, and if not in English, must be 
ac
companied by a certifie d 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]
§  150.4 Evaluation.
(a) Upon submission of a request by a foreign 
government for the issuance of a section 902 procla -
mation, if an interim orde r under sectio n 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 informatio n obtained during the sec-
tion 91 4 p
roceeding 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, o r
 
after a dete rmination is made 
by the Director to ini -
tiate independently an evaluation pursuant to § 
150.2(a) of this part, a no tice will be published in the 
Federal Register  to request relevant and material 
comments on the adequacy  and ef
fectiveness of the 
protection afforded U.S. ma sk works under the system 
of law described in the notice. Comments should 
include detailed explanations of any alleged deficien -
cies in the foreign law or any alleged deficiencies in its implementation. If the a lleged deficiencies include 
problems in administration such as registration, the 
respondent should include as spe c
ifically as possible 
full detailed explanations, in cluding dates for and the 
nature of any alleged prob lems. 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 initia-tion of an evaluation under these regulati
ons.
(e) If the written comments submitted by any 
party present relevant and material reason s wh
y a 
proclamation should not issue, the Director will:
(1) Contact the party ra ising the issue for ver -
ification and any needed  additional information;
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Page 353§ 150.5 MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 8, July 2010 R-352(2) Contact the requ esting foreign govern -
ment to determine if the issu es 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 resolve d
 on this 
basis, hold a public hearin g to gather additional infor -
mation.
(f) The comments, the section 902 request, 
information obtained from a sectio n 914
 proceeding, 
if any , and information obt
ained in a hearing held pur-
suant 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) Th e
 Secretary  w
ill forward a recommenda-
tion regarding the issuance of a section 902 proclama -
tion 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]§  150.5 Duration of proclamation.
(a) The recommendation for the issuance of a 
proclamation may includ e 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. Request s for revision, suspension 
or revocation of a proclama tion will be considered in 
substa
ntially the same manner as requests for the  
issu-
ance of a section 902 proclamation.
[Added 53 FR 24448, June 29, 1988, effective August 
1, 1988]
§  150.6 Mailing address.
Requests and all correspondence pursuant to these 
guidelines shall be addressed to: Mail Stop Congres -
sional Relations, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
V
irginia 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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